This document provides an overview of intellectual property including patents, trademarks, registered designs, trade secrets, and copyright. It discusses what types of inventions or creations each area protects, requirements for protection, costs and processes for obtaining protection, and examples of well-known brands or creations that utilize different intellectual property rights. The document also briefly outlines R&D tax credits and the UK patent box tax incentive for companies developing and commercializing patented inventions.

1. An Introduction to Intellectual Property
Gary Townley
Business Outreach & Education

2. Doug Ealey
Kate Symons
www.dyoung.com

3. Business investment has changed
£ billion - in UK as elsewhere
IP
Fixed Capital
Source EU COINVEST and Haskel et al

4. Intellectual Property Office
Premier foods has sold its 200 year old Branston
brand to Japanese company Mizkan for £93 Million
The sale includes its factory in Bury St Edmunds, Suffolk

5. IP Baseline Survey
96% of UK businesses do not know the value of their
Intellectual Property Rights
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

6. Patents
Plant Trade
Varieties marks
Trade marks
Trade
Intellectual
Property
Registered
Secrets designs
Confidentiality Copyright

7. What is a Trade Mark?
“A Badge of Origin”
• A ‘brand’ or ‘make’, e.g. ‘Reebok’
To qualify for registration…
• A sign must be capable of being
represented graphically
• A sign must be capable of
distinguishing the goods or services
of one undertaking from another

8. What can be registered?
Name Logo
Domain name Slogan
Colour theme Shape theme
Music Smell

9. True or False
You cannot register a dictionary word
Changing the spelling makes it different
You have to use a trade mark to register it
I have registered at Companies House so I own the
trade mark

11. Be careful with…
• Geographical names
• Laudatory terminology
• Restrictive names

12. Be Inventive
Blaupunkt – originally called ideal – a blue dot was attached if the headphones
came through the quality test.
LEGO – Danish “leg godt” – play well ( coincidentally “I learn” in Latin)
Amstrad – Sir Alan Michael Sugar trading
Hasbro - Henry & Helal Hassenfeld – Hassenfield Brothers
Mercedes – the first name of salesman Emil Jellineks daughter

13. Clearance searches…Why?
Avoid expensive mistakes
Awareness of competing marks
Early resolution of potential problems

14. Costs & Filing Strategies
UK – National Filing
Fees:
Application fees: £200 – In one Class
Additional Classes £50 each (up to 45 Classes)
Timeline:
Examination within 2 months of filing
Registration (unopposed) in 5 months

15. Costs & Filing Strategies
CTM – EU wide
Fees:
Application fees: €1050 – In 1 to 3 Classes
Timeline:
Examination and registration
in approximately 6 months

16. Costs & Filing Strategies
International Registrations
Madrid Protocol
Costs – vary depending on states chosen
Timeline:
Up to 18 months for Examination

17. Duration, renewal and use
• Valid for 10 years from the filing date
• Renewable every 10 years
• 5 years ‘grace’ period of non-use
• Use it or risk losing it!

18. Patents
Plant Trade
Varieties marks
Registered Intellectual
Property
designs
Trade
Secrets
Registered
designs
Confidentiality Copyright

20. Registered Designs
Appearance of whole or part of product
Protects shape or configuration (3-D)
and/or pattern or ornamentation (2-D)
No protection when form is dictated
by function (ie: no design freedom)

21. True or False
If I make 6 changes it’s a new design
I can’t sell some of the designs before registering
My UK design protects me in Europe
If I don’t register I have no protection

22. Registered Designs
Design Registration No 3001664

23. Multiple Applications
£60 for first design
(£40 application + £20 publication)
£40 for subsequent designs
(£20 application + £20 publication
Renewal fees every 5 years
Maximum term 25 years

24. Registration Overseas
Paris Convention – 6 Months
OHIM - Community Design

25. Patents
Plant Trade
Varieties marks
Trade
Secrets
Patents Intellectual
Property
Registered
designs
Confidentiality Copyright

27. What is a Patent ?
A Bargain
Exclusive Rights
20 years
State Inventor
Fees
Technical Description

28. Criteria for ‘patentability’
Patents are for “technological innovation”, though the
Patents Act 1977 fails to define the word “invention”
Inventions must be new - not known
anywhere in the world prior to the filing date
Inventions must have an ‘inventive step’ - not
obvious, a simple adaptation or combination
Inventions must be industrially applicable
and have a ‘technical effect’

29. Claims
Claim 1
A novelty candy holding device in
combination with a candy
confection which comprises: a
housing, an electrical source in said
housing, an electric motor in said
housing, a switch means for
controlling current to said electric
motor, and means to receive and
rotate one end of a stick upon
which a piece of candy is attached
while the piece of candy is rotated
by means of the electric motor.

