Emmanuel Tavlas presents Intellectual property and patents

1. Set Up Your Start-Up
Aristeidis Papathanasiou
Emmanuel Tavlas
Set Up Your Start-Up

2. Set Up Your Start-Up
Today’s Agenda
Knowing and protecting your intangible assets
I. From Incorporation to Intellectual Property
A company as a vehicle carrying Intellectual Property assets
II. The value of Intellectual Property
Intellectual Property as the foundation for market dominance
III. Protection & costs
From application to registration
IV. Intellectual property rights & Software
Protection regime
V. Some of the mistakes start-ups usually make
… you should avoid making
VI. Conclusions
+ a final advice

3. Set Up Your Start-Up
A company as a vehicle carrying Intellectual Property assets
I. FROM INCORPORATION TO INTELLECTUAL PROPERTY

4. Set Up Your Start-Up
A company: a Intangible assets represent:
vehicle carrying •the majority of the value,
both tangible &
•the competitive advantages,
intangible assets
•the goodwill of a start-up company
& usually
•come out of ideas,
•created through time and effort,
•do not have a physical form;
•but still have to be materially fixed
in order to qualify as
Intellectual Property Rights (IPRs)

5. Set Up Your Start-Up
What Intellectual IPRs include:
Property Rights • trade or commercial names (“εμπορική επωμυμία”),
(IPRs) or • trade marks (“εμπορικά σήματα”),
• copyright (“πμευματική ιδιοκτησία”),
“Δικαιώματα
• patents (“διπλώματα ευρεσιτεχμίας”),
Διαμοητικής
• Industrial designs (“βιομηχαμικά σχέδια”) ,
Ιδιοκτησίας” in
Greek include?
but also confidential / classified
• formulas & practices,
• processes & instruments,
• patterns & compilations of information
best known as trade secrets (“εμπορικά απόρρητα”)

6. Set Up Your Start-Up
Intellectual Property as the foundation for market dominance
II. THE VALUE OF INTELLECTUAL PROPERTY

7. Set Up Your Start-Up
Intellectual Property
Rights (IPRs) create
market value &
revenues • the foundation for market
dominance and continuing
profitability of leading
corporations,
• the key objective in mergers
and acquisitions and
• the main object of license
agreements.
.

8. Set Up Your Start-Up
Set Up Your Start-Up
INTELLECTUAL PROPERTY = COMPANY VALUE
• What are the IPRs used in
the business?
• What is their value (and
hence level of risk)? As a result :
• Who owns it (could I sue or
could someone sue me)? • first IP assets need to be
• How may it be better identified and then
exploited (e.g. licensing in • tailored to the specific
or out of technology)? needs of each entrepreneur.
• At what level do I need to
insure the IPR risk?

9. Set Up Your Start-Up
From application to registration
III. PROTECTION & COSTS

10. Copyright
Set Up Your Start-Up

11. Set Up Your Start-Up
COPYRIGHT
Copyright is awarded to
original works of
expression, usually without any
formalities.
Copyright, other than literary
and artistic works, also include
software & databases.

12. Set Up Your Start-Up
COPYRIGHT
• Copyright laws protect the form of expression of an
idea, but not the idea itself.
• Protection exists from the time an original idea is
materially fixed
• and lasts and up to seventy (70) years from the
death of the creator.
• Originality means that a work has been created
independently and is the personal expression of the
author.

13. Set Up Your Start-Up
COPYRIGHT – Examples of protected works
 Literary works
(novels, poems, plays, newspapers, films, musical
compositions and even choreographies).
 Artistic works (paintings, drawings, photographs and
sculptures, architectural plans, advertisements, maps
and technical drawings).

14. Set Up Your Start-Up
COPYRIGHT – Registration
• No registration in an official registry or database
in order for an original work to be protected, at
least in Greece.
ADVICE: file it before a notary public
(“συμβολαιογράφος”) so that the date of creation of
the work can be proved, given that the cost is low.

15. Trademarks, patents &
designs
“Industrial property rights”
Set Up Your Start-Up

16. Set Up Your Start-Up
TRADEMARKS
Trade marks are distinctive
signs indicating the commercial
origin of goods & services.

