Intellectual property
Protecting ideas, designs and brands in the real world
Sean Cummings and Laura Kehoe
European Patent and Design Attorneys
10 February 2017

Topics
 Quick recap on IP
 The Guinness ‘widget'
 Getting it right - the Workmate®
 Getting it wrong
• Various ways to lose IP rights
 How do you know if a patent is infringed?

Intellectual property is just like real
property…

… except that products embodying IP
can be sold over and over again

Why do we buy stuff?
 Branding?
 Looks?
 Functionality?
 Price?
IP is at the heart of the purchase decision

The registrable forms of IP
 Patents
• functional concepts
• how things work, what they’re made of,
how they’re made
 Designs
• aesthetic concepts
• how things look
 Trade marks
• badges of origin
• distinctive words and logos

GB 2183592

Patents – key data
Many of the fields of
a patent document
are searchable in
electronic databases,
including:
 Applicant name
 Inventor name
 Classification
 Attorney
 Title

Where can I search for a patent?
 Publicly-available electronic
databases, such as:
• Espacenet – worldwide
• Patentscope – PCT applications
• National Patent Office databases
• e.g. Irish Patent Register
• e.g. European Patent Register
• e.g. USPTO PAIR – United States
Patents

Structure of a patent
 A patent has four parts:
• Description – describes the
invention in enough detail for a
person in the field to put the
invention into effect.
• Claims – sets out the legal
monopoly claimed by the
inventor
• Abstract – for searching
• Drawings – to support the
description

Patent claim for the ‘widget’
“A beverage package comprising a sealed, non resealable, container
having a primary chamber containing beverage having gas in solution
therewith and forming a primary headspace comprising gas at a pressure
greater than atmospheric; a secondary chamber having a volume less
than said primary chamber and which communicates with the beverage in
said primary chamber through a restricted orifice, said secondary
chamber containing beverage derived from the primary chamber and
having a secondary headspace therein comprising gas at a pressure
greater than atmospheric so that the pressure within the primary and
secondary chambers are substantially at equilibrium, and wherein said
package is openable, to open the primary headspace to atmospheric
pressure and the secondary chamber is arranged so that on said opening
the pressure differential caused by the decrease in pressure at the
primary headspace causes at least one of the beverage and gas in the
secondary chamber to be ejected byway of the restricted orifice into the
beverage of the primary chamber and said ejection causes gas in the
solution to be evolved and form, or assist in the formation of, a head of
froth on the beverage.”

Odd one out - celebrity inventors

Typical patent timeline
= €5k approx.

An example of how to do it well

And not so well…
Registered design The product The competitor

And not so well…
UK Trade Mark Registration No. 1373561
List of goods:
Record label included in Class 16

And not so well…
 The patentee tested its prototype traffic light
controller on public roads before its patent
application was filed
 Workers performing the trial were told it was
important to keep information secret - so, although
the controller box was in a public place, it was
locked
 However, the public could have tested the way the
traffic lights worked using the controller and worked
out the basis of the invention - the patent was held
invalid as a result
Lux Traffic Controls Ltd v Pike Signals Ltd

The Knowledge Development Box
 Where an Irish company spends on ‘R&D’
• resolution of scientific/technological uncertainty
 …and that R&D gives rise to ‘IP’
• software or patented/patentable inventions
• but not marketing-related IP such as TMs
 …and IP-generated income flows back
• sale of patented goods; royalties; damages
 net IP-attributable profit taxable at 6.25%

Patent infringement
 Is the patent in force?
• <20 years old; renewal fees paid?
 Does/could the patent cover your territory?
 Pending applications

Claim analysis
 Look at the claims, especially at the
‘independent’ claims (always Claim 1 and
possibly others)
 List all of the features of each
independent claim
 Look at each independent claim
individually
 Do you take every feature of any
independent claim?

Simple example

Simple example
 Imagine the first patent for a car – the
first self-propelled vehicle. It had three
wheels, like a tricycle, and a petrol engine
driving two of those wheels.
 An independent claim to that car could
have been:
A vehicle, comprising:
three wheels; and
a petrol engine driving two of those
wheels.

Is that claim too narrow?
 What about a four-wheeled car?
 Or a motorbike?
 And what about a diesel engine or an
electric motor?
 Or four-wheel drive?

What should have been claimed
 Its broadest independent claim should
have been:
A vehicle, comprising:
a set of wheels; and
an engine driving at least one of
those wheels.
 Non-essential features - e.g. how many
wheels - should go in dependent claims

What if someone else improves it?
 If the broadest claim was:
A vehicle, comprising:
a set of wheels; and
an engine driving at least one of
those wheels.
 Then what happens if a later inventor
comes up with a four-wheeled, four-wheel
drive electric car while the original patent
remains alive?

Something like this...

Trotter v Tesla
 Tesla infringes the Trotter patent, even
though Tesla’s car is better than Trotter’s
 Tesla could get patents of their own for
their improvements to Trotter’s car
 But Tesla still wouldn’t have freedom to
operate

So Trotter wins? Not necessarily...
 Trotter wouldn’t be able to use the
improvements patented by Tesla either
 How to resolve this to mutual benefit?
 Cross-licensing!
 Remember – patents are a negative right
• a right to stop, not a right to do

Take-home points
 Patents as a source of learning
 Delay isn’t always a bad thing
 Interaction between different forms of IP
 IP is unforgiving of mistakes
 Consider tax benefits

Thank you!
Sean Cummings and Laura Kehoe
European Patent and Design Attorneys
sean.cummings@keltie.com laura.kehoe@keltie.com
Keltie Limited, Galway Technology Centre, Mervue Business Park, Galway
t: 091 730742
www.keltie.com