Intellectual Property Workshop Presentation

1. Intellectual Property
Workshop
Gary Townley
Business Outreach & Education
@The_IPO

2. Intellectual Property Office
Executive Agency within Department of Business, Innovation
and Skills (BIS)
1000+ staff based in Newport in South Wales, 50 based in
Victoria, London
Our task is to help stimulate innovation and raise the
international competitiveness of British industry through
Intellectual Property Rights (IPR)

3. Objectives
By the end of this event you will…
Be able to describe the different types of IPR available
Explain the difference between registered and
unregistered IPR
Say what should be covered in an IPA audit
Explain the benefits of incorporating IP within a business
strategy
Understand better how to use IP when researching a
licensee or negotiating licensing agreements
Identify potential IPR issues
Know where and when to seek further advice

4. How can Intellectual Property Benefit
Your business?
• IP may generate income for your business through
licensing, sales and/or commercialization of IP-protected
products or services.
• IP rights can enhance the value of your business with
investors and financing institutions.
• In the event of a sale, merger or acquisition, IP assets
may significantly raise the value of your business

5. Business investment has changed
- in UK as elsewhere
IP
Fixed Capital
£ billion
Source EU COINVEST and Haskel et al

6. IP Baseline Survey
96% of UK businesses do not know the value of their Intellectual Property
Rights
Only 11% of UK businesses know that disclosure of an invention before
filing will invalidate a patent.
74% of UK businesses could not correctly identify the owner of copyright
when using a subcontractor
Only 4% of UK businesses have an Intellectual Property policy

7. •A free, interactive e-learning tool, 4 short Modules
•Helping advisors increase their knowledge in identifying IP assets
•IPO certification on completion
•A basic overview of IP at your fingertips at anytime
•Portable pocket solution to help top up your IP knowledge
•Download from the Apple store iTunes & the Android app store
•Free and confidential online diagnosis tool
•Help your business grow through Licensing, Exploiting & Franchising
•Identifying and adding value to your IP assets
•A series of free business guides to understanding IP
•Explaining the different types of IP rights & how to protect them
•A great starting point for those beginning their IP journey
•Accredited interactive course with in depth training on IP
•Available in person and online (coming soon)
•Study Guides and downloads

8. What is intellectual property?

9. Syndicate Exercise 5
IP Audit
Syndicate Exercises 1-4 - what
kind of protection is appropriate?
Every Business Owns IP.
What do you own?

10. X.1

12. Syndicate Exercise 1
Would a UK trade mark offer any
protection abroad?
Which of the marketing gimmicks are
registrable as Trade Marks?
Even though they have not registered, do
they have any protection?

13. Syndicate Exercise 1
Smell
Colour theme Shape theme
Domain name Slogan
Name Logo
Which of the marketing gimmicks are
registrable as Trade Marks?
Non-traditional Music

14. What is a Registered Trade Mark?
Any sign which is capable
of being represented graphically
Any sign which is capable of
distinguishing the goods or services
of one undertaking from another
“A Badge of Origin”

15. True or False
You cannot register a dictionary word
Changing the spelling makes it different
You do not have to use a registered trade mark
I have registered at Companies House so I own the
trade mark

16. unregistered Trade Marks
A lot of evidence must be presented,
including proof of established reputation,
confusion for consumers, and harm done
If an unregistered TM is infringed,
attack with a ‘Passing Off’ action

17. Unexpected marks
• Office of Government
Commerce
• £14000 to create new logo
“not inappropriate for an
organisation that’s
looking to have a firm
grip on government
spend”
OGC Spokesperson

18. Slogans as Registered
Trade Marks
Laudatory terminology, and words in
common usage in the class of goods in
question may not be registered as RTMs
Gillette ® , The Best a Man can Get TM
However, Mr Kipling ® since 1984, but
Exceedingly Good Cakes ® since 1994

19. Colours as Trade Marks
- as applied to the outside of petrol filling stations
- in relation to roadside recovery services
- in relation to milk chocolate
- in relation to cat food
- in relation to baked beans
- in relation to mobile communications

20. Music as Registered Trade Marks
TM 2219984

21. Domain names
Trade Mark registration is not company
name or domain name registration
A domain name may be
registered as a Trade Mark
Incorporating another’s RTM into your domain
name or meta-tag may be an infringement

