Protection Money

Editors Note: This article originally appeared in Inventors World magazine as one of a hugely popular series, supplied by The Patent Office, affectionally entitled 'Patent Place' (You have to be of a certain age to get the joke). My friend, the late, great George Hamlyn was a straight talking, fun loving, raconteur who was taken way before his time and is greatly missed. Only George could refer to the TM symbol as short for 'Totally Meaningless'.

Intellectual Property, and its protection, is constantly evolving and some of the information presented here is out of date. I am loathe to change it because: a) I might get something wrong (which George would frown at), and b) it might be out of date again next week!

The Intellectual Property Office (the re-branded Patent Office) don't want to update it because they don't want to duplicate material to be found elsewhere.

Therefore, I'll let the text stand and at the end you will find links to the 'dry as dust' Governmental versions. Enjoy!

George Hamlyn

Related further reading...

Further Reading:

Former Assistant Director, Marketing and Information Directorate, The Patent Office

The UK Patent Office is well aware that inventors often find the costs of patenting prohibitive. But, if you have a commercially worthwhile idea, then to fully exploit it you almost certainly will have to obtain patent protection, writes George Hamlyn, assistant director of the Patent Office's Marketing and Information Directorate...

IF any country seeks to stay in the forefront of industrial and technological advance, it must fully exploit its collective intellectual resources. But full and efficient exploitation of these resources, more commonly known as intellectual property, requires that a creator or their employer has the necessary legal protection to take advantage of their new idea for commercial and industrial purposes.

Such protection is obtainable through a series of intellectual property rights, viz patents, registered designs, design right, registered trade and service marks, and copyright. And in the case of patents, exploitation also means using the huge amount of technical and commercial, information that patents have to offer at every stage of the innovation process from conception of an idea, through research and development, and into the marketplace.

Those first few paragraphs sound all very well in theory, I hear you say, but lone inventors just don't have the resources to protect and exploit their inventions. In answer to that, it should first be pointed out that the majority of today's large companies started with a lone inventor or small company with a bright idea and in almost every instance protection was obtained through appropriate intellectual property rights. So let us look at those rights in a bit more detail.

Patents are granted for new products or manufacturing processes, or improvements of existing products or processes. Unfortunately, patents are often associated with gadgets and gimmicks and certain types of medicaments. Benny Hill once said that the most prolific inventor in the world is an Irishman named Pat Pending, while Dame Edna Everage claimed that her husband Norm was keeping his end up in hospital by patenting the heat-seeking bedpan!

But this is an image that we in the Patent Office like to put behind us. In fact, virtually all machines or apparatus, products and processes across the industrial board are patentable as long as they satisfy four criteria; they must be new, exhibit an inventive step (i.e. must be non-obvious), be capable of industrial application and not be "excluded" (e.g. mathematical theories and computer programs are not patentable).

Patents are not only used in high-tech fields such as robots, jet engines and offshore oil rigs. They cover everything from the simplest paper clip to the most sophisticated computer. Usually, no-one is surprised to know that cameras, carburettors and chemicals are all patented, but people are often more surprised that AERO chocolate and the crinkle-cut crisp have been patented - in the case of AERO, it was the first time that anyone had thought of a method of making chocolate with bubbles and although it may raise a smile it was an extremely valuable patent for the owners.

Toys and games, items of stationery, milk cartons and even the ring-pull for cans of beverage have all been patented. Every time a can is sold with the ring-pull, the owner gets one tenth of a penny - multiply that up by the millions sold each day, not only in this country but also elsewhere, and you certainly have a "nice little earner."

Another good earner, well known to many readers is the WORKMATE®. The inventor, Ron Hickman, licensed the invention to Black & Decker and gets something over £1 for every one sold and we've been told that over 30 million have been made!

Nobody pretends that patenting is cheap, especially if you want protection overseas as well as in the UK. But the old business maxim of "no risks, no gain" is particularly apt in the case of patents. The main problem is that patents are usually applied for early in the innovation process when the inventor does not really know how marketable the product will prove to be, but there are plenty examples of a high-risk patent investments which have led to substantial commercial dividends.

On the other hand, there are many products and processes which have been patented but which have either not reached the marketplace or if they have, have subsequently failed. So how can you minimise the risks of investing in patents? First, you need to discard the rose-coloured spectacles and look at your invention in the hard, cold light of day.

Ask the question "Is the idea viable?" This will involve a preliminary technical assessment of the product, market research and financial considerations. You also need to determine your own human competences so that you can identify what outside expertise you need to call upon.

All these things will give you greater insight to the commercial possibilities of your idea and will also give you valuable information to support any future attempt to get a product champion or licensee.The nature of the patent system also can be used to buy yourself time to convince others of the merit of the idea. We in the UK Patent Office always advocate getting professional advice from the outset (usually this will be a patent agent), but if you really feel you can't afford their fees even for an initial filing, at least file an application yourself for the official fee of £25.

THE filing date you then obtain is a launch-pad not only for further prosecution of your UK application, but also for protection overseas. Having filed the patent application, immediately write to every potential product champion in all those countries you think may value the invention. Most will possibly not even reply, but a show of interest from just one or two companies might persuade you that it is worth continuing with your application (usually within 12 months of your UK filing date) using a patent agent.

