IP Audits

Intellectual Property Audits are undertaken so that businesses may understand and be able to value the Intellectual Property that they own or use, which may not be the same thing.

Businesses may simply be unaware of the intellectual assets that they already own, or have a new product or service that they wish to protect as best they can to prevent duplication by their competitors.

IP Audits are flexible tools which can be used by many businesses, from start-ups to established companies, to get an in-depth guide to how their intellectual property works; how it may be best and cost-effectively protected to maximise value; and what additional assets it may represent for the business to include in balance-sheets, attract investment and so forth.

Funding is available through the UK Intellectual Property Office to aid in carrying out such IP Audits.  Funding applications are available through Scottish Enterprise for companies already or proposed to be established in Scotland.  Click here for contact details.

We have provided such audits to a wide variety of satisfied clients and if you are looking for a suitable professional we would be delighted to discuss whether we might be the right fit for your business.  Contact us if you would like to find out how we can help you.

Santa’s Little Patent

Ah, Christmas; seems like a lifetime ago now. My daughter Ruby asked Santa for a Barbie Dreamhouse, which if you’ve never seen one, is pretty big.  So we needed a trans-shipment point for Santa which meant clearing out the dreaded cupboard under the stairs, where I found this:

    B1

Absolutely no idea how this got there, but it’s clearly very old

It’s a pretty simple wee device, and it’s instructions are:

 B2

And if you look closely in the top right-hand corner you’ll see:

 B3

So I thought (and hope) it might be interesting to take a look at it, and how patents work in general.

A Patent provides the owner (“the Patentee”) with a monopoly over new, non-obvious and industrially applicable inventions for a limited period (up to 20 years from filing, provided annual renewal fees are paid to keep it in force).

The monopoly the Patentee has is defined in the “claims” of the Patent.

Marking the product with the Patent Number is good practice because (a) the Patentee should want to make people aware they have one protecting your invention and it shouldn’t be copied and (b) if the Patentee does not mark the product and an infringer can show they were unaware of the existence of the patent, the Patentee may not get damages or an award of the infringer’s profits, although you should still be able to obtain an injunction/interdict preventing further infringement.  It’s possible to now provide marking by way of a website link.

Even before looking this one up, we can tell it’s pretty old and likely to have expired (both because of the number being prefixed with a “1” and, let’s face it, the state of the packaging).

Granted patents and pending applications over 18 months old are publicly available for viewing – they are not secretive, it’s a right that third parties have to examine patents and review the monopolies that exist.

Checking with the UK Intellectual Property Office’s database we find:

B4

So it was filed just around The Beatles splitting up, and expired just around the time Madchester was taking off.

But what did it cover when it was in force?

Well, let’s find it, and without too much digging:

B5

B5-5

B6

B7

The Patent specification has a number of different sections: a preamble which sets the scene for the invention, a description which shows how the invention may be put into effect along with some drawings to help in that understanding, and the all important claims which establish the monopoly granted by the Patent.

We can also see that the Applicant (and eventual Patentee) was Martindale Electric Company Limited of London and was invented by Ivor Ernest Davies, who was quite likely an employee.  “Inventor” and “Applicant” are not always one and the same and this is where the issue of “Entitlement” comes in, but we shall leave that for another time.

Claims can be classified in various ways, but a primary consideration is whether they are “independent” (wholly self contained) or “dependent” (refer back to earlier claims and add new technical features). Dependent claims provide fall back positions should independent claims be deemed to be invalid at trial.

So Martindale had granted as their independent claim:

1. Apparatus for testing the connections of a supply system to an electric plug or socket, said apparatus comprising a body having mounted thereon contact pins or sleeves arranged so that they can engage the line, neutral, and earth, contacts respectively of a plug or socket to be tested, the body also containing an electric circuit connected between its pins or sleeves, the circuit having three components which give a visible indication when passing current, there being a conductive path -containing a different one of the components connected across each two of the three pins or sleeves.

So if that described or “read into” a third party’s product, such a product would infringe the Patent in the UK.

