What Are Intellectual Property Rights
As the name suggests, Intellectual Property (“IP”) refers to the ownership of and rights to ideas and creations of the mind. IP comprises the establishment and protection of a wide range of rights resulting from the ownership of copyright, trade marks, patents and design rights.
IP may be of great value to a range of entities from private individuals, freelance writers and small business proprietors to national and multi-national companies. Over time, the value of an entity’s IP (such as brands, logos and trade marks) may increase as the entity’s goodwill (the intangible asset of reputation) increases.
Most IP requires some form of registration and the validity of the IP may differ depending on the type of right for which protection is sought. IP rights have different time spans of validity and some may be renewed for different lengths of time. There is often some confusion in the public domain as to the nature of different IP rights and in use of terms such as copyright and trade marks, especially.
Trade Marks are registerable words and logos which distinguish the goods and services of one entity from those of another. Well known trade mark words include names such as COCA COLA, FORD and GUCCI while well known logo marks include the green LAND ROVER oval device, the large yellow MACDONALDS “M” device and the square ORANGE device. However, the registration and ownership of trade marks is not only for global giants such as Coca Cola and Macdonalds: small business proprietors (such as online traders, pub owners or beauty salons) may do well to register trade marks for their businesses, particularly with greater expansion as they may want to prevent competitor businesses from possibly using their marks and ideas without permission, and thereby riding on the good reputation of the original business’ trade marks. A good and growing reputation in a trade mark is worth protecting by registering the mark.
In the United Kingdom, one can apply for registration of a UK trade mark (which affords protection of the mark in the UK) and/ or a Community Trade Mark (“CTM” – which affords protection in all countries of the European Union). UK trade marks are registered at the Intellectual Property Office and CTM’s can be applied for at the Office for Harmonisation in the Internal Market.
Trade Marks that Can and Cannot be Registered
The Trade Marks Act 1994 stipulates which marks can and cannot be registered. In order for a trade mark to be registerable, it must be distinctive. In other words, it must be able to distinguish the goods or services of one entity from that of another so that there can be no confusion in the mind of the public as to the source of the goods or services. In other words, the mark, word or sign for which trade mark protection is being sought must be unique to a particular entity in relation to the nature of his business. Confusing similarities with the mark of another must be avoided. Trade marks that cannot be registered include:
- Trade marks that are already in existence
- Marks that are not distinctive or are deceptive (or confusingly similar to existing marks)
- Offensive marks
- Illegal marks
- Descriptive names or names which show the purpose of the goods or indicate where the goods or services originate
- Marks which have acquired a generic use within a particular trade or industry
Rights Afforded by Registration, Cost and Duration
There are various international, numbered classes of trade marks for the various possible goods and services. For example, vehicle parts and related services are registered under Class 12. The cost of registration of a trade mark in the UK is £200 (plus £50 per Class) – at the time of the drafting hereof. A trade mark owner has the exclusive right to use the registered mark in trade in the UK (and EU, depending on registration) and the law affords 10 years exclusivity and protection for the mark, and the registered mark is renewable after 10 years at the same cost as registration.
Means of Protection and Enforcement of Rights
A wide range of enforcement is afforded the trade mark owner, including delivery up and destruction of infringing goods or signage, search orders, disclosure orders, payment of damages and injunctions, to name a few.
Domain Name Infringement
A domain name is simply a website address. Some domain name traders (also known as “cyber squatters”) often register numerous domain names containing well-known registered trade marks with the intention of selling these domain names to the rightful trade mark owners for inflated profit. Unauthorised and non-descriptive registration and use of a registered trade mark (belonging to another entity) in a domain name or email address amounts to trade mark infringement.
Copyright is probably the most common IP right. We create and encounter copyright daily. The creation of copyright is governed by the Copyright, Designs and Patents Act 1998 and provides for rights in the creation of literary, dramatic, musical, artistic, visual, audiovisual, broadcasts and electronic works.
Copyright cannot be registered but subsists in the mere creation of the work by the author, artist, film maker, musician, programmer, publisher, broadcaster, or photographer, as the case may be. Therefore, even to the drafter of a personal letter is granted automatic copyright protection by law. For a work to enjoy copyright protection is must be an original work.
