Pop PT 0774260 van der Wel SP 0781172
0ZS12 – Intellectual property rights CyclARM: ‘LED it all hang out’
Patrick Pop, 0774260 Stephan van der Wel, 0781172 05 november 2013 1
Pop PT 0774260 van der Wel SP 0781172 1
Introducing the CyclARM
In this article you will get introduced to the CyclARM: a small piece of innovation that has to reduce the accidents among cyclists. The CyclARM could be best defined as a lightning sign which should alarm cyclists listening to their music, when other road users will come on track. When the modern cyclists are listening to Cocker’s ‘unchain my heart’ or, in a worse scenario, Spears’ ‘Oops, I did it again’ on their music players, they in fact shut themselves off from everything that happens in their traffic environment. Approaching cyclists do not have any ability to warn the modern cyclists, listening their music, yet. This article has the aim to introduce the CyclARM in legal sense. So here it is not about strategy or entrepreneurship. It’s about all legal aspects that has to be respected before the CyclARM could penetrate the market and would lead us to the pot of gold, somehow. In this article first the importance of the CyclARM will be discussed. Why does it has to be developed and how does it look like? Second, the prior art has to be analyzed, and has to be discussed for what extend it will have its influence on the product introducing. Finally, the best legal protection for CyclARM has to be selected. In this part we will analyze which kind of protections could be used for this piece of innovation, concluding with the answering the question of which of those legal protections will be at best. 1.1
Why the CyclARM?
Cycling in the Netherlands is quite popular: the country has more bikes then it has citizens (Coevert, 2013). The popularity of cycling is equal for all the layers of the popularity. For example, students cycling towards their university while the elderly, in contrast, use their bikes – whether it is electric powered or not – for fun during weekends. Cycling is an easy and healthy way of transporting one or another from A to B. However, the enormous popularity of cyclists among the Dutch’ isn’t only fun. The usage of the bikes has a dark side when it comes to the vulnerability of the cyclists. These people are often concerned in accidental traffic situations. However, the number of fatal accidents among these Dutch’ cyclists are currently decreasing and it keeps continuing decreasing (CBS, 2013). This positive trend has been started in the early beginning of this millennium, and strengthens itself in 2006: 650 victims in 2012 pertaining to 811 in 2006. A total decrease of 20% we have here (CBS, 2013). We all agree that this trend is a positive one, nevertheless, this number of fatal accidents has to be further decreased to make cycling totally fun at the end. 2
Pop PT 0774260 van der Wel SP 0781172 Cyclists make up a great part of the traffic popularity in the Netherlands. They are also at greater risk when it comes to the kind of injury when they are caught in accidents. Although the number of death victims has been decreased last year with another 7,5%, traffic participants, however, the risk for fatal accidents is still there because of the nature of cycling. It’s a quit vulnerable sport in that respect. Moreover, the number of cyclists involved in accidents compared to the total number of traffic victims is increased: 26,2% in 2006 to 31% in 2012 (CBS, 2013). A premature conclusion could be that the proprietor of the infrastructure in the Netherlands achieves safety measures with a certain focus on motorized traffic participants. Within the usage of cycles in Dutch’ traffic, two trends show up when analysing the earnestness of the accidents. These trends have their direct and indirect consequences for the cycling landscape. On the one hand, the adoption of using the electric bikes – so called ebikes – ensures a higher rate of average speed among the cyclists. On the other hand, the increase of listening music during the participation on traffic will carry out a greater risk for cyclists, getting involved in accidents. Cyclists with music in their ears aren’t aware of any risk which is heading from the back or get attended to other traffic participants signaling for a dangerous situation coming on track. 1.2
What is the CyclARM?
CyclARM is the solution for cyclists to listen music and get attended for dangerous situation which are upfront at the same time. CyclARM has to be conducted at the steering wheel of the cyclists by a magnetic strip and will use its LED lights to get attention of the driver using a flash light. When a faster (other) cyclists is heading from the back, and rings its bell or klaxon, the flash light then gives the signal. CyclARM, in fact, communicates with the bell of other road users using the same software as has been used in voice recognition devices. The CyclARM result in singing cyclists which are aware of each upcoming dangerous situation at the same time. Moreover, the elderly woman with a damaged hearing, whether it´s using a tricycle or not, is also aware of everything that’s heading from the back. The CyclARM is a Solution with a capital S. 2
Prior art conflicting further development of CyclARM?
