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Intellectual Property: enforcing your rights

10 October 2015

Intellectual Property (IP) refers to a collection of assets, which, although not tangible, can be every bit as valuable as bricks and mortar. Given the potential value of IP, an aspiring business must focus on protecting its IP rights. Sarah Richmond provides some guidance.

Author, Sarah Richmond

There is often a perception that IP is only relevant to larger businesses or those involved in developing new and innovative products.  However, that is simply not the case; all businesses have some form of IP but its importance, and the importance of protecting it, is often underestimated until it is too late. So, what constitutes IP?

Patents are used to protect the technical aspects of an invention.  In many countries, it is not possible to obtain patent protection for an invention which has been publicly disclosed.  Therefore, it is advisable to keep inventions secret until it has been decided whether or not their commercial importance justifies patent protection.

Design rights protect the visual appearance of a product.  This can include shape, contours, lines, colours, ornamentation or texture.  Unregistered design rights are automatic IP rights recognised in UK and EU law.  It is also possible to obtain a registered UK or EU design right, both of which can provide protection against the copy of a design.  

Trademarks protect the brand or name of a business either as a whole or particular products/services. Unlike patents, trademarks are simply registered.  While registering trademarks is important and can seem relatively straightforward, it is not enough. They have to be registered shrewdly so they carry a threat to infringers.

It is important to have in place processes for recording and managing the development of intellectual property within your business.  It is advisable to keep accurate records, for example, lab or research notebooks that prove what work was carried out on which days or receipts of sales of a product, plus invention/design disclosure documents which allow a business to formally record and manage IP. This type of documentation might be useful at a later date if your IP rights have been infringed.

Assuming that a business has obtained patents, design registrations have been completed, and/or the trade marks have been well registered, the focus then falls on policing and enforcement.

During the patent application process the patent office conducts a search to establish if the invention was already known at the time of filing.  If the applicant wishes to proceed, only after a substantive examination process during which the Examiner will ensure that all the requirements for patentability are met, will a patent be granted.  There are opportunities for third parties to monitor and intervene during a patent application process if they feel the pending patent covers technology which is already known.

With trade marks in the EU, the onus is on the trademark owner to defend its rights as trademark offices do not bar new applications from being registered on the grounds that similar but unrelated trademarks already exist. The implication of this is significant – brand owners have to actively monitor new applications in their area of trading and decide whether they are a threat to their own trademarks.

If a brand owner allows other parties to register a similar trade mark, they are less likely to be successful in the future, should they decide to challenge any other application. Keeping the register clean is important.  If you allow other trademarks to co-exist with yours on the register, it becomes more difficult to take action later on.  To prevent these risks, you can put in place a trade mark watch, which notifies you of relevant new applications, enabling you to take appropriate action.

Taking action
Intellectual property rights are ‘negative’ rights, entitling the owner to prevent a third party from engaging in any action which infringes that right, such as making, using, distributing, selling or importing without their consent.  A granted patent does not automatically allow exploitation of the invention by the patentee. If the working of the invention uses an earlier patented invention, and that patent is still in force, permission from the holder must first be obtained to avoid infringing the earlier right.  

It is important to note that it is only possible to bring legal action against a third party if you have a granted patent and not a pending patent application. However, once the patent is granted, it may be possible to claim damages from infringement back to the date of publication. 

While there are several out-of-court options, sometimes going to court to enforce your IP rights becomes inevitable. The litigation option is accepted as being expensive but it often prevents damages that go way beyond lost sales, such as damage to the reputation of a mark, brand tarnishment, brand dilution and even product (hence brand) liability. 

One option for litigation is to file legal proceedings through the UK High Court. There are certain advantages, such as the possibility of obtaining higher costs, if successful. However, this process can often be very expensive and drawn out, so a cheaper and increasingly popular alternative is to file proceedings through the UK Intellectual Property Enterprise Court (IPEC). Recently, moves have been made to make it easier for SMEs to enforce their IP rights, principally by giving IPEC real teeth.

It is worth noting that the majority of IP disputes do not get to court but are instead settled by an Alternative Dispute Resolution (ADR) or an out of court negotiation.  
ADRs, such as mediation and arbitration, are becoming more and more popular as they enable the parties to reach a settlement outside of court, with the help of an impartial third party, for more limited costs. 

Whilst it is important to defend your IP rights and take action if someone has exploited them without your permission, it is also wise to be cautious and ensure that infringement has actually occurred before doing so. In the UK, groundless threats of an infringement proceeding are actionable directly against the accuser. This can result in the court granting an injunction to prevent any further threats, a declaration that the threats are unjustified, or damages to compensate the aggrieved for any losses resulting from the threat.

Territorial considerations
Patents are generally national rights, effective only in the country in which they are granted. It is important then that a patent filing strategy recognises the most commercially important inventions and that patent protection for these inventions is sought in all territories of interest. The scope of design and trademark registrations is also limited geographically.  For instance, a UK trademark registration will not grant you protection in China.

The technology, products and trade marks of a business are likely to be among its most valuable assets so it makes sense to protect those IP rights with registration.  However, there is no point in having granted patents or registered trademarks if you do not enforce them, as sooner or later they will lose their value. In fields such as engineering where companies invest in innovation and technology, registering and enforcing IP rights - in particular, patents and design rights - can give a business a clear edge over their competitors.

Sarah Richmond is a European patent attorney specialising in engineering with Wynne-Jones IP


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