The document discusses intellectual property (IP) protection strategies for engineering ideas and inventions. It explains that while ideas alone are not enough to commercialize an invention, overprotecting IP can also deter investors. The best strategy is to appeal to investors without appearing too permissive. It then discusses various forms of IP protection like patents, trademarks, registered designs, copyright, and trade secrets, when they should be considered, and how to identify and protect valuable technological and scientific creations.

1. Intellectual Property in Engineering
Ben Wyatt
8th July 2010

2. The Facts of Life
Ideas alone
are not enough

3. The Facts of Life
To commercialise
You need CASH

4. The Facts of Life
In order to make
your idea
appealing to
investors, you
shouldn’t just
give it away

5. The Facts of Life
But if you are
over
protective, you
might put off
suitable
investors and
end up on the
shelf.

6. The Facts of Life
The best
strategy is to be
sufficiently
appealing to
investors, while
not appearing
too easy.

7. Why Protect your IP?
> U$100,000,000,000
U$76,000,000,000
U$67,000,000,000
U$66,000,000,000
(Source: BrandZ Top 100 Most Valuable Global Brands 2009)

8. Why Protect your IP?
The brand value of technological companies is often built on protecting their
inventions.
U$14,000,000,000
1863 EP Patent Filings in 2008
(2nd Highest)
U$66,000,000,000
720 EP Patent Filings in 2008
(14th Highest)
U$76,000,000,000
627 EP Patent Filings in 2008
(23rd Highest)

9. Summary
What is IP?
Why should I protect my IP?
How can I protect my IP?
When and how should IP considered?
Brief IP Comparison

10. What is IP?
Creations of the mind:
Technological/Scientific - inventions, software, databases, genetically
engineered plant varieties, mathematical algorithms
Technologically produced - films, TV programs, broadcasts, sound
recordings, printed matter, photographs …
Artistic - music, songs, art, sculptures, literature, poetry, drama, …
Commercial – brands, company names, trade marks, product
designs, business methods, product packaging, manufacturing processes
…
Obviously there is a lot of overlap between the different categories and types

11. Name / Logo?
How is it made? Unique features?
New Product
What makes it unique?
What will make it sell?
What would others want to copy?
How is it marketed? How will it be used?
Accessories?
Unique Look?

12. Why Protect your IP?
Same reason you would protect any other property:
It is an incentive to investors
It is an asset having almost unlimited potential financial value
It can be bought, sold, ‘hired’ out (licensed)
It can be used to exclude others from a lucrative market
It can be used as leverage to enter a market
It can be stolen or inadvertently lost to someone else
You wouldn’t leave your laptop on view in an unlocked
car while you go shopping

13. How can I protect my IP?
Some forms of protection require registration:
Patents
Registered Trademarks
Registered Designs
Some do not:
Copyright
Unregistered Designs
Trade secrets
Know-how
All require careful consideration:
Identify the IP, assess its value (actual and potential), determine the best way to
protect it

14. Patenting your Innovations
What is a patent?
A duration limited territorial monopoly granted by a
government in return for public disclosure of a new and
inventive technical product or process
NOTE:
Patents do not protect abstract ideas or concepts by themselves, they
protect the application of the ideas or concepts to products or processes
A patent does not give you the right to use an invention, it gives you
the right to prevent a third party from using the invention

15. Patenting your Innovations
Patents
What can be protected?
New and inventive technical products or processes
New and inventive combinations of known products

16. Patenting your Innovations
Not every Patentable idea is
going to be a commercial
success

17. Patenting your Innovations
Some will
thankfully
never see the
light of day

18. Patenting your Innovations
Others
however
become an
everyday part
of our lives….

19. Patenting your Innovations
GB 436290
1936 Percy Shaw

20. The State of the Art
Patents – How is novelty assessed?
Generally, against everything that is publicly available
anywhere in the world before a patent application is filed
Any prior public disclosure (called ‘prior art’) by
anyone, anywhere, has the potential to prevent a patent being
granted
Limited exceptions, for example:
in the case of disclosure in breach of confidence
limited grace period against self-disclosure (e.g. in the United
States)

21. The State of the Art

22. The State of the Art
The prior art

23. The State of the Art

24. The State of the Art
The prior art

25. The State of the Art
Invention must be kept confidential before filing
No publication – articles, conferences, websites, pub
Third parties/potential investors – use a Non
Disclosure Agreement (NDA) or Confidentiality
Agreement
Seek advice from the Technology Transfer Office
Consult a Patent Attorney!

26. How do I know if my invention is inventive?
Very subjective and generally a much lower hurdle than inventors expect
Essentially inventive if the new feature / new combination provides an
unexpected or non-obvious “technical” benefit over the prior art
However, invention may also lie in identifying a problem with the prior art –
even though the solution is obvious once the problem has been identified
Not inventive if:
The new feature/combination is incidental having no technical effect (e.g. a
purely cosmetic effect)
The new feature/combination provides no more than would normally be
expected (e.g. a Swiss army knife)

27. Example – squash balls
Dark
Black Green Blue
Time
• Based on real case (GB 1538860):
• Would the dark green squash ball be patentable?
• Would the blue squash ball be patentable?
• Both are new but are they inventive?

