Your Intellectual Property Assets

Patents

A patent is a monopoly right to prevent others from using your invention. This monopoly lasts 20 years from the date of filing (subject to grant and the payment of annual renewal fees). In some circumstances it can be extended up to a maximum of a further five year period.

Not all inventions are patentable. However most products and processes can be patented so long as they meet the following three criteria:

They must be new
They must be inventive (non obvious)
They must be industrially applicable

Because of the complex nature of the patent system and the specialist practices developing in areas such as pharmaceuticals, biotechnology and computing, specialist advice should be taken at an early stage. Since patents are territorial in nature it will be necessary to devise and implement an appropriate filing strategy. Consideration will have to be given to this from the outset.

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Policing the Patent Rights

Obtaining the grant of a patent is the first step to creating the monopoly. In order for it to have real value it may be necessary to enforce the patent against 'would be' and actual infringers. In order to enforce the patent through an infringement action in the courts it is necessary to identify those who are infringing.

There is no simple way to do this as infringers, particularly those who are infringing knowingly, will cover their tracks. Vigilance and monitoring by reviews of publications, attendance at conferences and meetings, searches on-line and general awareness of all employees, are some of the key measures necessary to identify those who are not respecting a company's rights.

A mere suspicion will not be enough, evidence will need to be amassed and this alone may take months to obtain before action can be taken.

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Designs and Design Rights

Designs are concerned with the appearance in whole or in part of an article. The design of an article may include, shape, contours, texture, colour and ornamentation, but excludes those elements whose appearance is determined by their function. Protection of the shape/appearance of an article may be an important part of a commercial strategy, particularly with consumer oriented products such as medical devices, medications and packaging, and may serve as a useful further blocking strategy to limit competition in the market.

Many countries have design protection laws, and broadly there are two forms of protection available: Registered and unregistered.

A Registered design is a monopoly right to use a design. In the EU the monopoly lasts for an initial period of five years and may be extended in five-year terms up to a maximum of 25 years. Like patents, registered designs are territorial in nature and it will be necessary to devise and implement an appropriate foreign filing strategy. Foreign filings must be made within six months of the original national filing, but in many cases a Registered Community Design application (EU) filing may be an appropriate first stage.
Unregistered design right (called simply Design Right in the UK) is created at the time an article is made or drawn which has an appearance that is not substantially the same as an earlier design. The owner of the design has rights to prevent copying, importing or sale, over a term which varies depending on the country or area. In the UK, it confers a maximum period of protection of ten years from the first marketing of an article made to a design subject to an overall limit of 15 years from the creation of the design.

Similar protection is available in other countries outside the European Union but the level of protection, availability and the term varies. It is highly advisable to seek early professional advice on protecting the design of your product to maximise this cost effective and efficient form of intellectual property right.

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Trade Marks

Trade marks are signs that serve in the trade to distinguish the goods or services of one company from those of another. Examples of trade marks include:

Words, letters and numerals
Personal names and slogans
Designs or logos
The shape of goods or their packaging
Colours, sounds and smells
Any combination of the above

In essence, anything which is distinctive can serve as a trade mark.Trade marks may be registered or unregistered. Generally speaking registration creates stronger rights by providing an assumption of validity. With an unregistered mark, in order to prevent use of a similar mark, it is necessary to establish that the owner has built up a reputation in the mark and that the use complained of would be liable to confuse or deceive the public. To ensure the mark may be protected, there are a number of criteria that must be met. These include:

The mark should not directly describe the goods or services;
The mark should not be misleading;
The mark should be sufficiently distinctive to enable it to be registered;
The mark should not conflict with another earlier registration or some other intellectual property right

Having chosen a trade mark it is then essential to make sure it is free for use in the territories of interest, and it should be registered in those territories. To maintain and build value into a corporate brand, you should also ensure that the trade mark is used properly and is not altered. In addition, watching for conflicting marks and taking action where appropriate, can help prevent dilution of the value of the mark.

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Domain Names

Domain names are an essential element of the internet, as they are the unique identifiers of each 'individual' presence on the internet in a form which is meaningful, and therefore useable in everyday communication. Underlying each of these unique names is a numeric address recognisable to the computers (domain servers) that underpin the service.

