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Unusual and Non-Traditional IP

Author: Danielle Carvey

Intellectual property is a pinnacle of modern society, with a multitude of popular cultures being governed by undercurrents of IP without many realising. From chart music to toy brands and beyond, there is much to explore when it comes to some of the most well-known and non-traditional intellectual property, and we have explored some of the finest examples.

Trademarks are one of the most valuable types of IP used by some of the biggest powerhouses in all industries, and whilst many marks are more traditional, some businesses have chosen to go down a more atypical route, resulting in some of the most well-known and recognisable IP.

These include the toy company Hasbro, which took a chance on, and successfully registered, the iconic and widely recognised Play-Doh scent on May 15, 2018 with the United States Patent and Trademark Office (USPTO).

Whilst not unheard of, scent marks are among one of the lesser obtained trademark types, due to the more stringent requirements which need to be met in order to obtain scent mark protection. In the US for example, it is outlined that the "amount of evidence required to establish that a scent or fragrance functions as a mark is substantial".

Such evidence is required to demonstrate that the scent itself has acquired distinctiveness. Further, the scent of the item should not be an important practical function, rather, it should merely assist as an identifying element used to distinguish the brand to which it relates.

Play-Doh managed to achieve this feat, with the scent described on the trademark register as a "sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough." Although a vast majority may not pick up on the particulars of the fragrance by simply smelling it, the nostalgic scent is distinctive enough on the whole to be recognisable to many as the smell which belongs to Play-Doh. The scent has also been released as a perfume, which would no doubt be a niche and memorable gift to anyone with fond memories of using Play-Doh.

Unlike trademark protection, copyright can prove more nuanced when it comes to lesser traditional forms of creative work. Commonly, people would consider paintings or literary works as typical copyright works, but tattoo artist S. Victor Whitmill made headlines with regards to his iconic tattoo design made especially for the boxing legend Mike Tyson. The tattoo, which was initially created in 2003 by Mr. Whitmill, created a stir when seen in the hit film "The Hangover II". The film depicted a character played by Ed Helms sporting the tattoo on his face, duplicating the design created for Tyson.

A mere few weeks prior to the release of the film, which ended up becoming the highest grossing comedy film to date, Whitmill instigated copyright infringement proceedings against Warner Brothers over the use of the tattoo design. Whilst the initially sought after preliminary injunction was denied, the Judge noted there was merit to the case and the lawsuit ensued. The case was settled with the terms kept under lock and key, however, Warner Brothers acknowledged a few weeks before a conclusion was reached that they may have considered digitally altering the tattoo so as to eliminate potential infringement.

The unusual case not only sheds light on the complexities of intellectual property protection in a fast evolving digital landscape, but on the intricacies of copyright as a whole. Whilst other works such as art pieces or literary novels have a plethora of legal precedent surrounding their protection, tattoos are more unique in terms of copyright protection.

Copyright law in the UK allows the designer of the tattoo to enjoy the IP rights to the piece, entitling them to any royalties should an image of the tattoo be reproduced. This means that even though the tattoo may be unique to you, but a tattoo artist designed it, the copyright will lay with the artist. On the other hand, if a person creates a tattoo design themselves, the copyright will belong to them. These lines of copyright ownership can become blurred in cases where an artist is commissioned, for example, to create a custom design using your ideas, at which point joint ownership may be considered.

Whilst protecting more obscure or unusual intellectual property possesses its risks and requires much thought, trademarks such as Play-Doh and copyright battles such as Whitmill's tattoo design demonstrate that risks can pave the way to great reward when it comes to IP. If you would like advice on the protection of your intellectual property, please contact us.

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In order for a patent application to be considered as registrable, there are three vital elements that must be satisfied. This trinity of the "three pillars" of patentability requires that the invention claimed in a patent application has novelty, industrial applicability and an inventive step.

The element of novelty, or "newness" for a patent application is therefore crucial. As per the European Patent Convention (EPC), an invention is regarded as novel if it "does not form part of the state of the art".

State of the art is defined as any subject matter relating to the invention to which a patent application relates, which has been disclosed or made available to the public in any manner prior to the patent application filing date. Such subject matter may include a product, process, or any other relevant information regarding the invention claimed.

In the instance that public disclosure had been made for any reason prior to the filing of a patent application, it may be the case that the requirement of novelty is not fulfilled, and the invention contained therein is rendered unregistrable.

On the flip side, patent legislation in many jurisdictions offers a novelty grace period. This constitutes a specific period of time, typically 6 or 12 months prior to the date of filing a patent application, depending on the country. For example, the US and Canada, among others, provide for a 12-month grace period, whereas other countries, such as France and the United Kingdom, afford applicants a 6-month novelty grace period.

A grace period itself ensures that any disclosure concerning the patent application materials or subject matter within that set time period is not seen to be detrimental to the requirement of novelty of an invention.

