FREQUENTLY ASKED QUESTIONS
Understanding your company’s intellectual property (‘IP’) assets and, more importantly, how to protect them is an essential consideration for any business – from new start-ups to long-established multinational corporations. This information sheet gives answers to some of the questions about IP that we get asked most often*.
Your intellectual property can be protected in a number of different ways: A trade mark protects names, logos or other forms of ‘branding’ associated with a given product or service, and can be registered or unregistered. A registered design protects the appearance of a specific product. Designs do not generally protect how a product works. This type of protection is known differently throughout the world, such as ‘industrial designs’ and ‘design patents’. A patent protects the technical aspect of how something works. Patents do not generally protect how a product looks, unless there is some technical reason for why the product looks like it does. Copyright protects creative works, such as songs, books and paintings.
Attorneys generally have detailed experience in writing applications, advising on strategy, and (importantly) getting applications granted to give the broadest possible protection. There is much law to consider in the application process, and there may be instances where misunderstanding that law can be fatal to the application.
Generally, the most important countries are those where you intend to sell or make your products, or provide your service. The more countries you want, the more money it costs. Also, application costs are far from uniform throughout the world. Some countries are very expensive, whilst others are cheap in comparison.
Copyright protects creative works, like books, songs and paintings once they have been ‘fixed’ in or on to any medium. Copyright also protects other kinds of creative works that most businesses will use and/or produce – things like your business’ logo, the photography you use in your brochures and the text used on your website. Computer software and databases can also be protected by copyright. Copyright does not, however, protect the idea behind the work.
The duration of copyright protection depends upon the type of creative work concerned. For example, copyright protection for literary, musical or artistic works lasts for the life of the creator plus 70 years. The length of protection for other types of work is calculated for the date that the work was first made or published to the public.
Copyright protection exists automatically, once the original creative work has been fixed. There is no official registration system for copyright in the UK and most other parts of the world. To help protect your creative work, it is advisable to mark your creations with the © symbol, along with the name of the copyright owner (usually the author or creator) and the date the work was created. Some people suggest that creators should send themselves a copy of the work by special delivery and then leave the envelope unopened upon delivery. This will help prove that you created the work before the date on the envelope, although it will not prove that you actually created the work yourself.
A trade mark is something (e.g. a word or sign) which enables customers to identify goods or services as coming from a particular source. The strongest means of protecting a mark is to register it.
Assuming that there are no problems, a UK trade mark normally takes around 6 months. An EU-wide European Union Trade Mark (or ‘EUTM’)1, usually takes around 7 months to be granted. There is also a system for obtaining multiple national trade marks through a single application using the ‘Madrid Protocol’, which takes around 12-18 months. These time frames will increase, perhaps dramatically, if there are problems.
UK and EUTM registrations last for 10 years, but can be renewed (on payment of a renewal fee) for further 10 year periods indefinitely, in theory. However, if a trade mark is unused, the registration can be cancelled by a third party.
Costs are very much dependent upon the countries in which you are interested. Also, costs will be higher depending on the range of products and services for which the trade mark registration will protected. Products and services are grouped together into 45 different ‘classes’. The more classes the application covers, the higher the costs. As a very rough guideline, a UK trade mark application covering one class of goods or services would cost £500**, with each additional class costing an extra £150**. In contrast, the rough costs for a EUTM application covering three classes would be around £1,500** with an extra £275** for each additional class. These indicative costs assume that the application encounters no problems (e.g. official objections or third party oppositions). Costs will increase, perhaps very significantly, if problems arise. The ‘Madrid Protocol’ system is very variable in terms of costs.
In the UK and EU, a trade mark must be distinctive enough to identify one particular company or person and cannot describe the goods or services being offered, nor be the usual or generic term for those goods or services. Also, the mark must not conflict with an existing registered trade mark owned by another party. A registration for an identical or similar mark, covering identical or similar goods or services can represent a barrier to registration, particularly if there is a likelihood that consumers will be confused between the two trade marks. Unregistered trade marks owned by other people can also pose problems, as can marks with a reputation. It is possible to register many different kinds of trade marks. In addition to words and logos, the shape of packaging, sounds and slogans can all be registered, provided that they comply with the requirements stated above.
A ‘clearance search’ gives a good indication as to whether or not your proposed mark is safe to be adopted. This search would also give a view on your ability to register the mark in the UK. A clearance search is a search of the relevant trade mark registers to check for existing registrations that could present problems, because they conflict with your intended mark and goods/services. In the UK, this is a search of the UK, EUTM and Madrid Protocol registers. A clearance search takes around seven working days and the estimated cost is approx. £450** per word mark covering one class of goods or services.
Firstly, we need details of the mark itself (including a .jpg file it is a logo); secondly, we need information on the goods or services that are to be covered by the application; third, we need to know which territory you wish to cover (for example, the UK or EUTM); and finally, we need to know who is the owner of the trade mark.
In the UK, there is no restriction on the ability to use the TM symbol. It is merely seen as claim to a trade mark by its owner. In contrast, only owners of a trade mark registration can use the ® symbol in the UK. The position is different in other countries, so caution is advised, particularly in relation to websites which may be viewed anywhere in the world.
The cost for applying for a registered Community design, which covers the whole EU is approx. £850**, assuming suitable drawings of the design are provided. It may be possible to include more than one design in the same application, in which case there would be cost savings compared with filing multiple separate applications. However, the cost would be higher than for a single application. The cost for UK registered design is less.
