Intellectual Property

It is vital that these assets are protected from potential competitors, so you are in control of how you choose to exploit them. You will need the advice of specialist IP Solicitors to ensure legal recognition and enforcement of the ownership of your IP rights and to regulate their use by others.

It is important to understand the difference between the various types of intellectual property, so you can consider how best to protect your rights.

Registered and unregistered intellectual property rights

IP rights generally fall into two categories: registered rights and unregistered rights.

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, trade marks and registered design rights.

Unregistered rights arise automatically, giving protection against copying or use of the right, and include copyright, unregistered design rights, rights in unregistered trade marks and confidential information.

What is a patent?

Patents provide inventors with a legally protectable monopoly over their inventions and protect new and innovative technical features of products and processes. They last for a limited period (20 years in most countries).

To qualify for patent protection, an invention must be new, 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, normally with the patent office of the country where the inventor works.

Patents can provide a high level of protection and are vital in some industries; this is clearly seen in the case of pharmaceutical companies, who invest heavily in 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 trade marks?

A trade mark is a symbol, word or words used by a trader to distinguish its products or services from those of others.

A trade mark can be a brand name, a 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.

Trade marks owners can apply for a Community trade mark (CTM) or a UK trade mark. A UK registered trade mark is only enforceable in the UK, whereas a CTM is enforceable throughout the EU. Each type of registration lasts ten years, and is renewable for further ten-year periods.

It is also possible to register trade marks throughout the world, although it is advisable to initially register them in the countries where the goods or services are to be supplied.

To be registrable, a trade mark must be distinctive, capable of being represented graphically, capable of distinguishing goods or services, and not excluded by statute.

What is passing off?

Bringing a claim for passing off can be difficult and costly to prove. However, it may be used to enforce rights in an unregistered trade mark to protect any goodwill in such mark. 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 damage has been caused.

What is copyright?

Copyright automatically arises on the creation of original literary, dramatic, musical and artistic works and lasts for 70 years after the death of the author. The creator of the work is usually the first owner of the copyright in it.

Copyright protects against the copying of another’s work and the physical expression or representation of an idea, but it does not protect against independent development of the same idea.

Copyright ownership allows the owner to prevent the unauthorised use of the work, such as making copies or uploading the work to the internet.

What are design rights?

Design rights protect the appearance, shape and configuration of a product and can be registered or unregistered.

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 novel, of individual character and not excluded by statute.

Protection lasts up to 25 years and the rights are renewed every 5 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 3 years. The UK right gives 10 years’ worth of protection from when the product was first marketed.

Licensing and exploiting your IP

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.

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. 

Our specialist IP Solicitors can advise on the range of documentation that you should put in place to best protect your interests, including:

• copyright notices;

• research and development agreements;

• exploitation agreements;

• IP ownership agreements;

• IP assignments and licences;

• trade mark licences; and

• NDAs/confidentiality agreements.

For more information on IP please visit The Government Intellectual Property Office.

We provide practical, commercial and coherent advice and are able to deliver a complete service with support from our Property, Employment, Commercial, Dispute Resolution and Private Client teams.

Our ethos is to provide our clients with an alternative to the major regional and national firms by offering high quality legal advice from highly experienced, specialist solicitors, but on a much more cost-effective basis.

We work closely with our clients to ensure that we meet their expectations both in terms of their objectives for a particular piece of work and in relation to costs. We are easy to deal with, clear in our advice and understand that a common sense approach is often required. As standard practice, we give our clients an estimate of the costs involved in undertaking any piece of work at the outset. We can then provide costs updates on a regular basis. In addition, where appropriate, we are happy to discuss other pricing models (for example, fixed fees and retainer arrangements) if that is helpful to you.

Our specialist IP team advise a broad range of clients on IP matters, from initial registration and exploitation/lawful use through to protection and enforcement, where necessary and have a wealth of experience in registering and protecting intellectual property rights.

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.

Examples of our work in this area include:

• Working with a specialist patent attorney to obtain patent protection for a SaaS product;
• Assisting a client with analysing market presence and intellectual property registrations from a legal perspective  in relation to a variety of potential new brand ideas;
• 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;
• Advising an aviation specialist in relation to a collaboration agreement and the licensing of know how;
• Advising a film production company in relation to the ownership and licensing of various rights in connection with a film;
• 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 a 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.

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.

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