IP Primer 2.0 Masterclass

This July and August in the #TechTribeCommunity we’re talking all things Intellectual Property with an IP Masterclass series hosted by Von Seidels.

On 29 July 2021, together with Von Seidels, we brought you a masterclass titled ‘IP Primer 2.0’ hosted by Christine Strutt, Trademark & Copyright Attorney. In this masterclass we learned all about the traditional forms of IP including trademarks, copyright, patents, and design as well as other IP vehicles such as know-how, trade secrets, domain names, image rights, data, and privacy.

Here are some key points from the masterclass

Patents

Protect underlying principles (inventions)

“A patent may, subject to the provisions of this section, be granted for any new invention which involves and inventive step and which is capable of being used or applied in trade or industry or agriculture.”

Copyright 

– Automatic (and free) with option of registration in some countries.

– Protects original works expressed in material form.

  • Literary (e.g. any text, copy, lyrics, scripts, databases, code)
  • Musical (e.g. compositions, arrangements, etc.)
  • Artistic (photographs, paintings, sculptures)
  • Sound recordings (note: separate from musical work)
  • Cinematographic films
  • Broadcasts (TV & sound)
  • Programme carrying signals
  • Published editions
  • Computer programs

– The © symbol indicates copyright ownership, it does not create it.

– Copyright protects only the expression of idea or concept not the idea or concept itself.

– Obtain copyright assignment from advertising agencies, web app developers and other independent contractors.

Registered Designs

– Protect the shape and appearance of an industrial article.

– Design must be new and original / non commonplace.

– “Newness” at time of filing or within six months of launch.

– Two types (in South Africa) – Aesthetic and Functional

  • Relatively low cost
  • Quick to be granted
  • Easily enforceable- prevents direct copying
  • Licencing opportunities
  • Protects your market share
  • Guarding against counterfeit products or
  • Imitating with inferior quality

Trademarks & Trade Dress 

– Capable of distinguishing goods and services (trade names, logos, slogans, sounds, patterns, shapes)

– Capable of being represented on register to enable component authorities and the public to determine clear and precise subject  matter to protection.

– Can represent in any appropriate from using generally available technology but must be:

  • Clear
  • Precise
  • Self-contained
  • Easily accessible
  • Intelligible
  • Durable
  • Objective

Databases, Privacy Rights, Internet of Things (IoTs)

– Fairly recent right, independent in some countries.

– In South Africa – copyright in database as “literary work”/ compilation, whereas in other countries you may be granted specific database rights.

– Consider POPIA principles when collecting, strong and processing personal information.

– Particularly important with data enabling of Internet-of-Things.

Trade secrets – Confidential Information

– Not registered but contractually managed, often in employment agreements or NDA’s with independent contractors.

– It does not include information which:

  • was known to the parties prior to receiving it from the other party.
  • is or lawfully becomes generally available to the public.
  • is lawfully acquired from third parties who have a right to disclose such information.
  • by mutual agreement is released from confidential status; or
  • is required to be disclosed order any applicable law, rule, regulation, or governmental order, provided that there shall be limited to the minimum necessary to comply with the law.

Image rights – Personality Rights / Rights of publicity

– Increasingly relevant as social media creates more “celebrities” and monetized endorsement deals.

– Use of avatars also becoming more popular to exploit image rights.

Know How – Show Formats

– In the context of intellectual property, know how is essentially the practical or technical knowledge you’ve acquired of how to accomplish anything.

– Often dealt with in employment agreements and restraints.

– Some show formats are granted copyright protection and can be licensed separate from the initial show.

– Has a value, like other IP assets, if local law recognises it.

Plant Breeders’ Rights, Traditional Knowledge, Geographic Indications

– PBRs grants a 20/25-year monopoly on a certain variety of plant you have created.

– Traditional Knowledge laws aim to benefit indigenous communities and promote the development, protection, and management of Indigenous Knowledge.

– GI’s like “Champagne”, “Danish Feta”. “Cognac”, “Scotch”, “Porto”, “Havana”, “Tequila”, “Darjeeling” and locally KAROO LAMB AND ROOIBOS

Blockchain – Smart Contracts NFTs

– Non-fungible tokens of digital file containing an original image, video, sound, signature, or other digital work. “Non-fungible” means the asset has unique properties that cannot be replaced or substituted.

– Copyright ownership does not have to be included, but it can contain and embedded smart contract.

– Blockchain technology – distributed ledgers that provide authentication and various contracting and value transfer solutions.

QUESTIONS & ANSWERS

If a design or mark exists before a trademark is registered, will the pre-existing design be considered as an infringement?

No. Trademarks get rights based on use and registration, so whichever is earlier that’s the priority one you can always continue using your trademark. Registration makes it clear that this is your trademark and makes it very easy to enforce people that come after you and have a similar mark or a similar brand and use it in a way that’s confusingly similar. It has to be on similar products or services, can’t be completely unrelated business areas. If I’ve got a mark that’s not registered and someone goes and jumps ahead of me in the queue and registers the mark, I will struggle to stop them from using their registered mark.

As another business that’s operating in another country, or a different continent would that be the same thing?

Exactly, so trademark rights are territorial which means that you either have to use or target a consumer base in a specific area or region. And if you wanted to register the mark register it in that country. With the internet of course this is quite tricky, so what they say is even though people can access your products online you only have use for trademark purposes in the countries that you are actually targeting.

How do we value the trademark or the patent, and valuing an IP for start-up for investments? How is that done?

You value it like any other asset, there’s actually an ISO standard for valuing IP assets. It gives you 3 methods namely: 1. Cost method . 2. Market value 3. Relief from Royalty. Sometimes use the combination of all three calculations to come up with the most justifiable value that you can explain.
Missed the workshop? Catch up here:

Our next IP masterclass takes place on 31 August. Patent Attorney, Ralph van Niekerk from Von Seidels, will take us through the key IP issues that investors consider when deciding whether or not to invest in your business and go through a strategic framework for you to prepare for an IP due-diligence. Register to attend this masterclass here.