Analysing IP - put simply

Copyright Wednesday, June 14, 2006 Duncan Bucknell Company

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.

Explanation

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 applicable law.

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.

Time until expiry

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 context.)

Trade marks — for as long as you pay maintenance fees

Registered Designs ~ 10 years

Confidential Information — for as long as you can keep it secret.

Territories

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.)

Termination (status of the IP)

With the 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 (amongst others):

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

some IP rights can be revived, even after they have lapsed — so you may need expert advice about this.

Technical Scope

You will 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 claims;

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 breached

True monopoly (validity of the IP Right)

Again, this 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.