One note of caution, however, when writing to such companies tell them only as much as is commercially necessary. For example, often reciting the advantages of your invention without a full technical disclosure will be enough to whet their appetites.

While patents protect the inventive kernel of an apparatus, product or process, design right protects the shapes or forms of products, assuming they are original. This is automatic, requires no registration, and protection starts from the day of first marketing the product -the right is an exclusive right for the first five years and is then followed by a final period of five years in which anyone can make and sell articles copying the design, on payment of a royalty.

However, it is only a right against copying, and the production of the same design entirely independently would not continue infringement. Purely functional designs, such as camshafts, where visual appeal is not an important factor will only attract design right protection. But if a product does have a visual appeal, additional and better protection can be obtained through a registered design.

The visual appeal of a product can be crucial to its marketing success or failure, regardless of what lies behind it, and the way a product looks is often the most important mechanism for distinguishing your goods from those of your competitors. As with patents, designs cover the whole range of technology. So design registration is not limited to the more obvious ideas such as wallpaper and textile designs, furniture, glassware and cutlery - it is also used to protect toys such as My Little Pony and Care Bears, custom car parts such as fancy hub-caps and steering wheels, as well as ballpoint pens, shoes, washing machines, televisions and computer keyboards.

At present, registered designs can be renewed up to a maximum of 25 years. Registration means that you have to apply to the Patent Office and pay a fee to obtain protection. While registered designs can protect the shape and/or surface decoration of products, design right only protects shape. Really, design right is intended particularly to protect articles with some design freedom but little eye-appeal such as functional articles such as crankshafts, conrods and spanners. One further point on designs: a spare part whose shape is dictated solely by the part or parts it has to fit with, e.g. a car body panel, gets no protection at all, under either design registration or design right.

Like the new design right, Copyright is an automatic right that requires no registration. Moreover, it is exactly what it says, it is a right against copying and copyright is only infringed if a chain of copying from one creative work to another can be proved.

Copyright protects original literary, dramatic, musical and artistic works (for 50 years after the death of the author, dramatist, composer or artist), and published editions of works (25 years from the date of publication). Sound recordings, film (including videos) and broadcasts (including cable and satellite broadcasts) are also protected, in this case for 50 years from the date of the first broadcast.

Last but not least come computer programmes, which are effectively regarded as identical to a work of literature - unauthorised conversion of a programme into or between computer languages or codes corresponds to "adapting" a work, and storing any work in a computer amounts to "reproducing" the work. Both would be infringements of copyright. Another important aspect of copyright is that the material will usually, but not invariably, be automatically protected overseas. The UK is a member of several international conventions in this field and copyright material created by UK nationals or residents is protected in each member country of the conventions by the national laws of that country.

Most countries belong to at least one of the conventions, including all the Western European countries, the USA and many of the states of the former Soviet Union.

No article on intellectual property should overlook the enormous value of patent specifications as a source of technical and commercial information. Patent literature is quite simply the largest and single most important source of technical information in the world, with over 80 per cent of the information in patents being unavailable elsewhere -and that includes trade journals, in-house journals, and confidential memoranda.

So people not looking at patents automatically cut themselves off from at least four-fifths of the available information. A recent example where a patent was the only available source of information was when a "spy" got past some MOD guards at the Farnborough Air Show, shinned up a nine-foot high fence and entered an aeroplane in order to get more information about a new and revolutionary type of flying helmet. He need not have bothered - the European Patent Application had already been published with a full disclosure of the helmet and was freely available on the shelves of the Science Reference and Information Service in London.

Patent information can be used to find out what's happening in an area of technology, what your competitors are doing, and, most importantly, it can help you avoid unnecessary research in re-inventing what's been done before - in the European Community alone, over £20b a year is wasted in this way on redundant research.

There are several different routes to this information and the Patent Office Search and Advisory Service is one such, offering you the unique expertise of its patent-examining staff (there is an expert in every field of technology) combined with access to all the world's important patent computer databases. And there are a lot of patent documents around -some 35 million to date worldwide and increasing at the rate of a million per year.

A Trade mark is a means of identification - a symbol, whether a word or device or combination of the two, which enables traders to make their goods or services readily distinguishable from those of their competitors. So a well-established mark indicates goods or services of a reliable quality and provides protection for the goodwill and reputation of a firm in its products or services.

And while a trade or service may have no value when it is first conceived, once a reputation has been established in that mark it will invariably be the single most valuable marketing tool a company will have.

Trade Mark law has just been revised and modernised. The Trade Marks Act 1994, most of which came into force on October 31, 1994 brings UK law into line with other EU States and ratifies UK membership of an international convention on trade marks. It also makes many deregulatory changes - under the new law it will be possible to register things previously unacceptable, such as shapes (e.g. the Coca-Cola bottle), geographic words and even smells!

You do not have to protect your mark by registration, and without it you would still get protection in common law through "passing off. But you are usually well-advised to seek registration since suing for infringement of your registered mark is usually simpler than a "passing off" action.