LCF IP Slides 2024 PDF

IP and the Cosmetic Industry Prepared for London College of Fashion 21 November 2024 Rob Barker Managing Associate, EIP eip.com eip.com What is IP and Why Care About IP Rights? Rights to prevent others from performing a certain act. ―Patents/trade secrets may protect elemen...

IP and the Cosmetic Industry Prepared for London College of Fashion 21 November 2024 Rob Barker Managing Associate, EIP eip.com eip.com What is IP and Why Care About IP Rights? Rights to prevent others from performing a certain act. ―Patents/trade secrets may protect elements of the underlying product and packaging. ―Trade marks/trade dress (passing off) to protect your brand and presentation of that brand. Trade marks can even protect the layout of a shop (Apple). ―Design Rights to protect the overall appearance of the product, or a display. ―Copyright to protect advertising, elements of branding and product information (e.g. website text, instructions, images, artwork etc.) Incarnated by the salty sea breeze of Maritima* combined with Ambergris, L'EAU D'ISSEY PURE derives from a new aquatic story. Maritima*, an exclusive IFF molecule, evokes cool clear waters, while Ambergris, with its mineral and animal inflections, brings sensuality and breadth to the L’Eau D’Issey Copyright Covers literary, Protection Pure dramatic, musical or artistic works, like an fragrance. A floral bouquet sparkles, as if floating on a wide expanse of Copyright emotive Protection description of a perfume’s scent sea. Crystalline Lily-of-the-Valley responds to the brightness of Orange Covers literary, dramatic, musical or artistic Blossom. Plunge into their delicate white trail. Then come other, denser works, like an emotive description of a flowers. Essence of Rose Damascena once again imbibed with the perfume’s scent morning dew from when it was picked, brings with it opulent Jasmine in a heady explosion of petals. The ocean crossing continues. In the base L’Eau D’Issey Pure notes, the call of Cashmeran* rings out, with musky and woody resonance. Registered Covers the Community Design Protection appearance, Design of a product, No. like a Registered Design distinctively-shaped 002680272-0001 bottle Protection Covers the appearance, of a product, like a distinctively- shaped bottle Registered Community Design No. 002680272-0001 Box shape:EUTM Trade Covers Issey Figurative: Miyake:EUTM Mark the name EUTM Protection or 002989853 000071175 brand 002294585 which indicates the Trade source Mark of the Protection product, like a company or product Covers the name or brand which name EP 2 706 Patent Covers Protection the 108 technology A1 - “Semi-transparent itself, like an Patentcomposition” improved fragrance Protection perfume composition indicates the source of the Covers the technology itself, product, like a company or like an improved perfume product name composition Issey Miyake: EUTM EP 2 706 108 A1 - “Semi- 002294585 transparent fragrance Figurative: EUTM composition” 000071175 Box shape: EUTM 002989853 Copyright Link to summary slide Copyright - Basics Copyright can subsist in “original” literary, dramatic, musical or artistic works. It is generally said to protect the ‘expression of an idea’ (rather than the idea per se). The ‘idea’ requires fixation (e.g. written text, score, image, film, recording etc.) The ‘work’ must qualify for protection. Generally this is with reference to the details of the Author (e.g. UK resident) or first place of publication (e.g. UK). Copyright – relevance to cosmetics The most relevant part of copyright for cosmetics is likely literary works “literary work” means any work, other than a dramatic or musical work, which is written, spoken or sun, and accordingly includes: (a) a table or compilation other than a database, (b) a computer program, (c) preparatory design material for a computer program, and (d) a database. Covers not just conventional literature but all works of writing (novels, instruction manuals), and is protected irrespective of quality, merit or style – University of London Press found that exam papers qualify for copyright protection Copyright – Ownership and Duration The author is generally the first owner of copyright, unless the work is created in the course of employment, in which case it will be owned by the employer. (Important to note for collaborations). Generally copyright in the UK protects for 70 years + life of the author. But this does vary for some types of works (e.g. databases (15 years) and computer generated works (50 years from the end of the year in which the work was made)). Copyright – The Rights Subject to certain exceptions, copyright gives the owner the exclusive right