Filing a Patent, and Intellectual Property Rights sessions

Research Bites have benefitted from the expertise of Gavin Smith, the University’s Intellectual Property (IP) Officer, over the last 2 weeks. He has delivered two useful sessions, which I’ll summarise. If you picked up on any points which I haven’t included, please do share them in the comments box below.

Filing a Patent on you invention and commercialising it, 4th Sept 2014

Patents are an intervention by the state into markets and a formal way of protecting your intellectual property.
The Intellectual Property Office is a comprehensive source of information, and the source of the following definition:

Your invention must:
  • be new
  • have an inventive step that is not obvious to someone with knowledge and experience in the subject
  • be capable of being made or used in some kind of industry
  • not be:a scientific or mathematical discovery, theory or methoda literary, dramatic, musical or artistic worka way of performing a mental act, playing a game or doing businessthe presentation of information, or some computer programsan animal or plant varietya method of medical treatment or diagnosisagainst public policy or morality.

from IPO’s What is a Patent?

There is a process that needs to be followed when filing a patent, which involves making a very specific claim for what you want to protect. This includes a description containing enough detail to allow someone else to replicate your invention.

Patents operate on a ‘First to file’ basis, so the speed at which you prepare your claim is important. A patent examiner, who is an expert in the field, would then conduct a search report to see whether there is any ‘prior art’ (including your own previous work) which would prevent your patent being considered as new. They also examine your claim to make sure it is compliant and may ask technical questions about your invention.

The inventor is classed as the person with idea, not necessarily the person who made the invention. You do not need to have a working prototype in order to file a patent.

Non-patent Intellectual property, 12th Sept 2014
This session covered:

Copyright
It’s useful to consider the name of a product or business to make sure it is not already being used in your field of work. Includes registered trademarks and internet domain names.

Copyright is an unregistered right, you don’t need to apply for it, or pay a fee for it. The medium of the creative work doesn’t matter. You don’t have to apply the © symbol, but it does serve to remind people who owns the rights to the work. Copyright does not protect the idea behind the work, just the manifestation of the idea.

At the University, copyright is owned by the creator of the work, for example a journal article or book, except for teaching materials which have been developed. Copyright does give you the power of redress if someone uses your work improperly.

Design
A Design right protects the three-dimensional form e.g. coca cola bottle of an object, or the ‘two-dimensional ornamentation’ e.g. the logo, not the function. So if there is value in your design in terms of the way it looks, then it is worth considering registering a design right.

Trade marks
Anyone can use a name and the ™ symbol, but this doesn’t give you any formal rights. However, registered trade marks give you right to stop someone using your brand. If your brand’s name is considered to have value, and be known in association with the product or service, then it is worth registering.

Registered trademarks can be in different classes, i.e. the same name can be trademarked for different types of products, e.g. Polo mints, Ralph Lauren Polo shirts, VW Polo etc.

A recent dispute between Interflora vs. Marks and Spencer, where M&S had bought the Google AdWords for ‘Interflora’ so that their own florist service ranked higher in Google search results, was considered to infringe Interflora’s trademark rights, and is no longer possible to do.

Questions
Is there any protection for an idea? No, you need to embody an idea in order for it to be protected.

How does publishing affect IP? If you are planning to apply for a patent, you need to apply before you publish, otherwise your own work could count as prior art, and prevent your application.

More information

If you missed the sessions and but would like to know more about IP or filing a patent, or to see a copy of the slides, then please contact Gavin via the Research & Enterprise Service. We’ll be asking him back to repeat these sessions in 2015.

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