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UNLOCKING THE HIDDEN VALUE OF YOUR INTELLECTUAL PROPERTY 21 APRIL 2010 Richard Hastings Partner Thomas Eggar Solicitors.

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Presentation on theme: "UNLOCKING THE HIDDEN VALUE OF YOUR INTELLECTUAL PROPERTY 21 APRIL 2010 Richard Hastings Partner Thomas Eggar Solicitors."— Presentation transcript:

1 UNLOCKING THE HIDDEN VALUE OF YOUR INTELLECTUAL PROPERTY 21 APRIL 2010 Richard Hastings Partner Thomas Eggar Solicitors


3 Intellectual property Our experience includes: advising Yahoo! on the groups intellectual property/domain name and trade mark portfolio; development and support for the website including associated multi-million sponsorship agreements; O2 on brand protection, brand strategy, registration and compliance; Portsmouth City football club on all aspects of club sponsorship and IP brand protection; Sponsorship of Leicester City football club by Walkers; IP licensing and multi national ventures; on intellectual property and brand strategy and protection; trade mark & domain name registration; undertaking IP audits for large organisations and educational establishments; development and support for a large European greetings card and novelty toy manufacturers website and advising on brand protection and exploitation; assignment of software and Intellectual Property Rights from domain name registry issues in relation to passing-off and trade mark infringement actions. E-Commerce/Privacy/Telecoms Our experience includes: e-trading arrangements; Website content, Hosting, Design and Support Agreements; new mobile e-commerce venture to provide localised services via WAP applications; all aspects of new e-commerce start ups including all web T&Cs, privacy policies, trading terms and commercial advice; advising major multi-nationals on Data protection regulation and compliance with transfer of data outside the EU and safe harbour other alternatives; roll out of Voice over Internet Protocol (Telecoms VOIP) services across Europe including licence applications/ registrations in each country; all aspects of R & D and associated licensing; various outsourcing agreements including outsourcing of customer care facilities to the Netherlands plus several outsource agreements of Yahoo facilities and associated service agreements; numerous high value sales and acquisition agreements for telecom infrastructure/services/telecom and IT equipment; agreement for the provision of worldwide wi-fi network connectivity agreement. Corporate/Commercial Our experience includes advising: Disposal of Toucan Broadband Telecom to Pipex Plc; Milan Mandaric on the disposal of Portsmouth City Football Club and on the takeover of Leicester City Football Club plc through his US company, UK Football Investments LLC; a number of sports professionals on a European joint venture including advertising and use of image rights; a number of football clubs on their financing arrangements; a sports retailer on the proposed disposal of a majority stake to a private equity house; Offshore gambling services to 2 national newspapers; Joint venture and service agreement for the back office platform for package holidays with a leading UK airline; legal negotiations and drafting for a joint venture with Tesco for the provision of mobile services to be sold by through Tesco stores; advising Sports Direct on its acquisition of major high street brands including Field & Trek and Munroe Sports; advising Evans Cycles in relation to share acquisition agreement including support for roll out of retail IT on-line systems. Contentious IP & litigation Our experience includes: advising IDT Telecom on the exploitation and enforcement of various patents in the UK vs EBay and Skype; advising on enforcement of trading breaches regarding parallel imports and counterfeit goods; prosecution of long established trade marks against the International Olympic Committee; advising on defence and strategy regarding patent trolls enforcing long standing IT patent technology; advising International brand owners on European IPR enforcement and exploitation strategies; taking action against infringers, negotiating settlements and drafting settlement agreements; advising on the transfer of domain names from cyber squatters to those with a legitimate in the name including obtaining High Court judgements; advising on software licensing issues; advising on website copyright infringement issues and in particular on the use of photographs and the world wide web. WHAT WE DO

4 WHAT IS INTELLECTUAL PROPERTY? Intellectual Property gives rights in: *the particular way that ideas or information are expressed. *You cannot protect an idea itself but the law protects the way that the idea is set out. Intellectual Property (IP) is a collection of: Intangible property interests (cant put them in your pocket) Granted by the government Only enforceable in the territory where the government has control (e.g. UK patent is not enforceable in France) Create limited legal monopolies – the ability to prevent others from doing certain things (e.g. copying a book, manufacturing an invention, displaying a mark, etc.)