Before a suitable legal protection could be discussed, first the prior art has to be analyzed before further development. Because the CyclARM is a horizontal extension of the main 3
Pop PT 0774260 van der Wel SP 0781172 cycle bell we first will take a short look at the legal protection of the classical bell here. The aim is to gain insight in the possibility to connect the CyclARM with existing products. Secondly, there has to be discovered if there is a current lightning alarm. Here it is important that our alarm, as it will be a lightning one, doesn’t have any complementors in this way. Finally, there will be summarized what already is patented for products that do communicate between one and another (e.g. the classic bell on the hand and the lightning alarm on the other). 2.1
Prior art for the classic cycle bell
The traditional bell on cycle’s as we know it nowadays is better known under patent US24620166 A, as it once has been developed by Marcel Brun in ending ‘40’s (Brun, 1946). Here the complete mechanism, including the upper and lower shells is introduced. When searching for more legal literature concerning the bell for cyclists, one will discover that in the early 80’s the bell comes under further transition. Pieter de Kwant has further optimized the cycle bell under patent EP0008841 A1 in the beginning 80’s (de Kwant, 1981). In his publication de Kwant (1981) has challenged to reduce the amount of components which is used in modern cycle bells. Later on, the bell was adjusted to a more customer friendly shell in patent 0486085 B1 (Hosper, 1991). In his publication Hosper (1991) has adjusted the bell in such a way that the corrosion will lessen due to the use of plastic. Furthermore, Hosper (1991) is of opinion that these kind of bells are of small number of components. Further analysis of current legal protection shows that the bell is transitioned overtime in the composition. Here the fact that the product is not extended overtime in its functions is important. Only the patent of Chen Jiang (2011) with number CN202038396 U shows a little extension as it merge a digital watch and a bicycle bell in one product. Very interesting for the CyclARM developments, to put it succinctly, this invention is one of the scarce one that’s making a little digital improvement in the bicycle bell. In fact the increase of digital components in the bell is important for some reason. The bell is subject to heavy rain or snowfall, so a certain water resistant layer is necessary. The patent of Jiang (2011) already has a water shield for further protection to humidity. But the patent doesn’t emphasize that the invention is due to the water resistance but more for the idea that a digital watch and a cycle bell is merges into one product. For that reason we assume here that our new CyclARM can adopt any protection against humidity.
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Pop PT 0774260 van der Wel SP 0781172 A preliminary conclusion now is that the cycle bell won’t raise any legal bumps to knock down, further analysis of the lightning alarm is interesting here. Is there any prior art for this section of the invention? Here we want to get some answers to this question to gain further insight in the legal freedom for launching the CyclARM. A first global analysis of the prior art, however, indicates a lot of cycle alarms protecting the asset against theft. When searching in the field of cycle alarms and ignoring a theft situation, there is one important existing patent which should be noticed. Here a ‘directional alert system for a motor-assisted bicycle’ comes in, referring to an invention of Kyoden (2012) publicized under number US 8,505,666 B2 for the Honda Motor Company (Kyoden, 2012). The alarm could be a restriction for further development of the CyclARM. However, as the patent title already suggests, this system is developed for the industry of motor-assisted bicycles. Whereas the CyclARM should work for any bicycle, including the motor assisted ones. The alarm buzzer which is part of the invention of Kyoden (2011) gives a sound when walking people are in vicinity of the bicycle. This product looks like the CyclARM just a little bit. However, the CyclARM is in some way the reverse product: it doesn’t communicate towards the pedestrians, but it communicates to the cyclists. Another difference is the way of alerting traffic users. The CyclARM will use the lightning to gain attention of the cyclists in contrast to the sounding alert system of Kyoden (2011). Further analysis of the prior art – and now it’s getting really exciting – introduces the ‘Bicycle alert safety system (BASS)’ once developed by Brian Lee (2011) and requested under number US20110304478 A1 (Lee, 2011). This invention uses also LED’s to notice other road users. The difference here is that – once again – the direction of communication. Lee’s (2011) invention is another way to alert other traffic users to upcoming movements, like turning, accelerating or braking. The use of LED lightning to alert other ones is a common component between BASS and our CyclARM. But for the use of LED’s no important further legal protection has to be honored. Here the technical background of the BASS system is important. The system is a combination of several components like the battery source, a microcontroller, a receiver and finally the LED’s. In our opinion, the way this system work could be crucial for the feasibility of the CyclARM project. It’s not known yet how the system exactly should work, so during further development, this patent should be respected.
