What is IP?

What is Intellectual Property?

What is IP? Creativity in Black and White

Intellectual property (commonly known as IP), applies to creations of the mind and encompasses a variety of forms including, inventions, literary works, artistic works, designs, symbols, names and images used in commerce. Virtuoso Legal is a team of highly-trained copyright lawyers that can help you with any enquiries.

If you have any intellectual property, it is protected by law through intellectual property rights – some of which you have to register and others which are automatic. This can include things like patents, copyright or trademarks, amongst others. Intellectual property rights enable you, the property holder, to earn recognition or financial benefits from anything you invent or create that is wholly original. The aim of the IP system is to find the right balance between the interests of the creators and innovators and the interests of the wider public who may overlook these creations and inventions and infringe on their creator’s rights. It is considered that achieving the right balance that is not unfair on the creators or the public is the best way to create an environment where creativity and innovation can flourish.

Intellectual property is limited to something that you physically create that is unique from anything else. Therefore, something like the idea for a book isn’t covered under intellectual property, whereas the specific words and passages you’ve written within the book are. Many have tried to claim that someone has “stolen their idea”, but because they only have an idea and not the physical product, they are quickly dismissed. Because of things like this, IP can get pretty complicated. To help you understand more we’ve created this page with all of the main information you need to know.


Contents:
  1. History of Intellectual Property
  2. Introduction to Intellectual Property
  3. Your Intellectual Property Rights
  4. Intellectual Property Infringement
  5. Intellectual Property Misappropriation
  6. Intellectual Property Enforcement
  7. Intellectual Property in 2018: 5 Themes
  8. Intellectual Property FAQs

History of Intellectual Property

The origins of IP law date all the way back to the Statute of Monopolies (1624) and the British Statute of Anne (1710), where early patent law and copyright respectively were implemented. The term “Intellectual Property” dates to 1769, when the phrase was used in a publication called “Monthly Review”.

Common usage of IP did not occur until over a century later. This was seen when the administrative secretariats, established by the Paris Convention and the Berne Convention (1886), merged in 1893. The organisation adopted the term Intellectual Property in their new combined title, as the United International Bureaux for the Protection of Intellectual Property. It was then succeeded in 1967 with the establishment of the World Intellectual Property Organization (WIPO), as an agency of the United Nations. At this point, the term gained widespread usage in the United States, which had not been part of the Berne Convention.

Until recent years, intellectual property law’s purpose was to give creators as little protection as possible, (so that the public could still benefit from new creations) and was granted in order to encourage innovation. Therefore, historically, patents and copyright were only granted when they were necessary to encourage invention and as such were limited in time and scope. Of course, this was done in a time when knowledge was viewed as a public good, in order to allow it to be extensively disseminated and therefore improved on.

The WIPO eventually aimed to create a comprehensive and universal set of minimum requirements, which would create a “one-fits-all” protection law on intellectual property. This idea was widely viewed with controversy regarding the differences in the development level of countries – meaning some would enjoy an advantage over others. Despite this, the agreement has extensively incorporated intellectual property rights into the global trading system for the first time in 1995. It has widely prevailed as the most comprehensive agreement reached by the world.


Introduction to Intellectual Property

Intellectual property’s main purpose is to encourage the creation of a wide variety of intangible goods for consumers. This is achieved by the law giving people and businesses property rights to the information and intellectual goods they create, however, typically only for a limited amount of time. Attaining these rights allows the owners to make a profit on them, giving an economic incentive for their creation.

The intangible nature of intellectual property, being that as it is information it is invisible, presents difficulties when compared to traditional property such as land or goods. An infinite number of people can “consume” an intellectual good without it actually being depleted. This also causes issues when it comes to investment in intellectual goods. It also causes problems when it comes to appropriation. In a real-world example, a landowner is able to surround their property with fences and guards to protect it, but the producer of information or an intellectual good cannot defend their property so easily. In theory, making way for the first buyer to replicate the property and sell it at a lower price. It can also be difficult to know when intellectual property theft has even occurred.

This issue is the primary focus of modern intellectual property law as they try to find a balance in the rights given to owners so that they can protect their property. They need to be strong enough to encourage the creation of information and intellectual goods through good protection, while not being so strong that prevent the ability for this property to be widely used to the benefit of all.

Intellectual property rights are covered under the law by a number of rights that offer protection to the creators of intellectual goods and vary around the globe. These rights include things like: patents, copyright, industrial design rights, trade marks (spelt “trademarks” in the USA), plant variety rights, trade dress, geographical indications and in some territories, even trade secrets.

Additionally, there are specialised or derived varieties of sui generis exclusive rights – including circuit design rights, supplementary protection certificates for pharmaceutical products and database rights. As such, whatever industry a business operates in, there is a range of relevant IP rights that can be sought after. It is also typical for businesses to be unaware or underestimate how much IP they have and how important it is to their business.


Proof of Intellectual Property Rights

Proof of Intellectual Property: Patents

Patents are a form of right that is granted to you by the government, it gives the owner the right to exclude other parties from making, using, selling, offering to sell, and importing their invention for a limited period of time. In exchange, the creator must publicly disclose the invention, and then when the patent expires the invention becomes public domain.

Under patent law, an invention is a solution to a technological problem. This may be a product or process and generally must meet three main requirements in order to gain a patent:

  • It has to be a new invention.
  • It has to not be obvious.
  • It has to have an industrial application.

In order to enrich the body of knowledge and stimulate innovation, the patent owner is obliged to disclose any and all valuable information about their inventions to the general public.

Proof of Intellectual Property: Trade Marks

A trade mark is a form of recognisable sign, design or expression that identifies any products or services from those of other companies. Trade marks used to identify services are usually called service marks. Trade marks can be owned by an individual, business or any legal entity. They are usually located on a package, label, voucher or the product itself. Additionally, to preserve corporate identity, trade marks are often on the company’s buildings.

Trade marks can technically be a number of different things. This includes: words, logos, colours, combinations of sounds (e.g. an advertising jingle) and even smells!

The main thing about trade marks is that they are used to identify one buisiness’ products from another.

For example, we know that chocolate that is wrapped in purple packaging is Cadbury’s. Cadbury’s have a registered trade mark for this colour which no one else can use for confectionary without fear of hearing from Cadbury’s lawyers.

This is fair because Cadbury has built up a reputation for this colour in chocolate (which wasn’t there before they sold high-quality chocolate products in purple packaging). The trade mark protects this reputation and stops other people benefitting from or damaging it with inferior goods using the same mark.

So trade marks ae used to identify the brand owner of a particular product or service. Trade marks can also be used by other companies under licensing agreements, for example, the Lego Group purchased a license from Lucasfilm to allow them to launch the Lego Star Wars range and accompanying games.

Trade marks are designated by the following symbols:

  • – Unregistered Trade Mark
  • – Unregistered Service mark
  • ® – Registered Trade Mark

If you are a trade mark owner, you may pursue legal action against trade mark infringement. In most countries, you are required to register a trade mark as a pre-requisite for pursuing this type of action, although there are often some unregistered rights that can be perused such as “passing off”.

Proof of Intellectual Property: Industrial Design Rights

Industrial design rights protect the visual design of objects that are not wholly used for utility purposes. An industrial design includes the creation of a shape, configuration or composition of pattern or colour; or the combination of pattern and colour in a three-dimensional form and of aesthetic value.

Under The Hague Agreement Concerning the International Deposit of Industrial Designs, a treaty administered by WIPO, there is a procedure for an international registration. For something to qualify for registration, the laws of the majority of the WIPO member states require that the design is novel. Applicants can apply for a single international deposit with WIPO or individually with the national office of a country that is party to the treaty.

