Tuesday 25 November 2014 Industry Insight Superior Intellect Mark Pearce and Hazel Robson (Secerna)

Tuesday 25 November 2014 Overview of Intellectual Property Mark Pearce

What is Intellectual Property? The product of creative thinking Intellectual Capital/Property Intellectual Property Rights (“IPRs”) are rights protecting intellectual property Public policy to encourage creativity and development and to discourage freloading Essentially IPRs are “negative rights” – i.e. the right to prevent acts, not a positive right to do things

What do IPRs protect? Creative works - copyright Designs Trade marks Confidential information Inventions - patents

What is copyright? A right to prevent unauthorised reproduction of your original works and to recover damages for infringement Arises automatically on creation or performance of certain works Unregistered right in most of the world BUT registration available in some states (notably the USA)

What does copyright protect? Original literary, dramatic, musical or artistic works literary works include tables or compilations, computer programs and databases artistic works include graphic works, photographs, sculptures, collages, works of architecture and works of artistic craftsmanship Sound recordings, films, broadcasts or cable programmes

Who owns copyright? The author of a work is generally the first owner of copyright Except works made by employee in the course of employment – owned by employer

How long does copyright last for? Identity of author known 70 years from the end of the calendar year in which the author dies Identity of author unknown 70 years from end of calendar year in which the work was made; or if during that period the work is made available to public then 70 years from the end of the calendar year in which it is first made available

Restricted acts Copying the work Issuing copies of the work to the public Renting or lending copies of the work Performing, showing or playing the work in public Broadcasting or including the work in a cable programme Making an adaptation of the work

Examples in Manufacturing Specifications Manuals Advertising copy Product illustrations Promotional video Training materials Forms Software! Websites Screen images

Protection of designs Not protected by © in design drawings Two regimes for protection of designs: registered designs (UK and Community); and unregistered design right (UK and Community)

UK registered design Design – the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its orientation Registrability – New Individual character No rights in features dictated by technical function or need to fit another part

Novelty and individual character? No identical design (or one with only immaterial differences) available to public before relevant date (application date) 12 month grace period Individual character overall impression on informed user differs from designs available before relevant date take into account freedom available in creating design

Who owns it? General principle – designer is the owner Made by employee in the course of employment: employer Produced in pursuance of a commission: designer

Term initial 5 years term renewable for further 5 year periods up to a maximum of 25 years

Rights given by registration Exclusive right to use the design and any design which does not produce on the informed user a different overall impression Infringement making, offering, putting on the market, importing, exporting or using a product incorporated or applying the design stocking for the above purposes

UK unregistered design right Original design “the shape or configuration (whether internal or external) of an article” comparison with articles in same field at time of creation not commonplace in any qualifying country Exceptions must fit/must match

UK unregistered design right Ownership designer made by employee in the course of employment - employer produced in pursuance of a commission - designer (formally the commissioner) Duration (whichever is shorter) 15 years from end of calendar year the design was first recorded; or 10 years from end of calendar year in which design was first marketed

Trade marks A trade mark is any sign capable of being represented graphically which is capable of distinguishing goods and services of one undertaking from those of other undertakings (s.1 Trade Marks Act 1994)

Trade marks – Types words designs shapes colours sounds smells?

Trade marks – Registration The benefit of registration: it gives the owner of the mark a monopoly right in that territory to use the mark in respect of the goods or services in which it is registered To register a trade mark it must: be distinctive; not be deceptive or contrary to law or morality; and not be identical or similar to any earlier marks for the same or similar goods or services

Enforcing your trade mark rights Infringement of registered trade mark; and/or Passing off

Passing off – JIF Lemon Goodwill A misrepresentation Loss or the likelihood of loss (the “Classical Trinity”)

Confidential Information Two main requirements the information must have the quality of confidence about it; and the information muse be disclosed in circumstances under which a duty of confidentiality arises (Saltman -v- Campbell (1948)) The information can be of a commercial, technical or even a personal nature (Stephens -v- Avery (1998))

How can the obligation of confidence arise Expressly – by agreement Written contract Oral agreement Impliedly Circumstances where it is clear information is confidential Other Position of trust Fiduciary duty

Tuesday 25 November 2014 Patents & Paving an IP path into foreign lands Hazel Robson

Patent Issues in Industry Tuesday 25 November 2014 Hazel Robson Senior Associate Secerna LLP, The Catalyst, Baird Lane, Heslington East, York, YO10 5GA Tel: +44 (0) ; fax +44 (0) ;

FOR DISCUSSION  WHAT? Patentability Requirements Patent Application Requirements  WHY? Protection and Commercial Aspects  WHEN? Timeline  WHERE? National v Regional v International  HOW?

