Introduction to Intellectual Property to Business Advisors

Bradford, 7 Nov 2006

Jane LambertBarrister

Speakers and Topics

• Jane Lambert: “What is IP and why it is important”

• Ron Jones: “The Inventor’s Perspective”

• Ian Macleod: “IP Insurance”

• Q & A

What is “Intellectual Property”

Collective name for a bundle of rights that protect investment in brands, design, technology and the arts,

Some of those rights are monopolies while others are protection from copying

Some arise automatically

Others require registration

Why it is important

Probably most cost-effective way to promote investment in new products, processes and services

Condition of membership of world trade system

Essential for science and technology

Strikes a balance between conflicting public interests

Brands

Passing off – common law right of action

Registered trade marks – monopoly of name, logo, initials or any other sign for specified goods or services

Registered Design

Geographical Indications

Design

Aesthetics – registered designs, Community designs and artistic copyright

Functionality – national unregistered design right and semiconductor chip topography

Technology

Patents – 20-year monopoly of new product or process disclosed to the world

Confidentiality – indefinite protection of secret technical or commercial information disclosed in confidence

Unregistered Design Rights

Copyright and database rights

Arts

Copyright – protection from copying of books, poems, paintings, plays, films, sound recordings, broadcasts

Rights in Performances – right of actors, dancers, musicians, singers and other performers to authorize taping or filming

Acquisition

Rights arising automatically: copyright, unregistered design rights, unregistered Community design, database right, rights in performances, confidentiality and passing off

Rights requiring Registration: patents, trade marks,registered designs

Enforcement

Civil Litigation: claim must be brought where infringement arises

Criminal Penalties: counterfeiting, piracy and bootlegging

Alternative Dispute Resolution: domain name disputes, Patent Office opinions, mediation

Costs

Acquisition: Patent Office Fees, Searches, Translations, Examinations, Professional Fees, Renewal Fees

Enforcement: €50,000 in France, Germany, Netherlands, £1 million High Court, US$2 million USA

Reasons for Patenting

Condition of Funding: eligibility for grants and loans, investment by angels and VCs

Licensing Potential

Force of Habit

Inventors’ Vanity

…. but remember most UK patentsare never worked.

Suggested Approach

What is economic potential of new product or service?

What is the threat to that potential?

What legal protection is available?

Compare cost of acquisition and protection against potential

Sources of Help

Patent and Trade Mark Attorneys: acquire registered rights and advise on licensing and enforcement

IP Specialist Solicitors: Manage legal business including licensing and enforcement

Patent Counsel: Specialist advice, drafting and representation

Websites

www.ipit-update.com

www.patent.gov.uk

www.wipo.int

www.european-patent-office.org

oami.europa.eu

(EC trade marks and designs)

Any Questions Jane LambertnipcThe Media Centre7 Northumberland StreetHuddersfieldHD1 1RL

Tel 0870 990 5081

www.nipclaw.com