Published on February 17, 2014
Pitching your idea and understanding your IP Position workshop Marks & Clerk LLP, Manchester 14th February 2014 10:00 – 16:00 Connecting people, creating opportunities
Pitching session 10:30: Welcome – Sam Winder, Business Growth Hub 10:35: Know your audience – David Smith, AXM Venture Capital Ltd 10:50: Expert Training Session: Pitching to the Panel – John Owens, Instruct 11:50: Sam Winder, Business Growth Hub 11:55: Pitches Connecting people, creating opportunities
Intellectual Property Session 13:05: Sam Winder, Business Growth Hub 13:30: Expert session: Understanding the value of your IP: Jorandi Daneel, Trademark attorney, Marks & Clerk Mike Williams, Software specialist patent attorney, Marks & Clerks 14:30: Interactive session 15:00: Close Connecting people, creating opportunities
Welcome Sam Winder Business Growth Hub Connecting people, creating opportunities
Launchpad 14 February 2014 North West Fund 4 Digital & Creative
The Team - AXM Venture Capital The Team has significant experience in investing and managing digital, media and creative investments. Investment Managers David Smith Fred Mendelsohn Joanne Evans Rupert Wingate-Saul Investment Committee Simon Levene Ian Livingstone Shawn Luetchens John Handley
NWF4D&C invests in digital, media and creative businesses in the North West region Example sub-sectors: • • • • • • • • • • • • • Online Publishing Advertising and Marketing Services Music Distribution Video Content Gaming Software and IT Services Social Media Social Commerce Apps Development Consumer Data Analytics Convergent Technologies Hardware Telecoms
We are one of the most active tech investors in the UK "Of the venture capital investors making [technology] investments, the busiest have been… the North West Fund” – Financial Times Our initial investments range from £50,000 to £1.5m • To date we have invested £7m in 25 companies though a series of initial and follow-on investments
Know your audience • Trade or financial investor, angel or institutional, debt or equity, specialist or generalist, debt or equity • Anticipate their respective questions • Have questions of your own – about respective level of non-financial support, for example, or costs and timeframes • Need to understand : • • • • Their level of understanding of your proposition; pitch at a sympathetic but not patronising level Their process and what they want out of your initial pitch What attributes are they looking for – risk / return balance, income or capital gain, length of investment and exit….and what can you realistically flex to suit their needs Confusingly, investors all work in their own specific ways!
Venture Capital • • Provides high growth businesses with finance In return for an equity stake VC finance Founders equity VC equity Founders equity Returns come in the long-term, usually from the sale of the company
Venture Capitalists look for… Strong management team Strong commercial model Potential exit identified A business plan which meets these criteria will attract an investor’s attention
“It’s more than just the money…” Leverage additional finance Enabling further rounds Introductions Discipline, corporate governance and process Business expertise Endorsement and credibility Refining and developing the business model
The North West Fund 4 Digital & Creative
Expert Training Session: Pitching to the Panel John Owens Instruct Connecting people, creating opportunities
Sam Winder Business Growth Hub Connecting people, creating opportunities
Pitches Connecting people, creating opportunities
Lunch Connecting people, creating opportunities
Sam Winder Business Growth Hub Connecting people, creating opportunities
Branding due diligence by Jorandi Daneel
Trade Marks • Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings smells designs letters packaging words sounds moving images numerals shapes
Exceptions • • • • • • • • Devoid of distinctive character Descriptive Generic Certain shapes Contrary to public policy / accepted principles of morality Deceptive Use prohibited by law Protective emblems
Trade Mark Searches – why should you make this a priority? • • • • Reduce risk of Infringement Freedom to use Save costs on filing programs Avoid unnecessary oppositions • Building a brand without carrying out a trade mark search could result in considerable loss of revenue further down the line
Goods and/or services Domain names Company names Identical Comprehensive Common law/ unregistered rights
Confusing similarity • Risk that the public might believe that the goods come from the same or economically linked undertakings • Includes association • Global comparison of all relevant factors • Visual, phonetic, conceptual similarities • Similarity between goods / services
Unfair advantage or damage to distinctive character or repute of trade mark • • • • • • "Ride on the coat-tails" Registered trade mark with reputation Regardless of similarity between goods / services Dilution of distinctive character (“blurring”) Misappropriation of attractive powers and prestige Damage to reputation (“tarnishment”) "Be a real spec saver at ASDA"
Types of Filings • UK application • CTM – All 28 countries of EU • International – Madrid Protocol • Currently 91 countries • Includes Australia, China, European Union, India, Japan, New Zealand, Russian Federation. UK and US
Typical Filing Strategy of an Early Stage Business Registration 0m UK availability search Further searches territories UK application 4m 6m File International/ other nationals Priority deadline
Points to consider • • • • • Priority claim Are trademarks registered in all territories and business classes? Do you have ownership of the IP rights on your logo design? Are trademarks properly protected? Are trademark rights sold, shared or licensed? Once registered, protected 10 years and renewable thereafter for unlimited 10 year periods provided you paid the renewal fee.
Trade Mark Infringement • • • • Only registered trade mark can be infringed Acts done without consent of proprietor Use of identical mark in relation to identical goods and/or services Use of similar mark in relation to similar goods and/or services where there exists a likelihood of confusion / association • Use of identical or similar mark in relation to goods / services where use is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark In the course of trade
Enforcement of trade marks Passing-off Customs
Remedies • • • • Injunction Damages Account of profits Delivery up • Disclosure
Have you carried out freedom to operate searches? NO Do you know that you may be infringing on another brand? YES Have you registered your trade mark? YES In all territories and business classes? YES Do you understand the risks? Do you own the IP rights of your logo? NO Speak to a trade mark attorney!
