Copyright Law Blog

UK Patent Guide 2009

July 24th, 2009 at 12:41pm Under intellectual property

We’ve all seen and heard of patents, but how many people actually know what a patent does and what you can get a patent for? The simple answer to this question is that, although many people are aware of the function of a patent, surprisingly few people know anything more than that, even straightforward aspects such as what you can get a patent for. A patent is one of four main types of intellectual property, which is essentially any form of ‘original creation’ that can be bought or sold. The other three are trademarks, designs and copyright. Patents are used to protect new inventions and give the owner of the invention the legal right to prevent others from ‘making, using, importing or selling’ the invention unless they first obtain the permission of the owner. However, on rare occasion, a patent is not enough to stop other people from attempting to exploit the patented invention through importing, copying, manufacturing or selling the invention. In such cases, a patent would give the owner the legal right to take those exploiting the invention to the courts in order to claim damages against them, and, as a result, a patent can act as a deterrent to those who try to exploit inventions. Part of the way it does this is by detailing the invention very clearly so that the court would be able to see it had been copied. Patents cover many different aspects of an invention, such as how inventions work, what function they carry out, how they carry out that function, what the invention is made of, and how the invention is made. Patents allow the owner to sell the invention and to sell the intellectual property rights, and to license the invention to someone else whilst retaining the intellectual property rights. Additionally, a patent allows the owner to chat about the invention with other people so that they may start a business that is based around the invention. There are many reasons to patent an invention, and one of the foremost reasons is that of what will happen if you do not patent your invention. If you invent something and do not patent it, anyone can use, manufacture, and even sell your invention without first obtaining your permission. Although it is sometimes possible to keep an invention a secret, it is often impossible to do so if technology is on display as part of the invention. If you have invented something that you wish to patent, an important consideration to bear in mind is that you should not tell anyone about your invention before you apply to patent it, as this can cause your application to become invalid. There are, of course, exceptions to this, in that you can speak to – and it advisable to do so – solicitors, registered lawyers, or even a patent agent, as anything you tell them will be in confidence as it is legally privileged. Another thing to consider is that you cannot patent certain things, such as mathematical discoveries or artistic work, because they do not conform to the requirements of patent protection. Inventions must ‘relate to how something works, what it does, what it is made of, or how it is made’, it must be new, it must be an inventive step in the area it covers, and it must be capable of being either made or used in an industry. Before applying for a patent, it helps to get good, confidential advice from a professional, such as a solicitor. If you wish to find out more – before talking to a professional – about, for example, the requirements for patent protection it is best to go to the government website for its Intellectual Property office, where all guidelines on patents can be found. This article is free to republish provided the authors resource box below remains intact.

