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Get Out On The Highway – What exactly is the PPH programme, and is it worthwhile?

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PACE vs. PPH

 

The European Patent Office (EPO) has announced as of July 2019 that the Patent Prosecution Highway (PPH) pilot programme with IP Australia is to be extended to June 2022.

 

In total, this means that the EPO has PPH programmes in effect with fifteen other patent offices. The relevant jurisdictions are: United States of America; China; Japan; Korea; Australia; Brazil; Canada; Colombia; Israel; Malaysia; Mexico; the Philippines; Russia; Singapore; and Eurasia.

 

What exactly is the PPH programme, and is it worthwhile?

 

Earlier Work Products

 

The PPH programme allows a later office to rely on ‘available work products’ from one of the partner offices, which indicates that the claims of the application are allowable.

 

This allows the EPO to fast-track the grant process of the European patent application, based on the earlier work product.

 

Requirements

 

There are specific requirements for participation in the PPH programme.

 

  1. The priority date or filing date of the earlier application must match that of European application to undergo PPH acceleration.

 

  1. The earlier application must have at least one claim therein indicated as allowable.

 

  1. The claims of the European application must be made consistent with the allowable claim(s) of the earlier application. A claims correspondence table should be provided as part of the request for PPH at the EPO.

 

  1. PPH must be requested before the EPO begins examination of the European application.

 

Effectively, the PPH programme allows the prosecution of a pending European application to catch up with that of an application in another jurisdiction, provided that the EPO has not already started examination on its merits.

 

Should I Use PPH Acceleration?

 

The EPO acknowledges that a valid PPH request will put the application into a fast-track stream, on a par with a standard request for acceleration under the PACE programme.

 

This is interesting, since there is a significantly lower administrative burden on the applicant for filing a PACE request than there is for filing a PPH request, with no apparent change to the potential timeframe to grant.

 

What is also worth noting is that the EPO Examiner is still required to assess the merits of the compliance of the European application with the requirements of the European Patent Convention. PPH acceleration does not guarantee grant – it is not a rubber-stamping exercise. The EPO has different requirements for grant when compared with, for example, the USPTO or KIPO. The EPO requirements with regards to added-matter are commonly regarded as being stricter than in some other jurisdictions

 

PACE vs. PPH

 

Therefore, there may be different factors to consider when deciding whether to request PACE acceleration or PPH acceleration.

 

  • I want to bring my European application into alignment with an already-granted patent in another jurisdiction.

 

  • In this scenario, it would seem prudent to allow the EPO to access the prior work product of the earlier office, in order to streamline grant. Provided there is no obvious reason that the application contravenes the EPC, then PPH acceleration would seem appropriate.

 

  • I have a patent in another jurisdiction, and want to align some, but not all, of the features of the European application with the granted patent.

 

  • In this situation, we would not want to just accept the allowed claims from the earlier office. As such, PACE acceleration would seem more applicable.

 

  • I have a granted patent in another jurisdiction, but I have already responded to one examination report in Europe.

 

  • A PPH request would be invalid here. PACE acceleration of the examination process could still, however, accelerate the route to grant. The timeframe between examination reports can be substantial under European procedure.

 

  • I have a granted patent in another jurisdiction, but I am not sure whether the claims would be valid in Europe.

 

  • The best thing to do here would be to assess the claims for compliance with the EPC first, potentially aligning the ‘spirit’ of the claims with those as granted overseas, and then just requesting PACE acceleration. This may shorten the examination procedure, given that any deficiencies in the claim set may be addressed first. This may not be possible in a PPH request.

 

Overall, there are scenarios in which a PPH request may be a useful tool to quickly obtain grant of a European patent. However, the more straightforward PACE scheme provides the same benefits of acceleration, without many of the restrictions associated with a PPH request.

 

The important thing is to remember that the application must still meet the requirements of the EPC for a valid patent to be issued, in particular, with regards to inventiveness and added subject-matter.

Albright IP Brexit Update: May 2019

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Brexit

 

At the time of writing, the UK Parliament is continuing to debate the terms upon which the United Kingdom and Northern Ireland will leave the European Union. In light of this, the deadline for the draft withdrawal Agreement to be signed, has been extended to 31 October 2019. Beyond this, providing ‘a deal’ is signed, a transition period will run up until end 2020.

