Your questions. Our answers.
We want to help you understand the importance of IP and how you can use IP as a tool to protect yourself and advance your business.
Below are answers to some of the questions we are regularly asked. We hope you will find these useful and provide you with contact points for any further information should you need it.
Please note that the questions and answers do not provide legal advice. IP is complex and the questions below will not fit all situations. Please contact us to discuss a specific query in more detail. We look forward to hearing from you.
What services will you find at Barker Brettell?
Do you want to register your IP?
Registering your IP rights is the best way to ensure that your brand, ideas and designs are protected.
Barker Brettell, can help you to assess what type of IP registration will help you to reach your goals. You will find dedicated teams who can assist you in registering patents, trade marks and designs, and also advise you on copyright matters.
Do you need to value your IP?
Barker Brettell does know its limits and we are not valuation experts. However, we do know of firms that are expert at valuation and we can put you in touch with those teams.
Do you need to make an assessment of a right or portfolio ahead of a transaction?
You may wish to assess the strength of your IP portfolio as an ongoing business concern. Knowing what you have and how well it is protected is particularly important in advance of new product launches, when taking strategic decisions and when considering how best to monetise your IP.
Before you enter into a deal, such as a license, purchase or other IP transaction, it is also sensible to understand the strength of the rights that the other side have.
An IP Audit is a systematic review of all IP assets (registered and unregistered) created, owned, used and/or licensed by a business.
There are two types of IP Audit:
- Tailored to company goals or changes
Barker Brettell is well-positioned to assist you in determining how to make your IP work for you, and ensuring that your rights are protected from all angles.
- Tailored to event
Barker Brettell has a great deal of experience in performing due diligence to understand rights and knows the questions that need to be answered when looking through portfolios. For example, you should be ensuring that the chain of title is correct; that the right is in force; that the coverage of the right is as your business needs; etc. You can turn to a team to help you work through this understanding.
Email us for further information or to arrange an audit.
Have you come across some third party rights that are causing a problem? That you think should not have been granted?
Others peoples’ rights are the other side of the coin to your own IP rights. You may come across other peoples’ rights that interfere with your business’s day to day activities. These rights may be valid and may indeed prevent your activities and you can rely on us to help you understand this. However, many rights that are granted are not valid. A High Court judge has recently commented that he felt 70% of patents that are granted are invalid. We can help you make this assessment and you may be able challenge the right, ignore it or design around it. We can help you understand.
Once a patent is granted, it can typically be challenged. Oppositions at the European patent office are a very effective, and relatively cheap, way to challenge a competitors patents and our patent team regularly attend oppositions in Europe both to defend and attack patents.
The UK IPO has an Opinion Service that can give very cost effective views as to the validity of a patent. Recently the powers of the UK IPO were changed so that it can in fact revoke patents if its opinion service determines that a patent is not valid. You will be using a team that has good experience of the UK IPO and is well used to attending hearings and communicating with the hearing officers and Examiners.
Do you have someone that is infringing your rights? Copying your idea or product?
Hopefully this will never happen to your business, but if it does you can turn to a team that can help you understand your position, what can be done and the costs involved. Our team is expert in understanding the scope of your rights and can advise as to whether those rights are being infringed.
You may be able to come to a resolution of the problem quickly and easily. Hopefully you will be able to. You may be able to send initial correspondence highlighting your position to the other side. Most businesses do not set out to infringe others rights and simple correspondence may be enough to put an end to matters.
You will be using a team that is familiar with customs procedures and can work with Customs to help you – email us
You will be using a team that has links with the best IP litigators and barristers in the country with whom we can put you in touch in order to make use of the courts should your business need to.
Do you need help in the short term or medium term to get on top of things?
Your business may be short on capacity and need to get on top of things in the short or medium term. Here at Baker Brettell, we are used to sending members of our team on secondments. Such secondments have ranged from small companies that are trying to understand the IP they have through to multinational companies that need extra capacity to get through the work they have. You are coming to a team that has probably helped out in a situation similar to yours and we will be pleased to help. Click here for further information on secondments.
Do you need to understand what IP you have?
You may be new to IP and not understand what IP you may have already and what IP you could apply to register. You may be an experienced IP user and want a ‘spring clean’ to ensure that all is in order. Either way, you may benefit from and IP audit in which one of our teams work with you to check things such as the following:
- that you do own copyright and design right in your works. Do you own the rights in your web-site? In your marketing brochures?
- That you have processes in place to make sure you can enforce copyright and design right should you need. Can you prove when you made a drawing? Wrote a piece of computer code?
