IP Guide

What Intellectual Proprety is Available?

Patents

Patent protection can be obtained for many types of technical innovation, for example, for a new apparatus for carrying out a particular operation, a method or process for performing an operation or forming a product or the use of an apparatus or product for a particular purpose.

In order to determine whether patent protection can be obtained it is necessary to consider whether the technical innovation is both novel and inventive. Both of these terms have legal definition. Despite this it is usually relatively straight forward to determine whether a technical innovation is novel or not - this is based upon whether the innovation is different from that which has gone before. The determination as to whether an innovation is inventive or not is more difficult to assess, and depends upon whether it will be obvious, given what has gone before, to arrive at the invention. Unfortunately, this is a legal definition which cannot be applied without knowledge of the considerable body of case law on the subject.

Patent protection is not available for every innovation, as certain types of innovation are excluded. Excluded innovations are generally artistic, non-technical innovations and those which are not industrially applicable. Once again, these are strict legal definitions and a thorough knowledge of case law is needed to accurately assess whether an invention is excluded or not.

Patents are obtained via an application procedure that involves a search and an examination. Once any objections raised are dealt with, the application can proceed to grant. Once a UK Patent has been granted, it remains in force for 20 years, subject to payment of annual renewal fees, and a granted patent provides a patentee with an absolute legal monopoly that can be used to prevent unauthorised use of the patented invention.

Generally speaking, it is necessary to obtain a patent in each country in which protection is required. A patent in a particular country does, however, enable a patentee to prevent importation into that country of an infringing product. Therefore, it is common for Patentees to protect their inventions in the countries which constitute either their major markets, or which contain a manufacturing site of a major competitor. Whilst patents are essentially territorial, there are a number of international conventions which aim to make the process of applying for patent protection internationally more simple and cost effective than simply filing a national patent application in all the countries of interest.

The most important of these international conventions are the European Patent Convention and the Patent Cooperation Treaty (PCT). Both systems allow a single application to be made, which (if successful) will give rise to national patents in the states required. Equally importantly, they allow applicants to defer the costs associated with filing in several countries in different languages. The European Patent Convention covers most countries in Europe, and has a unified system of examination and grant, whilst the PCT covers the majority of the countries of the world, but the application is examined separately in each country.

Trademarks

Traditionally, trademarks have been any word or logo which serves to designate the origin of goods or services. In recent years the law has come to recognise that many other things can also serve this purpose, and are therefore capable of operating as trademarks. It is now possible to register such diverse things as advertising jingles, smells and the shape of goods or packaging as trademarks.

To be registrable a trade mark must be capable of distinguishing the goods or services of one party from those of other parties. Furthermore, trademarks which consist of anything other than words or logos must be capable of being represented graphically. It is not possible to register as a trademark any sign which does not satisfy these requirements, signs which are inherently non-distinctive or descriptive or which consist of words or other things which traders in the same area of business may wish legitimately to use to identify the origin of their goods. For example surnames and geographical locations may be excluded from registrability on this basis.

In some countries, including the United Kingdom, rights can be obtained in a trademark simply by using the trade mark on a sufficiently extensive basis to acquire a reputation in the trademark identifiable with the user. In these circumstances, the user can take action against another party who is attempting to misrepresent themselves as the user by using a similar trademark through an action for passing off or under unfair competition law.

However, most countries provide a statutory registration procedure for registration of trademarks and it is in all circumstances advisable to register a trade mark, where possible, since infringement of a registered trademark is a strict liability offence and is not dependent upon proving a reputation or any misrepresentation. Furthermore, in certain circumstances, infringement of a registered trademark can be a criminal offence and punished accordingly.

A registered trademark is obtained by filing an application with the appropriate authority, which is then searched and examined. Once any objections raised are overcome, the mark is advertised in order to allow any interested party to object to registration should they have grounds to do so. Subject to no objection being raised, the mark is then entered onto the Register of Trademarks. Once registered, a trademark can usually be kept in force for as long as is required, subject only to the payment of renewal fees. Renewal fees are not usually payable annually but last a number of years, and for example in the United Kingdom are payable every 10 years.

As with patents, trademarks are essentially territorial. However, unlike patents, it is possible to obtain a single registration which covers more than one country. For example, it is possible to obtain a Community Trademark Registration which is effective throughout the whole European Community. It is also possible to obtain an international registration which is effective in as many of the countries which are a party to the Madrid Agreement and/or Madrid Protocol as are required. However, it remains the case that protection in some countries can only be obtained by a national registration in that country.

Designs

A design relates to the elements of a manufactured article which give the article a particular visual appearance, such as the contours or shape. At present, there are both registered and unregistered forms of Design Right, available either for the UK only or covering the entire European Community.