to: ― Copy the work; ― Issue copies of the work to the public; ― Rent or lend the work to the public; ― Perform, show or play the work in public; ― Communicate the work to the public; and ― Make an adaptation of the work or do any of the above in relation to an adaptation. It does not give the right to actually undertake these acts (as the work could be subject to 3rd party rights). Copyright – IP Overlap Copyright may subsist in a trade mark. Copyright can subsist in a design (significant interplay between design right and copyright). Copyright – Infringement Infringement will occur when someone exercises one of those exclusive rights without the copyright owner’s authorisation: Copying does not need to be exact. Where copying is not exact there will be a question of whether what has been taken is mere style or abstract ideas rather than a particular manifestation (fixation) of an idea. What is being taken – no hard and fast rule - each case will turn on its facts. Infringer will have to have copied a “substantial part” of the skill and effort of the rights holder. Copyright – Infringement Copying need not be shown, it can be inferred. Keep records of the creation of your own work (to prove independent creation if required) Keep records of access to your work (to infer copying if required) Copyright – The Expression of an idea? Copyright John has an idea of a photograph of a town, but instead of a real town the buildings would be made of toast. John makes the model toast town and takes the photo. John does not model his toast town on a real place, but designs the layout himself. John exhibits the photograph in his end of degree show. A year later John attends an exhibition of Paul’s work and sees that Paul has taken a photograph of a town where buildings have also been made of toast. John wonders whether his rights have been infringed. John goes to see a lawyer. Copyright The simple idea of having a photograph of a toast town is not capable of copyright protection. What needs to be looked at are the similarities between the two photographs to see whether John’s expression of the idea of a toast town has been copied by Paul. Both have the following features in common: (1) cityscapes with a high rise skyline; (2) river running between the two tallest buildings; (3) bus on a bridge; (4) comparative heights of the skyscrapers are very similar; (5) both are shown as a night time scene in the photographs; (6) the colouring of the buildings (through use of jams, honey and marmalade) are similar; (7) both towns are 3D. The lawyer considers that John is likely to have a good case for copyright infringement. Copyright How could the advice differ? John models his town on London. Many of the similarities between the two scenes may then not be as a result of John’s work having been copied, but because both John and Paul had the same popular inspiration. A higher degree of similarity may be required. Paul did not attend John’s end of degree show. Copyright requires copying. Proof of access is important. If Paul did not attend the degree show then John would need to show how Paul could have viewed his work in order to have copied it. The similarities are less specific and what John is relying upon are commonplace themes. Paul can prove that he created the work before John did. Real-life example - Islestar Holdings Ltd v Aldi Stores Ltd Was this arrangement a “work”? Sculpture? Collage? Artistic craftmanship? Dramatic work? Was it “original”? Was there “fixation”? Was there “copying”? Copyright & Confidentiality Confidentiality and Copyright Copyright protects a specific expression of an idea, but not the idea itself. If you want to protect an idea before you disclose it to someone else, you need to keep it confidential and disclose it in a confidential manner. Use what is called a “Non-Disclosure Agreement” which explains what the confidential information (to be disclosed) is and the agreement to keep this confidential. Keeping things confidential is important to obtaining patent and design protection (discussed later). Confidentiality and Copyright Consider a cooking recipe. Carefully crafted, the specific wording of the recipe could attract copyright protection. However if published anyone could bake a cake to that recipe. If you want to limit the production of that cake, you would only disclose the recipe under an NDA. Copyright & Costs Copyright & Costs Copyright is ‘free’ Different approaches in other countries Design Rights Link to summary slide Design Rights – The Basics A number of classes of design right in the UK ―UK Registered (“UK RD”) ―UK Unregistered (“UK URD”) The first requires formalities; the second is