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 ITmediacompetitiontelecommunicationslife sciences and employment.

Intellectual Property

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

  • In July 2019 the UK Intellectual Property Office approved a multimedia trade mark for the first time in its history. Toshiba registered the ‘motion mark’, which shows origami-style polygons appear and disappear around its logo. The UK updated trade mark legislation this year to include moving images, holograms and sound.
  • 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), which would streamline patent protection across all EU member states. In July 2018 the government proposed potentially sticking to both post-Brexit, while also establishing its own geographical indications (GIs) scheme to provide protection for those based in the UK. Brexit aside, the introduction of the UPC has been further delayed due to objections raised in Germany. A complained filed in 2018 was still yet to be sorted at the time of writing, further delaying the intended 2014 implementation date.
  • UK intellectual property laws are, for the most part, built on European directives and 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. In May 2018 a US court demanded Samsung pay $539 million in damages for copying features of Apple’s original iPhone.
  • Intellectual property disputes don’t only concern commercial businesses. In 2012 the Welsh Government became embroiled in a copyright clash over two pictures of poet Dylan Thomas that have been used in Visit Wales promotions, which a former BBC journalist claims copyright ownership of. With the case ongoing, the government has been criticised by Plaid Cymru for spending more than £700,000 of public money in legal fees so far.
  • The Court of Justice of the European Union (CJEU) recently ruled against Nestlé in its bid to register its four-finger KitKat as a trade mark after an objection by Cadbury, raising interesting questions in the IP circuit about whether a product’s shape alone would distinguish it enough to justify a trade mark.
  • China is aiming to become a premier jurisdiction for intellectual property. Between 2014 and 2017 the number of applications filed grew by more than 80%, causing 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. In 2019, China established a national centre to help Chinese businesses to understand and resolve IP disputes overseas. Foreign patent applications in China increased by 9% and trade mark applications grew by 15% in the first half of that year.
  • In one of the more novel transatlantic disputes of recent years, an independent businesswoman in Aberdeen triumphed over the major New York-based TV network Fashion One Television, a station with a viewership of more than 400 million people. Grace Hay, who runs Grace Lily Lingerie, attempted to register ‘Highland Fashion Week’ for an event she was running, but the broadcaster said it was too similar to their ‘Fashion Week’ trade mark and would confuse customers. After a three-year process, the UK Intellectual Property Office found this unlikely and therefore ruled in Hay’s favour.