Best Practices for Trademark Protection in China

July 20th, 2009 at 06:41pm Under trademark law

While Chinese Intellectual Property laws have seen considerable improvements over the years, they can do little to supplement the lack of initiative on behalf of businesses that fail to timely register their trademark rights. The most effective protection that trademark holders can achieve over their rights begins by exercising proper diligence and care. Being able to take full advantage of the possibilities offered by the legal framework governing this discipline in order to achieve the most adequate level of security is based upon this fundamental assumption. This is a rule valid worldwide and China is most certainly not the exception. However, a sad series of common misperceptions often distort this reality.With this in mind, this article delves into some of the fundamentals of securing trademark protection in the country.WHERE TO STARTIt is important to note from the outset that China essentially follows standard international practice in terms of the cost, the complexity, and the steps entailed in securing trademark protection and registration. It is in no small part thanks to China’s participation and accession to the World Trade Organization. There are certainly a few particularities that are not present in other countries –particularly Western ones-, but most negative can be easily overcome with adequate preparation and, most importantly, having well-versed local counsel.Registration is naturally the first and most basic step that needs to be undertaken. Nevertheless, it never ceases to amaze how foreign entities initially neglect this crucial aspect while misguided by fabled notions that wrongly override their common business sense. In fact, many –if not most- of the best practices that guide business decisions in the rest of the world apply equally to China. No emphasis can be spared in highlighting that this is the key to overcoming some of the obstacles in the field.Wisdom accrued through past experiences dictates that the ideal time to proceed with registration is even before entering the Mainland’s market. It is best to begin as early as possible; a philosophy underlined by the fact that the mere use or adoption of a trademark in connection with a particular commercial activity does not grant the holder exclusive rights or a priority for their acquisition.Indeed, China uses a “first-to-file” system, meaning that under most circumstances a prior registrant’s claim is more likely to succeed over that of a prior user. There are many tales of competitors or sadly even employees or local trade partners that have come to realize that this is a fact that can be used to leverage, take advantage of, or pressure foreign entities that have not proceeded to timely address the necessity of securing their trademark rights. This is not the case, however, for well-known marks thanks to the extended privileges granted to them under the Paris Convention. REGISTRATION WITH CHINESE CHARACTERISTICSWhile beginning the process of registration is a positive first step in the right track to commence a successful trademark enforcement strategy, it is important to consider that branding and localization not only play an important role, but also are a necessity to account for the cultural and practical considerations that arise due to the language barrier.Some of the most successful cases of entities conducting business in China are tied to masterful local branding. Take for instance the case of the “Coca-Cola” or “Pepsi” trademarks. Despite the language differences, they have cleverly managed to phonetically tie their valuable local and global brands, while also giving Chinese consumers a meaning that they can relate to in their own language. Respectively, both trademarks arguably sound somewhat similar in Chinese and Western pronunciations, thus being able to take advantage of their associated worldwide goodwill, but also –through a clever play of words- adopt a completely new meaning when written in Chinese characters, which makes them far more appealing locally. While these may be extreme examples in the sense that considerable branding effort was undertaken by the owners to come up with an optimal marketing strategy, they serve to exemplify a basic fact when it comes to Chinese trademarks. That is, most consumers have difficulty reading or understanding the Latin alphabet. This can be overcome by employing the services of a branding agency or the assistance of local counsel fluent in the language to help adapt the mark and the name of the owner to the market. However, it should be noted that the Chinese Trademarks Office can register marks written both in the Latin alphabet and in Chinese characters. In fact, a single application can cover both instances. However, to ensure that the rights holder gets the broadest possible scope of protection, it is advisable to secure each registration in as many forms and variations as deemed convenient. Of course, this entails additional work when applying for registration and during the process of conducting searches to clear the mark for availability, but not doing this may entail the risk of crippling the registration’s effectiveness.While obtaining the corresponding registration is as simple as in most jurisdictions, a not-so-desirable characteristic of the Chinese process is its duration. Obtaining approval can take several years under normal conditions. However, this is no cause to despair, as senior applicants are granted protection against junior applicants for conflicting trademarks as of the date of filing, provided that all substantive requirements for registration are complied with.THE BORDERS OF PROTECTIONOne final fact that should be noted, while not strictly related to the registration of trademarks rights in China, but it does have significant importance over their enforcement, is that customs authorities have been empowered with their own monitoring system to help prevent the export of counterfeited goods. Trademark owners, provided they are registered in China, can now apply for protection of their trademark rights directly at the borders, by having customs agents actively check for potentially infringing exports. Product samples, packaging and even suspected instances of piracy can be submitted before their consideration, which causes them to, ex officio, take measures to curb and stop these kinds of practices when detected. Simple cares such as the ones mentioned in this article can help prevent some common pitfalls when entering the Chinese market. In the trademarks field, many problems can be avoided by taking simple precautionary measures that go a long way in avoiding the need to engage in costly and uncertain litigation.

What everybody ought to know about intellectual property law

July 9th, 2009 at 12:41am Under intellectual property

Intellectual property law is the law that governs rights in creative works and inventions. The most common such rights are patents, copyright and trademarks. COPYRIGHT Copyright is a right which gives the creator of an original work exclusive rights to it. This right extends to most literary, dramatic and art forms. Copyright is not indefinite, but rather last for a limited period. This period will vary depending on the type of work, and ranges from 25 years from the date of publication to 70 years from the date of death of the author. Copyright exists automatically, and does not require any form of registration for the creator to have copyright protection. PATENTS A patent represents a series of rights granted by a national government, which effectively grants the patent holder protection and exclusive exploitation rights in connection with an invention. Not everything can be patented; patents will only be granted for something which is an invention, and which are novel, inventive and useful or industrially applicable. Where a difficulty arises in UK law is in deciding whether something is an “invention”. For any invention involving a tangible, physical object, this is rarely an issue, but the law is reluctant to apply to the status of “invention” to intangible processes or systems. This is usually extended to computer software, which is notoriously difficult to patent (although it will be subject to copyright). Patents can be obtained in the UK and other countries. There are also international patent-granting authorities, such as the European Patent Office and the International Patent Office. Many countries around the world accept the validity of internationally granted patents. Patent registration is a highly specialised area and is generally handled by expert patent attorneys. TRADEMARKS A trademark is a distinctive indicator used by a business to identify itself. This may simply be a word or phrase, but it may also be a logo, sign or image. Trademarks can be registered for extra protection, but even if a trademark is unregistered the owner still has significant protection against its use by a third party, if the trademark owner can demonstrate established use and the perception in the eyes of the public of the association of that trademark with the trademark owner. There are also rights in UK and European law to protect rights in designs. This can be useful for a business producing goods which are of a specialist or distinctive appearance. All of the above is collectively referred to as intellectual property rights. Such rights can generally be sold or transferred permanently or, if the original owner wishes, to remain the owner, but is willing to allow others to use the rights, they can be licensed permanently or for a finite period, with the licensee acquiring exclusive or non-exclusive rights, as agreed between the parties. Intellectual property rights can often be significant in corporate mergers and acquisitions; it is common for the main imperative behind the acquisition of a company to be the securing of the intellectual property rights owned by the company. It is therefore important for any business which is reliant on intellectual property to take the necessary steps to protect and secure that intellectual property, in order to preserve the value of the business. When looking for an intellectual property solicitor it’s advisable to seek out a law firm that has extensive experience and expertise in dealing with intellectual property matters, including in the licensing and transfer of rights and handling disputes around alleged infringement of rights. A good intellectual property solicitor will take a realistic and commercial approach to your needs and ensure that they understand your business and the way it operates, in order to understand the value of the intellectual property right to you and best methods for protecting it.

