Since moving to our new offices in the Knowledge Gateway at the University of Essex, Sanderson & Co have been increasingly involved with helping students and spin-out businesses to learn about Intellectual Property protection.
Dr. Andrea Salin, recently put his university lecturing experience to good use when he gave a lecture on patents and commercialisation of research to a group of final year students in the School of Biological Sciences at the University of Essex on 24th November 2017.
Dr. Gareth Jones, lecturer in Biochemistry, said “I was very pleased when Dr. Salin accepted to be a guest lecturer on my module as students derive particular benefit from hearing about different issues in Biomolecular Sciences directly from experts in the field. Dr. Salin gave an overview of different types of Intellectual Property and discussed engagingly what patents are, why and when they are needed by scientific business and their role in the commercialisation of scientific discoveries in particular.”
A few days later, Andrea put his skills to use again talking to a smaller group of post-graduate business start-ups as part of a series put on by the University of Essex Start-up Hub. The group had a particular interest in the Intellectual Property aspects of software and computer driven technology applications.
There was some excellent feedback from the attendees who really appreciated Andrea’s knowledge of the subject and his enthusiasm for this increasingly important area of Intellectual Property protection.
“Andrea made a complex subject interesting and easy to understand, he even made it enjoyable. Andrea knew the answer to every question he was asked (even the odd and difficult ones asked by me) and he gave really useful advice. I would 100% recommend Sandersons & Co and more specifically recommend Andrea to anyone who had an Intellectual Property needs. Great overview session, just hope it can be longer next time.”
Hayley Jones – Enterprise Assistant
“Dr. Andrea Salin from Sanderson & Co. explained the complexities of the IP process, the regulations and different scenarios in a clear, concise and understandable manner. The presentation was clever and tailored specifically to our necessities. He provided real-life examples to illustrate whether a particular IP type is applicable to us, or not. Dr. Salin walked us through the fundamentals of IP and build a comprehensive and open environment where the attendees were able to formulate questions related to particular scenarios of their business. Subsequently, those questions were answered with a great balance among law regulations, business applications and particular project technicalities. It was a pity the hard stop due external factors, I look forward to have the privilege of being invited to another session with Dr. Andrea Salin from Sanderson & Co. in the near future.”
Emmanuel Ferreyra Olivares – School of Computer Science and Electronic Engineering
Dr. Andrea Salin
Dr. Andrea Salin
tel: +44 1206 571187
Does your business understand and manage its Intellectual Property effectively? If not, you are not alone. Many small businesses worry that it is too complex for them to handle themselves but too expensive to employ external experts.
However, by following some simple steps, you can avoid the most common IP pitfalls and protect your business.
- Understand and identify what IP your business holds.
Your technical innovations, distinctive brands and designs, original authored materials, technical know-how and trade secrets are all your Intellectual Property. Some arise automatically but some must be applied for.
- IP is not only for big companies.
IP rights help ensure that the people who create ideas are rewarded for their efforts. They help individuals and start-ups to compete with larger companies. They can be extremely valuable and are a crucial component in building your business.
- IP rights are key business assets.
They can generate income through commercialisation and licensing and add value to your SME. Investors need to know your IP is protected.
- Consider licensing your IP.
If your IP would be useful to other businesses, you may be able to license its use to them. It is a low risk way of exploiting your IP and can provide small businesses with new opportunities for conducting business domestically or abroad.
- Make sure you know who owns the IP.
Under UK law an employer owns the IP created by its employees working “in the course of their employment”. However, contractors and consultants usually own everything they create – even if you have commissioned it – unless they assign ownership to your company with a simple contract.
- Confidentiality is vital to start with.
If you don’t keep your IP confidential you risk someone else discovering and benefiting from your innovation. Also, some forms of IP cannot be obtained if the idea has been made public before you apply to protect it. Third parties may need to sign non-disclosure agreements at early stages.
- Think strategically.
