Transcript Tralee Institute of Technology IP Seminar 3rd October 2008

University of Limerick
25th March 2009
Intellectual Property Seminar
Michael Lucey
[email protected]
www.purdylucey.com
Types of Intellectual Property Rights
– Trade Marks
– Designs
– Copyright
– Patents
– Know-how + Confidential information
– Database Rights
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What’s a Trade Mark ?
• Any sign which distinguishes your goods or
services from those of others
• a guarantee of source and of quality to your
customers/prospective customers
• operates as a “badge of origin” for your
goods/services
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• Most commonly:
– A word, or words (text)
– A logo or picture
– A combination of the above
• Also can be:
– A slogan
– A shape or shapes
– Packaging
– A smell, a colour or a sound
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You have chosen a Trade Mark
Issues to consider:
1. Are you free to use the mark ?
(searches)
2. Register it ! (why ?)
3. Where should you register (protect) the
trade mark ? What countries ?
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1. Are you free to use the mark ?
• Searches of the trade mark registers in the country
(or countries) where you intend to use the mark
• Searching is not mandatory, but highly advisable. You
take the risk.
• Purpose of searching is to find any ‘earlier rights’
covering your field (identical/similar marks covering
identical/similar goods/services)
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Consequences of Trade Mark infringement
Can be severe
– An injunction against your use of the mark
– Pay damages (compensation) to complainant
– Delivery up and/or destruction of materials
– Account of profits to the complainant
– Pay legal costs (both sides)
– Lose your financial investment and goodwill
• Not knowing is not a defence …
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2. Why register your TM ?
A. To protect a startup name or brand
- You can file an application before you start using a trade
mark. This will block later applications.
B. To get a strong legal property right in your name or
brand
- Exclusivity
- TM registration renewable every 10 years - infinite
- The registration can be licensed, transferred or used as
security
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C. A return on your financial investment
- Your TM registration may become a valuable asset
D. To get enforcement rights to stop others using your
mark or a confusingly similar mark
- Your registration gives you strong registration rights to
prevent use of an identical mark or a confusingly
similar mark (in respect of same or similar goods or
services)
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3. Where to protect your TM
• Priority System – file first application (e.g. IRL/CTM)
and have up to 6 months to file other(s) without losing
filing date
• You should register the mark in the country/countries
where you intend to use it e.g. Irish/UK/US national
tm application(s)…etc
-> Community Trade Mark -> can file single
application to cover all EU states (15+10 =25)
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Marking issues
• When TM registered, advisable for owner to mark goods
or materials to assert the registration
• Can use the words “a Registered Trade Mark of…” or the
symbol “®”
• If TM application still pending, or unregistered just use
“™” or the words “a Trade Mark of…”
• NB: offence to use “Registered” or “®” if not registered…
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What is a 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
and/ or materials of the product itself
• And/ or its ornamentation
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What products are protectable?
• Product means:
• Any industrial or handicraft item
• Including parts intending to be asembled into
a complex product, packaging, get-up, graphic
symbols & typographic typefaces
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Requirements for Protection
Novelty
No identical design made available to the public
before the filing date/priority date
Individual Character
If overall impression produced on the informed user
differs from the overall impression produced by any
design which has been made available to the public
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Unregistered Community Design
•
•
•
•
Same requirements as for a Registered Design
No registration Process
3 Years Only – big disadvantage
Right to prevent third party from using design
if the contested use results from copying the
protected design
• Must prove design was copied
• Karen Millen Ltd. -v- Dunnes Stores & Anor
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Should I keep my design secret?
• It is very important not to disclose a design to the
public before you are ready to commercialise it –
• Why?
• 1. Once a design is made available to the public, the
unregistered design right automatically applies for 3
years from the date of making it available
• 2. Designs that are disclosed more than one year
before making an application for registration are not
considered ‘new’ and are therefore liable to be
invalidated
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Copyright
• Protects original works which have been recorded in
some form against copying. Protects the expression
of an idea not the idea itself.
• Must be Original
• Low threshold to create copyright –automatically
subsists once created
• Ownership – Author – careful !
• Duration – 70 years from end of calendar year in
which author dies
• Marking ‘C with a Circle’ ©- Date and Owners Name
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Items Protected
•
•
•
•
•
Computer graphics/codes/databases
Printed graphics
Literary works
Musical works
Artistic works – including mechanical
drawings
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What is a Patent ?
• A patent is a monopoly right conferred by the
government giving the patent holder the right to
stop others making, using or selling an invention.
• Statutory Protection
• 20 Years term, normally
• Novelty
• Inventive step
• Industrial Application
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What types of Patents exist ?
• All areas of Technology,
• Pharmaceutical, Engineering – all types,
Software, Bio-technology, Business
methods (?),
• Apparatus or System
• Process or Method
• Use
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What to patent?
• Anything technical representing an advantage in an
area of interest (Keep competitors out).
• Anything technical outside the core area of interest
(Potentially saleable to others).
• Developments which provide real benefits with
potential to generate licensing income.
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What is Novelty and Inventive Step ?
Novelty : An invention shall be considered to be new
if it does not form part of the state of the art
Inventive Step : An invention involves an inventive
step if, having regard to the state of the art, it is not
obvious to a person skilled in the art
NB State of the art = Everything made available to the public before the
date of filing of the patent application – Must file patent application
before any disclosure, other wise invention will not be Novel !
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Novelty V Inventive Step
Novelty
Invention = A + B
Prior Doc 1 = A
Prior Doc 2 = A + B
Inventive Step
Invention = A + B + C
Prior Doc 1 = A + B
Prior Doc 2 = C
Therefore, Invention is
novel over Doc 1 but not
novel over Doc2
Is it inventive (obvious)
to combine Doc1 and
Doc2 to arrive at claim ?
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General Patent Filing Strategy
Initial Filing (Priority Date)
t=0months
International (PCT) Filing
t=12months
National Filings
t=30months
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USEFUL INTERNET RESOURCES
• Searchable patent databases
EPO - http://ep.espacenet.com/
USPTO - http://www.uspto.gov/patft/index.html
PCT - http://pctgazette.wipo.int/
• Full Search List available from:
http://www.purdylucey.com/searching_ip.php
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Example Front Page of PCT
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Ownership
• Applicant generally is owner
• Applicant V Inventor
• Contract of Employment –UK/Ireland
employer = owner of invention
• Assignment should normally be executed
• Can be assigned/sold/licensed by owner
• US –special situation
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Licensing
• Permission to do something that, without the
licence, would be an infringement of IP
• Person granting License is Licensor
• Person receiving License is Licensee
• Territorial
• Complex legal document
• WARNING – Do not negotiate your own
Licence – get legal advice!
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Exercise to Identify IP
•
You are an inventor/designer and have recently developed a novel kite. The shape of the kite ensures that it
is much greater lift than conventional kites. In fact the shape of the kite, with the special winged tips you
have developed, allows for better flight than all other known kites.
•
You have designed the kite having a number of distinctive colours with four individual different colour
strips that will appeal to children. You believe children will be your main market. You have set up a
company to market the kite and have come up with the name STEALTH – KITE to sell the kite under.
•
You hope to go to a trade show next month to display and demonstrate your new kite. You have also
prepared some marketing literature that you intend to hand out at the trade show.
•
You have not discussed or shown the new kite to anyone to date.
•
Question
•
Identify what Intellectual Property rights that could be protected and the steps you would take to protect
your Intellectual Property ?
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The Capel Building,
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Dublin 7,
Ireland.
Phone: 01 888 0862
Fax: 01 888 0865
Email: [email protected]
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