IChemE in association with Beck Greener - IP Q&A

Speaker: James Stones & Catherine Jewell, Beck Greener LLP

James Stones & Catherine Jewell: So the question is, what's the protected duration time for the various types of unregistered intellectual property? Well, it depends on the type of unregistered intellectual property we're talking about. For designs, for example, there are different types of unregistered design and how long the protection lasts depends on what type. If you were talking about the shape and configuration of 3D objects, for example, then protection would be the shorter of 10 years from first sale or 15 years from first creation. Whereas if you were talking about the appearance, you would be looking at 3 years from the date you make the design public. Those are UK rights. If you were talking about the EU design, you would have protection for 3 years from the date you make this public in the EU but no protection outside the EU. So there's a lot of variation. If you're talking about something like copyright, which is a very commonly used on registered right, it depends on the type of work. So for a literary work, you'd be looking at the life of the author plus 70 years. But there's a lot of variation across the different kinds of works. If we turn to trademarks, so we're talking about passing off potentially. It's not, there's not really a fixed duration is to do with. Whether you've used your sign enough to generate goodwill, and whether that goodwill is still in existence at the point at which you want to take action. So there really isn't a fixed duration for that.

James Stones & Catherine Jewell: Right, so the question is, can something be patented if it is confidential? Well, the short answer is yes, it has to be confidential. If it's not confidential, then it will lack novelty. The slightly longer answer is, while it would be confidential at the start, of course, a patent application will be published and so it will no longer be confidential after 18 months.

James Stones & Catherine Jewell: OK, so the next question is, you mentioned confidential information have limited protection, how is this dealt with in terms of plant site visits? So I think most plants don't allow unauthorised access. Obviously if you are allowing unauthorised access, then you probably want to stop that and make it so that access is controlled. So make sure visitors sign in, they're signing up to keeping confidential what they see. Effectively, this is like a form of a non-disclosure agreement, I suppose. I interpret the question as meaning how do we keep our confidential information confidential if we have people in and out of our site? And I think it's all about access really. Yes, and I, and I'm simply asking them to keep what they see to themselves. So there's a contractual obligation and making sure they don't have access to areas that they don't need to have access to.

James Stones & Catherine Jewell: So, the next question is if using images from the internet in reports and presentations, considered copyright, clip art in PowerPoint, do they need referencing, Catherine? So it's a good question. I should make it clear that neither James nor I are expert in copyright law. We have a working knowledge, but I assume what's meant by the question is, is this kind of use considered potentially considered copyright infringements? The answer is going to be yes, it could be if you have copied an image and you're reusing it exactly. Yes, that could be copyright infringement. It might fall within one of the exceptions to copyright infringement. There are lots of exceptions, things like teaching, parodies, criticism, news reviews, helping the disabled, there are lots of exceptions around that. Private non-commercial study or research also has exceptions. But this is a very, you you need to look at the detail of the exceptions to be sure whether you're within or without. I would suspect that something like clipart use is going to fall within the terms of the licence for the software. So if you've, if you've bought the software under the licence, I would imagine there's going to be something within that licence about use of clip art specifically. For other images, images off the internet and so on. You might strictly speaking, need permission from the copyright owner. I would suggest that at least you reference the source and the owner of the copyright. But yes, this is something where copyright needs to be thought about and and considered and it's quite a complex area. It's certainly a complex area. I would just add to that that the the test if you like is, is there, is there going to be a commercial gain from this report or this presentation. If it's an internal report, internal presentation, that's unlikely. So, you know, you can be more relaxed about it. If it's external, if you are being paid to give presentation or something, then, you need to be more alive to the issues. But the golden rule is just reference, the owner if you can.

James Stones & Catherine Jewell: Right, so the next question, how on earth does Aldi get away with their multiple products that are so close to the original? Now, of course, they don't always. They don't always, but it's a great question, and these are the kinds of cases that often come up in the press, and can can cause a degree of outrage. And we are gonna be talking a lot more about these kinds of cases and these kinds of issues in the trademarks and designs event, which is right at the end of this learning series. So if this is an area of interest, you should definitely come along to that. As James said, actually they don't always get away with it. In fact, in the recent case, Aldi and Thatchers cider, in fact, I think they have not got away with it. But where they do, it's generally to do with just enough of a distinction on every individual type of rights. So the name of the product, the logo they're using, the packaging, the shape, and so on. It's just enough distinction on each of those different types of rights and grounds to keep them clear overall. But it's a, it's a fine line and sometimes they have enough of a distinction and sometimes they don't quite. And we'll be talking a lot more about copy caterpillars as I like to call them, particularly in the food and drinks industry in that event at the end of the series. And just, I think it's fair to say that Aldi's IP, in-house IP department are very busy. I think they probably are.