In addition to this, you can register designs at the UKIPO and at the European level at the EUIPO – though the protection each of these offers varies. In addition to this, designs also attract unregistered design rights at the point that they are made – though these rights are less robust than those that have been registered.

Industrial design right registration is related to granting a patent.

Proof of Intellectual Property: Copyright

Copyright is a legal right that grants the creator(s) of an original work exclusive rights over how the work may be used by others, however, usually for a limited time. It is, however, one of the longest lasting of the intellectual property rights. Exclusive rights are not absolute in their control over original work and are limited by exceptions made in copyright law, such as “fair use”.

As a form of intellectual property, copyright is applicable to forms of creative works including creative, intellectual and artistic forms. Copyright only protects the expression of ideas and not the underlying ideas themselves. So, for example, Harry Potter the character and the stories he appears in are protected by copyright (as well as trade marks) – but the idea of a book about a boy who goes to a school of magic is not.

Copyright holders have the right to:

  • Reproduction
  • Control over derivative works
  • Distribution
  • Public Performance
  • Moral rights (such as attribution)

Copyright usually expires 50 to 100 years after the creator has died, depending on the jurisdiction. In some countries, copyright formalities must be established for copyright to be granted, others recognise any complete work without formal copyright registration. For the most part, however, Copyright comes into existence automatically at the point that an original creative work is made.

The violation of intellectual property rights is called “infringement”. This term is used in regard to design rights, patents, copyrights and trade marks. infringement may be treated as a breach of civil law or criminal law, although this depends on the type of intellectual property, the country where it occurs and the nature of the action.

These rights are infringed when any works protected by IP law are used, copied or exploited without the proper permission from the person or organisation who owns those rights. A couple of examples of IP infringement include “counterfeiting” and “piracy”, as detailed below:

  • Counterfeiting is the practice of someone imitating genuine goods that are often inferior in quality with the intent to take advantage of the much more superior value of the product being imitated e.g. using identical or highly similar trade marks.
  • Piracy is defined by the unauthorised copying, use, reproduction and/or distribution of any materials that are protected by intellectual property rights e.g. the unauthorised recording and distribution of films online.

An intellectual property infringement may be one of the following:


Intellectual Property Infringement

Patent Infringement

Generally speaking, if a party (other than the patentee or licensee of the patentee) manufacturers, uses, offers, sells or imports patented technology without permission or a license from the patentee, during the term the patent is held and within the country that it was issued in, it is considered that they have infringed the patent.

An accused infringing party may claim in response one or more of the following statements:

  • It is not practising the patented invention
  • It was not performing any infringing act in the territory covered by the patent
  • The patent has expired
  • The patent is invalid because the invention does not meet the criteria for patenting or it includes a formal defect, which would render it invalid
  • It has obtained a license from the patentee

The parties on either side of the dispute may resolve it with a settlement, which may include a cross-licensing agreement. Although, private settlements might not always serve the public interest which is an objective of the patent system.

Case Study: Patent Infringement

Trade Mark Infringement

When a trade mark has been infringed, the attached exclusive rights have been violated without the authorisation of either the trade mark owner or a licensee. Trade mark infringement occurs when an accused party uses a trade mark which is identical or confusingly similar to a trade mark owned by someone else. This is usually in relation to products or services that are identical or similar to those covered by the trade mark registration.

Courts will consider several factors when determining if a trade mark has been infringed:

  • Whether the plaintiff has a valid trade mark.
  • Whether the trade mark is being used by the defendant.
  • Whether the defendant’s use of the trade mark is “in commerce.”
  • Whether that use Is connected to the sale, offer, distribution or advertising of the product.
  • Whether the defendant’s use of the trade mark is likely to confuse consumers.

Where the defendant does not hold a trade mark for a sign that they use to demarcate their goods and services – they can still protect this through “passing off”. This is much more difficult and costly and typically results in less protection.

Case Study: Trademark Infringement

Copyright Infringement

Copyright infringement occurs when a work protected by copyright is used without permission. This infringes the exclusive rights held by the copyright holder, such as reproduction, distribution, displaying and performing the protected work. Disputes regarding copyright are usually resolved through direct negotiations, notice and takedown processes – or, litigation in civil court.

The terms “piracy” and “theft” are usually used in copyright disputes when pursuing action against those that have violated the copyright holder’s rights. “Piracy” originated from the word meaning “robbery or illegal violence at sea”, but it has been used for centuries as a synonym for acts that account for copyright infringement. Similarly, “theft” is more commonly used to refer to the theft of tangible property, however, it is used in terms of copyrighted material to emphasise the potential loss of commercial profits.

In the context of copyright infringement, “piracy” refers to the unauthorised copying, distribution and selling of works protected by copyright. Traditionally, “piracy” referred to acts of copyright infringement intentionally committed for financial gain. However, in the digital age, “piracy” is used to describe the unauthorised sharing of music, films, TV shows and other creative works through peer-to-peer file sharing websites.

Holders of copyright often refer to copyright infringement as “theft”. Although, it does not refer to the theft of physical objects it describes when a person exercises the exclusive rights of the holder without permission. A more literal term for such offences is a misappropriation of copyrighted material.

There are several major motives for someone committing copyright infringement:

  • Pricing – unwillingness or inability to pay for the copyrighted works.
  • Unavailability – no legitimate way to purchase the copyrighted works.
  • Usefulness – DRMs, region locks and adverts are removed for a more desired end product.
  • Shopping experience – no easy and legitimate way to purchase the copyrighted works legally.
  • Anonymity – no information or credentials need to be given, unlike online transactions where this is the default requirement.
  • Freedom of information – not believing that the idea of copyright should exist either in the particular work or more generally.

These motives, however credible, would typically fail under the scrutiny of a civil court judge.

Copyright Infringement case study.


Intellectual Property Misappropriation

Trade Secret Misappropriation

Trade secrets are not protected by law in the way as say patents and trade marks. They are an important, albeit invisible components of a company’s intellectual property. Often, trade secrets’ contribution to a company’s value can be major and what makes them stick out from the competition. Although, trade secrets are invisible and are hard to measure exactly – often a company does not realise that they rely on certain trade secrets until misappropriation has occurred. Whereas patents show a visible contribution to the output of a company, they are unsuitable for internal innovations (e.g. contact lists, ways of working, practical know-how and operational knowledge) where trade secrets offer much more utility.

The language used by courts in the case of trade secrets varies by jurisdiction, as do what type of information is subject to the protection. There are however three common factors for all the definitions that are used and exist in international law under article 39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights:

  • Information that is not known to the general public.
  • Information that has an economic benefit to its holder because it is not publically known.
  • Information that is subjected to reasonable levels of protection by the holder to maintain its secrecy from competition and the public.

Misappropriation occurs when companies try and discover their competitor’s trade secrets through lawful methods, such as reverse engineering or poaching employers, and potentially more unlawful methods, such as industrial espionage.

When someone commits industrial espionage, they are generally breaking governing laws by the very act of the methods used and carry harsh penalties. This is important as if trade secrets are obtained through improper means then they can generally be deemed to have been misappropriated whereas with the lawful methods mentioned above – this misappropriation can be harder to prove.

The Trade-Related Aspect of Intellectual Property Rights (TRIPS) Agreement, setup up and agreed upon by all 162 World Trade Organisation (WTO) member parties, has a major role in facilitating the trade of knowledge and creativity. It is the reference for resolving any trade disputes over intellectual property rights, infringement, misappropriation and enforcement and assures that WTO members are consistent in their domestic objectives. The Agreement acts as legal recognition of the significance of the link between intellectual property and trade.

