Business brief 2018: UK
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.
Information on existing patents can be found on the IPO Patent Register, the EPO Patent Register and the Espacenet patent database.
What are the costs of obtaining and defending a patent?
A typical UK patent may cost £5,000 to £10,000 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, for claims below £500,000, before the Intellectual Property Enterprise Court (IPEC). Hearings in both courts 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. A special small claims track is available at the IPEC for claims with a value up to £10,000.
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 properly 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 at WIPO designating the UK or EUTM. A registration gives the owner the exclusive right to use the mark for the goods/services applied for.
What are the costs of registering and defending a trademark?
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 £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.
Is there anything unusual in UK trademark law that foreign companies should be aware of, and what are the most common mistakes businesses make?
In the UK, unregistered marks can be protected under common law subject to the establishment of goodwill and reputation. Goodwill arising from commercial trade under the sign can be protectable under the law of passing off and such rights can be used as grounds to object to a later trademark application.