Think you have something inventive?  Want to talk about it?  Drop us a line for a no obligation discussion.

http://www.sww-ip.com/contact.html

BREXIT and Intellectual Property

The UK has voted to leave the EU and there is obviously considerable uncertainty and change ahead, including in the field of Intellectual Property.

It is important to stress that nothing is going to happen today, and the main forms of IP right that will be affected are those that are dependant upon the EU – those governed by either an EU directive, regulation or department.

The major UK IP Professional bodies have released statements this morning stating that they intend working closely with legislators to ensure that a transition to a post-EU UK IP landscape will be as smooth as possible and ensuring that there are conversion mechanism in place with minimal impact for rights-holders.

Importantly, if you have deadlines for your IP protection, these should continue to be met, as the vast majority of intellectual property should be unaffected.

If you are considering filing for patent protection, you should continue do so, as UK Patent Law has only a minimal EU connection and failure to file for patent protection prior to disclosing your invention(s) will still lead to your inability to achieve valid patent protection.

The EU has influenced UK IP law in two different ways: harmonization directives which have fundamentally altered UK Law and European Regulations i.e. Laws which have effect in the UK.

The main effects on the various IP-rights are of course unknown, but things we need to keep in mind for the various types are as follows:

Patents

The Brexit impact is likely to be minimal. Although the UK is a member of the European Patent Office, this is not an EU body, and is in fact an inter-governmental organisation set up under the Paris Convention. Leaving the European Patent Convention seems unlikely.

There has been a great deal of discussion recently leading to the future implementation of the UPC or Unitary Patent Convention which is an EU-led initiative to have an EU Patent system, using the European Patent Office as the central grant facility. Its likely that Brexit will affect this, but the picture is not hugely clear as even prior to yesterday’s vote, two EU states opted out of participation.

Since the system has not come into force, and may never come into force in the UK, the impact is likely to be minimal on current rights, and obtaining a European Patent is still possible. Both Norway and Switzerland are both current members of the European Patent Convention.

Trade Marks

The UK Trade Marks Act 1994 is based on a European Harmonization Directive, but as UK legislation is shall continue to have effect even after Brexit.

Whether there is any appetite to “de-EU” the law post Brexit is uncertain, but given the likely burden on Parliamentary time simply dealing with the Brexit itself, this seems unlikely in the short or medium terms.

The law itself seems to work adequately to protect rights-holders and third parties and there seems no pressing need to remove this.

European Union Trade Marks (formerly Community Trade Marks) will clearly be affected. These are governed by nd have legal effect in the UK by virtue of an EU regulation.

At some point in the future once the Brexit has been completed these will cease to have effect in the UK, but they will continue to be in force in the Rest of the EU (or rEU).

Moreover, there is no bar on non-EU citizens or companies owning EUTMs – plenty EUTMs are owned by companies from the USA, Japan, etc, so you will be able to maintain and retain any EUTM that you have. Moreover, if you trade in the EU, retaining it is of obvious benefit.

Where you may require to consider your position is where you have been relying upon EUTMs to provide you with UK protection.

The UK Institute of Trade Mark Attorneys (ITMA) has stated that they will work with UK and EU legislators to ensure that some form of cost-effective conversion mechanism is put in place to ensure the retention of UK rights based on earlier EUTMs, but at the moment this is, like everything else, uncertain.

If you are in this position, we would recommend considering filing soon for a UK replacement as soon as possible.

Designs

The Designs picture is much the same as the Trade Mark picture above, although slightly more complicated in that if you have EU Design rights which protect designs that have been disclosed more than 12 months ago, you will not be able to achieve a separate UK design registration at this point, and the conversion mechanism detailed above is all the more important.

But it is important to stress that as of today, and for the next two years at least, these designs should continue to have legal effect until then at the very least.

EU Unregistered Design Right protection will disappear once the EU Regulation governing it ceases to have effect in the UK, although non-EU residents may still qualify for its protection in rEU, as is the case now.

Whilst there is a UK Unregistered Design Right protection in place, its slightly different, and designs that qualify for protection by one of the UDR schemes, sometimes do not qualify for the other.