automatic. Similar corresponding rights in Europe ―EU Registered Design (“Registered Community Design”) ―EU Unregistered Design Right (“EU URD”) – unlikely for you to qualify Design Rights – The Basics Whereas copyright must be original, for a design (or part of a design) to be protected it must new (and have individual character). One looks at the overall impression which it produces in comparison to other designs which have previously been made available to the public. Much can turn on the freedom of the designer in the relevant field. Design Rights – The Rights A design right gives the owner of that right the exclusive right to: ― Use the design; ― Make articles to the design; ― Offer, put on the market, import, export or use a product in which the design is incorporated or to which it is applied; and ― stock such a product for those purposes. It does not give the right to actually undertake these acts (as the design/article could be subject to 3rd party rights) Unregistered Design Rights - Infringement Like copyright, unregistered design rights only protect against third parties who copy the design Can be difficult to prove Registered Design Rights - Basics Scope of Protection Both protect shape, configuration and ornamentation (as with EU URD). Geographic scope of protection differs (EU/UK) Protection can last up to 25 years (subject to payment of fees) Effect of Brexit Previously, an EU registered design provided protection across the EU, including the UK As of 1 January 2021, EU registered designs no longer cover the UK. However, designs registered at that date have been “cloned” as UK design rights Going forward, to have protection in the UK and EU, separate applications will need to be filed – one for the UK, one for the EU. Registered Design – how do you define the design? Can use any means which clearly shows the design – line drawings, CAD drawings, photographs – but not all methods created equal Anything shown in the representations is taken to be part of the design Different techniques affect the scope of protection https://euipo.europa.eu/eSearch/#details/designs/002620674-0001 https://euipo.europa.eu/eSearch/#details/designs/002620732-0001 Examples: EU Design 000637160-0001 https://euipo.europa.eu/eSearch/#details/desi gns/000637160-0001 Examples: EU Design 000140462-0001 https://euipo.europa.eu/eSearch/#details/desi gns/000140462-0001 Examples: EU Design 000619614-0001 https://euipo.europa.eu/eSearch/#details/desi gns/000619614-0001 Design Rights - Infringement Infringement is linked to an unauthorised exercise of the rights of the rights holder. Infringement of an unregistered design requires proof of copying Infringement of a registered design does not require proof of copying Any other design must produce a different overall impression on the “informed user”. The scope of how different a ‘new’ design needs to be will turn on the item concerned and the freedom of the designer. Design Rights - Infringement As with copyright, a design does not protect an idea – it protects the expression of that idea as a design. Well illustrated by the scope of protection of design right surrounding the ‘Trunki’ suitcase. Design Rights – Infringement - Example PMS v Magmatic (the Trunki Case) v.s. Design Rights - Infringement The overall impression given by the CRD is indeed that of a horned animal The absence of decoration reinforced the horned animal impression. This is a different overall impression from the alleged infringement. v.s. The idea of the Trunki case was a clever one, but Design Right was intended to protect designs not ideas… A wider variety of registrations would have helped. Design Rights – Infringement – Another example Marks and Spencers PLC vs Aldi Stores Limited Design Rights & Costs Design Rights & Costs Unregistered Rights are, like copyright, ‘free’. UK Registered Design + Renewal Fees https://www.gov.uk/government/publications/design-forms-and-fees/design-forms-and-fees Design Rights & Costs Unregistered Rights are, like copyright, ‘free’. European Union Registered Design (now requires representation – likely to mean greater cost) + Renewal Fees every 5 years https://euipo.europa.eu/ohimportal/en/rcd-fees-and-payments How to find existing registered designs https://euipo.europa.eu/eSearch/ - for EU registered designs only https://www.registered-design.service.gov.uk/find/ - for UK registered designs only (need to know a number) https://www.tmdn.org/tmdsview-web/welcome#/dsview - covers many different intellectual property offices Trade Marks Link to summary slide Trade Marks - Basics Trade Marks are a key aspect of business promotion. People seeing your Trade Mark will associate the related goods