30. Claims
Claim 1
Candy product of the type
commonly called a lollipop,
comprising a stick (2) with one end
embedded in a ball (3) of candy,
characterised in that said body (3)
has a totally convex shape with a
smooth outer surface.

31. True or False
The IPO test to see if the invention works
I haven’t seen one so it must be new
I can patent an invention in the UK that I have seen
overseas
By patenting my idea it will be kept secret

32. Exclusions
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any
other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing
a mental act, playing a game or doing business, or a
program for a computer;
(d) the presentation of information;
…as such

33. Patent fees
Application fee – £30 or £20 (Electronic filing)
Search Fee - £150 or £130 (Electronic filing)
Examination fee - £100 or £80
(Electronic filing)
Renewals
5th Year - £70
10th Year - £170
20th Year - £600

34. Obtaining Patent Protection Abroad
Separate national filings
Patent Co-operation Treaty
(PCT)
European Patent Convention
(EPC)

35. Working with others
Prior use or disclosure will invalidate a patent
application - use ‘Confidentiality Agreements’
Agree in writing who will own any I.P. arising
from the collaboration before commercialisation

36. Patents
Plant Trade
Varieties marks
Copyright
Trade
Secrets
Intellectual
Property
Registered
designs
Confidentiality Copyright

37. What Copyright protects
Books, technical reports, manuals, databases
Engineering, technical or architectural plans
Paintings, sculptures, photographs
Music, songs, plays, dramatic works
Promotional literature, advertising
Films, videos, cable or radio broadcasts
Computer software

38. True or False
If it doesn’t have a copyright notice, it’s not protected
I can copy 10% without it being an infringement
If I acknowledge the original work, I can use it
I have bought the book/painting/photograph so I can use
it as I wish

39. Who owns Copyright?
Usually the first creator or author...
…or their employer if produced in the
ordinary course of their employment
However, a contractor will retain ownership
unless their contract is explicit to the contrary
Even if the creator sells their rights, they have
‘moral rights’ over how their work is used

40. Baker Street
• Estimated £80,000 per year in
royalties since 1978
• Copyright expires 31 Dec 2081
• Saxaphone riff played by
• Bob Holness
• Raphael Ravenscroft
• One off fee £27

41. Primary Infringement
Any of the following without the
consent of the rights owner
Copying / Reproducing Adaptation
Distributing Issuing or renting
Public performance Broadcasting
IGNORANCE IS NO DEFENCE

42. Secondary Infringement
Any of the following without the
consent of the rights owner
Selling Importing
Possession for business purposes
Facilitating primary infringement
Only guilty if done knowingly,
or if you ought to have known

43. ‘Defences’- permitted acts
The following are allowable even when they
technically breach Copyright: “Fair Dealing”
Private study Research
News reporting Public Interest
Criticism / reviews Some official reports
Education, libraries Video/DVD ‘time-shifting’

44. Bringing it all together
® Registered Trade Mark
‘TM’ unregistered
Registered Design
Copyright: labels & artwork
Patents: several dozen!

45. R & D Tax Credits
Designed to encourage greater R&D spending, leading in turn
to greater investment in innovation.
Two schemes for claiming relief
• The Small or Medium‐sized Enterprise (SME) Scheme
• The Large Company Scheme
http://www.hmrc.gov.uk/ct/forms-rates/claims/randd.htm
The value of relief claimed for 2010/12 was £1.1bn (£340m in
SME claims, £750m in large company relief claims).
http://www.hmrc.gov.uk/stats/corporate_tax/rd-introduction.pdf

46. Patent Box
Reduction in corporation tax to 10%
In Stages from April 2013
Must hold a Qualifying Patent (IPO, EPO) or licence
Patent must be granted (can be back dated up to 6 years)
Development condition
Active Ownership condition
Royalties from sale or licensing
Proceeds from sale of goods
Damages from infringement actions

47. www.ipo.gov.uk - 0300 300 2000

48. www.dyoung.com - 023 8071 9500

49. Thank You Doug Ealey dre@dyoung.co.uk
Kate Symons kes@dyoung.co.uk