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IP-Workbook-2014

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Aromatose Inhibitor SOLUTIONS Aromatose Inhibitor What steps can Prof. Table and/or Dr. Hodgson and/or IPP take to protect the invention and who would own the relevant IP? n As Prof. Table and Dr. Hodgson are employees of Lakeland, any patentable inventions that they discover and seek to patent will probably belong to Lakeland. Accordingly, Lakeland would be the applicant for any patent that is filed in respect of the Aromatose Inhibitor. The academics need to keep the invention confidential though. n Remember that IPP may have rights in the relevant IP as Prof. Table's Chair is sponsored by it and he has been on secondment to IPP. It will be necessary to check the terms of the sponsorship/secondment agreement to see exactly what rights IPP might have and what the confidentiality obligations are in that agreement. If it owns any of the relevant IP, then it may be that it will be the entity which files any patent application, rather than Lakeland. n IPP's marketing team has thought up the brand name AROINHIB under which to sell the Aromatose Inhibitor. If IPP is going to be carrying out the commercialisation of the product, then it could make sense for it to own any trade marks relating to it. Who applies for the trade mark will be a commercial decision for the parties in question to debate. There is no right or wrong answer here. If IPP decides to apply to register AROINHIB as a trade mark, what issues might it face? What, if anything, could it do to try and head off these issues before they arise? n In some countries, it is not possible to register a mark which is similar or identical to a mark which has already been applied for/registered for similar goods and/or services. Accordingly, if there is an earlier mark similar or identical to AROINHIB, it is possible that any trade mark application for it would be rejected. n IPP can head off these issues by conducting trade mark searches (you can carry out free online searches at the UK Trade Marks Registry at www.ipo.gov.uk) to check whether there are any prior marks which might prevent registration of its brand. General searching on the internet to see if a brand is being used is also helpful. 54

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