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National applications are filed at the UK Intellectual Property Office. European patents filed at the European Patent Office 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 applications in one initial filing.
How are patent rights registered or secured?
Information on existing patents can be found on the UK IPO Patent Register, the EPO Patent Register and the Espacenet patent database.
What are the costs of obtaining a patent, and the costs of defending it?
A typical UK patent may cost £5,000 to £10,000 ($6,500 to $13,000) 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 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 £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 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.
"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."
Unjustified threats to bring infringement proceedings in respect of certain acts can be actionable in the UK.
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. Registration gives the owner the exclusive right to use the mark for the goods/services applied for.
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 £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.
"Time limits to take action are short so brand owners need internal procedures to quickly determine whether detained goods are counterfeit."
As with patents, unjustified threats to bring infringement proceedings can be actionable.
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.
How big a problem is counterfeiting in your jurisdiction?
According to the OECD’s report Counterfeit Products and the UK Economy: Fake Goods, Real Losses, 4% of imports into the UK are counterfeit. The estimated value of the counterfeits is £9.3 billion.
What sectors are particularly at threat?
Tobacco products represent the most-detained items, followed by clothing and cosmetics/perfumes. Medicines, foods, alcoholic beverages and household electrical goods are also at risk. Clearly there are associated public health risks with counterfeit medicines, cosmetics and alcoholic beverages.
What are the best strategies for dealing with the problem?
Take robust action to maintain the prestige of a brand. Active engagement of rights owners with customs and trading standards 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.
What are the key challenges to copyright owners in your jurisdiction?
Illegal downloading of digital content is a continued threat to the creative industries in the UK. The British Phonographic Industry (BPI) reports about 426 million music tracks were illegally downloaded last year. The BPI submitted more than 200 million URLs to Google and Bing for removal.
The government has identified the main online piracy threats to the UK recorded music industry as BitTorrent networks, cyberlockers, stream ripping sites, MP3 aggregator sites, unauthorised streaming sites and pirate sites accessed by mobile devices. 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 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 but there remains significant political uncertainty around the departure.
The UK national systems for protecting patents, trademarks, registered and unregistered designs will be unchanged.
EUTMs and Registered Community Designs (RCDs) will continue to be valid in all 28 member states including the UK until the UK’s proposed date for departure from the EU (currently October 31, 2019).
At the point of the UK’s exit from the EU:
EUTMs will be granted comparable trademark rights in the UK. These rights will retain the filing, registration, priority/seniority and renewal dates of the EUTM.
RCDs will be granted a new UK equivalent right with minimal administrative burden.
The European Patent Convention is not a body of the EU and therefore Brexit will not affect European patents. Applicants can continue to apply to the EPO for patent protection covering the UK.
Patented pharmaceutical products and agrichemicals can be granted an additional period of protection under a supplementary protection certificate (SPC) after the patent has expired. This will be retained in UK law after departure from the EU so the existing SPC processes will remain in place but operating independently from the EU.
The UK ratified the Unitary Patent Court (UPC) Agreement. The UK intends to stay in the UPC and unitary patent system after the country’s departure from the EU.
Alison Simpson is a partner at UDL Intellectual Property. She advises clients on all aspects of acquisition, management and exploitation of trademarks. She has particular expertise in trademark availability searching and clearance, overseas filing strategies, oppositions and anti-counterfeiting. Simpson provides clients with commercial and strategic advice on the development of brands. She can be contacted at: email@example.com
Urquhart-Dykes & Lord, UKIPO, national applications, UDL Intellectual Property, patent protection, Brexit, PIPCU, copyright owners, counterfeit, piracy