Patents: applications, requirements, outcomes and jurisdictions
A patent gives an inventor the right, for a limited period, to prevent others from making, using or selling the invention without his or her permission. It is a particularly good way of protecting your invention and is the most draconian of IP rights.
The patent application is an agreement between an inventor and the state where the inventor is allowed a short term monopoly in return for allowing the invention to be made public. It protects a new product or a new way of doing something that is an improvement on the products or methods that existed before.
The main requirements for a patent application are that the invention must:
- be new
- not form part of the “state of the art”, which is everything that has been made available to the public before the date of applying for the patent
- involve an inventive step and be industrially applicable.
When it is granted, the patent conveys the right to absolute protection of what is described in the patent. Even if others independently come up with the same idea, they will be stopped from doing it.
A UK patent does not give rights outside of the UK. Patent rights last for up to 20 years in the UK. Some patents may, however, be eligible for a further period of protection.
Trademarks: protection, benefits, consequences of infringement
A trademark is any sign which can distinguish or identify the goods and services of one trader from those of another. Registered trademarks and the law of passing-off protect names and logos of businesses or products and the reputation and goodwill generated under them.
For the purposes of a trade mark application, a sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures. A trade mark is essentially a "badge" of trade origin. It is used as a marketing tool or ‘brand’ so that customers can recognise that product. To be registerable in the UK it must also be capable of being represented graphically, that is, in words and/or pictures.
If you register a trademark, you have legal protection in that registration establishes that it is a trademark and who owns it. The owner then has exclusive right to use the trademark and can take legal action for infringement to prevent unauthorized usage.
The benefits of registering your trademark are that it:
- gives you the exclusive right to use it for the goods and/or services for which it is registered
- enables the owner to take action anyone else who uses it – the face that you have registered your mark means that any infringer has to take you seriously
- enables Trading Standards Officers (or Police) to bring criminal charges against counterfeiters. The 1994 Trade Marks Act obliges Trading Standards Officers to take action on your behalf if your mark is registered, and the service is free.
- is an item of property - this means it can be sold, or rented out by licensing, etc.
The disadvantages of unregistered marks are that they:
- rely on the common action of 'passing off'. Passing off actions are extremely expensive, requiring large amounts of evidence that you have used the mark sufficiently to claim ownership, and then further evidence that customers were under the impression that they were buying your goods rather than the infringer's.
- have rights limited to a confined geographical area – it can be very difficult for an individual to prove that they have a trading reputation in every corner of the UK. Registration gives you protection throughout the UK, even if you do not have a trading.
If someone unlawfully uses a trademark – for example when they use a sign identical with, or similar to, a registered mark in respect of identical or similar goods or services and the public is likely to be confused by the similar mark, this is trademark infringement.
A licence is a contractual agreement between the owner of an IP right and another person, allowing the other person to use the IP in a specified way. The agreement should set out what the licensee is allowed to do and any terms and conditions applying to this use, including the amount of any payment or royalty to be paid to the licensor, the IP owner. Licences can be limited in time and territory or limited by which exclusive under the IP rights are licensed.