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ExploreExport
2014
Murrayfield Stadium
Edinburgh
Monday, 10 November 2014
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Safeguarding Your
Intellectual Assets
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Martin Layton
Intellectual Assets Specialist
Scottish Enterprise
&
Catherine Potts
Intellectual Assets Specialist
Scottish Enterprise
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THE INTANGIBLES
INTELLECTUAL ASSETS INTELLECTUAL PROPERTY KNOW HOW BRANDS GOODWILL REPUTATION TRADE SECRETS CUSTOMERS DATABASES BUSINESS PROCESSES RELATIONSHIP MANAGEMENT
INTELLECTUAL PROPERTY PATENTS COPYRIGHT TRADEMARKS DESIGN RIGHTS PLANT VARIETY RIGHTS
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WHAT VALUE IS INTANGIBLE
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IA MANAGEMENT PROCESS
STEP 1 IDENTIFY
STEP 2 PROTECT
STEP 3 PACKAGE
STEP 4 VALUE
STEP 5 COMMERCIALISE
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INTELLECTUAL PROPERTY
TRADEMARKS
COPYRIGHT
PATENTS
REGISTERED DESIGN RIGHTS
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REGISTERED AND UNREGISTERED TRADEMARKS
A trade mark is a sign which can distinguish your goods and services from those of your competitors
It can be words, logos or a combination of both
An unregistered trademark can be defended under the law of “passing off”
A registered trademark is an asset which may be sold or licensed
Trademarks assist businesses to mark and protect their territorial rights
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COPYRIGHT
Covers literary works, training manuals, musical works, typographical
arrangements, recordings, broadcasts, photographs, logos and designs
The work must be recorded in writing, or otherwise
It may be marked © 2010 Intellectual Assets Team
In the UK it is an automatic right requiring no registration
It has a type dependent life span
Copyright is an asset which may be sold or licensed
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COPYRIGHT INFRINGEMENT
Artist Tori LaConsay takes on H&M
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PATENTS
Must be new and have an inventive step that is not obvious to someone with
knowledge and experience in the subject
Must be capable of being made or used in some kind of industry
Last for 20 years
Are sounding even more attractive due to the introduction of Patent Box tax
advantage
A patent is an asset which may be sold or licensed
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PATENTS
Manufacturing process Protected By 650 Patents
Chemical Expansion Process Maintained As
Trade Secret
All Employees And Producers Signed Nda’s
69 Trademarks Registered
32 Registered Designs
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REGISTERED DESIGNS
A Registered Design is a legal right which protects the overall visual
appearance of a product or a part of a product in the country or
countries you register it.
For its registration to be valid, a design must be new and have
individual character
A Registered Design is an asset which may be sold or licensed
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REGISTERED DESIGNS
CAMBRIDGE
SATCHEL
COMPANY ZATCHELS
v
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INTERNATIONAL CHALLENGES
Recipe protected by Trade Secret
Bottle protected by Registered Design
Name protected by 32 Registered Trademarks
…Businessinvest Group in Russia launched a
phenomenal challenge in August 2012
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COMMON MISTAKES WITH IA
•Completely overlooking IA entirely
•Focusing on one particular aspect e.g. patents
•Inadequate recording of processes and know-how
•Disclosure and failure to safeguard/protect
•Insufficient clearance searches
•The assumption that just because an organisation has paid for something that
it owns all the rights associated with it
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WHAT WE DO
LICENSING
BRANDING
VALUATION
PROTECTION
COLLABORATION
STRATEGY
Assisting clients to frame a license agreement
Building and strengthening brands in both UK and Global markets
Aiding in the valuation of IP for investment purposes
Developing an IP strategy to ensure optimum protection
Supporting clients in protecting and realising their assets in collaboration
Supporting the development of a robust IP strategy
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THE TEAM
Alison Butchart T: 0141 951 3060 E: [email protected]
David Hughes T: 0141 951 3072 E: [email protected]
Martin Layton T: 0141 951 3099 E: [email protected]
Conall McGinley T: 0141 951 3046 E: [email protected]
Catherine Potts T: 0141 951 3032 E: [email protected]
Stuart Watson T: 0141 951 3091 E: [email protected]
Ewen Macaulay T: 01463 244226 E: [email protected]
Team email: [email protected]
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WIDER SOURCES OF SUPPORT AND ADVICE
• The UK Intellectual Property Office
• Bright Idea Scotland
• Professional Patent and Trade Mark Attorneys (Represented today by
Lincoln IP)
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UK INTELLECTUAL PROPERTY OFFICE
• Tasked to help stimulate innovation and raise the international competitiveness
of British industry through Intellectual Property Rights (IPR)
• Baseline Survey Identified that:
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
IP Resources and Information available at GOV.UK website:
https://www.gov.uk/government/organisations/intellectual-property-office
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•A free, interactive e-learning tool, 4 short Modules
•Helping advisors increase their knowledge in identifying IP assets
•IPO certification on completion
•A basic overview of IP at your fingertips at anytime
•Portable pocket solution to help top up your IP knowledge
•Download from the Apple store iTunes & the Android app store
•Free and confidential online diagnosis tool
•Help your business grow through Licensing, Exploiting & Franchising
•Identifying and adding value to your IP assets
•A series of free business guides to understanding IP
•Explaining the different types of IP rights & how to protect them
•A great starting point for those beginning their IP journey
•Accredited interactive course with in depth training on IP
•Available in person and online (coming soon)
•Study Guides and downloads
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Nikolaus Sennhauser
Project Manager
Bright Idea Scotland
Telephone Number - 0845 601 3007 [email protected] www.brightideascotland.com @BrightIdeaScot
UKTI Explore Export Edinburgh, 10 November 2014
Bright Idea Scotland
Who?