and services with your business. A Trade Mark is a right associated with words, logos, shapes, colours and sounds that gives the registration holder the right to prevent others from using it (as a Trade Mark) for certain goods and services. Trade Marks – Basic Requirements Must be distinctive (so your goods and services are distinguishable from others). Must not be descriptive of the associated goods or services (don’t try to register “biscuits” for… biscuits!). Must not be contrary to public policy. Must not be specially protected (e.g. a national flag). Use within its scope of protection should not infringe an earlier Trade Mark (i.e. you will not now be able to trade mark “KitKat” for chocolate bars!). Use within its scope of protection should not amount to passing off. Trade Marks – The Rights The exclusive rights of a registered trade mark are a bit more complex than for Copyright and Design Right. “The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent”. Trade Marks – Infringement Summary Use of an identical sign for identical goods/services Use of similar sign for similar goods/services causing confusion Use of a similar/identical sign for non-identical/similar goods or services, but your mark has such a strong reputation that those goods/service may still be associated with your brand. Note, when considering identical/similar goods/services, trade marks are registered for particular goods/services by ‘classes’: Trade Marks – Infringement Summary Trade Marks – Infringement Detail Infringement can occur if a person uses in the course of trade: 1. A sign which is identical to the trade mark in relation to goods or services which are identical with those for which it is registered. 2. A sign where because: (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. Trade Marks – Infringement Detail Infringement can occur if a person uses in the course of trade: … 3. A sign which: (a) is identical with or similar to the trade mark, and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. Trade Marks – Infringement – How far does it go? L'Oreal SA & Ors v Bellure NV & Ors Ds had three ranges of products called Stitch, Création Lamis and Dorrall. Each member of the range smells like a famous, luxury branded perfume known by a well-known registered trade mark. L'Oréal alleged that the Ds' use of comparison lists for each of the Ds' ranges of product, showing which products correspond to which L'Oréal perfume, infringed its registered trade marks for those perfumes. Consumers knew that the Bellure product was not a L'Oréal product. Trade Marks – Infringement – How far does it go? L'Oreal SA & Ors v Bellure NV & Ors Ds had three ranges of products called Stitch, Création Lamis and Dorrall. Each member of the range smells like a famous, luxury branded perfume known by a well-known registered trade mark. L'Oréal alleged that the Ds' use of comparison lists for each of the Ds' ranges of product, showing which products correspond to which L'Oréal perfume, infringed its registered trade marks for those perfumes. Consumers knew that the Bellure product was not a L'Oréal product. Marks were still infringed. Bellure was “free riding” (or taking advantage of the reputation enjoyed by an earlier mark). CJEU (ECJ) Decision – will this remain good law? Bad PR of legal action Was there any real chance of “confusion”? A consumer thinking that this is a shop run by Sainsbury’s? Even if you’re “right”, there might be better outcomes than enforcing your rights. Link to article Good outcomes without legal action Unregistered trade marks Unregistered rights can be protected by “passing off”: (1) reputation or goodwill, (2) misrepresentation (as to the origin of the good/services) (3) damage (to the reputation) Trade Marks & Costs Trade Marks & Costs UK Registered Trade Mark + Renewal Fees every 10 years https://www.gov.uk/government/publications/trade-mark-forms-and-fees/trade-mark-forms-and-fees Trade Marks & Costs European Union Registered Trade Mark + Renewal Fees every 10 years https://euipo.europa.eu/ohimportal/en/fees-and-payments Patents Link to summary slide What is a patent? An agreement between you and a state which can allow you to stop other people using (and making money off) your invention, in exchange for fully disclosing your invention to the public Does not necessarily mean you have the right to use your invention You only have the power to stop other people using the invention as defined by the claims Patent example Description Figures Claims Formulation claims Specifically claims a formulation containing those ingredients The use of the ingredients in a cosmetic product may be new and inventive. “A cosmetic or medical