22. Why infringement searches?
Avoid expensive mistakes
Awareness of competing marks
Early resolution of potential problems

23. UK Applications
Fees:
Application fees: £170 – Includes one Class
Additional Classes £50 each (up to 45 Classes)
Timeline:
Examination within 2 months of filing
Registration (unopposed) in 5 months

24. Trade Mark Registration Overseas
Paris Convention - six months priority
OHIM – Community Trade Mark
e-filing fee €900
WIPO - Madrid Protocol

27. Be Inventive
Google – an intentional misspelling of googol (1 followed by 100 ‘0’s)
Blaupunkt – originally called ideal – a blue dot was attached if the
headphones came through the quality test.
LEGO – Danish “leg godt” – play well ( coincidentally “I learn” in Latin)
Starbucks - a character in Herman Melville’s novel Moby Dick
J D Wetherspoon – from one of Tim Martin's teachers in New Zealand who
said that Martin would never make it as a businessman.
.

28. Use your name
Amstrad – Sir Alan Michael Sugar trading
B&Q – founders Block & Quayle
DHL – Adrian Dalsey, Larry Hillblom & Robert Lynn
Hasbro - Henry & Helal Hassenfeld – Hassenfield Brothers
Mercedes – the first name of salesman Emil Jellineks daughter
Mitel – Mike & Terry’s Lawnmowers – Michael Cowpland & Terry Matthews

29. Other types of mark
Certification marks
• A certification mark is a specific type of trade mark. A guarantee
that the goods or services bearing the mark meet a certain defined
standard or possess a particular characteristic.
• The owner will defines the standards or characteristics.
• Such marks are usually registered in the name of trade
associations, government departments, technical institutes or
similar bodies.
Collective marks
• A collective mark is a specific type of trade mark which indicates
that the goods or services bearing the mark originate from
members of a trade association, rather than just one trader.

31. X.2

32. Syndicate Exercise 2
What is the Intellectual Property, and who owns it?
Video company owns the copyright
What are the confidentiality obligations now?
The clips appearing in the tv advertisement
are no longer subject to confidentiality
What can the video company do now?
The video company can ask for an additional
fee, and thereafter sue for unauthorised use

34. True or False
If it doesn’t have a copyright notice, it’s not protected
I can copy 10% without it being an infringement
If I acknowledge the original work, I can use it
I have bought the book/painting/photograph so I can use
it as I wish

35. Copyright
Caxton’s Printing Press
The Statute of Anne 1709
Scope increased to include
engravings, prints, sculptures,
dramatic works and musical
works
1956 – films, broadcasts and
typographical arrangement
Copyright, Designs and Patents
Act 1988

36. Copyright Conventions
Universal Copyright Convention
Adopted in 1952
An alternative for Countries that believed that Berne
overly benefited Western developed copyright
exporting nations
Berne Convention - Accepted in 1886
Works protected by national law irrespective of where
the work was created
163 Countries are parties to the Convention

37. Copyright
Criteria for Protection
1. For copyright to subsist the work must be recorded in
a material form.
2. A literary, dramatic, musical or artistic work must be
“original” – not copied. To qualify as original a work
needs to be the author's own intellectual creation.
3. Sufficiently connected to the UK or another qualifying
country to qualify under UK law – authorship,
publication, place of transmission.

38. 1.Literary Works – All works expressed in print or writing.
2.Dramatic Works – A work capable of being performed.
3.Musical Works – includes melody, harmony and rhythm.
Copyright
5.Films – Moving images produced by any means.
6.Sound Recordings – a recording of sounds, from which the
sounds can be reproduced.
8.Published Editions – typographical arrangements.
7.Broadcasts – transmission of visual images, sounds or
other information.

