LA PARTE VENEZIANA
In 1474 Venice adopted the "Parte Veneziana", a Legislation that specifically granted an exclusive right of exploitation of ten years to whoever introduced a "new and ingenious invention, never realized previously in the territory of the city".
This text is nowadays considered to be the ancestor of modern patent laws. Issuing Letters Patent proved to be advantageous and spread gradually in Europe, especially in England in many fields such as mining, metallurgy, textiles and glassware ... where they served to import knowledge specific to "the advancement of trade".
This notion of economic development has changed and evolved over the centuries to give rise to what we know and protect today under the paradigm "enhancement of our intangible heritage".
A short journey though protecting Intellectual Property (IP)
As important as an idea is as the seed for a resulting product or service, if it is not protected, or researched, prior to development to ensure that it does not already exist, and is not protected by a third party, an idea becomes either an asset or a liability.
The IP process is essential from the innovative mechanism through to the company logo for a company which is being developed, or a company which has been established for 200 years. The process is complex and requires specialists in the field to guide and execute the process. Below, the material which is presented has been provided in collaboration with Griffes Consulting in Geneva one of a handful of companies specialising in this domain in the watchmaking industry.
IP includes everything from the company name, the names of the collections, its aesthetic designs, mechanical inventions and visuals communication material.
In total there are forty-five IP classes (or categories) in which products and services fall. Thirty-four relate to physical products, eleven relate to services. They are defined under The Nice Classification (NCL), established by the Nice Agreement in 1957, as an international classification of goods and services applied for the registration of brands. www.wipo.int
Griffes consulting as an example of a specialised IP firm concentrate in primarily eight specific categories. Category three; perfumes and cosmetics, category nine; downloadable software and Apps, plus optical and scientific equipment, category fourteen; horology and jewellery, sixteen; writing instruments, eighteen; leather goods and luggage, twenty-five; clothes, shoes and head ware. As well as category thirty-five and thirty-six for services. The majority of their time is occupied under category fourteen; horology, which consumes approximately 50%. Inside of Griffes organisation are thirty-eight people, ten in the legal team, lawyers in IP, three whom are technical involved in patents, ten paralegal responsible for the management of the numerous files, one accountant, one designer who assists in the protection of the design in a particular format, and twelve people whose job it is to extract from the register of designs all existing patents, and register them in their own specific database. This last group of people equip Griffes with a database that has been in the process of being developed since the 1990’s compiling hundreds of thousands of patents specific to art searches in horology, writing instruments and bottles (both for wine and perfumery), accompanied by forty key words associated to each patent which indicate shape, material, decoration, aspect, function etc. This database is then used by the GDS (Griffes Design System) using an algorithm developed for them to accelerate the process of prior art searches. The reason for this extensive work is due to the complexity of protection, the infinite number of designs that have been executed and the competitive nature of the world we inhabit. Simply scanning the web for associated drawings and patents even when using image recognition technology and the existing databases can never be fully conclusive. In reality no search is 100% effective, but the more informed the IP company, the easier the client can sleep at night knowing the odds are in their favor when it comes to the final protection.
The process of protection
Step 1, find an IP advisor
The first step on the road to protecting IP is to find an advisor who is experienced in the domain within which the IP is to be protected. There exist hundreds of IP bureaus, ideally selecting one which has extensive knowledge and experience in a specific domain such as horology is advantageous to the person, or company seeking protection. An IP advisor should have a detailed understanding of the ecosystem of the subject being protected, from the legal aspect, the supply chains, design process etc.
It is highly relevant that time is spent together between the advisor and the client from the very beginning. Both parties need to clearly understand the complexity of the needs and process, whether the client is an individual, a start-up or a multi-national company.
The first meeting will also help to define whether the client has the potential to achieve the process financially, which is practical for both parties. In general 1 in 10 projects are not pursued due to reduced feasibility of the project, ie the project is not yet sufficient *mature in its development to be successful and start the process. *Mature meaning that the trade mark must be a developed and defined name and logo, showing sufficient DNA of the project. An invention must be fully and clearly explained to be able to be converted into a registration allowing the criteria to operate in searches.
Companies in the IP domain can also assist with developing contracts with classic scenarios that occur with start-ups. Such as with a business developed by 3 partners, one bringing the relevant contacts and network, the second the seeding money, and the third knowledge of the industry. Contracts to value each role fairly and not simply through a bias to the monetary contribution.
IP services provided by companies like Griffes allow economic actors, ie CEO’s, investors, or any individuals that carry the financial responsibility associated to a business, whether involved in investment of initial seeding, development or daily running of a company, to make better informed decisions.
