Patent and Trademark Basics Quiz

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Questions and Answers

What is the first step in the patent prosecution process?

Examiner reviews the application

Patent office conducts a search

Correspondence with examiner

File application (correct)

What is a benefit of filing a PCT application?

It gives time to decide on national applications (correct)

It allows for higher renewal fees

It guarantees a patent in multiple countries

It immediately protects the invention worldwide

How long does the patent prosecution process typically take to grant a patent?

1 to 2 years

Less than 1 year

More than 7 years

3 to 6 years (correct)

If you file a patent application in one country, how much time do you have to file in other countries to claim priority?

12 months Signup and view all the answers

What must you pay to maintain a patent after it is granted?

Renewal fees Signup and view all the answers

What must a trade mark be in order to differentiate goods and services from others?

Distinctive Signup and view all the answers

Which of the following is NOT a requirement for registering a trade mark?

Must have a unique design Signup and view all the answers

How often do renewal fees need to be paid for a registered design in the UK?

Every 5 years Signup and view all the answers

What type of rights are unregistered designs classified as?

Free and akin to copyright Signup and view all the answers

What action constitutes an infringement of a registered trade mark?

Using the trade mark without the proprietor's consent Signup and view all the answers

Which link provides access to find existing EU registered designs?

<a href="https://euipo.europa.eu/eSearch/">https://euipo.europa.eu/eSearch/</a> Signup and view all the answers

What must a trade mark not be in order to be eligible for registration?

Generic in nature Signup and view all the answers

Which of the following options is a platform for searching registered designs in the UK?

<a href="https://www.registered-design.service.gov.uk/find/">https://www.registered-design.service.gov.uk/find/</a> Signup and view all the answers

What was L'Oréal's main allegation against the Ds in the legal case?

The Ds were infringing on L'Oréal's registered trade marks. Signup and view all the answers

Which ranges of products did the Ds have?

Stitch, Création Lamis, and Dorrall Signup and view all the answers

What does 'passing off' refer to in the context of unregistered trade marks?

A form of legal action for protecting reputation. Signup and view all the answers

What does the term 'free riding' imply in trademark law?

Taking advantage of the reputation of an earlier mark. Signup and view all the answers

What might be a consideration for a brand before enforcing its trademark rights?

The potential for better public relations outcomes. Signup and view all the answers

How often must a UK Registered Trade Mark be renewed?

Every 10 years Signup and view all the answers

What are the three main components involved in passing off?

Goodwill, misrepresentation, damage Signup and view all the answers

What was the consumers' understanding regarding the Bellure products?

They knew Bellure products were alternative brands to L'Oréal. Signup and view all the answers

What is required for a design to be protected under design rights?

It must be new and have individual character. Signup and view all the answers

Which rights does a design right grant to its owner?

The right to make articles to the design. Signup and view all the answers

What is a potential difficulty associated with unregistered design rights?

Proving infringement can be challenging. Signup and view all the answers

What is the geographic scope of protection for registered design rights?

EU and UK, but separate applications are needed post-Brexit. Signup and view all the answers

What happens to EU registered designs after Brexit?

They are cloned as UK design rights. Signup and view all the answers

For how long can design protection last under registered design rights, assuming the necessary fees are paid?

25 years Signup and view all the answers

Which of the following aspects is not protected by design rights?

Functionality Signup and view all the answers

Which of the following is true about the freedom of a designer in relation to design rights?

It may affect the eligibility for protection. Signup and view all the answers

Which of the following actions constitutes infringement when the invention is a product?

Selling the product without permission Signup and view all the answers

What is required for a process to infringe a patent under Section 60(2)?

Offering the process for use without consent Signup and view all the answers

What constitutes an essential element for infringement related to a patent under Section 60(2)?

Means relating to putting the invention into effect Signup and view all the answers

Which of the following exceptions allows a person to avoid patent infringement?

Conducting private tests on the invention Signup and view all the answers

What is the result of granting a license to a third party regarding IP rights?

The rights holder retains ownership while allowing usage Signup and view all the answers

What does an assignment of rights mean in the context of patents?

Transfer of ownership to a third party Signup and view all the answers

Which act would NOT be considered an infringement under the Patents Act 1977?

Duplicating patented materials for research Signup and view all the answers

Under what circumstances can someone infringe a patent by supplying means to implement the invention?

When it is obvious that the means are suitable for use Signup and view all the answers

What is the status of the new Unitary Patent and Unified Patent Court in relation to the UK?

They have no effect in the UK. Signup and view all the answers

What happens to existing EU Registered Trademarks and Designs after Brexit?

They are cloned for the UK but need separate applications for UK rights. Signup and view all the answers

Which of the following is NOT covered under UK Unregistered Design Rights (UK URD)?