UK unregistered Design Right comes into existence when an original design is recorded in a design document or an article is made to the design. Community unregistered Design Right comes into existence when the design relating to a product is first made available to the public, whether through publication of a design document or the product itself. A design document can be, for example, a photograph, drawing, or written or oral description of the design. In both cases, the protection is limited to prevention of copying of the design, and will not give the right to prevent independent production of an identical or similar design. Community unregistered Design Right lasts for three years from the date the design is made available to the public, whilst UK unregistered Design Right lasts for up to 15 years (10 years in most cases) with licences available as of right in the final 5 years.

For better protection, a design can, where appropriate, be registered and this will result in the proprietor of the Registered Design being entitled to a strict legal monopoly in the design for a period of 25 years subject to the payment of renewal fees every 5 years. Such registration is available for the UK only, or in respect of the entire European Community. Similar registration is also available in various other countries around the world.

There are a number of exclusions to both unregistered Design Right and Registered Design protection. UK unregistered Design Right does not cover any aspect of surface decoration (2D features), but only the shape and configuration of the article (3D features). Community unregistered Design Right, as well as both UK & Community Registered Design Rights, will protect both 3-D and 2-D features including colour, pattern and ornament.

Conversely, Community unregistered Design Right, and both UK & Community Registered Design Rights will not protect any feature whose appearance is dictated solely by function. This exclusion does not apply to UK unregistered Design Right.

The other main exclusions from UK unregistered Design Right protection are the so-called ‘must fit’ (features which enable the article to be connected to another article with which it interrelates) and ‘must match’ (features which are dependent upon the appearance of another article of which the design article is intended to be an integral part) exclusions. These exclusions are intended to allow third parties to manufacture spare parts for articles without infringement. The ‘must match’ exclusion also applies to Community unregistered Design Rights and both UK & Community Registered Design Rights. (There is no equivalent to the ‘must fit’ exclusion, since these features, being dictated solely by function, are not protected by these rights in any case).

Copyright

Copyright is, as its name suggests, a right to prevent copying of an original work. Copyright comes into being upon the creation of an original artistic, musical, literary or dramatic work. Because Copyright is only a right to prevent copying of the original work, there is no absolute legal monopoly and Copyright cannot therefore be used to prevent the independent production of an identical or similar work.

The term of copyright protection in the UK is, from 1 January 1997, 70 years from the death of the original author of the work.

Copyright arises on a national basis in the country in which the original work is created but may be enforceable internationally by virtue of the Berne Convention or Universal Copyright Convention.

In some countries, Copyright can be used to prevent unauthorised application of the original work to a manufactured article and thus similar protection to that given by unregistered Design Right in the United Kingdom is afforded. However, there are exceptions to this, notably in the United States of America.

Confidentiality and Trade Secrets

There are laws which protect the confidentiality of information. Companies or individuals may wish to keep commercial or technical information confidential, so for example, an employee has an obligation to keep all information confidential which is given to him by his employer. If this information is made public in breach of that confidence then it may be possible to bring an action for breach of confidence against the offending party.

If it is desired that confidential information be disclosed to a third party without loss of confidentiality, it should be ensured that the third party is told that they are expected to treat the information in confidence and that they agree to do so. In practical terms this agreement is best made in writing, in case there should ever be any dispute as to what was agreed.

There is one notable limitation to the protection of confidential information, whereby it may be allowable to disclose information in the public interest, even where there is an obligation of confidence.

Supplementary Protection Certificates

Where a patent concerns a medicinal product which is subject to an authorisation procedure prior to the product being placed on the market, as is the case for approval of products for human and veterinary medicines, a supplementary protection certificate (SPC) may be requested. The SPC comes into being on expiry of the patent and lasts for up to 5 years. It must be requested within 6 months of either: the date of first authorisation to market the product as a medicinal product, or the date of grant of the patent, whichever is the later.

The legal effect of a supplementary protection certificate is substantially the same as that of the patent upon which it is based.

Semiconductor Topography Rights

UK unregistered Design Right subsists in semiconductor topographies, i.e. a fixed pattern of conductor or semiconductor material affixed to one layer of a multilayer semiconductor product. The subsistence and duration of Design Right in a semiconductor topography are as set out under the heading "Designs" in respect of unregistered Design Right.

Plant Variety Rights

A plant or plant variety right may be obtained in relation to a new botanical genus or species by registration with the appropriate authority. In the United Kingdom, the right is granted under the Plant Varieties Act 1997.

A community plant variety right is obtainable which has effect in all member states of the European Community. This right is granted by the Community Plant Variety Office.

Domain Names

With the number of domain name "levels" now expanded, and with many domain names consisting of or including a trade mark of the registrant, disputes over "ownership" of domain names are becoming more common. Domain names are now being registered not only to serve as addresses for websites, but frequently to also try and secure such addresses to prevent others from being able to use the same domain name. The latter may apply where registrants are genuinely constructing, or intending to construct a site, but can also arise where a domain name has been registered with purely commercial gain in mind i.e. to sell the domain name on to a third party.

Important note:
The comments in this section represent only a simplified summary of Intellectual Property and are not intended to be comprehensive. Professional advice should be sought in any particular instance as to the protection available.