28. Example – squash balls
Dark
Black Green Blue
Time
• One might expect neither would be patentable – as they
are just different colours – a purely cosmetic difference
• But, there is a technical problem with black squash balls:
– They mark the court
– Dark green and blue squash balls do not
• Assuming this is the only technical problem:
– Would the dark green squash ball be patentable?
– Would the blue squash ball be patentable?

29. Example – squash balls
Dark
Black Green Blue
Time
• One might expect neither would be patentable – as they
are just different colours – a purely cosmetic difference
• But, there is a technical problem with black squash balls:
– They mark the court
– Dark green and blue squash balls do not
• Assuming this is the only technical problem:
– Would the dark green squash ball be patentable?
• Yes as they are the first to solve this technical problem
– Would the blue squash ball be patentable?
• No as the problem has already been solved by the green ball

30. Example – squash balls
Dark
Black Green Blue
Time
• 2nd problem with black squash balls:
– They cannot be seen easily by television
audiences
– Neither can dark green squash balls
– But blue squash balls can
• Is the blue squash ball patentable?

31. Example – squash balls
Dark
Black Green Blue
Time
• 2nd problem with black squash balls:
– They cannot be seen easily by television
audiences
– Neither can dark green squash balls
– But blue squash balls can
• Is the blue squash ball patentable?
– Yes as it solves this 2nd problem

32. Example – back to squash balls
Dark
Black Green Blue
Time
• Changing the colour appears, at first sight, to be
a purely aesthetic change, but:
– Changing from black to green stopped the balls
marking the court – this is sufficiently technical
– Changing the colour to blue made it easier for
television audiences to see the ball – this is
sufficiently technical

33. How can I protect my IP?
What is a trade mark?
A sign which is capable of distinguishing goods or
services of one company from those of another
– a badge of origin
Protects goodwill - the reason your customers choose your product or
service over your competitors – can be built up over time

34. Trade Marks
GOOGLE JUST DO IT DAVID BECKHAM
Words, Slogans, Names
Logos
Trade Marks
What can be registered?
Colours Sounds
Shapes

35. Trade Marks
‘SPICY SAUCE’ SILK JOY (deceptive for
(descriptive for salsa) clothing not made of silk)
‘DENIM’
(descriptive for jeans) Trade Marks
What cannot be registered validly?
Marks which are confusingly similar to earlier marks for the same
goods or services
Non-distinctive, descriptive, deceptive, offensive, laudatory, certain
special symbols, or generic marks

36. Design Rights
What is a design?
The outward appearance of a product including aspects
of its shape (3D) and patterns or ornamentation (2D)

37. Design Rights
Registered Designs
What can be protected?
New product designs having individual character

38. Design Rights
Registered Designs
What cannot be protected?
‘Must fit’ features, purely functional features

39. Copyright
Copyright
Automatic protection for the expression of ideas
Written, theatrical, musical and artistic works
Film, book layouts, sound recordings, and
broadcasts, performances
Computer programs and Databases
Limited protection for industrially exploited ideas
Infringement requires copying

40. Other Forms of IP
Unregistered Designs
Automatic protection of the visual appearance of a product
Similar (but not identical) to registered designs
Infringement requires copying
Trade secrets / Know-how
Knowledge about how a product works or is made that is not
known publicly
Recipes (e.g. Coca-Cola and Levi Roots’ Reggae Reggae Sauce)
Chemical composition
Structure of a silicon chip / and its manufacturing process

41. When and how should IP be
considered?
As early as possible - as soon as you have a business idea
What key IP has / will be generated?
How can the key IP be protected?
How does the key IP add value to the business?
How can the value of the key IP be exploited?
Who owns the IP?
Make it the very heart of your business plan
Document it, monitor it, protect it
Seek professional advice

42. When and how should IP be
considered?
Do not forget your competitors have IP too!
How do I avoid infringing their IP?
Early identification of third party rights - searching
Analyse risk of infringement
Risk reduction
Design around
Licence/assignment
Revocation/opposition
Cross licence
Seek professional advice

43. IP Comparison
Patents
Strong ‘monopoly’ right
No need to prove copying – can be difficult to design around
Limited Duration (generally 20 years max)
Can be expensive to obtain
Registered Trade Marks
Strong ‘monopoly’ right
Only as valuable as the ‘goodwill’ your business accrues
Unlimited duration (pay the renewal fees)
Can be relatively cheap to obtain but expensive to police

44. IP Comparison
Registered Designs
Monopoly right – but not as strong as other registered rights
No need to prove copying – but relatively easy to design around
Limited duration (25 years max)
Relatively cheap to obtain
Copyright
Extremely complex
Not a monopoly right – must prove copying
Long duration – typically author’s life plus 70 years
Free to obtain but difficult and expensive to enforce

45. IP Comparison
Unregistered Designs
Not a monopoly right – must prove copying
Short duration – typically 10 years from first marketing (of which
licenses must be allowed in the last 5)
Free to obtain but difficult to enforce
Trade secrets / Know-how
Can be extremely valuable
Potentially unlimited duration
Difficult to maintain confidentiality
How do you sell or license the know-how / trade secret securely?

46. Intellectual Property in Engineering
Thank you for listening
Any questions?