39. What Copyright protects
Books, technical reports, manuals, databases
Engineering, technical or architectural plans
Paintings, sculptures, photographs
Music, songs, plays, dramatic works
Promotional literature, advertising
Films, videos, cable or radio broadcasts
Computer software & websites

40. What Copyright does not protect
Works in the public domain
- For example if the copyright has expired
Expression over ideas – copyright protects
the expression of an idea, not the idea itself
Copyright Exceptions – covered later
Single words & Titles or Fact

41. How long does Copyright last?
Literary, musical, artistic & dramatic works:
author’s lifetime plus 70 years
TV & radio broadcasts: 50 years from first broadcast
Sound recordings: 70 years from first publication
Published editions(typographical layout):
25 years from first publication
Films: 70 years after the death of the last of:
director, composer of any music specifically created
for the film, the author of the screenplay and the scriptwriter
Uploading a work which is out of copyright to the internet may
create new copyright so don't assume it is copyright-free if you
want to use it.

42. Who owns Copyright?
Usually the first creator or author...
…or their employer if produced in the
ordinary course of their employment
However, a contractor will retain ownership
unless their contract is explicit to the contrary
Even if the creator sells their rights, they have
‘moral rights’ over how their work is used

43. Who owns Copyright in Software?
Saphena Computing v Allied Collection Agencies (1989)
No mention of Copyright in contract
However, developer (Saphena), allowed client a copy
of the “object code” to repair bugs
Saphena did not allow client a copy of “source code”, so
they could NOT make improvements without infringing
Copyright

44. If there is more than one author?
Where two or more people have created a single work and the
contribution of each person is not distinct from the others.
A recording of a song will have several contributors: performers,
composers, writers, sound producers. The same may be true
with computer programmes created by a team.
Where there is more than one rights holder, all must give
permission before the work can be used, including performance.
If any of the rights holders cannot be traced, the work may not
be usable.

45. Primary Infringement
Any of the following without the
consent of the rights owner
Copying / Reproducing Adaptation
Distributing Lending or renting
Public performance
IGNORANCE IS NO DEFENCE
Communication to the public
Making available

46. Secondary Infringement
Any of the following without the
consent of the rights owner
Selling Importing
Possession for business purposes
Facilitating primary infringement
Only guilty if done knowingly,
or if you ought to have known

47. ‘Exceptions’- permitted acts
There are a number of limited exceptions to
copyright, which allow works to be used without
the permission of the copyright owner.
Exceptions exist for the following purposes:
Private study Research
News reporting Some official reports
Education, libraries
‘Time-shifting’ of broadcasts
Incidental inclusion
Visual impairment

48. Are the lines blurred?
“This could not be further from the truth”, he writes. “Even in current popular music. George
Harrison’s infringement of ‘He’s So Fine’, written by Ronald Mack and interpreted by the Chiffons,
was decided in favour of Mr Mack. Mr Harrison apologised. And the 1990s saw the first significant
sampling decision by a federal court, Biz Markie’s looping of my client Gilbert O’Sullivan’s ‘Alone
Again Naturally’, without permission, resulted in a judgment in Mr O’Sullivan’s favour against Biz
Markie, his record company and Warner Brothers Records, the distributor”.
“Remember, the award was made, not because the jury were ‘experts’,
but because they were an average group of normal people who heard a
substantial similarity to the underlying work. All of the experts seemed to
disagree depending on which side of the litigation they were on”.
“There is a moral to the story: If the lines are ‘blurred’, ask permission. It
is the right, civil and moral thing to do”.
Michael Sukin

49. Crown Copyright
Material produced by a servant or officer of the Crown
in the course of their duties
50 Years from first broadcast or publication

50. Collecting Societies
PRS for Music
Phonographic Performance Limited (PPL)
Video Performance Limited (VPL)
Authors’ Licensing and Collecting Society (ALCS)
Copyright Licensing Agency (CLA)
Newspaper Licensing Agency (NLA)
The Design and Artists Copyright Society (DACS)
The Artists’ Collecting Society (ACS)
License copyright on behalf or rights holders in exchange for a fee
Around 17 collecting societies in the UK, including:
The Copyright Tribunal - adjudicates on
reasonableness of collecting society licences

51. Copyright for Business
Mark work with the international copyright symbol
©
Electronic fingerprints
Look at licensing and assignment opportunities
Regularly review contracts (business and employees)
Record the work in some way

52. How to prove copyright
• No official register, no forms, no fees
• Special delivery post, date stamped
and unopened
• Lodge the work with a solicitor/IP
specialist
• Unofficial registers
Note: none of the above will prove ownership, only that the
work existed

53. Unofficial registers
• Costs – one off, regular payments, per
item?
• Help with infringement or just
recordal?
• Better than your own evidence?

