Overviews
Click on the following links to learn about each of these areas:
Patents - A general overview
- Patents protect inventions. Inventions can be products, materials, processes and new uses of known products.
- Most inventions may be patented, including mechanical devices, chemicals, pharmaceuticals, electronic devices, at least some software, new methods of manufacture, and chemical processes.
- Patents can provide a powerful commercial tool. If a patent is correctly drafted it can protect the underlying 'idea' behind an invention. This can make it very difficult for others to produce a competing product which does not infringe the patent.
- Patents may be used to prevent others from commercialising the protected invention, whether by sale, manufacture, import or use.
The Patent Process
- In order to be patentable an invention must be 'new', that is to say, it must not be known to the public at the date of filing the patent application. The invention must also be more than an obvious variant of what is already known.
- The patent process typically involves filing a detailed description of the invention at a patent office such as the United Kingdom Intellectual Property Office and then steering the application through the search and examination procedures. This can be a lengthy process, lasting up to five years or even longer. However, details of the invention may be disclosed and the invention commercialised once the application has been filed, but not before. Disclosure of an invention before the application is filed may in some countries render the resulting patent invalid.
- Patents may be attacked and 'revoked' by third parties at a later date if they turn out not to be new or inventive at the date of filing the application.
- Patents remain in force in most countries for twenty years from filing, subject to the payment of renewal fees, typically every twelve months.
- Patents and patent applications can be licensed or transferred between different parties. Mortgages can be raised on patents. Patents are also valuable assets when seeking third party investment.
Patent Searching
- Patent databases can provide a valuable tool for inventors. Most patent applications are published eighteen months after filing. Patent searching can provide much information on the activities of competitors.
- Patent searching is also an important tool when determining if a product is free for use, i.e. can be used without infringing the patent rights of a third party. Such clearance searches are an important step in the product development cycle before substantial investment is made in commercialising the product.
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Trade Marks - A general overview
- A brand name, identifier or logo can be one of the most valuable marketing tools possessed by a company. The reputation associated with a brand sells the goods or services associated with the brand. It can also add significant value to such goods and services.
- The value of the reputation associated with a brand name can be eroded if use of the brand name by third parties is not carefully controlled. A trade mark registration protects this reputation, enabling the proprietor to prevent use of the registered mark or confusingly similar mark by a third party.
Trade mark searching
- Before beginning use of a mark one should check the mark can be used without infringing the registered rights of a third party. This can be done by means of a trade mark search at the Trade Marks Registry of the country concerned. The results of such a search may not be straightforward and advice should be sought on interpretation before beginning use.
The registration process
- If a trade mark search indicates a mark is free for use one should consider registering it before use begins so preventing use and/or registration by third parties. One can also file a trade mark application after use of a mark has begun. Many countries have a first to file system and so filings should be made sooner rather than later to prevent registration by a third party.
- Most, but not all, trade marks which distinguish the goods or services of one enterprise from another can be protected by registration. Registrable marks include words, phrases, pictures, designs, two and three dimensional shapes, colours or even sounds or smells.
- A number of factors need to be taken into consideration before choosing a new mark and investing in its promotion. Advice from a trade mark attorney should be sought at an early stage of brand development.
- The process of trade mark registration involves lodging details of mark and the associated goods and services at the relevant Trade Mark office and steering the application through any search and examination procedures which may be involved. If all goes well a mark can be registered in about a year, and even less in some countries.
- Trade Mark registrations may be attacked and 'revoked' if they have been wrongly registered, for example because of conflict with earlier rights.
- Trade Mark registrations can remain in force indefinitely provided the mark does not fall out of use and subject to the payment of renewal fees, typically every ten years.
- Trade Mark registrations can be assigned or licensed between parties if required. A trade mark registration for a mark with a strong reputation can be a valuable business asset, particularly when seeking third party investment.
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Designs - a general overview
Rights in industrial and ornamental designs can be obtained in two ways in the UK and in Europe:
- Registered designs protect the appearance of products, whether the whole of the product or part of it. A design is registered in respect of a particular product but the function or structure of the product is not material, only its impact on the eye, whether pleasing or not.
- Registered designs may be obtained throughout the world and, indeed, a single European Community registered design may be obtained. Unregistered design rights apply in very few countries, although there is a very short term right applying across the entire European Community.
- Unregistered design rights are automatic rights, rather like copyright. They apply to any industrial designs and provide automatic protection for a limited period (in the UK normally 10 years from the years of first marketing the product, although the owner has to be prepared to grant licences during the second five years of this period).
- Both Registered designs and unregistered design rights may be used to prevent others from commercialising the protected design, whether by sale, manufacture, importation or use.
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