1. Intellectual Property Rights
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Richard Morris

2. Learning Objectives
An ability to understand and apply the legal tools available to protect the outcomes of your design work
Itp.net
Information is provided for educational purposes and does not purport to provide legal advice
Richard Morris

3. Contents Introduction Intellectual Property
Intellectual Property Rights
Issues and management
Summary
Fbi.gov
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4. Introduction
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5. Intellectual Property?
Property that is intellectual ! i.e. things that can be owned but are mental rather than physical
Intangible property that is the result of creativity [OED]
“We have no single alternative description” [DTI Creative Industries group, 2000]
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6. Why protect it
Because its valuable; the global trade in ‘know how’ is bigger than the global trade in goods
Because it is easy to steal
5 to 7 % of world trade is counterfeit
38 % of business software is pirated
60 % of UK citizens have illegally recorded music
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7. Why protect it
Global sales of copy cat goods are around £400m pa. Brand fakes are a 1bn euro market across the EU. 40m products impounded by customs in 2012.
Includes 15% car parts, 42% film and music
Consumers are not concerned with buying fakes (which may be dangerous or illegal). PwC Report 2013
Ebay..co.uk
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8. Why protect it
Easier and easier to pirate design A six fold increase in electrical goods such as Dre Beats headphones and Ghd hair straighteners over the past 4 years.
bbc.co.uk
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9. How to protect it The common law of ‘passing off’
Through specific statutory regulation - Intellectual Property Rights (IPR). CDPA
Patents, community (design) rights, copyright, trade marks
Plant rights, moral rights, performance rights, database rights
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10. Intellectual Property rights
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11. Patents ; Protect technical functions such as materials, mechanisms or processes

12. Design Rights (community design) Concerned with 3D form
Vase by Marcel Wanders
Design Rights (community design) Concerned with 3D form

13. Registered Design Rights aesthetic 2D and 3D form

14. Product Launch : IPR Richard Morris
Copyright the expression of an idea; literary, drama, art, creative works, software
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15. Trade Marks distinctive elements

16. Patents; data processing method, semiconductor circuits, chemical compounds, screen technology
Design right; case shape, button arrangement, button 3D wave form
Copyright; software code, instruction manual, ringtone
Trade Mark; Samsung, G800, symbian and java software
Patents protect technical functions such as materials or processes
Design right protects 3D shapes. Registered Design protects aesthetic 2D or 3D shapes
Copyright protects the expression of an idea
Trade Marks protect elements which differentiate a product, service or company
overview

17. overview Ideas on their own are difficult to protect
Manifestations of an idea are protectable
The forms of protection are many and varied
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18. Patents
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19. patents
Protect the composition, construction and manufacture of a substance or apparatus of a product or process – how things work, what they do, how they do it, what they are made of, how they are made
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20. patents Belongs to the originator . . Must be registered
Provides a monopoly of up to 20 years
Must be valuable, new and inventive
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21. patents Valuable:- Potential uses/application should be identified.
Following from the ruling on the neutrokine alpha gene sequence which identified potential [uses] rather than actual medical uses (ruled out by the UK but overuled by the EU)
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22. patents New never disclosed in public
Confidentiality agreements (or non disclosure agreements)
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23. patents Inventive Not obvious Beyond the state of the art
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24. patents
Traditionally excludes art, schemes, medical treatment and software
Stock control systems, on line shopping, ABS breaking systems, RAID technology, hyperlinks, search engines, networking, video compression, chipsets, buy-it-now systems, human growth hormone, dolly the sheep, micro-organisms, isolated cellular elements, gene sequences
Amazons One click technology declined a patent (EU)
Apples sliding finger unlock is allowed a patent (US)
Image © Phandroid.com
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25. patents Filing Applications are free Product Launch: IPR
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26. patents “A hand-held blower with an insulating chamber"
Filing
Wording
Searching
“A hand-held blower with an insulating chamber"
Dyson Hairdryer patent, Oct 2013
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27. patents The filing date is crucial
Opposition:- within 9 months of publication or mention in the European Patent bulleting
After 9 months, challenges can be made through the courts via invalidity proceedings. Limitation:- patent can be limited in scope of revoked (even by patentee)
A superfast service accelerates the process to 90 days
Lasts 4 years renewable up to 20 years
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28. patents No global patent EPC a system for taking out patents in Europe
PCT a system for taking out worldwide patents
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29. Community Design (Design Rights)
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30. Community design
Automatic protection for 3D shapes and configurations against copying
Belongs to the originator - or the commissioner
Must be original
15 year protection after conception, or 10 years after marketing
Weaker than copyright
Vase by Marcel Wanders
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31. Community design
Sign and date design drawings. Photograph all models and prototypes.
Post your design drawings and photos to yourself or your solicitor by registered post and keep the sealed envelope safe.
Don’t save over old CAD drawings; keep them to show development.
Prior to showing designs to a third party ask them to sign a confidentiality agreement.
Vase by Marcel Wanders
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32. Registered Community Design
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33. Registered Community design
Original 3D and 2D shapes and configurations, contours, lines, colours, decoration, texture, material
form DF2A & fee of £60 (non refundable)
Statement of novelty
clear orthographic drawing or photograph
takes about three months
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34. Registered Community design
6 months priority time
5 yearly protection up to 25 years against any form of reproduction
Excludes ‘must fit’ parts
Must be aesthetic
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35. Product Launch : IPR
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36. Registered Community design
Limited interpretation
Apple v Samsung (Galaxy)
Apple ‘hand held device’ (not iPad) registration; unornamented, rectangular, evenly rounded, flat, thin.
Samsung thinner with more decoration and therefore not infringing the apple ‘impression’
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37. Registered Community design
Dyson v Vax
Dyson lost
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38. Registered Community design
Beats Electronics v Yamaha violation of patents and trade dress (“overall appearance of the shape and design of headphones including size, proportion and curvature of headband, yoke and earcups”)
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39. Copyright
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40. © Copyright Automatic and typically lasts for 25, 50 or 70 years
Belongs to the originator
Prevents copying not independent creation
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41. Copyright Expressions of creativity
Literary, Dramatic, Music, Art works (that are not mass produced)
Digital works, Software
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43. Copyright
George Lucas argued that he owned the copyright in storm trooper outfits and not the prop designer who was selling them separately
Lucas lost the UK case as the outfits were considered ‘functional’ and not a creative work of art (therefore not copyrightable by Lucas)
The alternative US rights could not be enforced as they were then out of date
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44. 28 Jul 2016, repeal section 52 CDPA
Extends the copyright on furniture designed after 1957 from 25 years to 70 years (after the designers death).
Brings furniture into line with arts and music, and inhibits the replica trade (but not the ‘inspired by’ trade)
Inhibits the replica furniture trade, driven by companies such as Vitra.
Mies van de Rohe Barcelona chair copy

