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Managing IP for Universities and Spinouts – what I wish I’d known four years ago

imperialOn 25th May 2016, we were fortunate to welcome Jeremy Holmes, the IP Due Diligence Manager of Imperial Innovations, to Keltie to present a lunchtime talk. This post begins by outlining Jeremy’s background and then delves into what he has learned from his experience in managing IP for Universities and spinouts, finishing off with how commercialisation works at Imperial.

Early career and move to IP

Jeremy’s career began in academia – following an undergraduate degree and PhD in Chemistry at Cambridge University, Jeremy spent two years in Strasbourg working with Nobel Laureate Professor Jean-Marie Lehn. After this, he joined the R&D function of ICI as a research chemist where he worked in a variety of roles including a Royal Society Industrial Fellowship at Edinburgh University and three years in the Netherlands for an ICI subsidiary. In 2000, Jeremy entered the IP profession by training in-house at ICI, AstraZeneca and Reckitt Benckiser and is now a fully qualified UK and European Patent and Design Attorney.

During his 12 years of working as an in-house Patent Attorney he gained a wealth of technology transfer experience which led him to Imperial Innovations where he joined as Patent Attorney and IP Due Diligence Manager just over 4 years ago. Jeremy’s role at Innovations is to manage IP and Patent Searching resources and to ensure that thorough and timely due diligence is carried out on investment opportunities, as well as to act as an in-house consultant on IP issues. This includes managing: the filing of approximately 60 new patent cases a year; the IP of spinouts; and the due diligence activities of the investment funds of Imperial College as well as the University of Cambridge, the University of Oxford and University College London.

The changing face of innovation – what are Universities looking for? (more…)

Brexit – IP Myths and Misconceptions

brexit-1481028_1920As far as IPcopy is concerned, the level of political debate recently has not risen much beyond playground banter with facts and detailed arguments being sacrificed for soundbites and quotable political mantras such as “Let’s take back control”, “Let’s make Britain/America great again”, “We’re gonna build a wall” etc. It seems politics these days just requires the collective unconsciousness to be exposed to such sayings over a long enough period of time to ensure the votes follow…after all, who needs experts, eh? (more…)

MIP – IP IN ASIA FORUM 2016 – 23 June 2016 – London

Managing IPMIP held its IP in Asia Forum at Le Meriden Piccadilly, London, on 23 June 2016.

The first talk gave an overview of trade mark protection in China. Dr Guan Tang, a senior lecturer at Queen Mary University of London, looked at the academic view. She noted that there are three key dimensions to Chinese trade mark law; (1) the public interest in promoting a socialist market economy, (2) consumer rights, and (3) the rights of the proprietors of trade marks, and that there appears to be a conflict between the requirement of promoting a socialist market economy and protecting right holders. Next on the agenda was a review of the recent revisions to Chinese trade mark law. In this regard, the key points were the speeding up of the examination procedure, extending the scope of protection (sound marks are now registrable), tackling IP squatting and allowing for higher damages and penalties. Whilst it is Dr Tang’s opinion that the current enforcement of trade mark rights in China remains unpredictable and has not significantly improved, the law is now better written such that there is hope for the future provided it is managed correctly. (more…)

IP in the UK after the Brexit Referendum

GB+EU flagOn 23 June 2016 the UK public voted in favour of the UK leaving the EU (commonly referred to as ‘Brexit’). If and when the UK formally starts the exit procedure, there will be at least a two-year negotiation period before the exit itself occurs. So, any changes won’t be implemented for some time yet.

Any UK national IP rights will be unaffected by Brexit. Some EU IP rights that have effect in the UK will be affected to different extents. Crucially, no IP rights will be lost as a result of Brexit, although some transitional measures are inevitable.

IPcopy takes a look at the key impact Brexit will have on IP, and what you should be considering now. (more…)

Eye D (Case review O/094/16 – Opposition & Invalidity)

Eye D

This post contains a case review of O/094/16 (EYE D) Opposition – 10 February 2016; O/094/16 (EYE D) Invalidity – 10 February 2016.

Background

The matter concerns Vision Care At Home Limited (‘VCH’) and Visioncall Limited (‘VL’), both concerned with eye care passports or reports primarily aimed at care homes for the elderly to assist staff in identifying the correct glasses to be worn by those being cared for.

