Frequently Asked Questions on Intellectual Property Protection
1. Are intellectual property assets?
Without a doubt, intellectual property (IP) is one of the most important assets that a company will own. IP can be licensed, bought, sold, hired or mortgaged like any other form of property. One of the main sources of IP is from the results of research and development work. In order for companies and individuals to maintain the value of their IP, they must ensure a sufficient level of protection and safeguard against infringing a third party s IP, writes Dr Rosanna Cooper.
2. What are intellectual property rights (IPRs)?
Intellectual property right is the right to use intellectual property. IPRs fall within two main categories, registered
...into play. The increasingly complex area of computer law is exceedingly demanding in its educational requirements for attorneys who practice in this niche. The term "computer law" is kind of a misnomer since it is really the information on the ...
3. How to obtain a UK patent?
Patents protect inventions such as processes and products. Patents in the UK are obtained by filing an application with the UK Patent Office. On examination of the application, the Patent Office determines whether a patent should be granted. The application goes through various stages and can take up to four years before it is granted, although under the UK system, the process can be expedited.
Should patent searches be carried out?
It is always worthwhile to carry out relevant patent searches to establish the risk
...to keep track of who is performing it in every corner of the earth? The idea is ludicrous, and the patent is not really enforceable. Yoga is a complex subject and some people are still trying to grasp what Yoga ...
4. What is the test for patentability?
To be patentable, an invention must satisfy each of the following conditions:
It must be novel (i.e. not made or used anywhere in the world before the filing of the patent application);
It must involve an inventive step (i.e. it cannot be an obvious step);
It must be capable of industrial application( all industries apply); and
It cannot fall within an excluded category i.e. a discovery, a literary work or mathematical model.
5. What is the priority date?
On the filing of a patent application, the owner of the invention has 12 months from the filing or priority date in which to file foreign
...Directive (EEC) 89/104 ( the Directive ). The national court asked whether the Directive had to be interpreted as: - Meaning that, when refusing registration of a trade mark, the competent authority was required to state in its decision its ...
6. How long does a patent last for?
It is good practice to decide, as early as possible, on an international patent filing strategy. An investor should be made aware of the significant costs involved in obtaining international patents.
Is should be noted that the inventor may not necessarily be the owner of the invention as an employer will own any invention made during the course of employment. A registered patent protects inventions by giving the owner of the
invention a 20 year monopoly right of exploitation.
7. Are patent rights territorial?
Patent protection applies only in the country in which the patent is granted. It gives a patent owner the right to bring an injunction to
...large-scale state-funding of research. A legal opinion in 2005 prepared for California State Treasurer Angelides suggested that tax-exempt bonds could not be used to fund research wherein the state would share in money generated by the research (specifically sharing in ...
8. What are the remedies for patent infringement?
The remedies available are damages (compensation for any loss suffered) or a percentage of profit made by a third party. The claimant can also obtain an order from the courts to have the infringing products destroyed.
A recent case is http://www.rtcoopers.com/patent_infringement_aug.php
9. When can an invention be disclosed?
Disclosure is only relevant to patents, registered designs and know-how. If an invention is
...was granted to Amazon.com in September 1999. The patent number is U.S. Pat No. 5,960,411. Business method patents are actually a part of a larger family of patents called utility patents. These protect inventions, chemical formulas, processes and other discoveries. ...
If the invention is published (even in an obscure journal);
If an invention is published on the Internet;
If the invention is disclosed at an international conference;
Publication of a patent application by the UK Patent Office;
Use of the invention by a member of the public (without breaching confidentiality);
The public is given sufficient information in the patent application to perform the invention; or
The oral disclosure of
...for a similar product, but the court battle would be a lot more difficult than if you had a national registration. A state registration is pretty good, but what happens when you border another state, and the guy just over ...
An exception is where an invention is exhibited at an international exhibition within six months before the priority date in that case novelty will not be lost.
10. What is the position with the USA?
It should be noted that even if an application is published in the UK, it may still be patentable in the USA, as the invention date will be taken from the dated, signed and countersigned page of the researcher s laboratory notebook which first described the invention.
