Slides from the Intellectual Property Office presentation at South West Forum's Know Your Assets event, September 2012

1. Intellectual Property
Workshop
Dave Hopkins/Gary Townley
Business Outreach & Education

2. Intellectual Property Office
Executive Agency within Department of Business, Innovation
and Skills (BIS)
850+ staff based in Newport in South Wales, 20 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
Discuss IPR issues with more knowledge and confidence
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. 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

6. What is intellectual property?
Patents
Plant Trade
Varieties marks
Intellectual
Property
Trade Registered
Secrets designs
Confidentiality Copyright

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

8. X.1

9. Patents
Plant Trade
Varieties marks
Trade marks
Trade
Intellectual
Property
Registered
Secrets designs
Confidentiality Copyright

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

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

12. 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”

13. 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

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

17. 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

18. Top slogans of the century
1. Diamonds are forever (DeBeers)
2. Just do it (Nike)
3. The pause that refreshes (Coca-Cola)
4. Tastes great, less filling (Miller Lite)
5. We try harder (Avis)
6. Good to the last drop (Maxwell House)
7. Breakfast of champions (Wheaties)
8. Does she….or doesn’t she? (Clairol)
Source adage.com

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. Shapes as Registered Trade Marks

21. Music as Registered Trade Marks
TM 2219984

22. Music as Registered Trade Marks
TM 2409398

23. Music as Registered Trade Marks

24. Music as Registered Trade Marks
The mark consists of five distinct phases, namely sustain, followed by ululation,
followed by sustain, but at a higher frequency, followed by ululation, followed by
sustain at the starting frequency, and being represented by the representation
set out below, the upper representation being a plot, over the time of the yell, of
the normalised envelope of the air pressure waveform and the lower
representation being a normalised spectogram of the yell consisting of a three
dimensional depiction of the frequency content (colours as shown) versus the
frequency (vertical axis) over the time of the yell (horizontal axis)..
TM 003661329 – May 2006

25. 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

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

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
Intel – Gordon Moore/Bob Noyce – sounded too close to more noise, so
adopted Integrated Electronics.

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. 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

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

34. Tesco has been forced to remove all the products from
its stores and a spokesman from Tesco said: 'We have
settled this claim and apologise for the error.’

36. X.2

37. 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

38. Patents
Plant Trade
Varieties marks
Copyright
Trade
Secrets
Intellectual
Property
Registered
designs
Confidentiality Copyright

39. Copyright
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
Caxton’s Printing Press

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

41. Copyright
Criteria for Protection
1. For copyright to subsist the work must be recorded in
a material form
2. The work must be “original” – not copied – sufficient
labour, skill and effort
3. Sufficiently connected to qualify under UK law –
authorship, publication, place of transmission.
4. Not excluded on public policy, moral grounds –
obscene, blasphemous, libellous etc

42. Copyright
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
4.Artistic Works – A work of artistic craftsmanship (not quality)
5.Films – Moving images produced by any means
6.Sound Recordings – From which sounds can be reproduced
7.Broadcasts – transmission of visual images, sounds or other
8.Published Editions – typographical arrangements

43. 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

44. How long does Copyright last?
Literary, musical, artistic & dramatic works:
author’s lifetime plus 70 years
Films: 70 years after the death of the last of:
director, composer of the score, the author of
the screenplay and the scriptwriter
Sound recordings, TV & radio broadcasts &
cable programmes: 50 years from first broadcast
Publishers’ right (typographical layout etc.):
25 years

45. Baker Street
• Estimated £80,000 per year in
royalties since 1978
• Copyright expires 31 Dec 2081
• Saxaphone riff played by
• Bob Holness
• Raphael Ravenscroft
• One off fee £27

46. 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

47. 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

48. Who owns copyright?
Taken by the prince’s
executive chef, Carolyn Robb
wearing their ‘new set of
tweeds’.
Settlement later reached with
Robb involving a four figure
fee for the use of the
photograph and use by the
Royal Mail.