 

Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change.

 

Trade Marks & Designs

 

Here are some key points to consider in anticipation of the post-Brexit proposals: 

 

Filing

  • All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.
  • Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.
  • To ensure you will have rights in the EU and the UK after Brexit, file any new Applications in the EU and the UK going forwards from this point.
  • When filing IRs designating the EU; a separate UK designation should be added.

 

Renewals

  • Any EU renewals falling due prior to Brexit will encompass the UK.
  • Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.

 

Use

  • For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.

 

Pending Proceedings

  • Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.
  • Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.

 

Licenses and Security Interests

  • Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.

 

Contracts and Agreements

  • The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.
  • Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.
  • Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.

 

Patents

 

There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.

 

Summary

 

As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.

 

Whatever happens in the lead-up to and indeed after Brexit, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

How Disclosing Your Invention Can Prevent You From Obtaining a Granted Patent

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Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.

 

Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).

 

Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:

 

“(1) An invention shall be taken to be new if it does not form part of the state of the art”,

 

and defines the state of the art as comprising:

 

“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” (see section 2 of the Patents Act 1977).

 

In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.

 

So how do I know if I’ve publicly disclosed my invention?

 

You are likely to have disclosed your invention publicly if, before filing a patent application, you have:

  • Talked to investors, business partners, friends, or potential clients about your invention
  • Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
  • Got a Kickstarter page in which the invention is disclosed
  • Posted a document about your invention on a website
  • Been on Dragons’ Den
  • Given a talk to an audience or displayed a poster at a conference,
  • Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
  • Published an article, an abstract, or a grant proposal
  • Given away or sold samples
  • Shown your invention at an exhibition (with some exceptions)
  • Used the invention in a public place

 

There are, however, caveats to be voiced about the above list.

 

Confidentiality

 

Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.

 

Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.

 

Website postings

 

With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.

 

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

 

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

 

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,

 

then the document was made available to the public […].

 

Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.

 

You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.

 

Emails

 

In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.

 

Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.

 

I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?

 

Not necessarily.

 

To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.

 

If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.

 

Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.

 

Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.

 

In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.

 

Victory for ‘Peppa Pig’ – Peppa’s win on Trade Mark Invalidity Claim

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The owners of a hugely popular British animated series, ‘Peppa Pig’, have successfully won their bid to invalidate a Mark, arguably evocative of their well-known ‘Peppa Pig’ character.

 

Peppa Pig first graced our TV screens back in May 2004, and has since become one of the most well-known, and most popular British children’s TV programmes of all time. The rise of ‘Peppa Pig’ has, quite naturally, created a multitude of extremely lucrative commercial opportunities for the owners, Entertainment One and Astley Baker, who are now appearing to be more actively enforcing and policing their Peppa Pig-related IP rights than ever before.

 

One of the most recent cases involving ‘Peppa Pig’ has been the invalidation claim brought against an EU Mark filed for by Xianhao Pan. The invalidity claim perhaps comes as no surprise when one views the Marks in issue side-by-side, as displayed below:

 

Xianhao Pan’s ‘TOBBIA’ Mark The ‘Peppa Pig’ Mark

 

Background

 

In 2013, Xianhao Pan was granted an EUTM for the ‘TOBBIA’ Mark in Class 25, for clothing, footwear and headgear. The Mark is in the colours, pink, red, yellow and blue, and is said to depict a ‘tapir head on a human body’, with the words ‘TOBBIA’ in bold and black text underneath.

 

This was argued to be confusingly similar to the Peppa Pig creators’ earlier black and white mark, registered for the same goods. The earlier Trade Mark depicted the famous cartoon character, Peppa, with the words ‘PEPPA PIG’ underneath, in black and bold text.

 

When the case was first heard by the EUIPO Cancellation Division, rather controversially, they ruled that the two Marks were not confusingly similar, upholding the validity of the ‘TOBBIA’ Mark. On appeal in 2017, a U-Turn decision was made, and the ‘TOBBIA’ Mark was invalidated on the finding that the Marks were visually, phonetically and conceptually similar.

 

The General Court’s Decision

 

Following a round of appeals before the Board of Appeals of the EUIPO, the General Court concluded earlier today, 21 March 2019, the invalidity of the ‘TOBBIA’ Mark. Despite noting the differences in terms of the colours of the Marks in issue, it ruled that these differences, considered overall, did not outweigh the similarities.