If you have designed a product, you may already have ‘unregistered’ design rights, for which you do not need to apply for protection. However, such rights only protect against copying of your design. If someone else makes the same design independently, you cannot enforce your rights against them. Furthermore, copying of the design must be proved, which is usually very difficult. Registered designs, however, provide a monopoly: no matter how someone else arrives at your design, you can stop them from using it. Also, registering a design can provide longer protection compared with unregistered design rights.
For a UK registered design, registration can take one to two months. Registration of a registered Community design, can be very fast – perhaps even as quick as one week. In the UK, grant can be deferred for up to 12 months if desired.
A UK registered design can last up to 25 years once granted, on payment of renewal fees every 5 years. The same is true for a registered Community design.
Patenting is a slow process. From first filing to grant may take several years – 4 or 5 years is not unusual. In the UK there is an ‘upper limit’ of 4 years and 6 months, but in Europe there is no such limit.
Patents are expensive. There are costs involved in writing and filing them, as well as in the legal process to get them granted. There are often renewal fees payable at regular intervals to keep them alive. The costs for writing a patent vary greatly, depending on technology and complexity. The costs for filing the application, having the patent searched and examined are mainly official fees, and are country specific. To get a patent granted, we must convince the relevant patent office that it is allowable. Sometimes this is relatively easy, but sometimes it may require several rounds of argument. So, costs for this stage can be hugely variable. In some countries, the costs of translations, national fees and so on can run into the tens, or even hundreds, of thousands of pounds. Renewal fees are again country specific, and complicated. It is therefore hard to estimate their cost. However, for a European patent it is likely to be in the thousands of pounds per year, whilst, for the UK alone, a few hundred. Renewal fees generally increase as the patent gets older. By way of a very rough guideline, getting a UK patent from application to grant for an uncomplicated mechanical invention would cost somewhere in the region of £6,000**, assuming that there are no significant problems. The equivalent ‘ballpark’ costs for a European patent for the same kind of invention would be from around £14,000**.
The maximum term of a UK or European patent is 20 years from the filing date. Most other countries also have a 20 year term. Most countries, however, charge a ‘renewal’ fee (often due every year). If the renewal fee is not paid, the patent ceases to have effect. Some countries offer mechanisms by which the patent’s life can be extended, or by which very similar protection to a patent can be obtained for a slightly extended period.
It is generally recommended to file the patent application as soon as possible, to get the earliest filing date. The filing date is very important as it is the date from which you claim your rights compared to others, so the earlier, the better. However, we need to make sure that your invention is ‘finished’ enough that it can be described properly in the application. Once the first patent application is filed, there is a 12-month window for filing applications in other countries based on the same invention. The later filings are treated (to the extent that they were described in the first filing) as if they were filed at the same time as the first filing, even if they were in fact filed 12 months later.
If your invention becomes known to the public before you file a patent application (even if it is just one member of the public) your chances of getting a patent are very much reduced. So, it is safest not to discuss your invention with anyone, unless it is strictly in confidence. If you have to speak to someone about your invention, ‘non-disclosure agreements’ are one option for trying to formalise confidentiality. It is generally recommended to file your patent application before speaking to companies or potential investors. Not only does this avoid the confidentiality problem, it may also become more attractive if a patent is granted or close to grant. Any conversation with your patent attorney will be treated as confidential. Therefore, you are able to speak to us about your ideas without damaging your chances of protection.
A public disclosure of your invention may prevent you from getting patents in many countries. So, giving a talk about your invention will greatly reduce your chances. However, some countries, such as the USA, have a grace period for such disclosures. There may be other ways of still getting a patent depending upon what was said and the circumstances.
A first port of call is looking at industry magazines and shops etc. to see if similar products are available there. Basic internet searching can also be useful. Patent websites enable you to search through previous patent documents. Particularly useful is the website http://worldwide.espacenet.com. It is also possible to conduct more detailed searches. We can organise such searches for you. We can then help you analyse the results. Note though that there are limits to any search – time and money being the main ones. No search is guaranteed to find everything of relevance.
The most important thing is for you to explain what your invention is and how it works. Ideally, you would also explain the differences between your invention and what has been done before that is similar, or why your invention is an improvement on a previous device. Generally, a patent needs to include a description of the invention which is detailed enough that someone of relative skill could perform the invention on reading the patent. In some circumstances a prototype may be needed as evidence that the invention ‘works’, although this is often not a problem.
In this situation, we recommend contacting an attorney as soon as possible. Replying prematurely is risky, and a detailed assessment of the situation and how best to respond is needed. Infringement is a complicated issue, and getting opinions on whether or not you are actually infringing, and what you might do about it, is very important.
This website contains lots more information on a variety of intellectual property topics. If there is any information you can’t find, please get in touch. Alternatively, you could try contacting the UK Intellectual Property Office (www.ipo.gov.uk), the Chartered Institute of Patent Attorneys (www.cipa.org.uk) or the Chartered Institute of Trade Mark Attorneys (www.citma.org.uk).
1 previously known as a Community Trade Mark (CTM)
* Please note that this webpage only provides introductory or summary information on each of the topics covered. There may be other related issues, so please contact us to discuss your specific situation in more depth.
** All indicated costs are rough estimates, exclusive to VAT and subject to currency fluctuations; some official fees are payable in currencies other than GBP. Also, all estimated costs assume that no additional attorney time is needed. If it is, costs will be higher.
This information is simplified and must not be taken as a definitive statement of the law or practice.