November 2010

Getting the Registration Right

Judith CoghlanBRYERS

November 2010

Broad IP spectrum

What is available?

Copyrights Designs

Patents Trademarks

November 2010

Which is best for you?

Protection which is

free, but weak

strong, but expensive

economical, but useable

Will vary from product to product

Broad IP spectrum

November 2010

Broad IP spectrum

- IP is a commercial tool

- Does not authorise you to to use the IP, it provides means for you to seek to stop others

- Primarily a deterrent - rarely worthwhile instituting formal legal proceedings

- Usually possible to achieve a result by “sabre rattling” and negotiation

November 2010

Unregistered Rights - Copyright

COPYRIGHT• What does copyright protect?

• Protects literary, dramatic, artistic, musical works, etc• e.g. books, plays, songs

• How does it arise?• automatic, no registration system in UK, hence free• recommended to mark with © symbol, but not

compulsory• How long does it last?

• life of the author + 70 years• Who Owns it?

• the author or the employer of the author is the first owner• a work created under commission or contract must still be

formally assigned

November 2010

Copyright

How is it infringed?• infringed only by copying • of a substantive part of the work - qualitative not

quantitative assessment• copying may be assumed in some cases of similarity (plus

access)

DrawbacksIn order to enforce your right you must prove

- copyright exists- you own the copyright- that copying has occurred

November 2010

Designs

• Complicated!

• No less than 4 possible routes for protection of a design• UK Unregistered Design Right• Community Unregistered Design Right• UK Registered Design Right• Community Registered Design Right

November 2010

Designs – unregistered

• UK unregistered design right (UK-UDR)• Protection for the appearance of a design which is

original• Exists automatically for EU entities • Duration up to 15 years (licence of right for last 5 years)• Employer owns employee’s and commission’s UK-UDR

• European unregistered design right (C-UDR)• Protection for the appearance of a design which is new

and has individual character• Exists automatically from knowledge of design in EU• Duration 3 years• Employer owns employee’s C-UDR, but not contractor’s

C-UDR

November 2010

Designs Unregistered – Example

UK-UDR EU-UDRProtects aesthetic and functional features, but not surface decoration

Protects

Shape of handle

Appearance of coloured “panels”

Locking mechanism

But not

Trade marks printed on handle

Stripes on roller sleeve

Protects aesthetic design feature , but not functional designs.

Protects

Shape of handle

Appearance of coloured “panels”

Trade marks printed on handle

Stripes on roller sleeve

But not

Locking mechanism

November 2010

Designs – unregistered

InfringementProtects against copying, but not independent creation

Copying must be of the whole or a substantial part of the design

DrawbacksIn order to enforce your right you must prove that

- design right exists- design qualifies for protection- you own the right- that copying has occurred

November 2010

Designs – registered

• Design Registration - UK & Europe

• Protection for the appearance of the whole or part of a design of which is new and has individual character

• 1 year grace period

• Covers aesthetic designs, including surface decoration, other than those dictated solely by function

• Protects against copying and independent creation

• Duration up to 25 years

November 2010

NEW

no identical design, or no design whose features differ only in immaterial details, has previously been made

available to the public

Designs – registered

INDIVIDUAL CHARACTERthe overall impression produced by the design on the informed user differs to that of any design disclosed

previously

November 2010

Designs - Registered

When Preparing a Registered Design Application - Things to Consider

• Protection determined by “representations” filed

• Colour, greyscale or black and white?

• Line drawing or rendered representations?

• Photographs?

• How many “representations”?

• Are you seeking to protect only a part of the appearance of a product?

•Indication of Product - Locarno Classification

November 2010

Infringement

Protection against both copying and independent creation

Hence there would be infringement even if a second product has been designed without reference to a first

Drawbacks

Cost associated with registration

Novelty requires decision to register to be made relatively early, but don’t jump the gun!

Uncertainty, because applications are not examined as to substance and therefore vulnerable to invalidation

Some dispute as to just who is the “informed user”

Designs - Registered

November 2010

Trademarks

• What is a trade mark?• Any sign which can distinguish the goods and

services of one trader from those of another and is capable of being represented graphically.