The surface decoration of an article. Signup and view all the answers

For a design to qualify under the EU Unregistered Design Right (EU URD), it must be first disclosed in which territory?

The EU Signup and view all the answers

Who can own UK Unregistered Design Rights (UK URD)?

Only designers or employers from qualifying countries. Signup and view all the answers

What is the nature of the UK Continuing Unregistered Design Rights?

They allow existing EU URDs to continue effect in the UK post-transition. Signup and view all the answers

Which statement is true regarding the scope of protection of UK Unregistered Design Rights?

It does not cover designs that allow functional connections between articles. Signup and view all the answers

What distinguishes the UK's Supplementary Unregistered Design Right from the EU URD?

It has the same criteria and protection but applies only within the UK. Signup and view all the answers

Study Notes

IP and the Cosmetic Industry

Intellectual Property (IP) rights protect businesses in the cosmetic industry.
IP rights prevent others from performing certain actions.
Patents/trade secrets protect underlying product and packaging elements.
Trade marks/trade dress (passing off) protect brands and brand presentation, including shop layouts.
Design Rights protect product and display appearance.
Copyright protects advertising, branding, and product information (website text, instructions, images, artwork).

Copyright - Basics

Copyright applies to original literary, dramatic, musical, or artistic works.
It protects the expression of an idea, not the idea itself.
The idea needs to be fixed in a tangible form (e.g., written text, image, recording).
The "work" must qualify for protection based on author details or first place of publication.

Copyright - Relevance to Cosmetics

"Literary works" in the cosmetic context are likely to include written, spoken, or displayed works (tables, compilations, computer programs, design material).
Exam papers, and conventional literature qualify for copyright protection.

Copyright - Ownership and Duration

The creator is generally the copyright owner unless the work was done during employment.
In the UK, copyright lasts for 70 years post-author's death.
Duration varies for specific works like databases (15 years) and computer-generated works (50 years after creation year).

Copyright - The Rights

Copyright grants exclusive rights to copy, issue copies, rent/lend, publicly perform/show/play, and communicate work, or adapt the work, or the adaptation.

Copyright - IP Overlap

Copyright - Infringement

Infringement occurs when someone exercises copyright rights without authorization.
Copying doesn't need to be exact, but a substantial part of skill and effort must be copied.
Evidence of copying can be inferred.
Keeping records of work creation and access is important.

Copyright - The Expression of an Idea?

Copyright protects the expression of an idea, not the idea itself.
The presentation, not the original concept, is protected.

Real-life Example - Islestar Holdings Ltd v Aldi Stores Ltd

This case raises questions about whether an arrangement is a "work" of art, whether it's a sculpture, collage, etc, and if copyright is applicable to it.

Confidentiality and Copyright

Copyright protects the expression of an idea, not the idea itself.
Keeping ideas confidential using Non-Disclosure Agreements (NDAs) is crucial for securing patent and design protection in the future.

Copyright & Costs

Copyright protection is generally free in the UK.
Costs vary in other jurisdictions.

Design Rights - The Basics

UK Design Rights have different classes (Registered/Unregistered).
Registered Design requires formalities, while unregistered is automatic.
EU counterparts exist, although registration might be more difficult in specific situations.
Designs must be original and new compared to previous designs to be protected.

Design Rights - The Rights

Design rights grant exclusive rights to use, create, market, import, export, and stock articles based on the design, while respecting third-party rights.

Unregistered Design Rights - Infringement

Unregistered design rights protect against copying, but proof of copying might be difficult to obtain.
The design needs to be sufficiently distinct from existing designs.

Registered Design Rights - Basic

Both UK and EU registered designs protect shape, configuration and ornamentation.
Geographical scope differs between EU and UK.
Protection periods depend on payment of fees.

Effect of Brexit

EU registered designs no longer offer protection in the UK.
Similar designs need separate UK protection registrations.

Registered Design - How do you define the design?

Any means clearly showing the design (drawings, photographs, CAD) counts as a representation,
The design representation conveys aspects of the design to be protected.
Different techniques might apply differently towards protection scopes.

Design Rights - Infringement

Infringement occurs from unauthorize exercise of rights by a third party.
Unregistered design requires proof of copying for infringement, while registered designs don't.
A "different overall impression" on a customer is usually needed, although specifics vary.
Scope of the design considered depends on the item and designer's freedoms.

Design Rights - Infringement - Example

PMS v Magmatic (Trunki case) - the case emphasizes idea and expression difference, and potential lack of infringement if the overall impression is different.
The case exemplifies where wider design registrations would have aided protection.