Align your business plan with your IP development. Consider an invention capture process so that you identify and protect new IP at the appropriate times.
- Think about international protection.
Most IP rights are territorial and give no protection outside that territory. You need to balance the costs of broader international protection against the likely risks and benefits of operating in the countries where you make, buy, or sell your products.
- Stay vigilant.
Regular searches of published IP rights will prevent you unknowingly infringing someone else’s IP. Infringement can result in substantial fines or injunctions for your company. Searches can also identify when somebody else is infringing your rights.
- Use your IP rights correctly.
Your IP rights can be challenged and invalidated if you don’t look after them. g. Trade marks must be used regularly and correctly. Patented products should be marked appropriately.
James Sanderson – Senior Partner
“A proactive, well designed IP strategy can help drive the growth of your company and does not have to be expensive.
Much of the work involved can be managed internally but sound professional guidance will give you vital peace of mind.
It is much cheaper to get professional advice and quality IP protection ahead of time rather than having to try and sort out the mess after things have gone wrong.”
With a UK patent application typically taking 4 – 5 years to reach grant, the patent process can seem like a very slow beast indeed.
If your invention has green credentials there is an option that may allow you to speed the process along a little.
UK IPO Green Channel
If your invention has some environmental benefit, applicants can make a written submission to the IPO requesting accelerated processing of their application.
The Green Channel option is not only available to the more obvious green inventions, such as solar panels or wind turbines – any invention that can reasonably be claimed to have an environmental benefit may be eligible.
What does it cost?
Nothing! There is no fee for using the Green Channel.
How do I it do it?
Requests must be made in writing by the applicant with details of:
- How their application is environmentally-friendly.
- Which actions they wish to accelerate:-search, examination, combined search and examination, and/or publication.
If you think your invention might qualify and would like advice on how to write the application letter please contact us at firstname.lastname@example.org.
For more information go to https://www.gov.uk/patents-accelerated-processing.
Some companies think that investing in Intellectual Property isn’t right for them…. it’s something that the big boys do… Wrong! IP isn’t just for large companies with deep pockets. UK SME’s file over 10x as many patents and trade mark applications as big companies. The time and money that you have invested in your innovation and business should be protected by IP rights.
- IP encourages investment in your company
- IP protects against unsafe and counterfeit goods
- Inventions that are protected by patents are valuable business assets
- Registering your trade mark allows you to safely extend its business use
- IP protects and supports innovation
- Innovation promotes business growth
- Profits from patented inventions attract reduced UK corporation tax through the Patent Box so you get to keep more of your profits to re-invest in business growth
Below is a short film from Ideas Matter – www.ideasmatter.com
IP By Numbers: Video from Ideas Matter on Vimeo
Contact Sanderson & Co to talk about how you can make the best use of IP rights.
The Intellectual Property Act 2014 (the Act) will start to come into force on 1st October 2014. The Act seeks to modernise and simplify Intellectual Property law and introduces a number of changes, particularly to UK design law and practice largely as a result of the 2011 Hargreaves Independent Review of IP & Growth.
We have outlined some of the key facts below:
Intentional copying is now a criminal offence
One of the main changes relating to design law is that intentional copying of a UK or European Community registered design will now be a criminal offence. The “infringer” must be aware or have reasonable grounds to suppose that the design in question is registered and so there is an increased importance to indicate the existence of IP rights on products. The maximum penalty for infringement will be 10 years imprisonment or a fine.
The designer owns the rights for commissioned works unless by prior written agreement
Another important change which seeks to bring UK design law into harmony with European Community design law relates to commissioned designs and ownership. The change ensures that, unless there is an agreement to the contrary in place, the actual designer will be the owner of a design created under commission rather than the commissioner. It is therefore important to make sure that written agreements are in place before a design is commissioned to establish clear ownership.
