What does the Intellectual Property Act 2014 mean for you?

The importance of IP registrationThe Intellectual Property Act 2014 (the Act) will start to come into force on 1st October 2014. The Act seeks to modernise and simplify Intellectual Property law and introduces a number of changes, particularly to UK design law and practice largely as a result of the 2011 Hargreaves Independent Review of IP & Growth.

We have outlined some of the key facts below:

Intentional copying is now a criminal offence

One of the main changes relating to design law is that intentional copying of a UK or European Community registered design will now be a criminal offence. The “infringer” must be aware or have reasonable grounds to suppose that the design in question is registered and so there is an increased importance to indicate the existence of IP rights on products. The maximum penalty for infringement will be 10 years imprisonment or a fine.

The designer owns the rights for commissioned works unless by prior written agreement

Another important change which seeks to bring UK design law into harmony with European Community design law relates to commissioned designs and ownership. The change ensures that, unless there is an agreement to the contrary in place, the actual designer will be the owner of a design created under commission rather than the commissioner. It is therefore important to make sure that written agreements are in place before a design is commissioned to establish clear ownership.

New Design Opinion Service from IPO

Several further design law changes include a new Design Opinion Service operated by the Intellectual Property Office and the implementation of defences to infringement of a UK unregistered design.

Make sure people know your rights exist

In order to recover damages in patent and design infringements it is important that enough information is provided so that an infringing party cannot claim to be unaware that a patent or registered exists. To ensure that an infringing party is aware of existing rights, the patent or registration numbers and the country where the right exists must also be indicated.

In this regard, the Act now stipulates that it is sufficient to provide a web address on the product allowing the relevant information to be accessed online.

Act paves the way for implementation of Unitary Patent Court Agreement

So far as patent law is concerned the Act will enable the UK to implement to Unitary Patent Court Agreement (UPCA) for the introduction of a unitary patent covering all member states of the European Union. The implementation of a unitary patent in due course is likely to have a significant positive impact on the costs and procedural efficiency of obtaining protection throughout the EU.

Further patent law changes include expansion of the IPO Patent Opinion Service to consider a range of validity issues not solely limited to novelty and inventiveness and the power for the Comptroller of patents to revoke a patent on his own initiative if an Opinion finds a patent to lack novelty or inventiveness.

For more information concerning the IP act 2014 and how this could have an impact on your business please contact us.

 

Author: Caroline Ward

Caroline Ward

 

 

 

New win in the fight against scam IP renewal notifications

New win in fight against scam IP renewalsIf you have filed a trade mark application in the UK or Europe, the chances are you will have received a letter from one or more companies with ‘Renewal notices’ for your registration.

The letters look very official and are extremely misleading.   The fees quoted for carrying out the renewal are extortionate and there is no guarantee that the actual official fees will be paid.  We know of several of our clients who have been misled into making excessive payments in the belief that they were paying the UK Intellectual Property Office for the renewal of their IP rights.

In May 2013 the UK Intellectual Property Office made a claim for passing off to the Intellectual Property Enterprise Court against the two worst offenders – ‘Patent and Trademark Office’ and ‘Patent and Trade Mark Organisation’.

These organisations have now admitted to and settled the UK IPO claims and agreed to be bound by an Order of the Intellectual Property Enterprise Court prohibiting them from further acts of passing off.

If you receive a letter of this kind are are not sure whether it is legitimate please contact us or the UK IPO to confirm if it is legitimate.

For more information about trade mark registration within the UK and Europe please contact Sanderson & Co.

Links

https://www.gov.uk/government/news/intellectual-property-office-succeeds-in-passing-off-claim

http://www.justice.gov.uk/courts/rcj-rolls-building/intellectual-property-enterprise-court

Intellectual Property Enterprise Court – Wikipedia

Resolving IP disputes through the courts – UK IPO

 

Setting your IP GOAL – Leveraging your IP Rights

The importance of developing an IP strategyYour Intellectual Property (IP) rights can provide a number of significant benefits to your company.

The most obvious benefit is that they can prevent your competitors from copying your products or brands, but they can also be used to generate revenue through licensing or selling your IP rights to others.

It is important to have a  complete strategy for your business when it comes to IP.  Your comprehensive IP strategy should consider four main areas:

In our previous three posts we have discussed Generating IP, Obtaining IP rights and Avoiding IP rights; in this final post in the series we discuss ways in which Sanderson & Co. can help you with Leveraging your IP rights.

Passive Approach

What are your competitors doing?

If you are aware of your competitor’s products and brands, then you can be in a better position to assert your rights against those products and brands. Sanderson & Co. can monitor the products and brands of your competitors and can help you to identify potential infringements. We can also provide an assessment of the strength of your IP rights and advise on the likelihood of there being an infringement.

Collaborative Approach

Do you want to compromise?

Sometimes the most appropriate approach is to grant a licence or assignment of your IP rights to a potential infringer.  Sanderson & Co. can assist with negotiating licences or assignments of IP rights, and we can be on hand to review licence and assignment agreements to ensure that they are suitable for your needs from an IP perspective.  We can also work with solicitors on the wider commercial aspects of a deal.