Design Rights - Infringement - Another example

The presentation highlights UK Design rights numbers related to Marks and Spencer case.

Design Rights & Costs

Unregistered rights are typically free.
UK registered design has application fees; renewal fees apply each five-year cycle.
Fees for EU registered designs vary depending on the number of classes included in the application).

How to find existing registered designs

Finding registered designs depends on the jurisdiction (EU/UK).
Multiple resources exist for both UK and EU registered designs.

Trade Marks - Basics

Trade marks are crucial for business promotion.
Consumers associate goods and services with a particular trade mark.
A trade mark grants the right to prohibit others from using the same mark for similar goods and services.

Trade Marks - Basic Requirements

Trade marks must be distinctive, to be unique.
They must not be too descriptive of the goods/services being offered.
TradeMarks cannot be contrary to public policy (e.g., national flags).
Their use must not infringe on previous copyright registrations.

Trade Marks - The Rights

Registered trade mark rights are more complex, encompassing exclusive use of the mark within the UK.

Trade Marks - Infringement Summary

Infringement can occur with identical signs for identical goods, similar signs for similar goods causing confusion, or similar/identical signs for different goods/services, if the prior mark has a solid reputation (e.g., a well-known chocolate bar brand).
Registered marks distinguish goods/services by "classes."

Trade Marks - Infringement Detail

Infringement occurs when a trade mark is used in trade for identical or similar signs in identical/similar goods/services.
In case of dissimilar goods and services, use of an identical/or similar sign in such manner causes likelihood of confusion, with potentially unfair advantage or detrimental to the original mark.

Trade Marks - Infringement - How far does it go?

L'Oreal successfully argued that Bellure's comparison lists infringed L'Oreal's registered trademarks.
Their use of similar fragrances likely confused consumers in the UK about their origins.
Lawsuits and court decisions vary across different jurisdictions in the world, which is sometimes complicated.

Bad PR of legal action

Unwise legal action can cause reputational damage and is not always the optimal outcome.
PR considerations should be taken into account for the overall effect of a decision or action.

Good Outcomes Without Legal Action

Some situations allow for the possibility of resolution without legal intervention, which could benefit all parties involved.

Unregistered trade marks

Unregistered Trademarks can be protected through "passing-off".
This involves aspects like reputation (brand goodwill), misrepresentation, and reputation loss.

Trade Marks & Costs

UK Registered Trade Mark applications have fees; renewal fees apply for registered trade marks.
European Union Registered Trade Mark application fees vary, depending on the number of classes/types of products involved and renewal fees might apply.

Patents - Basics

Patents are legal agreements with states, restricting other's use.
Patents provide exclusive rights to use/monetize.
Patents require the inventor to openly disclose their invention to the public.

Patent example

In a patent application process, aspects like descriptions, figures, and claims form the essence of the process.

Formulation claims

Claims specify compositions/formulae containing named ingredients in cosmetics; new/inventive usage of ingredients in cosmetics can be patentable.

Method claims

Claims specify cosmetic use of known materials and their effects/benefits (such as hair/skin/nail effects).

But are patents important for Cosmetics?

Patent filings and granted patents are on the rise in the cosmetic industry.
Big cosmetic companies are often filing substantial quantities of patent applications or are granted a large number of patents over prolonged periods.

Is your idea an invention?

Patentable inventions need novelty and inventive steps, lacking these attributes does not form a patentable aspect.
Patentable inventions cannot be discoveries, scientific theories, or treatment methods for human beings, and animal bodies via surgical, therapeutic or diagnostic methodologies.

Have you got an invention?

Patentable inventions require novelty and inventiveness to stand apart from existing prior art, which is crucial to patent applications.

Novelty

Novelty (within the context of patents) relates to inventions not forming part of the "state-of-the-art," based on what has been disclosed to the public prior to the invention's creation.
All disclosures prior to the invention (including publications, applications) qualify for being "prior art".

Prior art

Prior art encompasses any publicly available information (e.g., publications, patents, or even the inventor's own prior work) existing before a patent application's priority date.
Careful analysis is crucial in determining if prior art potentially impacts the novelty of a pending invention.

Inventive Step

An invention should display an inventive step if it's not immediately obvious to a skilled person in that particular field.
The skill level of the typical professional involved in the same area is determined while assessing prior art and the innovation's novelty.

The Skilled Person/Team

The concept of a skilled person accounts for common knowledge in a given technical field.
Common knowledge varies across technical fields due to education or experience requirements.

Assessing Inventive Step

Assess whether the inventive concept differs from known prior art in ways not immediately apparent.

Inventiveness particularly relevant to Cosmetics

Some inventions in cosmetics relate to the selection of existing substances/materials in new ways, or to the combined effect of multiple known elements when used together.

