Business brief 2015: United Kingdom
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
National applications are filed at the UK Intellectual Property Office (IPO). European patents filed at the European Patent Office (EPO) can be validated in the UK. The UK and the EPO are members of the Patent Cooperation Treaty (PCT), which allows applicants seeking patent protection internationally to consolidate their inventions in one initial filing.
What are the costs of obtaining a patent, and what are the costs of defending it?
A typical UK patent may cost £3,500 ($5,200) to £6,000 from filing to grant.
Actions for infringement may be brought before the English High Court or the Intellectual Property Enterprise Court (IPEC). Hearings are before a single judge without a jury.
A High Court action may cost £175,000 to £350,000 for a full trial. Costs are awarded to the successful party but recovery is limited to costs that are proved to be proportionate to the value of the case. The IPEC is cheaper for smaller claims and has a cap of £50,000 on costs awards and a cap of £500,000 for damages. A special small claims track is available for claims with a value up to £10,000. Costs orders on such small claims are highly restricted.
Where can you find information on existing patents in your jurisdiction?
The IPO’s website (www.ipo.gov.uk) and the EPO database (www.espacenet.com).
Is there anything unusual about the patent law(s) that companies should be aware of, and what are the most common mistakes businesses make?
Unjustified threats to bring infringement proceedings in respect of certain acts can be actionable in the UK.
Publicly disclosing an invention before filing an application is likely to invalidate it.
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 infringement. Prompt and proportionate action using professional advisers is recommended with the aim of avoiding litigation.
Have there been any changes to the patent law(s) in the last 12 months?
Changes regarding the experimental use exception, or research exception, came into force, affecting companies and individuals involved in clinical trial work or in providing information for the assessment of medicines.
The option of marking a product with a web address rather than specific patent information to demonstrate patent protection became available. The web address must link to a webpage that clearly sets out the patent number relevant to the product.
Trademarks
How do you register or secure trademark rights and what protection do they grant?
By filing a trademark application at the IPO, a Community trademark (CTM) application at the Office for Harmonization in the Internal Market or an international trademark designating the UK or CTM. Registration gives the owner the exclusive right to use the mark for the goods/services applied for. Unregistered marks can be protected under common law subject to the establishment of goodwill and reputation.
What are the costs of registering a trademark and what are the costs of defending it?
A typical UK trademark in one class costs about £675 to £725 from filing to registration. A CTM application in up to three classes costs about £1,650 to £1,750 from filing to registration.
Actions for infringement or passing off may be brought before the High Court or the IPEC.
A High Court action to full trial may cost £150,000 to £300,000. Costs are awarded to the successful party but recovery is limited to costs that are proved to be proportionate to the value of the case. As with patents, the IPEC is cheaper for smaller claims and has a cap on costs awards and damages.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
Counterfeiting, online infringement, or misuse of trademarks. In cases of counterfeiting immediate and strong action is recommended, involving enforcement agencies. Prompt and proportionate action is also recommended with the aim of avoiding litigation.
What are the most common mistakes trademark owners make?
Assuming that registration gives them freedom to use the mark rather than the right to stop others using it, failing to police the mark, and failing to keep proper records about how and to what extent a mark has been used.
"Time limits to take action are short so brand owners need internal procedures to quickly determine whether detained goods are counterfeit."
Are there any nuances in the trademark law(s) that foreign companies should be aware of?
A person making an unjustified threat to bring infringement proceedings in respect of certain acts can be sued by a person aggrieved by the threat.
Counterfeiting
How big a problem is counterfeiting in your jurisdiction?
According to the annual European Commission report, in 2013 customs in the EU detained almost 36 million suspected counterfeit articles. The value of the equivalent genuine goods is estimated by the commission to be more than €768 million ($834 million).
What industries are particularly at threat?
Clothing, tobacco, alcohol, medicines, footwear, and DVDs.
What are the best strategies for dealing with the problem?
Take robust action to maintain the prestige of a brand. File an application to protect the IP rights with customs. The onus is on right owners to confirm that seized goods are counterfeit. Time limits to take action are short so brand owners need internal procedures to quickly determine whether detained goods are counterfeit.
Copyright
What are the key challenges to copyright owners in your jurisdiction?
Unauthorised use of content online. Illegal acquisition of content through websites offering direct downloading, file-sharing or streaming was estimated by the IP crime report: 2013 to 2014 to cost the music industry alone more than £7 billion globally.
How should people ensure they are protected against copyright infringement?
Keep accurate, dated records of the development of work and assert copyright on it with
the owner’s name and year of creation. There are many specialist organisations representing the rights of copyright owners who provide industry specific advice and assistance.
What is the best way to deal with infringement?
Actions for infringement are brought before the High Court or the IPEC. Deliberate infringement of copyright commercially can also be a criminal offence.
Have there been any changes to the copyright law(s) in the last 12 months?
Regulation changes were passed in 2014:
• Consumers are now allowed to make personal copies of content they have bought strictly for their own private use.
• Limited use of copyright material is now allowed for the purpose of caricature, parody or pastiche without the permission of the copyright owner, but only to the extent that the use is fair and proportionate.
• The exception for ‘criticism or review’ has been extended to cover all types of fair quotation, as long as there remains sufficient acknowledgement of the quotation.
Alison Simpson is a partner at Urquhart-Dykes & Lord. She can be contacted at: aefs@udl.co.uk
Mark Green is a partner at Urquhart-Dykes & Lord. He can be contacted at: mcg@udl.co.uk
