Becoming IP savvy - (well-informed and shrewd)

Led byRichard Stannard

Lao tzu said: a journey of a thousand miles begins with a single step….

But he missed off the most important bit.

…in the right direction.

Even Chinese philosophers are human.

Agenda Introduction• Stage 1 CDA, NDA, Patent• Stage 2 Design right, registered design• Stage 3 Registered trade mark, copyright,

database right,• Stage 4 The eight cardinal rules• Stage 5 Summary

What next?

Stage 1 Introduction

• Questions at the end of each stage• Exploring the different types of IP, IP’s common thread is

newness or novelty• When it is claimed it is a stake in the ground, a deterrent,

throwing down the gauntlet and broadcasting COME NO FURTHER.

• Our focus today: to gain knowledge as we explore so that we are able to exploit IP for our own business advantage and shrewdly step out in the right direction.

Page 1

Here is a list of all the IP there is.

• CDA, NDA • Patent• Design right• Registered design• Registered trade mark• Copyright• Database rightPage 2

.....they are often misunderstood

• If we do not look after our IP rights others can take advantage of our competitive edge.

• Because IP assets cannot be seen or touched it is sometimes hard to appreciate their true value.

• However a basic understanding of the law and its principles will help make sure that we make the most of the mechanisms designed to protect them. together with an understanding of how we can claim strategic advantage, without incurring exorbitant costs.

Page 3

IP

• Protecting our IP is important for our business success. Building a successful business reputation using IP strategies is a large but necessary commitment for most businesses.

• Nevertheless, we should remember that the better we protect our IP, the easier it tends to be to enforce it.

Page 4

• If others try to copy anything you have protected or use them without your permission, it is called infringement.

• Counterfeiters produce fake goods. Piracy involves illegally copying your property. These actions can quickly destroy your markets and goodwill, so it is wise to have enough deterrents in place. But which ones would apply to YOU and how can we use them strategically?

• Claiming IP is an aggressive business step to protect what is legally yours, to allow you to enjoy exclusivity in the market. Trouble is most people can’t see your exclusivity in your intangible asset; therefore they need to be told; Prevention is better than Cure. Let’s roll up our sleeves and begin.

Page 5 Burning questions

Stage 1 CDA, NDA, Patent• CDA Confidential Disclosure Agreement.• NDA Non-Disclosure Agreement of Confidentiality.

There is no set formula for a CDA or NDA. From the short and simple to the long and legalistic, the important thing is to get someone to sign it.

• I prefer a single page, written in plain English that everyone can understand and not be put off.

• Some people definitely won’t sign for legitimate reasons– who are they and why? Then what do we do?

• Case study – Black & Decker Ltd.

Page 6

CDA, NDA

• Need time limits.• Covers sharing new ideas, but nothing already in the

public domain.• Two copies.• Strategically often prior to a patent application• Buys you time, unlike a provisional UK patent which

times-out at twelve months.• Best for trade secrets and know-how.

Page 7

Patent

• Definition • Three vital criteria • Searches• Process of UK application www.ipo.gov.uk • Costs• Timescales• Stats from Institute of Inventors and Patentees• Disputes, hearings and mediations• International strategies

Page 8

Patent case studies

• Pipe Mate• Windsurfer• Black and Decker (Workmate and wallpaper

steamer)• Flymo (leaf blower)• Coca Cola• Burning questions Page 9

Stage 2

• Design right• Registered design

Page 10

Design right• Is an automatic right; free; prevents others from

copying your design. It is not a complete right as it covers only the 3D aspects of the item and does not protect surface decoration or any 2D pattern such as wallpaper or carpet design.

• Lasts for up to 15 years from creating the design.

