Intellectual Property Solicitors
For many businesses, its Intellectual Property is its most valuable asset. In order to protect such assets, you need the advice of specialist Intellectual Property Solicitors.
It is important that your Intellectual Property is protected from potential competitors. In order to do this, you will need the advice of a specialist lawyer to ensure legal recognition and enforcement of the ownership of your intellectual property rights.
In order to do this, you will need the advice of specialist intellectual property solicitors to ensure legal recognition and enforcement of the ownership of your intellectual property rights and to regulate their use by others.
Registration and the Different Types of Intellectual Property
Our specialist Intellectual Property Team provide advice to a broad range of clients on Intellectual Property related matters from initial registration, its exploitation/lawful use through to protection and enforcement where necessary.
Your organisation’s most valuable assets are not necessarily physical – for example, they could be your brand, ideas, trade secrets, know-how, innovations or research and development. It is important that these are protected from potential competitors so you control how you exploit them. In order to do this, you will need the advice of a specialist lawyer to ensure legal recognition and enforcement of the ownership of your intellectual property rights.
It is important to understand the difference between the various registrations so that you can obtain the best protection possible for your intellectual property.
Our specialist IP team has a wealth of experience in registering and protecting intellectual property rights; whether it is your brand, logo, name, innovation or design, you are looking to protect.
We would welcome the opportunity to review your IP portfolio and discuss your requirements in detail with you. We can work with you to compile IP strategies that ensure your IP is protected. We have a close working relationship with trade mark and patent attorneys and regularly liaise with them to register trademarks, patents and design rights whether in the UK, EU or internationally for our clients.
Please click on the links below to find out more about the different types of Intellectual Property:
Registered and Unregistered Intellectual Property
Registered rights are granted by official bodies such as the UK Intellectual Property Office. Registered rights provide a monopoly, which means that, once registered (subject to their lawful challenge), the owner can stop other people from using the right without permission. Registered rights include patents, trademarks and registered design rights.
Unregistered rights arise automatically, giving protection against copying or using the right, and include copyright, unregistered design rights, rights in unregistered trademarks and confidential information.
What is a Patent?
To qualify for patent protection, an invention must be:
• involve an innovative step;
• be capable of industrial application; and
• not specifically excluded from protection.
To obtain a patent, an application for a patent needs to be filed; this will normally be with the patent office of the country where the inventor works.
Patents can provide a high level of protection and are highly important in some industries; this is clearly seen in the case of pharmaceutical companies, who spend millions of pounds and extensive time on research and development.
The process for registering a patent is not easy and can be expensive. It also exposes a product to competitors through public disclosure of the technology behind it without the competitor breaching the patent.
What are Trademarks and what is passing off?
A trademark can be a brand name, a company logo, a trading style or even distinctive packaging. It can also consist of the shapes of products such as a bottle as well as slogans and straplines.
Owners of trademarks can apply for Community trademark (CTM) or a UK trademark. A trademark which is registered in the UK is only enforceable in the UK, whereas a CTM is enforceable throughout the EU. Both registrations last for ten years, but are renewable for further ten-year periods.
It is also possible to register trademarks throughout the world, although it is advisable to initially register them in the countries where the particular goods or services are to be sold or provided.
To be registrable, a trade mark must be:
• capable of being represented graphically;
• capable of distinguishing goods or services; and
• not excluded by statute.
Passing off can be used as a means to enforce an unregistered trademark and protects the goodwill of such mark. In order to bring a claim for passing off, it must be shown that the owner has a reputation in the mark, that a misrepresentation that could mislead the public has occurred and proof of the damage caused. Whilst this right is available, it is both difficult and costly to prove.
What is Copyright?
Copyright ownership allows the owner to prevent the unauthorised use of the work, such as making copies or uploading the work to the internet.
Copyright automatically arises on the creation of the work and lasts for 70 years after the death of the author in relation to dramatic, artistic, literary and musical works. The creator of the work is usually the first owner of the copyright in it.
What are Design Rights?
To have a registered design right, design owners can apply for a UK Registered Design mark or a Community Registered Design mark.
A registered design must meet certain criteria and must be:
• of individual character; and
• not excluded by statute.
Protection lasts up to 25 years and the rights are renewed every five years. Registering a design is relatively low-cost and is appropriate for industries such as fashion where design is fundamental in recognising and selling the product.
If a design is registered, subject to meeting the criteria, it will have a right against copying. Protection is given at both the UK and EU level, however, the EU right is much broader but only lasts for three years. The UK right gives ten years’ worth of protection from when the product was first marketed.
Examples of work, or recent work where indicated, in this area include:
- A review of trade marks for a DIY trade centre, advising on the marks to be registered, possible classes of registration and cost analysis. We liaised with our trade mark agent over the merits of the applications, including filing international, EC and UK only trademarks and whether a series mark could be applied for.
- Working closely with a patent attorney to secure registered design rights and a patent for an innovative concept vehicle.
- Working with a patent attorney, we have been successful in obtaining patent protection in relation to elements of a renewable energy device.
Licensing and exploiting your Intellectual Property
Our specialist Intellecutal Property Team provide advice to a broad range of clients on Intellectual Property related matters from initial registration, its exploration/lawful use through to protection and enforcement where necessary.
