Intellectual Property

In a nutshell

Copyright 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 an understanding of the 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 such products as music, artwork, works of literature or reference, databases, and web pages.

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. In the 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 US), 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

  • 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 by 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 Intellectual Property Enterprise 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.

Realities of the job

  • 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 are all important. You must be meticulous, particularly when drafting, as correct wording is imperative. Every aspect has a time limit. In trade mark, design filings and prosecution, 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 high. 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

  • UK copyright law has tended to lag behind the ways people use digital material and modern technologies; its only recent years that the government has begun to address ambiguous territory. The Intellectual Property Act 2014 introduced a number of exceptions to copyright rules, many of which aimed to clear up questions about what does and does not constitute infringement of copyright in the digital arena. For example, it is now legal to copy music from a CD to an MP3 player, which used (technically) to be illegal.
  • The Act also outlined further provisions to protect design rights on products such as furniture, homewares, packaging and footwear. The legislation particularly aimed to help small and medium-sized enterprises (SMEs) by offering a new service which gives parties the right to obtain a non-binding opinion from the Intellectual Property Office before going to court, in order to avoid costly proceedings. SMEs are still struggling to protect their intellectual property though: research released by the Federation of Small Businesses in June 2015 showed that 25% had suffered a violation.
  • Ministers are currently putting together proposals on tougher penalties for online copyright infringement. A consultation launched by the Intellectual Property Office and the Department for Business, Innovation and Skills (now the Department for Business, Energy & Industrial Strategy) is calling for the maximum sentence to be increased from two to ten years in prison.
  • The outcome of the EU referendum has cast doubt on the UK's role in the long anticipated introduction of the Unified Patent Count (UPC) and the European patent with unitary effect (unitary patent or UP) which are due to come into effect in 2017. Hailed as the biggest reform in the history of European patent law, the scheme will allow individuals and businesses to obtain a single patent covering the whole of the EU. However present agreements state that non-EU members cannot participate, which would leave the UK out in the cold.
  • UK intellectual property laws are, for the most part, built on European Directives and European Regulations, so any changes to IP laws in the UK will vary depending on the post-Brexit model. For example, a significant portion of the UK's IP laws are relevant to members of the European Economic Area (EEA) so if the UK decided to maintain an association with Europe similar to that of Norway, EEA governed regulations would remain influential over domestic law. If the UK were to adopt a different model it's likely it would implement laws that mirror existing regulations, but Brexit could allow more flexibility in the interpretation of domestic law.
  • Several landmark decisions were handed down in 2016: significant questions around trade mark theory were raised when an international alliance of tobacco companies claimed that plain packaging legislation for tobacco products in sold the UK infringed their trade mark rights. Their complaints were eventually rejected by the UK's High Court. Over in the US the six-year Oracle v Google software copyright dispute was resolved in favour of defendant Google. Had Oracle's claim succeeded, multiple users and distributors of Android smartphones could have been held liable for copyright infringement.
  • Technological innovation is bringing novel IP concerns. For example, after a macaque monkey took a selfie with photographer David Slater's camera, which later went viral, the US Copyright Office ruled that if an animal takes a photo the picture can't be copyrighted. Chefs have also raised their IP concerns lately due to the popularity of posting photos of restaurant meals to social media.