Pro-active Approach

Is further action needed?

Ultimately it may be necessary to assert your IP rights against others. However, this must be done in the right way so as to be effective and so as to avoid you being accused of making groundless threats.

At Sanderson & Co. we can help you to assert your rights in the right way, for example by sending appropriately worded warning letters. We can also assist with providing arguments to present during court proceedings for infringement actions.

The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.

If you would like any advice regarding Leveraging IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.

Setting your IP GOAL – Avoiding IP rights of others

The importance of developing an IP strategyIntellectual Property (IP) rights can be a powerful tool for your business, but also for your competitors’ businesses!

Your business needs to be aware of what other people are doing so that you can avoid infringing their IP rights, find ways to work with them or oppose their rights when necessary.

It is important to have a  complete strategy for your business when it comes to IP.  At Sanderson &Co. we believe that a comprehensive IP strategy should consider four main areas:

In this four-part series of blogs we will explain how we can help you to achieve your IP GOAL.

In our previous post we discussed Obtaining IP rights.  This week we discuss ways in which Sanderson & Co. can help you with Avoiding the IP rights of others.

Passive Approach

Do you know what IP rights your competitors have?

If you are aware of your competitors’ IP rights, then you can be in a better position to avoid infringing those rights. Intellectual Property searches for existing IP rights are a good starting point to enable you to identify the IP rights of others. These searches can be tailored to a particular product or brand and to particular competitors.

As well as carrying out IP searches, Sanderson & Co. can also monitor the various IP offices’ registers for IP rights being granted to your competitors.

We can help you to identify IP rights that may affect your business, and help you to avoid those rights by suggesting ways to “work around” them.

Collaborative Approach

Can you reach a compromise? Would licensing be a solution?

We understand that sometimes it is not possible or desirable to work around the IP rights of others. In these cases, you may be able to seek a licence or assignment of the IP rights in question.

Sanderson & Co. can co-ordinate the negotiation of licences or assignments of IP rights, and we can be on hand to review licence and assignment agreements to ensure that they are suitable for your needs from an IP perspective.

Pro-active Approach

Is further action needed?

IP rights are not infallible and it may be that the IP rights granted to your competitors should not have been granted to them. At Sanderson & Co. we can help you to challenge the IP rights of others either at the IP office in question or during court proceedings.

For example, European patents can be opposed during the nine months following grant of the patent. Trade Mark applications can also be opposed after registration. Sanderson & Co. can file these oppositions so that spurious IP rights can be cancelled. We can also assist with providing arguments to present before or during court proceedings.

The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.

If you would like any advice regarding Generating IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.

In our next piece we will be discussing Leveraging your IP rights.

Setting your IP GOAL – Obtaining IP rights for your company

The importance of developing an IP strategyIntellectual Property (IP) rights can provide a number of significant benefits to your company.  So how can you make sure that you secure strong IP protection for your business?

It is important to have a complete strategy for your business when it comes to IP.  At  Sanderson & Co. we believe that a comprehensive IP strategy should consider four main areas:

In this four-part series of blogs we will explain how we can help you to achieve your IP GOAL.

In our previous post we discussed Generating IP.  This week we discuss ways in which Sanderson & Co. can help you with Obtaining IP rights.

Geography

Where should I apply for protection?

Registered IP rights, such as Patents, Trade Marks and Designs, are generally only granted for specific countries or regions. For example, a UK patent will only be enforceable in the UK. The costs and requirements for obtaining IP rights in different countries or regions can vary dramatically, but Sanderson & Co. can discuss with you possible filing strategies for obtaining registered IP rights based on your budget, your market and your competitors activities.

Drafting

What should I try to protect?

Registered IP applications can be complicated documents and it is important to get these documents right from the outset.  Sanderson & Co. provide a complete drafting service including providing drawings.  We could also provide you with templates to help reduce your costs for drafting applications. In either case, you will be involved in the drafting process throughout, ensuring that your application is complete and accurate.

Prosecution

I’ve filed an application… What happens next?

Prosecution is the process from filing an application for registered IP rights through to the granting of those rights. This can be a complex process and it is extremely common for objections to be made to the application by the IP Office involved. Sanderson & Co. can help to guide you through this process. Together we can decide on a strategy for responding to any objections raised that still provides you with useful protection for your products or brands. Sanderson & Co. can also be responsible for monitoring any letters sent and deadlines set by the IP Office in question, removing the burden of your doing this yourself.

Purchasing IP Rights

What are we getting?

Another way of obtaining IP rights is to purchase those rights from others. However, IP rights are not always as good as they appear to be and so it is important to assess any IP rights before agreeing to purchase them.  Sanderson & Co. can carry out due diligence assessments of IP rights including assessing the validity and scope of protection provided by the IP rights in question so that you can be more certain that you are getting a good deal.

The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.

If you would like any advice regarding Generating IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.

In our next piece we will be discussing Avoiding the IP rights of others.

