Article - Chambers Student Guide

Intellectual property

In a nutshell

Lawyers, patent attorneys and trade mark attorneys work to protect their clients’ intellectual property assets. Technical solutions to technical problems are deemed to be inventions, usually protectable via patents that provide their proprietor with the exclusive right to stop others working in the claimed area for a period of usually up to 20 years. Preparing a patent specification is a highly specialised task requiring particular scientific/technical expertise and knowledge, combined with experience and knowledge of complex application procedures.

Trade marks used to sell goods or services are protectable by way of a registration procedure and provide a potentially perpetual monopoly right. The aesthetic shape and way a product is designed is also protectable via registered design protection for a limited period of time. Unregistered rights also exist for a time for various designs of products. Then there is copyright which lasts during the lifetime of the creator and for a period after their death, and which arises automatically on the creation of music, artwork, works of literature or reference, databases and web pages, for example.

A single product such as a mobile phone will be protected by several different forms of IP in countries all around the world. For would-be competitors wanting to make or sell something similar, a first costly hurdle is simply finding out what these rights are and who owns them. Worst-case scenario, getting it wrong or overlooking an IP right might result in being on the wrong end of a court injunction or costly damages (fearsomely so in the USA) and ignorance is no defence! The work of an IP lawyer is not only specialist in itself, but increasingly it requires close collaboration with other specialists in areas such as IT, media, competition, telecommunications, life sciences and employment.

What lawyers do

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Search domestic, European and international registers of patents, trade marks and registered designs to establish ownership of existing rights or the potential to register new rights.
Take all steps to protect clients’ interests by securing patents, trade marks and registered designs; appeal unfavourable decisions; attack decisions that benefit others but harm the lawyer’s own client.
Write letters to require that third parties desist from carrying out infringing activities or risk litigation for damages and an injunction.
Issue court proceedings and prepare cases for trial, including taking witness statements, examining scientific or technical reports and commissioning experiments and tests. Junior lawyers may find themselves conducting consumer surveys and going on covert shopping expeditions.
Instruct and consult with barristers. Solicitor advocates can appear in the Patents County Court; the advantages of having a specialist IP barrister for higher court hearings are obvious.
Draft commercial agreements between owners of IP rights and those who want to use the protected invention, design or artistic work. The most common documents will either transfer ownership or grant a licence for use.
Work as part of a multidisciplinary team on corporate transactions, verifying ownership of IP rights and drafting documents enabling their transfer.

The realities of the job

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Lawyers must be able to handle everyone from company directors to mad inventors. Clients come from manufacturing, the hi-tech sector, engineering, pharmaceuticals, agrochemicals, universities and scientific institutions, media organisations and the arts.
A degree in a relevant subject is common among patent lawyers. Brand and trade mark lawyers need a curiosity for all things creative and must keep up with consumer trends. Both need a good sense for commercial strategy.
Attention to detail, precision and accuracy: you must be meticulous, particularly when drafting, as correct wording is imperative.
In trade mark and design filings and prosecution, everything has a time limit. You will live by deadlines.
In patent filing, procurement and strategy, you’ll need to work seamlessly with a patent attorney. There are hardly any solicitors who are also patent attorneys (and vice versa).
The volume of information and paperwork involved can be huge on patent matters, though on the plus side you could get the opportunity to visit research labs or factories to learn about production processes, etc.
The stakes can be big. Commercial research and development in the pharmaceutical sector is motivated by profit not philanthropy. The investment involved will have been colossal, and even a day’s loss of sales can be eye watering. Success or failure in litigation can dramatically affect a company’s share price.
Manufacturing, pharmaceutical and research companies usually employ patent specialists and there tend to be in-house legal teams at all the larger companies. In the media, major publishers and television companies employ in-house IP lawyers.

Current issues

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There will be significant changes to copyright law following the 2011 Hargreaves Review, which made a series of recommendations aimed at modernising the current system.
The liquidity crisis led to a growing awareness of intellectual property as a valuable asset. Businesses have become more aggressive in protecting their rights and litigation is on the rise. The English courts’ reputation for being patent-unfriendly has been challenged by recent judgments.
International efforts are being made to harmonise aspects of patent procurement. The European, US and Japanese Patent Offices are testing out patent prosecution ‘superhighways’ to try and streamline the detailed processes of searching and examining patent applications. The European, US, Japanese, Korean and Chinese patent offices are looking at work sharing.
The EU continues to move closer to getting a pan-European patent set-up, but politics over language has proved a monumental brake on progress for many years.
Patent litigation costs continue to be a big issue (as highlighted by a £5.2m bill handed to BlackBerry by Allen & Overy in 2008 following a five-day trial) and the judges are most unhappy about it. Kitchin J gave assembled ranks of City solicitors a hard time in a seminar but the big litigators seem unrepentant, claiming that their clients have deep pockets and are entitled to spend vast amounts of money on having lawyers go through every document in fine detail and analysing them to death, if they so choose.
In the trade mark arena many clients are seeking strategic advice on how to tackle the growing problem of counterfeit goods. L'Oréal’s case concerning eBay’s liability in relation to counterfeit goods sold on its auction site was referred to the ECJ by the French courts. Its decision was heralded as a triumph for luxury brand owners utilising selective distribution channels. The trend for digitalisation is bringing online IP issues to prominence, and another eagerly awaited ECJ referral was that of Interflora v Marks & Spencer, in which the latter bought sponsored links from Google for the words Interflora, Inter-Flora and Intraflora. The law in the UK appears unclear on whether buying a keyword that matches another firm’s trade mark is lawful. User-generated content is also an issue.
Convergence between different forms of media and technology is giving rise to sensitive issues of data protection.
European patent attorneys and trade mark attorneys now more than ever work as separate professions, but mostly still stick together in private practice partnerships, some of which are LLPs and a very few incorporated.
Whilst historically some law firms have employed patent attorneys and/or trade mark attorneys, this model has not taken hold widely. Over in the patent attorney profession, there are examples of a more joined-up approach to offering IP legal advice and litigation. Two good examples are HGF and Marks & Clerk. Both have patent and trade mark attorneys now working alongside solicitors’ practices. If the new regime of Alternative Business Structures is a hit then the IP advice sector could see some interesting developments.