Introduction to IPPresentation to BASME

15 October 2014

Niall Head-RapsonMcDaniel & Co

Introduction to IP

• Niche IP Practice• Jesmond based• 9 Years

Types

• Registered• Unregistered

Registered

• Patents• Design• Trade Mark

Unregistered

• Copyright• Database Rights• Confidential Information• Trade Mark• Design

Trade Marks

• A sign• Perpetual• Differentiate the goods and services of one

undertaking from another• 45 Classes of Goods and Services• Universal classification• UK• Community

1 January 1876

1 January 1876

Trade Mark Cost

UK CTM

Application Fee £200 900 €

Extra Class £50 150€

Grant Fee (850€)

Extra Class 150€

Design

• 25 Years protection• No copying required• Worldwide• UK and Community• 12 Month

Design

• UK and Community Registered 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 or materials of the product or its ornamentation.

'Medical device for measuring urine flow

Design CostApplication fee

Publication Fee

Deferment Fee

Community 1 230 € 120 € 40 €

Community 2-11 115 € 60 € 20 €

Community 12+ 50 € 30 € 10 €

UK 1 £60 0 £20

UK 2+ £40 0 £20

Unregistered Design

• Automatic• UK and Community• 3 to 10 year protection

UK

• "design" means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.

• 15 years from the date of creation or 10 years from the end of the year in which the design was first put onto the, market within the EEA

Community

• Council Regulation (EC) No. 6/2002 • new and has individual character • three years from the date on which the design

was first made available to the public within the Community.

Patent

• Novel• Inventive Step• Capable of Industrial Application• Not Excluded

Patent

• Priority Date• Field of Invention• Inventor• Proprietor

Prior Art

Prior Art Invention

What Has Gone Before?

Novelty

Prior Art Invention

Novelty

Prior Art

Invention

Priority dateTime

Inventive Step

Prior Art Invention

Obvious?

Patent

• First to File• First to Invent (U.S.)

Ownership

• Inventor• Employee in the Course of Employment• See US

Patent

• Cost of Prosecution– Official fees– Translation Costs– Agents Fees– Renewal Fees

• Cost of Litigation– 2002 – UK £1million+– Germany € 350 000

Copyright

• Universal• Berne Convention• Universal Copyright Convention• Copyright Designs and Patents Act 1988

Copyright

• Original Literary Artistic– Literary includes software programs

• sound recordings, films or broadcasts • the typographical arrangement of published

editions

Database Rights

• database" means a collection of independent works, data or other materials which -

• (a) are arranged in a systematic or methodical way, and

• (b) are individually accessible by electronic or other means

Copyright v Database

• Copyright Life of Author plus 70• Typographical Arrangement 25 years• Database 15 years

Copyright

• Authorship• Ownership

– Author first owner– Employee in course of employment

• Joint ownership

Confidential Information

• Secret• Substantial• Be received in confidence

Confidential Information

• Trade Secrets: formulae, recipes, production methods, test results, information obtained by research

• Business Secrets: budgets, customer lists, marketing plans

• Personal Information: diaries, photographs, • Professional Information: information supplied to a

solicitor, accountant or other professional advisor in the course of his or her professional duties

Confidential Information

• Damage• Public Domain

Niall Head-RapsonMcDaniel & Co

19 Portland TerraceJesmond

Newcastle NE2 1QQ

0191 281 4000nhr@mcdanielslaw.com