Introduction to Intellectual Property
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English Mathematician and Philosopher (1861-1947)
Intellectual Property is a broad term for the area of law which deals with Patents, Trade Marks, Designs, Copyright and other related rights. Whilst these rights cover different types of intellectual creation, registered Intellectual Property rights grant the holder exclusive rights to exploit the subject of the rights in a given territory. These exclusive rights are typically negative in nature, which means that they grant the holder the right to exclude third parties from exploiting or “infringing” their exclusive rights.
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What is Intellectual Property (IP)?
Everyone has ideas, and some ideas are worthy of commercial exploitation. We would not want others copying those ideas and or at least would want to restrict other's use and access to them. IP law does not protect an idea in and of itself – IP law only protects the expression of an idea, and different types of ideas can be protected in different ways, depending on how the ideas are expressed. This intellectual output and its protection is known as "Intellectual Property". Intellectual Property is a collective term for various types of intangible assets which include trade marks, design rights, patents and copyright.
The aim of IP law is fundamentally to recognise human creativity, as the protection afforded by IP law for owners of these rights is an incentive for creation and development. The economic well-being of the UK involves the creation and development of new technologies and industries which encourage progress and commercial growth. IP rights have a significant role to play in the scientific, creative, design and engineering industries. By creating a form of property, albeit intangible, IP rights allow property owners to decide who, if anyone, can use their property and IP law protects the rights owners against unfair competition and infringement. By promoting registration and disclosure, IP protection stimulates innovation for the benefit of a greater number.
An IP right is a form of property with value, which can be bought, sold or licensed for exploitation. The owner can retain ownership of the IP right but allow someone else to use it on specific terms through licensing arrangements. For any arrangement involving the exploitation of IP, the terms of the contract must be explicit in setting out the ownership arrangements, the permitted and restricted areas of use, the charging structure, the liability of the parties, and what happens when the contract terminates. You are advised to seek independent legal advice when considering such arrangements.
Acts that infringe on intellectual property rights include the reproduction in any form – including in an electronic medium and transient reproduction – issuing copies of the work to the public, renting or lending the work to the public, performing the work in public, and communicating or adapting the work.
Intellectual property rights protect your investment in developing and bringing products to market, and adds value to your company. It can also attract investment to your business, and can function as a marketing tool.
Types of Intellectual Property
(Unless otherwise specified, this content is based on a University of Edinburgh lecture on Intellectual Property given by Chris Martin (Out-Law.com).)
Patents
Patents are granted in respect of an invention, that is they cover products or processes and are technical in character. A UK Patent prevents third parties, without the consent of the Patentee, from making, selling or hiring, offering to sell or hire, or importing products incorporating their invention in the United Kingdom. In the UK a Patent lasts for a maximum period of 20 years, subject to payment of renewal fees. In order for a UK Patent to be obtained, it is necessary to file and prosecute an Application before the UK Intellectual Property Office (or the European Patent Office). The UK Intellectual Property Office recommends that you employ a Patent Attorney to prepare and file your Patent Application
In order for an invention to be patentable it must fulfil three main criteria: novelty, inventive step and industrial application. Novelty, simply put, means that your invention must be new and must not have been revealed to the public in any way before the date of filing of the patent application. An invention can be revealed to the public by advertising, selling or even word of mouth so it is important that your invention is kept confidential until a patent application has been filed.
An inventive step requires that your invention is not obvious over what has gone before but has some “inventive” character, while the industrial application of your invention refers to the ability of the invention to be exploited for commercial gain.
Note: The requirement for novelty is absolute: even your own disclosure prior to filing an Application can be novelty-destroying. Therefore it is imperative that your invention remains confidential until your Application is on file with a Patent Office.
Trade Marks
A Trade Mark is any sign which is used by an undertaking in the course of trade which serves to distinguish their goods or services from those of other undertakings. Trade Marks therefore act as a “badge of origin”. In order to fulfil this function it is necessary that a Trade Mark is capable of distinguish goods or services of one undertaking from those of another (i.e. must be distinctive) and must not be wholly descriptive of the goods and services concerned. Trade Marks are registered in one or more classes, covering the specific goods and services for which you intend to use the Trade mark. In the UK, a Trade Mark registration lasts for a period of ten years, but may be renewed perpetually for further ten year periods, upon payment of renewal fees. Conventional Trade Marks include names, logos and domain names. However, it is also possible to register less conventional trade marks such as slogans, shapes, colour and sound. Examples of such Trade Marks include the pantone colour purple 2685C (Cadburys) and “Just Do It” (Nike). In order for a Trade Mark Registration to be obtained, it is necessary to file and prosecute an Application before the UK Intellectual Property Office.
Note: The symbol ® indicates that the Trade Mark is a registered Mark. The TM symbol indicates that the Mark is being used as a Trade Mark, although it gives no indication whether the Mark is registered or not.
Designs
Design IPRs protect the appearance of an article or website, and can be registered or unregistered.
