Do I already have sufficient intellectual property protection?

Advice for those new to the concepts of copyright
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R47
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Do I already have sufficient intellectual property protection?

Post by R47 » Sat Jul 20, 2019 6:07 pm

My question concerns whether I already have sufficient intellectual property protection.

My design is a unique design on a clock face.

I created a product and manufacture and sell it, primarily online, and have done for 10 years.

I'm aware that copyright and patents are quite different.

In 2005/6, I registered the design and obtained a 'Registration of Design' from the UK The Patent Office, but it expired in 2010, and I haven't renewed it.

I would like to approach some international corporations (based in the UK) with a view to them buying a license on my design.
Before approaching them, I'd like to protect myself re. intellectual property as best I can.

Should I:
a). Apply for UK Copyright registration
b). Renew or reapply for a Registration of Design at The Patent Office
c). Neither is necessary, because I already have sufficient intellectual property protection?

Many thanks for any advice :)

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AndyJ
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Re: Do I already have sufficient intellectual property protection?

Post by AndyJ » Sat Jul 20, 2019 9:35 pm

Hi R47,

I think that copyright probably offers you the best protection, assuming that your design constitutes an artistic work.

You can't re-new a registered design more than 12 months after the original period of registration has elapsed (see Rule 13 of the Registered Design Rules 2006). And unfortunately you can't apply the re-register the design as one of the eligibility criteria is that the design must be 'new'. The same reason prevents you from applying to register it as a Registered Community Design (ie an EU-wide protected design) - see Article 5 of the Community Design Regulation 2002.

Since copyright came into existence automatically the moment you committed your design to paper (or CAD software etc) you don't have to take any additional steps, although I would suggest that you mark everything connected with the clock face (eg any packaging or advertising material associated with the product) with the © copyright symbol, the date of creation and your trading name, as a precaution. You can use your design registration paperwork as evidence of the priority date of your copyright which means you don't have to register the copyright with anyone.
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R47
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Re: Do I already have sufficient intellectual property protection?

Post by R47 » Mon Jul 22, 2019 6:54 pm

Hi Andy,
Thank you very much for taking the time to respond - much appreciated.
My concern is whether, by not renewing the registered design, did it pass into the public domain?

Interestingly, I have applied for copyright registration in the US, but it's been turned down (twice) for "Insufficient authorship."
My design is a clock face, with a unique design on the face, in addition to the numbers.

It's interesting that the UK Patent Office granted the Registration of Design... but perhaps the UK copyright office might also say there's "insufficient authorship." ?

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AndyJ
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Re: Do I already have sufficient intellectual property protection?

Post by AndyJ » Mon Jul 22, 2019 9:55 pm

Hi R47,

The US Copyright Office do tend to be fairly strict in what they accept for registration. There's a simply enormous Compendium of rules the staff have to follow during the examination process! There are a number of reasons why 'insufficient authorship' would have been cited. In all probability they may have thought it lacked sufficient originality to be registered.

Under UK law, the threshold for originality in artistic works is not that high as long as it is clear that a work is the product of a human mind and has not been copied from elsewhere. However the criteria for copyright are different to those for design right.

There is no official process for registering copyright in the UK, and for that reason there is no 'Copyright Office' as such. Any body purporting to offer registration will be a commercial service, which despite their claims, is of pretty limited utility when it comes to knowing if a work is original enough to qualify for copyright protection. The UK Government department for overseeing copyright policy is the Intellectual Property Office which also looks after patents, designs, and trade marks. Only these latter three subject areas involve a registration process, the most exacting of which applies to patents.

You mention the public domain. In theory, yes, your 'design' is now unprotected with regard to design right, but copyright still exists in the watch face if that can be described as an artistic work. That was why I previously suggested putting a copyright notice on your product packaging and advertising, in order to make it clear that you are asserting that intellectual property right, even though design right may have lapsed. Design right is intended to protect the appearance or shape and styling of a product, which is subtly different to the purpose of copyright protection.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007

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