Prior to this agreement, the extent and protection and enforcement provided for these rights varied widely across the world. As such, intellectual property became much more important in trading between companies and countries, becoming a tension between international economic relations. With the TRIPS Agreement provided new rules for intellectual property rights and was seen as a way to introduce more order and predictability, while settling disputes systematically.

Five broad areas are covered by the TRIPS Agreement:

  • How general provisions and basic principles of the multilateral trading system apply to international intellectual property.
  • What the minimum standards of protection are for intellectual property rights that member should provide.
  • Which procedures members should provide for the enforcement of those rights in their own territories.
  • How to settle disputes about intellectual property between members of the WTO.
  • Special transitional arrangements for the implementation of TRIPS provision.

Intellectual Property Enforcement

Enforcement of Patent Rights

Under the TRIPS Agreement, patent protection must be available for all eligible inventions in every field of technology that is new, involve an inventive creation and can be applied at an industrial level. Additionally, these rights are protected for at least 20 years. However, governments are allowed to refuse the issuing of a patent if the sale of it needs to be prohibited for reasons of public order or morality.

The TRIPS Agreement also details the minimum rights that a patent owner must be allowed to enjoy and it defines the conditions under which certain exceptions to these rights are permitted. It also outlines permissions for the government to issue “compulsory licenses”, this would allow competitors to produce the product or use a process under license without having to achieve the owner’s consent. Although this can only be granted under a specific set of conditions outlined by the TRIPS Agreement that are aimed at protecting the interests of the patent holder.

In the event that a patent is issued for the invention of a process, the rights must extend to the product that is created as a direct result of the process. There are also certain conditions in which alleged infringers must be ordered by the court to prove that they haven’t used the process covered by a patent.

Enforcement of Copyright

As outlined in the Proof of “Intellectual Property: Copyright” section, copyright refers to the rights that are allowed to authors of literary and artistic works. Additionally, in a wider sense, copyright also includes rights related to copyright which is granted to performers, producers of phonograms and broadcasting organisations.

During the Uruguay round of negotiations for the TRIPS Agreement, members agreed that the standards for copyright protection outlined in the Berne Convention for the Protection of Literary and Artistic Works were largely satisfactory. The TRIPS Agreement provides provisions on copyright and all related rights that clarify or add obligations on several points:

  • Computer programs will be protected as literary works under the Berne Convention and the Agreement outlines that databases must be protected under copyright.
  • The TRIPS Agreement expands international copyright rules to cover rental rights. It says that the authors of computer programs and producers of sound recordings must be allowed to prohibit the commercial rental of their works to the general public.
  • An exclusive right also applies to films where commercial rental has also lead to the widespread copying which affects copyright-owners’ potential earnings from their films.
  • Performers are also entitled to the right to prevent the unauthorised recording, reproduction and broadcast of live performances (known as bootlegging) for no less than 50 years.
  • Additionally, producers of sound recordings must be allowed the right to prevent the unauthorised reproduction of their recording for a period of 50 years.

Enforcement of Industrial Design Rights

Industrial Design Rights are granted to the ornamental or aesthetic aspects on an article rather than its technical features (which would be covered by a patent in most cases).

Under the TRIPS Agreement, any original or new industrial designs must be protected by industrial design rights for a period of at least 10 years. The owners of protected designs must be allowed to prevent the manufacture, sale or importation of articles that bear or embody a design which is seen as a copy or substantially similar to the protected design and is being used for commercial purposes.

Enforcement of Trade Marks

Trade Marks are granted as a sign or a combination of different signs that are used to distinguish a company’s goods or service from those of another company.

The TRIPS Agreement also defines what types of signs are eligible for production as trade marks and what the minimum rights that are granted to their owners must be. In addition, it says that service marks must be allowed the protection as trade marks do in reference to goods provided by a company. Trade and service marks that have become substantially well-known in a particular country also benefit from additional protection under intellectual property law.


Intellectual Property in 2018: 5 Themes

2017 was a big year in intellectual property. Whether it was: changes to groundless threats or new certification marks in the EU. Intellectual property moves fast, and a lot can happen in a year.

Crucially, changes such as the above (and below) can be transformative for business’ fortunes worldwide.

2018 looks to be equally, if not more so, packed with significant changes. In no particular order; here are 5 things to look out for in intellectual property in 2018.

5 Things to Look Out for in Intellectual Property in 2018

The Unified Patent Court

When granted, European patents are enforced in 38 countries (including all those in the EU). For inventive businesses, registration of European patents is critical to business success. (In the past, along with trade marks, the registration of patents has been correlated with business success.)

Despite this, registering a patent in Europe has been technically demanding and often very expensive. The cause of this has been a convoluted process of registration overseen by the EPO (European Patent Office). This process often includes the need to translate the application into multiple languages. Furthermore, defending a patent over a range of different countries is not uncommon – due to a lack of centralisation. As such, the patent process draws out over a length of time and requires specialist expertise and representation across the continent.

This can often be a painful barrier for entry for emerging businesses looking to protect their inventions.

The UPC was proposed as a solution to this frustrations – unifying registration and litigation in a single court, and with a single process.

Whilst proposed in and agreed in principle by member states on February 2013, the process of founding the court goes on and is set for critical decisions in 2018.

Head of IP Protect and Virtuoso Legal’s London Office, Philip Partington said:

The UPC is, quite rightly, an important and necessary step when it comes to patent protection in Europe. It is however, also a significant undertaking on the part of member countries; as such it will be encouraging to see some solid movement toward implementation this year. Crucially, the registration of patents has proven to be directly linked to the fortunes of top businesses worldwide. The swift implementation of the UPC will be an incredible boost for European businesses (and those around the globe) in increasing their capacity for inventive ingenuity – and the profits that come as a result.”


As it stands, the timeline implementation of the UPC remains up in the air. Litigation is ongoing in Germany who are concerned about the UPC’s impact on national sovereignty. Previously a case in Spain expressed concern at the three languages (English, French and German) agreed for unitary patents resulted in unfair competition, and have not ratified the motion. As consensus continues to approach it seems that 2018 will be another critical year for the UPC and, as such, innovation-led businesses worldwide.

5 Things to Look Out for in Intellectual Property in 2018

The EU Trade Secrets Directive

Perhaps not as prominent in the minds of legal eagles on account of GDPR and Brexit – the next significant transformation is on the horizon in the form of the EU Trade Secrets Directive.

Similarly to the UPC, the EU Trade Secrets Directive is an effort to harmonise enforcement legislation helping business protect their business critical information across the continent.

Most businesses rely on certain special information or expertise to be successful. However, it is not possible to protect this information with traditional intellectual property rights; like a patent of trade mark. But it is equally important to that these secrets are kept secret from competitors and the wider public. Businesses are often at risk of this information escaping (e.g. via an ex-employee or data breach).

An example of a trade secret is the formula for Coca-Cola. Whilst many people over the years have reverse engineered the soda’s recipe – the information has been kept as a trade secret, protecting it from exploitation in the wider industry. In this way, Coca-Cola’s core asset is protected from theft from the wider industry by a proportionate legal framework.

For many businesses trade secrets might take the form of: business roadmaps, supplier and client lists – to name a few. Often misunderstood and undervalued, trade secrets are also often the most widely infringed, and can cause the most damage to businesses. In the past, we hosted a VirtuosoCAST podcast on trade secrets with Donal O’Connell, which offers a range of insight into the current state of play. Time and again breach of trade secrets has been proven to put businesses at risk of serious damage.

