WIPR Annual 2020 Business Brief: UK

Alison Simpson of Urquhart-Dykes & Lord outlines IP law in the 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 applications 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 a patent, and the costs of defending it?

A typical UK patent may cost £5,000 to £10,000 ($6,200 to $12,400) 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. 

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, or an international trademark at the World Intellectual Property Organization designating the UK. A registration gives the owner the exclusive right to use the mark for the goods/services applied for. 

Since the UK voted to leave the EU, currently, after December 31, 2020 , EU trademark (EUTM) applications will no longer cover the UK. This date may be extended following the COVID-19 pandemic.

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. 

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.

What are the most common mistakes trademark owners make?

Failure to police a trademark and to keep proper records about how and to what extent the mark has been used. As with patents, unjustified threats to bring infringement proceedings can be actionable.

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

The UK left the EU on January 31, 2020. We are now in an implementation period, which will currently runs until December 31, 2020 (‘exit day’).This could be extended.

Until then, EU law will continue to apply to the UK. There will be no changes to EUTM and design applications, registrations, proceedings or the ability to act before the EUIPO prior to exit day.

At the expiry of the implementation period, registered EUTMs will be immediately and automatically granted comparable trademark rights in the UK. EUTMs which are pending on exit day will not be automatically granted equivalent UK trademark rights, but applicants will be able to apply to:

• Register a comparable UK trademark in the following nine months;
• Retain the earlier filing date of the pending EUTM; and
• Claim any valid international priority on the pending EU application, along with any UK seniority claims recorded against it.

At the expiry of the implementation period, registered and published Community designs, unregistered Community designs and protected international trademark and design registrations designating the EU will be immediately and automatically replaced by comparable UK rights.

Counterfeiting 

How big a problem is counterfeiting in your jurisdiction?

According to the OECD’s report “Trade in Counterfeit Products and the UK Economy” (2019), imports of counterfeit and pirated goods to the UK account for as much as £13.6 billion—equivalent to 3% of UK imports of genuine goods.

What sectors are particularly at threat?

Information and communications technology devices are the most counterfeited goods, with the value of fakes imported into the UK estimated to be £2.5 billion. Clothing, footwear, leather goods, handbags, toys and games are also highly targeted, with fakes accounting for more than 8% of UK imports.

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.

Copyright

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

Illegally streaming or downloading digital content is a threat to the creative industries. The British Phonographic Industry has submitted more than 500 million URLs to Google and 398 million to Microsoft for delisting. 

The UK Publishers Association has submitted more than 1.75 million URLs to Google for removal of copyright material.

How should people ensure they are protected against copyright infringement?

There are specialist organisations representing the rights of copyright owners to provide 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 and deliberate infringement of copyright commercially can constitute a criminal offence.

Have there been any other developments?

The European Patent Convention is not a body of the EU. Therefore, Brexit will not affect European patents. Applicants can continue to apply to the EPO for 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 existing SPC processes will remain in place, but operate independently from the EU.

The UK will not be party to the Unified Patent Court, should it come into force. 

Alison Simpson is a partner at UDL Intellectual Property. She manages global IP portfolios, providing strategic advice to develop some of the world’s biggest brands. She can be contacted at: aefs@udl.co.uk