11. Are Computer Programs patentable?
With the advent of the Internet and the growth in IT, companies are seeking to obtain patent protection for computer programs. Patents of computer programs are more readily obtainable in the
...capital investors that these patents existed and that it would be impossible to obtain funding from them," she says. This quote is significant for at least two reasons. First, one sees that venture capitalists were aware of the Thomson/WARF patents ...
However, the UK Patent Office will accept patent claims to computer programs, either
...often help you in your future legal job search. To be eligible to take the exam, you must have a technical background as evidenced by your college degree or courses. There are two ways to qualify. 1. You have an ...
12. Can you patent a business method?
In the USA, patents for computer implemented business methods are available but not in the UK. If a company has a novel business method it should consider making an application for a US patent. There are certain formalities, however, which will have to be adhered to.
13. What are design rights?
Design rights are of two types, registered and unregistered. Unregistered design right affords protection to functional as opposed to purely aesthetic designs.
14. What are
...moving forward. Because of this bad faith factor, it is important for all domain name owners to check their domain registrations regularly in the Who s database to determine if their contact information is correct. If you should decide to ...
Design right arises automatically by the operation of law and protects new original, non-commonplace designs of the shape or configuration of articles. Design right is not a monopoly right but a right to prevent copying.
15. How long does an unregistered design right last for?
It lasts until 10 years after first marketing articles made to the design, subject to an overall limit of 15 years from creation of the design. Certain exceptions apply to design right.
In general, design right protects designs created by nationals, residents or companies of the European Community. The design right owner has the right to take civil action in the courts and the remedies available are the same as above.
The
...& Trademark Office, it must also be renewed with the CBP Recording Copyrights In order to record a copyright with the CBP, the copyright must first be registered with the U.S. Copyright Office. The standard information to be listed in ...
16. What are registered design rights?
A registered design is a monopoly right for the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture, materials of the product or its ornamentation. For a design to be afforded protection, it must be new and have an individual character. A design is new if no identical design or the designs whose features differ in immaterial details have been disclosed to the public anywhere in the world (the prior art), before the date of filing the application or the date from which priority is claimed.
17. What is
...of Proposition 71 are not even clear. In the last month, Ed Penhoet chair of the IP Task Force of CIRM, has said "What are we really attempting to do? Are we trying to drive therapies as rapidly as possible? ...
However, if a designer himself, at least 12 months before filing an application (or claiming priority) markets, promotes or exhibits his designs to gauge levels of interests this would not amount to disclosure.
18. What is the test for a registered design?
To meet the requirements of individual character the design must produce on the informed user, a different overall impression from prior designs. This may be a retail customer. The degree of freedom of a designer in creating a design is taken into account in determining whether a design has individual character. Where minor differences separate the design from the prior art then the scope of protection is limited, the public should be able to ascertain
...However, if another party uses your mark it can be more difficult to prove your ownership. To register online with the United States Patent and Trademark Office (USPTO), go to [http://www.uspto.gov/]www.uspto.gov. There is a registration fee for each name, logo, ...
19. How long does a registered design last for?
Registration of a design would last initially for 5 years, and extendible by 5 years, up to a maximum of 25 years.
20. How do I obtain a UK registered design?
To obtain a UK registered design you can apply to the Patent Office on the prescribed form. You can obtain further information on obtaining a community registered design by clicking on this link.
21. What should be taken into account in my business plan regarding filing of a registered design?
Investors usually require a start-up business or inventor to have a design filing strategy in place as the filing
...and registering your trademark can be very expensive, and then add to that the attorney fees and filing fees and possible time off work and the bottom line gets bigger and bigger. That is why you need to do your ...
22. What are trade marks?
Trade marks are the badge of a business and protect any mark capable of graphical representation, which distinguishes the goods and services of a company from those of another. Trade marks include names, signatures, smells, shapes and logos. When choosing a new trade mark, it is advisable that a company carries out the requisite trade mark searches in the UK and in all other key markets, in order to minimise the risk of infringing a third party s trade mark.
