Intellectual Property: Protecting Ideas, Designs and Brands in the Real World (Part 2)

Intellectual property

Protecting ideas, designs and brands in the real world

Sean Cummings and Laura KehoeEuropean Patent and Design Attorneys

10 February 2017

Topics

Quick recap on IP

The Guinness ‘widget'

Getting it right - the Workmate®

Getting it wrong• Various ways to lose IP rights

How do you know if a patent is infringed?

Intellectual property is just like real property…

… except that products embodying IP can be sold over and over again

Why do we buy stuff?

Branding?

Looks?

Functionality?

Price?

IP is at the heart of the purchase decision

The registrable forms of IP

Patents• functional concepts• how things work, what they’re made of,

how they’re made

Designs• aesthetic concepts• how things look

Trade marks• badges of origin• distinctive words and logos

GB 2183592

Patents – key data

Many of the fields of a patent document are searchable in electronic databases, including:

Applicant name Inventor name Classification Attorney Title

Where can I search for a patent?

Publicly-available electronic databases, such as:

• Espacenet – worldwide• Patentscope – PCT applications• National Patent Office databases

• e.g. Irish Patent Register• e.g. European Patent Register• e.g. USPTO PAIR – United States

Patents

Structure of a patent

A patent has four parts:• Description – describes the

invention in enough detail for a person in the field to put the invention into effect.

• Claims – sets out the legal monopoly claimed by the inventor

• Abstract – for searching• Drawings – to support the

description

Patent claim for the ‘widget’

“A beverage package comprising a sealed, non resealable, container having a primary chamber containing beverage having gas in solution therewith and forming a primary headspace comprising gas at a pressure greater than atmospheric; a secondary chamber having a volume less than said primary chamber and which communicates with the beverage in said primary chamber through a restricted orifice, said secondary chamber containing beverage derived from the primary chamber and having a secondary headspace therein comprising gas at a pressure greater than atmospheric so that the pressure within the primary and secondary chambers are substantially at equilibrium, and wherein said package is openable, to open the primary headspace to atmospheric pressure and the secondary chamber is arranged so that on said opening the pressure differential caused by the decrease in pressure at the primary headspace causes at least one of the beverage and gas in the secondary chamber to be ejected byway of the restricted orifice into the beverage of the primary chamber and said ejection causes gas in the solution to be evolved and form, or assist in the formation of, a head of froth on the beverage.”

Odd one out - celebrity inventors

Typical patent timeline

= €5k approx.

An example of how to do it well

And not so well…

Registered design The product The competitor

And not so well…

UK Trade Mark Registration No. 1373561

List of goods:

Record label included in Class 16

And not so well…

The patentee tested its prototype traffic light controller on public roads before its patent application was filed

Workers performing the trial were told it was important to keep information secret - so, although the controller box was in a public place, it was locked

However, the public could have tested the way the traffic lights worked using the controller and worked out the basis of the invention - the patent was held invalid as a result

Lux Traffic Controls Ltd v Pike Signals Ltd

The Knowledge Development Box

Where an Irish company spends on ‘R&D’• resolution of scientific/technological uncertainty

…and that R&D gives rise to ‘IP’• software or patented/patentable inventions• but not marketing-related IP such as TMs

…and IP-generated income flows back• sale of patented goods; royalties; damages

net IP-attributable profit taxable at 6.25%

Patent infringement

Is the patent in force?• <20 years old; renewal fees paid?

Does/could the patent cover your territory?

Pending applications

Claim analysis

Look at the claims, especially at the ‘independent’ claims (always Claim 1 and possibly others)

List all of the features of each independent claim

Look at each independent claim individually

Do you take every feature of any independent claim?

Simple example

Simple example

Imagine the first patent for a car – the first self-propelled vehicle. It had three wheels, like a tricycle, and a petrol engine driving two of those wheels.

An independent claim to that car could have been:

A vehicle, comprising:three wheels; anda petrol engine driving two of those wheels.

Is that claim too narrow?

What about a four-wheeled car?

Or a motorbike?

And what about a diesel engine or an electric motor?

Or four-wheel drive?

What should have been claimed

Its broadest independent claim should have been:

A vehicle, comprising:a set of wheels; andan engine driving at least one of those wheels.

Non-essential features - e.g. how many wheels - should go in dependent claims

What if someone else improves it?

If the broadest claim was:

A vehicle, comprising:a set of wheels; andan engine driving at least one of those wheels.

Then what happens if a later inventor comes up with a four-wheeled, four-wheel drive electric car while the original patent remains alive?

Something like this...

Trotter v Tesla

Tesla infringes the Trotter patent, even though Tesla’s car is better than Trotter’s

Tesla could get patents of their own for their improvements to Trotter’s car

But Tesla still wouldn’t have freedom to operate

So Trotter wins? Not necessarily...

Trotter wouldn’t be able to use the improvements patented by Tesla either

How to resolve this to mutual benefit?

Cross-licensing!

Remember – patents are a negative right

• a right to stop, not a right to do

Take-home points

Patents as a source of learning

Delay isn’t always a bad thing

Interaction between different forms of IP

IP is unforgiving of mistakes

Consider tax benefits

Thank you!Sean Cummings and Laura Kehoe

European Patent and Design Attorneyssean.cummings@keltie.com laura.kehoe@keltie.com

Keltie Limited, Galway Technology Centre, Mervue Business Park, Galway

t: 091 730742

www.keltie.com