Questions? Marks & Clerk LLP T +44 (0)161 233 5800 E email@example.com Copyright Marks & Clerk LLP 2014
Patent Due Diligence Mike Williams Software Patent Attorney
Your Local Partner in a Global Network UK Canada UK Offices: Manchester Birmingham London Cambridge Oxford Aberdeen Edinburgh Glasgow Luxembourg China France Malaysia Hong Kong Singapore Australia
Our UK Services • Patentability Assessment/ Searching • Patent, Design, Trade mark filing & prosecution • Contentious IP Issues • Litigation & Dispute Resolution • Commercial Matters • Copyright & Domain Names • Assignments & Licensing • Commercial Freedom to Operate/ IP Due Diligence • Valuation Services • Design Services
What is a Patent? • A territorial bargain – disclose invention in return for a monopoly for a limited period • Maximum duration of 20 years (most countries) from filing • Defines a negative right – the basic rule • It’s a right to stop others from using your invention • Not a right to use your invention
Territorial Scope • Each patent provides protection in respect of one country only: • National patents, e.g. UK, US, JP, CN • There are no international patents, only international patent applications • There is no EU patent (yet) but there is a European patent system where a single patent application becomes a bundle of national patents on grant
What is Patentable? • Products, Devices, Machines, Methods and Processes • From the simple to the highly complex • Must be: • Novel • Inventive • Capable of industrial application • Must not be excluded from patentability
The general European/UK position • The law provides a list of “things” excluded from patent protection, including: - Computer programs - Business methods - Mathematical methods - Methods of performing mental acts - Methods of playing games - Presentations of information Only excluded as such
Are computer/software implemented inventions patentable? In many cases, yes! • Programs having real world effect - Process Control - Image Processing - Security/Compression - Improvements in computer performance - Improved compilers - Operating system features - Improved design processes for making physical things
What determines patentability? (Europe) A technical solution to a technical problem 1. Compare the invention with the closest prior art 2. Identify the differences 3. Is there a technical problem solved by the invention? • Not just a business/administrative problem? 4. Is the invention a technical solution? • Not just circumventing the problem?
A non-patentable Example …
COMVIK – No technical problem • Technology – dual identity SIM cards • Difference between the claimed invention and existing technology i. SIM is allocated a number of identities ii. the identities can be selectively activated iii. the selective activation is used for distributing the costs among the identities • Problem: how to eliminate inconveniences caused by distributing costs (solved by ii. and iii.) • “Distributing costs is a financial and administrative concept which does not require the exercise of any technical skills or competence” • Therefore not a technical problem. • Solving actual technical problem was mere implementation - obvious from existing technology
A patentable example …
VICOM - Image Processing Technology An image processing method which applies a mathematical method to a digital image, so as to produce a sharpened digital image Why is it patentable? The mathematical method is applied to image pixels rather than abstract numbers. What is inventive is the application of a “technical process” in the form of the mathematical method.
SYMBIAN - Improvement in computer performance Technology A dynamic link library (DLL) with a link-by-ordinal part and a link-by-name part. Individually known but not known in combination. Why is it patentable? It solves the technical problem of providing the speed of link-by-ordinal without the problem of system instability. Provides a real world technical solution because it makes the computer a better computer generally. • Not only for a single application
The US Position • Has been more lenient • Anything under the sun that is made by man… • Business methods are generally patentable • No “technical” requirement • But recently more limiting – prohibition on patents for inventions which are too abstract • “Machine or transformation” test – tied to specific machine or data undergoes some transformation
Other countries • Countries fall into four categories regarding protecting software and business methods: A. Almost anything is patentable (Canada?) B. Patentable if it is implemented in technology e.g. USA, Japan (Australia?) C. Patentable if it involves a technical contribution e.g. European countries, (India?) D. Not patentable e.g. Pakistan, Thailand, (India?)
The Patenting Process
Patent Application Timeline: UK Patent Application is Published 0m File National Patent Application 12 m 18m 18 m Request Prior Art Search (can be requested earlier) Examination 24 m Request Examination (can be requested earlier 36 m 48 m Application in Order for Grant
International Treaties • Patent Co Operation Treaty (PCT) • One PCT patent application is equivalent to applications in > 100 countries • Can also file a EP application through PCT • Can file in English, delaying costs of translations for up to 30 months from priority • 148 member states
PCT application claims priority from UK application PCT Timeline 0m 12 m 18 m UK filing date PCT filing date Publication of PCT application 30 m National/ regional phase entry PCT matures into national applications
PCT Member States Member states Non member states
Value of Patents • Competitive defence • Offensive strategy • Licensing opportunity • Bargaining chip – e.g. cross licensing • Identifiable asset • Marketing tool
Points to consider • Level of risk Internal investigation of existing IP portfolio • Freedom to operate searches • Which technologies are essential for achieving your business objectives? • Of these which are going to infringe 3rd party rights? • Territories important to business • Clarification of ownership
A Summary Is your technology patentable YES NO Have you considered keeping your innovations as a trade secret? Do you have NDAs in place? Can you protect the design? Do you have NDAs in place? Have you carried out patent due diligence? Do you have a territories strategy in place based on business aims and budget? Have you considered one PCT application? Speak to a patent attorney!
Questions? Marks & Clerk LLP T: +44 (0)161 233 5800 E: firstname.lastname@example.org Copyright Marks & Clerk LLP 2014
Interactive Session Connecting people, creating opportunities
Contact us to find out more! Phone: 0161 359 3050 Email: email@example.com @bizgrowthhu b Business Growth Hub Connecting people, creating opportunities
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