VCH applied to register the mark  under Application No. 3032938, as well filing a declaration of invalidity against VL’s UK Registration No. 2652006 for EYE D on the basis of Sections 47(2) and 5(4)(a) and Sections 47(1) and 3(6) of the Trade Marks Act 1994 (‘the Act’). VL later opposed VCH’s application on the basis of Sections 5(2)(b), 5(3) and 5(4)(a) and Section 3(6) of the Act. (more…)

Bad Faith and Trade Marks in China

Great WallAs IPcopy discussed back in 2013, Trade Mark Squatting has long been a concern of European businesses considering entering the Chinese market. Too often, European brands which have not registered their trade marks in China at the earliest possible stage, find that their trade marks are already registered to third parties without a legitimate interest in the mark by the time China features as a potential market in their business plans.

This can cause significant disruption to businesses as these earlier ‘bad faith’ applications act as bars to their own applications. Further, whilst trade mark registration is not a legal requirement to trade in China, many businesses find that their Chinese partners will actually request it as a condition to operate. The consequences of having one’s trade mark application refused in China because of an earlier bad faith application are, therefore, compounded, as walking away and trading without a registered mark may not be a viable option. (more…)

Forthcoming events: Managing IP’s “IP in Asia Forum”

Managing IPChina joined WIPO in 1980 and only established its patent system in 1985. However, in the early 2000s China began to become a significant presence on the World IP stage and in the years following 2011 more patent applications were apparently filed in China than any other patent office around the world. More recently the UKIPO has been involved in events to reinforce the “mutual understanding of the importance of intellectual property while also strengthening economic and cultural relations between the UK and China”.

The challenges of gaining IP protection and enforcing it in China along with developments in China’s Patent Law and changes to the Trans Pacific Partnership (TPP) are to be the subject of MIP’s IP in Asia Forum which runs on 21 June in Paris and 23 June (Brexit D-Day) in London.

Sessions during the Forum include an overview of trade mark protection in China, enforcement of IP rights in China, effective IP protection in Japan, a look at South Korea’s legal IP framework, IP commercialisation and monetisation under sharing economy in China and how to deal with IP infringement in China.

Keltie is delighted to be one of the sponsors for this event and Keltie partners Sean Cummings and Joanne Hopley will be moderators at the IP commercialisation session in London and Paris respectively.

The agendas for the Forum can be found here.

EPO News: Update on Early Certainty (EC)

epologoThe “Early Certainty from Search” scheme (ECfS) was launched by the EPO in 2014 to “provide applicants with legal certainty in Europe on pending patent applications early in the process and also to contribute to overall timeliness”.

It is IPcopy’s understanding from EPO sources that the EPO is happy with how ECfS has developed and that there are now plans to extend this into examination and opposition. (more…)

Creating an inventive ideas template

13973292868ccz8Introduction:

A template is a file that serves as a starting point for a new document. When one opens a template, it is pre-formatted in some way to guide the user.

One simple yet effective way to build a level of discipline into the invention capture process is to define a standard template for inventive ideas and insist it is taken into use. It is worth defining the inventive ideas template with carefully considered fields and guidance tips, which meet the needs of your invention capture process. This will help the inventor community understand what is expected of them. It also ensures inventive ideas are captured in a consistent manner.

If the idea is of potential value and is patentable, then the inventor should complete such an inventive ideas template. Completing the template should be considered as the first step in the patent creation process but it does not constitute the filing of the patent application.

The template should be completed for each discovery or inventive idea that has some potential commercial value or represents a breakthrough in technology.  (more…)

Easter Patents

easterEaster is upon us and across the land thousands of children are planning on celebrating the story of the Resurrection by stuffing themselves full of chocolate. (Those of you idly wondering what the Easter Bunny has to do with the Resurrection of Jesus are cordially pointed to this explanation!)

IPcopy thought we’d take this opportunity to see what kind of Easter related IP we could find…

US Design Patent USD703277 discloses a set of toy bunny Easter egg ears. Of note however is the downright sinister bunny depicted in the drawings (see for yourself below). My 9 year-old son saw this picture and declared “he looks like he wants to kill someone”. Possibly not the angle the draftsman was aiming for… (more…)

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