1 28 June 2006 © ip21 Limited 2006 Intellectual Property Issues for the Consultant Matthew Dixon, Chartered Patent Attorney, ip21 Limited

© ip21 Limited June 2006 Overview Why is intellectual property an issue? What are the major IP issues? What rights typically arise? Copyright issues Patent issues Confidential information issues Who will own the IP rights? Licence and royalty issues Practical advice

© ip21 Limited June 2006 Why is intellectual property an issue? Consultants sell knowledge to clients Clients want to secure what they buy Consultants need to be free to sell to others Each party has different IP needs Consultancy contract needs to be clear on IP To satisfy both parties To prevent future problems

© ip21 Limited June 2006 What are the major IP issues? Do you want to own the rights in what you create? Are you free to use information from this project for future projects? Is your existing knowledge safe from ownership claims by the client? Can you generate an income from past work?

© ip21 Limited June 2006 What rights typically arise? Literary copyright in proposals, reports and documentation Artistic copyright in drawings and diagrams Software copyright Design rights in product designs Patentable inventions Confidential information Trade marks?

© ip21 Limited June 2006 What does copyright protect? Protects original literary, dramatic, artistic and other works, including software, drawings, photographs, manuals, etc. No protection for concepts or ideas, just the way they are expressed Arises automatically and is therefore free Protects against copying, adaptation, etc. Need good records of creation date and author

© ip21 Limited June 2006 Copyright and design right issues Originality – are some parts copied? Authorship – who created the work? Have you used subcontractors? Have you used reference sources? Ownership – who owns what? Recording – can you prove what was created?

© ip21 Limited June 2006 What do patents protect? Protect technology (high or low) The invention must be absolutely new – kept secret until the patent application is filed Need an “inventive step” – a bit more than just a routine development Some things are excluded from patent protection The patent application has to explain in technical detail how to carry out the invention Patent are national rights

© ip21 Limited June 2006 Patent Issues Cost of patent applications Control of prosecution and scope Geographical scope Inventor co-operation

© ip21 Limited June 2006 Confidential information issues Only an agreement to keep a secret Defining and documenting Existing information Information created during the project Maintaining confidentiality What if there is a breach?

© ip21 Limited June 2006 Who will own the IP rights? Retain the IP rights and licence client? Cost? Future income stream? Assign all IP rights to client? Back licence for future work? Risks of joint ownership

© ip21 Limited June 2006 Licence issues Sole, exclusive, non-exclusive? Sub-licences allowed? Geographical scope Field of use Term Who controls, and meets, costs? Who decides on litigation?

© ip21 Limited June 2006 Royalty payments Variable rates Minimum payments Milestone payments Lump sum on grant in major markets? Monitoring compliance

© ip21 Limited June 2006 Practical advice Consider your options at the very start Understand the value of what you produce Don’t make copying easy, even if you can’t stop it Make sure any agreement is clear in advance Keep good records of the work you produce Consider the possibility of licensing income If in doubt, get professional advice

15 28 June 2006 © ip21 Limited 2006 Thank you Matthew Dixon ip21 Limited 1 Cornhill London EC3V 3ND (t) (f)