Identifying what IP you have and filing the appropriate applications for registration of your IP are only the first steps in protecting and exploiting your IP.
Please click on the links below to find out more about licencing your intellectual property:
What is an IP Licence?
An intellectual property licence is a permission given by the owner of intellectual property (commonly known as the ‘Licensor’) to a third party (the ‘Licensee’) to lawfully use or exploit the Licensor’s rights to the intellectual property. Under the terms of a licence agreement, the licensor remains the owner of the intellectual property.
The intellectual property licence typically covers the following items:
- Extent of grant of rights
- Payments (consideration) and payment terms
- Obligations of licensor and licensee (positive and negative)
- Warranties and indemnities
- Term and termination
What are the pros and cons of licencing my IP?
If you are an owner of intellectual property, licensing could allow you to minimise capital investment and risk. You could tap into a license’s productive capacity and expertise in a local market and even penetrate new markets where local knowledge or local manufacture is essential. Also, where a particular product is not a priority for you, a licence could allow you to obtain value from intellectual property that you would not otherwise exploit.If you are an owner of intellectual property and the resulting product is ultimately successful, your returns are likely to be smaller than if you commercialised the technology yourself. You will lose some control over your intellectual property, you may restrict your own ability to exploit it and limit your own market. If you give away know-how, you could be seeding future competition. It is thus very important that the licence agreement is carefully drafted to avoid prejudicing any exploitation you may wish to undertake yourself in the future, particularly if the licence arrangements do not go to plan.
In exploiting your IP, it is vital that you do this in a safe and controlled manner to ensure that you have adequate protection and that your IP is not put to any unnecessary risk or exposure. We are experienced in advising on routes to exploit your Intellectual Property and in drafting the necessary documentation that you may require to licence your IP, including:
- copyright notices;
- research and development agreements;
- exploitation agreements;
- IP ownership agreements;
- IP assignments and licences;
- trade mark licences;
- NDAs/confidentiality agreements.
Recent examples or our work in this area include:
- Advising a technology company on the terms of a tri-party consortium agreement which involved the divulging of confidential information and intellectual property rights, resulting in the creation of jointly owned IP;
- Drafting copyright notices for autobiographies;
- Drafting confirmatory assignments of all existing and future copyright and other intellectual property rights to our client where third parties were providing consultancy services and developing software to be integrated into our client’s bespoke products;
- Drafting trade mark licence for the use of a well-known symbol by food manufacturers, suppliers, restaurants and other food outlets and in accordance with strict product guidelines;
- Drafting mutual and one-way confidentiality agreements for software providers & developers.
Your IP is an asset of your business and therefore it is important that your corporate structure also protects your IP. We work closely with our clients to review their existing corporate structure to identify whether any reorganisation would be beneficial to the ongoing IP protection and exploitation of their IP.
Our IP experts are also on hand to review and discuss any agreements that your business is considering entering into, for example, co-operation or partnership agreements or research and development agreements. These could have a direct/indirect impact on your existing IP or result in the development and creation of new IP. We can draft or amend such agreements to ensure the necessary protections and restrictions have been catered for so that such IP vests appropriately.
Recent examples of our work in this area include:
- Drafting assignments of intellectual property rights (including database rights) as part of an asset purchase where the selling company was in liquidation;
- Drafting a confirmatory letter of assignment and acknowledgement that subsequent works provided by a contracting third party were adaptations of original works previously provided and therefore formed part of and subject to the terms of the original assignment;
- Reviewing and amending a consultancy agreement with a US company to vest resulting IP from software development services being provided under the agreement with the US company.
- Drafting a “back to back” sub-contracting agreement for the provision of software development services to a software consultancy company who in turn were providing services to a third party (being the ultimate recipient and owner of any IP).
Our IP experts, in conjunction with our employment team, can review and assess your employment contracts and sub-contractor agreements to ensure that appropriate provision has been made to vest IP in your business and that any relevant waivers of moral rights have been provided for.
Our IP team also works closely with our corporate team on mergers and acquisitions by undertaking IP due diligence exercises, advising on suitable warranty/indemnity cover and preparing all IP-related documents.
For more information on our corporate services, please see our corporate services.
Should the unfortunate happen and you find that your IP is the subject of infringement or a passing-off action, breach of copyright or design right infringement, our experienced IP litigators can provide advice and assistance on all contentious matters that may arise. They have substantial experience in handling infringement actions, passing-off claims and all other types of IP litigation and you can be sure that a robust approach will be taken to protect your business assets.
For further information on our litigation services, please see our litigation services.
We are experienced in assisting clients with the registration and management of their trade mark portfolios and provide ongoing assistance to both large corporate clients and individual entrepreneurs with the breadth of their IP requirements.
Our intellectual property solicitors have also assisted with securing funding to develop innovations and concepts which have now progressed to stages where registration applications have been successfully lodged in respect of patents and design rights.
Intellectual Property Lawyers Association (ILPA)
We are members of the Intellectual Property Lawyers Association (ILPA). The ILPA is an association of 66 law firms who have an established intellectual property department.
Key activities of the ILPA:
– Representing the solicitors’ profession in the Users’ Committee of the Intellectual Property Court and the Intellectual Property Enterprise Court
– Monitoring the progress of relevant national and European legislation and participating in consultations
If you would like more information about intellectual property please see below