composition for topical application on the skin of a subject, which composition comprises: brine 40 - 80 %w/w an extract of Kigelia africana 2 - 15 %w/w one or more excipients 5 - 50 %w/w water balance which excipients are selected from emulsifiers, suspending agents, gelling agents, binders, fillers, surfactants, anti- oxidants, preservatives, emollients, humectants, moisturisers, natural oils, UV-absorbers, sunscreens, and thickeners.”3 3WO 2014/015881 Method claims Possible to claim a cosmetic use of a known material. “Cosmetic, non-therapeutic use of Platycodon for influencing the natural pigmentation of hair and hair follicles in the armpit area”4 4DE 201110087980 But are patents important for Cosmetics? Didn’t use to be But lots more filings now: ―6000 patent applications filed in Europe in the cosmetics industry (2011)1 ―2,600 patents granted to the EU cosmetics industry – around 10% of all patents granted in the EU (2009)1 ―L’Oreal, for example, has received 500 to 700 patents per year for the past decade, or about 6,000 patents2 1Socio-economic contribution of the European cosmetics industry (June 2016) (www.cosmeticseurope.eu/publications-cosmetics-europe-association) 2https://ipcloseup.com/2012/11/15/leading-brands-increasingly-have-the-most-valuable-patents/ But are patents important for Cosmetics? Recently been high-profile litigation between Olaplex and L’Oreal Olaplex sell Olaplex No. 1 Bond Multiplier, which uses a salt of maleic acid to repair bleached hair Olaplex has a patent covering a method of bleaching hair, GB 2 525 793: Claim 1 Claim 11 A method for providing bleached hair comprising: The use of an active agent which is (a) applying to the hair a first formulation comprising a bleaching agent; and (b) applying to the hair a second formulation comprising an active agent, wherein the active agent is or a simple salt thereof simultaneously with a bleaching agent to reduce or prevent hair damage due to a treatment to provide bleached hair. or a simple salt thereof; and wherein step (a) occurs simultaneously with step (b). But are patents important for Cosmetics? L’Oreal allegedly infringed this patent by selling Smartbond Step 1 In the UK, L’Oreal was found to infringe – Olaplex could stop L’Oreal from selling their Smartbond product in the UK In the US, Olaplex were awarded $66 million in damages for infringing their US patent. This has been reversed on appeal, but there is likely to be further appeals – the story continues... So how do I get one? Is your idea an invention? Have you got an invention? A patentable invention must be: Novel Inventive But it can’t be: a discovery / scientific theory; methods for treatment of the human or animal body by surgery or therapy and diagnostic methods Novelty Section 2 Patents Act 1977 (1) An invention shall be taken to be new if it does not form part of the state of the art. (2)The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way. Prior Art Includes anything available to the public before the priority date: ―Other patent applications ―Journal articles ―Blogs ―Recipes ―Lectures ―Posters Be careful as this includes your own work. Significant issue if your invention is a success. Inventive Step Section 3 Patents Act 1977 An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art,....  The Skilled Person/Team The skilled person (or team) is identified by considering the art in which the problem that the invention solves lay. What is obvious to one group of professionals in one technical field, may not be obvious to others in an unrelated field due to a difference in their “Common General Knowledge”. “It is settled that this man, if real, would be very boring – a nerd.” This could be a lower barrier than you think! Assessing Inventive Step 1. Identify the inventive concept of the claim. 2. Assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and impute to him what was, at that date, common general knowledge in the art in question. 3. Identify the difference(s) between the prior art under consideration and that in the inventive concept of the claim. 