54. Copyright News
Private copying – for own personal use
Quotation – any use (source acknowledged)
Parody – limited copying under “fair dealing”
Text and Data Mining – to do academic research
Orphan works - where the rights holder is not
traced, may apply for a specific licence for UK use.

55. Orphan works
• Diligent search before something can be used as an orphan work is
key to the scheme.
• Commercial and non-commercial uses of orphan works in the UK will
both be permitted.
• This permission should come at an appropriate price – a market
rate, to the extent that one can be established.
• This price should be payable in advance (or at agreed times if there
is a royalty element).
• Licences will, necessarily, be non-exclusive.
• Moral rights should be respected and protected.
• The deliberate stripping of metadata to ‘orphan’ works is already
potentially subject to criminal sanctions and the Government will
maintain that position to deter such behaviour.

56. Orphan works due diligence

58. What protection is appropriate?
Confidentiality
Copyright
Design Right
Trade Marks
Patents
Regd. Designs

59. Confidential Information
Know-how & Show-how Customer Lists
Pricing Strategies Technical Information
Methodologies Commercial Intelligence

60. Danger Moments
Co-operative Venture Partners
Consultants
Sub-contractors
Contract staff
Suppliers
Customers

61. Working with others
Prior use or disclosure will invalidate a patent
application - use ‘Confidentiality Agreements’
Agree in writing who will own any I.P. arising
from the collaboration before commercialisation

62. X.3

63. Syndicate Exercise 3
How to protect the shapes, patterns,
name and jewel of the toy?
Registered Designs
Name - “Hedge Dog” Distinctive jewel
Registered Trade Marks
Each of shapes National flags excluded

65. Registered Designs
A Registered Design is a legal right which protects the
overall visual appearance of a product or a part of a
product
"the appearance of the whole or part of a product resulting
from the features of, in particular, the lines, contours,
colours, shape, texture or materials of the product or
ornamentation."
References to texture and materials does not mean that
protection may be granted for the feel of a texture, or what
the product is actually made from; only that these features
may influence what the overall product looks like.

66. True or False
If I make 6 changes it’s a new design
I can’t sell some of the designs before registering
My UK design protects me in Europe
If I don’t register I have no protection

67. Examination
Is the design new?
It must not be the same as any design which has already been
made available to the public
Does it have individual character?
The overall impression the design gives to someone must be
different from the impression any previous design gives them
A design is considered to be 'new' if no identical (or very similar)
design has been published or publicly disclosed in the UK or the
European Economic Area (EEA). For example, a design would not
be considered new if it had been 'published' on an Internet website
viewable in the EEA before the date it was filed

68. Examination Process
There are a number of grounds under which we can object to a
design.
Quality of Drawings
Idea
Technical Function/Must Fit – Must Match
Morality
Protected Flags/Emblems

69. Drawings
Do you think this drawing would adequately protect a
tee shirt?

70. Ideas
A Registered Design protects how a product actually looks, you cannot
protect either a concept or an idea, i.e. you cannot protect the idea of having
the name of your favourite football team sewn into your socks.

71. Technical Function/Must Fit – Must Match

72. Morality
We cannot protect any design which would be
contrary to public policy or morality.
Examples: A tee shirt with a racist slogan on it.
Articles associated with the taking of illegal drugs.

73. Protected Flags/Emblems
Use of the flags of the UK are permitted providing they are
not being used in a manner which would be misleading or
grossly offensive.
Images of the Royals or emblems belonging to them may
not be registered.
Some countries have protected their flags and national
emblems and they must not be used

74. Registered Designs
Protects shape or configuration (3-D)
and/or pattern or ornamentation (2-D)
No protection for function, materials
or technology of manufacture
No protection when form is dictated
by function (ie: no design freedom)

75. Registered Designs
Design protected without limitation
to a specific product or article
(the term "product" can mean things like packaging, get-up, graphic symbols,
typographic typefaces, and parts of products intended to be assembled into a
more complex product)
In respect of 'get-up', protection may be granted to the overall presentation of
those products which comprise multiple components but which are sold as one
single item, eg. a board game complete with playing pieces, or a product in its
packaging.

