Patent and Trade Mark Attorneys

Being Proactive in Protecting Your Business

Emma JohnsonAssociate

Introduction

• What is intellectual property, and why should it be protected?

• An overview of the different types of Intellectual Property (IP) right

• Steps you can take to protect your rights

Intellectual Property (IP)

What is it?

• Virtually anything that is the product

of creative thought

For examples:

• Designs

• Photographs & Pictures

• Trade marks

• Text

• Inventions

®

Why should we protect our IP?

• It costs you something to create it

• It has a value to your business

• That value can be reduced if it is misused

Ask yourself:

“Would I be annoyed if someone else used my photographs,

website text, designs, brand names?”

Yes?

You need to protect the IP concerned

Main Forms of IP protection

• Copyright• Design right• Registered designs• Registered trade marks• Patents

Copyright

Copyright

• Covers:

– Written works,

– Artistic creations, such as paintings,

– Photographs,

– Music, including lyrics,

– Broadcasts and films,

– Spoken word and performances,

– Computer programs and databases,

– And more…

©

Copyright

• Automatically created when the picture is taken, text written,

etc.

• No need to register copyright in the UK

• The work needs to be original

• Generally lasts for the life of the creator plus 70 years

• Only infringed by copying

• Need good records of creation to enforce

Copyright – who owns it?

• The creator is the first owner, unless

– the work is created by an employee in the course of their

employment – then the first owner is the employer

• IMPORTANT:

If you commission someone to create copyright works you

should obtain a written assignment of the copyright

Designs

Design Right (Unregistered designs)

• Covers the shape or configuration of industrially produced

items

• There are some exceptions:

– 2-dimensional patterns

– Designs which are ordinary or “commonplace”

– Features which must have a certain appearance in order

to fit another part or which must match another part

• Comes into existence automatically – does not have to be

registered

• Life span max 15 years

Design Right (Unregistered designs)

• Only infringed by copying

• Need good records of creation to enforce

• Creator is the first owner, unless:

– The design is created as part of employment, in which

case the employer is first owner, or

– The design is created as a result of a commission – then

commissioner is owner

Registered Designs

• Need to apply for protection

– generally within 1 year of publishing the design

– before disclosure out of confidence if you want protection

in some countries outside of Europe

• Need to file application which includes “representations”, i.e.

drawings or photographs of the design

• Protects what a product looks like

Registered Designs - advantages

• Can protect 2-dimensional designs, e.g. patterns, as well as

3D designs

• Last up to 25 years if renewal fees paid every 5 years

• Infringed by making something that looks the same or very

similar – no need for copying

• Can be complementary to patent protection

Patents

Patents

• Protect inventions

– e.g. a product, or how it is made, or how it works

• The invention needs to fulfil the patentability criteria

• Lasts for up to 20 years if annual renewal fees paid

• Infringed by anyone who uses the patented invention, in the

relevant territory, without permission

• Person entitled to apply is the inventor, unless an invention is

made in the course of employment when it is the employer

• Again beware if you commission a development

Is a patent the right form of protection?

• YES, if you want to:

– protect a market and keep competitors out

– use as a bargaining tool

– irritate a competitor

• NO, if:

– Obtaining patent protection will not be cost-effective

– for example your product will have a short life

– Your proposal is already known

Confidentiality

• Avoid disclosure before filing a patent

application, if possible

• If the invention must be disclosed:

− the disclosure should be minimal

− must be made in confidence

(preferably only after signing a

confidentiality agreement)

Trade Marks

Trade Marks

• Protect your trade mark (word, logo, scent,

jingle, slogan, etc.)

• Trade marks should be distinctive and not

descriptive of the goods or services you

intend to provide

• Can be very valuable

Types of trade marks

®

KODAK

Registered Trade Marks

• Easier to enforce than unregistered

rights

• Can last indefinitely

• Infringed by the use of the same or

similar mark used in connection with the

same or similar goods/services

• Renewal fees (payable every 10 years

in most territories)

®

A real life example…

Apple and iPhone are

registered trade marks

The software which

makes the phone work, the user manuals and

promotional materials are

protected by copyright

The appearance of the

phone is protected by

registered designs

The technical features of

the phone are protected by a multitude of patents

Thank you for your attention

ejohnson@forresters.co.uk

More Information

Where to find us…

• Forresters Patent & Trade Mark Attorneys

www.forresters.co.uk

Other useful links

• UK Intellectual Property Office

www.ipo.gov.uk

• Chartered Institute of Patent Attorneys (CIPA)

www.cipa.org.uk

• Institute of Trade Mark Attorneys (ITMA)

www.itma.org.uk

• Business Insight/Creative Insight – Birmingham Central

Library

http://www.birmingham.gov.uk/businessinsight