23. Should a trade mark search be carried out?
Searches are therefore imperative, although the costs of trade mark searches can be significant.
24.
...downloads some of the forms from the Patent and Trademark Office website and spends some time on his application. He does everything by the book as best he can, sends the paperwork in and waits. Time passes. And passes. And ...
Trade mark protection lasts for ten years and the registration is renewable every ten years thereafter. The registered mark must be used, preferably in the form in which it is registered, in order to avoid the risk of a cancellation action.
25. Why is the priority date important?
A company has six months from the date of filing a trade mark application (the priority date) in which to make foreign applications, otherwise the company will not retain the filing date. There have been some significant developments in trade mark law.
26. Is a filing strategy required?
Investors usually ensure that a company has adequate trade mark filing strategy in place for achieving
...TX is $30. Protection:While a copyright was not intended to protect ideas, it does help protect the literary aspect of you invention, such as the description and the drawings. On all work that you produce relating to your invention add ...
27. What can be done if a third party infringes our trade mark?
A company can only bring an infringement action when the trade mark is registered. The remedies available are the same as for patents. However, a company can also obtain damages for past infringement, which occurred before registration.
28. What is copyright?
Copyright protection in the UK arises automatically by an operation of law.
Can a copyright work be registered in the UK?
There is no system of registration. However, copyright registration can be obtained in the USA for certain copyright works.
What types of
...asking you to clarify some aspect or outright reject your application. While this sounds straightforward, there is one aspect that turns the process into an annoying one time. The trademark office is a government agency. As such, one can expect ...
Copyright protection can be afforded to various aspects of work such as literary, dramatic, artistic works, including, research notes, books, recipes, computer programs, typographical arrangements of published works including articles or lecture notes.
What is the test for copyright protection?
For copyright to subsist in a work there has to be some element of originality and the test is the degree of skill, labour and judgement expended by the author in the creation of the work.
Who owns the copyright?
The author of the work owns copyright, unless the work was created during the course of employment, in which case, the copyright belongs to the employer.
How long does copyright last for?
Copyright lasts for
...as its intended use. Following Procedure Once you gather the proper information and patent request requirements for your invention, you need to write a patent application. You can write your own application or you may hire a patent agent or ...
What are good housekeeping rules regarding copyright protection?
A company should, as part of its good housekeeping rules, place copyright notices on all original, texts, scripts, sketches and diagrams and other copyright work. For e-businesses, a copyright notice should also be placed on a website.
What amounts to copyright infringement?
If a third party infringes copyright material, whether it is the copying of text from a website or a published article, the owner of the copyright has the right to bring an infringement action to stop the copying of such material. The remedies are the same as described above.
What are brands?
Goodwill and reputation protect the brand of a business.
Can
...a copy of the application once it s been published. But, take note, if your application is granted, your invention will have been protected ever since the date you filed your application. As you can see, the patent system is ...
A company can bring an injunction for the unauthorised use of its unregistered trade mark to stop a third party from passing off its name. In order to succeed in a passing
off action, a company must have the necessary goodwill and reputation and satisfy certain other criteria. One of the most important criteria is that the company bringing the claim must be able to show confusion on the part of the public. This is usually achieved by using survey evidence, which is generally expensive to collate. The remedies available are the same as for a trade mark infringement action. For a recent case on brands see
...review all designs with a particular design element, or all designs which incorporate a combination of design elements. For example, if you wanted to review all the designs featuring a cat wearing a top hat, you would enter the design ...
How can confidentiality/know-how be protected?
Confidentiality protects other information not capable of IP protection, such as an invention before a patent application is filed, know-how, including commercial information, recipes, trade secrets, processes and improvements to products. In order for an invention to be protected by the law of confidential information, the information must have the necessary quality of confidence.
It is therefore crucial for the owner of an invention to enter into a confidentiality agreement at the outset of any negotiations relating to an invention. The agreement must specify:
What information has to be kept confidential;
How long for;
The purpose for which the information is to be disclosed; and
Any other limitations
...portion would be considered for a mark. Locators Cannot Be Registered A domain name is a locator for file pages. When you type in your domain name, a server locates and displays files. If a domain is used solely for ...
