NEW TO IP...
New to IP …
IP involves complex areas of law and we can handle all the areas discussed below in the UK and overseas. But you can take preliminary steps if you want. Here’s a quick guide.
What is IP?
Intellectual Property or IP refers to creations of the mind, and includes inventions, trade marks (or brands), designs, literary, musical and artistic works, and trade secrets or confidential know-how. The UK Intellectual Property Office’s (UKIPO) Guide is here: IP Basics – GOV.UK (www.gov.uk). It gives a good overview of the various IP rights.
What does each area of IP cover and what preliminary steps can be taken?
(i) Patents – protect inventions which may be new products or processes or new uses of existing products or processes. The objective of a patent is to protect the concept or principle which makes an invention work. A patent is a powerful right which can provide a monopoly for up to 21 years. To obtain a patent, an invention must be new, compared to any prior disclosure anywhere in the world, and must not be an obvious modification of something which has been done before. If you have an invention, it can be worthwhile undertaking initial searches to gauge what “prior art” there is. You can do that here Espacenet – Advanced search – put some keywords in the “Title or abstract” and see what comes up. Otherwise, there are widespread other resources (eg Google Patents) and guidance available elsewhere on the internet. If you find some possibly relevant prior art, you then need to assess the differences between that and your invention. We can undertake analysis and advise if an invention is likely to be patentable. We can also organise more comprehensive patent searches.
If there does not seem to be any relevant prior art, and it is commercially worthwhile, a patent specification can be prepared. Whilst it is possible for a lay person to do that, it is not recommended. A patent application is a complex legal document which requires skill and experience to prepare, to optimise patent protection.
It is essential to note that, if you are considering pursuing patent protection, then the invention must remain confidential, until a patent application is safely on file
(ii) Trade Marks – these are signs (often words or logos) which are used to distinguish one party’s goods or services from those of another. If you want to start to use a new trade mark, then it is advisable to make sure that no one already has the same (or a confusingly similar) mark protected. You can undertake a preliminary UK Trade Marks Register search here: Search for a trade mark – Intellectual Property Office (ipo.gov.uk). Enter your word mark in the “Search word(s)” box and see what is found. For a more focused search, you can limit to one or more of the 45 classes in which trade marks are pigeon-holed. You can find out which class is relevant to your goods or services from this link: Search UK trade mark classes – GOV.UK (www.gov.uk). Then, when you know the class(es), you can limit the UK Trade Mark Register search Search for a trade mark – Intellectual Property Office (ipo.gov.uk) by using the “Select class(es)” function.
We can advise on the risks posed by any existing trade mark registrations in practice, drawing on our extensive experience.
In a straight-forward case, you could file a trade mark application directly with the UKIPO, using guidance here Apply to register a trade mark – GOV.UK (www.gov.uk) or we can handle the entire trade mark search and application procedure.
(iii) Designs – from an IP perspective, a registered (or unregistered) design is concerned with the appearance of a product, not its function (which could be protectible by a patent). Designs receive automatic “unregistered design protection” but, for enhanced protection, they can be registered. In a straight-forward case, you could file an application directly with the UKIPO using guidance here Apply to register a design – GOV.UK (www.gov.uk) or we can handle the entire process
(iv) Other IP rights – the main registered IP rights are discussed above but there are unregistered rights such as copyright, unregistered trademark rights and trade secrets or confidential know-how. We can advise if you have any relevant automatic rights and how you may use them.
What’s the point of IP?
IP rights, whether registered or unregistered, are intended to encourage innovation and ideas by giving IP owners the right to prevent others from exploiting the IP. However, IP rights are about protecting something which has real commercial value. For example, a patent for an invention which no one wants to exploit is likely to be worthless. When advising on IP, we adopt a pragmatic approach, and encourage you to analyse how you are going to make money from your invention or other IP rights. We do not want to be the only party to make money from a client’s IP and we reserve the right not to act in circumstances when we feel it is not appropriate to do so.