Patent and Trademark Basics Quiz

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 can apply to trade marks and designs, especially those involving significant interplay.

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)

• This is not information, but rather a section that points to the possibility of there being further questions or areas to discuss in relation to the content provided.

About the Presenter

• This shows the presenter's information (contact details/website).