by Bill McFarlane from Madderns and Nicholas Fox from Simmons & Simmons
Conduct an IP Audit – there are many helpful sites which provide a variety of steps
One such site is available on the WIPO site
http://www.wipo.int/sme/en/documents/ip_audit.htm
Audits can be conducted by you, IP knowledgeable personnel, or outsourced to patent/trademark/design attorneys and legal firms knowledgeable about copyright (there may also be a need to consider employment contracts and other contracts for outsourced works)
The auditor needs to be knowledgeable about the different types of IP (registrable, un-registrable and not-registrable).
| Patents | Registrable |
| Trademarks | Registrable |
| Designs | Registrable |
| Copyright | Registrable US and few other countries © symbol |
| Plant Varieties | Registrable |
| Integrated Circuit Protection | Unregistered Rights (M) symbol |
| Trade Secrets | Not registrable |
Clearly the extent of any audit will depend on the time, effort, and cost of the process but even a cursory audit will identify the main assets, glaring gaps in the portfolio and risks and forms a base of information that can be shared and used for policy settings and progress reports.
Active management of the portfolio includes:
- Ensuring the various departments talk to each other
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- marketing knows what engineering is doing, can, and cannot do
- what's in the wind so that trademarks and marketing expenditure is timed to occur before release of the product or service
- user and technical manuals and advertising information complement each other
- What IP to apply for, renew, or abandon
Maintaining an IP register or at least updating it on a regular basis
Maintaining renewal and reminders
Cost management and budgeting for the future
Knowing what is a trade secret or should be kept confidential – treating it accordingly with marking and procedural steps to be followed by staff
Product and Service marking of IP rights Patent, TM, Design, Copyright to act as a notice of those IP rights (where are these marks needed by law and the consequences of not using them)
Copyright, Trademarks and Designs
What are they and can they all protect a single product or service?
Copyright examples
Trademark examples
Design examples
Non-traditional trademarks
3D shape trademarks
Design protection registered and unregistered
Where does Copyright fit it?
Can design coverage overlap with Copyright?
Examples
Examples of a product that has all three forms of protection
Strengths and Weakness of each form of protection
- International
- Scope
- Lifetime (and if renewable during that lifetime)
Patents – technical inventions
Patents protect technical inventions
How something is achieved rather than what it looks like
20 year duration
Covers anything which works in the same way even if developed independently
Invention must be new and non-obvious
Prosecution costs are siginficant
Trademarks – indicators of origin
Traditionally confined to trade names and logos
More recently expanded to cover non-conventional marks
- Sound marks
- Smells
- Gestures
- 3D marks
Sieckermann criteria
- Represented graphically, clear precise, self contained easily accessible, intelligible, durable and objective
Potentially unlimited duration
Copyright, unregistered design right and unfair competition
Copyright works
- Literary, artistic, dramatic, musical or artistic works
Limited to copying
Duration – life +70 years
Can cover 3D reproduction of 2D images
Extent of protection varies on jurisdiction
- Slavish copying covered by unfair competition – DE, NL
- UK/ EU un registered design right
- No copyright protection for designs in Canada
Pros & Cons
Patents
- Strong but expensive. The only way to protection function
Trademarks
- Potentially unlimited duration but acting as an indicator of origin difficult
Designs
- Relatively cheap, but uncertain scope
Copyright
- No upfront costs but need to evidence to establish creation. Protection limited to copying. Not always available
GOAL has exercised reasonable professional care and diligence in the collection, processing, and reporting of this information. However, the information/data used is from third party sources and GOAL has not independently verified, validated, or audited the information. GOAL makes no representations or warranties with respect to the accuracy of the information, nor whether it is suitable for the purposes to which it is put by users. GOAL shall not be liable to any user of this presentation or to any other person or entity for any inaccuracy of this information or any errors or omissions in its content, regardless of the cause of such inaccuracy, error or omission. Furthermore, in no event shall GOAL be liable for consequential, incidental or punitive damages to any person or entity for any matter relating to this information.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.