As typical with any legislation, each jurisdiction sets forth varying conditions upon which an applicant can take advantage of the novelty grace period. Some countries, for example, recognise disclosure as authorized if said disclosure is made at an officially recognized event, such as an official exhibition, or a scientific presentation, so long as such official disclosure is made within the prescribed grace period time limit prior to the filing date. Other jurisdictions may exclude disclosure from the prior art if such disclosure was made in bad faith by a third party, so long as corresponding proof is provided.

If any unauthorized disclosure has been made, it is classified as part of the "prior art". Prior art constitutes anything that is similar in nature to the invention contained within a patent application, and had been disclosed prior to the application filing date.

Prior art can comprise a wide variety of matter, including articles, scientific periodicals, pending patent applications, both commercially available and unavailable products, oral presentations, and even social media content. The only exceptions to any related disclosure being considered as prior art are if the disclosed subject matter is confidential and related to government, trade secrets or other applicable circumstances, or if the material was insufficiently disclosed.

With prior art being a vastly broad concept, it is vital for IP applicants to carefully and closely analyze any potential previously disclosed subject matter to avoid the possibility of their invention being considered as not novel or new. The option of performing a search is highly useful in this regard. For example, a PCT application will be subject to an international search, undertaken by a competent International Searching Authority (ISA), resulting in an International Search Report (ISR).

An ISR details any prior art found by the search which may impact the patentability of the subject matter contained within the international application. A preliminary Written Opinion of the International Searching Authority (WOISA) is also provided, advising whether the invention claimed in the international application appears to meet all three of the patentability criteria. Similar searches can be performed for national and regional patent applications, depending on the jurisdiction.

A Power of Attorney, often abbreviated to POA, is a legal document which provides written authorisation for another party to act on behalf of, or represent, another party in relation to certain affairs or matters. Such matters may include those of legal proceedings, corporate and commercial matters, and even personal affairs, for example, a Lasting Power Attorney (LPA.)

When it comes to intellectual property rights specifically, many applicants and rights holders choose, or are obligated by the applicable national or regional IP legislation, to appoint a legal representative or agent as a third party who will act on behalf of the applicant.

Such legal representatives may include a patent attorney, for example, who would represent the IP applicant or registrant before the IPO and/or courts of the relevant country or region in regard to the assigned patent matters. A POA in this instance would serve as written authorisation for the attorney to act on behalf of the patent applicant in relation to the filing and maintenance of the applicant's patent(s).

A Power of Attorney may also be utilised in intellectual property matters in relation to the development of inventions and patents in the workplace. Instances of this nature may ensue when a company has a POA to act in relation to, or obtain, an employee's inventions that had been created and evolved during their employment.

The requirements in relation to obtaining a Power of Attorney, and for providing proof of the same for use in IP matters, vary from country to country. The law in relation to the use of a Power of Attorney in US Law, for example, states that there are multiple requirements for the obtainment and validity of a POA in the jurisdiction.

As such, in order to constitute a valid POA for a legal entity in the US, it must contain the date of POA execution, and be signed by the principal or by another adult being empowered to execute the document in the principal’s presence and under their direction. Furthermore, a POA in the US must be signed and acknowledged before a notary public or be signed by two witnesses.

In addition to domestic legislation and requirements for obtaining a POA initially, national and regional law also obligates applicants and right holders to adhere to rules before the relevant IPO's in which IP is to be filed or maintained. In some countries, for example, the representative or agent with the POA must be an attorney registered within the jurisdiction in which the IP is filed or registered, however, this obligation is not present for all states.

Further, many jurisdictions require the submission of a document confirming the signatory who has executed a Power of Attorney on behalf of the applicant in order to obtain a filing date for their IP, with some countries also mandating that the POA supplied must be an original paper copy, and be a legalised notarised version of the document in order to be valid, an obligation which is not present in every jurisdiction.

A Power of Attorney is an important and oftentimes vital aspect of the registration and maintenance of IP rights. With international legislation and requirements differing, it is important for IP applicants and right holders to pay close attention to the necessary requirements of POA execution and submission in order to successfully manage their IP portfolio.

A major element of reform and cooperation in the field of intellectual property came in the form of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which was implemented by the World Trade Organization (WTO) in January of 1995.

The TRIPS Agreement is applicable to all jurisdictions which are a party to the WTO, and among a variety of IP related provisions, the Agreement obligates all WTO member states to provide the possibility of patent protection in relation to pharmaceutical and agricultural chemical inventions.

At the time the TRIPS Agreement was enforced, however, the national legislation of some developing countries of the WTO did not allow for the filing of patent applications in relation to agrochemical or pharmaceutical inventions. As a result, the WTO afforded these countries a transitional period of up to 10 years to implement compatible national legislation that would provide for such patent protection, concluding on January 1, 2005. It was from this allowance that the concept of a “mailbox patent” was born.

The WTO obliged the countries which were allowed to delay implementing domestic law in line with the TRIPS Agreement to still accept patent applications from January 1, 1995, despite the fact that a decision on whether to grant patent protection did not need to be made until the end of the 10 year period. This afforded patent applicants the opportunity to still meet the patentability requirement of novelty by securing a filing date in such countries.