This will be an interesting area to keep an eye on, and whether UK-UDR will be altered or left as is.

Copyright

Should in the main be largely unaffected, but the copyright picture is a complicated one, and if you have any specific concerns, please let us know, as it is difficult at this early stage to glean any insights.

Fundamentally, your copyrights should still be respected and be enforceable in the rEU following the completion of Brexit.

Please get in touch if you have any specific concerns, but please be aware that nothing is fundamentally changing to day, or even this year, so all IP-related applications and so forth should continue until we know more. In that regard, we shall continue to work diligently to our clients’ instructions.

Who’s that Trip-Trapping over my Patent?

Or: in defence of the patent trolls.

You’ve probably heard something, or like me, a lot about patent trolls recently. You may have wondered what exactly they are and what the problem is with them. The pejorative term “troll” does not help. They have also been referred to as “Patent Assertion Entity” or “Non-Practicing Entity”.

I have seen various headlines such as “Patent Trolls Cost US Economy $29 Billion” and so forth. You may have seen similar.

So what are they?

They are companies that have acquired one or more patents (usually they have a fairly hefty portfolio) but rather than seek to exploit these patents by incorporating them into products, they look for infringements of their patents in the marketplace and seek to assert their patent rights against the producer of those infringements.

They seem to be far more of a problem in the US than elsewhere, and that seems to be for two reasons: first is that the US seems far more litigious generally but also because costs are not generally awarded against the losing party in US litigation as they usually are in, for example, UK litigation. So there seems to be less of a financial risk in a patent troll pursuing litigation in the US. Moreover, the scale of some US damages awards can make litigation attractive, especially if the plaintiff can demonstrate willful infringement of the patent(s) and achieve a “punitive” damages award.

My assertion is that if you take issue with the patent trolls, you take issue with the whole patent system.

The first point is that a patent is a property right. It may be bought, sold, traded, licensed, mortgaged, left in a will, etc. The patent trolls have apparently lawfully obtained these property rights. This may be by purchasing from a liquidator or from the original owner for whatever reason they deemed it worthy of being sold. If you start to undermine this property function, you fundamentally alter the intellectual property system, likely to the detriment of the “little guy” whom the patent system seeks to protect by placing them on a more level playing field with the big players.

The second point is that plenty of patentees may be deemed to be a “troll” if some form of compulsory trading or exploitation element (a commonly cited “cure” for the troll) is insisted upon. Any experienced patent attorney has likely dealt with a number of private inventors who have a good idea, but perhaps neither the time, the experience, nor the suite of skills needed to bring a successful product to market. The patent system allows them to file their patent application and look for potential licensees to take that burden from them. Does that make them a patent troll?

The same goes for other non-trading entities – Universities for example. Universities may have acquired significant patent portfolios through research undertaken that they may never themselves exploit by direct manufacture. These they may want to license or sell on, perhaps even to a patent troll.

But, I hear you say, the University and the private inventor have at least come up with something new: they have added to the great store of human knowledge and deserve the limited monopoly that the state grants to them by virtue of the award of a patent. That is true. But part of the patent award is its status as a private property right and the fact that its transferable. You may have a patent and you may sell it. That is your right. Or, if a company has a patent and runs up debts and then becomes insolvent, the administrator/liquidator may try and sell that property to pay back the creditors.

Fundamentally, a patent has never really been about a right (nor obligation) to exploit an invention by the patentee; they have always been about the right to prevent others from exploiting that invention.

Rather than being seen as a fault with the patent system generally, or the US system in particular, perhaps the rise of the patent troll is an unintended consequence of the US system of litigation.

The Patent Box: Report Card

The Patent Box: Report Card

It’s been a little over a year and a half since the UK Government introduced the Patent Box corporation tax reduction regime and it seems timely to take a look at how the scheme is operating.

What Is It?

The scheme allows payers of UK corporation tax to reduce the tax paid on qualifying profits to 10%. Qualifying profits are those obtained from patented inventions, provided certain criteria are met. It was introduced in the 2013/14 tax year and is being steadily phased in until the full benefit is available from 2017. In the current 2014/2015 tax year, 70% of the benefit is available.