New Design Opinion Service from IPO
Several further design law changes include a new Design Opinion Service operated by the Intellectual Property Office and the implementation of defences to infringement of a UK unregistered design.
Make sure people know your rights exist
In order to recover damages in patent and design infringements it is important that enough information is provided so that an infringing party cannot claim to be unaware that a patent or registered exists. To ensure that an infringing party is aware of existing rights, the patent or registration numbers and the country where the right exists must also be indicated.
In this regard, the Act now stipulates that it is sufficient to provide a web address on the product allowing the relevant information to be accessed online.
Act paves the way for implementation of Unitary Patent Court Agreement
So far as patent law is concerned the Act will enable the UK to implement to Unitary Patent Court Agreement (UPCA) for the introduction of a unitary patent covering all member states of the European Union. The implementation of a unitary patent in due course is likely to have a significant positive impact on the costs and procedural efficiency of obtaining protection throughout the EU.
Further patent law changes include expansion of the IPO Patent Opinion Service to consider a range of validity issues not solely limited to novelty and inventiveness and the power for the Comptroller of patents to revoke a patent on his own initiative if an Opinion finds a patent to lack novelty or inventiveness.
For more information concerning the IP act 2014 and how this could have an impact on your business please contact us.
Author: Caroline Ward
If you have filed a trade mark application in the UK or Europe, the chances are you will have received a letter from one or more companies with ‘Renewal notices’ for your registration.
The letters look very official and are extremely misleading. The fees quoted for carrying out the renewal are extortionate and there is no guarantee that the actual official fees will be paid. We know of several of our clients who have been misled into making excessive payments in the belief that they were paying the UK Intellectual Property Office for the renewal of their IP rights.
In May 2013 the UK Intellectual Property Office made a claim for passing off to the Intellectual Property Enterprise Court against the two worst offenders – ‘Patent and Trademark Office’ and ‘Patent and Trade Mark Organisation’.
These organisations have now admitted to and settled the UK IPO claims and agreed to be bound by an Order of the Intellectual Property Enterprise Court prohibiting them from further acts of passing off.
If you receive a letter of this kind are are not sure whether it is legitimate please contact us or the UK IPO to confirm if it is legitimate.
For more information about trade mark registration within the UK and Europe please contact Sanderson & Co.
Intellectual Property Enterprise Court – Wikipedia
Resolving IP disputes through the courts – UK IPO
Your Intellectual Property (IP) rights can provide a number of significant benefits to your company.
The most obvious benefit is that they can prevent your competitors from copying your products or brands, but they can also be used to generate revenue through licensing or selling your IP rights to others.
It is important to have a complete strategy for your business when it comes to IP. Your comprehensive IP strategy should consider four main areas:
In our previous three posts we have discussed Generating IP, Obtaining IP rights and Avoiding IP rights; in this final post in the series we discuss ways in which Sanderson & Co. can help you with Leveraging your IP rights.
What are your competitors doing?
If you are aware of your competitor’s products and brands, then you can be in a better position to assert your rights against those products and brands. Sanderson & Co. can monitor the products and brands of your competitors and can help you to identify potential infringements. We can also provide an assessment of the strength of your IP rights and advise on the likelihood of there being an infringement.
Do you want to compromise?
Sometimes the most appropriate approach is to grant a licence or assignment of your IP rights to a potential infringer. Sanderson & Co. can assist with negotiating licences or assignments of IP rights, and we can be on hand to review licence and assignment agreements to ensure that they are suitable for your needs from an IP perspective. We can also work with solicitors on the wider commercial aspects of a deal.
Is further action needed?
Ultimately it may be necessary to assert your IP rights against others. However, this must be done in the right way so as to be effective and so as to avoid you being accused of making groundless threats.
At Sanderson & Co. we can help you to assert your rights in the right way, for example by sending appropriately worded warning letters. We can also assist with providing arguments to present during court proceedings for infringement actions.
The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.
If you would like any advice regarding Leveraging IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.