• What Form Can a Trade Mark Take?• Words Logos Pictures Strap

Lines• Sounds Smells Colours Shapes

• What Does A Trade Mark Do • Identifies your goods and/or services• Ensures customers come back to you• Adds value to your business

November 2010

Trademarks - Registered

When Registering a Trade Mark – Things to Consider

• Choosing a Trade Mark• Distinctive• Allusive to, but not descriptive of, your goods

• Is The Trade Mark Available? • Pre-filing search - Risk assessment and advice• Opposition and/or infringement

• Which goods/services? Set of “classes”

• Which Format? – word only, stylised word, logo, composite

November 2010

• Why Register Your Trade Mark?• Protection against competition/copying• Infringement/Passing Off• Makes an intangible asset tangible• Allows for easier transfer of the mark

• What if you are the wrong side of the line?• Persuasion• Evidence

Trademarks - Registered

November 2010

Patents

• Protect inventions• For technology (in Europe at least)• Not excluded, new and inventive

• Registered right• Protects against independent creation• Duration of up to 20 years• Important to get inventorship & ownership

correct• Significant commercial importance

• But costly to acquire and maintain

November 2010

Patents – What is Protected?

How do you know what a patent protects?

• Typical patent document many pages long and includes a detailed description and drawings which tell a skilled reader everything they need to know to implement the invention

• Protection offered by patent not set by the detailed description, but a section of the document referred to as “the claims”

What do “the claims” look like?

• List of related features which in combination are necessary to create the invention

November 2010

Patents – Substantive Requirements

The UK-IPO must be sure that an application meets certain legal provisions before they will grant a patent. A search and examination procedure exists to determine whether an invention is:  

New, Inventive, Industrially Applicable, Not excluded

What is considered new?

In the UK, an invention is considered new if it has not been disclosed to the public before an application for a patent was made. Anyone’s disclosures, including your own count as a public disclosure.

In determining whether your patent application relates to something “new” the UK-IPO will look at the list of essential features set out in your claims and determine whether that combination of features was known at the time the application was filed.

November 2010

Patents - Substantive Requirements

What is considered inventive?

Whether an invention is inventive is a matter of degree rather than a matter of fact. Typically, the UK-IPO considers whether a person skilled in the particular area of technology of the invention would consider that the invention set out in the claims is obvious if having regard to all public disclosures known at the time the application for a patent was made.

What if the UK-IPO raises objections?

- Persuasion

- Amendment (restricted to disclosure contained in application as originally filed)

November 2010

Patents

Things to Consider when Applying for a Patent

- have you described how to implement your invention sufficiently to allow a person skilled in the art to implement it?

- do the claims relate to technical features and not the result to be achieved?

- have you used sufficiently broad (but functional) terms?

- careful wording

- remember that any amendments made during prosecution cannot “add matter” to the application (very strict test)

- do you comply with formalities and law of UK?

- are you interested in protection overseas? Does your application take into account differences in law and practice overseas?

November 2010

Role of IP Attorney

IP Attorneys

Trade Mark Attorneys (ITMA)

Patent Attorney (CIPA)

Qualified?

All take exams in fundamentals of Law – UK Fundamentals, Contract and Tort, EU Competition Law, together with IP specific exams (copyright, design, trade marks, patents)

Science/Engineering Degree

European and UK examination procedure – minimum 3 years

November 2010

Role of IP attorney

Your attorney:

- Knows the complexities and subtleties of IP law and practice

- Can offer range of IP options in relation to a product/method

BUT….

- Does not know your marketplace

- Does not know significance of your invention

- Does not know your competitors

Communicate!

November 2010

Infringement

Infringement of a Patent

Not a criminal offence

Law enforcement agencies do not monitor whether your patent is being infringed nor can they take action against infringers on your behalf.

If you have discovered a potential infringement its up to you to pursue the person infringing by initiating a civil action through the courts for damages and an injunction.

Role of IP

Primarily a deterrent - rarely worthwhile instituting formal legal proceedings

Usually possible to achieve a result by “sabre rattling” and negotiation

Likely to be taken more seriously if patent has been drafted by an attorney

Likely to be taken more seriously if represented by an attorney

November 2010

What if You Can’t Register?

Not all forms of protection available for all products

- Unregistered Rights?

- Keep Confidential? “Trade Secret” or “Business Know-How”

- Be first to market?

- Develop brand/reputation/marketing

November 2010

GOOD LUCK

Any Questions?

Judith CoghlanBryers

7 Gay StreetBath BA1 2PH01225 428877

www.bryerlaw.com