Why Was It Introduced?

Put simply, to further encourage UK innovation, in addition to other such benefits including R&D tax credits. The Patent Box idea wasn’t a wholly British invention, if you’ll excuse the pun, and similar schemes have been in operation in various EU countries prior to its UK implementation.

Has It Worked?

It’s not been without its share of controversy. Both Germany and the OECD have raised concerns that this is potentially a form of unlawful state aid, although those concerns are apparently waning and it seems likely to be deemed lawful, and it appeared to be a big factor in the attempted Pfizer takeover of AstraZeneca, who seemed to be more interested in the tax benefits than the invention stimulus. Big pharma lives or dies on its patent portfolios after all.

Having said that, GSK have indicated that recent £700 million investments in its UK manufacturing facilities are largely attributable to the Patent Box tax relief.

The UK Government in the 2012 budget estimated the steady state cost after initial phasing in period i.e. from 2017 onwards to be £1.1 billion in foregone tax revenues, it will be interesting to see how much of that is being foregone should the Chancellor of the Exchequer itemise the figure in the Autumn Statement.

But perhaps that isn’t the best indication of its success; perhaps we’d be best looking at the patent filings. The UK-Intellectual Property Office’s figures suggest that there has been a general decline in patent applications by UK applicants over the last ten years; from around 19,000 per annum in 2004 to around 15,000 in 2013.

Patent applications remained reasonably steady, and even increased slightly from 2010-2012, the point in time where the Patent Box was being discussed, publicised and legislated, but prior to it being enacted.

However, there was another slight decline in 2013 filings.

These figures of course coincide with the recent (and severe) recession, which one would expect to have an impact on filing activity anyway, so perhaps it’s dangerous to draw conclusions that the Patent Box is not having an effect, and it will be interesting to see the 2014 figures once they are published. These figures only consider UK-IPO filings, whereas patents granted by other patent offices may be used in Patent Box savings.

Overall, the Patent Box still represents a great opportunity for innovative businesses to make significant savings on corporation tax and should not be ignored. To take advantage of it, you are going to need a patent or patents to do so.

Contact Us to find out more.

Protecting your App

It used to be said that everyone had one good book in them, now it seems that everyone has one good app idea in them. We use them everyday, for leisure, for business, for communication, for more and more things. Billion dollar businesses have sprung up from a few clever apps. And many times you have probably though “wouldn’t it be good if there was an app for that”.

But how do you protect your app?

Well, first things first: what is an app? An app is a little software product. Like all products, different aspects of intellectual property may combine to provide protection over it.

Arguably the most important is the app’s name or its Trade Mark. Its difficult to imagine someone not knowing CANDY CRUSH or ANGRY BIRDS simply from their Trade Marks. It should not be descriptive, nor should it be too close to other Trade Marks in the same or related fields, and it should be distinctive. If so, it may be registered to prevent others from using it. Trade Mark protection may also be appropriate for the unique icon associated with apps.

Some protection may come about automatically, especially copyright. Software code, graphics, icon designs may be protected by copyright if they are original. Ownership tends to be the tricky point with copyright: if you use a third party to write the software code, do you own it? Depends on the circumstances of course.

Design right protection may also come about automatically to protect icons and so forth. Designs may be registered to both extend the length of time of protection and to expand its protection to a “monopoly right” i.e. independent creation by others as well as copying may infringe the registration.

Lastly, patent protection: is it possible? Its complicated. A GOOGLE search of “patenting software” is unlikely to help. The European Patent Convention and the UK Patents Act – both of which date from the 1970s – have the clause that patents shall not be granted for computer programs as such. The “as such” portion proved extremely important in the subsequent history of litigation on the topic. This was used to narrow the exclusion to its limits by various cases.

