Intellectual Property Rights (IPRs) are a group of legal rights protecting people's intellectual creations which enable the owner of the right to prevent others from exploiting, copying or taking unfair advantage of or doing something with respect to the subject matter of the right, without the owner's consent.

All businesses use IPRs. The nature of the IPRs owned or used by a business will depend on the industry in which that business operates. All businesses, however, will use some IPRs and should operate an IPR strategy dealing with the money they invest in research and development, licensing-in IPRs from outside or the decisions that they take about the grant of licences over their own IPRs.

Trade marks

In the UK, trade marks are used to protect brands. They are technically defined as an ‘identifying sign’, used in the course of trade, to differentiate a business or its goods or services from those of its competitors. A ‘sign’ is a wide concept and can include words, shapes, packaging, symbols, logos or even smells and sounds. Subject to various restrictions, a sign can be registered if it can be graphically represented (i.e. described on the application form) and it can be shown that the public recognises the mark as indicating the goods or services of a particular trader.

Registration of trade marks is voluntary but advisable as it confers on the owner a statutory right to use the mark exclusively, and potentially indefinitely, from the date of filing of the application in certain classes of goods or services. A business may register a trade mark individually with national registries, or as a community trade mark (which covers all member states of the European Community), or under the Madrid Protocol (which covers all contracting states designated by the owner). Registrations last for 10 years and can be renewed for further periods of 10 years subject to payment of renewal fees.

Failure to use a mark in the UK in the classes for which it is registered, within five years of getting a registration, will make it vulnerable to revocation. Improper use of a mark by the registered owner or with his consent, or use which is likely to mislead the public, may also put that mark at risk. Owners also need to take care that their marks do not become generic, that is, used as the common name for the goods or the services in the trade.

Although neither is a statutory requirement, businesses should make use of the ™ and ® symbols. The ® symbol should only be used with registered marks. Both symbols act as notice to third parties of the owner's rights and make it difficult for an infringer to claim ‘innocent’ infringement.

Even if a business has not registered a mark, it may have established a reputation and built up goodwill under that mark in relation to certain goods and services. In such circumstances the business may be able to stop others from using the sign by bringing a common law action for passing off. Passing off actions are notoriously time consuming and expensive however and require evidence of sufficient reputation and goodwill in the goods or services.

Patents

Patents protect new inventions: the inventive core of a new product or process. You may obtain a patent for numerous classes of inventions including chemical compounds, mechanical devices and methods for doing things (for example a new process for dyeing fabric). A patent is an extremely valuable right as it grants a monopoly; the patent holder has 20 years' exclusive use of that invention. He can stop third parties from using the invention during that period.

Third parties may not operate within the scope of the patent even if they have developed their own technology independently of the patent owner and were completely unaware of the patent's existence or of the underlying product or process.

Under the UK Patents Act 1977, an invention must be:

  • novel (i.e. not available to the public anywhere in the world)
  • inventive, (i.e. not technically or practically obvious to those in the relevant trade of the invention)
  • capable of being industrially applied
  • not excluded from the patent regime (for example software, as such, and business methods)

Renewal fees must be paid in order to maintain a patent in force. These typically increase towards the end of the life of a patent.

Copyright

Copyright arises automatically in that no publication or registration is required to secure it. Copyright does not protect ideas, rather it protects the form of expression of ideas. It applies to a diverse range of artistic, literary, dramatic and musical works and protects a variety of material from paintings to software. If the work is original (i.e. the author has invested effort to create it), by a qualifying person or first publication, then it will automatically gain copyright protection as soon as it is recorded (whether on paper or in electronic form).

Copyright lasts for a defined period, usually the life of the author plus 70 years from the end of the year of his death. This varies, however, for example copyright in computer-generated works lasts for 50 years from the end of the year in which the work was created.

Copyright law prevents copying but does not provide a monopoly. It does not matter if a similar or identical work already exists provided it has not been copied.

In the UK, if a person does, or authorises another to do, a ‘restricted act’ without the consent or licence of the copyright owner, he is committing a primary infringement of copyright. Restricted acts include copying the work, issuing copies of it to the public, performing, showing or playing the work in public, broadcasting a copyright work, including it in a cable programme service or adapting a copyright work. A person may also commit a secondary infringement of copyright if he deals with an article which he knows or has reason to believe it is an infringing copy.