17. Set Up Your Start-Up
ΤRADEMARKS
A trademark usually consists of
• a word part,
• a logo,
• a design or
• all these together.
• Microsoft

18. Set Up Your Start-Up
TRADEMARKS
Registration
Choose a word or a logo that:
 is not directly descriptive of the product or
service.
e.g. register an apple design, or the word
“apple” for a business that sells apples.

19. Set Up Your Start-Up
TRADEMARKS
Registration
Choose a word or a logo that:
 is not a geographical term (e.g. Thessaloniki).

20. Set Up Your Start-Up
TRADEMARKS
Registration
Choose a word or a logo that is not:
 deceptive;
 offensive;
 a state emblem.

21. Set Up Your Start-Up
TRADEMARKS
Registration
Choose a word or a logo that:
 should not bring in mind a previous mark.
e.g. BAHOO for internet search engine
(misspelling will not qualify for protection).

22. Set Up Your Start-Up
TRADEMARKS
Registration
Choose a word or a logo that:
 consists of a made-up name (i.e. a "fanciful"
name) or word, that has no meaning and cannot
be found in a dictionary.
Very strong trademarks such as KODAK or
GOOGLE had no pre-existing meanings.

23. Set Up Your Start-Up
TRADEMARKS
How long does a trademark last?
Trademark protection is perpetual as long as you
renew your mark every 10 years by paying renewal
fees.
……………

24. Set Up Your Start-Up
TRADEMARKS
Should I file a Greek, European on International TM?
EU mark less bureaucratic, preferable if you do
business in more than 2 EU countries.

25. Set Up Your Start-Up
TRADEMARKS
How much will it cost?
Depends on the number of categories of products that
you seek registration for.
Indicative prices: Greece: 500 euros
EU: 1200 euros.

26. Set Up Your Start-Up
TRADEMARKS
What do you think about these marks?

27. Set Up Your Start-Up
TRADEMARKS
Some Hints
 It is advisable to ask for professional advice in order
to avoid a possible rejection of your mark.
 You can also request an availability search before the
mark is filed (maybe even before designed), so as to be
sure than no identical or similar marks exist.

28. Set Up Your Start-Up
PATENTS Patents are “diplomas” granted for
specific period of time (20 years) for
inventions that present
novelty, involve an inventive step
and have an industrial application.
For 3D devices solving technical
problems, utility models can be
worth considering too. They have a
shorter term of protection (6 - 15
years) and less stringent
patentability requirements.

29. Set Up Your Start-Up
PATENTS
Basics
Α patent gives the to the right holder a monopoly to
exploit the invention for twenty years.
Requirements:
1) worldwide novelty,
2) inventive step,
3) industrial application.

30. Set Up Your Start-Up
PATENTS
How does it look like?
Something like a “diploma” granted to the inventor(s).
Includes:
•summary of the invention
•reference to the existing state of the art (what is
already publicly known in the specific industry field)
•explanation of the novel element
•patent claims (steps of the invention).

31. Set Up Your Start-Up
PATENTS
How does it look like?

32. Set Up Your Start-Up
PATENTS
How does it look like?

33. Set Up Your Start-Up
PATENTS
Should I file a patent before the Greek or the European
Patent Office?
 A European Patent is much stronger than a patent
that is only granted after a check on formalities, like
a Greek patent.
 However, a Greek Patent is much easier to grant !

34. Set Up Your Start-Up
PATENTS
How much does it cost?
o Patent application in Greece 1500 EUR
o Patent application before the EPO 3000 EUR
[indicative prices including official fees and attorney
costs].
Do not forget escalating annual fees…

35. Set Up Your Start-Up
PATENTS
Can a patent filing lead me to court?
A competitor may request the cancellation of your
patent in court.
However, patent litigation is a long procedure as
there are major delays in court proceedings, at
least in Greece.

36. Set Up Your Start-Up
A design is defined as "the appearance of the whole
INDUSTRIAL or a part of a product resulting from features such
DESIGNS as :
• lines,
• contours,
• colours,
• shape,
• texture,
• materials of the product itself,
• the product’s ornamentation.
Designs may be protected if:
• they are novel (that is if no design identical or
differing only in immaterial details has been made
available to the public);
• they have individual character (that is the
"informed user" would find the overall impression
different from other designs which are available to
the public.)