45. Copyright
Related laws; The Digital Economy Act, June 2010 is a contraversial law that allows copyright owners to accuse people of illegal file sharing and use measure such as blocking access to websites.
Related rights; Moral, performance, database rights and a substitute for format and image rights
Moves towards global harmonisation
Crystalspraggins.blogspot.com
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46. Trade Marks
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47. Trade Marks Are automatic ; noted by ™ Can be registered; noted by ®
Costs round £200
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48. Trade Marks
Requires distinctive features or products or companies such as words, expressions or logos,
Includes colours, sounds, smells et’c
Requires categorisation
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49. Coca Cola has a trade mark on the bottle shape, but generally the bar for achieving protection for 3D shapes is very high.
Courts are also wary of granting technical monopolies that can arise from shapes

50. Trade Marks
Cadburys application to trade mark the colour purple (pantone 2685C) for its chocolate products was appealed by Nestle and subsequently rejected because there were “multiple signs” involving different graphical permutations without a single consistent block of colour.
Fanpop.com
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51. Trade Marks No global trade mark
International protection through systems;
WISS (search) followed by individual countries,
(EU) Community Trade Mark, or International Registration (IR)
Guildmastergaming.blogspot.com
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52. Trade Marks Trade marks are not the same as domain names
Increasingly difficult to have one without the other
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53. Issues and Management
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54. Audi filed 9,621 patents for the Audi A6 (more patents than NASA)
Issues; Generation
Invest to generate IP
Use contracts to clarify ownership
Audi filed 9,621 patents for the Audi A6 (more patents than NASA)
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55. Issues; generation Ensure IP is designed in
Chance favours the prepared mind
Don’t underestimate the presence of IP
When to check and to protect
Can be contentious
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56. Issues; protection
Experience, know how and expertise in a design can be difficult to protect
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57. Issues; protection Consider non IPR protection Force? Expertise
Secrecy (trade secrets)
Speed/Constant innovation
Branding
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58. Issues; infringement
A civil matter ; Check the paper trail of your design is sound and buy an example of the item that has been copied. Remember that parallel trade and repairs are permitted
Choose a solicitor that has experience in your industry sector. The solicitor will issue an LBA. The ‘letter before action’ sets out the complaint against the copyist and gives them the opportunity achieve early settlement (Court Rules require an LBA to be sent before any proceedings are taken.)
Consider what you want achieve:
- an undertaking to cease and desist
- damages that reflect a quantifiable loss
- an admission of liability and costs paid
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59. Issues; infringement
A need to fight infringers (particularly around branding) can be expensive and give rise to poor publicity
Apple (computers) defeated a rights battle with Apple Corp music, forced New York city to alter its Big Apple logo and is pursuing Polish online grocery sore A.pl. It has lost however its battle with German cafe Apfelkind
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60. Issues; infringement
Can be slow and expensive, even with special courts - fight or flight?
IPR therefore often only benefit large incumbents, and works against small, innovative start ups
Often not black and white . . .
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62. Yahoo is suing facebook for infringing 10 patents including on line advertising – yet facebook was an early innovator.

63. Issues; infringement
ACID; Trade organisation set up Design register for members, Legal hotline: one hour’s free consultation with specialist solicitors, ‘Watchdog’ presence at exhibitions
og3/
Consider also IP insurance
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64. Issues; exploitation Don’t underestimate the value of IP
Consider technology transfer
Beware monopolies
Contrast with open source idea sharing
‘Patent Box’ (2013); a lower rate of corporate tax for profits derived from patents
Nike Swoosh – designed by Caroline Davison for $35
Facebook – company resource (50p CD), company value $100bn
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65. Summary
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66. Issues; infringement IP generation
IPR protection; patents, community design, copyright, trademarks
Exploitation
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