How to Protect Your

Brand and Innovation

Ron Zink, Associate General Counsel, Microsoft Corporation

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IP as a Business Tool

Think Comprehensively– Where is your market?

– What differentiates you from competitors?

– Who are you partnering with?

Develop and Own Your Plan– Understand Your Goals

– Prioritize

– Measurement

Use Available Resources– Free tools online

– Professionals

–Ask the right questions

–Scope the work

–Set budgets

Trademarks – How can you protect your brand?

• The first IP protection most

companies seek is for their

brand.

• Business Week/Interbrand

report that the Top 10 global

brands represent a collective

value of $423 billion.

1 $68,734m

2 $60,211m

3 $56,647m

4 $47,777m

5 $34,864m

6 $32,275m

7 $31,980m

8 $31,330m

9 $30,636m

10 $28,447m

http://www.interbrand.com/best_global_brands_intro.aspx

Trademarks – How can you protect your brand?

• Trademarks generally must be

registered to receive protection.

• Trademarks must meet certain

legal requirements to be

registered.

– A symbol – word, graphic, etc.

– Distinctive

– Used in connection with goods or

services

– Not descriptive or generic

– Not the same as or confusingly similar

to another registered or famous

trademark

– Not deceptive or against public policy

• Trademarks are often indicated by ® or ™ symbols.

Trademarks & Domain names – Protecting your brand

• You can search on-line to see if your

mark is already registered.

– UK: www.ipo.gov.uk/types/tm/t-os/t-find.htm

– EU:

oami.europa.eu/CTMOnline/RequestManager/en_Sear

chBasic

• You can register a trademark on-line.– UK: www.ipo.gov.uk/types/tm/t-os.htm (£200+)

– EU:

http://oami.europa.eu/ows/rw/pages/QPLUS/forms/elec

tronic/fileApplicationCTM.en.do (€900+)

• You can register your domain name. – Offive Live Small Businesss:

http://www.microsoft.com/smallbusiness/products/offic

e/microsoft-office-live/default.aspx#overview

– Tips for picking a name:

http://office.microsoft.com/en-

us/officelive/FX102041591033.aspx?ofcresset=1

Copyright – How can you protect your ‘expression’?

• Copyright covers all kinds of

creative and technical

expression, including computer

programs, websites, photos,

film, manuals and other text.

• In the EU, copyright protects all

forms of ‘expression’ of

software– not just source and

object code but also GUIs, for

example.

Copyright – How can you protect your ‘expression’?

• Copyright protection is

automatic when the work is

created. It is not necessary to

register a copyright in the EU

and most other countries.

• Many developers do register

copyright works with the US

Copyright Office, which

provides evidence of copyright

and some litigation benefits. http://www.copyright.gov/eco/ ($35+)

http://www.copyright.gov/records/

Patents – How can you protect your inventions?

• Patents are available for

technical inventions in any field

of technology.

• There are both design & utility

patents.

• Patents provide broad

protection for the functionality

or underlying principle of an

invention.

• Inventions must meet a 3-part

test to be patentable.

•Has it ever been done before or completely described in a published document?

•US: “New”

Novel

•Would someone of ordinary skill in the technological field come up with this, even if not completely described before in one place? Does the invention make a ‘technical contribution’?

•US: ‘Non-obviousness’

Inventive Step

•What does the invention accomplish –does it accomplish what it’s intended to do?

•EU: Industrial Applicability

Industrial Application

Patents – How can you protect your inventions?

• Patents must be registered in

order to give you protection.

– UK/EU: search for patents at

http://gb.espacenet.com/search97cgi/s97_cgi

.exe?Action=FormGen&Template=gb/en/qu

ick.hts

Case Study

Business Model

Hardware

Peripherals

Games

Xbox Live

Peripherals

Games

Xbox Live

Intellectual Property, Small Business and the EU

Key messages:

1. Small businesses rely on IP.

2. Patents are important to protect

all kinds of ICT innovations,

including those embodied in

software.

3. Small businesses need better cost-

effectiveness and access to the IP

system, particularly in any new EU

patent.

4. There is help out there.

61

42

39

51

22

49

0 20 40 60

Market Share

increased

Turnover increased

N.of employees

increased

ICT SMEs with IPR

ICT SMEs without IPR

IP use by SMEs means increased market share, turnover, employment

89% of ICT SMEs use IPRs

46% use or plan to use copyright

32% use or plan to use patents

50% of open-source software developers use patents

10%+ higher market share, turnover, employee growth for IP owners

2.1% expected annual growth in IT spending 2008-2013

0.0% expected annual GDP growth in economy overall 2008-2013

IDC study for European Commission, Intellectual Property Rights and Competitiveness: Challenges for ICT-Producing SMEs (2008), http://www.ebusiness-watch.org/studies/special_topics/2007/documents/Study_08-2008_IPR.pdf

How to Protect Your

Brand and Innovation

Ron Zink, Associate General Counsel, Microsoft Corporation

Ph

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gra

ph

© C

hri

s H

arv

ey | A

ge

ncy: D

rea

mstim

e.c

om