ExploreExport 2014 - Safeguarding Your Intellectual Assets

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ExploreExport

2014

Murrayfield Stadium

Edinburgh

Monday, 10 November 2014


Safeguarding Your

Intellectual Assets


Martin Layton

Intellectual Assets Specialist

Scottish Enterprise

&

Catherine Potts

Intellectual Assets Specialist

Scottish Enterprise


THE INTANGIBLES

INTELLECTUAL ASSETS INTELLECTUAL PROPERTY KNOW HOW BRANDS GOODWILL REPUTATION TRADE SECRETS CUSTOMERS DATABASES BUSINESS PROCESSES RELATIONSHIP MANAGEMENT

INTELLECTUAL PROPERTY PATENTS COPYRIGHT TRADEMARKS DESIGN RIGHTS PLANT VARIETY RIGHTS


WHAT VALUE IS INTANGIBLE


IA MANAGEMENT PROCESS

STEP 1 IDENTIFY

STEP 2 PROTECT

STEP 3 PACKAGE

STEP 4 VALUE

STEP 5 COMMERCIALISE


INTELLECTUAL PROPERTY

TRADEMARKS

COPYRIGHT

PATENTS

REGISTERED DESIGN RIGHTS


REGISTERED AND UNREGISTERED TRADEMARKS

A trade mark is a sign which can distinguish your goods and services from those of your competitors

It can be words, logos or a combination of both

An unregistered trademark can be defended under the law of “passing off”

A registered trademark is an asset which may be sold or licensed

Trademarks assist businesses to mark and protect their territorial rights


COPYRIGHT

Covers literary works, training manuals, musical works, typographical

arrangements, recordings, broadcasts, photographs, logos and designs

The work must be recorded in writing, or otherwise

It may be marked © 2010 Intellectual Assets Team

In the UK it is an automatic right requiring no registration

It has a type dependent life span

Copyright is an asset which may be sold or licensed


COPYRIGHT INFRINGEMENT

Artist Tori LaConsay takes on H&M


PATENTS

Must be new and have an inventive step that is not obvious to someone with

knowledge and experience in the subject

Must be capable of being made or used in some kind of industry

Last for 20 years

Are sounding even more attractive due to the introduction of Patent Box tax

advantage

A patent is an asset which may be sold or licensed


PATENTS

Manufacturing process Protected By 650 Patents

Chemical Expansion Process Maintained As

Trade Secret

All Employees And Producers Signed Nda’s

69 Trademarks Registered

32 Registered Designs


REGISTERED DESIGNS

A Registered Design is a legal right which protects the overall visual

appearance of a product or a part of a product in the country or

countries you register it.

For its registration to be valid, a design must be new and have

individual character

A Registered Design is an asset which may be sold or licensed


REGISTERED DESIGNS

CAMBRIDGE

SATCHEL

COMPANY ZATCHELS

v


INTERNATIONAL CHALLENGES

Recipe protected by Trade Secret

Bottle protected by Registered Design

Name protected by 32 Registered Trademarks

…Businessinvest Group in Russia launched a

phenomenal challenge in August 2012

http://www.google.co.uk/imgres?imgurl=http://www.agbarr.co.uk/images/Irn_Bru_500ml_FS.jpg&imgrefurl=http://www.agbarr.co.uk/ces_brands.nsf/brands/brands-irn-bru..html&usg=__1RY3YFTfgMKJjiJTBplbZ2FwYIk=&h=519&w=597&sz=64&hl=en&start=3&sig2=BafkPBeAfW2rWnLGqgCiNQ&zoom=1&tbnid=YotrB2Ai_jiWlM:&tbnh=117&tbnw=135&ei=rtIkUfK2KdSZ0QWOkYCQDw&prev=/search%3Fq%3DIRN%2BBRU%26um%3D1%26hl%3Den%26sa%3DN%26gbv%3D2%26tbm%3Disch&um=1&itbs=1&sa=X&ved=0CC4QrQMwAg


COMMON MISTAKES WITH IA

•Completely overlooking IA entirely

•Focusing on one particular aspect e.g. patents

•Inadequate recording of processes and know-how

•Disclosure and failure to safeguard/protect

•Insufficient clearance searches

•The assumption that just because an organisation has paid for something that

it owns all the rights associated with it


WHAT WE DO

LICENSING

BRANDING

VALUATION

PROTECTION

COLLABORATION

STRATEGY

Assisting clients to frame a license agreement

Building and strengthening brands in both UK and Global markets

Aiding in the valuation of IP for investment purposes

Developing an IP strategy to ensure optimum protection

Supporting clients in protecting and realising their assets in collaboration

Supporting the development of a robust IP strategy


THE TEAM

Alison Butchart T: 0141 951 3060 E: [email protected]

David Hughes T: 0141 951 3072 E: [email protected]

Martin Layton T: 0141 951 3099 E: [email protected]

Conall McGinley T: 0141 951 3046 E: [email protected]

Catherine Potts T: 0141 951 3032 E: [email protected]

Stuart Watson T: 0141 951 3091 E: [email protected]

Ewen Macaulay T: 01463 244226 E: [email protected]

Team email: [email protected]

mailto:[email protected]









WIDER SOURCES OF SUPPORT AND ADVICE

• The UK Intellectual Property Office

• Bright Idea Scotland

• Professional Patent and Trade Mark Attorneys (Represented today by

Lincoln IP)


