Business brief 2012: UK

01-06-2012

Alison Simpson and Jonathan Higgs

National patent applications are filed at the UK Intellectual Property Office by filing a specification with a description and claims.

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

National patent applications are filed at the UK Intellectual Property Office (UKIPO) by filing a specification with a description and claims. European patents can be validated in the UK from patent applications filed at the EPO. A national UK patent must be granted/validated in order to take action against infringement in the UK.

What are the costs of obtaining and defending a patent?

A typical UK patent from filing to grant may cost £3000 to £5000 ($5000 to $8000). A High Court action could cost approximately £150,000 to £300,000 ($240,000 to $480,000) for a full infringement/validity trial, however, the Patents County Court (PCC) is considerably cheaper for smaller claims and has a cap on costs awards of £50,000 ($80,000) and maximum damages of £500,000 ($800,000).

Where can you find information on existing patents in your jurisdiction?

The UKIPO (http://www.ipo.gov.uk/) has a database where full patent status is available. Detailed information (eg, examination correspondence) is also now available for published cases.

Is there anything unusual about the patent law that companies should be aware of, and what are the most common mistakes businesses make?

UK patent law is, mostly, harmonised with other EU countries so there are no unusual practices. However, in the case of suspected infringement businesses should be aware not to make ‘unjustified threats’.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Threats usually come from either blatant disregard of rights (eg, counterfeit products) or, by contrast, someone who is completely unaware of the existence of patent rights. In the first case, strong action is recommended, including the involvement of customs to seize goods. In the second case, often a notifying letter informing of the existence of a patent may be sufficient.

Have there been any changes to the patent law(s) in the last 12 months?

There have been no major changes in UK patent law. There have, however, been efforts to reduce enforcement costs, eg, by use of small claims service at the PCC.

Trademarks

How do you register or secure trademark rights and what protection do they grant?

Rights can be registered by filing an application at the UKIPO, at the Community Trademark Office (OHIM), or by filing an international trademark designating the UK or Community. Registration gives the owner the exclusive right to use the mark for the goods/services that it covers in the UK. Protection is available for unregistered marks under common law.

What are the costs of registering and defending a trademark?

These depend on which registration system is used. A national UK trademark in one class, from filing to registration, costs £600 to £700 ($1000 to $1100) in a straightforward case. Additional classes cost about £150 ($240).

Enforcement costs can vary enormously. A High Court action could cost between £150,000 and £300,000 ($240,000 to $480,000) for a full trial. The PCC is considerably cheaper for smaller claims and has a cap on costs awards of £50,000 ($80,000) and maximum damages of £500,000 ($800,000).

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

Threats to trademark owners usually come from either blatant disregard of rights (eg, counterfeit products) or from online misuse of trademarks. In either case, immediate and strong action is recommended involving customs or Trading Standards as necessary. In other cases of infringement, prompt and proportionate action is recommended with the aim of avoiding litigation. Alternative dispute resolution and settlement are actively encouraged.

What are the most common mistakes trademark owners make?

Owners often assume that the registration gives them total freedom to use the mark, rather than the right to stop others using the mark. Failing to keep proper records, particularly in relation to how and to what extent a mark has been used, is also common.

Have there been any changes to the trademarks law in the last 12 months?

There have been no legislative changes in trademark law but there have been minor changes in how it is implemented in practice by the IPO.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

Unauthorised use of copyright material online including illegal sharing or downloading of material remains a challenge. There is consumer confusion over what is legal and a perception that downloading content without payment or transferring a music file from a CD to an MP3 player is not ethically wrong.

How should people ensure they are protected against copyright infringement?

There is no official registration of copyright in the UK and it will subsist automatically provided the work meets the qualification requirements, either through the nationality of its author or through its place of first publication. It is advisable to mark the copyright work with the © symbol, the name of the copyright owner and the year in which the work was created.

This informs others of the existence of copyright and when the term of protection started. We advise keeping records of all development of the work in case there is a requirement to prove authorship.

What is the best way to deal with infringement and what are the costs associated with it?

Prompt and proportionate action is recommended with the aim of avoiding litigation. Substantiating subsistence and ownership of copyright in the work infringed, specifying the infringing acts and identifying the infringer are key preliminaries to sending a cease and desist letter. If litigation is necessary, costs could be in the region of £150,000 to £300,000 ($240,000 to $480,000) for a full trial.

Have there been any changes to the copyright laws in the last 12 months?

There have been no major changes to copyright law but a government review is underway, aimed at modernising copyright laws for the digital age. Recommendations are currently under public consultation.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

The import of counterfeit goods is an ongoing problem. Trade in counterfeit goods is estimated to cost the UK economy about £3 billion a year. Which industries are particularly at threat? Fake designer goods are most commonly seized followed by CDs and DVDs, but counterfeit electrical goods are a growing problem. Increasing seizures of counterfeit alcohol products and pharmaceuticals are a public health concern.

What are the best strategies for dealing with the problem?

Swift and robust action must be taken to maintain the prestige of a brand. We recommend that an application to protect the client’s IP rights be filed with HM Revenue and Customs. This ensures that customs notify the rights holder of any detentions without delay. The burden of proof rests with the rights holder to confirm that the seized goods are counterfeit and the time limits are short.

It is important to have a technical contact who can quickly determine whether detained goods are counterfeit and a legal contact who can promptly communicate with HMRC and the consignee. Having a process in place gives the best chance of implementing the streamlined procedure, so that if the consignee does not object to the detention of the goods within the time limit, HMRC will treat them as abandoned for destruction, thus avoiding the need for legal proceedings.

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Alison Simpson is a partner at Urquhart-Dykes & Lord LLP. She can be contacted at: aefs@udl.co.uk

Jonathan Higgs is a European patent attorney at Urquhart-Dykes & Lord LLP. He can be contacted at: jhh@udl.co.uk

Business brief, IP rights

WIPR