Tuesday 7 December 2010

Intellectual Property in 3 posts – episode I

I originally called this ‘Intellectual Property Done Quick’ but, when I was finished and looked at what I had wrought, I realized that ‘done quick’ was likely to be in breach of the trade descriptions act.

So I’ve broken it up into 3 tasty morsels; today I’m doing an introduction to different types of intellectual property and I’ll follow up with applying for a patent and then finally some tips for managing IP in the enterprise.

There are 4 main types of intellectual property defined in UK law and, along with their relatively dry legal descriptions, they are:

Trade marks

Indefinitely protects signs which distinguish the goods or services of one undertaking from those of another.

A trade mark is a distinguishing badge of origin which can be a valuable asset when it imbues a product with the reputation and perception of a certain maker.

It can become a trademark either by initial registration or it can acquire trademark status over time through use.

McDonald’s golden arches, the UPS shield, and Nike’s swoosh are all good examples of a trademark – instantly recognizable and clearly identifying a specific brand.

Registering a trademark gives an organization or an individual the right to prevent others from using the same mark it in relation to similar goods or services (listed in the application). Even if you have no appetite for hunting down and suing IP trespassers, registration is still a good idea because it prevents that happening to you – priority (‘I was already using that before they registered it’) is a tough argument in trade marks. And, in the longer term, if you’re ever likely to want to license the use of your trademark to others then registration establishes an official article against which a license can be granted.


Protects the technical aspects of products or processes for 20 years.

A patent gives the patent holder exclusive rights to prevent anyone else making, using, or selling their invention for a fixed period of time (usually 20 years) before it becomes part of the public domain. Patents cannot be extended beyond their initial term – they arose as a way of governments encouraging innovation; essentially we agree to keep inventing stuff for the good of mankind in exchange for a period of state sanctioned selfishness in how that invention is manufactured and sold.

Patents are territorial – only good for the countries they’re granted in – but a number of international agreements exist which allow. In the EU we have the European Patent Office where a single application covers 36 nations, and for the wider world the Patent Cooperation Treaty covers 130 countries. In both cases you have 12 months from your ‘home’ filing date to extend internationally before it is considered a new application – this can be important as your initial filing date is considered to be the date from which protection becomes effective.

Check out James Cameron’s platform for stereoscopic image acquisition (also known as a camera mount) for example and improvement in velocipedes (also known as bicycles) for something a little more old school.

Registered designs

Protects the appearance of products for 25 years.

For a long time it has been recognized that the appearance of a product can be the key to it’s commercial success – may I present, as evidence, anyone who buys anything from Apple.

A registered design gives its holder the right to prevent anyone else making or selling products which look and feel the same as the registered design. It covers tangible, physical, crafted things (like the famous coke bottle) as well as conceptual, aesthetic things (like the famous coke logo).

Registering a design is quite straightforward – compared to a patent application – as it does not involve any detailed scrutiny by an examiner. Apply to the Intellectual Property Office and, within 3 months, you could be the proud new owner of a registered design. Also unlike patents, you have 12 months from when your design first becomes public to register it; with a patent when it’s out it’s out!

Design rights

Protection for appearance of products without any special application being made (for example copyright).

Design rights are a collection of automatic protections which apply to various original works. In practice they work very similarly to registered designs – and apply to similar works and materials – but do not need to be applied for in order to take effect.

The subclasses (if you want to be geeky about it) are:

  • UK design right – protects shape and appearance, except for surface decoration, for either 15 years from the creation of the design or 10 years from the first time the design was marketed.
  • Community design right – similar protection to the UK design right and also covers surface decoration, however it is only valid for a maximum of 3 years from the date the design was made public.
  • UK copyright – can be thought of almost as the opposite of UK design rights because copyright covers surface decoration (not form and function) and ‘artistic’ qualities. In force for 25 years from the end of the year in which the design was first marketed.

If design rights apply automatically why would you pay to register a design? If you rely solely on automatic design rights then you must prove that a similar product was copied from your protected material – with a registered design you can prevent another party from making or selling something similar whether they copied you intentionally or by coincidence. It’s pretty easy to determine that two items are similar, but a lot more difficult to prove why.

So that’s our 4 identified types of IP.

In the technology and software business you’ll mostly deal with copyright and patents. In my next post I’m going to walk though patent application process since copyrights kind of happen on their own and the granting of a patent looks simple from the outside but turns into quite an arcane art.

And finally, now that we’ve covered formally establishing and reserving rights using the various offensive and defensive legal tools available to manage IP, the thought I want to leave you with is that there is nothing quite like good citizenship. Treat the property and creations of others in the same way as you’d like them to handle yours – patents, copyrights, or not.

1 comment:

Howard M. Cohn & Associates said...

Very helpful for individual who wants their idea be protected. This pointers are applicable specially for beginners.