This obligation was extended for the Least Developed Countries (LDC's) following requests from several jurisdictions, and the time period for implementation of provisions to allow for the granting of such patents has subsequently been extended until July 1, 2034.

The term "mailbox" patent was coined in light of this obligation, as any patent applications pertaining to agrochemical or pharmaceutical inventions were stored in a metaphorical mailbox once filed until relevant national legislation was implemented and the applications could be assessed.

A second obligation was also required of the member states which opted to utilize the transitionary period, in that if a pharmaceutical or agrochemical product was allowed to be marketed during said period, the country had to provide the applicant with exclusive marketing rights for the product for either five years, or until a decision on the grant of the patent was made, whichever was shorter.

Brazil is one example of a country in which mailbox patents were introduced, with TRIPS Agreement compatible national law eventually being implemented on May 14, 1997. Other countries including Argentina, Cuba, Egypt, India, Kuwait, Morocco, Pakistan, Paraguay, Tunisia, Turkey, United Arab Emirates and Uruguay also notified the WTO that they intended to make use of the transition period for mailbox patents.

Industrial design protection is widely utilised across the globe, with a registered design right preventing others from appropriating or imitating the appearance of a product. However, the obtainment of a design right, alongside a certificate of registration, is often not the final step of design protection.

Once granted, it is important to ensure that a design right is maintained in each jurisdiction in which the owner utilises the design. In order to uphold and maintain such rights, many countries require the filing of a request for design renewal and the payment of annuity/renewal fees.

The renewal process varies between countries and even between regional IP systems. As an example, some of the largest IP offices worldwide include the US, South Korea and China, and they all have different procedures in relation to the renewal of design rights and annuities.

In South Korea, for example, the validity term for an industrial design right consists of 20 years counted from the date of filing. The legislation in the country outlines that once the right has been granted, the registration fee for an industrial design should be paid within 3 months from receipt of the Notice of Allowance.

The registration fee in South Korea is inclusive of the payment for the first 3 years of the design right lifecycle, meaning that further annuity payments should be made in respect of the 4th years onwards. The payment of each annuity fee thereafter is due prior to the anniversary of the registration date for each respective year.

Whilst it is recommended that the payment of an annuity fee is made within the prescribed time, a grace period of 6 months exists in South Korea, allowing for the late payment of said fee when accompanied by payment of a surcharge.

In China, industrial designs with a filing date on or after June 1, 2021 are in force for 15 years from the date of filing, whilst those with a filing date occurring on or before May 31, 2021 are in force for 10 years from the date of filing.

Once granted, the official grant fee should be paid within two months from the date of receipt of the notification to grant a certificate, however, unlike South Korea, this fee is not inclusive of the first annuity. Instead, the first renewal payment, as well as a stamp tax for the design certificate in China, are to be paid separately upon registration of a design.

Further annual fees are to be paid in advance, during the month preceding the anniversary of the filing date. Late payment is possible within a six-month grace period by paying a corresponding surcharge.

In the US, design patents with an application filing date occurring on or after May 13, 2015 are valid for 15 years from the date of issuance, whilst those filed prior to May 13, 2015 have a term of 14 years from the date of issuance.

Unlike the aforementioned countries, as well as many other jurisdictions, design patents in the US are not subject to maintenance fees or annuities.

For those who wish to file for and obtain design rights in multiple jurisdictions, international and regional systems exist which allow applicants to obtain protection in several countries in an often more efficient and cost effective way than filing in individual states separately. As with each jurisdiction, these design right systems possess their own procedures for renewal fees and payment.

An industrial design right applied for via the Hague System, for example, has the same effect in each designated state as it would if it were filed directly in that jurisdiction. They are valid for an initial period of five years from the date of the international registration, which is defined as the date of filing of the international application.

International industrial design rights may be renewed for two initial further 5-year periods, prolonging the validity term for up to 15 years. Thereafter, a right can be renewed up to the limit of years prescribed in the national or regional law of each designated state in which the design is granted. The WIPO will remind the right holder to renew a design six months prior to the due date of the renewal.

A Community Design is a design right registered via the regional system of the European Union Intellectual Property Office (EUIPO). Once a community design has been granted, it is valid for a period of 5 years counted from the date of filing.

It is possible for rights owners to renew the design a further four times for periods of 5 years respectively, meaning a EUIPO registered community design can be valid for a full term of 25 years in total.

The renewal fees are due during the last 6 months of any given 5 year protection period, and late renewal is possible within a six-month grace period by paying a corresponding surcharge.

Industrial designs filed and granted through the African Regional Intellectual Property Organization (ARIPO) have a validity term of 10 years from the filing date. The annuity fees are due on each anniversary of the filing date and are payable in respect of each designated state. They can also be paid within 6 months after the due date on the condition that the corresponding surcharge is paid.

As industrial design renewal procedures are subject to variation from country to country, applicants should take note of any annuity payment deadlines and fees in each jurisdiction they wish to maintain design rights. If you require advice on the renewal of design rights, or simply further information, please contact us.