• Early stage ideas
• Inventors, students, small businesses, sole traders,…
• Scotland based
What?
Graduated service
• Website/ Inventor’s Checklist
• Idea evaluation
• Workshops
• Surgery sessions
• 1-2-1 support
Commercial Opportunity
Funded by
Photo: Money – Black and White by @Doug88888 on flickr.com
…..but I want to export!
Early stage idea
Entering new market
Who are the key competitors?
Who is the customer?
What’s the problem for which my product is the solution? What’s the best business
model?
Does my team have the capacity? How to protect my IP?
Workshop Themes Outcomes
Workshop 1 So you think you have idea?
1 The Idea 2 The Problem 3 Intellectual Property (IP)
• Effectively describe your idea to a range of different people
• Justify there is a market for the solution you offer
• Build an IP plan/ strategy
Workshop 2 So you think you have a commercial opportunity?
4 The Customer 5 The Competitive Environment 6 The Market Approach
• Understand who your customers will be • Position your offering to fit customer needs • Explain how you see your offering being sold
to the end user
Workshop 3 So you think you can turn your idea into a business?
7 Resource Gap 8 The People 9 The competitive edge 10 The pitch
• Identify key resources you will require • Demonstrate that your capacity to move
forward • Develop a range of pitches to those who can
assist the next steps • Produce a forward plan
Bright Idea Scotland Programme
Assessing Commercial ‘Readiness’
Explore Evaluate Engage Execute
Commercial Success
New Ideas/ New Products
Customer Problem
Market Opportunity
Product Readiness
Path To Market
Business Model
Awareness of
IP Advice
• General non-legal advice
• Focus on commercial opportunity
IP for commercial benefit: Not just for the sake of it.
£
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David Fulton
Director & Patent Attorney
Lincoln IP
2014 lincoln ip limited
UK & European Patent and Trade Mark Attorneys | David Fulton |
10 November 2014
Services
Patent, trade mark and design filing and prosecution
Patent and trade mark searching and opinions
Copyright assistance
Freedom to operate and non-infringement advice
International assignment recordal programmes
IP due diligence
Litigation support
2014 lincoln ip limited
“Top Tips” for Exporters 1
Consider IP issues while planning your export strategy since:
• IP is an influencing factor in many of the other issues you
will already be considering;
• IP will strengthen your position within your export markets;
• IP can provide access to new markets through licensing,
franchising etc; and
• Failure to consider IP issues may result in expensive and
time consuming infringement actions.
2014 lincoln ip limited
“Top Tips” for Exporters 2
Seek professional advice as early in the process as possible.
IP protection is NOT universal.
IP laws and procedures differ between territories.
Securing IP rights does not indemnify you from infringing the IP
rights of others.
Search IP databases in your major markets before filing any
applications.
No public disclosure of an invention before a patent application
is filed.
2014 lincoln ip limited
“Top Tips” for Exporters 3
Take advantage of regional or international IP filing systems.
Be aware of all the costs involved e.g. filing, prosecution, grant
and maintenance fees.
Consider language issues e.g. increased costs, undesired
connotations for trade marks.
Ensure ownership rights are clearly defined i.e. with
commissioned works, outsourced manufacturers and local
agents.
Ensure prosecution, maintenance and infringement
responsibilities are clearly defined.
2014 lincoln ip limited
Contacts
David Fulton [email protected]
Matthew Lincoln [email protected]
Stephen Walker [email protected]
Karen Veitch [email protected]
Paul O’Hagan [email protected]
www.lincoln-ip.com
2 West Regent, Street, Glasgow, G2 1RW 0141 299 3123
9 Victoria Street, Aberdeen, AB10 1XB 01224 433123
2014 lincoln ip limited
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Q & A
Panel Session
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Book an appointment with an Export Advisor to get you started.
Email: [email protected]
Telephone: 0800 0191 953
Events: http://www.scottish.enterprise.com/events
Newsletter sign-up: https://www.scottish-enterprise.com/subscribe
NEXT STEPS – TALK TO SDI
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End of seminar
Thank you!