The road to patenting

The patent application process involves a series of steps that could vary, depending on the jurisdiction.

So you've made a new ingredient

The protection of a new ingredient involves claims that protect it as an ingredient.
You need claims for ingredients, and for the methods to create those ingredients.

If the ingredients are already known?

Patents for natural ingredients/extracts have been frequent, representing a significant portion of applications between 1990-2009.
Protecting a new formulation or method of use of already known ingredients is often a valid patenting strategy.

Who do I tell?

Avoid disclosing ideas to those who are not under a Non-Disclosure Agreement (NDA).
Discussions with potential collaborators or partners should be kept confidential if the information shared is valuable to the party.

When do I do it?

Assess the value of seeking patent protection before disclosing invention through presentations or other public means, as this could invalidate a possible patent.

Patent "prosecution" process

The patent "prosecution" process includes submitting an application, patent office searches, and correspondence with the examiner to narrow claims.
The process can take 3-6 years.

Worldwide prosecution process - priority

A patent granted in one country may be protected elsewhere through "priority" claims for up to 12 months, by identifying the initial application as the baseline application within the filing period to protect the invention.

Where should I claim priority?

Applying for patent protection in a specific region or country, where priority is desired, can be important to consider within the year-long priority period.
The wider option of filing an international application under the Patent Cooperation Treaty (PCT) allows for a wider view of protection considerations or even a deferral of such a broader protection approach.

How do I pay for it?

Patent applications have initial costs, followed by periodic renewal fees for maintaining protection throughout its lifetime.

How do I make money from a patent application?

Money-generating options include assigning the patent rights or licensing the patent to other parties.

Who owns the rights?

In general, an inventor owns the rights to an invention they create, except in cases where the employment agreement explicitly outlines employer ownership.
This often includes situations like professors who are university employees or research situations, where the ownership is typically clearly outlined.

Patents - Infringement

Infringement occurs if the patent rights are abused by individuals/companies producing/selling/using the protected invention without authorization.

Infringement - Section 60(1) of the Patents Act 1977

This defines specific ways a patent can be infringed in the UK.

Infringement - Section 60(2) of the Patents Act 1977

This provides further clarification and details regarding infringement, for specific elements essential with respect to inventions.

Infringement - Exceptions under the Patents Act 1977

Exceptions could include non-commercial/private acts and experimental purposes (research).
Specific conditions for these exceptions exist, which should be considered in the event of alleged infringement.

Licenses and Assignments

IP rights ownership is initially exclusive to the owner.
Assignment transfers ownership, while licensing allows others to perform specific acts within specific areas.
Agreements should be carefully documented and in writing, especially in collaborative scenarios.

Assignments

Assignment means transferring ownership of an invention to someone else.
Assignments MUST be in writing in the UK for them to be valid.
Partial assignments exist, which is the transfer of specific rights or ownership relating to a particular aspect of the original idea, goods/services or location.

Licenses and Assignments - Freedom to Operate

Licencing and assignments are important for operating within a jurisdiction or marketplace, particularly where other parties' inventions have possible impacts on the same or similar subject matters.
Addressing these matters at an early stage is crucial, since costs of acquiring them later might be substantial.
Maintaining cordial relationships is important, especially when conducting commercial transactions.

Who can I talk to?

Contact people experienced in intellectual property (IP) for guidance or support on IP-related matters.
Specific contacts at organizations like CIPA or the British Library might be accessible depending on specific situations.

Brexit

Brexit had some effect on IP, particularly on registered Designs/Trademarks as they now needed to be filed separately for each jurisdiction.

Unregistered Design Rights - Basics (page 106)

Unregistered design rights (a narrower form of intellectual property rights than registered designs) apply to the shape or configuration of an item (internal/external) for original non-commonplace designs.
Certain features such as functions, construction methods, and surface decorations are not covered by unregistered design rights.

Unregistered Designs – Qualifying People

Qualifying individuals or employers for unregistered design rights (UK/EU) are determined by location (country/territory), and the EU's method is reliant on initial disclosure.

Unregistered Design Rights - Basics (page 108)

Protection for EU/UK unregistered designs lasts for three years from the design's availability to the public within the corresponding region.
UK unregistered designs are protected for 10 years after first sale or 15 years after creation (whichever is earlier).

Design Rights - still uncertainty

Design rights interpretation remains a possible area of disagreement, as court cases or legal opinions might vary.

Questions (page 104)

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Description

Test your knowledge on the fundamentals of patent and trademark law with this quiz. Questions cover the patent prosecution process, international filings, and trademark registration requirements. Perfect for students or professionals looking to refresh their understanding of intellectual property rights.