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; it's only in recent years that the government has begun to try and address ambiguous territory. For example, an exception was introduced in The Intellectual Property Act 2014, which legalised the copying of purchased music onto CDs and other devices. However, this was reversed only a year later when a high court judge struck the exception down. 
  • The Digital Economy Act increased the maximum sentence for copyright infringement from two to ten years in prison. Enforcement so far seems to be more targeted at copyright infringement for commercial purposes rather than personal use. 
  • The outcome of the EU referendum has cast doubt on the UK's role in the long anticipated introduction of the Unified Patent Court (UPC) and the European patent with unitary effect (unitary patent or UP) – both of which are due to come into force in 2018. 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 (except for Spain, Poland and Croatia, which will not be taking part). The British government has stated that it will ratify the UPC, but no legislation has been prepared to do so and present agreements state that non-EU members cannot participate. 
  • 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. 
  • Smartphone-related technology continues to produce many a patent/IP dispute. Apple, for example, has been embroiled in a number of spats with rival Samsung, as well as Qualcomm (a dominant semiconductor and telecoms company, whose case could see certain iPhone models banned from sale in the US) and British-based Imagination Technologies, which is arguing that Apple will infringe its IP if the tech giant stops buying its chips and tries to make its own.
  • Artists are increasingly suing each other for infringement. After being sued for $20 million for infringing X Factor winner Matt Cardle's single Amazing, Ed Sheeran settled the lawsuit. Sheeran has also faced a copyright accusation from Marvin Gaye's estate over similarities between his song Thinking Out Loud and Let's Get It On; the Gaye estate had previously filed a successful lawsuit against Robin Thicke and Pharrell Williams.
  • China is aiming to become a premier jurisdiction for intellectual property. It heard over 130,000 IP cases in 2014 – the volume of which caused the Chinese Communist Party to establish a trio of specialist IP courts located in Guangzhou, Beijing and Shanghai. Foreign firms are therefore increasingly confident that their IP rights will be protected and enforced in the jurisdiction; a Santa Clara University School of Law study found that 70% of cases brought against local firms by foreign rights holders won. Law firm Rouse found that extending the period covered to 2014 increased that percentage to 80%.