 

In the appeal to the General Court, the owner of the ‘TOBBIA’ Mark argued that the Board of Appeals had failed to state the reasons for going against the first decision by the Cancellation division, but the General Court was quick to confirm that it was sufficient for the Board of Appeals to only state the reasons on which its own decision is based, and that an obligation did not extend towards identifying the incorrect aspects of the Cancellation Division’s decision.

 

Undoubtedly in agreement with the preceding Board of Appeals’ decisions, it was confirmed that ‘the average consumer normally perceives a mark as a whole’, without engaging in lengthy analysis as to the various details, and therefore, it was right to find that the Marks were visually similar overall.

 

Most interestingly, the General Court also remarked approval of the Board of Appeals’ previous assessment, which found a certain correlation between the word ‘tobbia’ and ‘peppa’, in the sense that both words contain the reiteration of a strong consonant, namely, the ‘B’ in ‘tobbia’ and the ‘P’ in ‘peppa’.  Although not verbally similar therefore, it seems that there was a consensus that the structural correlation and extremely similar graphical elements in the Marks rendered an impression of similarity in the minds of the consumer, who might consequentially come to view the Marks, and also the respective goods, as being related in some way.

 

Despite assertions from the owner of the Mark that the ‘TOBBIA’ Mark depicted a tapir, rather than a pig, the court considered it unlikely that the public would at all associate the Mark with a tapir, consequently finding there to be conceptual identity in the Marks, in the sense that they both represented a pig.

 

Consequently, when considering the overall similarities from a visual, phonetic and conceptual perspective, the invalidity decision was upheld.

 

Conclusion

 

Whilst today’s decision may seem an overly generous stretch in favour of the creators of Peppa Pig, at least, when it comes to the court’s apparent approval of the ‘correlation’ between the ‘strong consonant’ elements of the Marks, the decision of the court does not appear all that surprising. A side-to-side comparison certainly highlights the ‘TOBBIA’ Mark’s eerie resemblance, highly reminiscent of the famous pig character. Given ‘Peppa Pig’s reputation, there is certainly a likelihood that consumers might come to perceive the Marks, and the respective goods, as being somehow associated and/or connected to the Peppa Pig franchise. Like it or not, what would have undoubtedly been interesting in the court’s decision would have been a more thorough discussion, or at least, a reference to the previous grounds raised by the owner of the ‘Peppa Pig’ Mark, specifically, the conflicts with the earlier copyright.

 

Four New Appointments Set Albright IP Up For a Strong 2019

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Albright IP has welcomed four new members of staff to its offices. Following an exceptional year of growth in 2018, the new team members will help to strengthen our offering of professional and cost-effective intellectual property (IP) protection for our clients in the UK and across the globe. Our new employees take the total number of staff up to 26 at our Montpellier headquarters.

 

These new additions to the team are a reflection of our ongoing expansion and will bolster us to meet our clients’ ever-evolving needs. We pride ourselves on providing our clients with a unique combination of IP strategy, patent and trademark services combined with the prototype design/development services offered through our in-house design consultancy, DUKU.

 

Commenting on the new arrivals, Albright IP Managing Director Robert Games said:

 

“These new team members have given us a real boost and we’re delighted to be starting 2019 on such a strong footing. They are already supporting our clients and making their individual contributions to our overall delivery of quality legal advice and practice in all matters relating to Intellectual Property. We look forward to another year of driving and protecting innovation for our clients in the UK and internationally.”

 

Meet the new team members

 

With each of the new additions bringing their own interests and insights to the team, you can find out a little about them here…

 

Christina Chan has joined as Trainee Trade Mark Attorney


Christina joins Albright IP straight from Queen Mary University of London, where she completed an MA in Intellectual Property Law. She is particularly interested in the interplay between Intellectual Property Rights, the right to freedom of expression, and their place in the age of interactive and collaborative online activity, and she brings a fresh enthusiasm to the team.

 

Adrian French has joined as Trainee Patent Attorney


Having completed a BEng in Systems Engineering and an MSc in Advanced Biomedical Engineering from the University of Warwick, Adrian worked as a UK IPO Patent Examiner for 5 years.  He is currently working on his dissertation to complete a LL.M in Intellectual Property Law.  He’ll be training as a patent attorney and will be involved in drafting, filing and general prosecution of patents.