This has resulted in the position where “software implemented inventions” are possible to patent, and by extension apps may be patentable. Much lies in what the app actually does and what contribution it makes and whether that contribution is “technical” in its effect. All of these are unfortunately still grey areas, but nothing prevents an application being filed and pursued. At the very least once your application is filed, you have a “patent pending”. If your app takes off and it becomes important to achieve patent protection, its likely to be worthwhile pursuing the matter as much as you can; after all, it may be several years before you have to face these questions and it may be shown that you have sufficient technical contribution. Or the law could change, stranger things have happened.

Contact us if you would like to discuss the protection of your app further.

Copyright your invention? Patent your name? A guide to the jargon.

All professions have their jargon. We are no different in the IP field. And a subtle piece of jargon inserted there – “IP” meaning “Intellectual Property” of course. But what do the various terms mean and what do they mean to you?

“Intellectual Property”

This is the umbrella terms for the rights which we deal with. There are four main types, sometimes including some others depending on whom you talk to. They are: patents, trade marks, designs and copyright. Sometimes “confidential information” / “know-how” is included.

Their common factor is that they give the proprietor the right to prevent others from using them. There are some limited exceptions to this rule, to find out if your planned use falls into an exception contact us.

They are called property as they are property rights: they may be sold, leased (or “licensed”), mortgaged, etc just like any other type of property.

“Industrial Property”

Much the same as “intellectual property”, but generally excluding the artistic copyright for the more “industrial” rights. However, you do not need to be in industry to have a useful invention that may be patentable, or a trade mark to identify your goods and services. If in doubt, contact us.

“Patents”

Patents protect technical innovations – “inventions”. In order to achieve patent protection, the innovation must be new, non-obvious and capable of industrial application. The invention does not have to be a “eureka” moment and demonstrating that a new invention is not obvious is not as difficult as one may think. A patent has to be applied for – no-one is going to seek you out and give you one. Even if a patent is not ultimately gained, the application process itself can be beneficial by allowing you to properly state that your new product or process is “patent pending”. If in doubt, get in touch: patent protection may be right for you.

Patents granted by the UK Intellectual Property Office (the Patent Office) and the European Patent Office may also allow you to significantly reduce your corporation tax liability by the innovation-encouraging Patent Box tax regime.

“Trade Marks”

Trade Marks are unique branding features, the sort of features that help differentiate your products and services from those of your competitors. They may be names, logos, even the shapes of the products themselves or their packaging, or a colour that has become uniquely associated with your products and allows the consumer to choose your product over the others on the market.

By registering the Trade Mark you achieve the exclusive right to use that for your products or services and prevent others from using that Trade Mark or one so similar that the buying public may be confused into believing those goods or services come from you.

“Designs”

Designs protect the way products look. They can protect the shape or configuration of a product, or even more abstract items such as computer fonts and icons. Whilst some limited automatic rights come into place by simply creating a qualifying product, to bolster your protection you may formally register the design. Design registration can be straightforward, but professional assistance may prevent you from stumbling across pitfalls.

“Copyright”

Copyright protects literary and artistic works, such as drawings, photographs, screenplays, novels, short stories. It protects against the copying of qualifying works only; independent creation, no matter how close, is not covered. Copyright protection comes about automatically in most cases, but in some countries provision for registration exists. It may be that your copyright work has some aspects protectable by other areas of intellectual property law.

“Confidential Information” / “Know-how”

Often not considered an intellectual property right since in various jurisdictions its not treated as a property right. Protected by a myriad of confidentiality agreements, non-disclosure agreements, they are trade secrets that owners do not wish to reveal. Its the COCA-COLA and IRN-BRU recipes, the GOOGLE algorithm, etc.

Some may be patentable, but a choice may have been made not to reveal the technology by filing a patent application. A patent lasts for a limited period of time and then the technology is open to all to use. A trade secret remains the exclusive “property” of its owner as long as its kept a secret.

Often products may have various intellectual property rights attached to it: your smartphone will have one or more Trade Marks (Apple, iPhone, BlackBerry, HTC, Nokia, etc), several patents covering its functionality such as the “slide to unlock feature”, design registration(s) covering its overall look and even the various app icons, and copyright protecting the 300-odd page user agreement that no-one reads.