4. Ask whether the difference(s) would have been obvious or required invention. Inventiveness particularly relevant to Cosmetics Selection inventions Might have been inventive to select a particular variant of something already known Synergistic effect Two ingredients used together work better than when used separately The road to patenting So you’ve made a new ingredient Protection for: ―Claims for ingredient itself ―Claims for methods of making the ingredient If the ingredients are already known? Patents for natural ingredients or extracts accounted for 49% of cosmetic patents filed between 1990 and 2009 Claims to the formulation Claims to method of use Who do I tell? We’ve already seen that your own disclosure can be used against you Don’t disclose to anyone outside without being confident the disclosure is confidential. Where agreements are not already in place, use an NDA. When do I do it? Decide whether your work is suitable for patent protection before you publish. Poster presentations have been used as prior art. Don’t necessarily have to have come up with the perfect final product Seek professional advice! Useful if you can: ―Identify the “inventive aspect” of your work ―Indicate what is already known – what you think is most similar ―Fully describe your work – including experiments etc. ―Imagine you’re writing a paper! Patent “prosecution” process File application Patent office “searches” the patent Examiner reviews application, decides whether patentable or not (usually not) Correspondence between applicant and examiner to agree on patentable subject matter (narrowing the claims) Grant! This is a long process - usually takes 3 to 6 years to get granted patent Worldwide prosecution process - priority File a patent application in one country Have 12 months to file the same application in other countries – “claiming priority” If you claim priority, your first application does not count as prior art against the subsequent applications in other countries Important principle for attaining worldwide protection Where should I claim priority? If only interested in a few countries, file directly in those countries within the 12 month priority period If not sure / want to keep your options open, can file international patent application under the Patent Cooperation Treaty (“PCT application”) This application itself will never become a patent But gives you the option to turn it into national applications later on Gives you chance to decide where you are interested in / defer costs How do I pay for it? Patents can last for 20 years Have to pay renewal fees to keep the patent alive The cost of a patent over its entire lifetime is expensive Relatively inexpensive to begin with though How do I pay for it? Cost of a patent £40,000 £35,000 £30,000 £25,000 Renewal fees £20,000 Legal fees £15,000 Official fees £10,000 Lifetime Total £5,000 £0 Filing 6m 12m 18m 24m 30m 36m Date Draft and file patent application 12 months 18 months 30 months File PCT application Application Enter national claiming priority from publishes phase first application How do I make money from a patent application? Assignment Licencing Who owns the rights? The inventor(s) owns the intellectual property rights in an invention. Unless the inventor comes up with the invention in the course of employment (and it could be reasonably expected for the inventor to devise an invention), in which case the employer owns the rights Universities are tricky! ―Undergrad students – not employed (but may have agreement with university) ―Postgrad students – not employed by university (but may have agreement with university / funding body) ―Professors – might be employed Try to establish ownership before filing an application Patents - Infringement Infringement – Section 60(1) of the Patents Act 1977 “Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say—. (a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise; (b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; (c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.” Infringement – Section 60(2) of the Patents Act 1977 “Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.” Infringement – Exceptions under the Patents Act 1977 Section 60(5) Exceptions include acts (a) done privately and for purposes which are not commercial; (b) done for experimental purposes relating to the subject-matter of the invention... (i) an act done in conducting a study, test or trial which is necessary for and is conducted with a view to the application of paragraphs 1 to 5 of article 13 of Directive 2001/82/EC or paragraphs 1 to 4 of article 10 of Directive 2001/83/EC, or any other act which is required for the purpose of the application of those paragraphs Licences and Assignments Licences and Assignments IP Rights are initially exclusive to the rights holder. To prevent a third party’s acts from being an infringement (e.g. you want them to copy and sell your work) you need to grant them permission to do so. Assignment – The third party will own the rights. Commissioners will often want/insist on an assignment. Licence – You retain ownership of the rights, but you authorise third parties to perform specific acts in specific territories. Licences and Assignments Put everything in writing! Agreements between friends can break