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28 June 2006 © ip21 Limited 2006

Intellectual Property Issues for the Consultant

Matthew Dixon, Chartered Patent Attorney, ip21 Limitedwww.ip21.co.uk

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28 June 2006

Overview• Why is intellectual property an issue?• What are the major IP issues? • What rights typically arise?• Copyright issues• Patent issues• Confidential information issues• Who will own the IP rights?• Licence and royalty issues• Practical advice

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28 June 2006

Why is intellectual property an issue?• Consultants sell knowledge to clients• Clients want to secure what they buy• Consultants need to be free to sell to others• Each party has different IP needs• Consultancy contract needs to be clear on

IP• To satisfy both parties• To prevent future problems

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28 June 2006

What are the major IP issues?• Do you want to own the rights in what

you create?• Are you free to use information from

this project for future projects?• Is your existing knowledge safe from

ownership claims by the client?• Can you generate an income from

past work?

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28 June 2006

What rights typically arise?• Literary copyright in proposals, reports

and documentation• Artistic copyright in drawings and

diagrams• Software copyright• Design rights in product designs• Patentable inventions• Confidential information• Trade marks?

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28 June 2006

What does copyright protect?• Protects original literary, dramatic, artistic

and other works, including software, drawings, photographs, manuals, etc.

• No protection for concepts or ideas, just the way they are expressed

• Arises automatically and is therefore free• Protects against copying, adaptation, etc.• Need good records of creation date and

author

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28 June 2006

Copyright and design right issues• Originality – are some parts copied?• Authorship – who created the work?

• Have you used subcontractors?• Have you used reference sources?

• Ownership – who owns what?• Recording – can you prove what was

created?

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28 June 2006

What do patents protect?• Protect technology (high or low)• The invention must be absolutely new – kept

secret until the patent application is filed• Need an “inventive step” – a bit more than

just a routine development• Some things are excluded from patent

protection• The patent application has to explain in

technical detail how to carry out the invention• Patent are national rights

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28 June 2006

Patent Issues• Cost of patent applications• Control of prosecution and scope• Geographical scope• Inventor co-operation

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28 June 2006

Confidential information issues• Only an agreement to keep a secret• Defining and documenting

• Existing information• Information created during the project

• Maintaining confidentiality• What if there is a breach?

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28 June 2006

Who will own the IP rights?• Retain the IP rights and licence

client?• Cost?• Future income stream?

• Assign all IP rights to client?• Back licence for future work?

• Risks of joint ownership

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28 June 2006

Licence issues• Sole, exclusive, non-exclusive?• Sub-licences allowed?• Geographical scope• Field of use• Term• Who controls, and meets, costs?• Who decides on litigation?

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28 June 2006

Royalty payments• Variable rates• Minimum payments• Milestone payments

• Lump sum on grant in major markets?• Monitoring compliance

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28 June 2006

Practical advice• Consider your options at the very start• Understand the value of what you produce• Don’t make copying easy, even if you can’t

stop it• Make sure any agreement is clear in

advance• Keep good records of the work you produce• Consider the possibility of licensing income• If in doubt, get professional advice

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28 June 2006 © ip21 Limited 2006

Thank you

Matthew Dixonip21 Limited

1 CornhillLondon EC3V 3ND

020 7645 8250 (t)020 7645 8251 (f)

mattdixon@ip21.co.ukwww.ip21.co.uk