Analysing IP – put simply
I recently came up with the ‘6T’s’™
framework to provide a simple structure for executives to analyze
intellectual property. Here it is
— please let me know what you think.
Intellectual property is all about monopolies. To get a handle on the extent of the
monopoly, and its ramifications, think about:
- Type of IP
- Time (until expiry)
- Territories (in which IP is held/registered)
- Terminated (ie the status of
the IP — is it in force)
- Technical Scope of the monopoly
- True monopoly? (validity)
You should be able to assess items 1 and 2 yourself. Items 3 and 4 you can (generally) get from
a searching company. Items 5 and 6
will require expert advice from a qualified attorney, and (depending on the
issue at hand) in each jurisdiction of interest to you.
This is obviously a simple tool
and there are many, many jurisdiction-specific complexities. It is meant to trigger a useful line of
questions and is not the ‘last word’ in any jurisdiction on the
Type of IP
Although they overlap,
different types of IP cover different things.
In (very) brief form:
Patents cover the practical
implementation of a useful idea.
Trade Marks cover a sign used to
indicate a connection between the originator and their goods or services.
Registered Designs cover the
‘visual look and feel’ as applied to a particular article.
Copyright covers pretty much anything
as soon as it is reduced to (recorded in) material form. (Yes, this is over-simplified.)
Confidential Information covers things
that you can (and do) keep secret.
Don’t forget that they
overlap — so for example the shape of a simple mechanical device could theoretically be protected by all of
the above forms of IP.
All of the other aspects of the
monopoly are irrelevant if it has expired.
So, this is an easy first item to check.
Patents — generally 20 years
from filing a ‘full’ application (eg. a
PCT application). (Extensions / SPCs are possible depending on the technology and
Trade marks — for as long as you
pay maintenance fees
Registered Designs ~ 10 years
Copyright ~ Life of the author plus
‘x’ years (‘x’ depends on the jurisdiction: eg. 50 or 70)
Confidential Information — for
as long as you can keep it secret.
With a simple search, you can
find out whether registered intellectual property protection has been sought
in countries of interest to you. This
obviously applies to Patents, Trade Marks and Registered Designs, but not
Copyright or Confidential Information.
(In the US
you can check copyright registration at www.copyright.gov — but something may still be
protected by copyright, even if not registered.)
(status of the IP)
help of a searching company you can obtain a reasonable indication of whether
payment of maintenance fees is up to date in countries of interest to
you. Here are a couple of provisos
to be sure of status information,
you will need to get local attorneys in each country to confirm (and even
then sometimes they won’t be able to tell); and
IP rights can be revived, even after they have lapsed — so you may need
expert advice about this.
definitely need an IP expert to assist you with this. To give you a flavour of the analysis, it
is (mostly determined by):
for patents – the words of the
for trade marks – the degree of
similarity to the registered mark and the classes of goods and services for
which the mark is registered compared to those in which the alleged
infringement has occurred;
for Registered Designs – the
similarity to the Design
for Copyright – whether there has
been copying and the extent of any copying;
for Confidential Information –
whether there was a prior obligation of confidence and whether it was
monopoly (validity of the IP Right)
is an area where you will need specialist assistance.It is possible to challenge the validity of
most intellectual property rights.This may be via type-specific attacks (such as obviousness for patents
or descriptiveness for trade marks), or based on ownership, or rights to the
IP by the other party.