INTELLECTUAL PROPERTY AND YOUR RIGHTS

Helen Johnstone

Seminar

12 July 2006

EAST MIDLANDS INTERNATIONAL TRADE ASSOCIATION

Intellectual Property Practitioners

• Registered Patent Agents– Chartered Patent Agent (CPA)

practise before UK Patent Office– European Patent Attorney (EPA)

practise before European Patent Office

• Registered Trade Mark Agents

Eric Potter Clarkson LLPPatent Agents• electronics

• electrical engineering

• computer technology

• software

• mechanical engineering

• textiles

• materials science

• biotechnology

• chemistry

Outline

• Obtaining intellectual property rights

• Types of rights available

• Extending protection to other countries

• Deciding where to obtain rights

Obtaining Intellectual Property Rights

• Keep confidential - initially

• Identify possible new aspects of inventions

• Seek protection in home country first (usually)

Types of Rights Available

• Patents

• Registered/unregistered designs

• Copyright

• Trade Marks

Patents: What Are They?

• a bargain between the inventor and the state– in return for disclosure of the invention, grant of a

limited period monopoly

• last for twenty years– extensions for some pharmaceuticals

• aim to increase the pool of technical knowledge

Patents: What Rights Do You Get?

• exclude all third parties from commercial exploitation– product

making, selling, offering for sale, using or

importing the product– process

using the process or offering it for use– products made by process

selling, offering for sale, using or importing

What Sorts of Things Are Patentable?

• new

• inventive step

• industrially applicable

Novelty

• not forming part of the “prior art”– prior art

all publicly available knowledge making up the

state of the art

measured at the date of filing or priority of the

patent application

Inventive Step

• judge against “person skilled in the art” - but “unimaginative”

• any lateral thinking?

• overcome a technical prejudice or a particular technical difficulty?

• unexpected result?

• synergistic effect?

• application of a principle from a different technical field?

Exceptions to Patentability (Generally of Academic, Literary or Artistic Character)

• discovery, scientific theory or mathematical method• literary, dramatic, musical or artistic work, aesthetic

creation• scheme, rule or method for:

– performing a mental act– playing a game– doing business

• program for a computer• presentation of information

Patents: How Do You Get Them?

• See your patent attorney!

• identify what aspect(s) of the new product or process might be patentable

• draft patent specification

• lodge with patent office to get filing (priority) date

• Maintain confidentiality

The Patent Specification

• description– sufficient detail to work/make the invention

– at least one working arrangement

preferably more if principle is widely applicable

• claims– a legal definition of the monopoly

• abstract

• drawings

The Application Procedure• 0

• 0-12

• 18

• 24

• 30-54

• <54

• 48+

file the application

request search

publication

request examination

argue the case / amend

grant (hopefully)

annual maintenance fees

When to File

• MUST be before any public disclosure

• MUST be before your competitors!

• after sufficient development to allow a proper description

• consider publication date

• consider patent expiry date

Registered Designs

• “shape, configuration, pattern, ornamentation, texture”

• exclude:– method or principle of construction

– features dictated solely by technical function

– must fit

– part of complex product

A Comparison of Rights (1)

• Patents– cover the

functional principles of an invention rather than “specific embodiments”

– how something works rather than its exact physical form

• Registered Designs– cover the

appearance of an article rather than its function

– individual character

Unregistered Rights

• Design Right

• Copyright

A Comparison of Rights (2)

• UK Unregistered Design Right– original– shape and

configuration– automatically

acquire upon creation of the design

– no registration required

• Copyright– original literary,

dramatic, musical or artistic works

– sound recordings, films, broadcasts, cable programs

– typographical arrangements

EU Design Rights

• Registered– similar to UK

• Unregistered– new

– individual character

Extending Protection to Other Countries

• first file in UK (usually)

• Paris Convention– use UK filing date as “priority date” for later foreign

filings

– equivalent to “backdating” of foreign applications

– priority period up to one year

Patents

• Priority period is 12 months

Extending Protection to Other Countries

• individual national applications

• single international application “PCT”

• regional patents

National Patents

• costs are front-end loaded– translations must be prepared up front

– local filing fees and attorney costs

• extensive paperwork– assignments

– powers of attorney

– priority claims

PCT (International) Application

• file a single application– provisionally covers - over 100 countries

• file and prosecute in English

• international search• international examination (optional)

• lodge application in each country

• separate national patents granted

PCT (International) Application

• much lower up-front cost if pursuing more than three or four countries

• can defer national applications for up to 30 months

• some prosecution work need not be repeated for each patent office

Regional Patents

• Europe, former USSR, Africa, Gulf countries

• European Patent Convention– 31 countries

– includes all EU member states except Malta

– single application, search, examination and grant

– must then be registered in each country

– resulting separate patents are “national”

Registered Designs

• First file in UK or EU

• 6 month priority period

Unregistered Rights

• Vary from country to country

Where to Obtain Rights

• Must be based on business strategy

• Where are manufacturers based?

• Where are main markets?

Exploitation – Protection Relationship

EXPLOITATIONOBJECTIVES

IPSTRATEGY

SUPPORTS DICTATES<

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And Finally….