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Pop PT 0774260 van der Wel SP 0781172 2.2
Concluding the analysis: The idea is OK, but further developments could have some trouble
The analysis of the prior art has answered the following questions: ‘can we connect the CyclARM to existing cycle bells?’ and ‘is there any invention yet that is heavily related to the CyclARM?’ We can conclude so far that the idea of CyclARM is unique, but it maybe will need the same techniques as the BASS safety system uses. We have to respect these patents on the long run. But for this moment let’s take a look at a suitable legal protection for the CyclARM itself.
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Pop PT 0774260 van der Wel SP 0781172 3
Legal protection analysis for the CyclARM
Through Intellectual Property Right (IPR) a certain legal protection could be gained for the CylcARM protection. However, within the IPR there are several alternatives to protect ones inventions. The search for that protection’ best fit is the central goal of this chapter, concluding in a definitely choice. Selecting the best legal protection depends on both the CyclARM product, as the legal protection characteristics. Hence, a short analysis of several legal protections should be done here. However, certain ways for protecting the IPR are simply not useable for the CyclARM. In this chapter we first dive into the world of IPR by describing three different protection opportunities for the CyclARM which do best fit. In our opinion the Patent Law, Trademark Law and Design and Models Law could be selected as legal protection. The characteristics of both the product as the legal protection should be respected here. The upshot of all this should be that certain protection is better than the other in some way. Secondly, there will be a short analysis of remaining legal aspects and alternatives that should be attended before concluding the analysis. Here a short look towards the territorial and protection period will be summarized. Moreover, we should underpin the choice to ignore other forms of legal protection. Finally the conclusion of the analysis should select the best legal protection. Here we will combine the conclusion of the prior art analysis with the finding of this chapter. 3.1
Patent Law
The patent law gives the inventor some form of monopoly, at least temporarily. This protection gives limited rights for a time of 20 years. Thus, the protection excludes others to make, use or selling the invention, product or process (WIPO, 2004). However, the invention must be novel, useful and non-obvious at same time. The effect will be a state of economically exploiting the CyclARM when it is registered. Consequently, the registration of CyclARM through the patent law should effect in a state of economically exploiting the product. According to the WIPO (2004), after registration the patentee have to take care on infringement of his patent right. Moreover, the patent law enables the inventor to warn any person or company that intend to infringe upon the patented invention. If others do not agree with the statement, steps to an independent authority (court) could be undertaken (WIPO, 2004). The CyclARM has to meet the criteria for patent protection like the industrially application of the product, the novelty of the product and there must be an inventive step 7
Pop PT 0774260 van der Wel SP 0781172 (WIPO, 2004). Selecting the protection via patent law has its different advantages and disadvantages. This will be shortly descripted below. Advantages A patent is a protection for copying, manufacturing, selling and importing the invention of the patent holder without any permittance of the patentee. In the protection period (patented period) it results in keeping the competitors at bay (Marathe, 2012). According to Marathe (2012) this period could give CyclARM the opportunity to ask any suitable price for his invention, because it has the exclusive rights to use the invention. Another option is to license the patent to other users. Providing licenses will create revenue for the inventor his business by collecting licenses of the patent users (Marathe, 2012). To sum up:
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A Patent is a protection for copying, manufactoring, selling and importing the invention of the patent holder without any permittance of the patentee.
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The patent gives a protection of your invention for 20 years and keeps the competitors at bay.
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Exclusive commercial rights to use the invention for the patentee
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The patentee can ask any suitable price for his/her invention.
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Providing a license will create revenue for the business of the inventor by collecting licences of the users.
