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Intellectual Property

How to protect your Intellectual
Amy Wood & Laura Carney
What is Intellectual Property?
Intellectual Property (IP) is a means of protecting the
results of innovation and creative activity
IP rights are negative rights.
IP rights are territorial.
Intangible assets which can be bought/sold/licensed.
Intellectual Property – an overview
Trade marks
How can I protect my own IP?
How can I avoid infringing the rights of others?
Why protect IP?
• Stop others using what you’ve created (brand, product or process) without
your permission
• Exclusivity can demand higher sales prices
• Generate income by licensing
• Attractive to investors
• Possible to arrange for IP valuation and borrowing against IP rights
IP in Practice
• A right protecting an invention
• The deal – a patent affords a territorial privilege or monopoly for a limited period – in
exchange for letting the world use your invention after monopoly expires
• Maximum duration of 20 years in most countries
What can you get a patent for?
Inventions related to products, methods or manufacturing processes or other aspects of
new technology used to solve a technical problem
Must be new – i.e. not published anywhere else before, including by the inventor/owner
Must involve an “inventive step” – i.e. “non-obvious” to a person skilled in
the art
What can’t you get a patent for?
• The law provides a list of “things” excluded from patent protection,
Computer programs
Business methods
Mathematical methods
Methods of performing mental acts
Methods of playing games
Presentation of information
• However… only excluded as such
Patent Application Process
First Filing
File Priority
(can be
Application in
Order for Grant
• UK patents typically take 3-4 years to grant
• An international application can be filed up to 12 months after initial filing
Patents – a checklist
1. Consider “freedom to operate searching” to identify potentially
conflicting patents owned by third parties
2. Be very careful about disclosing your invention prior to filing
3. If in doubt talk to a patent attorney
Trade Marks
Trade Marks
“A badge of origin”
Anything which can be represented graphically e.g. Words (including personal names),
colours, slogan, logo, packaging, product shape, holograms, smells, sounds…
But – hard to protect descriptive or generic marks and, for example, invented words
e.g. COCA COLA, LEGO, KODAK etc have broader protection than more descriptive
Territorial - a registration in one country or region does not automatically give owner
rights in another
Once registered protection can be renewed indefinitely!
Trade Marks
How to apply for registration
file international
applications within 6
Registration process in the UK takes ~ 4 months
Registration process in EU take ~ 6 months
Trade mark registration – Infringement
Infringement = use of an identical or confusingly similar mark in relation to
identical or similar goods
The similarity is judged on the basis of aural, visual and conceptual
Possible to prevent use of a similar mark in relation to dissimilar goods if
mark has a “reputation”
An infringer may be subject to any of damages, injunctions, account of
Unregistered trade mark rights – law of “passing off”
Right to prevent third party use of a similar mark through earlier use of a
Hard to prove
Higher standard – customers need to be deceived not just confused
Trade marks – a checklist
1. Identify trade marks of your business
2. When selecting new marks consider marketing function against your
ability to protect the marks
3. Check your mark is free to use by searching in the early stages and
before bringing it into use
4. Protect your marks through registration – consider potential product
range expansion
Protect the visual appearance of a product
e.g. lines, contours, colours, shape, texture or materials of product or its
Registered and unregistered (lasts for a shorter period and hurdle to
catch infringers may be higher for unregistered designs)
Can cover whole or part of a product
Protects against competitor selling a product that is visually the same
Your design needs to:
Be new (therefore searching is important for this and to prevent infringing)
Not be offensive
Not make use of protected emblems or flags (e.g. the Olympic rings or Royal Emblems)
Not be an invention or how a product works – if so this would require a patent instead
Registered designs
Requires formal registration with the relevant national (or European) office
Must be filed within 12 months of public disclosure
Once registered protection can be renewed every 5 years, up to a total of 25 years
(in the UK and in E.U.)
Protects against competitor selling a product that “does not produce a different overall
impression on the informed user”
How to apply for registration
registration &
file international
applications within 6
Registration process in the UK takes ~ 1-3 months
Un-registered designs
Benefit – Right exists automatically even if not registered
More limited protection of features than for registered designs
Disadvantage – Must show that actual copying has taken place so even if they are
identical, products designed completely independently will not infringe
Shorter lifespan – 3 years in EU, up to a maximum of 15 years in the UK
Can be useful but better if only relied on as a fall back position
Designs – a checklist
1. Identify aspects of your product for which the look is of benefit to you
2. Keep a record of changes in the design.
3. Make sure you initial and date stamp design documents.
4. Keep a record of first public disclosure of the design.
5. If the look is important – Register it!
• Copyright resides in “Original artistic, dramatic, literary, and musical
works…irrespective of quality” – no registration is required but records
showing creation and ownership are important
• Often described as “the expression of an idea” – e.g.
Pictures/photographs, films
Books, articles, guides, instructions
Sheet music, lyrics
Software source code, graphical user interface etc.
Copyright – scope of protection
Arises automatically, no need to register and can last up to 70 years after
death of creator
Need to show who, when and how created and prove ownership!
Infringement = unauthorised reproduction of whole or “substantial part” of
the work in question
Have to show copying has taken place – so if created independently may
not be infringement
Be careful when copying things from the internet!
Know-How & Trade Secrets
Know-How & Trade Secrets
Keeping information secret (e.g. process, recipe etc.)
e.g. Coca-Cola, KFC….
Hard to protect
Only really useful if you can’t patent the idea and
you are completely sure you can prevent disclosure
Varies considerably depending upon complexity of IP and country for which protection is
In the UK (approx.):
Trade Marks – £1000-2000
Patents – £5000 for initial filing. Total to obtain granted patent can be around £20000.
Designs – £800-1000+
Copyright – Automatically exists – no costs
IP Ownership
IP Ownership
Trade Marks – The Applicant is the owner.
Patents – Inventor owns the IP, unless the invention was made as part of his/her job, in
which case his/her employer will own the invention.
Designs – The designer is the owner, unless the design was made as part of his/her job,
in which case his/her employer will own the invention. A commissioned design is owned
by the designer and not the commissioner (unless a contract states otherwise)
Copyright – The creator of the work is the owner, except where made in the course of
How to search for earlier patents
How to search for earlier trademarks
How to search for earlier trade marks
How to search for earlier designs
Espacenet (Patents) - http://worldwide.espacenet.com/?locale=en_EP
UK IPO (Trade marks) - https://www.gov.uk/search-for-trademark
UK IPO (Designs) - https://www.ipo.gov.uk/d-find-product.htm
Points to Consider
1. Where do you need IP – consider markets, competitors, manufacture
2. What do you need to protect – an invention, features of appearance,
your brand
3. Who is the owner?
4. Is your IP new?
5. Check that you do not infringe the rights of others
6. Keep records
7. Keep confidential until filed!
8. Keep IP considerations in mind as part of commercial strategy and
day to day practice
9. Ask questions about IP as early as possible
Marks & Clerk LLP
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Who are we?
Marks & Clerk LLP is the largest intellectual property attorney firm in
the UK and one of the largest in Europe. We have approximately 150
practitioners in the UK and 260 practitioners worldwide.
Marks & Clerk LLP, Marks & Clerk Solicitors LLP and Marks & Clerk
Consultancy LLP are able to offer their clients a comprehensive
intellectual property service and a seamless approach.
Marks & Clerk have 8 offices in the UK (Aberdeen, Birmingham,
Cambridge, Edinburgh, Glasgow, London, Manchester and Oxford)
and a further nine overseas offices, in Australia, Canada, China,
France (Paris and Sophia Antipolis), Hong Kong, Luxembourg,
Malaysia and Singapore.
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