 

Jennifer Pitman has joined as IP Administrator


Jenny holds the Patent Administrator’s qualification awarded by the Chartered Institute of Patent Attorneys (CIPA). She has many years of legal experience, both in the UK and her birthplace of Bermuda, having previously worked in IP with a focus on patents and registered designs, since 2009.

 

Helen Morris has joined as IP Administrator

 

Due to attend the CIPA Administrators’ Course later in the year, Helen will be working with patent and design matters, assisting with initial client enquires, through filing and the various stages of the application process to grant and maintenance.

“Poor Man’s Patent” – Fact or Fiction?

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Poor man's patent

 

Poor Man’s Patent – Fact or Fiction?

 

From time to time the phrase ‘Poor Man’s Patent’ gets thrown around, seeming to imply there is a free or low-cost way of obtaining protection for your invention or idea. Below, we discuss what a ‘poor man’s patent’ actually is, and why it may destroy the chances of you ever commercialising your idea.

 

Postmarked Sealed Envelope

 

A quick internet search reveals that the phrase ‘Poor Man’s Patent’ is most well known in the US.

 

writing your idea down, sealing it in an envelope and posting it to yourself so that the sealed envelope is stamped with the postage date

 

This involves writing your idea down, sealing it in an envelope and posting it to yourself so that the sealed envelope is stamped with the postage date. This was considered third-party verified proof of the date of your invention.

 

If someone else then came up with the same idea subsequently, the postmarked envelope could then be opened with witnesses present, proving that you originated the idea on at least the date of the postmark.

 

This information is still available but is dangerously out of date. If you follow the advice for a ‘poor man’s patent’ these days, you will potentially irrevocably destroy your chance of obtaining a valid patent later on, and therefore destroy your chances of monetising your invention. It is that critical.

 

In the US before 2013 the above strategy could, in theory, give you the right to a patent to the idea, even if someone had already filed their own patent application to the idea first.

 

At that time, the US was a ‘First to Invent” patenting system’ Therefore, proving when you had the idea first was as important if not more so than filing the patent application to lay claim to the concept.

 

The US has since changed to a ‘First Inventor to File’ patenting system in line with the majority of the rest of the world, Sealed envelopes containing your ideas on paper as explained above now count for little or nothing in all the major patenting systems worldwide. And, in fact, using the ‘poor man’s patent’ approach will these days do more to harm you protecting your idea then it will help you.

 

Copyright

 

Having said that, the ‘sealed envelope technique’ is still relevant for Copyright purposes. For example, it can help to prove when you came up with a drawing or a work of literature before a certain date, if someone has copied you.

 

Registered Design

 

A registered design (also called a ‘design patent’ in some territories, such as the US) protects the appearance of a product.

 

Therefore, if someone copies the ‘look’ of your product and you have a registered design or design patent, you can enforce your rights against them.

A registered design is nearly always cheaper to obtain than a patent

 

A registered design is nearly always cheaper to obtain than a patent (unless you have multiple products that all look slightly different but work in the same way), so it may be considered a “Poor Man’s Patent”.

 

Having said that designs do not protect the way a product works. Designs rights do not protect the ‘technical concept’ of an idea – that is for a patent. Therefore, if someone makes a product which does exactly the same thing as your product, but has a different exterior ‘look’ to it, your registered design will not protect it.

 

Registered designs are more useful in addition to a patent, or if it looks new but the concept is well known.

 

DIY “Provisional” Patent Application

 

A DIY “provisional” patent application could also be considered to be a Poor Man’s Patent.

 

A DIY “provisional” patent application could also be considered to be a Poor Man’s Patent

This is effectively where you write down the details of your invention and file it at the patent office but don’t file claims, and potentially some other required parts with it.

 

Before the first anniversary of the filing date, you can have a professional write claims for it and complete the application, hopefully once the business has taken off and you now have more funds.

 

There are many dangers to this approach. Some are outlined in our earlier article here. But, in essence, you can only use the original date of filing for the matter you originally filed. If the new claims that you add downstream need additional matter to word them effectively, then this new or added matter would potentially be invalid if you had sold the product or disclosed details of it before filing the new claims (such as marketing the idea to investors, setting up a website to promote the idea, or putting a Kickstarter funding proposal together to raise funds).