Disadvantages If an inventor wants to apply for a patent, it will take a long time to protect the invention on a suitable way. Protection of patents is limited to different nations. If one wants protection in different nations (e.g. the Netherlands or America) it will cost a big amount of money, because in each country other laws suplies (Marathe, 2012). The patentee has to think whether it should register the patent or not due to high costs during the preparation period. If there are people who infringe the rights of the patent, the patentee has to defend his patent. These actions against infringement are quitte costly. After the expiration of the period of 20 years companies or individuals could use the invention without paying royalties or permission of the inventor (Marathe, 2012). To sum up the disadvantages:
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Pop PT 0774260 van der Wel SP 0781172
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The protection of a patent is maximum 20 years. After the expiring date, companies or individuals could use the invention without paying royalties or getting permission of the inventor.
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When the inventor wants to apply for a patent it takes a long time to
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The owner of the patent, the patentee, have to defend his patent like a policeman if someone infringe the rights of the patent. Action against infringement is costly.
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After the expired period of 20 years. Companies or individuals could use the invention without paying royalties or permission of the inventor.
The CyclARM has to be industrially applicable (WIPO, 2004). In order to meet this criteria, several prototypes will be developed before launhing the final product. However, for further analysis we assume that the CyclARM is industrially applicable. 3.2
Trademark Law
Trademarks are referent to our CyclARM brand. Brands could be consisting in a logo (e.g. Apple, MacDonald’s, Starbucks coffee, Shell), words (e.g. Facebook, Google), color (e.g. KPN, Milka) or a combination of those aspects (Fahy & Jobber, 2012). CyclARM could be protected by its name. The name of the product is build up from two different words like Cycle and Alarm. This describes the goal and market in one word. When it’s pooled together the name of CyclARM once created a unique name for a product that warns cyclists for dangerous situations. The CyclARM does not have a logo for branding yet. However, a certain logo will be developed in a later stadium when the product is introduced to the market and CyclARM will gain the legal protection of the alerting invention. Two different symbols can be used here. The ® (Registered-sign) and ™ (Trade Mark-sign). If the brand is registered it gives an exclusive right to make use of your mark for goods and/ or services (Intellectual Property Office, 2011) . The owner of a trademark can expend licences for entrepreneurs. This will result in franchise businesses.. There is a differents between the two symbols. On the one hand the Registered-sign (®) is a warning for others. The legal protection of the R-symbol has no significance to the Benelux, but in de United States it is quitte well protected. It is not allowed to use it without registration. The TM-sign is involved when a brand will deposit trademarks which are not registered yet. Once registered it’s easier to take steps against infringement (Roots-IP , 2013).
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Pop PT 0774260 van der Wel SP 0781172 Nevertheless, also under trademark law some advantages or disadvantaged should be analyzed. Advantages •
The trademark owner can build up his reputition about own mark
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It protects you from others (companies and individuals) to use your registered trademark. They only allowed to make use of your mark when the trademark-holder give permission.
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The ownership of a trademark will be helpful to create franchisers. The trademark holder is the owner and will expend licenses.
Disadvantages •
Trademarks are based on the current trademark laws in the country were it is registered.
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Internet domains are not connected to the registered trade mark. The extent to infringement on your registered trade mark has to be discussed – in civil action - with the owner of the internet domain. This will result in high costs (Hussain, 2013).
3.3
Design and model rights
To be eligible for protection of the design and model the invention should be new (never been showed before). At last it should be stand out from the usual in the market. Legal protection for the CyclARM, could be required for the Benelux and for protection in Europe via, so called, Community Design Regulation, CDR. The term of protection is 5 years here but could be extended for times. This gives a protection of 25 years in total (AKD, 2013). To sum up the advantages and disadvantages: Advantages Registering the design and model right gives an exclusive right to the CyclARM design. It gives CyclARM, and its inventors, the right to take legal activities against infringers (Intellectual Property Office, 2011). It allows the designer or owner of the right to sell the creation and make money out of the inventive idea. Combining design and model rights with copyrights could be really helpful to protect the CyclARM invention and has benefits for public as well, when the design is published. Public can gain useful information of design
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Pop PT 0774260 van der Wel SP 0781172 technologies and technological solutions, when the protection period of maximum 25 years comes to an end (Intellectual Property Office, 2011). To sum up: •
Allows owner of design and model right, to sell the product and the Intellectual Property (IP) to it.
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Make money from your design (Intellectual Property Office, 2011).
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Licence others who wants to make use of your design and hold the IP rights.
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Can be combined with legal protection of copyrights (Hussain, 2013).
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Public benefit.
