1. Intellectual Property for Entrepreneurs 8 February, 2007

2. Summary Introduction Patents Know-how Copyright Software Trade marks Design rights IP for entrepreneurs Q & A

3. Introduction IP protects the application of ideas and information that are of commercial value. 3 central types of IP: Patents for inventions Copyright for literary & artistic work (including software and database contents) Trade marks and names for goodwill attaching to marketing symbols A characteristic shared by all types of IPR is that they are essentially negative: i.e. create rights to stop others doing certain things

4. IP for entrepreneurs IP, in particular registered IP, has value and can be a key asset of a business Registered right they can be legally dealt with (e.g. sold, assigned, licensed) Unregistered rights require suitable procedures (e.g. confidentiality provisions, enforcement policies) A business plan should: Identify the asset Value the asset Indicate how it will be protected, defended and exploited to create value created Identify a mid to long-term strategy for the portfolio

5. How many IPRs can you spot?

6. Patents

7. What is a patent? An for incentive for innovation & public disclosure of a technical invention A 20 year monopoly to exploit the subject of the patent according to the patent grant Registered right that is legally treated as (intangible) personal property The owner can grant other people the right to exploit the patent through licensing (vs. assignment)

8. What can be patented? An invention that: is new involves an 'inventive step' which is not obvious is capable of industrial application is not excluded

9. What cannot be patented? discovery, scientific theory or mathematical model scheme, rule or method for performing a mental act, playing a game or doing business or computer programs without a "technical contribution" presentation of information literary, dramatic, musical or artistic work or other aesthetic creation

10. Patenting tips Do not disclose the invention! Ensure confidentiality Protect commercial value of the product – not just the ideas behind it Search the databases for other similar patents Consider the purpose of the patent and draft claims accordingly Choose you filing date carefully Inventors vs. owners

11. How do you apply for a patent? Draft a patent, paying particular attention to the "claims" – consider using a patent agent Submit a patent application to the UKPO Process: UK filing, PCT filing, examination & objections, grant The process can be expensive and success is not guaranteed

12. Patent infringement A tort actionable while the patent is in force Anyone who: makes the product uses the process disposes of products obtained from the process Remedies: damages, injunction, seizing goods

13. Know How

14. What is know how? The (nebulous) element of (technical) knowledge or experience that cannot be reduced to paper or otherwise captured Is it IP? No: might be intellectual, but it is definitely not property – it can only be protected through contract obligations Vital to "industrial" IPR: i.e. patents and registered designs

15. Value of know how to a business "lead time" over your competitors by allowing you to get to market faster "competitive edge" in some element of your business – either from secrets or key people Institutional knowledge or processes that create an ineffable advantage Consultancy Licensing

16. Protecting know how Ensure that you have appropriate confidentiality measure in place (contracts & procedures) Identify the key know how, including the employees and establish means to retain it Consider whether (if possible) to document that know how Infringement of know how: action based on contractual breach = damages

17. Copyright

18. What is copyright? Copyright gives the exclusive time limited right to copy the work (or perform, display, broadcast or play it in public) and to prevent dealings in unauthorised copies. Copyright does not protect ideas, merely the right of reproduction Time limit: life of author + 70 years, though different for some types of copyright (e.g. computer generated works)

19. What is covered by copyright? Irrespective of artistic merit, copyright protects: any written text in any form and on any medium (paper files, notes, memoranda etc) as a "literary work" typographical arrangements of published editions (of literary, artistic or musical works); creative content of databases (as a literary work) computer software (as a literary works) dramatic and musical works film and sound recordings, broadcast, cable programmes artwork and graphics (e.g. design documents, computer screen displays, picture marks and logos)

20. Protection of copyright Unregistered right Protection vests automatically, but for belts & braces: Use © symbol Mark copyright [name] 2001. All rights reserved. Ensure metadata contains the same information

21. Copyright to watch out for Web, media & educational content Digital repositories Databases Unregistered logos Documents (including emails) & reports Software, algorithms, business methods

22. Restricted acts: primary infringement Copying a substantial part of a work ("substantial" is based on quality rather than quantity) Issuing copies of the work to the public Renting or lending the work to the public Performing, showing or playing the work to the public Broadcasting the work (or including it in a cable programme service) Adapting the work

23. Restricted acts: secondary infringement Importing of an article (other than for private use) Dealing with infringing copies (in the course of business) Transmission of infringing copies

24. Copyright infringement Civil Remedies: Damages Delivery up Right to seize infringing copies Injunctions Criminal offences too (i.e. piracy) Challenge is policing

