2. The Role of Intellectual Property
in Competitive Strategy
Matthew Howell
Senior Associate
Withers & Rogers LLP
3. The Role of IP in Competitive Strategy
⢠Intellectual Property â Competitive Strategy!
⢠But IP should be carefully considered as part of
your competitive strategy
⢠Why?
⢠Intellectual Property rights are legal monopolies
that can be used to prevent others from doing
things
⢠So can protect and enhance your competitive
position
4. What is Intellectual Property?
Registered
Trade Marks
Patents
Common Law
Trade Marks
Registered
Designs
Know How
Utility Models
IP
Copyright/D
atabase
rights
Design
Right
5. ⢠Protect technical features of a
product or process
⢠Allow owner to prevent commercial
dealings in the patented invention
⢠Up to 20 years duration
⢠Invention must be new and
inventive
⢠No non-confidential disclosure prior
to filing application
⢠Certain things are excluded by law
from patent protection
Patents
6. Software Patents â UK and Europe
⢠Computer programs âas suchâ are not patentable
in the UK and at the European Patent Office
⢠But it is possible to obtain protection for certain
types of âcomputer implemented inventionâ
⢠For the European Patent Office the invention
must produce a âtechnical effectâ
⢠The UK Intellectual Property Office requires an
"inventive contribution" which is "technical" in
nature
7. Mary had a little lamb,
its fleece was white
Mary had
a little
lamb, its
fleece was white
as snow and everywhere
that Mary went, that lamb
was sure to go.
"Technical Effect" at the EPO
8. Software Patents â US Perspective
⢠Patentable inventions: any ânew and useful
process, machine, manufacture, or composition
of matter, or any new and useful improvement
thereofâ
⢠3 specific exceptions to patentability: "laws of
nature, physical phenomena and abstract ideasâ
⢠US Patent system traditionally more liberal on
computer programs than UK and EPO
9. Community Design Registration No.000748280-006 .
⢠Protect the appearance of a
product
⢠Allow owner to prevent
commercial dealings in products
identical to or similar to the
registered design
⢠Up to 25 years duration
⢠Design must be new and must
have individual character
⢠Application must be filed within 12
months of first public disclosure
Registered Designs
10. Registered Trade Marks
Community Trade Mark Registration No. 006314546
⢠Protect signs which distinguish the goods/services
of one undertaking from those of another
⢠Allow owner to prevent use of the mark registered,
or similar mark, in relation to the goods/services
for which it is registered
⢠Must be capable of distinguishing
⢠Words, logos, colours, shapes, sounds are
registrable
⢠Indefinite duration, renewable every 10 years
UK Trade Mark Registration No.2460723
11. ⢠Identify what makes you competitive
⢠Can it be protected?
⢠If so, move quickly to protect it
⢠Mark your products and literature (pat.
pending, ÂŽ, Š,â˘) to ensure that
competitors are aware of your IP
⢠Be vigilant for infringers and enforce your IP
rights
⢠Use your distribution networks and supply
chain to help identify infringements
IP in Competitive Strategy
12. IP in Competitive Strategy
⢠Look at your competitorsâ IP to ensure that
you do not infringe, and to find out more
about what they are doing and planning
⢠Protect improvements to your own
technology and potential improvements to
competitor technology
⢠Is there third-party IP in different fields that
you could exclusively licence in to improve
your product?
⢠Review your IP position regularly; your
strategy may change as your business grows
13. Example
⢠In 1991 25% of all vacuum cleaners sold in
the UK were made by Hoover
⢠In 2001 more than 50% of the vacuum
cleaners in the UK were sold by Dyson
⢠In 2001 Hooverâs market share had
dropped to less than 10%
⢠In 2010 Dysonâs market share was 40%
and operating profits were ÂŁ190m
14. Example
Dyson DC 01Dyson DC 01
⢠19 April1979: Dysonâs first UK
patent application filed
⢠17 June 1981: European patent
application no. 0042723 âVacuum
Cleaning Applianceâ filed
⢠21 August 1985: Dyson European
patent no. 0042723 granted
⢠1993: Dyson DC 01 launched
⢠âThe first vacuum cleaner not to
lose suctionâ
15. Example
⢠In 1998 Dyson sold 1.4m units worldwide,
generating revenues of ÂŁ190m
⢠In 1999 Hoover launched the âTriple Vortexâ
vacuum cleaner to compete with Dyson products
⢠Dyson instigated patent infringement proceedings
against Hoover at the UK High Court and won
⢠In the High Court judgement of 2000, Hoover was
ordered to stop supplying the Triple Vortex,
Dyson was awarded ÂŁ4m damages
16. Example
⢠DC01 also protected by registered
design
⢠Dyson trade mark registered
⢠To date, Dyson has filed >1000 patent
applications
⢠119 Community Design applications
⢠65 Community Trade Mark applications
UK Registered Design No. 2027539UK Registered Design No. 2027539
UK Trade Mark Registration No. 2000035 (Filed 31/10/94)UK Trade Mark Registration No. 2000035 (Filed 31/10/94)
UK Trade Mark Registration No. 2316407 (filed 21/11/2002)UK Trade Mark Registration No. 2316407 (filed 21/11/2002)
17. ⢠Identify what makes you competitive
⢠Can it be protected?
⢠If so, move quickly to protect it
⢠Mark your products and literature (pat.
pending, ÂŽ, Š,â˘) to ensure that
competitors are aware of your IP
⢠Be vigilant for infringers and enforce your IP
rights
⢠Use your distribution networks and supply
chain to help identify infringements
IP in Competitive Strategy
18. IP in Competitive Strategy
⢠Look at your competitorsâ IP to ensure that
you do not infringe, and to find out more
about what they are doing and planning
⢠Protect improvements to your own
technology and potential improvements to
competitor technology
⢠Is there third-party IP in different fields that
you could exclusively licence in to improve
your product?
⢠Review your IP position regularly; your
strategy may change as your business grows