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
...and plans, and must meet other specific criteria. While there are different kinds of patent applications to submit, some criteria and requirements is the same. For example, for a non-provisional patent application, the United States Patent and Trademark Office calls ...
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
...the Nike Swoosh and many others. When you see one of these marks, you immediately identify them with the company and product in question. In legal terms, the mark is indicative of a certain quality of products or services. When ...
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
...The iRiver devices offered by South Korean manufacturer Reigncom range from small players intended to hang on a keychain or as wearable jewelry style devices to full-fledged hard-drive based units pointed squarely at the Ipod s market. SanDisk (a maker ...
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
...of the States Patent and Trademark Office (USPTO). In this website, you can search for existing trademarks to make sure that the trademark you plan to use is unique and can distinguish you from other companies. Within the USPTO website, ...
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
...accept and respect a strict Code of Ethics set out by CREA. CREA also administers and owns the mls.ca site for the public. The real estate database systems operated by other member Boards (such as TREB) provide an ongoing inventory ...
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
...are a number of other symbols setup to work in the same way such as the Registered Trademark Symbol and the Trademark Symbol . To enter the registered trademark symbol simply type (r) and for the Trademark Symbol type in ...
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
...Ordinance, 2001 is related with absolute grounds for refusal of registration, trade marks which are devoid of any distinctive character; Trade Marks which are devoid of any Distinctive Character in British Sugar Plc v James Robertson s and Sons Ltd ...
However, the UK Patent Office will accept patent claims to computer programs, either
...logo acts as a trademark for the brand or the company itself. The trademark is generally represented by a symbol, which confers certain rights to it. However, trademarks are not registered with the government trademarks office. When they are registered, ...
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
...company can carry the same name, logo or product without proper approval from you. Before any company is given approval for a trademark application, the USPTO scrutinizes the application, making sure that the trademark filing is unique and is in ...
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
...legitimate. Given the ability to reasonably investigate any such infringement claims, it is reasonable that persons akin to landlords and swap meet operators bear some responsibility for merchandise sold on their premises. However, the question being posed now by Internet ...
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
...was lying in the back seat of a cadillac outside of WSM, drunk, depressed, and, as of a few hours earlier, out of work. He had just been fired from the Grand Ole Opry, and although another job was waiting ...
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
...who uses your trademarked product or service without prior permission. A person who uses your trademarked product or service without prior permission is said to be infringing on the product. This is a recognized offense, and is called trademark infringement. ...
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
...device from all others. Service marks are like trademarks, accept they protect and distinguish services only. The symbol used to represent a registered service mark is . The name of the company or firm is registered and protected as a ...
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.
...it clear that CCH was continuing with its own service. The claimant was unsatisfied with this notice and objected requesting a further correction notice on the grounds that the notice still sought to rely on the claimants name and reputation ...
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
...able to search some of the Federal trademark files at this site. What it's missing: State trademarks; Common-Law databases such as incorporation listings, DBA records, company directories, newspapers, product announcements, etc. What it lacks: Does NOT search intelligently (i.e. synonyms, ...
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
...legitimate. Given the ability to reasonably investigate any such infringement claims, it is reasonable that persons akin to landlords and swap meet operators bear some responsibility for merchandise sold on their premises. However, the question being posed now by Internet ...
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
...looking for something out of the ordinary. Wearing T-shirts in old age provides a lifestyle option rather than an age option and gives feeling of younger. Women T-shirt: A separate identified market During the last two-three decades, women's participation levels ...
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
...Patent and Trademark Office (USPTO), there are many considerations you have to make to ensure the uniqueness of your trademark. Conventional things to consider are the name, word or phrase, the logo, symbol, design or images used in your trademark, ...
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
...enjoys a great product name -- catchy and easy to remember. It also has a memorable look and feel. Velcro, on the other hand, has never been duplicated, and so it enjoys complete uniqueness in the mind of consumers. The ...
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
...nobody can use your name or logo. The process of actually securing your trademark is not a difficult one. You can simply go down to the United States Patent and Trademark Office. Or, even more simple, log on to their ...
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
...cost in changing all your signage and disrupting your good will with your brand name in your local market. This confuses customers and puts a question mark about your credibility where none had previously existed. How hard is it to ...
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
...mesmerizing pictures on a dazzling 262,144 colour display screen. It feels good to hold the Nokia7373 measuring 88 x 43 x 23 mm. It has got a solid weight of 104 grams. Apart from the camera feature, the Nokia7373 is ...
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
...A name that is "merely descriptive" is not going to pass muster, and will not be awarded a registration. There are other categories of name that are also not registrable, however they are a bit more complicated, and you really ...
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?
...authorized; and (d) The identity of any parent or subsidiary company or other foreign company under common ownership or control which uses the trademark abroad. 19 CFR 133.2 Along with the information contained in the application, specific documents and fees ...
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
...mesmerizing pictures on a dazzling 262,144 colour display screen. It feels good to hold the Nokia7373 measuring 88 x 43 x 23 mm. It has got a solid weight of 104 grams. Apart from the camera feature, the Nokia7373 is ...
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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