Page 11

Registered design

• Definition• Vital criteria• Searches• Application process• Costs• International strategies

Page 12

Case studies

• Whale Tankers Ltd• Maxbox Ltd • i360 by Intelligent Touch Ltd• Waitrose sample• Burning questions

Page 13

Stage 3

• Registered trade mark • Copyright • Database right

Page 14

Registered trade mark

• Definition• Vital criteria• Searches• Application process• Costs• International strategies

Page 15

Case studies

• Due diligence, Niagara and Jacuzzi• HOG Parts• Serious Grime Squad• Waitrose samples • ZUMBA

Page 16

ZumbaTM

• The ZUMBA® Trademarks are important business assets of Zumba Fitness, LLC and should be treated with a high-level of care. We rely on our trademarks to identify our products and services and to distinguish them from those of our competitors. As the creators and global leaders in dance fitness programs, DVDs, clothing, and accessories, we take great pride in our products and programs and work relentlessly to improve our performance. We believe that our passion for excellence is unrivalled.

• If Zumba Fitness LLC’s Trademarks became “generic” anyone could use them without concern of a trademark infringement claim. This is because the word or symbol would no longer indicate to the public that the products, or services bearing the ZUMBA® Trademarks originate from one source, namely, Zumba Fitness, LLC.

• We respectfully request that you support our efforts to enforce the ZUMBA® trademarks and take the steps necessary to use them properly. If you have any questions concerning the proper use of the ZUMBA® Trademarks, please feel free to contact us via our support page (topic: Legal compliance).

Burning questions

Copyright

• Copyright is an automatic IP right which relates to the expression of an idea, not the idea itself.

• Vital criteria• Searches• Application process• Costs• International strategies

Page 18

Database right• A database, that is a collection of data or other material that is arranged in such a way so

that the items are individually accessible, may be protected by copyright as a literary work and/or database right. This protection can apply to both paper and electronic databases.

• For copyright protection to apply, the database must have originality in the selection or arrangement of the contents and for database right to apply, there must have been a substantial investment in obtaining, verifying or presenting its contents. It is possible that a database will satisfy both these requirements so that both copyright and database right apply.

• There is no registration for database right - it is an automatic right like copyright and commences as soon as the material that can be protected exists in a recorded form. However, the term of protection under database right is much shorter than under copyright. Database right lasts for 15 years from making but, if published during this time, then the term is 15 years from publication.

• Many databases are a collection of copyright works, such as a database of poetry from the last fifty years where each poem will also be protected by copyright. So people compiling databases need to make sure that they have permission from the copyright owners for use of their material and people using databases need to be aware of the rights of the owners of underlying works as well as database right owners.

Stage 4 The eight cardinal rules• 1 Treat your IP as a business asset with a real financial value.

• 2 Protect your IP as you would any of your other assets.

• 3 Keep a look out for infringers -they can profit from your hard work and reduce your return from it. As a last resort be prepared to

enforce your rights by taking legal action if you can’t sort out a dispute informally. Jaw Jaw is better than War War. (Costs for launching an action).

• 4 Be careful to avoid infringing the IP rights of others. We spoke about Niagara and ORACLE.

Page 20

The eight cardinal rules continued

• 5 Understand the different types of IP and research which ones apply to you and make full use of the IP system at www.ipo.gov.uk

• 6 Get independent, legal, financial and business advice whenever necessary; don’t leave it too late.

• 7 Be prepared to make your IP work for you; remember that you could profit by selling or licensing your IP as well as producing a product or service yourself.

• 8 Don’t forget to use the IP Healthcheck diagnostic tool at www.ipo.gov.uk/phealthcheck

Page 21

Stage 5 Summary - 1

PatentsRegistered trade

marksRegistered

design rights CopyrightTerm

Up to 20 years (subject to annual renewals)

Rights can last for ever (renewals every 10 years) Up to 25 years

Life plus 70 years (broadcast and sound

recording copyright lasts for 50 years,

typographical arrangement for 25 yrs)

ProtectionThroughout the UK Throughout the UK Throughout the UK Throughout the UK

Protects against Your idea being used

sold, or manufacturedThe use of your trade

mark by others without your permission

Your product being manufactured, sold or

imported (RS Components case study)

Your work being copied or reproduced in

communication or performance

What is protected? Inventions

Brand identity, including words, logos and other

signsWhat the product looks

like

Software, training manuals, websites,

music, art, film, literary works and broadcasts

Summary- 2

• Think strategically for competitive advantage to minimise financial risk and maximise opportunities.

Page 23

What next?

Enjoy your journey of a t h o u s a n d miles in the right direction.

• Any more burning questions?

• Thank you for your time.