 

Conclusion

 

Professionally patenting your invention may, on first appearance, appear to be an expensive business. But, if you are serious about protecting your idea, a professionally drafted patent application is the only way to go.

Cutting corners in the early stages of an idea or business can seem attractive, but it will likely cost more in the long run to fix the mess you might end up in.

We often see clients that have deals on the table, but have jeopardised themselves by not investing in their patent and trade mark rights at the beginning, leading to significant issues completing the deal they have worked so hard to arrange.

In short, do not use the ‘poor man’s patent’ approach. These days, it is worse than useless. Do it properly or do not do it at all. Treat patenting and trade marking as an investment; ask questions of your professional legal advisor, and make an informed decision before you disclose your ideas.

 

4 Ways to Fund your Business

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We are often asked if there are options to help fund the growth of a business. If you innovate, then the answer is yes!

 

Let’s take a look at some of the options:

 

1. R&D tax credits

 

Research and Development credits (cash back associated with the tax paid on development work!) are available in a surprising number of countries now, almost 20 at the time of this writing, including Austria, Belgium, Canada, Denmark, France, Ireland, The Netherlands, Spain, UK and even the USA.

 

These are claimable even if you are recording losses, but are still innovating or developing new products.

 

Technological uncertainty? Use R&D tax credits for easy cashback!

 

The main criteria to qualify is quite straightforward – do you have any ‘technological uncertainty’ in your work? This is an extremely wide ranging criteria, and can apply, for example, to law firms developing in-house software to help with their internal processes, and to engineering firms taking new orders that require an iteration or two before the final product is ready to be mass-produced.

 

We talk to many engineering firms and software houses in particular which do not realise that they can make these claims.

 

And, are the claims difficult? Not really.

 

If you do not have the time to do the claim yourself, don’t rely on your accountant! For the first time, use someone with a technical (engineering or science) background who will work on a ‘no win/no fee’ basis.

 

With a technical background (which is the last thing an accountant has!), he or she will be able to drill down into the detail of your work to maximise your claim.

 

It can also be back-dated a couple of years.

 

And, it can be claimed annually.

 

After the first claim, if you then feel that you want to handle it yourself, you can crib the first claim.

 

Please feel free to ask for more information regarding these R&D tax claims, they are really are a no brainer to help fund your business growth.

 

2. Patent Box

 

 

The ‘patent box’ is still a relatively well-kept secret. For some reason, accountants still do not seem to be telling their innovative clients about this potentially lucrative tax reduction scheme.

 

In short, if you create an innovate product which is patented in at least one qualifying country, you can then claim 50% of your corporation tax back on worldwide sales of that part.

 

And, even better, if the patented item forms part of a larger product, the 50% corporation tax cut can be applied to the entire larger product!

 

For example, if BMW creates an improved air intake for the engines of their cars, and successfully patents it, then they can apply for a 50% company tax rebate on the entire vehicle that the air intake is used on.

 

And, better still, the tax cut is for worldwide sales of those BMW vehicles.

 

Patent Box gives a 50% company tax cut!

Similarly to the R&D tax credits above, nearly 20 countries currently operate a Patent Box system or similar.

 

But, isn’t patenting something difficult and long winded?

 

Not necessarily, if you use some strategy!

 

With your patent attorney, by understanding what you actually want to achieve, he or she can tailor the patent specification to limit the likelihood of objections.

 

And, particularly in the UK, it is simple to accelerate the patenting procedure. The quickest I have had a patent granted to date is 7 months from first filing.

 

Please feel free to ask for more information, if this is of interest.

 

3. Kickstarter

 

 

This is popular peer-to-peer funding platform that many have now heard of. There are also plenty of copycat platforms providing a similar format. 

 

With Kickstarter, you prepare your pitch to show the public your idea, the prototype, and the envisaged final product, and in return, the public can ‘pre-purchase’ the product before it’s actually ready. This pre-purchase funding then allows the creator to fund the actual building of the product.

 

So, what are the issues?