Setting your IP GOAL – How to generate IP rights for your company

The importance of developing an IP strategyDeveloping and maintaining a strategic approach to your business’s IP rights could be the difference between your company thriving or being overtaken by the competition.

Intellectual Property (IP) rights can provide a number of significant benefits to your company.

  1. IP rights can provide protection against a competitor using your products or brands
  2. Registered IP rights can be an asset.  They can help convince financial institutions to invest in a business, enabling more money to be raised for development.
  3. IP rights can be used to generate revenue through licensing or selling your IP rights to others.
  4. Your IP rights could potentially also be used as a bargaining tool if you are accused of infringing another company’s IP rights.
  5. Registered IP can enhance the “cutting-edge” reputation of your business.
  6. You may be able to benefit from a reduced rate of corporation tax on profits generated by products that relate to your patents using the UK Patent Box scheme.

On the other hand, the IP rights of others can cause your company problems if they are not identified and assessed early enough, or if those IP rights are not handled in the right way.

It is therefore important to have a complete strategy for your business when it comes to IP.  At  Sanderson & Co. we believe that a comprehensive IP strategy should consider four main areas:

We can help you develop an IP strategy specific to your business that covers all four of these areas.

In this four-part series of blogs we will explain how we can help you to achieve your IP GOAL.

Generating IP for your business.

1. Innovation Awareness

Do your employees know what IP is and do you encourage your employees to generate IP?

With a basic knowledge of IP and with suitable incentives, employees may be more likely to identify when they have created something that could be worth protecting.  To help your employees to identify when they may have generated useful IP,  Sanderson & Co can run seminars that are tailored specifically to the aims of your company and that set-out the basics of IP.  We can also discuss with you ways to encourage your employees to create IP and tell you about the IP that they have created.

This IP could then be used to protect your products or brand or to generate income through licences and assignments.

2. Innovation Capture

Do you know what IP has been generated by your employees?

Your employees may be thinking of new ideas all the time but those ideas may be overlooked if they are only mentioned to you in passing.  Sanderson & Co can help you keep track of the IP that is developed by your employees by providing you with forms tailored to your business that can be used to record IP. These forms may sound simple but collecting the right information is not always straightforward. These forms are also a useful tool which can be used by you or us when assessing how best to utilise any IP.

3. Innovation Assessment

Do you know what is worth protecting?

Some ideas are worth protecting whereas others are less useful or are not protectable, and it is not always easy to spot when useful IP has been created. IP rights can be complicated, but Sanderson & Co. can help you to identify whether a particular idea can be protected and is worth protecting.  We can also provide advice on which types of protection are suitable for a particular idea.  We can also carry out searches to help you to decide if your idea is sufficiently original.

The above are just some of the ways in which Sanderson & Co. can help you to achieve your GOAL of a comprehensive IP strategy.

If you would like any advice regarding Generating IP or any of the other topics in this series of blogs, then do not hesitate to contact Sanderson & Co. to book a free 30-minute consultation. Please remember to mention this blog when booking your consultation.

Next week we will be discussing Obtaining IP rights…

Mediation offers cost-effective resolution of IP disputes

IP Litigation can be prohibitively expensive for small companies who may have limited resources available.  Equally, for larger organisations, mediation can offer significant cost savings when compared to litigation, freeing up funds for other uses.

IP litigation vs. mediationIP disputes are often well suited to mediation.  For example, with a patent dispute involving competing products, the best solution may be to formulate a cross licensing agreement between the parties.

This is easier for a 3rd party mediator to help negotiate than for a court.

So why don’t more companies use mediation?

  • The parties involved prefer to feel that they are in a position of strength
  • Concern that by suggesting mediation you admitting a weak position and may encourage an aggressive approach by the opposition
  • Fears that mediation is a waste of time and money
  • Fears that the only solution from the mediation process will to admit they are in the wrong
  • If feelings are running strong the parties involved may struggle to avoid posturing and an aggressive approach

An experienced mediator can help to create an atmosphere where both sides of the dispute can reduce posturing and promote a sense of trust and openness, and a wish to find a resolution to the problem.

The UK IPO recently relaunched the IP Office Mediation Service with the aim of making the process of mediation more transparent and easier to access.

According to statistics from the WIPO Arbitration & Mediation Center a high proportion of mediation cases result in a settlement, and for the vast majority of disputes, mediation is far more cost-effective than arbitration or litigation.

James Sanderson says; “Mediation may not work, or be appropriate, in every case but it should not be ignored or considered as a sign of weakness.  All businesses need to consider the financial impact of litigation before going down that path.  If you consider another party to be in blatant infringement of your IP rights and want your day in court then we can help you outline your case and support you during the process.  If somebody else is claiming that you are infringing their IP a close examination of the case may mean that mediation can help you find a solution to the issue which is acceptable to both parties.”

For more information, or advice please contact Sanderson & Co.

Useful links:

UK IPO Mediation Service – http://www.ipo.gov.uk/ipenforce/ipenforce-dispute/ipenforce-mediation.htm

WIPO Arbitration & Mediation Center http://www.wipo.int/amc/en/

http://www.wipo.int/amc/en/mediation/why-mediation.html