Guide to Doing Business in the UK - Intellectual Property

Many businesses either do not recognise what intellectual property they have or (if they do) how to go about protecting it. Whether it is a brand name, invention, design, database or literary/media work, the UK has various legislation and systems to assist businesses in protecting and exploiting their intellectual capital.

Patents

A patent is the principal means of protecting a new invention, whether it is a product or a process.

In the UK, it is necessary to apply to the Intellectual Property Office (“IPO”) for a patent that covers the territory of the UK only. Applications for patent protection in a number of European countries, including the UK, can be made via the European Patent Office in Munich. Points to note:

• Patents generally last for 20 years from filing (provided that they are not revoked);
• They grant the owner a monopoly right in the territory; and
• Certain “inventions”, including those relating to computer programs or certain discoveries, may not be patentable.

On an international level, the UK is party to various international treaties and conventions, most notably, the Patent Co-operation Treaty (“PCT”), to which a significant number of other leading economic countries across the globe are also signatories, and the European Patent Convention (“EPC”) to which (as its name suggests) most other European countries are also signatories.

The main difference between the PCT and the EPC is that, following the making of the initial application under the PCT, the applicant must then pursue his application for patent protection separately in each of the individual countries in which he seeks patent protection. Under the EPC system the application for patent protection in each of the nominated European countries is processed centrally by the European Patent Office, located in Munich.

What is patentable?
To be patentable, an invention must be ‘new’ (i.e. it was not known anywhere in the world prior to the date the patent application was first filed), must involve an ‘inventive step’ (i.e. must not be obvious to a person skilled in the relevant art) and must be capable of being ‘industrially applied’.

What is the process?
The applicant must first file an application form and pay the relevant fee. The IPO will then carry out prior art searches to see what is already in the public domain.

In the UK, approximately 18 months on from the initial application, a more detailed application and the search results are published to the public, even though a patent has not yet been granted.

Thereafter, the applicant must request a substantive examination of the patent application, for which a further fee is payable. Providing objections to any prior art etc are resolved, the patent is then published. If the examiner refuses to grant a patent, there is a right of appeal.

Key points to remember

• In order to avoid wasting time and money filing an application for a patent which will (ultimately) not be granted because the invention is not patentable, it is sensible in advance of filing an application to consider either personally conducting a preliminary ‘prior art’ search, or to conduct one via the Search and Advisory Service at the IPO or via Ashfords or a patent agent; and
• The invention must be kept secret until after the patent application has been filed. It is important that any information about the invention does not enter the public domain, whether in writing or by word of mouth, before the patent application has been filed. If not, you may end up not being granted a patent.

Copyright

Copyright protects the authors of ‘original’ qualifying works by preventing others from copying, disseminating and adapting all or a substantial part of such works without first obtaining the author’s permission.

The types of work protected by UK copyright include original literary, dramatic, musical and artistic works, sound recordings, films and broadcasts and the typographical arrangement of published editions. Examples of qualifying works range from letters, scientific papers, magazines, books, novels, plays, poems, photographs, drawings, sculptures, works of art and musical compositions. These works must be ‘original’, i.e. not copied from another earlier source and the product of the author’s own skill, labour and judgment.

In general terms, copyright protection lasts for the life of the author plus 70 years, although there are a number of exceptions to this rule, for example in relation to sound recordings.

UK copyright works are protected overseas pursuant to the provisions of several copyright conventions and treaties, such as the Berne Convention, the Universal Copyright Convention, the Rome Convention and WIPO treaties.

Moral Rights
These are a set of rights which apply to certain types of copyright work. As they are personal in nature, they cannot be assigned to someone else. In general terms, these rights entitle the original authors/participants of certain copyright works:

• To be identified as the author or director of that copyright work (the “right of paternity”) and to object to derogatory treatment of that copyright work (the “right of integrity”);
• The right not to suffer false attribution of a copyright work; and
• To privacy in respect of certain films and photographs.

Moral rights need to be considered in any commercial transaction involving copyright works and a waiver of moral rights may in some cases be required.

How is copyright created?
In the UK, copyright protection arises automatically when certain qualifying criteria are met. There is no need to “apply” for copyright protection.

Although not required under UK law, it is advisable to mark any copyright work with a © symbol, followed by the name of the author and the year of first publication. This should deter any unauthorised copying and will assist in proving the date of creation, the name of the author and the name of the first owner of the copyright work.

Trade Marks

A ‘trade mark’ can be any sign capable of being represented graphically, which is able to distinguish the goods or services of one business from those of other businesses.

A trade mark can take the form of words, slogans, colours, designs, letters, numbers or even sounds. Trade marks are protected in the UK in two principal ways. The best form of protection is to seek to register them as UK registered trade marks for the goods and/or services for which they are used. Also, ‘common law’ rights in a trade mark can be created through the use of that trade mark in trade. Such rights are protected through the tort of “passing-off”.

Registered Trade Marks

• Give the owner exclusive rights to use the mark in relation to the goods and services for which it is registered;
• The owner can prevent third parties using a similar mark, if it causes confusion;
• The owner can prevent the mark being used on dissimilar goods, in certain cases;
• Registered trade marks cannot be descriptive (i.e. they cannot describe  characteristics of the goods);
• Registration can be on a country by country basis or via the Community Trade Mark (which provides protection throughout the EU);
• Registration lasts for 10 years, but can be renewed indefinitely;
• Registration is obtained via the IPO for a UK trade mark. Fees are payable on an incremental basis depending on the number of classes which are applied for. The application will be considered by the IPO to check to see if it complies with the requirements for a trade mark, including whether it is distinctive;
• Registration can take a number of months (there is also a two to three month opposition period before registration which allows third parties to raise objections); and
• A successful registration allows the business to use the ® symbol.

Unregistered Trade Marks

• Protected by the law of “passing off”. More complex than a registered trade mark, as the owner has to not only show that the infringing mark has or is likely to cause confusion, but also that it has a reputation and trade in the mark and that it has or will suffer a loss; and
• Unregistered trade marks are often suffixed with “TM”.

Registered and Unregistered Designs

Registered Designs

• Protect the “appearance of the whole or part of a product”;
• Can protect  3D articles, surface decoration etc;
• Must be “new”, although a 12 month grace period is allowed to enable the owner to market test; and
• Creates a monopoly right for up to 25 years.

Unregistered Designs

• Protect designs relating to “the shape and/or configuration of whole or part of an article”;
• Generally protect 3D shapes, rather than surface decoration;
• Unlike registered designs, it is not a monopoly right and, as such, “copying” must be shown; and
• Designs are not covered if they are commonplace.

Domain Names

The UK has a top level domain name of .uk. The .uk domain name is regulated by Nominet. Domain names can be registered via a number of organisations and prices and the time period for any approved registrations will vary. It is important to ensure that:

• The domain name is registered in your business/company name and not in the name of the organisation that registered it for you; and
• You keep a check on applicable renewal dates for domain names.

When registering a domain name you are required as part of the terms of registration to confirm that it is not made in bad faith and that it does not infringe third party rights. The registration of domain names that are protected by third party rights can result in a claim for trade mark infringement (registered or unregistered). Nominet also have a dispute resolution procedure to deal with disputes.

Ashfords LLP is regulated by the Solicitors Regulation Authority.  The information in this note is intended to be general information about English law only and not comprehensive.  It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.