Intellectual property

In a nutshell

Copyright lawyers, patent attorneys and trademark 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.

Trademarks 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. Copyright, on the other hand, lasts during the lifetime of the creator and for a period after their death, and arises automatically on the creation of such products as music, artwork, works of literature or reference, databases, and web pages.

A single product (e.g. 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, trademarks 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, trademarks 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 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 trademark 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 trademark, 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

October 2023

• During a recession, research and development budgets are slashed as companies hunker down and seek to shore up their finances. This means fewer new products and inventions needing to be patented and licensed.
• The Intellectual Property Office is considering making a change to the “copyright exhaustion” rule, which sets out the time frame under which the distribution rights of a rights holder expire. EU rules meant that the first purchase of a product marked the point at which it could be sold on in the same territory without the control of the rights holder, but these rules are now being reconsidered post-Brexit. A consultation released in 2022 by the Intellectual Property Office found that the UK has four options for its future exhaustion regime. 
  
• The race to develop and distribute viable Covid-19 vaccines was a collaborative one, and pharmaceutical companies were rightly reluctant to defend their intellectual property rights to the usual extent. It remains to be seen whether this will leave a lasting impression on the way these companies handle their IP rights.
• Advancements in Artificial Intelligence (AI) could create confusion around IP rights. It is not clear who can exercise copyright protection over works created by AI. Only two months after its release, ChatGPT reached 100 million user ; currently, it is not clear how such works could be copyrighted, and by whom.
• Music consumption is now dominated by online streaming, and there have been calls from music industry figures for the government to amend the 1988 Copyright Act to introduce a similar royalty payment system for streaming companies as there is for radio. As it stands, UK radio stations buy a license from what is called a ‘rights collection company’, which then pays musicians according to how often their songs are played.
• Non-Fungible Tokens, which are digital units of value that can be used to provide authentication for real-world asset using blockchain technology, present many IP issues. In 2022, Nike filed a lawsuit against StockX, a company that re-sells trainers, concerning NFTs sold by Stockx that were intended to serve as a digital receipt for real-world trainers, including ones made by Nike. Nike argued that these NFTs could be seen as a separate, digital pair of trainers over which it could exercise its copyright.
• Launched in June this year, the Unitary Patent and Unified Patent Court (UPC) now allow entities to get patent protection across the EU by one application to the EPO. The UPC will deal with issues of infringement regarding Unitary Patents and European Patents.
• An appeal in the Supreme Court looks set to lay the groundwork for precedent in cases of AI inventorship. Dr Stephen Thaler, inventor of the “DABUS” AI argues that his application for patents for creations by the AI should have been approved because the Patents Act does not require inventors to be human, just that they must be the devisor of the item.