 

Firstly, many of the people who choose to fund a cool innovation do not realise that it is an investment, and not a sure fire purchase. As we well know from the various stock exchanges around the world, investments may decrease. It is a gamble. And Kickstarter is no exception. Many of the projects do not come to fruition or do not meet the minimum finding level required to release the capital to the creator.

 

ask the public to fund your idea by pre-purchasing

Secondly, a main reason that creators do not succeed in meeting their funding targets is that they do not know how to market their idea.

 

This is where a company called Funded.Today (www.funded.today) comes to the rescue. Although they will take a whopping 35% of the finally pledged amount, their expertise is in leveraging social media so that your Kickstarter pitch gains the traction that it needs. With that exposure, you are more likely to achieve and surpass the funding that you need.

 

Funded.Today has raised nearly $200 million at the time of writing, so they are definitely on to something.

 

Just remember, you need to have decided whether or not to patent your idea, and to have patent pending status for your creation if you are going to protect it, before you go live on Kickstarter. Follow this general rule of thumb, and you will not go far wrong. This is critical in most parts of the world.

 

4. Equity Release

 

Finally, let’s look at equity release.

 

Some banks (or their subsidiaries) are now able to take ownership of your intellectual property as security on a loan. Effectively, you are releasing equity in your patents and trademarks.

 

This is an interesting concept, and if you already have a patent portfolio plus are active in developing product, it is a potentially easy way to access relatively short term funding.

 

a short-term swap of your patents in return for a loan

Lombard Technology Services, for example, will base a loan on your R&D tax credit claims (see number 1 above) along with taking ownership of your intellectual property. Once the loan is repaid after an agreed, typically three to four years, period with a small amount of interest, the IP (patents, trademarks, designs, etc) rights are re-transferred back into your ownership.

 

Please feel free to ask for any further advice regarding any of the above options, plus other options that may be available dependent on your circumstances. Our passion is to see you succeed.

Would you Trust Amazon to Drive your Car?

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After the recent fatal accident by an Uber autonomous test-car killing a cyclist crossing the street (watch here), a recently granted Amazon patent hints at Amazon’s future focus in the tech field.

 

How can Amazon autonomously drive your car differently to the other big names in this field (Tesla, Mercedes, Uber, Google)? Let’s quickly dissect the Amazon patent (and how a competitor might circumvent it!)

Driver Assist Using Smart Mobile Devices” was published and granted by the US Patent and Trademark Office on 22 May 2018

 

US 9,975,483 entitled “Driver Assist Using Smart Mobile Devices” was published and granted by the US Patent and Trademark Office on 22 May 2018.

 

The first main claim of this application recites a method of providing operator assistance. It works by having a camera on one side of the device [e.g. a smartphone’s “selfie” camera] monitoring the driver’s face and determining which way the driver is looking. A second camera [e.g. the smartphone’s rear main camera] monitors the road ahead and looks for hazards.

 

If the rear camera sees a hazard which is too close and which is not within the driver’s gaze (which, remember, is being monitored by the ‘selfie’ camera), it provides an audible alert to the driver and gives a steering instruction.

 

The patent specification also gives an option for the App to control the car directly.

 

Given that the basic premise of this invention only requires a smart phone, it would appear that Amazon is considering providing self-driving-style technology to the masses, even those with older cars. An interesting and exciting prospect, if you’re trusting enough!

 

Unusually, this patent has only just been made publicly available, despite being filed back in 2013 (most patent applications will publish automatically after a year and a half). This is because Amazon requested non-publication, something which is available to Patentees in the US if they do not intend to file foreign equivalent patent applications.

 

Potentially, Amazon did this is because they did not want competitors to know what they were up to. This perhaps implies that they are quite serious about this technology, since competitors will monitor each other’s patent filings.

 

How would a competitor circumvent this patent?

 

How would a competitor, therefore, circumvent this patent? An easy option would be to copy the technology outside of the USA! If Amazon has only patented the idea in the USA, then they have no rights outside of that market!

 

The patent also has a claim to help people find their parked car. This works by the phone storing the GPS coordinates of the phone when it determines that the car stopped moving. For some people in Albright IP’s home town of Cheltenham, this bit of tech can’t come soon enough!