WHAT IS A PATENT?  An agreement between an Applicant and the Government/Authority of a country/territory whereby the Government offers: a legal right to market exclusivity; for a limited period of time (20 years); in exchange for: a description of the invention sufficiently detailed so that a third party can understand and repeat the invention and try to design around it; publication of the application within 18 months from the first application (priority) date; and payment of renewal fees in each country where a patent is sought  It is a right to ”exclude” NOT a right to ”do” - consider freedom to operate  It is a territorial right

WHY PATENT? PROTECTION ASPECTS  Protect outcome from R&D  Protection against competitors Third party patent rights can impact ability to manufacture and sell a product  Enforcement of IP rights may prevent sale of a product or use of process Damages or compensation may be payable Option to grant license and collect royalties

WHY PATENT? COMMERCIAL ASPECTS  Patent Box  Patents can be bought and sold Asset value  License opportunities - create a better negotiating position in-license, out-license & cross-license  Create uncertainty for competitors design around, license or infringe

PATENTABILITY REQUIREMENTS  Novelty  Inventive Step  Industrial Applicability PATENT APPLICATION REQUIREMENT  Sufficiency  Claims REQUIREMENTS

NOVELTY  Has the invention been publicly disclosed?  Public disclosures can be: any time, anywhere, any place (prior to filing the patent application) paper, internet, oral article, abstract (in advance), poster lecture, seminar, chat room, conversation (outside of a confidentiality agreement) BE CAUTIOUS WHEN DISCLOSING ANYTHING TO ANYONE! Confidentially agreements Publication procedures Publication review/control clauses

INVENTIVE STEP  Is the invention obvious to the person skilled in the art with regard to the state of the art?  State of the art: prior public disclosures including common general knowledge  Skilled person has average knowledge and ability and lacks inventive capacity BUT has access to all prior art  EPO uses problem-and-solution approach (i) determine the closest prior art; (ii) establish the objective technical problem; and (iii) starting from the closest prior art, is the solution (or recognition of the problem) obvious? EVIDENCE OF TECHNICAL ADVANTAGE IS OFTEN HELPFUL

Catalytic Addition of Hydrofluorocarbons to Fluoroolefins comprising: Reactant A: F 2 C = CF 2 F 2 C – CF 2 Product (CF 3 CF 2 CFH 2 ) | | Reactant B: F – CFH 2 F CFH 2 Catalyst: SbF 5 in inert solvent -60 to -10 o C Prior Art: Reactant A: F 2 C = CF 2 F 2 C – CF 2 Product (CF 3 CF 2 CFH 2 ) | | Reactant B: F – CFH 2 F CFH 2 Catalyst: SbF 5 in inert solvent -10 to +100 o C NOVEL AND INVENTIVE? Case Study 1

Catalytic Addition of Hydrofluorocarbons to Fluoroolefins comprising: Reactant A: F 2 C = CF 2 F 2 C – CF 2 Product (CF 3 CF 2 CFH 2 ) | | Reactant B: F – CFH 2 F CFH 2 *Catalyst: SbF 5 in inert solvent -60 to -10 o C *Catalytic solution is a premixture of catalyst SbF 5, Reactant B and Product (as inert solvent) NOVEL AND INVENTIVE? Prior Art: Reactant A: F 2 C = CF 2 F 2 C – CF 2 Product (CF 3 CF 2 CFH 2 ) | | Reactant B: F – CFH 2 F CFH 2 Catalyst: SbF 5 in inert solvent -10 to +100 o C NOVEL AND INVENTIVE? Case Study 1

Case Study 2 An apparatus for producing a moulded confectionery product, comprising: a)channels (11, 12) for transferring a fat-containing mass and a water carrier from hoppers to mixing nozzles, b)a static mixer (21, 22) for the blending of the fat-containing confectionary mass and the water carrier to a substantially homogenous blended mass, c)at east one mixing nozzle (2) for depositing the blended mass characterised in that the apparatus is adapted to process the components within 60 second or less measured from the time of transferring the fat- containing confectionary mass and the water carrier to the time of depositing the blended mass into at least one mould (4) or onto a conveyor belt or into a receptacle for enrobing.

Case Study 2 - Prior Art: 2. Mixer to prepare oil/water emulsion; 4a. Holding tank for oil/water emulsion; 4b. Holding tank for fat-based confectionary; 6. Flow control pumps to pump each mixture into 8; 8.Cavity transfer/extrusion mixer; 8c. Outlet for substantially homogenous fat- based confectionary composition; 10. Forming station; and 12. Cooling tunnel. NOVEL? INVENTIVE?

Case Study 3 Invention:  Use of electromagnetic mapping to detect oil reserves under the sea bed Prior Art:  Use of electromagnetic mapping of the sea bed to assess the underlying geology for academic purposes INVENTIVE? SUFFICIENT?  Who is the skilled person?