down. You may also want to be the beneficiary of written licences / assignments (for example if your work incorporates 3rd Party rights). Get this in writing. Commercial partners may well want to see these or for you to warranty that you have all necessary rights. Assignments An assignment is transferring ownership of the right. In the UK, this MUST be in writing An assignment does not always have to be of All rights. For example the assignment of a trade mark registration can be partial (for a particular location or for a particular classification of goods/services) When entering into an assignment: Are you properly compensated? Have you asserted moral rights (right to be named as the author)? Do you need a licence back? Licences and Assignments – Freedom to Operate Licences and Assignments are not just a consideration for your rights. When third parties’ work feeds into your own, you will want licences and/or assignments from each third party to give you freedom to operate. Address this at an early stage. If you have to ask for a licence/assignment when you are looking to sell your work, it is likely to cost you £££. Friendly relationships can also quickly break down leaving you high and dry. Who can I talk to? Free IP Clinics Patents / Designs http://www.cipa.org.uk/need-advice/ip-clinics/ London IP Clinics are held every Tuesday evening at the CIPA office. Please note, booking is essential and a deposit is required to guarantee all appointments. To arrange an appointment or for more information, please contact: Email: [email protected] Tel: 0207 405 9450 Address: CIPA, Halton House, 20-23 Holborn EC1N 2JD https://www.bl.uk/business-and-ip-centre/information-clinics British Library IP centre sessions Trade Marks https://www.citma.org.uk/trade-marks-ip/need-advice/free-advice-clinics.html Six clinics are held every second Thursday of the month, except in August and December at the Intellectual Property Office (I PO), 1st floor, 4 Abbey Orchard Street, London SW1P 2HT between 5.00pm and 6.00pm. Brexit Effect of Brexit No change to patents at first level (the European Patent Office is not an EU institution) But new Unitary Patent and Unified Patent Court do not have effect in UK For trademarks and designs, not so lucky EU Registered Trademarks and Designs do not cover UK, so now need to apply for UK national and (rest of) EU rights separately Existing EU TMs and Designs “cloned” for the UK (like registered designs) Questions THANKS Rob Barker [email protected] | btn_in_20x15 https://www.eip.com/uk/people/robert-barker eip.com eip.com Unregistered Design Rights - Basics Rights are owned by the Designer (subject to employment). Scope of Protection UK URD protects “the shape or configuration (whether internal or external) of the whole or part of an article” for original designs which are not commonplace However, rights do not exist in: (a) a method or principle of construction, (b) features of shape or configuration of an article which— (i)enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function [“Must fit”], or (ii)are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part [“Must Match”], or (c) surface decoration. Unregistered Designs – Qualifying People UK URD - only available to a “qualifying person”, which means the designer or employer must be from a qualifying country: UK, New Zealand, Hong Kong, and certain UK dependencies and overseas territories. EU URD – available to anyone, but for the design to qualify the design must be first disclosed in the EU. UK Continuing Unregistered Design – transitional right, mean EU URDs that existed at the end of the transition agreement (31 December 2020) will continue to have effect in UK UK Supplementary Unregistered Design Right – same criteria (and protection) as the EU URD, but applying only to the UK (e.g. to qualify, the design must be first disclosed in the UK) Unregistered Design Rights - Basics Duration of protection: EU URD lasts for three years from the design first being available to the public within the EU. Disclosure of the design to third parties under an obligation of confidence is not considered a disclosure to the public. UK SURD lasts for three years from the design first being available to the public within the UK. Effectively impossible to qualify for both EU URD and UK SURD UK URD protects for 10 years after an article was first sold or 15 years after the design was created / recorded in a design document (whichever date is earliest). Design Rights – still uncertainty Even though there are certain accepted conventions, there is still room for differences in interpretation – Samsung v Apple https://www.bailii.org/ew/cases/EWCA/Civ/2012/1339.html