76. Registered Designs
Design protected even if applied to
single items or handicraft products
Protection for component parts if
ordinarily on view when in use
Sometimes a product must be produced in its exact form and dimensions in
order to be mechanically connected to, or fit in, around or against another
item (eg. a wing for a car). We will object to your design if this is the case.

77. Robert Welch Designs Ltd
142922
Argos
WWW.
ACID.UK.COM

78. Registered Designs
• Royalties for past sales of £103,302.81
• £46,750 towards costs
• A licensing deal has now been agreed.
“having built our brand on a strong design history, it is critical to us that
our customers do not mistake an inferior product/copy to be our
design. Therefore we at Robert Welch take IP very seriously and will
pursue anybody who copy/pass off our designs”
Alice Welch, Marketing Director
Jan 2006
WWW. ACID.UK.COM

79. “the informed user…without being a designer or a technical expert,… knows the
various designs which exist in the sector concerned, possesses a certain degree
of knowledge with regard to the features which those designs normally include,
and, as a result of his interest in the products concerned, shows a relatively high
degree of attention when he uses them.”
By way of example, in Honda v. Kwang which concerned lawnmowers, the
informed user was held to be someone who wants to use a lawnmower, needs to
buy one, and has “become informed” by browsing catalogues, visiting specialised
stores, garden centres and downloading information from the internet.
Informed User

80. Deferred Publication
When a design is registered, it is published - and therefore publicly
disclosed - on our website. If the design representations show a feature
for which you are also seeking patent protection, the disclosure may
affect the validity of that patent.
Alternatively, you may simply want to spend more time developing and
marketing your product before launching it publicly.
Deferred publication allows you to make an application and get a filing date
but without immediately disclosing your design to the public. On deferment,
you then have up to 12 months to give us permission to register and publish
your design, with the effective date of registration going back to the original
date of filing.
You should be aware that you do not have registered rights until you request
publication of your application.

81. Multiple Applications
£60 for first design
(£40 application + £20 publication)
£40 for subsequent designs
(£20 application + £20 publication
Renewal fees every 5 years
Maximum term 25 years

83. Registration Overseas
Paris Convention – 6 Months
OHIM - Community
Design
Hague Agreement
(1/1/2008)

88. X.4

89. Unregistered Design Right
Syndicate Exercise 4
Were they right to assume that (i) new uses for
known materials, & (ii) new shapes are unpatentable?
New uses for known materials can be patentable
New shapes are patentable if giving a ‘technical effect’
In the absence of patents what IP right is left?

91. Unregistered Design Right
Applies in the UK only
Original designs protected against copying
Protects shapes and configurations
(internal or external)

92. Duration & scope of protection
Design protected for 10 years from first
marketing, or 15 years from
first creation, whichever is shorter
In the first five or so years the owner
has a right against copying
In the last five years the owner cannot
refuse to sell a licence to others
requesting to copy - ‘Licence of Right’

93. CDR: unregistered design right
Only those designs eligible for design
registration will qualify
Protection against copying lasts for
three years from first public disclosure

95. Criteria for ‘patentability’
Patents are for “technological innovation”, though the
Patents Act 1977 fails to define the word “invention”
Inventions must be new - not known
anywhere in the world prior to the filing date
Inventions must have an ‘inventive step’ - not
obvious, a simple adaptation or combination
Inventions must be industrially applicable
and have a ‘technical effect’

96. Exclusions
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any
other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing
a mental act, playing a game or doing business, or a
program for a computer;
(d) the presentation of information;

97. GB 2199753 GB 2361409
Exclusions against patentability

98. Citations v. novelty: “Prior art”
Paul Graham USHER
Patent No GB 2117179 A
Priority date: 18 March 1982
The BEANO
No. 2015 page 1
28 February 1981

100. Section 22/23
Certain inventions may be prohibited under section 22 of
the Patents Act 2004 as being prejudicial to national
security.
For the purposes of section 23, permission to file abroad
is necessary for applications containing information which
relates to military technology