A current example of trade secrets litigation in the US is the prominent Waymo v. Uber case – wherein a Waymo employee left with a range of information to found a business that was quickly acquired by Uber. Uber then utilized this individual in their innovation at a time when they made steps toward the top of the industry. Waymo are suing Uber for $2.6 Billion in damages as a result.

With such high-profile cases and quanta of damage occurring – more stringent trade secrets regulation has come into the fore to protect businesses. In the US this occurred in the form of the Defend Trade Secrets Act in 2016. This was an incredibly robust piece of legislation that was notable in its extra-territorial scope; reflecting the global nature of modern businesses.

Europe follows this year with it’s own, much more robust legislation in the form of the EU Trade Secrets Directive, that has similar “teeth”.

The EU Trade Secrets Directive comes into force in June 2018. As a directive, rather than a regulation it is binding and comes into force across the EU (including the UK) in June 2018. The question is, however – will the UK comply fully with the directive, given the short time between then and Brexit?

Solicitor Lakmal Walawage said:

Over the past few years it has become abundantly clear that trade secrets are incredibly undervalued by businesses. Too many instances have occurred recently of businesses losing out when proprietary knowledge walks out the door with an ex-employee or a breach of information. Rightly, the US (where much of the marquee litigation has occurred) has taken a stance on this with the Defend Trade Secrets Act in 2016. With the international scope of business in this day and age, naturally it follows that the EU would seek to bolster protection for businesses within its jurisdiction. Regardless, the interesting point here is the extent to which the UK will administer these strengthened rights for its citizenry – and if not, the extent to which this impacts businesses at home.”

5 Things to Look Out for in Intellectual Property in 2018

GDPR

Whilst not Intellectual Property per sé, GDPR becoming enforced this year marks the most significant change in data protection in recent times. The General Data Protection Regulation (GDPR) remains a cause of anxiety and uncertainty. The “G” word (like Brexit which we’ll get to later) is a unilateral change that will affect every business in Europe – and have significant impact further afield…

GDPR is a reaction to the growing significance of data collection and use in business. The regulation sets out to curb a concerning situation that exists currently. Namely, data subjects sharing their personal information with businesses being akin to opening Pandora’s Box (as far as data protection is concerned). Once shared with businesses data subjects are often shocked to find it is redistributed or used for things that they had not explicitly agreed to – and that they’re unable to “undo” any of this.

This has been especially concerning for litigators on account of repeated large-scale data breaches (e.g. Equifax) and the increasing sophistication of hackers. GDPR addresses these concerns by setting out to:

  1. “harmonize data privacy laws across Europe”.
  2. “protect and empower all EU citizens data privacy”
  3. “reshape the way organizations across the region approach data privacy.”

Note: whilst the UK is set to leave the EU, it has ratified GDPR which goes into effect on May 25th, 2018.

GDPR sets out provisions empowering data subjects. This includes several rights including:

  • to “access”: ability to find out if personal data is being processed and for what purpose
  • to “be forgotten” – ability to demand deletion of data and halt  its further dissemination
  • to “data portability” – ability to receive personal data from a company and where relevant transmit it to another

GDPR also profoundly increases the responsibilities of data holding businesses:

  • Increased territorial scope – GDPR protects EU data subjects world-wide. Businesses outside the EU and UK still have to abide by the legislation
  • Consent – conditions of consent are much stronger. Data subjects must give informed consent at each distinct instance of data usage in a clear an intelligible manner. This means explicit informed consent and no more “hidden” or obtuse Ts&Cs
  • Breach notification – Companies have to notify the regulatory body within 72 hours of finding out that there has been a data breach. Companies must also notify data subjects of a breach “without undue delay”
  • Privacy by design – data systems should be created and administered with privacy as the core aim
  • Data protection officers – larger businesses are required to appoint a DPO to administer these systems and compliance

Of GDPR, Vice Principal Kirsten Toft said:

GDPR has arisen as a key consequence of the rising importance of data in business. Many of the today’s largest businesses are built on collecting and leveraging user data. In addition, recently there have been large-scale breaches that have rightly concerned regulators. These breaches have serious consequences for data subjects – who are put at risk of crime. Whilst GDPR is an intimidating piece of legislation – it is a proportionate response to the increasing role of data technology in businesses; and the need to represent ordinary people like you and me fairly within these systems.”

GDPR compliance and protecting data subjects’ information will be a big theme across businesses this year. In the coming weeks we will provide much more in-depth coverage on GDPR –  so watch this spac

5 Things to Look Out for in Intellectual Property in 2018

EU Portability Regulation

Another interesting piece of legislation that comes into force this year is the EU Portability Regulation.

Devices like Netflix and Amazon Prime Video’s have an increasing market share in personal entertainment.

However, users find they have difficulty when they go abroad into different jurisdictions in accessing these services.

The EU Portability Regulation sets out to allow EU citizens to continue to access their services even when outside their country of origin. The underlying cause of this is the jurisdiction copyright across the EU as it stands – and adapting this in a manner that reflects modern use of copyrighted material. Subscription services must make steps to provide subscribers with material across the EU; and copyright holders should be aware that if they license their material that it will be lawful for users to access their material across member states (if subscribers are visiting for a limited time).

As it stands, the UK has entered a consultation which is determining how to implement and enforceme of the Portability Regulation – regardless of Brexit.

Trainee solicitor, Jordan Davies had this to say:

Over the past few years entertainment has become on-demand by default – with most people expecting to be able to access the content they want when it’s convenient for them. Netflix binges aside – changes like these present a challenge for legislators who need to put the frameworks in place for citizens to operate in a manner they see as normal.”

The EU portability Regulation comes into force as of the 1st of April 2018.

5 Things to Look Out for in Intellectual Property in 2018

Brexit Rumbles On

Clearly there are some major changes on the cards this year. But the “daddy” of them all has to be Brexit.

The scope of Brexit’s impact upon British law is, of course, not limited to intellectual property. Fundamentally, a key driver behind Brexit is for the UK to be autonomous from EU law.

Ironically, the only things that are clear about the UK’s stance on IP post-Brexit is the extent to which the UK has committed to continue to share legal principles with Europe (e.g the UPC, portability regulation and GDPR).

However much remains up in the air, as the UK looks to rapidly untangle its destiny from that of the EU.

Last year, we created a series of posts on this blog looking out the state of play of the fundamental intellectual property rights. These can be viewed here:

Trade Marks

Copyright

Design Right

Patents

On Brexit’s impact on IP legislation this year, Virtuoso Legal Principal Liz Ward stated:

By this point, Brexit is a bit of a broken record. The only thing that’s certain is that many things remain uncertain! However, it remains the most significant legislative event of recent times. Much is being made of the autonomy that separation will give the UK from European courts – and this certainly may come in time. Despite this intention it remains at least in the short term view that harmonisation and encouraging global competitiveness remains the aim of the game. The jury is out on what a post-Brexit UK judiciary will actually be like in the long term. For the time being however, it would seem that continuity is king – which provides a degree of predictability as far as 2018 goes.”


Intellectual Property FAQs

As intellectual property specialists, Virtuoso Legal see certain issues and questions arise time and again. To help you understand some of the common issues we see we have complied this list of frequently asked questions. The information contained herein predominantly concerns UK intellectual property law, but many of these principles are universal – please seek advice from an IP professional after reviewing this information.

Disclaimer: this information does not constitute legal advice, and you should not act on an intellectual property matter without seeking advice from an IP solicitor. Intellectual property matters rely heavily on the detailed circumstances of each case, and there are no hard and fast rules. This information is provided to help increase your understanding. Virtuoso Legal does not take responsibility for any adverse effects businesses or individuals encounter by utilizing this information without expert advice.