Step 2, how to present a new technical invention in order for it to be researched and protected
If those sketches provided by the inventor are not aligned with the legal/practical requirements to advance the protection effectively, the IP advisor, if sufficiently well-equipped, will employ a designer who can help interpret/re-make the sketches of the invention to be able to advance protection. In addition, a simple 2 paragraph explanation of the invention can be sufficient to advance the project accompanied by the aforementioned drawings.
Step 3, searches
Searches for designs are executed through a system like GDS (mentioned under Classes above).
Searches for trademarks using filters to control the search parameters are made primary through databases like Clarivate (formally Compumark, a company that owns and operates a collection of subscription-based services focused on analytics, including scientific and academic research, patent analytics… ) and Corsearch.
Common searches include Patents and Trade Marks but design searches are harder to execute. Which is where GDS has an edge, larger companies arrive on market with search solutions for registered design through image recognition but GDA is quicker and more efficient in relation to prior art, essentially doubling the search criteria with the system of key worlds and image recognition plus advancing with developments in AI.
Step 4, protection and filing the IP
Once the search has been executed the advisor will work with the client to develop a protection strategy with the related costs. The cost of protection will be associated with territories to be covered, the wider the coverage the more expensive the process. If a single territory was the target for a brand name to be protected within, it could cost, after the search process was made, $1k. However, if the brand name was to be protected internationally in the principle markets that luxury watches would be sold in, the cost could be fifteen times the price and more. Filing in other countries through WIPO or a local foreign correspondent incur costs combined with official registration fees per country.
If the original search is not effectively made and a country contests the IP, the potential cost can increase dramatically and the time escalate to conclude the process, or even prevent the entrepreneur form commercializing the product in that particular country or market. File applications, can take 18-24 months if the process is smooth. Two potential obstacles; 1, the examiner in each administration that you have elected to protect your rights, the second is an owner of a similar right/product.
All of these factors are followed by an advisor with the recommendation of strategy for protection for trademarks, collections, designs, inventions, including the variations in each category.
Once the IP is safe not only does the owner of the resulting material sleep well in the knowledge that he is protected from being copied, but also that the IP licences are assets in their own right, and providing the company is a financially viable enterprise these assets form an intrinsic core value of the business.
Established and efficient IP organisations have a structure that permits them to work with both multinational companies as well as individuals. To advise all kinds of entrepreneur with the object of developing long term relationships. It is in the advisor’s interest to best serve the client to assure a successful business for them. The only limit to the effectiveness of the advisor is the creativity of the entrepreneur or client. If the client is a follower or copier of an existing product or service and heavily influenced by others, he or she may not have a product that can be effectively protected and developed. The second limit is, “does the client have the financial resources to continue”, is the business viable?
Periods of time for protection
• Trademark rights are protected for 10 years and are renewable for 10-year periods.
• Designs for 5 years, and are renewable for a maximum of 25 years, after 25 years they fall into the public domain.
• Invention patents are for 20 years. Providing the annuities continue to be paid in each territory.
Therefore, a patent is more expensive to maintain than trademark or design.
Step 5, monitoring
Continued monitoring then needs to be performed to assure that either fakes are not being produced or products that are too “similar” to the protected design, mechanism, brand name or logo are commercialized. It is impossible to protect IP categorically in any sense, fakes will always be produced of successful products, and people will always be influenced, knowingly and sometimes unknowingly in the reproduction of protected products. But, the ability to monitor the world wide web does help alleviate the biggest sales platform for products which are flagrant copies. To prevent copies of successful products being sold in Ladies Market, Kowloon is a different challenge.
Monitoring of other IP filing applications requires pertinent judgement from the advisor and client of similar material which can trigger the opposition period for a client to decide if he wishes to oppose or not the similar product, the period can be from 1 to 3 months depending on country.
Monitoring official publications of trademarks is a useful service but also visits by the advisor to tradeshows, eg surveillance during SIHH investigating satellite events, at Baselworld, advisors will explore the interior of the event and all the exhibitors.
The process of protecting IP can seem daunting, both in its complexity and cost. But any serious project needs to consider for its own well-being and longevity the points mentioned above, and find a suitable partner whether the idea is in watchmaking or any other creative technical field. Developing a relationship with transparent communication with an informed and experienced IP company should not be underestimated. Economies in this area are often false and eventually regrettable. The process of design, search, protection, monitoring and keeping track of the official deadlines of renewal can be made simple when well organised and well orchestrated working with a professional IP company.
Griffes Consulting agency was established in 1987, a legal practice specialized in intellectual property which has been assisting its clients in the protection of their intangible assets: trademarks, patents, designs and models or copyright.
To learn more about Griffes Consulting