Allocation of domain names is generally made on a first-come, first-served basis, although the creation of new tld’s (top level domains) is usually accompanied by a “sunrise” period within which owners of trade mark registrations are placed at the front of the queue. By the very nature of domain names themselves, however, it is not necessarily the simple purchase of a similar domain name registration that will cause concern, but what is then done with it. If a similar domain name is acquired, but it is not used to point to a competing website, there will be no damage to the brand or company name. By contrast, the use of a confusingly similar domain name to the brand or company name by a competitor may redirect traffic away from your website to that of the competitor. Such action may be prevented either through trade mark laws, competition laws or via the various domain name dispute resolution procedures established worldwide.

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Copyright

Original literary, dramatic, musical or artistic works
Sound recordings, films, broadcast or cable programmes, and
The graphical arrangement of typeface in published editions

Copyright is a right which, in the UK at least, comes into being upon creation without the need for any registration. Generally speaking the monopoly provided will expire a maximum of 70 years from the year in which the author dies. The value of copyright, as with all intellectual property rights, is dependent on policing infringements and in a company's willingness to take action to enforce its rights. Monitoring for infringements is the responsibility of the copyright owner and should include regular reviews of publications, conference attendance and general vigilance in respect of competitor’s activities.

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Know-how, Trade Secrets & Confidential Information

Know-how, trade secrets and confidential information are all terms used to describe proprietary information or materials used in the trade which provide a competitive advantage. The information may be held in documents, engendered in people in the form of skills or may be materials. In order for the know-how or materials to retain their value they must remain confidential to the company and release must be restricted. The first step to protecting know-how is to be able to identify it. Wherever possible, information, procedures, ideas, plans, etc., should be documented. Undocumented information is impossible to manage and it is much harder to ensure employees understand what is, and what is not, confidential if information is passed freely around the company. Essential documents should be marked 'confidential; not to be copied', preferably numbered and tracked if circulated, and access restricted to ensure employees understand the importance and the fact that the documents contain information their employer considers to be valuable. All drafts should be destroyed.

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Database Rights

Databases are the most recent form of intellectual property right to be recognised as worthy of its own legislation. A 'database' is a collection of independent works, data or other materials, which are arranged in a systematic or methodical way and are individually accessible by electronic or other means whether in the form of a hard-copy or on-line such as on the internet. Database rights are similar to copyright and come into existence merely upon creation. The database right will last 15 years from the end of the calendar year in which the database was completed, or earlier if it was made available to the public beforehand, but if changes/additions to the database involve a 'substantial new investment', a new period of 15 years may take effect.

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Data Exclusivity and Orphan Drug Protection

Regulatory Data Exclusivity is a right which prevents reliance by generic companies on original toxicological, pharmacological and clinical data generated to comply with the various regulatory requirements. The protection is weakened by publication of the data which is then freely useable by the generic competition. What the protection does not prevent, as with copyright, is independent development of the same data. This form of protection can often extend post patent expiry. The period of exclusivity in Europe is between six and ten years from the date of first marketing authorisation for products approved under most procedures depending on how the member state has chosen to enact the legislation.

Orphan Drug Protection is intended to provide exclusive marketing rights for a product and to ensure that no generic approval for a drug, regardless of patent status, is granted within a period following first marketing approval, where the disease to be treated by the drug affects a small population. The grant of rights is usually limited to the specific indications for which the treatment has been approved, and should preclude 'similar products', even if developed independently, from achieving registration.

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Plant Breeders' Rights

Plants are often the starting material for many drugs and in some instances the drugs may be produced by extraction directly from a plant, if chemical synthesis is too complex or expensive. Protection of these 'factories' can be important as part of the jigsaw of rights used to create a comprehensive monopoly for a product. As well as the patent system, which can be used to protect plants (though not varieties), there are separate rights to plant varieties and in the US also Plant Patents.

The Plant Variety Rights Office administers UK plant breeders' rights, and a separate system of EU plant breeders' rights is administered through the Community Plant Variety Office. Plant Breeders' rights entitle the holder to prevent others from exploiting the protected variety. The rights last for twenty five years, starting from the date of grant of the right, for all species except trees, vines and potatoes, which benefit from thirty years of protection.

The plant variety undergoes a technical examination to ensure it is distinct, uniform and stable. There is a novelty requirement. In this regard, a variety is new if, at the date of the application for protection of the variety, it has not been sold or disposed of with the consent of the breeder either earlier than one year before the date within the EU or earlier than four years before the date outside the EU (six years for trees and vines).

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