Registered designs provide the owner with a monopoly right which is infringed if a third party produces an article which looks the same as the registered design without the consent of the owner of the registration. Designs are registered for the appearance of an article which can include, for example, surface decoration. An exception to design registration is for features which are solely dictated by technical function. A Registered Design gives 25 years protection from the filing date of an Application provided that renewal fees are paid. In order for a design to be registerable it must be new and have individual character. The design registration process in the UK is comparatively quick and can lead to enforceable rights within the UK in as little as 3-6 months.
Unregistered design right arises automatically and applies to original, non-commonplace designs of the shape or configuration of products. UK Unregistered design right gives 15 years protection from the design being first recorded in a design document, or, if the design is made available for sale or hire within 5 years of this recording, it gives 10 years protection from the end of the calendar year in which that recording took place. Community Unregistered Design Right can also give rise to protection for a design throughout the European Community, including the UK, which lasts for 3 years from the date on which the design is first made available to the public within the EU. However, unlike other forms of Intellectual Property, unregistered design right is a right to prevent copying, and is not a monopoly right. It is therefore necessary to prove that copying took place.
In order for a Design Registration to be obtained, it is necessary to file and prosecute and Application before the Designs Registry at the UK Intellectual Property Office. The Application must identify the Design and the article to which is to be applied. This will usually be by means of drawings although photographs or actual specifications may sometimes be appropriate.
Note: There is a 12-month grace period for filing UK Applications. However, many other countries do not allow a grace period and so an Application should be filed in the UK before the design is made available to the public, if your company wishes to protect the design in other countries as well. It is important to date your design documents and to keep records of when a design is first made available for sale or hire.
Copyright
Copyright is an intellectual property right that comes into existence with the work – there is no need for registration. Copyright subject matter includes literary, dramatic, musical and artistic works (LDMA) but not ideas per se. Literary Works include computer programs and compilations. The protection lasts the lifetime of the author, plus another 70 years for LDMA. Generally the author, employee, or publisher owns the copyright, however it is not always straightforward.
Interaction of Intellectual Property Rights
Whilst Intellectual Property Rights cover different types of intellectual creation, as outlined above, more than one type of Intellectual Property right can exist in a single product. The Intellectual Property Office gives as an example a mobile phone, for which Patent, Design, Trade Mark and Copyright protection are all relevant.
Exploitation of Intellectual Property
Intellectual property rights can generally be licensed, assigned or mortgaged to third parties. Licences allow a third party to exploit your Intellectual Property right, usually for payment of a royalty on the protected work. Licences can be exclusive (i.e. only the licensee can exploit the Intellectual Property Right) or non-exclusive. Assignment of an Intellectual Property Right is simply a transfer of ownership of your rights to a third party. Intellectual Property rights can also be mortgaged, or used as security against a loan in some jurisdictions.
Intellectual Property specialists
(Unless otherwise specified, this content is based on information provided by Kennedys Patent Agency Limited).
Should you use an Intellectual Property specialist or should you do it yourself?
There are a number of points to consider when deciding whether to employ an IP specialist. In particular, you need to consider whether you have the appropriate expertise to file, for example a patent application which is a complex legal document; ensuring not only that you can obtain a valid patent, but also that the patent covers your product or process and gives you a broad enough scope to deter your competitors.
An IP specialist may also be able to identify previously uncaptured Intellectual Property assets within your company, adding value to your business. They will also be able to help with exploitation and legal enforcement of existing rights where necessary.
When selecting an IP specialist to help you to capture and protect your IP, there are a number of factors you need to consider:
- Are they accredited by the appropriate organisations?
A Chartered Patent Attorney will be registered with the Chartered Institute of Patent Attorneys whilst a Chartered Trade Mark Attorney (CIPA) will be registered with the Institute of Trade Mark Attorneys (ITMA).
- Do they have the appropriate expertise to deal with your area of technology?
Most patent Attorneys should be able to deal with general mechanical inventions, but if your company deals with more complex electronics, computer software, chemistry or biotechnology you should ensure that your chosen company has expertise in these fields.
- Do they have good commercial awareness?
Intellectual Property rights can be a valuable tool if they are exploited correctly.
- Can you talk to them?
Your chosen company should be able to explain clearly the processes to you, and be willing to discuss new developments and opportunities for your company.
Further Information
- The UK Patent Office publishes guidance on patents, trade marks, designs and copyright, and can answer queries relating to the registration procedures.
- The Intellectual Property Office, a government website maintained by the DTI, contains general information about IP law.
- Detailed trade mark advice and details for trade mark agents can be obtained from the Institute of Trade Mark Attorneys.
- Further information on data protection and privacy can be obtained from the Information Commissioner's Office.
- Kennedys Patent Agency: Overview on Intellectual Property
- Alison M. Ross, Pinsent Masons: The Fundamentals of Intellectual Property Law and Legal Aspects of Website Design
- Michael Goldberg (Mohr Davidow Ventures): "Importance of Patents and Intellectual Property" in Stanford Entrepreneurial Thought Leader Speaker Series (video)
