Developing an IP Strategy
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The document outlines various intellectual property (IP) protection strategies for entrepreneurs, including options like patents, trademarks, and design rights, each with their own advantages and disadvantages. It emphasizes the importance of developing a tailored IP strategy to secure competitive advantages and highlights the need for legal enforcement. Additionally, it discusses relevant legislative resources and professionals who can assist in managing IP affairs.
Developing an IP Strategy
- 1. Jane Lambert Barrister Batley Business Park, Thursday, 11 Oct 2007 How IP can help these three young entrepreneurs
- 2. Developing an IP Strategy
- 4. Options for legal protection: Law of confidence Design Rights Patents Trade Marks Passing off and unfair competition
- 5. Advantages: Arises automatically Costs nothing to acquire Potentially unlimited term of protection No need to publish invention Worldwide reach Disadvantages Protection ceases when secret is in public domain Vulnerable to reverse engineering and industry-wide progress Not easy to enforce Law of Confidence
- 6. Advantages: Unregistered rights arise automatically and cost nothing to acquire Registered designs easy to acquire in EU Grace period for registration in Europe Easy to enforce registered designs Disadvantages Protect appearance but not technology Need to prove copying in the case of unregistered rights Registered rights vulnerable to challenge Not so easy to enforce unregistered ones Design Rights
- 7. Advantages: Confer monopoly of a product or process for up to 20 years Harmonization of patent law throughout Europe and to some extent the world Relatively easy to enforce Disadvantages Difficult to acquire and expensive to maintain and enforce Duty to disclose invention to the world Vulnerable to revocation and circumvention Patents
- 8. Advantages: Confers potentially unlimited monopoly of a sign capable of distinguishing one supplier’s goods or services from all others’ Harmonization of trade marks law throughout Europe and to some extent the world Relatively easy to enforce Disadvantages Protects only brands and not designs or technology Limited to the country or countries of registration Vulnerable to revocation and invalidity Trade Marks
- 9. Advantages: Comes into being automatically when circumstances arise Protects signs that cannot be registered as trade marks Worldwide reach Disadvantages Protects only established businesses Difficult and sometimes expensive to enforce Passing off or Unfair Competition
- 11. Options for Legal Protection Trade Mark Registration Design Registration Unregistered design rights Copyright Passing off
- 13. Trade marks for brand Artistic copyright and perhaps design registration for website design Confidentiality for source code, customer data, know-how, show-how Database right for databases Literary copyright for programs
- 14. Developing an IP Strategy
- 15. Patents cost money Most patents never worked Few patents cover their costs Even fewer make money for their owners Pointless unless they can be enforced by legal action So why bother?
- 16. Looks good on the CV? Peer group pressure? Condition of public funding? Condition for securing investment? Need the monopoly to secure a return on investment? Only the last is a good reason for incurring the expense of applying for and maintaining a patent
- 17. Intellectual assets such as brands, designs, inventions and creative works should exist for business – not the other way round Such assets confer competitive advantage Intellectual property entrenches that advantage Intellectual property is worthless unless it can be enforced by legal action Resources are not unlimited Need to prioritize
- 18. What are the company’s competitive advantages? What are the main threats to those advantages? What legal protection is available for those competitive advantages? How can such protection be enforced?
- 19. Criminal liability for piracy and counterfeiting Collecting societies for certain types of copyright, rights in performances and other rights Civil litigation
- 20. IP protection should be tailored to company’s needs and resources Main markets should be covered first Main risks in each market should be addressed Insurance should be taken out to fund enforcement
- 21. Patent protection in Europe, Japan, USA, China and Korea in that order for Brenda Community trade marks and design registration for Harry No registered right protection would be cost effective for Wally IP Insurance should be sought for all of them
- 22. Developing an IP Strategy
- 23. Legislation - consolidated patents, designs, trade marks, copyright statutes UK-IPO website Legislation - consolidated patents, designs, trade marks rules and other secondary legislation UK-IPO website Legislation – European Patent Convention protocols, and implementing regulations EPO website Legislation - Community Trade Marks and Designs Regulations OHIM website
- 24. Case La w – transcripts of judgments of European Court of Justice and all UK and Irish courts BAILII website Case Law – transcripts of decisions of UK-IPO hearing officers UK-IPO website Case La w – transcripts of decisions of EPO boards of appeal EPO website Case Law – transcripts of decisions of OHIM boards of appeal OHIM website
- 25. Treaties and Conventions – Paris, Berne, Rome, PCT and Madrid Protocols WIPO website Treaties and Conventions – TRIPs and other WTO agreements WTO website
- 26. Domain Names – UDRP and other legal instruments ICANN website Domain Names – transcripts of gTLD decisions WIPO website Domain Names – DRS Policy and transcripts of .uk ccTLD decisions Nominet website
- 27. Prior Art: esp@cenet – searchable patents database accessible through UK-IPO website Trade Marks: searchable database of UK, Community and international registrations UK-IPO website Designs: searchable database of UK registrations UK-IPO website Designs: searchable database of Community designs OHIM website
- 28. Searches: Patent Libraries at Leeds, Sheffield and Manchester Central Libraries Trade Mark and Design Searches: UK – IPO (£80 + VAT for trade marks and c£350 + VAT for designs) Individual Patent and Trade Mark Agents: fees vary from firm to firm and search to search
- 29. Inventors Clubs: Leeds, Sheffield, Manchester and Liverpool Central Libraries Patent Clinics: Leeds, Sheffield, Manchester and Liverpool Central Libraries IP Clinics: Bradford, Halifax and Huddersfield at Velocity, Gumption, Elsie Whitely and Media Centres n ip c ®
- 30. Developing an IP Strategy
- 31. Horses for Courses Patent Counsel: advice on difficult points of law, complex drafting and representation before Patents Court, Patents County Court, IP Lists of Chancery Division and Leeds, Manchester, Liverpool, Newcastle, Birmingham, Bristol, Cardiff and Central London County Courts, UK-IPO, EPO, arbitrators, mediators and other tribunals
- 32. Patent Agents: applications for patents, trade marks, designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases Trade Mark Agents : applications for trade marks and designs, general advice on IP and technology law, drafting and representation before hearing officers in routine cases
- 33. IP Solicitors: Manage clients’ legal affairs including conducting litigation, negotiating and drafting licence agreements, assignments and other instruments and representation before judges in chambers, masters, district judges and in some cases trial judges and appellate tribunals
- 34. Each profession has its own strengths and limitations as do individual members of those professions Bmedi@ panel of professional advisors
- 35. Media Centre, 7 Northumberland Street, Huddersfield, HD1 1RL T 0870 990 5081 F 0870 990 5082 E jane.lambert@nipclaw.com
Editor's Notes
- #2: Let me introduce you to three young local entrepreneurs at a networking event: Brenda from Bradford who has just completed her doctoral thesis in automotive engineering Harry from Huddersfield who studied fashion design at art school and now has a formidable reputation as a designer of ladies’ fashion accessories with one of the best known fashion houses in London; and Wally from Wakefield who has a talent for marketing. Each of those young entrepreneurs has a project which he or she wants to develop into a business for which they seek your help: Brenda has invented a fuel economy device which can be fitted to just about any vehicle which she is keen to market; Harry wants to open his first boutique in his home town where he will sell his own range of belts, handbags, scarves and other accessories; and Wally has an idea for a web based motor mart using specially developed innovative e-commerce software. You are impressed with their ideas, drive and vision and you want to help them but you know that if their projects are successful it will not be long before others come into the market to challenge them.