What are the remedies for breach of confidentiality?
The remedies for breach of confidential information are the same as for IP infringement.
What is IP Insurance?
IPRs are valuable assets and, as such, should be protected to the fullest extent. Litigation can be very expensive whether a company is bringing or defending an action. There are specialist types of legal expenses insurance policies available for safeguarding or defending against:
Infringement of IPRs;
Actual or alleged breach of contract; or
Defending a challenge to the validity of the insured s IPRs e.g. the validity of a patent.
What are the key issues involved in IP protection?
The following checklist
...are worthy of being patented. This is the most subjective of the criteria that are applied, but it is not generally difficult to demonstrate that an idea is worthwhile, if it actually is. Lastly, the method to be patented should ...
IP Issues
Patents
Is the invention capable of patent protection?
Have the relevant patent searches been carried out?
Is there a risk of infringing a third party s patent?
Has the invention been disclosed in any form to a third party?
Copyright
Is the work original?
Who owns the copyright in the work?
Have copyright notices been placed on all original work?
Design
Is the design original?
Is the design commonplace?
Who owns the design?
Trade Marks
...every fibrous or textile material, when in fact an examination of over six thousand vegetable growths showed that none of them possessed the peculiar qualities that fitted them for that purpose. Was everybody then precluded by this broad claim from ...
Who owns the trade mark?
Have the requisite trade mark clearance searches been carried out?
What is the trade mark filing strategy?
What is the risk of infringement and/or passing off?
Know-how
Is the know-how kept secret and identifiable?
Have any know-how licences been granted?
Patents
Has the invention being disclosed in anyway, anywhere in the world?
Was the invention disclosed under an obligation of confidence?
Did the parties sign a confidentiality agreement?
Designs
Has the design been disclosed to a third party?
Confidentiality
(Protects information as long as the information remains confidential)
Has the inventor entered into a signed confidentiality agreement with
... #cat#Patent Trademark Office Training#/cat# ...
Is there a third party in breach of confidential information imparted to it?
How does the individual or company keep information confidential?
Have all relevant information been marked as strictly confidential ?
E-business
Does the company have well drafted Terms and Conditions?
Does the company have all relevant notices on its website?
Does the company own all copyright and other IPRs on its website?
Does the company have the relevant data protection notice on its website?
Does the company s advertisement comply with the relevant UK Codes of Advertising and legislation?
Risk Management
Does the company own all its IPRs?
...the same ownership, at least one common inventor, the same effective filing date and overlapping disclosure (in a sense defined precisely in the rules) will be subject to a rebuttable presumption that their claims are patentably indistinct. The presumption must ...
Are research notes written, dated and initialled?
Does the company require a data protection certificate?
Insurance
Does the company have adequate insurance cover?
Does the company have a specialist IP or cyberliability insurance?
Has the company undertaken an IP audit?
If so, has the audit identified any other invention, which should be exploited?
RT Coopers, 2005
Dr Rosanna Cooper is a partner in RT Cooper Solicitors specialising in commercial law. Dr Cooper may be contacted on 020 7488 2985 or by email: enquiries@rtccopers.com. Website: [http://www.rtcoopers.com]www.rtcoopers.com
RT COOPERS, 2005. This Briefing Note does
...explain to the Examiner, in writing, identifying those parts of the documents that pertain to the invention he is attempting to patent. The obligation of the patent applicant does not stop there. If the patent applicant comes to know of ...
Full service commercial law firm based in the City of London specialising in intellectual preoerty law, intellectual property protection, copyright law, intellectual property lawyers, patent attorneys, patent lawyers, copyright lawyers, copyright solicitors, trademark lawyers, trademark solicitors, intecllectual property lawyers, intellectual property solicitors. If you require advice and assistance email us at [mailto:enquiries@rtcoopers.com]enquiries@rtcoopers.com or visit our website at http://www.rtcoopers.com/practice_intellectualproperty.php
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