Business brief 2017: UK

25-05-2017

Alison Simpson and Mark Green

Patents

How are patent rights registered or secured?

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, which allows applicants seeking patent protection internationally to consolidate their inventions in one initial filing.

What are the costs of obtaining a patent, and the costs of defending it?

A typical UK patent may cost £5,000 to £8,000 ($6,326 to $10,100) for drafting and filing dependent on subject matter. Costs for prosecution through to grant are dependent on the nature of the objections raised by the IPO.

Actions for infringement may be brought before the Patents Court or the Intellectual Property Enterprise Court (IPEC) (for claims below £500,000). Hearings in both Courts are before a single judge without a jury.

A High Court action may cost £175,000 to £500,000 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. A special small claims track is available at IPEC for claims with a value up to £10,000.

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

The UK IPO Patent Register, the EPO Patent Register and the Espacenet patent database.

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

Publicly disclosing an invention before filing an application is likely to invalidate it.

Businesses should ensure that inventorship and ownership of inventions are determined, with execution of assignments if required, before filing in order to avoid disputes or difficulties with formalities later.

Unjustified threats to bring infringement proceedings in respect of certain acts can be actionable in the UK.

Trademarks

How are trademark rights registered or secured and what protection do they grant?

By filing a trademark application at the IPO, a European Union trademark (EUTM) application at the European Union Intellectual Property Office (EUIPO) or an international trademark designating the UK or EUTM. A 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 the costs of defending it?

A typical UK trademark in one class costs about £750 to £1,000 from filing to registration. An EUTM application in one class costs about £1,600 to £2,000 from filing to registration.

Actions for infringement or passing off may be brought before the High Court or IPEC.

A High Court action to full trial may cost £175,000 to £350,000. 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.

Is there anything unusual in UK trademark law that foreign companies should be aware of and what are the most common mistakes businesses make?

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.

Assuming that a registration gives a party the 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 the mark has been used are common mistakes.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

According to the European Commission, in 2015 customs authorities in the EU detained over 40 million individual fake or counterfeit goods with a total value estimated at more than €640 million ($683 million). The UK customs authorities detained over 2.8 million articles in 2015.

What sectors are particularly at threat?

Cigarettes represent the most-detained articles, followed by everyday items such as toys, medicines, foods, beverages, toiletries, and household electrical goods.

What are the best strategies for dealing with the problem?

Take robust action to maintain the prestige of a brand. Active engagement of the rights owner with customs is essential for effective enforcement. File an application for action with customs to protect the IP.

Specific and technical data on authentic goods and trading information is required in the application to enable customs to identify possible counterfeits. 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?

Illegal downloading of digital content is a threat to the creative industries in the UK. A recent IP crime initiative in the UK resulted in the submission of 100 million URLs to Google and Bing for removal of links to infringing content. Access to pirated digital content using set-top boxes and Internet Protocol TV sets is also a significant challenge to the television industry.

How should people ensure they are protected against copyright infringement?

There are many specialist organisations representing the rights of copyright owners providing industry-specific advice and assistance, including the Police Intellectual Property Crime Unit (PIPCU). Close cooperation with these enforcement agencies is recommended.

What is the best way to deal with infringement?

Having clear processes and procedures in place. Actions for infringement are brought before the High Court or the IPEC. Deliberate infringement of copyright commercially can also be a criminal offence resulting in prosecution by the Crown Prosecution Service. 

Have there been any other developments?

The UK has triggered the formal process to leave the EU. There is now a two-year time limit for the UK and EU to reach an agreement. The UK national systems for protecting patents, trademarks, registered and unregistered designs are unchanged. Until 2019 the UK remains a full member of the EU; EUTMs and registered Community designs (RCDs) will continue to be valid in all 28 member states including the UK.

What will happen when the UK finally exits the EU is not yet decided. It seems likely that there will be transitional provisions allowing for existing EU-wide IP rights to transform into a continuing EU right covering the remaining 27 states and into a “new” UK right, backdated to the original EU right filing date, ensuring continuity of protection.

"Until 2019 the UK remains a full member of the EU; EUTMs and registered Community designs (RCDs) will continue to be valid in all 28 member states including the UK."

The UK’s exit will not affect the current European patent system as the European Patent Convention is wholly separate from the EU.

Until final exit from the EU, businesses can continue to apply for and be granted supplementary protection certificates (SPCs) for patented pharmaceutical and plant protection products using the current SPC system. The government is exploring options for SPC protection in the UK after we leave the EU.

At the time of writing the UK remains a signatory state of the Unified Patent Court (UPC). The UK government confirmed its intention to proceed with arrangements to ratify the UPC Agreement and hopes to be ready to begin the period of provisional application in mid-2017, depending on completion of the legislative process. It is currently planned that the UPC will open for business in the UK in December 2017.

Alison Simpson is a partner at Urquhart-Dykes & Lord. She advises clients on all aspects of acquisition, management and exploitation of trademarks, especially commercial and strategic advice on the development of brands. She has particular expertise in trademark availability searching and clearance, overseas filing strategies, oppositions and anti-counterfeiting. She can be contacted at: aefs@udl.co.uk 

Mark Green is a partner at Urquhart-Dykes & Lord. He worked in industry for five years at a multinational company responsible for major consumer products. He spent a year in the US and gained direct experience dealing with the US Patent Office. Since joining the firm he has worked with many companies in the chemical, biotechnology and pharmaceutical industries. He can be contacted at: mcg@udl.co.uk 

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