Under UK legislation ownership of copyright generally vests in the author even where the work has been commissioned. To ensure copyright vests in the commissioner, a commissioning agreement should be put in place. This should clearly provide that any copyright arising from the commissioned work is assigned to the commissioner, and should also include a waiver of the author's moral rights. Moral rights are a sub-set of rights existing alongside copyright. An exception to this general rule is for work provided by employees in the course of their employment. Here, the general rule is that the employer will automatically become the owner of the work.

Companies can take a number of practical steps to identify and safeguard copyright works, including keeping a signed and dated record of all protected materials to evidence subsistence of copyright and ownership and applying a copyright notice to the work (© accompanied by the year of publication and the name of the copyright owner). Even though a © copyright notice is not necessary in the UK, it gives notice to third parties that copyright exists in the work and the owner may take action if the work is copied.

Confidential information

In the UK, a common law right exists to protect confidential information which prevents people from disclosing information divulged to them in confidence. To fall within the scope of protection afforded by this right, information must be confidential in nature (generally this will mean not in the public domain) and disclosed in circumstances importing an obligation of confidence. Confidential information which fulfils these two requirements may be protected under the right.

Protection lasts for as long as the information remains confidential, that is, for as long as the information does not enter the public domain.

Businesses can take certain measures to keep their information confidential, including clearly marking information as "confidential", restricting access to information and entering into confidentiality agreements with parties to whom such information is disclosed. Such agreements should expressly state that the material is confidential and describe when the recipient can disclose the information.

Community and UK registered design rights

Design law is a developing area of intellectual property law. Design rights in the European Community and the UK can exist in unregistered and registered form. UK and Community design law protect the appearance of designs and certain aspects of them, in particular the lines, colours, shape or ornamentation of a product. Examples of registered designs are designs for toys and clothing and for the overall appearance of cars and consumer electronic goods.

To be registrable, designs must be:

  • new (that is, not already available to the public) and
  • have individual character (that is, produce a different overall impression on the user from earlier designs and do not commonly exist in the marketplace)

Registered rights in a design will be infringed if a third party uses that design without the owner's consent. ‘Using’ includes making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or which it is applied or stocking such a product for those purposes. There is no requirement to prove copying, unlike with copyright.

To register a design, the owner must apply to the relevant government registry. Once registered, the design or elements of it can be protected for up to 25 years. During this time third parties cannot use it. Renewal fees are payable every five years to maintain registered designs.

In relation to ownership, Community law and UK design law differ slightly. Where a design is commissioned, ownership of the Community registered design rights will vest in the designer (unless an employee) but ownership of UK registered design rights will belong to the commissioner.

UK unregistered design rights

The principles of UK unregistered design right are similar to those of copyright. Design right arises automatically when an original design is created. To be protected under UK unregistered design right, a design must:

  • comprise an aspect of shape or configuration of the whole or part of an article
  • be original and not commonplace
  • be recorded in a design document or an article made to the design
  • be created by a qualifying person and
  • not be excluded by legislation.

The right lasts for the shorter of 15 years from the date of creation of the design and 10 years from first marketing of the product incorporating the design. Owners of design right can exclusively reproduce their designs and stop others from copying them without permission. If a design is commissioned, the commissioner will be the first owner, so ownership should always be expressly dealt with in a commissioning agreement.

To maintain this right, it is advisable for designers to sign and date their design documents and for manufacturers to mark goods and accompanying packaging and documentation with the words "Design Right", the name of the design right owner and the year of first marketing.

IP strategy

Businesses should take the time to identify the IPRs they use and make sure they are adequately protected. An "IP audit" is a good way of doing this. Through such an audit, a team of specialist lawyers audits the processes, inputs and outputs and assets of a business and helps advise which IPRs exist and how best to protect them.

IPRs are a valuable asset existing in all businesses. A little time spent identifying them could yield great dividends for the value of your company.

Scott Singer is a partner and joint head of Denton Wilde Sapte's Intellectual Property group.

Ruby Khnom is a specialist Intellectual Property lawyer within Denton Wilde Sapte's Intellectual Property Group.