5 DIFFERENT TYPES OF INTELLECTUAL PROPERTY Copyright – may subsist in creative and artistic works (e.g. books, movies, music, paintings, photographs and software). Patents – may be granted for a new, useful and non-obvious invention. Trade Marks – are distinctive signs which are used to distinguish the products or services of different businesses. Industrial design right – protects the form of appearance, style or design of an industrial object (i.e. spare parts, furniture or textiles). A Trade Secret (confidential information) - is secret, non-public information concerning commercial practices or proprietary knowledge of a business. Intellectual property confers a bundle of exclusive rights in relation to the particular form or manner in which ideas or information are expressed or manifested, and not in relation to the ideas or concepts themselves (see idea-expression divide). The term "intellectual property" denotes the specific legal rights which authors, inventors and other IP holders may hold and exercise, and not the intellectual work itself.bundleexclusive rightsidea-expression divide Intellectual Property Laws are designed to protect different forms of subject matter (but there is some degree of overlap).

6 The RightsWhat they protect Patent Legally protectable monopoly for specific inventions. Last for 20 years. Require public disclosure of technology. Inventive technical features of products and processes. But not: computer programmes, methods of doing business and medical treatments. Trade Mark Distinctive graphical representation which distinguishes goods or services from other entities Brands, logos, names, packaging Kodak or Intel Bass 1876 red triangle logo Passing off Goodwill in an unregistered mark can be protected by an action for passing off. Goodwill and reputation. Copyright Applies automatically when work is created and recorded, Allows owner to stop others from copying Original artistic musical, dramatic and literary works, including computer programs, sound recordings, films, broadcasts and typographical arrangements of published works. E.g. design drawings, illustrations, company brochures, photographs and typeface. IP RIGHTS

7 Registered Design Right Monopoly like Trade Mark: apply for UK registration or a Community Trademark Must have new and individual character Appearance of whole or part of a product resulting from the features of e.g. contours, shape, texture or materials and/or its ornamentation. Shape and configuration e.g. fabric cutting pattern. Common usage in fashion industry, 2D products wallpaper, textile designs, surface decoration. Unregistered Design Right Protects against copying not monopoly Any aspect of the shape or configuration (internal or external) of the whole or part of an article, 3D products not surface decoration – there are exclusions. Confidential information not strictly IP right but unregistered right governed by case law Know how-, trade secrets. Sensitive technical and commercial business information, customer lists, important in external development of product – discussions.

8 REMEDIES FOR IP INFRINGEMENT Account of profits The award to the holder of IPR of the profits that a defendant has made from the infringement. Ascertain the total profits from the infringers activities. The total profits should be apportioned to establish the profit which is attributable to the specific IPR. Adjust the figure to reflect the nature of the partys cases. Deduct any tax. Damages Calculated on the basis of lost profits or on a royalty basis and are compensatory. Put the party back into the position it would have been in had the infringement not occurred. There may be a punitive element in the form of exemplary damages. Additional Remedies Declaratory relief. Delivery up and destruction. Court order to reveal relevant information. An injunction. Criminal sanctions (patents; trade marks; copyright; registered designs) Threats Groundless threats to sue for IP infringement may themselves be actionable.



11 Does your Company actually own your IP? If you apply for finance or look for a 3 rd party to invest into your company consider the following: Audit your IP Ownership Rights Beware shareholder conflicts Joint ownership rights Consultants rights Employee rights Restrictions on Employees when they leave Dealings with 3 rd parties PROPERLY MANAGE YOUR IP

12 BEST PRACTICE APPROACHES Everyday business usage Protect your:- Brand Trade Name Company Name Domain Name Website Intellectual Property as the core route of the business, service or product you provide Identify Register Ensure confidentiality is in place Beware consultant or contractor ownership rights Ensure contract process for protection of IP via licensing If using licensed technology ensure you have long term rights Warranties and Indemnities International issues

13 IP rights can be used as security for raising finance. what form of security would be appropriate for the right in question? of what value is the IP right to the lender if the borrower defaults? what will be the effect on the borrower if it loses title to the IP right? IP RIGHTS AS A FINANCIAL SECURITY

14 Our company has a logo which we asked advertising agency to create Do we own the copyright? Can the agency use the format for other clients? Confidentiality protection Register all statutory protection Appropriate shareholders agreement Where did I go wrong my ex business partner is using my invention? SOME EXAMPLES


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