INTELLECTUAL PROPERTY AND YOUR RIGHTS Helen Johnstone Seminar 12 July 2006 EAST MIDLANDS INTERNATIONAL TRADE ASSOCIATION
Dec 26, 2015
INTELLECTUAL PROPERTY AND YOUR RIGHTS
Helen Johnstone
Seminar
12 July 2006
EAST MIDLANDS INTERNATIONAL TRADE ASSOCIATION
Intellectual Property Practitioners
• Registered Patent Agents– Chartered Patent Agent (CPA)
practise before UK Patent Office– European Patent Attorney (EPA)
practise before European Patent Office
• Registered Trade Mark Agents
Eric Potter Clarkson LLPPatent Agents• electronics
• electrical engineering
• computer technology
• software
• mechanical engineering
• textiles
• materials science
• biotechnology
• chemistry
Outline
• Obtaining intellectual property rights
• Types of rights available
• Extending protection to other countries
• Deciding where to obtain rights
Obtaining Intellectual Property Rights
• Keep confidential - initially
• Identify possible new aspects of inventions
• Seek protection in home country first (usually)
Patents: What Are They?
• a bargain between the inventor and the state– in return for disclosure of the invention, grant of a
limited period monopoly
• last for twenty years– extensions for some pharmaceuticals
• aim to increase the pool of technical knowledge
Patents: What Rights Do You Get?
• exclude all third parties from commercial exploitation– product
making, selling, offering for sale, using or
importing the product– process
using the process or offering it for use– products made by process
selling, offering for sale, using or importing
Novelty
• not forming part of the “prior art”– prior art
all publicly available knowledge making up the
state of the art
measured at the date of filing or priority of the
patent application
Inventive Step
• judge against “person skilled in the art” - but “unimaginative”
• any lateral thinking?
• overcome a technical prejudice or a particular technical difficulty?
• unexpected result?
• synergistic effect?
• application of a principle from a different technical field?
Exceptions to Patentability (Generally of Academic, Literary or Artistic Character)
• discovery, scientific theory or mathematical method• literary, dramatic, musical or artistic work, aesthetic
creation• scheme, rule or method for:
– performing a mental act– playing a game– doing business
• program for a computer• presentation of information
Patents: How Do You Get Them?
• See your patent attorney!
• identify what aspect(s) of the new product or process might be patentable
• draft patent specification
• lodge with patent office to get filing (priority) date
• Maintain confidentiality
The Patent Specification
• description– sufficient detail to work/make the invention
– at least one working arrangement
preferably more if principle is widely applicable
• claims– a legal definition of the monopoly
• abstract
• drawings
The Application Procedure• 0
• 0-12
• 18
• 24
• 30-54
• <54
• 48+
file the application
request search
publication
request examination
argue the case / amend
grant (hopefully)
annual maintenance fees
When to File
• MUST be before any public disclosure
• MUST be before your competitors!
• after sufficient development to allow a proper description
• consider publication date
• consider patent expiry date
Registered Designs
• “shape, configuration, pattern, ornamentation, texture”
• exclude:– method or principle of construction
– features dictated solely by technical function
– must fit
– part of complex product
A Comparison of Rights (1)
• Patents– cover the
functional principles of an invention rather than “specific embodiments”
– how something works rather than its exact physical form
• Registered Designs– cover the
appearance of an article rather than its function
– individual character
A Comparison of Rights (2)
• UK Unregistered Design Right– original– shape and
configuration– automatically
acquire upon creation of the design
– no registration required
• Copyright– original literary,
dramatic, musical or artistic works
– sound recordings, films, broadcasts, cable programs
– typographical arrangements
Extending Protection to Other Countries
• first file in UK (usually)
• Paris Convention– use UK filing date as “priority date” for later foreign
filings
– equivalent to “backdating” of foreign applications
– priority period up to one year
Extending Protection to Other Countries
• individual national applications
• single international application “PCT”
• regional patents
National Patents
• costs are front-end loaded– translations must be prepared up front
– local filing fees and attorney costs
• extensive paperwork– assignments
– powers of attorney
– priority claims
PCT (International) Application
• file a single application– provisionally covers - over 100 countries
• file and prosecute in English
• international search• international examination (optional)
• lodge application in each country
• separate national patents granted
PCT (International) Application
• much lower up-front cost if pursuing more than three or four countries
• can defer national applications for up to 30 months
• some prosecution work need not be repeated for each patent office
Regional Patents
• Europe, former USSR, Africa, Gulf countries
• European Patent Convention– 31 countries
– includes all EU member states except Malta
– single application, search, examination and grant
– must then be registered in each country
– resulting separate patents are “national”
Where to Obtain Rights
• Must be based on business strategy
• Where are manufacturers based?
• Where are main markets?