What is intellectual property?

  • Intellectual property refers to certain forms that ideas can take in a business that are valuable and warrant protection from others.
  • Intellectual property and intangible assets have become centrally important to businesses – and, in many cases, are more valuable to companies than brick and mortar assets.
  • Intellectual property includes things such as: brands, designs, inventions, unique know-how, working processes, and business critical information.
  • Each of these can be protected within a business through a different intellectual property right or IP strategy.
  • IP rights include: copyright, designs, patents trade marks, non-conventional rights, commercial agreements and trade secrets.

Do I have intellectual property?

  • If you own a business it is extremely likely that you have some form of intellectual property.
  • Even without purposefully adopting a pro-IP strategy, you’ll have likely accrued the following:
    • A company name or product name that might benefit from brand protection
    • Sensitive business information that, if made public, would damage the business (e.g. client lists, supplier lists, business networks, databases, knowledge, documentation.)
    • Creative outputs (images, writing, audio, video, web content, artworks) that your business uses to communicate its value with others

You may have also developed:

  • Unique designs (2D or 3D) relating to a product or its packaging
  • An original invention, tool or solution to a problem

How do I protect intellectual property?

You can protect your intellectual property through three main avenues:

Unregistered intellectual property rights

Certain types of intellectual property attract protection automatically. The most common of these is copyright which comes into existence at the point where an original creative work is made. In addition to this, a brand name may warrant protection under the tort of passing off – although it can be better protected through a registered IPR. An intellectual property professional will be able to help you understand the scope of your rights and how you can enforce them.

Registered intellectual property rights

In most cases, businesses seeking protection of their intellectual property can register various rights for protection at their local intellectual property office (IPO). In the UK you can register trade marks to protect signs that designate origin (e.g. a brand), registered design rights to protection designs (covering 2D and 3D appearance of a product) and patents to protect inventions (specifically, novel solutions to a problem).

In each case, registered intellectual property rights offer broader protection to businesses than unregistered rights – which also typically require a greater burden of proof.

Proactive IP business strategy

Other forms of intellectual property within business can be protected through IP sensitive business practices. Sensitive information can be protected through confidentiality agreements, non-disclosure agreements and the management of trade secrets.

Can I protect my intellectual property around the world?

  • Most developed countries in the world have intellectual property laws, so it is possible to protect IP around the world.
  • Most IPRs have a jurisdictional limitation to them and are only enforceable in countries where they have been registered. Although in some cases, there are international treaties that allow for domestic IP to be enforceable internationally.
  • So, to protect IP around the world may require an involved strategy of international registrations that may come at some cost.
  • In such cases, it is important to seek advice from an IP professional who will help you structure your registration process to best suit your commercial goals.

What does infringement mean?

  • Infringement in intellectual property refers to when IP is used without the permission of the intellectual property rights holder.
  • This can be accidental, but often isn’t. In such cases, the infringer benefits from copying the owner of the intellectual property without the owner getting anything in return.
  • When this occurs the intellectual property holder may be able to take legal action in order to stop the infringement from taking place and receive proportionate recompense for its use.
  • To enforce or defend against all forms of intellectual property infringement, it is important to speak to IP specialists.

What do I do if someone uses my company name or product name without my permission?

  • If someone uses your company name or product name without your permission, they may be infringing your intellectual property.
  • If you have this name registered in any way as a trade mark – this could be trade mark infringement which grants you the ability to ask for certain remedies.
  • If you do not have this name registered, you may be able to claim under the tort of passing off, which grants you the ability to ask for other remedies.
  • In either case, it is important to collect as much evidence as possible and contacting an IP solicitor before notifying the infringer.

Is registering intellectual property expensive?

  • Registering intellectual property can cost companies a considerable amount of money. However, in most cases the value of correctly registered IP to a business considerably outweighs the cost.
  • Cost includes a disbursement payment made to the relevant intellectual property office (IPO), as well as legal fees paid to an IP specialist to register the IP correctly.
  • It is possible to register IP without specialist advice – however this is not recommended. Disbursement payments to IPOs are non-refundable, and if registrations are not correct, self-filers stand to lose money paid alongside registrations.
  • In addition to this, registration of similar or identical: trade marks, designs or patents; can result in opposition proceedings which can attract significant cost and damage to business.

What are the other benefits of having intellectual property?

  • Aside from preventing other actors within your business area using your ideas and identity for their own gain. IP can benefit businesses in a range of ways, including:
    • Licensing – allowing others to use IP for a fee. (e.g. Manchester United licensing its badge and colours to manufacturers of souvenirs).
    • Franchising – McDonalds, for example, only owned 18% of their restaurants in the UK. The rest are owned by franchisees who pay a certain amount of their revenues to McDonalds to use their brand.
    • As an asset, intellectual property (once valued) can be used to secure funding, such as private equity, a mortgage etc – in a similar way to physical assets.
  • There are many other ways that IP can be used to assist companies big and small. Talking to an intellectual property specialist is a great way to identify ways that IP can boost your bottom line.

How long does intellectual property protection last?

  • Different intellectual property rights last for different amounts of time. The amounts of time that IPRs last can also depend on the jurisdiction that they are based upon.
  • In the UK intellectual property protection lasts:
    • Trade Mark – 10 years from the date of registration. Renewable indefinitely every 10 years.
    • Copyright – This depends on the type of creative work. Copyright is one of the longest lasting IP rights.

      Written, dramatic, musical, artistic work:
      70 years after the death of the author.

      Sound and musical recording:
      70 years from when it was first published

      Films:
      70 years after the death of the director, screenplay author and composer

      Broadcasts:
      50 years after the time of first broadcast

      Layout of published editions of written dramatic or music works:
      25 years from when it was first published
  • Unregistered Design Right (UDR) – In the UK unregistered design right lasts 15 years from the point of creation; or 10 years from the first point of sale, if sold within the first 5 years of creation. In the EU UDR only lasts 3 years.
  • Registered Design Right (RDR) – In the UK registered design right lasts 25 years from the point of registration, so long as its renewed every five years.
  • Patent – Once granted, a patent lasts 20 years from the point of the initial filing by a patent attorney. It is notable, that after this time the IP enters the public domain – and in some cases, inventions are best protected for longer through trade secrets, non-disclosure and confidentiality arrangements.

I have registered my business at Companies House, do I have protection over the name?

  • When you register a business at Companies House – this does not protect the name from being used by other people. It is simply the official name that your company is known by to government bodies e.g. HMRC.
  • Many companies register with Companies House under one name and operate under another – this is known as a trading name. This trading name is only protected if it is registered as a trade mark – or with more difficulty through the tort of passing off.
  • Searching companies house alone to secure a business or brand name is a high-risk strategy.

How do I trade mark my business name, what should I trade mark?

  • It is important to instruct IP professionals to register trade marks on your behalf.
  • They will be able to look at what it is that you are trying to protect (usually a business or brand name), navigate what is already registered, and advise on the best registration strategy.
  • There are rules relating to distinctiveness, similarity, and genericness which can only be navigated by IP experts during the registration process.
  • Avoid self-filing at all costs. This will often sink an application or invite an opposition – or in the least, result in a trade mark of limited scope and enforceability.
  • Correct specification is crucial. Specifications need to be specific enough, so others cannot allege non-use, however wide enough to deal with future business growth. It is also notable that you cannot add additional classes to a specification once it has been filed.

Where should I register my trade mark?

  • Trade marks are jurisdictional rights and as such it is important to see protection in each country that you are looking to deploy your brand (whether as a form of company or product identity).
  • A trade mark registered in the UK (at the UKIPO) will not protect you in Europe, USA of China.
  • There are, however, strategies that can be employed to “roll-out” trade mark protection internationally as your business interests expand.
  • Here it is crucial to consider with an IP professional how the business will expand in the next five years and secure protection in each of these critical commercial jurisdictions.

