DL LEGAL Solicitors

Solicitors

COMMERCIAL, TECHNOLOGY AND INTELLECTUAL PROPERTY

LAW MADE SIMPLE

Intellectual Property ('IP') rights are vitally important to any business and most are surprised when they are advised that they have (or could potentially have) IP rights in a wide range of their products, production processes, a business/ trading name, an image or logo, a brand name, the look, feel and design of a website, a domain name portfolio, software, or the content of documents or databases or software. Creating and maximising those rights can open up potentially valuable new revenue streams to a business.

Although ordinarily Intellectual property is a negative right in that it gives the owner a right to prohibit others from dealing with it without permission, it does not generate any income unless it is exploited, for example, by incorporation in a product or service.

Whether to include it in your company accounts depends on the value of the intellectual property and the rights being valued, Short v Treasury Commissioners (1948) 1 KB 116, Borlands' Trustee v Steel Brothers & Co Ltd (1901) 1 Ch 279). This can also have a severe impact on employee share option schemes.

PATENT LAW

With businesses focusing more and more on the value of intellectual property and the ways and means that it may be used to generate alternative revenue streams. Our patent lawyers assist our clients determine the ownership of patent rights, design investment structures and provide corporate advice dealing with the development and creation of revenue streams for patented assets and sale of patented inventions. Our patent lawyers also look to help our clients achieve commercial goals in cost effective and efficient manner.

We also provide patent litigation services, including legal advice on the revocation of patents, eligibility of inventions for patent protection, validity of patents and enforcement of patent rights and the amount of damages that may be available in patent infringement legal actions.

Our patent lawyers can tell you whether your property can be protected, what you have to do to protect it and how to make the most of intellectual property rights.

Priority Rights

The Paris Convention provides so-called priority rights, which give an inventor one year to file patent applications after he filed the first one, without endangering the novelty of his invention.

Patent systems reward inventors for disclosing their invention to the public. This implies that an invention should be new, because otherwise the inventor would get a reward for telling us something we already know.A patent cannot claim something that already exists, nor can it claim something obvious. To determine this, patent examination always involves looking for prior art, earlier publications that show the invention is not new or is obvious. Even if the patent is granted, it can still be annulled by a court if the court finds that the invention wasn't novel after all.

PATENT STEPS

The first step in patent examination is to search the available literature for documents that describe the invention in whole or in part. "The state of the art". This restriction allows an inventor to publish his invention after he has filed a patent application on it, without destroying the novelty of his invention. Documents found in the search are often referred to as "prior art".

Prior Art

It is important to ensure that you do not create prior art which can be used against you. Prior art for a patent means anything which is publshed before the filing date of the patent and which describes the same or a similar invention.

While there are many different grounds on which a patent can be invalidated and the most common one is that the invention is found to be not novel or obvious in the light of the prior art. As the protection granted by a patent can only occur if the patent's claims are not novel or obvious, the first step in getting a patent invalidated is to locate documents that can be considered "prior art" against the patent's claims. Prior art basically means any disclosure of the contents of a claim, prior to the application for patent. National patent laws provide various definitions of what constitutes prior art and in which situations. For example, not all countries recognize oral disclosures as prior art, and others provide grace periods during which the inventor may publish his invention without the publication counting as prior art against his later patent application.

The evaluation of a prior art document thus must also be performed by comparing it to the claims. In this document the term "invention" should therefore be read as meaning "invention as defined in one of the independent claims of a patent or application".

A prior art document is said to anticipate a claim of a patent if the prior art document describes all the features of that claim, either implicitly or explicitly. The features of the claim must be present in the same composition in the prior art. The invention is then not novel over that prior art document. Such prior art documents are often referred to as "killer prior art", although patent attorneys discussing their own cases prefer the term "relevant prior art".

Oral disclosures, such as lectures or nonconfidential discussions between the inventor and a third party, usually also count as prior art. The USA regards oral disclosures as prior art only if they were made in the USA (35 US Code section 102(a): "known or used by others in this country, or patented or described in a printed publication in this or another country").

Claims

If a prior art document does not describe all the features of a claim, that claim is said to be novel compared to the document. The document can still be useful as prior art, but only to prove that the claimed invention is obvious. A single copy of a Ph.D. thesis available in a university library counts as prior art, as would an article in the Baghdad Daily Gazette, but only if it is available to the public. It is irrelevant whether the public in fact accessed the document, or how easy it was to find the document. For instance, a paper might be published in a journal with a very small circulation, or a book might be present in the library without being in the catalogue or prior art may arise from handouts at expensive conferences. This is all prior art, as long as a member of the public could gain access to it without violating a secrecy obligation or doing something illegal (such as breaking into an inventor's private library).