37. Set Up Your Start-Up
INDUSTRIAL Where a design forms part of a more complex
product, the novelty and individual character
DESIGNS of the design are judged on the part of the
design which is visible during normal use.
Designs are not protected insofar as their
appearance is wholly determined by their
technical function, or by the need to
interconnect with other products to perform a
technical function (the "must-fit" exception).
However modular systems such
as Lego or Meccano may be protected.

38. Set Up Your Start-Up
Protection regime
IV. IP RIGHTS & SOFTWARE

39. Set Up Your Start-Up
COPYRIGHT – Software
What is protected ?
• the computer program, in both human-readable
and machine-executable form, and the related
manuals are eligible for copyright
protection, but
• the methods and algorithms within a program
are not protected expression,
• source code and object code are protected
against literal copying.

40. Set Up Your Start-Up
COPYRIGHT – DATABASES
Databases may also be protected under copyright. A
database is an organized collection of data for one
or more purposes, usually in digital form. It is
protected under copyright laws and it cannot be
copied partly or as a whole.

41. Set Up Your Start-Up
PATENTS
Software related inventions
• 85+ countries permit the patenting of software
related inventions, at least to some degree.
• The European Patent Convention excludes
"computer programs as such" from patentability.
• But, recent case law from the European Patent
Office has provided a definition, which allows
patent claims on what they call "program products"

42. Set Up Your Start-Up
PATENTS
Software related inventions
• “Software is patentable if the application of the software
has a technical effect.”
• In the words of EPO the technical effect must go beyond
the "normal" physical interactions between program and
computer. If such an effect can be found, the program is
not excluded and hence a patentable invention.
• A technical effect can be, for example, a reduced
memory access time, a better control of a robotic arm or
an improved reception and/or decoding of a radio signal.

43. Set Up Your Start-Up
V. SOME OF THE MISTAKES START-UPS USUALLY MAKE
… and you should avoid doing

44. Set Up Your Start-Up
IP MISTAKE No. 1
Protecting your IPRs as an after the fact tactic.
Protecting your startups intellectual property should be a strategy
not an after the fact tactic.
You need a plan for trademarks, copyright, trade
secrets, contracts/NDA’s and patents before you get
funded, otherwise your intellectual property may be at stake.

45. Set Up Your Start-Up
IP MISTAKE No. 2
IP should not be contaminated at origination.
Incorrectly presuming that originating the idea means owning
it, can be very costly for the company.
However, if the idea was originated or worked on in the course of
working at a prior employer, the prior employer could potentially
assert rights to the intellectual property.

46. Set Up Your Start-Up
IP MISTAKE No. 3
Not securing rights from contracted entities.
Better have an agreement with contractors and outsourced
providers to address the ownership of intellectual property rights.
If not it may result in disputes over ownership and subsequent uses
of the developed technology and corresponding intellectual
property.

47. Set Up Your Start-Up
IP MISTAKE No. 4
Partners or co-inventors agree to the ownership of intellectual
property rights by signing a written agreement.
Complexities and significant unintended consequences.
Joint ownership: examine the objectives of the parties
Sole ownership & licensing : could these objectives be
accomplished more simply ?

48. Set Up Your Start-Up
IP MISTAKE No. 5
IP should not be publicly disclosed before deciding and
executing on a strategy.
Examples of risky disclosures:
• Presentations at conferences
• Research abstracts presented in a public forum
•Posting of information on websites.
• Publications.
•Meetings with company representatives or colleagues.

49. Set Up Your Start-Up
IP MISTAKE No. 6
Relying only on one type of intellectual property for protection
For example, software can be protected not only by copyright, but
also by patent, trade secret and know-how.

50. Set Up Your Start-Up
+ a final advice
V. CONCLUSIONS

51. Set Up Your Start-Up
Set Up Your Start-Up
Be careful when requesting professional advice!
4 questions before hiring a law firm:
Do you work extensively with
start-ups? + final advice
• Are you a “full service” law
firm?
Identify your needs & know
• Are you the partner that will
be doing my work? what you are aiming
at, otherwise you will get
• How much will this cost and overcharged.
are you flexible on billing?

52. Set Up Your Start-Up

53. Set Up Your Start-Up
THANK YOU FOR YOUR ATTENTION !
Aristeidis Papathanasiou
a.papathanasiou@i-pt.gr
Emmanuel Tavlas
e.tavlas@i-pt.gr