IP Review Winter 2018/19

Contents 3-5 IP in collaborative projects Collaborative innovation requires proper forethought to avoid later problems with arising IP rights 6-7 Protecting unusual trade marks The requirements for registration of non-traditional marks have been clarified by the CJEU 8-10 Who will come out on top in the race to develop electric cars? The UK government has committed £246M towards developing battery technology. Will this be enough to make the UK a world leader? 11 Slab-gate Mixing IP and brand identity to avoid a sticky situation 12-15 Does a change in Japan’s Grace Period affect anything? How do the modified provisions compare with the US and Europe and what is the impact? 16 Tania Clark elected as new CITMA President Withers and Rogers’ Trade Mark Partner takes over the helm IP review winter 2018/19 Welcome to the winter 2018/19 edition of IP Review Readers, thank you for all the positive feedback and comments following the first issue of IP Review with me in the Editor’s chair. I’ve found it a great opportunity to learn more about the fields of IP which I don’t work in day-to-day and hope you have too. After looking at the powering of transportation with fuel cells and batteries in the last issue of IP Review, we take a closer look at the development of electric cars and how the UK government is throwing its support behind developing batteries for this increasingly important area of technology. Again, we consider some practicalities of patent procedure; this time looking at how changes in Japan’s grace period may impact global filing strategies. We also have a very good article as our cover story which deals with the often-intricate issues of IP in collaborative projects: when to consider IP, what can go wrong and why, and how to avoid problems. Finally, for those with a sweet tooth, we have not one, but two features on how IP has an impact on our much- enjoyed chocolate treats! Please do continue to send your feedback on any of the articles in IP Review and share your requests for subjects which you would like to see covered in future issues. Justin Wilson Editor 3 2 IP in collaborative projects For example, a company hired a firm of architects to help design a new building. The company subsequently moved forward with the construction project independently of the architect firm but decided to implement the designs that the architects had created. Once the architect firm found out, the company was in the uncomfortable position of having to buy the IP which covered the new building but which the company did not own. If in doubt, a conversation with your patent attorney before exchanging any information with third parties can help avoid both losing valuable IP rights and later conflicts with your collaborators. In what collaborative situations does IP need to be considered? The short answer is all of them. In any circumstance where two or more parties come together to innovate, it is important to consider how the ownership, management, maintenance, exploitation and enforcement of arising IP will be organised. Just a few specific areas where IP management questions need to be answered include the following: • Buying-in R&D effort, such as employing an engineering, scientific research or product development agency • Client-supplier collaborations (vertical collaborations), in which something which starts out as a product supply contract develops into a collaborative product development project • Competitor collaborations (horizontal collaborations), where competing or complimentary suppliers to a market co-develop a product • Hiring contractors, where those individual contractors will contribute to innovations developed within the company Cover Story Collaborative innovation can arise, sometimes unexpectedly, in a wide range of circumstances; sometimes planned, and sometimes not. Identifying early-on when collaborative innovation is going to happen, or is likely to happen, and identifying what steps need to be taken to manage the intellectual property arising from a collaborative innovation project can protect parties from significant headaches further down the line.