Are earlier Patent applications prior art?

When someone files a patent application on an invention, other similar patent applications on the same invention may have been filed earlier. If the later patent application was filed before the earlier applications or patents were published (which normally happens 18 months after filing, or upon grant), the earlier applications do not count as prior art in the normal sense. However, this would lead to the situation that two people would obtain a patent on the same invention, which is undesirable. For this reason many countries have special provisions for earlier filed patent applications that were not published before the day of filing of the later application. Such patent applications are sometimes referred to as "prior rights".

Prior rights under European patent law

The prior art status of a prior right is not necessarily the same as the status of a published document. Most European countries explicitly state in their patent laws that prior rights may only be used to prove that an invention was not novel.

If the invention as claimed in the later application differs even slightly from the prior right, it is novel and no further objections may be raised based on the prior right (article 56 EPC). Such a small difference is considered to be enough to make the later invention a "different" one. This way, it is prevented that two people, or even a single inventor, could obtain multiple patents on the same invention.

Prior rights under US patent law

U.S. patent law uses a different approach. 35 US Code section 102(e) states that U.S. patents filed before the date of invention can be prior art. A requirement is that the U.S. patent in question is published, either as a granted patent or as a patent application. If this is the case, and the filing date is sufficiently early, the earlier patent or application counts as prior art and can be used to attack both novelty and obviousness of the later application.

Another requirement is that the prior right in the U.S. must be owned by "another". This is interpreted very strictly: even if the two patent applications concerned have some inventors in common, if the two lists of inventors are not identical, the earlier application was made by "another". It could happen that the two patent applications are owned by the same assignee. In this case, the earlier application can still be used against later one, unless the applicant can show that the earlier application describes his own work. Usually, this means that the assignee of the later application must prove that that invention was made first.

Our services include legal advice on patentability of inventions, where a manufacturer or service provider is prevented from entering a market due to an existing patent, advising on revocation proceedings, availability of compulsory licences where the patent owner refuses to licence on reasonable terms, conducting searches to avoid infringing existing patent holders´ rights, defending against patent infringement claims, pursuing infringement litigation, monitoring patent applications to protect existing patent monopoly rights, negotiation and settlement of patent disputes, advising on strategies for obtaining patent protection worldwide, opposing patent applications and portfolio management.

DESIGN PROTECTION

Designs mean different things to different people. Designs law is predominantly concerned with protecting the outward appearance of manufactured products. There are two types of design protection. Firstly the unregistered ´design right´ applies automatically in the same way as copyright law; secondly, a registered design, requires a formal application to the Patents Office and grants more extensive protection. Manufactured products are often the result of significant market research and investment in the development process. These often warrant protection as registered designs. Registered designs are arguably the most cost effective means of registered intellectual property protection.

Registered Designs protection applies to all manner of industrially manufactured products which have some physical characteristic that is visually distinctive and new, whether it was designed for domestic or industrial use. It protects the shape, configuration, surface decoration and patterns from copying.

Designs may be made to play a central role in an integrated IP strategy, adding a layer of protection that would not otherwise exist, and providing an additional means of protection that falls outside the scope of the other forms of intellectual property protection.

TRADE MARKS

A trade mark is a sign that distinguishes goods and services of one trader from another. Logos, slogans, signatures, letters, numerals, packaging, shapes of products and packaging, scents, colours and sounds may be registered as trade marks.

Registration prevents others using a substantially identical or deceptively similar trade mark in relation to the goods and services for which the trade mark is registered, or similar goods and services. Applications for trade marks may be made prior to its use in the market, and no reputation in the mark is required for registration.

We carry out trademark protection & trademark infringement proceedings; answering oppositions to trademark registrations, protection of corporate identity, corporate logos, slogans, symbols, & reputation, implementation of commercial branding strategies and counterfeiting and ambush marketing, Indelible and distinctive trade marks are a crucial and rare commodity. Trade marks hold significant value in identifying products, goods and services and nurturing customer loyalty.

We deliver a complete range of services with regard to trade marks.

Our services include searches of trade marks registers to detect potential infringement and obstacles to registration, legal advice on registration of trade marks, drafting trade mark specifications, filing trade mark applications worldwide, monitoring the trade mark registers to ensure registered rights are not prejudiced, pursuing and contesting oppositions to applications, and trade mark portfolio management: a service that takes in renewals and monitoring of new applications that should not co-exist on a trade mark register.

