An Introduction to

Intellectual
Property and
Patents Part II
Simone Ferrara & Matthew Hoyles
02 June 2014

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Part I
What is IP?
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Part I - Recap
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Legal framework of overlapping layers of rights providing intangible assets
that can be traded like any other.
Intellectual Property Rights (IPR) are exclusive legal rights to control how IP
can be used, thereby giving control of how the technology/deliverable can be
used NOT RIGHTS TO USE
It is important to consider ownership. There may be multiple IPR owners in
products or services.
In the absence of a contract the statutory position applies.
Businesses often utilise low cost services in exchange for giving away
valuable IP assets or positions there is nothing wrong with this but be
aware of the consequences.
What do they do?
Ownership
Contract?
What is IP?
IP is a tradeable asset
Part II
A focus on
Patents
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What is a Patent?
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Used to protect ideas and inventions
Protects the way the product works or functions
A right granted by a countrys government for a limited period of time in
exchange for making how it works available to the public
A monopoly right
Infringement does not require knowledge
A right to exclude not a right to exploit
Territorial
Time limited (20 years)
Subject to formal examination (in most jurisdictions)
Civil not criminal
UK statutory position is that the owner is the inventor unless invented as part of employment,
in which case the owner is the employer


What is a Patent?
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A technical solution to a technical problem
New
Not available to the public anywhere in the world before the filing date of the application
Inventive
not an obvious modification of what is already known
Industrially Applicable
can be made or used in any kind of industry
Not inventions, as such (i.e. excluded subject-matter)
a discovery, scientific theory or mathematical method
a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
a scheme, rule or method for performing a mental act, playing a game or doing business, or a
program for a computer
the presentation of information


Patentability
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Examples
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Slide-to-
Unlock
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Patentable per se
but not inventive over little known Swedish phone
Pocket
Lighter
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Patentable
Teleporter
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Not patentable
Practicalities
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Time
Invention will be made public after 18 months
Often takes 3-5 years before is enforceable
Expense
Costs 3k-10k in the UK alone
Protecting the invention in other countries will cost significantly more
Can be significantly cheaper if no expectation of grant
Patentability
No guarantee a patent will be granted
Difficulties in obtaining patents in certain technical areas
You need to be able to put the invention into practice
Territorial nature
All of the above varies from territory to territory

Practical points to consider
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Has the idea been disclosed?
Consider why you might want a patent?
Seek Advice
Intellectual Property Office has lots of advice on its website - www.ipo.gov.uk
Most Patent Attorneys will offer hour to 1 hour free advice - www.cipa.org.uk
If they dont ask why you are considering filing for a patent then try another one!
Be careful of unregulated strategists/consultants/invention promotion companies/cowboys
Consider Alternatives
Defensive publication
Trade Secret
Application with no expectation of grant
Provisional patent applications

Steps to take
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NDAs are simple contracts that allow one party to share confidential
information with another party (one-way) or share confidential information
with each other (mutual)
What they are good for:
Disclosing confidential information to a partner to ensure that do not misuse it
Discussing a confidential project for which you do not need to be able to use the information
received
What they are NOT suitable for:
Anything else!
Receiving constructive feedback - Under a mutual NDA you cannot use the feedback you
receive, even if you were inevitably going to come up with the same information yourself

Non-Disclosure Agreements - NDAs
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Case Studies
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A charity has an invention that allows improved interaction with a tablet for
people with a disability

A recently retired engineer has a new form of golf club that allows the
golfer to hit the ball straighter and further

Case Studies
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Questions
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