Intellectual Property

Keeping an eye on your designs..

Intellectual Property

• Why is it important?• Managing Confidential

Information• Product Design – Registered

and Unregistered Designs • Patents • Copyright

What is it?

• Intellectual property is the term used to define those legal rights which protect innovation and the creation of new works and inventions

• The laws are complex, and professional advice is always needed

• It is important, however to have a basic understanding of how they can help you.

What?

• Intellectual property rights are intangible, but none the less can be created, owned, transferred and licensed.

• Intellectual property is VERY important in modern design business environments and is often a neglected or under estimated factor in design projects.

• A lot of hard work on the designers part is often simply ‘taken’ as a result.

IPR..

• Most of the time Intellectual property rights are referred to as ‘IPR’.

• There are a few types of IPR, and each has specific attributes that protect certain types of information.

Types of IPR

• Copyright • Rights in Design (registered

and unregistered)• Patents • Trade Marks • Passing off

Types of IPR

• Some types of IPR are subject to formalities which regulate the acquisition, transfer and other dealings of the rights.

• These are known as ‘Hard IPR’ and usually include design registration and patents.

• These are strong ways in which your designs can be protected.

• Other forms of IPR come into existence automatically, but can be less effective at protecting your work.

Examples..

• Certain types of IPR different types of work to different extents.

• If the design has novel or inventive qualities, it may secure patent.

• If it artistic, it may simply be copyright.

Product Design..

• Initially it is important to define the legal difference between design such as graphic design and product development.

• Graphic design is usually concerned with Trade Mark issues based around marketing communication materials such as logos, adverts and brochures.

Product Design..

• Graphic and Software design are generally covered by Copyright laws.

• Product design in covered by Design Rights. Which can be owned by both individuals or a company.

• The rights to a design created whilst working for a organisation are usually owned by that company.

• As far as the law is concerned, the terms ‘design’ is limited to product design and refers only to the visual appearance of manufactured objects.

Manufactured objects..

• Such objects fall into two visual categories…

• Objects with ‘eye appeal’ which means the aesthetic appearance of a object is important to the consumer.

• Objects without eye appeal, which mean the function or purpose are relevant.

Manufactured objects.

• Within these two categories, designs are protected differently.

• We are going to have a look at each area.

Protecting products with Eye Appeal…

• This category consists mostly of consumer goods, examples of which are cars, kettles, tea sets to toys and also concern wallpapers, fabrics and waterbeds.

• These types of products are protected by applying for a Registered Design.

Registered Design..

• A Registered Design gives the owner the exclusive right to make, import or sell an article to which the design has been applied.

• This right is infringed by anyone producing articles either the same or similar in appearance regardless of whether it is deliberate or not.

How?

• I design is registered by filing an official application at the Design Registry (part of the patent office) The application must be accompanied by drawings or photographs of the object.

• For the application to be accepted, the product design must be new and original.

What’s New/Original?

• With only limited exceptions, new means a design that has not been made available or disclosed to the public in the UK before filing the application.

• SO YOU MUST file your application before any non-confidential disclosure takes place.

• Original means that compared to shape, configuration, surface patterns etc. the object has a different eye appeal to other designs..

How much?!

• The patent office charges an application fee for Design Registration and there may be additional costs in preparing the application.

• Legal protections lasts up to 25 years but renewal fees are due every 5 years.

Other peoples designs?

• After the first 5 years, a third party can utilise your design if the patent office decides you are not exploiting the design to the benefit of the UK public.

• I.E your protection of the design is preventing other people from making the best use of it.

• The outcome of this process is that after sufficient evidence is concurred, the third party is granted a licence to use your design after payment of what the patent office regards as reasonable royalties.

• This is called compulsory licensing

Objects without eye appeal..

• These are purely functional parts where aesthetics are irrelevant. These include parts of a car engine, the element in a kettle that makes it function, circuit boards.

• These are automatically protected by unregistered design rights.

• These automatic rights enable you to take legal action if anyone copies product features.

However..

• Automatic design rights are exclusive to this country. They safeguard against copying, but they do not protect the independent creation of a similar design.

• Also – features which allow other parts to work in conjunction with a different system or purpose are excluded. E.g spare parts.

• The life span of the Automatic design rights is generally 10 years.

• For more formal protection, a patent can be sought.

Start protection early..

• Other people will feel the irresistible temptation of exploiting something not protected to their advantage especially something potentially successful!

• You must protect your design before it is publicised, promoted or sold!

• After showing a design to your friends for example, an application may fail because it is no longer referred to as new!

• New Designers!

Patents!

• A patent protects a technical innovation. It is an exclusive right that grants you a 20 year monopoly to prevent others from making, using, selling or importing that innovation subject to payment of you annual renewal fees!

• Patents relate to devices, machines, methods, compounds or manufacturing processes in new products or during re-development of existing solutions.

• They exclude intangible things such as computer programs, scientific theories, mental acts, methodologies and certain medical techniques.

Patents..

• Patents can be owned by both individuals and organisations. Patents covering an employees invention are generally filed and owned by the employer.

• As the patent holder you are allowed to rant other people licence to produce or sell your invention.

Patents..

• Patents are highly complex and require the use of professionals that will not only save you time, but money too!

• It is highly advisable to prepare your application with the assistance of a patent agent.