We try to ensure that applications take into account current and future markets for products and services in an ever increasingly competitive environment and in the context of converging markets. Our knowledge of exhaustion of rights and international trade mark licensing and assignments allows us to take a commercial view in considering registration whilst keep an eye on the legal merits.

Valuing of a Trade Mark

The value that a trade mark adds to a business may far outweigh the investment required to obtain it: protecting an unregistered trade mark or trade name is usually far more difficult and comes at greater expense.

A valuable trade mark that identifies a brand may add significant capital value to a business in the context of selling a business. The rights to the name are secured and evidenced by entries on any number of searchable registers. In some businesses, trade marks are more valuable than most other business assets.

In an increasingly global market the brand may be the single most important commodity a business possesses. A successful brand therefore needs to be protected by law to ensure that rivals do not encroach on the monopoly rights granted by registration. We also have significant experience in advising on licensing of trade marks and recognise that brand licensing may provide a trade mark proprietor the benefits of a secure revenue stream in the form of royalty payments and the associated guarantees. Our contractual agreements and trade mark licences are specifically tailored to each individual deal to add value to your business.

Trade Mark Infringement

Trade marks may be infringed in many ways, for example:

* use in advertising;

* affixing signs to goods or packaging;

* counterfeiting;

* use on different goods and services;

* dilution of well known marks;

* importing and exporting goods or services.

Trade mark infringement poses a significant threat to a brand, and accounts not only for lost revenue but also in relation to loss of reputation by offering inferior or poor quality substitute goods and services.

We are experts in the law of trade marks in the UK, Europe and internationally. We are in an excellent position to act in your best interests to protect brands from infringement and protect revenue streams.

Unregistered Trade Marks

Not all trade marks are registered. A business may establish goodwill in a brand simply by trading in goods and services. The brand becomes established through trading and association of the name with products and services. The law of passing off goes hand in hand with registered trade mark protection to provide a broader and more flexible means of safeguarding business reputation, goods, services, branding and slogans.

Passing off is an area of law relating to the damage to the goodwill of a business by traders securing business by passing off goods and services as those of another trader. We have wide experience in this area of law which is often very complex and has successfully acted and advised on matters of passing off between parties in the High Court.

No matter what your business its success is based on an established reputation. Your reputation is critical and must be protected from damage by other traders. We will evaluate the merits of your case, advise you on the best course of action and act to protect all you have strived to build.

A person or company that creates an original work by their own skill and labour regardless of character is conferred with the exclusive right to copy that work for the duration of copyright protection. Copyright law grants owners of copyright the exclusive right to reproduce their original work and license other to do so. The rights reproduce, broadcast, authorise others to perform in public, create translations and otherwise adapt original works are extensive rights that used and managed properly grant powerful rights and the opportunity to generate alternative revenue streams. Copyright provides legal protection for both economic rights and moral rights to the owner of an original work. This form of intellectual property protection has been internationalised by the adoption of the Berne Convention by over 150 countries and other treaties.

Copyright is central to the exploitation of intellectual capital in technology based companies. Recognition and enforcement of copyright in service based industries is fundamental to developing and maintaining assets upon which a company trades.

* protection of copyright works

* software copyright infringement including computer games & programs

* database protection and recovery

* software piracy

*image, graphic design, web site design theft and copyright infringement;
*content theft.

The strength of copyright is in its role of protecting all manner of original text, images, music, computer programs, and media compilations. However it does not provide the extensive protection granted by patent law nor does it protect know-how, ideas, information, knowledge, methods, concepts, theories or algorithms.

Domain Names

We are experienced in:

* recovery of domain names

* domain name registration

* domain name theft

* Acting in domain dispute resolution policies

One really simple way to protect you domain name is to trademark it. This may seem overkill, but on the basis that your entire business now probably runs through the domain name, the cost of a trademark is less than the business you’ll lose if

And what class should you use? Advertising (precludes use for per click), Retail Services and others.

Inventors

We are specialists in advising inventors and entrepreneurs on the protection, enforcement and exploitation of their inventions and can advise on a range of legal and commercial issues such as how to successfully commercialise your invention, setting up a business, raising finance, marketing, distribution and manufacturing.

Types of Representation

We appreciate that good quality legal advice is crucial to the exploitation of inventions and we offer a complete service for inventors. We also offer Starter Packs to inventors which are available on request.

* Commercial Contracts

* Commercial Law

* Confidentiality Agreements

* Copyright Law

* Designs

* Drafting Agency Agreements

* Drafting Terms and Conditions

* Distribution Agreements

* Due Diligence

* Intellectual Property Law

* Intellectual Property Audits

* Intellectual Property Assignments