Who can I tell about my idea?

Its never a great feeling being a patent attorney and hearing from someone who wants to protect their innovative product because its selling really well.

But why could this possibly be bad?

One of the absolute requirements of gaining a patent is “novelty”. Not as in whoopee cushion novelty, but as in “new”. An invention for a patent must be new at the time of filing i.e. it cannot have been publicly disclosed prior to filing. So the in the scenario above, the innovative product probably does not qualify as being “new” in patent law. It may have been disclosed in a way that allows someone to recreate it.

Usually something can be done if the person acts quickly: it may not be a “full enabling disclosure” and we can still file for valid protection; a few countries (most notably the USA) allow a grace period for disclosures not to be taken into account which may be of use; a grace period exists in design registration which may be of use in protecting the product; a trade mark registration may be taken out to protect the goodwill being generated in the brand being used to sell the product; etc. There is usually some way that we can help protect it.

So who can you tell about your idea? Preferably us in the first instance so why not contact us for a no cost, no obligation consultation to determine what can and should be done before its too late.

How much does it cost?

A very appropriate question. How much does IP cost? How much should it cost? Its a question that should be asked. Does the cost represent value?

The easiest answer is “it depends”. It depends on what you want protected. It depends on the complexity of what you want protected. It depends which IP instrument (or combination of instruments) i.e. patents, trade marks, designs or copyright is appropriate to protect your idea. It may range from a couple of hundred pounds upwards. But we are sensible and commercially focussed. We will not advise spending several thousand when several hundred is more appropriate.

What is free is an initial consultation. Send us an email, fill in the enquiry form, pick up the phone. We can speak on the phone, come out and see you or meet you at your convenience. We can tell you what you should do and what it will cost with us. And if you decide against it, there is no cost. So get in touch.

How do I get a patent?

Quite simply: you have to apply for a patent. No-one will seek you out and give you one. And a frequent misunderstanding to clarify is that you will not get a patent by sending the details to yourself. If that worked, you’d be a patent office, and you’d know what to do with the application that you’ve just sent yourself.

A patent application requires a patent specification. International standards vary slightly, but there are common elements: your name (or the company that you are applying on behalf of), an indication that you want a patent to be granted (usually on a handy form that the patent offices insist you use), a full enabling description of the invention and any drawings useful in its comprehension (essentially an instruction kit to let someone skilled in the art put your invention into effect) and one or more claims that set out the legal definition of your invention.

Writing the specification can be complicated and professional advice is recommended (although I would say that). Ask any patent attorney to tell you the difference between “comprise” and “consist” and you’ll get a flavour of the traps that await the unwary. And probably bored. If your eyes haven’t totally glazed over ask the difference between “elongate” and “elongated”.

There is likely to be an official fee for you filing your application. Patent examiners have mortgages and kids and cars and need to be paid, fed and clothed too.

The application will eventually be examined. In the UK and the European Patent Office there is a two stage examination process. The application is first subjected to a novelty search. An examiner is assigned to look through the “prior art” (mainly, but not limited to, patent documents already published in that field of technology) for your invention and try and come up with documents that may be used to challenge the novelty (or “newness”) and inventive step (whether or not its “obvious”) of your application.

Based on this search, you decide whether to proceed with the second phase of examination and pay the fee for doing so. If you decide to, the application moves to a technical examiner who reviews the application and its claims more thoroughly.

The application and its claims may need to be modified to be acceptable, or an examiner may need to be convinced that it has novelty and inventive step as it stands.

If the examiner is convinced of its merits you get a patent.

There are other esoteric stages (which is why its good to have someone experienced helping you out), but this is the simplified story of the application process. Why not contact us for a no cost, no obligation consultation to determine what can and should be done with your idea.

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S. William Wallace & Company is a trading name of S. William Wallace & Company Limited. Registration No. 466189 (Scotland). Registered office at Caledonian Suite Regent Court 70 West Regent Street Glasgow G2 2QZ. T: +44 (0) 141 333 6534. S. William Wallace & Company is regulated by IPReg.

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