25. Software

26. What about software? "Computer program": not defined but includes "preparatory design material": includes the source and object code Software is not a separate IPR in itself, but is covered by copyright as a "literary work" Expressly excluded from patentability unless it has a "technical contribution"

27. What is different about software? Made up of algorithms & code (i.e. program) that instruct the computer on a particular task Copying: it can be very easy (true of digital assets generally) Moral rights of paternity and integrity – i.e. potential for multiple different copyrights to subsist in one work: Source code: written by a programmer Compiler: could have been written by a different programmer Object code: the result of the translation of the source code by the compile Maintenance and support: cost or benefit to your business model

28. Restricted acts Copying (a substantial part of) the work Issuing copies of the work to the public Renting or lending the work to the public Performing, showing or playing the work to the public Broadcasting the work (or including it in a cable programme service) Adapting the work

29. What is a "technical contribution" Where a computer program goes further than what is necessary to make the computer work when the program is run, that further "technical effect" can be patented Examples of "technical effect" an industrial process operation of a piece of machinery by a computer internal functioning of the computer itself or its interfaces under the influence of the program where the software solves a technical problem where technical considerations are involved to arrive at the invention

30. Protecting software The "black box" approach: keep the code secret and licence: Shrink wrap/click wrap Other licences: end user/site Perpetual/annual licence fee Maintenance and support New releases and versions Escrow The "open source" approach: community of programmers contribute, so copyright diffuse still licence, but value is now in maintenance and support Patenting if there is a "technical contribution"

31. Trade Marks

32. What are trademarks? Trade marks can be words, text, pictures, logos, colours, shapes and even smells - in theory anything which can be represented graphically and can distinguish the goods or services of a business Should be important to all businesses, if only for corporate identity, but in particular for branded products as a manifestation of goodwill Can be unregistered or registered

33. Registered trade marks Registration provides a 10 year (renewable) monopoly on the use of an identical mark in one or more specified classes of goods or services Will also provide protection against "similar" marks that might confuse the public Words and images can be registered

34. Marks that cannot be registered Marks identical to registered marks Descriptive marks Devoid of distinctiveness Similar marks Customary usages

35. Unregistered trade marks Give protection only to the extent that there is goodwill and reputation, which is difficult to value and harder to exploit (as an item of "property") than a registered trademark Infringement actionable as "passing off" to protect the goodwill of a business against harmful confusion, but it is potentially difficult and uncertain

36. Tips for a business Register your trade marks Use the trade mark (lack of use will nullify after 5 years) The mark should not describe a function or geographic origin Use invented words: these are inherently distinctive! E.g. "Kodak", but avoiding using it as a general reference term for a particular good or service (e.g. "Hoover")

37. Design Rights

38. What is a design? Appearance of a product: shape, texture, colour, materials used, contours & ornamentation To be new the overall impression should be different from any existing design 3 different ways to protect: Registered design rights: Unregistered design rights Copyright

39. Unregistered design right Akin to, but independent of, copyright Protects the design of non-artistic (i.e. manufactured) original articles Arises automatically Time limited to 15 years Important for the manufacturing industry Note: Depending on dates of creation, UDR can overlap awkwardly with the copyright in design documents

40. Registered design rights Registration provides a 25 year monopoly (needs to be renewed every 5 years) Design must be new and have individual character - covers appearance of the whole (e.g. a cup) or part (e.g. the handle of the cup) of a product "Product" is very widely defined and includes packaging, get-up, graphic symbols and type faces No requirement for eye-appeal 12 month novelty grace period Protected in all mediums: i.e. not limited to the particular article bearing that design

41. Registration of design rights Designs can be registered in a number of categories: Objects (e.g. cordless drill) Signs, including "labels, stationary, signage" Symbols Graphics Computer icons Computer displays (e.g. screen displays for games) Computer graphics (e.g. computer game characters)

42. Registration & infringement Application to UK or Community (OHIM) for small fee Infringement: design which does not produce on the "informed user" a different overall impression

43. Design rights and business Does the business have a distinctive design to help, for example with branding? Unregistered vs. registered vs. copyright vs. trade marks!

44. IP for entrepreneurs

45. Professional advisors Lawyers: advise, negotiate, draft & litigate Patent agents: advise, draft, file & prosecute Trade mark agents: advise, file & prosecute All of the above can be done without advisors, but it is a question of cost vs. risk UWEs business plan competitions include use of professional advisors for free… use them to maximise value!

46. How many IPRs can you spot?

47. Intellectual Property for Entrepreneurs Any Questions?