Intellectual Property Office presentation from 24 June 2014 Innovation Network event in Cardiff

1. Intellectual Property
The Value Within
Business Outreach & Education
Dave Hopkins
@The_IPO

2. 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

3. What is intellectual property?
Intellectual
Property
Patents
Trade
marks
Registered
designs
CopyrightConfidentiality
Trade
Secrets
Plant
Varieties

4. Intellectual
Property
Patents
Trade
marks
Registered
designs
CopyrightConfidentiality
Trade
Secrets
Plant
Varieties
Trade marks

5. A Registered Trade Mark is...
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”

6. What can be registered?
Smell
Colour theme Shape theme
Domain name Slogan
Name Logo
Non-traditional Music

7. Limited Company 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

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

9. 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

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

11. Intellectual
Property
Patents
Trade
marks
Registered
designs
CopyrightConfidentiality
Trade
Secrets
Plant
Varieties
Registered
designs

12. 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)

13. 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

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

15. Intellectual
Property
Patents
Trade
marks
Registered
designs
CopyrightConfidentiality
Trade
Secrets
Plant
Varieties
Patents

16. 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’

17. What is a Patent ?
State Inventor
A Bargain
Fees
Technical Description
Exclusive Rights
20 years

18. 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

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

20. Patent Box
The HMRC Patent Box enables companies to apply a lower
rate of Corporation Tax to profits earned after 1 April 2013
from its patented inventions and certain other innovations
Must hold a Qualifying Patent (IPO, EPO) or licence
Patent must be granted (can be back dated up to 6 years)
Profits from worldwide income
Applies to profits before costs (routine costs deducted)
http://www.hmrc.gov.uk/ct/forms-rates/claims/patent-
box.htm

21. R & D Tax Credits
Designed to encourage greater R&D spending, leading in turn
to greater investment in innovation.
Two schemes for claiming relief
• The Small or Medium‐sized Enterprise (SME) Scheme
• The Large Company Scheme
http://www.hmrc.gov.uk/ct/forms-rates/claims/randd.htm
The value of relief claimed for 2010/12 was £1.1bn (£340m in
SME claims, £750m in large company relief claims).
http://www.hmrc.gov.uk/stats/corporate_tax/rd-introduction.pdf

22. Intellectual
Property
Patents
Trade
marks
Registered
designs
CopyrightConfidentiality
Trade
Secrets
Plant
Varieties
Copyright

23. 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

24. 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

25. 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.

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

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

28. •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