• Patent management is also very important.

• Similarly to registered designs, as compulsory licence can be granted!

Search..

• Before the application is submitted a search can be carried out to determine the original status of the invention.

• Patenting is a detailed process because of the many inventions are out there.. It can take between 2 and 5 years until a patent is granted.

Have a break.. Have a..

• 10 minute break!

Copyright protection..

• Can not only protect people from copying your work but safeguard you from inadvertently copying someone else's!

• Copyright arises automatically when a literary, dramatic, musical or artistic work is created in a tangible form.

• Some work produced by design agencies, such as packaging may be covered by Design Rights or Copyright, or both.

• Product Design is covered only by Registered and Unregistered Design Rights.

What does it cover?

• Copyright covers artistic and technical drawings and software programs and applications including games.

• Regardless of whether the drawings are by hand or CAD copying a product portrayed in a drawing is NOT an infringement of copyright – ref design rights.

What’s Protected?

• Concepts, Text, Illustrations, Photographs, Storyboards, Film, Sound, Graphic Designs, Typefaces, Drawings, Interior Designs, Reports.

• These are examples, not comprehensive lists.

Copyright protection.

• A combination of these examples, such as a CD-ROM video or presentation, such as this, constitute copyright works.

• But must be tangible don’t forget! • So… a CD with this presentation

on would be protected by copyright, and the packaging protecting may be covered by Design Rights or Patents, the logo may be a trade mark and copyright, under graphic design etc.

Copyright..

• Copyright is the exclusive right to reproduce a work. It prevents others from copying your work without permission.

• Lending, performing or broadcasting any of a this work is illegal without permission from the copyright owner.

• Exceptions are based around limited use for personal research (not published) reporting or reviewing e.g the media or certain educational purposes.

• Copyright does NOT prevent the independent creation of a identical or similar work.

• Essentially copyright does NOT protect the idea behind the work.

Duration of Copyright.

• Duration of a copyright usually lasts the life of the author plus about 70 years. For some industry produced articles the period is 25 years.

• Because of the length of this commitment it is important to agree on copyright laws before hand, so ownership doesn’t end up with the wrong person!

Copyright..

• How do you do it? • Where possible indicate your name by the

legend, followed by your own company’s name, and the year of first publication: e.g.

• © Nicholas A. Hall, Cubular Design 2005. • Remind others about the fact that the

work is copyright. • Consider whether your work can be

protected by Design Rights, or other forms of Design Law.

• If you feel it may be necessary to establish who first created the work, send the drawings, photos etc. to yourself or your solicitor via registered post.

• On its arrival, leave the letter unopened.

Licensing

• Licensing grant the license holder permission to manufacture, market and sell the property concerned while the owner retains the design rights.

• There are two types of licensing; simple exclusive and non-exclusive.

Exclusive Licensing..

• An exclusive license give the holder permission to manufacture, market and sell your work exclusive to them.

• No one else – (including yourself) will be able to use the design.

• Usually you will receive a royalty based on a percentage from each unit manufactured.

Non-Exclusive License..

• Visa Versa.. A Non-Exclusive License DOES allow you to licence the design to multiple organisations and to continue to produce the design yourself.

Licensing..

• A Licence should clearly specify what properties are on sale, what conditions there are for manufacture and the term of the license.

• The license term can be perpetual or for a specified time, but should include terms of release should the licensee not fulfil specified obligations such as minimum sales.

Minimums..

• These are the minimum requirement subject to the license and agreed by both parties.

• They are the minimum items to be sold per annum, rather that to min royalty payment.

• This prevents a company simply paying you a royalty and not marketing the goods.

• Minimums vary according to the geographical scope of the license.

Geographical scope..

• A license can be limited to a geographical area. For example you may have a European license and a US license, with different minimums due to the scale of the populations.

• You can also have worldwide licenses, with different minimums and terms for different geographical areas.

Royalties..

• Negotiating a royalty is a matter of negotiation, so get your business hard ball hat on!

• Before meeting with your licensee you should work out the minimum you will accept and a realistic expectation, and stick to them.

• You should agree when and how the royalties will be paid with your licensee and setup a payment schedule, usually quarterly from the beginning of the license.

Other issues..

• Manufacture and quality – to protect your reputation, it is important to maintain control over how the product is made, packaged and retailed.

• A licensee should accept a detailed specification of requirements for the products production and sale.

• You may also want to agree with your licensee that they cannot sell products in direct competition with your own!

Infringement..

• A exclusive licensee is allowed to take action against someone else infringing the agreement, including you! But they are under no obligation to do so!

• Agree with your licensee a strategy or procedure for infringement, as this can get expensive!

Overall..

• Protect your work early, remember that certain forms of IPR protect specific types of work and its important to get it right, otherwise you may loose a lot of your hard work!

• Seek professional help, solicitors do have to inform you before they start charging you lots of money, so a phone call is not dangerous!

• If you are unsure, don’t agree to anything, or show anybody your work!

• NDA’s are a good way of protecting yourself initially!

Non-disclosure agreement

• Simply signed by two parties involved in a meeting, where confidential items are to be discussed.

• Before entering discussions about your work, ask the participants to sign and witness this documents, which is legally binding.

Thanks!

• I hope this lecture has been informative for you!!