How do I register my copyright?

  • In the UK (and in many other places around the world) copyright is an unregistered right and comes into existence at the instance an original creative work is made.
  • Note: in the USA there is some requirement to demonstrate that you have sought to protect your copyright, and in this case forms of registration with the USPTO may be advisable.
  • As such you are not required to register your copyright to benefit from copyright protection for your creative works.
  • Despite this, if you rely on creative work within your business it is advisable to be proactive in documenting and archiving your copyrighted works.
  • An intellectual property specialist will be able to advise you as to the best strategies to protect your creative assets from harm.

Can I use other people’s images or material without infringing?

  • When you use material which you have not created yourself, it is important to make sure that you are not infringing copyright.
  • Unless the material is subject to an open licence (e.g. Creative Commons), you will need to contact the rights holder and obtain a licence to use the material. This can sometimes come at cost.
  • So often it is better to search for material not subject to copyright in the first instance – rather than seek to licence copyright material after the fact.
  • With copyright there are certain exemptions that may allow use of protected material in certain circumstances. It is important however to consult an IP professional to make sure before risking infringement.

I have received a letter from Getty Images or a similar company, what do I do?

  • Getty Images and similar companies operate stock photo libraries. These libraries host hundreds of thousands of images for photographers, making them available for people to license for use.
  • In addition, Getty and other stock libraries will scan the internet for unlicensed use of these images and contact those found to be infringing their registered copyright holders’ rights.
  • If you receive a letter from Getty (or similar) it is important to make sure that you contact an intellectual property specialist and take down the image in question pending an investigation of the facts of the matter and an expert opinion on your legal position.

Do I own my website?

  • When a website is created it becomes subject to copyright. Copyright is granted to the creator of the original work, and as such by default copyright is owned by the website developer.
  • A company may own the website if it was created by an in-house employee, during the course of their work.
  • If the website was developed by an outside developer the copyright is retained by them – unless transferred in an agreement between the creator and the company the website was made for, known as an assignment.
  • Of all areas of copyright website ownership is complex and business critical issue to resolve – as they have become centrally important to businesses’ success. An IP specialist can assist in drafting the necessary assignment so that you are confident with your rights and where you stand legally in terms of ownership.

I am a photographer, do I own the images I have taken?

  • As a photographer, whenever you create a new image it becomes subject to copyright. By default, as the creator of the image, you become the exclusive rights holder.
  • There are exceptions to this rule. If you are an employee of a company and produce photographs during the normal course of business – the copyright for these images reverts to the company.
  • If you work in a freelance capacity, generally, you own the copyright to these images unless you assign them to the company you work for in your contractual agreement.
  • Regardless, there can often be misunderstanding and “bad blood” when it comes to ownership of images – so it is important to set a clear understanding out when working with companies as to who retains the rights to the images.
  • An IP professional can assist you in drafting up the requisite documentation to assign copyright to the correct entities to avoid confusion and risk of legal proceedings.

How do I protect my invention?

  • Inventions are typically protected through patents. Registering a patent is a very complicated and expensive process which requires expert assistance from patent attorneys.
  • While registering a patent it must be kept secret from the public, as if it has been disclosed to anyone it will not be granted.
  • Once a patent is granted it offers protection over the invention for 25 years. Thereafter the invention enters the public domain.
  • For companies at their outset – this can sometimes be a difficult bar to reach both financially and operationally. Also, they may seek to protect their invention for longer than 25 years.
  • In such instances they can seek to protect the invention through trade secrets or confidentiality, and non-disclosure strategies. These agreements should be drafted with the upmost of care to ensure that they are valid and do not defeat any potential patentable ideas which you may have.
  • To understand the most commercially appropriate way of protecting your invention, contact IP specialists who will be able to discuss your best options.

How do I protect my design?

  • Designs, when created, are subject to unregistered design rights (UDRs) – which grant them a limited amount of protection, automatically.
  • This protection however has limitations; both in terms of scope e.g UKUDR does not protect surface decoration where registered design rights (RDRs) do.
  • Designs can be registered however – which grant a greater level of protection covering more specific aspects of the design.
  • It is important, however to ensure that the specification submitted to the relevant IPO is configured carefully, as the representation of the design must meet certain criteria in order to achieve the desired protection. (In the past, errors in registration cost companies their exclusive rights to designs – allowing for derivatives to flood the market).

What should I do if I receive a legal letter, is it serious?

  • If you receive a legal letter relating to IP, often known as a ‘letter before action’ or a ‘cease and desist’ letter (i.e. an infringement claim) it is of paramount importance that you contact an intellectual property specialist right away. These letters are often time sensitive; replies outside of legal deadlines can have disastrous effects, particularly if unanswered. You may therefore be on the receiving end of a legal claim, rather than just the initial stages.
  • An IP professional will be able to review the letter to let you know your legal position, your exposure to risk (commercially and financially) and best strategy moving forward.

What are the most common mistakes businesses make in intellectual property?

  • There are several common mistakes the businesses make when it comes to IP. These include:
  • Confusing the intellectual property rights

Intellectual property is quite visible in society compared to other areas of law. We encounter brands, creative works, inventions and designs every day. However, this has led to a set of common misconceptions about intellectual property which are unhelpful.

Often the different IP terms are used interchangeably when they refer to completely different rights, processes and levels of protection. Using terms incorrectly and conflating the rights can leave you open to misunderstanding with business partners – or expose you to others as an individual who is unknowledgeable about IP.

  • Registering copyright

As stated previously, in most countries around the world, you do not have to register creative works to achieve copyright protection. Despite this, there are many companies which offer copyright registration services. These services are in no way required to achieve copyright protection for your work. What is critical is that you maintain a record of when the original work was created. (In the US, it can be advisable to register creative works with the USPTO as it helps you enforce a copyright infringement claim.)

  • Self-filing without the requisite knowledge (trade marks, designs, patents)

Registering intellectual property – whether it’s a trade mark, registered design or patent – is a complicated procedure which requires experience and expertise.

In each case the detail put into the registration impacts what the resulting protection covers. So, it is important to know exactly what is to be protected and how this should be configured in the registration application. The willingness to cut a corner at the registration stage can seriously hamper how a business can operate in the future, should it’s IP not be registered in a comprehensive way.

  • Not including IP in formal agreements, or not having formal agreements

Whether it’s employee contracts, arrangements with suppliers, or any other agreement where others have access to IP – it is crucial to protect IP in business agreements. In business it is commonplace for relationships to change over time – and implicit boundaries around knowledge and IP can be tested as time goes on. Ensuring that IP is protected in the first instance means that should relationships change – there will be no unpleasant surprises to contend with down the line.

I created an idea whilst I was employed, can I use this idea for a new business?