Case Study 3 Who is the skilled person?  A skilled practitioner in the relevant field of technology, who is possessed of average knowledge and ability and is aware of what was common general knowledge in the art at the relevant date. He should also be presumed to have had access to everything in the "state of the art", in particular the documents cited in the search report, and to have had at his disposal the means and capacity for routine work and experimentation which are normal for the field of technology in question.  Oil industry exploration geophysist?  Academic electromagnetic mapping expert?

PATENT PROCESS  Consider patent strategy  Prepare and File Priority Application 12 months for further development Consider prior art searching by priority patent office  Consider filing strategy Geography - national, regional or PCT Time and Cost  Update and file Substantive Application  Patent Prosecution  Patent Grant  Enforcement

0 months Invention Priority Application filed at Patent Office Update priority application/s ? Foreign filing – PCT and/or national filings File related applications applications ? Publication International Search and Examination? PCT National Phase Entry Worldwidepatentprosecution Granted Patents 30 months 18 months 12 months Keep secret? TIMELINE

PCT PATENT PROCESS Advantages of PCT system  Reduced effort if seeking protection in a number of countries  Allows centralised claim amendment in view of search results  Preliminary examination to assist with prosecution decisions  Delays need for translation  Delays prosecution expenses e.g. official fees  Provides time for commercialisation

THIRD PARTY PATENTS FREEDOM TO OPERATE CONSIDERATIONS  A patent protects subject matter defined in the granted claims only Subject matter in the description and/or figures but not covered by the granted claims is not protected so cannot be infringed  Product claims – protect the product  Process claims – protect the process and direct product of process IF IT IS NOT IN THE GRANTED CLAIMS IT CANNOT BE INFRINGED!!!

Please note that the information on these slides is provided for illustrative purposes only and is not an alternative to professional legal advice. If you have any questions regarding this information or require any assistance with your patenting matters please contact: Secerna LLP The Catalyst, Baird Lane, Heslington East, York, YO10 5GA Tel: +44 (0) fax +44 (0)

Tuesday 25 November 2014 IP Strategy Mark Pearce

IP strategy Must be aligned with business strategy Consider: type of product to be developed? product exclusivity? level of control required? investment model? marketing plan? competitor activity

Building your portfolio Conduct an IP audit: gaps in IP protection? IP opportunites i.e. to register IPRs not yet registered? exposed to risk of infringement? Expand protection to other countries? Opportunity for collaboration?

Market analysis Strong or weak IP coverage in the market? IP coverage of competitors? Collaborator position in the market? Opportunity for licensing? Building a portfolio as a defence

Using IPRs as part of a strategy Use the monopoly right “gateway” patents Coralling technology Licensing Wider scope Shared risk Increased market share Defence against competitor claims Sale of technology

Legal issues Initial discussions under a NDA Make sure that patentable inventions are not shared or published before filing (must be considered new) If collaborating with another party: what IPRs are other parties bringing to the table? licences of IPRs for development licences of new IPRs

Enforcement? IPR litigation expensive Value of protection IP Enterprise Court Insurance Multi-jurisdictional issues Proving infringement Process patents “fingerprint” evidence? To patent or not?

Implementation Clear strategy Make patent/registration decisions an inherent part of the development process Educate key stakeholders and make them aware of the IP strategy Encourage active involvement (e.g. incentives for inventions that are patented)

Tuesday 25 November 2014 Patent Box Rethinking your IP strategy? Mark Pearce

What is the patent box? Introduced on 1 April 2013 Provides an optional 10% corporation tax rate for companies exploiting patented inventions Reduced rate applies to a proportion of the profits derived from: licensing out or selling patent rights selling the patented invention or products incorporating the patented invention using the patented invention in the company’s trade compensation for patent infringement

Exclusions Profits attributable to the following are excluded from patent box: routine manufacturing development functions exploiting marketing intangible assets (e.g. trade marks)

Do you qualify? Can benefit from patent box if your company owns or exclusively licenses patents granted by: IPO; European Patent Office (“EPO”); or certain other EEA territories Must have undertaken qualifying development for the patent by making a significant contribution to either: the creation or development of the patent; or a product incorporating the patent

IP strategy considerations Do you own your IPRs? Are your IPR licenses exclusive? Have you undertaken qualifying development? Can you clearly attribute your profits to the patents you hold? Do you need to consider filing new applications? Which group company owns your IPRs?

Tuesday 25 November 2014 The Unitary Patent Mark Pearce

The unitary patent - overview Current position: single European patents do not exist register and maintain individual patents in each country Unitary patent approved on 17 December 2013 Not expected to come into force until 2015 It will provide a single patent across all participating EU member states

The unitary patent - benefits Lower cost alternative to obtaining and maintaning a large bundle of patents Will not require validation in each member state Reduce cost and time of translation Subject to single set of renewal fees

Impact on IP strategy? Analyse commercial requirements on an EU basis: European-wide patent protection needed? protection only required in a small number of member states? If so, the unitary patent may be more expensive. National patent applications will remain a viable option Italy, Spain and Poland not signed up to the unitary patent