University of Limerick25th March 2009

Intellectual Property Seminar

Michael Luceymichael@purdylucey.com

www.purdylucey.com

Types of Intellectual Property Rights

– Trade Marks– Designs– Copyright– Patents– Know-how + Confidential information– Database Rights

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What’s a Trade Mark ?• Any sign which distinguishes your goods or

services from those of others• a guarantee of source and of quality to your

customers/prospective customers• operates as a “badge of origin” for your

goods/services

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• Most commonly:– A word, or words (text)– A logo or picture– A combination of the above

• Also can be:– A slogan– A shape or shapes– Packaging– A smell, a colour or a sound

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You have chosen a Trade Mark Issues to consider:1. Are you free to use the mark ?

(searches)2. Register it ! (why ?) 3. Where should you register (protect) the

trade mark ? What countries ?

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1. Are you free to use the mark ?

• Searches of the trade mark registers in the country (or countries) where you intend to use the mark

• Searching is not mandatory, but highly advisable. You take the risk.

• Purpose of searching is to find any ‘earlier rights’ covering your field (identical/similar marks covering identical/similar goods/services)

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Consequences of Trade Mark infringement Can be severe

– An injunction against your use of the mark– Pay damages (compensation) to complainant– Delivery up and/or destruction of materials– Account of profits to the complainant– Pay legal costs (both sides)– Lose your financial investment and goodwill

• Not knowing is not a defence …

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2. Why register your TM ?A. To protect a startup name or brand- You can file an application before you start using a trade

mark. This will block later applications. B. To get a strong legal property right in your name or

brand - Exclusivity- TM registration renewable every 10 years - infinite- The registration can be licensed, transferred or used as

security

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C. A return on your financial investment- Your TM registration may become a valuable assetD. To get enforcement rights to stop others using your

mark or a confusingly similar mark- Your registration gives you strong registration rights

to prevent use of an identical mark or a confusingly similar mark (in respect of same or similar goods or services)

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3. Where to protect your TM• Priority System – file first application (e.g. IRL/CTM)

and have up to 6 months to file other(s) without losing filing date

• You should register the mark in the country/countries where you intend to use it e.g. Irish/UK/US national tm application(s)…etc-> Community Trade Mark -> can file single application to cover all EU states (15+10 =25)

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Marking issues• When TM registered, advisable for owner to mark goods

or materials to assert the registration• Can use the words “a Registered Trade Mark of…” or the

symbol “®”• If TM application still pending, or unregistered just use

“™” or the words “a Trade Mark of…” • NB: offence to use “Registered” or “®” if not registered…

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What is a Design?

• Design means:• The appearance of the whole or a part of a

product • Resulting from the features of, in particular,

the lines, contours, colours, shape, texture and/ or materials of the product itself

• And/ or its ornamentation

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What products are protectable?• Product means:• Any industrial or handicraft item• Including parts intending to be asembled into

a complex product, packaging, get-up, graphic symbols & typographic typefaces

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Requirements for Protection

Novelty

No identical design made available to the public before the filing date/priority date

Individual CharacterIf overall impression produced on the informed userdiffers from the overall impression produced by anydesign which has been made available to the public

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Unregistered Community Design

• Same requirements as for a Registered Design• No registration Process• 3 Years Only – big disadvantage• Right to prevent third party from using design

if the contested use results from copying the protected design

• Must prove design was copied• Karen Millen Ltd. -v- Dunnes Stores & Anor

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Should I keep my design secret?• It is very important not to disclose a design to the

public before you are ready to commercialise it –• Why?• 1. Once a design is made available to the public, the

unregistered design right automatically applies for 3 years from the date of making it available

• 2. Designs that are disclosed more than one year before making an application for registration are not considered ‘new’ and are therefore liable to be invalidated

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Copyright• Protects original works which have been recorded in

some form against copying. Protects the expression of an idea not the idea itself.

• Must be Original• Low threshold to create copyright –automatically

subsists once created• Ownership – Author – careful ! • Duration – 70 years from end of calendar year in

which author dies• Marking ‘C with a Circle’ ©- Date and Owners Name

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Items Protected• Computer graphics/codes/databases• Printed graphics• Literary works• Musical works• Artistic works – including mechanical

drawings

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What is a Patent ?• A patent is a monopoly right conferred by the

government giving the patent holder the right to stop others making, using or selling an invention.

• Statutory Protection• 20 Years term, normally• Novelty• Inventive step • Industrial Application

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What types of Patents exist ?• All areas of Technology,• Pharmaceutical, Engineering – all types,

Software, Bio-technology, Business methods (?),

• Apparatus or System• Process or Method• Use

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What to patent?• Anything technical representing an advantage in an

area of interest (Keep competitors out).

• Anything technical outside the core area of interest (Potentially saleable to others).

• Developments which provide real benefits with potential to generate licensing income.

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What is Novelty and Inventive Step ?

Novelty : An invention shall be considered to be new if it does not form part of the state of the art

Inventive Step : An invention involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art

NB State of the art = Everything made available to the public before the date of filing of the patent application – Must file patent application before any disclosure, other wise invention will not be Novel !

Novelty V Inventive Step NoveltyInvention = A + BPrior Doc 1 = APrior Doc 2 = A + B

Therefore, Invention isnovel over Doc 1 but not novel over Doc2

Inventive StepInvention = A + B + CPrior Doc 1 = A + BPrior Doc 2 = C

Is it inventive (obvious) to combine Doc1 andDoc2 to arrive at claim ?

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General Patent Filing Strategy

Initial Filing (Priority Date) t=0months

International (PCT) Filing t=12months

National Filings t=30months

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USEFUL INTERNET RESOURCES • Searchable patent databases

EPO - http://ep.espacenet.com/

USPTO - http://www.uspto.gov/patft/index.html

PCT - http://pctgazette.wipo.int/

• Full Search List available from: http://www.purdylucey.com/searching_ip.php

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Example Front Page of PCT

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Ownership• Applicant generally is owner• Applicant V Inventor• Contract of Employment –UK/Ireland

employer = owner of invention• Assignment should normally be executed• Can be assigned/sold/licensed by owner• US –special situation

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Licensing • Permission to do something that, without the

licence, would be an infringement of IP• Person granting License is Licensor• Person receiving License is Licensee• Territorial• Complex legal document• WARNING – Do not negotiate your own Licence

– get legal advice!

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Exercise to Identify IP• You are an inventor/designer and have recently developed a novel kite. The shape of the kite ensures that it

is much greater lift than conventional kites. In fact the shape of the kite, with the special winged tips you have developed, allows for better flight than all other known kites.

 

• You have designed the kite having a number of distinctive colours with four individual different colour strips that will appeal to children. You believe children will be your main market. You have set up a company to market the kite and have come up with the name STEALTH – KITE to sell the kite under.

 

• You hope to go to a trade show next month to display and demonstrate your new kite. You have also prepared some marketing literature that you intend to hand out at the trade show.

• You have not discussed or shown the new kite to anyone to date.

• Question

• Identify what Intellectual Property rights that could be protected and the steps you would take to protect your Intellectual Property ?

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The Capel Building, Suite 138/139, Mary's Abbey,

Dublin 7,Ireland.

Phone: 01 888 0862Fax: 01 888 0865

Email: info@purdylucey.com

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