TSS Core 4: Competitive Strategy - Monday 8th November

1. ®
™
©

2. The Role of Intellectual Property
in Competitive Strategy
Matthew Howell
Senior Associate
Withers & Rogers LLP

3. The Role of IP in Competitive Strategy
• Intellectual Property ≠ Competitive Strategy!
• But IP should be carefully considered as part of
your competitive strategy
• Why?
• Intellectual Property rights are legal monopolies
that can be used to prevent others from doing
things
• So can protect and enhance your competitive
position

4. What is Intellectual Property?
Registered
Trade Marks
Patents
Common Law
Trade Marks
Registered
Designs
Know How
Utility Models
IP
Copyright/D
atabase
rights
Design
Right

5. • Protect technical features of a
product or process
• Allow owner to prevent commercial
dealings in the patented invention
• Up to 20 years duration
• Invention must be new and
inventive
• No non-confidential disclosure prior
to filing application
• Certain things are excluded by law
from patent protection
Patents

6. Software Patents – UK and Europe
• Computer programs “as such” are not patentable
in the UK and at the European Patent Office
• But it is possible to obtain protection for certain
types of “computer implemented invention”
• For the European Patent Office the invention
must produce a “technical effect”
• The UK Intellectual Property Office requires an
"inventive contribution" which is "technical" in
nature

7. Mary had a little lamb,
its fleece was white
Mary had
a little
lamb, its
fleece was white
as snow and everywhere
that Mary went, that lamb
was sure to go.
"Technical Effect" at the EPO

8. Software Patents – US Perspective
• Patentable inventions: any “new and useful
process, machine, manufacture, or composition
of matter, or any new and useful improvement
thereof”
• 3 specific exceptions to patentability: "laws of
nature, physical phenomena and abstract ideas”
• US Patent system traditionally more liberal on
computer programs than UK and EPO

9. Community Design Registration No.000748280-006 .
• Protect the appearance of a
product
• Allow owner to prevent
commercial dealings in products
identical to or similar to the
registered design
• Up to 25 years duration
• Design must be new and must
have individual character
• Application must be filed within 12
months of first public disclosure
Registered Designs

10. Registered Trade Marks
Community Trade Mark Registration No. 006314546
• Protect signs which distinguish the goods/services
of one undertaking from those of another
• Allow owner to prevent use of the mark registered,
or similar mark, in relation to the goods/services
for which it is registered
• Must be capable of distinguishing
• Words, logos, colours, shapes, sounds are
registrable
• Indefinite duration, renewable every 10 years
UK Trade Mark Registration No.2460723

11. • Identify what makes you competitive
• Can it be protected?
• If so, move quickly to protect it
• Mark your products and literature (pat.
pending, ®, ©,™) to ensure that
competitors are aware of your IP
• Be vigilant for infringers and enforce your IP
rights
• Use your distribution networks and supply
chain to help identify infringements
IP in Competitive Strategy

12. IP in Competitive Strategy
• Look at your competitors’ IP to ensure that
you do not infringe, and to find out more
about what they are doing and planning
• Protect improvements to your own
technology and potential improvements to
competitor technology
• Is there third-party IP in different fields that
you could exclusively licence in to improve
your product?
• Review your IP position regularly; your
strategy may change as your business grows

13. Example
• In 1991 25% of all vacuum cleaners sold in
the UK were made by Hoover
• In 2001 more than 50% of the vacuum
cleaners in the UK were sold by Dyson
• In 2001 Hoover’s market share had
dropped to less than 10%
• In 2010 Dyson’s market share was 40%
and operating profits were £190m

14. Example
Dyson DC 01Dyson DC 01
• 19 April1979: Dyson’s first UK
patent application filed
• 17 June 1981: European patent
application no. 0042723 “Vacuum
Cleaning Appliance” filed
• 21 August 1985: Dyson European
patent no. 0042723 granted
• 1993: Dyson DC 01 launched
• “The first vacuum cleaner not to
lose suction”

15. Example
• In 1998 Dyson sold 1.4m units worldwide,
generating revenues of £190m
• In 1999 Hoover launched the “Triple Vortex”
vacuum cleaner to compete with Dyson products
• Dyson instigated patent infringement proceedings
against Hoover at the UK High Court and won
• In the High Court judgement of 2000, Hoover was
ordered to stop supplying the Triple Vortex,
Dyson was awarded £4m damages

16. Example
• DC01 also protected by registered
design
• Dyson trade mark registered
• To date, Dyson has filed >1000 patent
applications
• 119 Community Design applications
• 65 Community Trade Mark applications
UK Registered Design No. 2027539UK Registered Design No. 2027539
UK Trade Mark Registration No. 2000035 (Filed 31/10/94)UK Trade Mark Registration No. 2000035 (Filed 31/10/94)
UK Trade Mark Registration No. 2316407 (filed 21/11/2002)UK Trade Mark Registration No. 2316407 (filed 21/11/2002)

17. • Identify what makes you competitive
• Can it be protected?
• If so, move quickly to protect it
• Mark your products and literature (pat.
pending, ®, ©,™) to ensure that
competitors are aware of your IP
• Be vigilant for infringers and enforce your IP
rights
• Use your distribution networks and supply
chain to help identify infringements
IP in Competitive Strategy

18. IP in Competitive Strategy
• Look at your competitors’ IP to ensure that
you do not infringe, and to find out more
about what they are doing and planning
• Protect improvements to your own
technology and potential improvements to
competitor technology
• Is there third-party IP in different fields that
you could exclusively licence in to improve
your product?
• Review your IP position regularly; your
strategy may change as your business grows

19. • UK Intellectual Property Office: www.ipo.gov.uk
• Free online patent searching: http://ep.espacenet.com/
• Free online trade mark searching
UK: http://www.ipo.gov.uk/types/tm/t-os/t-find.htm,
European:
http://oami.europa.eu/CTMOnline/RequestManager/en_S
earchAdvanced_NoReg
• Free online design searching
UK: http://www.ipo.gov.uk/types/design/d-os/d-find.htm,
European:
http://oami.europa.eu/RCDOnline/RequestManager
• Patent attorneys!
Resources

20. Thank you
Matthew Howell
mhowell@withersrogers.com
© Copyright Withers & Rogers LLP 2010