About intellectual property

IntroductionSeveral students of Brunel University presented their design ideas at an “IP Scrub” at the University on 11th March 2013 to Sarah Jackson and Alison Stawarz of IBB Solicitors and Chris Burnett of Laudens, a firm of patent attorneys. The Scrub was intended to assess whether any of the designs could be protected by way of any Intellectual Property Rights (IPRs), such as patents (which protect inventions), registered designs (which protect designs with “eye appeal”) or copyright (which protects original works such as artistic or literary works, or computer programs), before they are exhibited publicly.

It must be emphasised that due to the time available the advice provided at the Scrub was fairly general, and any detailed advice should be sought separately.

The DesignsThe attached table summarises the designs and the relevant IPRs. The discussion is limited to the potential for protecting each design, and no assessment has been made of the quality of the ideas presented, or their commercial value. As an aside, the way that the students presented their ideas was very professional.

As can be seen from the table, some of the designs created by the students are in a position where a patent application could now be filed, though some of the ideas have not been realised beyond the point of identifying a problem to be solved. In these cases, protection might be possible once the ideas have been realised into designs, but at this point, protecting them is not possible. Some of the other ideas are simply not patentable; this is not a criticism because patents can only protect certain ideas, and so this does not mean that the ideas are not good. In some instances, the designs may be protectable by way of a registered design.

As indicated below, patents are granted according to strict criteria. While some designs in the table are indicated as being patentable in principle, whether or not a patent would be granted depends entirely on the presence or absence of prior publications showing the same idea. No assessment of patentability was possible unless the student identified earlier disclosures in the Scrub; otherwise it is merely indicated whether or not the subject matter was patentable in principle.

A Brief Word on PatentsA patent is a territorial monopoly right that is granted for inventions, and allows the owner or licensee of the right to prevent others from making or importing the same invention in a country where the patent is granted. What can be defined as an invention is fairly broad, but it includes mechanical and electrical devices, drugs, chemicals and methods of manufacture. A patent is granted for inventions that fulfil certain legal criteria, and most importantly the invention must be novel and have an inventive step. To be novel, the invention must be defined in a way that is new and has not been made available to the public prior to the filing of the patent application (this could include publications – including oral disclosures - by the inventor, or if the “invention” had previously been made and published by someone else). In order to have an inventive step, the differences between the invention as defined and all prior publications must not be considered obvious by a person skilled in the relative technical discipline.

Prior publications are often in the form of earlier patent applications, and these can be searched through the database espacenet (http://worldwide.espacenet.com/) using keyword searches. We recommend that the students conduct espacenet searches, because they can identify if an idea has already been published (and therefore is no longer patentable), or if it is already patented, which can lead to problems if the invention is subsequently taken to the market.

An espacenet search can provide a non-exhaustive initial indication of the state of the art. It is also possible to obtain professional searches from which one can get an indication of patentability or whether patent infringement will be avoided.

In order for a patent application to be filed that would lead to a valid patent, it is therefore very important that public disclosures be avoided, and that any disclosures of the invention are made only in confidence. The student’s designs are going to be exhibited at Made in Brunel in June to invited guests. It is intended that guests visiting the exhibition will sign a Non-Disclosure Agreement (NDA) to ensure that the publication at the exhibition remains in confidence, but the more people who are shown an idea, the more likely it is that the disclosure

will be treated as having been public. Therefore, the students run the risk that if they do not have patent applications in place before the exhibition, they may be unable to file a valid patent application at a later date. If the student thinks that that they may wish to file a patent application at a later date, and are worried about the risk, they should ask that their idea not be exhibited.

The question of whether to patent depends on certain factors; it is an expensive and time consuming process, so unless the student wishes to develop and commercialise their idea after University, there probably is not much point in proceeding as an academic exercise. Whilst the likely success or outcome of each idea should it be brought to the market cannot be commented upon, some students do seem keen to at least try to take their ideas further, so if protectable, these ideas are probably the best candidates for patent protection.

The Patent Process and the Cost of PatentingThe attached flow chart and guidance notes give an indication of the costs and timescales involved with applying for a patent in the UK. Patents are territorial, so should protection be required for any other countries, the costs and timescales differ. Whilst foreign patent systems are beyond the scope of this note, it is worth mentioning the one year priority period: foreign applications can be filed within one year of an initial application and be treated as having been filed at the same time as that original application.

A Note on Design Right and Registered DesignsSome of the ideas presented at the Scrub were aesthetic in nature, and what was innovative about the design was its appearance rather than its functionality. In these instances, a design right or registered design would protect the appearance of the design if it is new and has individual character – that is, an “informed user” would judge it different from other designs available to the public.

Design rights are created automatically, with EU-wide design protection lasting for 3 years upon first marketing of a new design. A similar UK-only unregistered design right lasts for 15 years from creation, or 10 years from the first marketing of the design, whichever is the

shorter. UK unregistered design right only protects the 3D shape of the design and not 2D features such as surface decoration, and one must prove that the design was copied rather than created independently if infringement of the design is to be proved.

Better design protection can be sought by way of a registered design right. These are granted on the basis of drawings or photographs showing the design which have been filed at a relevant Intellectual Property Office along with the payment of an official fee. Protection lasts for 5 years and this can be renewed in 5 years chunks up to 25 years. Registered designs are territorial, such as with patents, and UK and EU-wide registered design rights are available, with equivalent rights available worldwide.

Whilst registered and unregistered design rights can be used to protect the appearance of a product, protection does not extend to features of the design that have to have a certain appearance to interact with another product, e.g. the shape of a plug must be that shape to interact with a plug socket.