UK INTELLECTUAL PROPERTY OFFICE

• Tasked to help stimulate innovation and raise the international competitiveness

of British industry through Intellectual Property Rights (IPR)

• Baseline Survey Identified that:

Only 11% of UK businesses know that disclosure of an invention before

filing will invalidate a patent

74% of UK businesses could not correctly identify the owner of copyright

when using a subcontractor

Only 4% of UK businesses have an Intellectual Property policy

IP Resources and Information available at GOV.UK website:

https://www.gov.uk/government/organisations/intellectual-property-office


•A free, interactive e-learning tool, 4 short Modules

•Helping advisors increase their knowledge in identifying IP assets

•IPO certification on completion

•A basic overview of IP at your fingertips at anytime

•Portable pocket solution to help top up your IP knowledge

•Download from the Apple store iTunes & the Android app store

•Free and confidential online diagnosis tool

•Help your business grow through Licensing, Exploiting & Franchising

•Identifying and adding value to your IP assets

•A series of free business guides to understanding IP

•Explaining the different types of IP rights & how to protect them

•A great starting point for those beginning their IP journey

•Accredited interactive course with in depth training on IP

•Available in person and online (coming soon)

•Study Guides and downloads


Nikolaus Sennhauser

Project Manager

Bright Idea Scotland

Telephone Number - 0845 601 3007 [email protected] www.brightideascotland.com @BrightIdeaScot

UKTI Explore Export Edinburgh, 10 November 2014

Bright Idea Scotland

Who?

• Early stage ideas

• Inventors, students, small businesses, sole traders,…

• Scotland based

What?

Graduated service

• Website/ Inventor’s Checklist

• Idea evaluation

• Workshops

• Surgery sessions

• 1-2-1 support

Commercial Opportunity

Funded by

Photo: Money – Black and White by @Doug88888 on flickr.com

…..but I want to export!

Early stage idea

Entering new market

Who are the key competitors?

Who is the customer?

What’s the problem for which my product is the solution? What’s the best business

model?

Does my team have the capacity? How to protect my IP?

Workshop Themes Outcomes

Workshop 1 So you think you have idea?

1 The Idea 2 The Problem 3 Intellectual Property (IP)

• Effectively describe your idea to a range of different people

• Justify there is a market for the solution you offer

• Build an IP plan/ strategy

Workshop 2 So you think you have a commercial opportunity?

4 The Customer 5 The Competitive Environment 6 The Market Approach

• Understand who your customers will be • Position your offering to fit customer needs • Explain how you see your offering being sold

to the end user

Workshop 3 So you think you can turn your idea into a business?

7 Resource Gap 8 The People 9 The competitive edge 10 The pitch

• Identify key resources you will require • Demonstrate that your capacity to move

forward • Develop a range of pitches to those who can

assist the next steps • Produce a forward plan

Bright Idea Scotland Programme

Assessing Commercial ‘Readiness’

Explore Evaluate Engage Execute

Commercial Success

New Ideas/ New Products

Customer Problem

Market Opportunity

Product Readiness

Path To Market

Business Model

Awareness of

IP Advice

• General non-legal advice

• Focus on commercial opportunity

IP for commercial benefit: Not just for the sake of it.

£

www.brightideascotland.com

[email protected]

@BrightIdeaScot

0845 601 3007


David Fulton

Director & Patent Attorney

Lincoln IP

2014 lincoln ip limited

UK & European Patent and Trade Mark Attorneys | David Fulton |

10 November 2014

Services

Patent, trade mark and design filing and prosecution

Patent and trade mark searching and opinions

Copyright assistance

Freedom to operate and non-infringement advice

International assignment recordal programmes

IP due diligence

Litigation support


“Top Tips” for Exporters 1

Consider IP issues while planning your export strategy since:

• IP is an influencing factor in many of the other issues you

will already be considering;

• IP will strengthen your position within your export markets;

• IP can provide access to new markets through licensing,

franchising etc; and

• Failure to consider IP issues may result in expensive and

time consuming infringement actions.



Seek professional advice as early in the process as possible.

IP protection is NOT universal.

IP laws and procedures differ between territories.

Securing IP rights does not indemnify you from infringing the IP

rights of others.

Search IP databases in your major markets before filing any

applications.

No public disclosure of an invention before a patent application

is filed.



Take advantage of regional or international IP filing systems.

Be aware of all the costs involved e.g. filing, prosecution, grant

and maintenance fees.

Consider language issues e.g. increased costs, undesired

connotations for trade marks.

Ensure ownership rights are clearly defined i.e. with

commissioned works, outsourced manufacturers and local

agents.

Ensure prosecution, maintenance and infringement

responsibilities are clearly defined.


Contacts

David Fulton [email protected]

Matthew Lincoln [email protected]

Stephen Walker [email protected]

Karen Veitch [email protected]

Paul O’Hagan [email protected]

www.lincoln-ip.com

2 West Regent, Street, Glasgow, G2 1RW 0141 299 3123

9 Victoria Street, Aberdeen, AB10 1XB 01224 433123

















http://www.lincoln-ip.com/




Q & A

Panel Session


Book an appointment with an Export Advisor to get you started.

Email: [email protected]

Telephone: 0800 0191 953

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End of seminar

Thank you!

Education

ExploreExport 2014 - Safeguarding Your Intellectual Assets