101. 1 2
Prepare a
patent
specification
Description
Drawings
Claims
Abstract
File form 1
and one copy
of your
specification
Form 7 will be
required if the
applicant is
not the
inventor
3
We issue a
filing receipt
confirming your
application
number and
filing date
4
File form 9A and
fee within 12
months of the
filing or priority
date
The application process

102. 5 6
We carry
out a
novelty
search to
assess your
invention
and issue a
report
If formal
requirements
have been met
your
application is
published at
18 months
7
You file form 10
and fee no later
than six months
from publication
8
We examine your
application and
inform you if
anything needs
amendment
Once all
objections have
been overcome
we will grant your
patent
The application process

103. 1 A vehicle transmission assembly including a change speed transmission having a
casing, an input for connection to an engine or motor, a first epicyclic gear train
which is connected to the input and in use selectively provides a reduction ratio or a
direct ratio to a second epicyclic gear train which in use selectively provides a
reduction ratio or a direct ratio to a third epicyclic gear train which in use selectively
provides a reduction ratio or a direct ratio to a forward transmission output, each
epicyclic gear train comprising a sun gear, an annulus gear and a set of planet
gears mounted on a respective carrier and intermeshing with the respective sun
and annulus gears, and first, second and third coupling means associated with the
first second and third epicyclic gear trains respectively to selectively couple one of
the sun gear and the annulus gear of the respective gear train to the casing or to
the carrier, each coupling means comprising a synchromesh selector slidable on a
member fast with the said one of the sun gear or annulus gear and engageable with
the casing when slid in one axial direction and with the carrier when slid in the other
axial direction.
Claim 1

104. WO01/83047
GB2360558
26 Sept 2001
Land Rover Group Ltd
Vehicle Transmission
Assembly

105. Patent fees
Application fee – £30 or £20 (Electronic filing)
Search Fee - £150 or £130 (Electronic filing)
Examination fee - £100 or £80 (Electronic filing)
Renewals
5th
Year - £70
10th
Year - £170
20th
Year - £600

106. GB 2222821

107. FR 1368636
1960
TM 1508055
Gatsometer BV
Maurice Gatsonides

108. GB 436290
1936
Percy Shaw

109. Martin Dicks

110. Obtaining Patent Protection Abroad
Separate national filings
Patent Co-operation Treaty
(PCT)
European Patent Convention
(EPC)

111. Separate National Filings
Search
“A” Pub
Exam
Search Search Search Search
GRANT
“A” Pub
Exam Exam
“A” Pub
Exam
“A” Pub
Exam
“A” Pub
GRANT GRANT GRANTGRANT
UK France Germany US Japan
Obtaining Patent Protection Abroad

112. Patent Co-operation Treaty
I.S.A.
Search
I.S.A.
“A” Pub
Exam Exam Exam Exam Exam
GRANTGRANT GRANT GRANTGRANT
UK France Germany US Japan
Obtaining Patent Protection Abroad
} Up to 30 months

113. European Patent Convention
EPO
Search
Granted in all
designated states
EPO
Exam
EPO
“A” Pub
EPO
GRANT
France
GRANT
Germany
GRANT
UK
GRANT
Obtaining Patent Protection Abroad
} 3 to 7 years
9 month opposition period

114. Costs & Requirements
National filing European filing PCT filing
Fees Each country will
require its own fees
€2100 + €85 per
country
€2231 up to search,
then examination
fees in each country
Language Language of each
individual country
English,
translations may be
required at grant
English, translations
required at national
phase
All fees are approximate and are intended only to be illustrative of the relative costs

117. Using Patent Information
Use of patent information is totally separate from
obtaining & enforcing legal rights through patents
Patent information can solve problems
and provide new insights
Avoid reinventing the wheel: 30% of European
R&D is wasted on technology already in patents
Enables you to keep track of your competitors

118. Bowers & Wilkins
“Nautilus” Speakers
Documents cited
GB 2130048 A GB 1390002 A GB 0864683 A
GB 0547922 A GB 0434563 A GB 0378286 A
US 5206465 A US 5073948 A US 4752963 A
US 4657107 A US 4592444 A US 4439644 A
Hi-Fi News & Record Review, January 1992, p 17

