ExploreExport 2014 - Safeguarding Your Intellectual Assets

www.scottish-enterprise.com
ExploreExport
2014
Murrayfield Stadium
Edinburgh
Monday, 10 November 2014

Safeguarding Your Intellectual Assets

Martin Layton
Intellectual Assets Specialist
Scottish Enterprise
&
Catherine Potts
Intellectual Assets Specialist
Scottish Enterprise

THE INTANGIBLES
INTELLECTUAL ASSETS
INTELLECTUAL PROPERTY
KNOW HOW
BRANDS
GOODWILL
REPUTATION
TRADE SECRETS
CUSTOMERS DATABASES
BUSINESS PROCESSES
RELATIONSHIP MANAGEMENT
PATENTS
COPYRIGHT
TRADEMARKS
DESIGN RIGHTS
PLANT VARIETY RIGHTS

WHAT VALUE IS INTANGIBLE

IA MANAGEMENT PROCESS
STEP 1 IDENTIFY
STEP 2 PROTECT
STEP 3 PACKAGE
STEP 4 VALUE
STEP 5 COMMERCIALISE

TRADEMARKS COPYRIGHT PATENTS REGISTERED DESIGN RIGHTS

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

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

COPYRIGHT INFRINGEMENT
Artist Tori LaConsay takes on H&M

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

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

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

REGISTERED DESIGNS
CAMBRIDGE
SATCHEL COMPANY
ZATCHELS
v

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

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

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

THE TEAM
Alison Butchart T: 0141 951 3060 E: Alison.Butchart@scotent.co.uk
David Hughes T: 0141 951 3072 E: David.Hughes@scotent.co.uk
Martin Layton T: 0141 951 3099 E: Martin.Layton@scotent.co.uk
Conall McGinley T: 0141 951 3046 E: conall.mcginley@scotent.co.uk
Catherine Potts T: 0141 951 3032 E: Catherine.Potts@scotent.co.uk
Stuart Watson T: 0141 951 3091 E: Stuart.Watson@scotent.co.uk
Ewen Macaulay T: 01463 244226 E: Ewen.Macaulay@hient.co.uk
Team email: IATeam@scotent.co.uk

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)

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

•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

Nikolaus Sennhauser
Project Manager
Bright Idea Scotland

Telephone Number - 0845 601 3007
advice@brightideascotland.com
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.
£

www.brightideascotland.com advice@brightideascotland.com @BrightIdeaScot 0845 601 3007

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

“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.

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.

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.

Contacts
David Fulton d.fulton@lincoln-ip.com
Matthew Lincoln m.lincoln@lincoln-ip.com
Stephen Walker s.walker@lincoln-ip.com
Karen Veitch k.veitch@lincoln-ip.com
Paul O’Hagan p.ohagan@lincoln-ip.com
www.lincoln-ip.com
2 West Regent, Street, Glasgow, G2 1RW 0141 299 3123
9 Victoria Street, Aberdeen, AB10 1XB 01224 433123

Q & A Panel Session

Book an appointment with an Export Advisor to get you started. Email: international@scotent.co.uk
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

End of seminar
Thank you!

ExploreExport 2014 - Safeguarding Your Intellectual Assets

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