 

Albright IP amongst Europe’s Top Trade Mark Attorneys

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Europe’s highest-ranking filers of trade marks have been listed for the first time, and Albright IP has been ranked within the top 250 attorney filing firms in Europe. Collated by BIPP, IP data specialists based in Belgium, the figures are based on the total number of active trade marks on the European Union Intellectual Property Office (EUIPO) and the World Intellectual Property Organization (WIPO) registers.

 

Although Albright IP has been established for 10 years, it was up against many firms who have been filing trade marks for more than five decades, and overtaken many of them, proudly not only coming within the top 250, but achieving a ranking of 187.

 

Robert Games, Managing Director, Albright IP.

This is a fantastic achievement for the trademark team. We have only been around for a fraction of the time of many of the bigger firms and only filed our first trade mark in 2007. Yet in just over 10 years we have filed and secured significantly more trade marks than many of our peers, demonstrating the quality of our advice and service. What’s even more impressive is that this feat has been achieved by just two of our Directors! Julia House and Katie Oliver have between them filed every one of our EUIPO and WIPO trade marks to secure our position in the Top 250 EU Trade Mark Attorney Firms.

 

In the relevant period, the trade mark team at Albright filed over 1,350 trade marks in total and achieved their top 250 ranking through hard work, determination and a solid client base according to Julia House, Trade Mark Attorney and Director at Albright IP, who commented: “We have a great breadth of experience across all business sectors and our success with securing clients comes from our Director led approach. We stay personally involved with our clients, not only registering their trade marks but continuing to advise and monitor the relevance to their business at every step.”

 

Julia added “We have very strong international links with law firms across many countries. This close working approach means that our clients can tap into local commercial advice wherever needed, providing them with the best available trade mark advice for moving forward– which ultimately means we have a very high success rate when filing, prosecuting and enforcing trademarks.”

 

Albright IP Brexit update: May 2018

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The United Kingdom is scheduled to leave the European Union on the 29 March 2019. Whilst the precise terms of exit are yet to be agreed, in March 2018, the European Commission and the UK published the first draft of a Withdrawal Agreement. This is the most comprehensive document to date, although each of the proposals are open to further revision.

 

The Withdrawal Agreement touches on the post-Brexit administration and scope of EU intellectual property rights, including EU Trade Marks (EUTMs) and Registered Community Designs (RCDs).

 

The proposed Transition Period:

 

The Withdrawal Agreement provides that the transition period will end on 31 December 2020. It is envisaged that during the transition period i.e. from 29 March 2019 to 31 December 2020, the applicable European Union law will still be effective in the United Kingdom. Consequently, EUTM and RCD rights will continue to be valid and enforceable in the United Kingdom until at least 31 December 2020.

 

In addition, UK IP practitioners will retain their rights of representation before the European Intellectual Property Office (EUIPO) until at least 31 December 2020.

 

Points of agreement:

 

In terms of existing EU intellectual property rights, both sides have voiced the intention to create equivalent “cloned” UK rights, with the same filing, and priority dates and with no examination required. The proviso is that the rights in question are granted or registered before the end of the prescribed transition period.

 

“The holder of any of the following intellectual property rights [EUTMs/RCDs/Plant Variety rights] which have been registered or granted before the end of the transition period shall, without any re-examination, become the holder of a comparable registered and enforceable intellectual property right in the United Kingdom, as provided for by the law of the United Kingdom.”

 

Points of uncertainty:



What currently remains unclear, is the administrative procedures that will be put in place to transform and/or extend EU IP rights by the end of the transition period.

 

For trade mark rights that are pending at the end of the transition period, the owners will be allowed nine months to request a transfer and re-examination to the UK IPO, in order to retain the original filing and/or priority dates. This is very likely to incur an additional fee, and an inevitable delay in protection being granted.

 

A separate issue also to be addressed is the entitlement to representation at the EUIPO for UK practitioners, in a manner that will give reassurance to UK based rights-holders that they can continue to trust in the professional relationships that have been established.

 

The draft agreement remains silent in respect of unregistered designs. At present, the UKUDR is not a comparable replacement for the European UCD.

 

Summary:



For IP rights holders, as the months towards Brexit and the end of transition pass, seeking to secure separate UK and EU trade mark and design protection from the outset, is recommended. Whilst there are some reassurances that granted rights will be ‘cloned’, there is currently no parallel comfort being offered for pending applications.

 

Whatever the outcome of the Brexit negotiations, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union.

 

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