  • This is a commonplace issue, and there is no definitive answer as it depends on several circumstances unique to each individual instance.
  • Ideas developed whilst in employment, if they are relevant to the area you were working in, may result in a legal grey area – and it is advisable to tread carefully when launching a new business after leaving employment. Issues to consider will be the scope of your duties, how far the scope and what you have created overlap and any restrictive covenants in your employment contract (insofar as you have one).
  • It is critical to contact an IP professional to review your legal position before you undertake any activity that might attract legal attention from a previous employer.
What is intellectual property?
  • Intellectual property refers to certain forms that ideas can take in a business that are valuable and warrant protection from others.
  • Intellectual property and intangible assets have become centrally important to businesses – and, in many cases, are more valuable to companies than brick and mortar assets.
  • Intellectual property includes things such as: brands, designs, inventions, unique know-how, working processes, and business critical information.
  • Each of these can be protected within a business through a different intellectual property right or IP strategy.
  • IP rights include: copyright, designs, patents trade marks, non-conventional rights, commercial agreements and trade secrets.
Do I have intellectual property?
  • If you own a business it is extremely likely that you have some form of intellectual property.
  • Even without purposefully adopting a pro-IP strategy, you’ll have likely accrued the following:
    • A company name or product name that might benefit from brand protection
    • Sensitive business information that, if made public, would damage the business (e.g. client lists, supplier lists, business networks, databases, knowledge, documentation.
    • Creative outputs (images, writing, audio, video, web content, artworks) that your business uses to communicate its value with others
  • You may have also developed:
    • Unique designs (2D or 3D) relating to a product or its packaging
    • An original invention, tool or solution to a problem
How do I protect intellectual property?

You can protect your intellectual property through three main avenues:

  1. Unregistered intellectual property rights
    Certain types of intellectual property attract protection automatically. The most common of these is copyright which comes into existence at the point where an original creative work is made. In addition to this, a brand name may warrant protection under the tort of passing off – although it can be better protected through a registered IPR. An intellectual property professional will be able to help you understand the scope of your rights and how you can enforce them.
  2. Registered intellectual property rights
    In most cases, businesses seeking protection of their intellectual property can register various rights for protection at their local intellectual property office (IPO). In the UK you can register trade marks to protect signs that designate origin (e.g. a brand), registered design rights to protection designs (covering 2D and 3D appearance of a product) and patents to protect inventions (specifically, novel solutions to a problem). In each case, registered intellectual property rights offer broader protection to businesses than unregistered rights – which also typically require a greater burden of proof.
  3. Proactive IP business strategy
    Other forms of intellectual property within business can be protected through IP sensitive business practices. Sensitive information can be protected through confidentiality agreements, non-disclosure agreements and the management of trade secrets.
Can I protect my intellectual property around the world?
  • Most developed countries in the world have intellectual property laws, so it is possible to protect IP around the world.
  • Most IPRs have a jurisdictional limitation to them and are only enforceable in countries where they have been registered. Although in some cases, there are international treaties that allow for domestic IP to be enforceable internationally.
  • So, to protect IP around the world may require an involved strategy of international registrations that may come at some cost.
  • In such cases, it is important to seek advice from an IP professional who will help you structure your registration process to best suit your commercial goals.
What does infringement mean?
  • Infringement in intellectual property refers to when IP is used without the permission of the intellectual property rights holder.
  • This can be accidental, but often isn’t. In such cases, the infringer benefits from copying the owner of the intellectual property without the owner getting anything in return.
  • When this occurs the intellectual property holder may be able to take legal action in order to stop the infringement from taking place and receive proportionate recompense for its use.
  • To enforce or defend against all forms of intellectual property infringement, it is important to speak to IP specialists.
What do I do if someone uses my company name or product name without my permission?
  • If someone uses your company name or product name without your permission, they may be infringing your intellectual property.
  • If you have this name registered in any way as a trade mark – this could be trade mark infringement which grants you the ability to ask for certain remedies.
  • If you do not have this name registered, you may be able to claim under the tort of passing off, which grants you the ability to ask for other remedies.
  • In either case, it is important to collect as much evidence as possible and contacting an IP solicitor before notifying the infringer.
Is registering intellectual property expensive?
  • Registering intellectual property can cost companies a considerable amount of money. However, in most cases the value of correctly registered IP to a business considerably outweighs the cost.
  • Cost includes a disbursement payment made to the relevant intellectual property office (IPO), as well as legal fees paid to an IP specialist to register the IP correctly.
  • It is possible to register IP without specialist advice – however this is not recommended. Disbursement payments to IPOs are non-refundable, and if registrations are not correct, self-filers stand to lose money paid alongside registrations.
  • In addition to this, registration of similar or identical: trade marks, designs or patents; can result in opposition proceedings which can attract significant cost and damage to business.
What are the other benefits of having intellectual property?
  • Aside from preventing other actors within your business area using your ideas and identity for their own gain. IP can benefit businesses in a range of ways, including:
    • Licensing – allowing others to use IP for a fee. (e.g. Manchester United licensing its badge and colours to manufacturers of souvenirs).
    • Franchising – McDonalds, for example, only owned 18% of their restaurants in the UK. The rest are owned by franchisees who pay a certain amount of their revenues to McDonalds to use their brand.
    • As an asset, intellectual property (once valued) can be used to secure funding, such as private equity, a mortgage etc – in a similar way to physical assets.
  • There are many other ways that IP can be used to assist companies big and small. Talking to an intellectual property specialist is a great way to identify ways that IP can boost your bottom line.
How long does intellectual property protection last?
  • Different intellectual property rights last for different amounts of time. The amounts of time that IPRs last can also depend on the jurisdiction that they are based upon.
  • In the UK intellectual property protection lasts:
    • Trade Mark – 10 years from the date of registration. Renewable indefinitely every 10 years.
    • Copyright – This depends on the type of creative work. Copyright is one of the longest lasting IP rights.

      Written, dramatic, musical, artistic work:
      70 years after the death of the author.

      Sound and musical recording:
      70 years from when it was first published

      Films:
      70 years after the death of the director, screenplay author and composer

      Broadcasts:
      50 years after the time of first broadcast

      Layout of published editions of written dramatic or music works:
      25 years from when it was first published