120. Why Use Patent Information?
Huge information source – 63 million patents
Unique information - 80% of technological
disclosure in patents appears nowhere else
Early publication - within 18 months of first filing
Free technology - 85% of UK patents not in force

121. ESPACENET

123. Green Channel
Introduced in 2009
environmentally-friendly technology
Accelerated search, examination, combined search and
examination, and/or publication
No additional fees
Over 150 granted

124. Patent Box
Reduction in corporation tax to 10%
In Stages from April 2013
Must hold a Qualifying Patent (IPO, EPO) or licence
Patent must be granted (can be back dated up to 6 years)
Development condition
Active Ownership condition
Royalties from sale or licensing
Proceeds from sale of goods
Damages from infringement actions

125. IP Enforcement
It’s your responsibility to defend your IP and to take action
if someone’s used it without permission.
Examples of IP infringement include when someone:
uses, sells or imports your patented product or process
uses all or some of your work under copyright without your
permission
makes, offers or sells your registered design for
commercial gain
uses a trade mark that’s identical or similar to one you’ve
registered

126. IP Enforcement
If someone is using your IP without your permission you can
contact them and ask them to stop.
You can be sued for making unjustified threats. You may
want to seek legal advice before contacting the other party.
You can offer to make a deal with the other party, which is
usually cheaper and quicker than going to court.
The infringement of an IP right is a civil matter in the case of
patents, trade marks, designs and copyright. In the case of
trade marks, registered designs and copyright the act may
also constitute a criminal IP offence.

127. License your IP
As a IP owner, it is for you to decide whether and how to
license use of your work.

128. Benefits of licensing
Sharing costs and risk
Revenue generation - licensing can broaden the reach of IP
into different markets.
Increasing market penetration
Reducing costs - a business may ‘buy-in’ innovation to
reduce its research and development costs.
Accessing expertise
Collaboration - businesses may want to work together to
develop new products and services

129. Use a mediator
You can use a mediator if you can’t come to an agreement
over an intellectual property dispute.
Mediation is a way of resolving disputes without going to
court. It’s cheaper and quicker than taking legal action and
the outcome is usually beneficial to all parties.
Mediators provide an independent view on a dispute. They
can’t make a decision for you, but they can help to find a
solution that both parties accept.
Discussions with a mediator are confidential and can’t be
used in court later if the dispute isn’t resolved.

130. Taking legal action
A court will expect you to have tried to resolve your dispute -
possibly using mediation - before starting legal proceedings.
You can file legal proceedings either through the Intellectual
Property Office or through the courts.
The court you go to depends on the complexity and value of
your claim.

131. Taking legal action
Claims below £10,000
Use the Intellectual Property Enterprise Court (IPEC) small
claims track
Claims up to £500,000
You can take your case to the Intellectual Property Enterprise
Court (IPEC)
If you’re claiming more than £500,000 in damages
Use the Chancery Division of the High Court of England and
Wales - there are no limits to legal costs or damages you can
claim.

132. Services from the IPO
Mediation Call Centre
Opinions
Search (on-line)
Health -Check
Lambert tool kit Workshops
IPSUM

133. X.5

134. IP Audit (Part I)
Under what terms has he dealt with the
engineering company?
Agreements for (i) confidentiality, & (ii) IP
He has used ® without registration: advise
Replace ® with ‘TM’; seek TM registration
Under what terms has he dealt with the
advertising agency?
(i) confidentiality, & (ii) assignment of ©

135. IP Audit (Part II)
What automatic IP rights have arisen?
© in drawings; design right in prototype
What registrable IP rights are available,
and for which features?
Registered Design for shape,
RTM for name, Patents for functionality
What should be done now
before progressing further?
Infringement
searches!

136. Registered Design
Copyright: labels & artwork
® Registered Trade Mark
‘TM’ unregistered
Patents: several dozen!
Bringing it all together

137. www.ipo.gov.uk - 0300 300 2000

138. IP Healthcheck
Free online diagnosis
Patents, Trade marks,
Designs & Copyright
Licensing, exploiting &
Franchising your IP
Confidential Information
& Enforcement
9 On line IP Healthchecks

140. Thank You
Gary Townley
gary.townley@ipo.gov.uk
@The_IPO