The Extent of Copyright Protection
Usually, the creator of the work is the automatic copyright owner and the copyright owner has the exclusive right to copy the work, to reproduce it, to adapt it, to issue it to the public; thus to publish it, show, display, broadcast, or play it in public.
There are exceptions to the rule that only the copyright owner may exercise the above rights. Mainstream exceptions to these include:
- Where a work is created by an employee, copyright belongs to the employer
- Where a work has been commissioned, copyright belongs to the commissioner
- Where permission or a licence has been granted to another party
- Making backup copies (e.g. of a computer programme) for private use
- Works copied for research or private study
- Copies made for educational purposes
- Quoting for media creations
- Parliamentary or judicial proceedings
- Fair dealing for criticism, review or news reporting
Patents are probably the most complex of the Intellectual Property Rights and the patent attorney often requires a strong technical and scientific background to deal with innovations in the broad fields of technology and medical science, amongst others. The patent attorney needs to fully understand the workings of complex inventions and must know how to apply the law to these to determine whether an idea qualifies as a patent and, if so, how to ensure complete protection for the invention.
The Purpose of Registering a Patent
A patent affords the owner the exclusive right to reproduce/ manufacture the patented item or concept, to grant licences to others to manufacture the patented concept, to import or export, to sell and profit by the patent.
Once a patent is registered, it must be renewed every year after five years for up to the maximum of 20 years. The reason for this maximum period of protection is to avoid an endless monopoly and to allow the broader economic community to benefit from the introduction of the patent.
Inventions that Can and Cannot be Patented
A patent must be novel, new; it must contain an inventive step; it must be an advancement on the state of the art (i.e. new and progressive in relation to those patents which already exist in the public domain) and it must be capable of being used within trade and industry. An inventor needs to keep the invention confidential and take care not to disclose the patent to the public before suitable rights are in place, as this may affect the essential requirement of novelty.
Legislation also provides that the following cannot be patented:
- a mathematical or scientific method or theory, literary
- a literary, dramatic or artistic work, a way of performing a mental act, playing a game, or doing business
- the presentation of information or a computer programme
- an immoral or offensive item
In deciding whether or not your idea is patentable, it is advisable that to discuss your invention with a qualified and reputable patent attorney. This will add to the £200 it will cost to submit an application with the Intellectual Property Office (IPO) in the UK, but one would not want to risk compromising or jeopardising a potentially valuable and hard-earned invention.
In short, a patent application will comprise completion and submission of a number of documents, which include (but are not limited to):
- A Statement of Application declaring who the inventor of the patent is
- The Claims, a document which lists the innovative and distinguishing technical features of the invention
- The Description, which sets out in detail exactly how the invention functions, how it can be reproduced, and points to its nature and use
- Along with the Description, Drawings must be supplied to illustrate the parts and working of the invention
- An Abstract, a short summary of what the invention is – a title of the invention
It may happen that disputes arise where there is conflict between a patent application and an earlier application or existing patent. If the inventor has not made use of a patent attorney in the application phase, it is advisable to seek the expertise of a patent attorney should any dispute arise.
To qualify for protection as a design right, the design must be new and unique (not common to the public), different from all other known designs in its character and impression. The design can, for example, be the unique shape of a cool drink bottle or the ornamentation on a business logo. But the scope is vast. A creation that does not meet the legal requirement for a design cannot be registered. Nor can functional items where the design is central to the function. Offensive designs and national insignia cannot be registered, and obviously not designs already registered. It is possible to search for and compare designs to avoid conflict by referring to the IPO website.
As with copyright, the actual owner of an unregistered design right is the person who commissioned a design, as is the employer where an employee has created a design in the course of employment.
Registration of a Design Right
Registration of a design right can afford the owner the right to later sell the registered IP right, or to license others to use the design. An unregistered design may have protection under another type of IP right, possibly copyright or unregistered design right, but such cover will not be as firm or comprehensive.
The length and scope of design right protection differs from unregistered UK design right to registered UK design right to unregistered Community design right.
One should consult IPO or a solicitor for the various costs and protection for the different types of design rights in the UK (registered and unregistered) and the Community designs, as protection periods vary.