Intellectual Property

28 June 2010
Dr Maureen Kinsler

Types of Intellectual Property

Unregistered Rights copyright and unregistered design right

Registered Rights patents, trade marks and registered designs

Types of Intellectual Property

Products may be covered by several different types of intellectual property

Copyright Copyright - the right to prevent copying Automatic on creation of an original work Copyright may subsist in original artistic works, musical works, literature, computer programs etc Copyright subsists in the expression of an idea, but cannot be used to protect an idea in itself Duration life of the author plus 70 years

Copyright Advantage dont have to pay to register copyright and has effect in many different countries, including all of Europe and the USA

Disadvantage to enforce copyright against a third party have to prove they copied an original work

Unregistered Design Right Design right resides in original, non-commonplace designs of the shape or configuration of products No design right in 2-D designs, such as patterns on wallpaper or textiles No design right in must-fit or must match features

Duration - 10 years after first marketing products made to the design, subject to an overall limit of 15 years from creation of the design

Unregistered Design Right Advantage dont have to pay to register design, and effective in most European countries (but NOT in the USA)

Disadvantage to enforce design right against a third party have to prove they copied an original work (i.e. same as for copyright)

Registered Designs Protection for the appearance of an article in particular, the shape and/or configuration and/or pattern Design must be new and have individual character Registered system have to file a design application in the country in which you want protection

Duration maximum of 25 years, subject to payment of renewal fees every 5 years

Registered Design

Design Registration No 3001664

Registered Designs

Advantages

strong protection dont have to prove copying to enforce rights

relatively cheap and simple to gain registration in the UK Disadvantage territorial (i.e. UK registered design only has effect in UK etc)

Trade Marks A badge of origin, so that customers can recognise the product of a particular trader Must be distinctive for the goods or services which you are applying to register it for, and not similar or identical to any earlier marks for the same or similar goods or services Registered system have to file a trade mark application in the country in which you want protection Duration unlimited, provided mark is used and renewal fees are paid

Trade Marks

Trade Marks Advantages - dont have to prove copying to enforce rights - can be relatively simple to gain registration in the UK - potentially unlimited duration Disadvantage territorial: UK registered trade mark only has effect in UK etc

How much is a brand worth?

1. Google 2. Microsoft 3. Coca-Cola 4. IBM 5. McDonalds 6. Apple 7. China Mobile 8. GE 9. Vodaphone 10.Marlboro 21. Tesco 54. Ebay 95. Ikea $100bn $76bn $67bn $66bn $66bn $63bn $61bn $59bn $53bn $49bn $23bn $13bn 7bn

Patents Protection for technical innovations, i.e. inventions No definition of invention but exclusions to patentability include methods of medical treatment, methods for playing games and computer programs To be patentable, an invention must be new and inventive, i.e. not obvious Registered system have to file a patent application in the country in which you want protection Duration - max of 20 years, subject to payment of annual renewal fees

Patents

Patents Advantages dont have to prove copying to enforce rights Disadvantages can be expensive examination procedure generally slow protection territorial (i.e. UK patent only has effect in UK etc)

Patents some figures Patent Revenue: Qualcomm = $2B/year licensing CDMA patents (89% margins) IBM = $1.5-2B/year Philips Electronics = $570M/Year (100% of earnings for Consumer Electronics Business) Thomson = $390M/year (75% of total earnings) Source - Deliotte & Touche

How to use IP Assignment Spin-out companies Licences Royalty One off payment Milestone payments Combination of the above

Links/further information
www.marks-clerk.com www.patent.gov.uk

http://gb.espacenet.com
www.uspto.gov www.european-patent-office.org www.cipa.org.uk www.itma.org.uk www.insidecareers.co.uk

LLP

Dr Maureen Kinsler Marks & Clerk LLP Atholl Exchange, 6 Canning Street, Edinburgh EH3 8EG T: 0131 221 7000 E: mkinsler@marks-clerk.com www.marks-clerk.com