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

  • 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. In July of that year 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. In April 2018 the UK ratified the UPC Agreement, although it still needs ratification from various other EU members before it can come into force.
  • 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.
  • The Court of Justice of the European Union (CJEU) recently ruled against Nestlé in its bid to register its four-finger KitKat as a trademark 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 trademark. Similarly, in November 2017 The London Taxi Company lost its appeal to register the traditional London black cab as a trademark and thus protect it from competitors producing similar models.
  • Copyright disputes over music royalties have hit the news again and again recently: infringement proceedings have raged for years around apparent similarities between Led Zeppelin's "Stairway to Heaven" and lesser-known band Spirit's "Taurus", while Ed Sheeran added the the writers of TLC's "No Scrubs" to the songwriting credits of "Shape of You" after comparisons were drawn between the two tunes.
  • Meanwhile, the music industry and YouTube have been battling over whether platforms like YouTube should pay for music videos on their sites. Stars including Taylor Swift, Paul McCartney and Jay-Z have all spoken out against YouTube, and in June 2018 the company lost a vote in Brussels over copyright laws that could force it to pay billions for users watching music videos.
  • 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. By 2017, the number of cases filed had soared to 237,242. 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.