America’S Main Source Of Competitive Advantage In The 21St Century: Intellectual Property

July 8th, 2009 at 12:41pm Under intellectual property

As the new administration seeks ways to guide the U.S. out of recession, it would be well advised to pay attention to innovation and intellectual property. A press release I recently found on MarketWatch discusses the position of strength the U.S. has in the area of intellectual property and why the Obama administration must focus on strengthening IP ownership rights. There are some interesting ramifications for countries and companies competing in the global knowledge economy. In the release, Mark Blaxill and Ralph Eckardt, two experts on innovation and intellectual property strategy (and authors of an upcoming book), argue that America’s most valuable asset is its innovation and IP reserves, and that these will likely become the main source of U.S. competitive and economic strength in the 21st century. Importantly, the authors warn that these advantages are easily endangered by overzealous attempts to drive patent reform too far and misguided calls to weaken the rights of patent owners.Backbone of Competitiveness According to Blaxill and Eckardt, America’s vast storehouse of IP reserves form the backbone of the country’s global competitiveness. While business people and policymakers may undervalue and overlook these reserves, they are the fuel that powers the economy in good times and helps it bounce back from bad times. The story goes on to say:

Harsh Realities With the U.S. in a position of relative strength in terms of intellectual property power, proper management at a national and corporate level should help the country come out of the recession faster and perhaps farther than other countries. A hopeful scenario, to be sure, but U.S. companies are now faced with weak quarterly earnings, declining revenues, lower stock values, forcing budget cuts -that sometimes come at the expense of protecting valuable IP assets.Do More With Less While companies have to function within economic realities, it is equally important for them to preserve and enhance their future competitive advantages. For obvious reasons, this we have advocated the need for an integrated approach to business-IP strategy (and indirectly advocated the IP management software one might use to facilitate this integration), we also believe that firms can do both at the same time. (In fact, we’re recently published some studies that suggest an opportunity to achieve a positive ROI from IP management software in less than 12 months — while at the same time, laying the IT foundation for longer-term strategic IP management.)Start Doing It Now While corporations in North America and Europe struggle with these competing demands, on the other side of the world, countries and companies continue to make significant investments in their innovation foundation. A recent article in the Oregonian entitled, “China chips away at our high-tech advantage” should help executives and politicians become aware of the growing competitive threat (in the purest, capitalist sense) from that country: China’s expansion into the world of innovation will test America’s reputation and know-how. To peek inside China’s largest free trade zone, Tianjin, is to glimpse the country’s carefully calculated destiny: high-tech industries, cutting-edge research institutes and ambitions to become home to the world’s most innovative companies. China no longer wants to be the world’s factory for cheap products. Under pressure to create better-paying jobs and to clean up its environment, the nation is trying to snag blue chip companies by vowing to crack down on intellectual property theft and schooling a new class of managers.THIS Is Strategic Alignment of Business and IP China is well positioned for the future as well, as their IP ambitions are aligned and consistent at the national level and at the corporate level. At one level there are politicians such as Premier Wen Jiaboa, who stated in 2004: “The future of world competition will be for intellectual property rights.” And on the corporate level there are executives such as Michael Jemal, president and CEO of Haier America, who recently stated that innovation and patents were his company’s “life blood.” “Haier applies for two patents every single day, every day of the year. In fact, it’s more than that.” For those of you who haven’t heard of Haier, I bet you will come to recognize the name in the near future. When it entered the U.S. market nine years ago, the company sold three products. Now it sells 3,000. You name it, Haier makes it, everything from little dorm refrigerators to air conditioners, washing machines to flat screen TVs. “Haier is the number one brand in China,” Jemal said. “In Asia, we’re in the top ten. The objective here in the U.S. is also to build a market share, to be in the top three in the U.S.”So What’s a New Administration to Do? We’ve discussed what businesses can do better manage their IP in multiple entries in the Financial Aspects of Intellectual Property blog. So for now, let’s stick with the issues on a national level. Going back to the press release on MarketWatch: Blaxill and Eckardt argue that: “Today, the chief export of the U.S. economy is innovation. American inventors have built a strategic reserve of intellectual property rights that is every bit as strategic as our domestic energy reserves.” The U.S. national interest demands that we safeguard these strategic reserves, according to the authors:

Policy Recommendations for Maintaining Innovation According to Blaxill and Eckardt: “In practice, IP rights are the incentive that brings markets, talent and invention together to monetize our innovation and deliver benefits to the nation. For much of its history, the American economy has had a unique ability to put all these pieces together to create value from its innovations.” They argue that, “At this time of great national distress, we need to fall back once again on the spirit of American innovation, and as we have in the past, we must look to the foundation of American invention to pull ourselves through this latest crisis.” They recommend a national “innovation policy” that includes:

Let’s hope the gang in Washington is going to act along these lines.