  • Unregistered Design Right (UDR) – In the UK unregistered design right lasts 15 years from the point of creation; or 10 years from the first point of sale, if sold within the first 5 years of creation. In the EU UDR only lasts 3 years.
  • Registered Design Right (RDR) – In the UK registered design right lasts 25 years from the point of registration, so long as its renewed every five years.
  • Patent – Once granted, a patent lasts 20 years from the point of the initial filing by a patent attorney. It is notable, that after this time the IP enters the public domain – and in some cases, inventions are best protected for longer through trade secrets, non-disclosure and confidentiality arrangements.
I have registered my business at Companies House, do I have protection over the name?
  • When you register a business at Companies House – this does not protect the name from being used by other people. It is simply the official name that your company is known by to government bodies e.g. HMRC.
  • Many companies register with Companies House under one name and operate under another – this is known as a trading name. This trading name is only protected if it is registered as a trade mark – or with more difficulty through the tort of passing off.
  • Searching companies house alone to secure a business or brand name is a high-risk strategy.
How do I trade mark my business name, what should I trade mark?
  • It is important to instruct IP professionals to register trade marks on your behalf.
  • They will be able to look at what it is that you are trying to protect (usually a business or brand name), navigate what is already registered, and advise on the best registration strategy.
  • There are rules relating to distinctiveness, similarity, and genericness which can only be navigated by IP experts during the registration process.
  • Avoid self-filing at all costs. This will often sink an application or invite an opposition – or in the least, result in a trade mark of limited scope and enforceability.
  • Correct specification is crucial. Specifications need to be specific enough, so others cannot allege non-use, however wide enough to deal with future business growth. It is also notable that you cannot add additional classes to a specification once it has been filed.
Where should I register my trade mark?
  • Trade marks are jurisdictional rights and as such it is important to see protection in each country that you are looking to deploy your brand (whether as a form of company or product identity).
  • A trade mark registered in the UK (at the UKIPO) will not protect you in Europe, USA of China.
  • There are, however, strategies that can be employed to “roll-out” trade mark protection internationally as your business interests expand.
  • Here it is crucial to consider with an IP professional how the business will expand in the next five years and secure protection in each of these critical commercial jurisdictions.
How do I register my copyright?
  • In the UK (and in many other places around the world) copyright is an unregistered right and comes into existence at the instance an original creative work is made.
  • Note: in the USA there is some requirement to demonstrate that you have sought to protect your copyright, and in this case forms of registration with the USPTO may be advisable.
  • As such you are not required to register your copyright to benefit from copyright protection for your creative works.
  • Despite this, if you rely on creative work within your business it is advisable to be proactive in documenting and archiving your copyrighted works.
  • An intellectual property specialist will be able to advise you as to the best strategies to protect your creative assets from harm.
Can I use other people’s images or material without infringing?
  • When you use material which you have not created yourself, it is important to make sure that you are not infringing copyright.
  • Unless the material is subject to an open licence (e.g. Creative Commons), you will need to contact the rights holder and obtain a licence to use the material. This can sometimes come at cost.
  • So often it is better to search for material not subject to copyright in the first instance – rather than seek to licence copyright material after the fact.
  • With copyright there are certain exemptions that may allow use of protected material in certain circumstances. It is important however to consult an IP professional to make sure before risking infringement.
I have received a letter from Getty Images or a similar company, what do I do?
  • Getty Images and similar companies operate stock photo libraries. These libraries host hundreds of thousands of images for photographers, making them available for people to license for use.
  • In addition, Getty and other stock libraries will scan the internet for unlicensed use of these images and contact those found to be infringing their registered copyright holders’ rights.
  • If you receive a letter from Getty (or similar) it is important to make sure that you contact an intellectual property specialist and take down the image in question pending an investigation of the facts of the matter and an expert opinion on your legal position.
Do I own my website?
  • When a website is created it becomes subject to copyright. Copyright is granted to the creator of the original work, and as such by default copyright is owned by the website developer.
  • A company may own the website if it was created by an in-house employee, during the course of their work.
  • If the website was developed by an outside developer the copyright is retained by them – unless transferred in an agreement between the creator and the company the website was made for, known as an assignment.
  • Of all areas of copyright website ownership is complex and business critical issue to resolve – as they have become centrally important to businesses’ success. An IP specialist can assist in drafting the necessary assignment so that you are confident with your rights and where you stand legally in terms of ownership.
I am a photographer, do I own the images I have taken?
  • As a photographer, whenever you create a new image it becomes subject to copyright. By default, as the creator of the image, you become the exclusive rights holder.
  • There are exceptions to this rule. If you are an employee of a company and produce photographs during the normal course of business – the copyright for these images reverts to the company.
  • If you work in a freelance capacity, generally, you own the copyright to these images unless you assign them to the company you work for in your contractual agreement.
  • Regardless, there can often be misunderstanding and “bad blood” when it comes to ownership of images – so it is important to set a clear understanding out when working with companies as to who retains the rights to the images.
  • An IP professional can assist you in drafting up the requisite documentation to assign copyright to the correct entities to avoid confusion and risk of legal proceedings.
How do I protect my invention?
  • Inventions are typically protected through patents. Registering a patent is a very complicated and expensive process which requires expert assistance from patent attorneys.
  • While registering a patent it must be kept secret from the public, as if it has been disclosed to anyone it will not be granted.
  • Once a patent is granted it offers protection over the invention for 25 years. Thereafter the invention enters the public domain.
  • For companies at their outset – this can sometimes be a difficult bar to reach both financially and operationally. Also, they may seek to protect their invention for longer than 25 years.
  • In such instances they can seek to protect the invention through trade secrets or confidentiality, and non-disclosure strategies. These agreements should be drafted with the upmost of care to ensure that they are valid and do not defeat any potential patentable ideas which you may have.
  • To understand the most commercially appropriate way of protecting your invention, contact IP specialists who will be able to discuss your best options.
How do I protect my design?
  • Designs, when created, are subject to unregistered design rights (UDRs) – which grant them a limited amount of protection, automatically.
  • This protection however has limitations; both in terms of scope e.g UKUDR does not protect surface decoration where registered design rights (RDRs) do.
  • Designs can be registered however – which grant a greater level of protection covering more specific aspects of the design.
  • It is important, however to ensure that the specification submitted to the relevant IPO is configured carefully, as the representation of the design must meet certain criteria in order to achieve the desired protection. (In the past, errors in registration cost companies their exclusive rights to designs – allowing for derivatives to flood the market).
What should I do if I receive a legal letter, is it serious?
  • If you receive a legal letter relating to IP, often known as a ‘letter before action’ or a ‘cease and desist’ letter (i.e. an infringement claim) it is of paramount importance that you contact an intellectual property specialist right away. These letters are often time sensitive; replies outside of legal deadlines can have disastrous effects, particularly if unanswered. You may therefore be on the receiving end of a legal claim, rather than just the initial stages.
  • An IP professional will be able to review the letter to let you know your legal position, your exposure to risk (commercially and financially) and best strategy moving forward.
What are the most common mistakes businesses make in intellectual property?
  • There are several common mistakes the businesses make when it comes to IP. These include:
    • Confusing the intellectual property rights
      Intellectual property is quite visible in society compared to other areas of law. We encounter brands, creative works, inventions and designs every day. However, this has led to a set of common misconceptions about intellectual property which are unhelpful.

      Often the different IP terms are used interchangeably when they refer to completely different rights, processes and levels of protection. Using terms incorrectly and conflating the rights can leave you open to misunderstanding with business partners – or expose you to others as an individual who is unknowledgeable about IP.

    • Registering copyright
      As stated previously, in most countries around the world, you do not have to register creative works to achieve copyright protection. Despite this, there are many companies which offer copyright registration services. These services are in no way required to achieve copyright protection for your work. What is critical is that you maintain a record of when the original work was created. (In the US, it can be advisable to register creative works with the USPTO as it helps you enforce a copyright infringement claim.)
    • Self-filing without the requisite knowledge (trade marks, designs, patents)
      Registering intellectual property – whether it’s a trade mark, registered design or patent – is a complicated procedure which requires experience and expertise.

      In each case the detail put into the registration impacts what the resulting protection covers. So, it is important to know exactly what is to be protected and how this should be configured in the registration application. The willingness to cut a corner at the registration stage can seriously hamper how a business can operate in the future, should it’s IP not be registered in a comprehensive way.

    • Not including IP in formal agreements, or not having formal agreements
      Whether it’s employee contracts, arrangements with suppliers, or any other agreement where others have access to IP – it is crucial to protect IP in business agreements. In business it is commonplace for relationships to change over time – and implicit boundaries around knowledge and IP can be tested as time goes on. Ensuring that IP is protected in the first instance means that should relationships change – there will be no unpleasant surprises to contend with down the line.
I created an idea whilst I was employed, can I use this idea for a new business?
  • This is a commonplace issue, and there is no definitive answer as it depends on several circumstances unique to each individual instance.
  • Ideas developed whilst in employment, if they are relevant to the area you were working in, may result in a legal grey area – and it is advisable to tread carefully when launching a new business after leaving employment. Issues to consider will be the scope of your duties, how far the scope and what you have created overlap and any restrictive covenants in your employment contract (insofar as you have one).
  • It is critical to contact an IP professional to review your legal position before you undertake any activity that might attract legal attention from a previous employer.

Contents:
  1. History of Intellectual Property
  2. Introduction to Intellectual Property
  3. Your Intellectual Property Rights
  4. Intellectual Property Infringement
  5. Intellectual Property Misappropriation
  6. Intellectual Property Enforcement
  7. Intellectual Property in 2018: 5 Themes
  8. Intellectual Property FAQs