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Registered designs could be renewed every 5 years.
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Protects innovation for a maximum of 25 years.
Disadvantages It is important that the model and design is new before trying to register. There is a big disadvantage about model registration. Namely, if model and/or design is be registered and promoted on the market in Europe. It cannot be registered in the United States anymore, because it is not new, nor it could be applied to designs that concern in product works or in the invisible state when it is normal used. When there is no protection requested CyclARM can only protect the three-dimensional shape (Intellectual Property Office, 2011). To sum up:
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No protection on how product works or invisible in normal use.
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No registration is only protection for the three-dimensional shape
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Protection will ends after 25 years. Other aspects and alternatives for legal protection CyclARM
In the fields of intellectual property rights a distinguish can be made between patents, copyrights, trademarks, protection for industrial designs, and protection against forms of competition (WIPO, 2004). As the WIPO (2004) argues, not all forms of legal protection are at best for each invention. As already has been noticed three forms of legal protection should be fine for the long run. Let’s take a short look to the less suitable options here.
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Pop PT 0774260 van der Wel SP 0781172 Trade name When a company got many or different trademarks, it will be important to register a trade name to differentiate the enterprises goods and services from their competitors. A trade name does not have to be the same as the registered legal name (Murray, 2013). It could be also a fictitious name as a “doing business as” (DBA). The uses of Inc. or Corp. or other legal endings are not allowed in the trade name (Gallagher & Dawsey, 2010). Important is that the enterprise distinguishes from competitors. If a business name is distinctive it will be protected (WIPO, 2004). However, CyclARM is not about establishing an enterprise, but it is about an inventive product, so this legal protection will not be used. Neighbouring rights Efforts and achievements of performers (singers, musicians), sound/film producers and broadcasters are protected by neighbouring rights. Neighbouring rights have a limited value of 50 years after production. And 70 protection years for executive musicians and music producers this applies only in music atmosphere (Auteursrecht.nl, 2012). Nevertheless, this aspect of rights will have no effects on CyclARM and is not helpful to protect this invention. Breeders’ rights Breeders’ right, better known as Plant Breeders’ right (PBR), is a form of Intellectual Property right, which protects breeders for their invention. Same to the other IP rights, PBR is bases on plant varieties. The owner of a breeders’ right is protected against individuals or companies who are not allowed to propagating and selling reproductive products. Before getting the right for breeders and the full protection there are view properties necessary. There must be demonstrated that the product is new, distinct, uniform and stable (Canadian Food Inspection Agency, 2010). However, this protection of Breeders’ right will not be workable on the CyclARM. Database rights Database right is in relation to copyrights. Databases will be eligible for copyright when it has an original structure. To apply for copyrighted protection has to be originally in the selection or arrangement. Their must be also a substantial investment to be done to obtain protection. Important is that there are no registration possibilities to protect database rights. Mostly, databases consist from a collection of copyrighted work (Intellectual Property Office, 2008). CyclARM is a single inventive project, as already have been mentioned, it must be a 12
Pop PT 0774260 van der Wel SP 0781172 collection of copyrighted work. Maybe in the developmental future we could make use of this database right to protect copyrighted work. 3.5
Concluding the analysis, what’s it going to be?
As already has been mentioned there are a few rights applicable on CyclARM. At first this will be the patent law on our invention. Secondly, the unique trademark CyclARM, could be protected by the trade name law. Finally, it will be possible to protect the model and design due a certain model and design law. However, the patent law and trademark law are important here. Let’s take a short look to underpin these choices for CyclARM. CyclARM should be protected via the patent law because here it meets the criteria as WIBO (2004) suggests. First of all, as the prior art analysis already indicates, the invention is novel. Moreover, as already suggested, the CyclARM is industrially applicable. Finally, the CyclARM is a form of an inventive step. The trademark law is also a must for further CyclARM developments. We truly believe that the CylcARM should be the definite name. Therefore, a certain name protection is necessary here. Moreover, the CyclARM as it is the only product of the company should be well protected. Finally the model and design law is applicable for the CyclARM. The CyclARM, as it is a lightning flashlight and magnetic strip at the same time, has a quite unique design. However, it is not the most important protection as it is designed as a result of its technical specifications. The design is a consequence of the applications. CyclARM, LED it all hang out
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