49. Primary Infringement
Any of the following without the
consent of the rights owner
Copying / Reproducing Adaptation
Distributing Issuing or renting
Public performance Broadcasting
IGNORANCE IS NO DEFENCE

50. 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

51. ‘Defences’- permitted acts
The following are allowable even when they
technically breach Copyright: “Fair Dealing”
Private study Research
News reporting Public Interest
Criticism / reviews Some official reports
Education, libraries Video/DVD ‘time-shifting’

52. Top Dead Earners 2011
1. Michael Jackson - $170m
2. Elvis Presley – $55m
3. Marilyn Monroe - $27m
4. Charles Shultz - $25m
5. John Lennon - $12m
6. Elizabeth Taylor - $12m
7. Albert Einstein - $10m
8. Theodor Geisel - $9m
9. Jimi Hendrix - $7m
10. Stieg Larsson - $7m
Source Forbes.com Shakespeare – 7th $12m

53. Collecting Societies
Rights administered for the benefit of authors/owners
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 Copyright Tribunal

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

55. Temple Island Collections New English Teas (NET)
(TIC)

56. Jerome Siegel and Joe Shuster sold all the rights to
superman to Detective Comics (DC Comics) for
$130 ( £82)

57. Patents
Plant Trade
Varieties marks
Intellectual
Confidentiality
Trade
Property
Registered
designs
Secrets
Confidentiality Copyright

58. What protection is appropriate?
Confidentiality Trade Marks
Copyright Patents
Design Right 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. Every Business Owns IP What
do you own?
Coffee Break

63. X.3

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

65. Patents
Plant Trade
Varieties marks
Registered Intellectual
Property
designs
Trade
Secrets
Registered
designs
Confidentiality Copyright

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

68. 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)

69. Registered Designs
Design protected without limitation
to a specific product or article
Design protected even if applied to
single items or handicraft products
Protection for component parts if
ordinarily on view when in use

70. Examination
Shape created to perform its function
Contrary to public policy or morality
Protected flags or emblems

71. Registered Designs
Design Registration No 3001664

72. Registered Designs
Design Registration No 3001664

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

74. 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

75. Informed User
“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.

76. 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

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

78. X.4

79. 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?
Unregistered Design Right

80. Patents
Plant Trade
Varieties marks
Design Intellectual
Property
Trade
Secrets Right Registered
designs
Confidentiality Copyright

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

82. Design Right
Design rights exist independently of
copyright, while copyright may protect
documents detailing the design as well
as any artistic or literary work
incorporated within the finished
product.
Design right focuses more on the
shape, configuration and construction
of a product.

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

84. 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’

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

86. Design Right
Superdry Primark
“we are probably the most copied brand in the UK, these
cases are very necessary in protecting our intellectual
property” Julian Dunkerton

87. Design Right
Tatty Devine Claire's Accessories
Tatty Devine designer Rosie Wolfenden said: "We're
really proud of what we've created with Tatty Devine,
and a big part of that is our original designs.

88. Patents
Plant Trade
Varieties marks
Trade
Secrets
Patents Intellectual
Property
Registered
designs
Confidentiality Copyright

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

90. A motorised cycle 2008

91. 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’

92. Prior Disclosure
Helen Waterston’s Roastcosy was featured on Dragons
Den; she managed to secure two dragons, Debora
Meadon and Peter Jones.
She disclosed her patent in a
newspaper article before filing
for her patent!
This invalidated her patent,
which it is believed led to
Debora Meadon pulling out of
the arrangement.

93. 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;

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

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

96. Claim 1
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.

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

98. 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

99. GB 2222821

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

101. 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

102. 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

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

104. 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

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

106. X.5

107. 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 ©

108. 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 Infringement
before progressing further? searches!

109. Licensing
Why License:
•Generate income
•Increase market penetration
•Reduce costs
•Save time
•Access to expertise

110. Licensing
What are you licensing?
•Patents, trademarks, designs,
copyright
•Know how- show how
•Confidential information
•Do you own it?
•Who are you licensing to?

111. Licensing
Types of license?
•Exclusive – only the licensee may use
•Sole – the IP owner and licensee may use
•Non – exclusive IP owner may licence to
more than one licensee

112. Licensing
Duration & termination
Governing Laws and disputes
Charges and payments
Sales and targets
Risk and insurance

114. www.ipo.gov.uk - 0300 300 2000
information@ipo.gov.uk

116. 8 On line IP Healthchecks
IP Healthcheck Patents, Trade marks,
Designs & Copyright
Confidential Information
Licensing and exploiting
Free online diagnosis your IP

117. Thank You
Dave Hopkins/Gary Townley
david.hopkins@ipo.gov.uk
gary.townley@ipo.gov.uk