James Stones & Catherine Jewell: So the question is, what is the state of impact of AI on copyright or patentability? Well, I think the first thing to point out here is, neither Catherine nor I are experts in artificial intelligence. So we're both chemists and deal with chemical engineering, that sort of, sort of thing. What I would say is I would direct everybody to our presentation in May. Which will be given by John Markham, colleague and fellow partner of ours. And that presentation will be all about computer implemented inventions and we'll be talking about, AI inventions and patentability. What I would say is that it is very much an evolving area of law, it is new technology, it wasn't envisaged when the laws were being created. And so, it is a hot topic and there's going to be a lot of development in this area in the coming years. I just add in the context of copyright, will depend a little bit on what kind of AI you're talking about or machine learning you're talking about, what is it actually doing? Is it, is it copying or is it assimilating information and then regurgitating that in a different format, you may be intertwined with other information. Is it taking a substantial part of a work? Is it being used in a fair way? Does the use for with an exception, it's a complex area of law and as James said, it's an area which is evolving.

James Stones & Catherine Jewell: OK, so the next question is on the subject of copyright for technical reports to proof copying, would the wording need to be exactly copied? Well, James, I think we, we did address this question, live at the end of the first lecture. What we can say is if the identical wording is copied, then it seems fairly certain that there has been infringement. If there's been rewording, then it's going to depend on how substantial part of the work has been taken, whether there's been fair dealing, whether it's within an exception, and, and so on. A 'substantial part' is not actually defined in the law, but the courts have interpreted that to mean a qualitatively significant part of the work, even where it's not a large part of the work. So actually, even a small portion of the whole work can still be a substantial part. So you need to be careful where you reproduce wording. And there are of course things that you can do to in effect protect your own copyright in a work, you would indicate that you consider it to be a copyright material by putting little C in a circle. We're all familiar with that symbol. Adding your name, so you're identifying the owner of the copyright and the year that it was created, and what that does is it notifies the reader of that work that you consider that to be a copyright protected work, you're the owner and when it was created.

James Stones & Catherine Jewell: OK, so the next question is, why is it that filing a patent is so expensive? What options are there to assist in filing a patent money wise? Well, I think it's fair to say that Catherine and I both asked this question a lot. Inventors obviously are very concerned about the cost of securing patent protection for their inventions. And I think, you know, we are alive to the point that actually if you're comparing the cost of obtaining patent protection to everyday costs, then yes, it is expensive. But at the end of the day we're talking about securing a commercial tool, we're talking about securing an opportunity to have a period of exclusivity on which you get a return for your investment. And the patent system is very complicated and you actually need professional advice, to navigate that, appropriately. Similarly, it's patents are territorial, and consequently you need to go through the same process in each country where you are interested in patent protection. So the costs do mount up. But from a commercial perspective, I would suggest that actually the costs are not that high when you compare them to other corporate costs that are incurred by a business. As in terms of options, money wise, well, you're looking for funding bodies, bodies that do give grants, to inventors or to develop new technology and so on. These grants do exist, I understand. I'm not, I can't list, a series of, of sort of sources of grant money, in the chemical engineering sector. But I think some investigation would reveal that some are, available. I would also say that it's not just about finding funding for for filing the patent applications. Also having a patent portfolio enables you to get funding for research, because you are showing that the innovations do work, that they are protectable and, and so on. And we will talk more about this in the business case webinar which is towards the end of the series. October? 23rd October I think. Yes, so I think we will definitely be touching on costs, and how to decide where to spend your money in an IP sense much more in that webinar.

James Stones & Catherine Jewell: So the next question is, how is IP ownership managed in collaborations between academia and industry? And I think this is largely going to be about patents really in research between academia and industry. Yes, well, I think the first thing to, to mention is that our very next session actually, through the webinar series, is going to be on this very issue of inventorship and ownership, and that's on the 27th March 27th March. So I don't intend to go through everything now in any detail and answer to this question. I mean, general rule of thumb in patents, the inventor is the first owner, but it does depend on the circumstances. It depends on the terms of their employment contract. It depends on whether there is any form of assignment in place. Before a collaboration comes into effect, there's obviously a period of commercial negotiations between the various parties, and it is absolutely vital that the issue of ownership is nailed down from the start. It not only nailed down, not only agreed between the parties but actually written down and signed off by everybody so we all know where we stand from the start of any collaboration. Those discussions must necessarily be upfront, transparent, and very frank, and you need to get to the bottom of this. Don't avoid the issue. Don't avoid the issue, exactly.

James Stones & Catherine Jewell: And the next question is if I design a tool, design, etc. while working for an employer during work time and using work equipment, is that my IP or my employer's IP? This is quite an interesting question. I have to assume that if you are coming up with this tool, designing this tool during work time and using work equipment that you must be employed to come up with inventions or new designs and so on. In which case the issue is probably quite clear that it belongs to the employer. If on the other hand you're not employed to do that, you're employed to do something completely different and yet you're still spending work, time and resources coming up with new inventions I think there's an awkward conversation with your employer coming up. But what I should say is that we, that again, the next session on the 27th March will be something where we talk about inventorship and ownership in more detail. So we'll go over these exactly these issues in that session.