- That you have identified and considered protecting trade marks that you have. Is that slogan that you are using registerable? Is the shape of your product well know enough to be registered as a trade mark?
- That you have considered the wording of your contracts of employment have been considered.
- That you have mechanisms in place to make sure you are not overlooking ideas that should at least be considered for patent protection.
Email us for further information.
Do you need to protect your idea, your design or your trade mark?
You are in the right place! The bread and butter of Barker Brettell’s business is in protecting IP for our clients. You will be working with a team passionate about helping you to secure protection for your intangible assets and fee earners are trained to give you pragmatic and tailored advice specific to your needs.
You will be using a team that regularly protects ideas, brands and designs both in the UK and in overseas territories.
You will be using a team that uses a dedicated records system to ensure that your IP is well looked after and no deadlines missed. Deadlines are key to looking after your IP rights. You will find a team that is well used to this and the systems in place to make sure your IP is safe.
- Do you want to register your IP?
How can I capitalise on my IP?
This depends on your overall business plan but we will work with you to come up with the best strategy. A few of the more common options are below
Can I sell my IP?
Your business’s IP is an asset, just like your house or your car and therefore can be sold. The price you can secure depends on the value of your IP to the potential buyer. This is up to your business to negotiate. Once a price has been agreed, we can help you with the transfer process. Needless to say, in most cases, once the deal is complete you have no on-going rights in the IP. This is a good way of having a single cash injection to your business.
Can I let someone use my IP but keep the rights myself?
If your business wants to retain ownership and control of the IP then looking to license the IP could be more attractive to you. There are various options available subject to the on-going involvement and control your business wants to retain in the IP. The terms of the license are there to be negotiated between you and your potential licensee. A licence can be country specific and for a set duration, and your business can retain the right to quality control the products/service on offer. The licence can be drafted to fit with your business needs. A licence allows you to command a regular income in licensing fees or royalties.
I’m happy to share my IP – how about franchising?
This is of course a specific type of license which allows the franchisee to have access to your proprietary knowledge or to sell your products/services directly under your brand name. As with a licence, a franchise agreement would enable you to command a regular income in licensing fees or royalties.
Can I save money on my IP?
You may also want to look at government financial incentives for innovation, in particular R&D tax credits and the Patent Box. As you probably know, the Patent Box means that your business may be able to pay a lower rate of corporation tax on profits derived from patented inventions and we all want lower tax rates!
How do I stop someone else misusing my IP?
In reality, no one wants to spend money litigating but there is a time when a legal fight really is the only option to protect your business and ultimately help you secure a sphere of protection around your business, which is turn, can make it more valuable. We will help you decide if it is the right time to fight and if so, which forum is best for you.
Why should I protect my IP?
Why should I protect my IP?
Simple… because research shows that businesses which protect their IP are more likely to succeed in the short term and grow in the long term. Having an IP strategy should be an integral part of your business plan no matter what size your business is. If your business does not have an IP strategy in place, we can undertake an audit of your IP and make practical suggestions which can be readily integrated in to your business to ensure that you do have an IP strategy which meets your immediate business needs and will grow with your business.
Patents, trade mark and registered designs are all intangible assets of your business and can be beneficial in marketing and obtaining investment in your products as well as protecting the individual aspects of your business which make it unique. For examples see ‘how can I capitalise on my IP’ FAQ above.
It is part of your business insurance policy
You would not consider driving your car without car insurance or owning a house with house insurance, so why would you run a business without safeguarding the IP assets of that business? Unless your business is actively looking to commercialise its IP, the reality is that your day to day business activities will continue regardless of whether you have the correct registered IP protection in place. On that dreaded day, when you drive into the car in front, the situation is somewhat eased by knowing that the insurance policy is in place. It is exactly the same for businesses. On the day when there is an infringement of your IP rights, you turn to your registered IP protection to form the basis of your attack, or equally, your defence, of a conflict with a third party. An upfront investment in formalising your business’s IP rights can save a lot of time and money in the medium and long term.
Although intangible, IP assets are an asset of your business and as such, have value. Therefore, ensuring that your business in fact owns all of the rights that you think it does and filing for registered rights can increase the value of your business. If you are seeking external investment then those investors will often want to see that your IP is protected before they are willing to give you their money. There can also be tax advantages to having some IP rights.
Why should I use Barker Brettell?
Again, simple… we understand that no two businesses are the same and we will tailor our services to meet your individual needs.
You will be provided with the most appropriate support and advice to help you at every step to ensure your rights are protected as they should be. We understand that costs are often a driving consideration and we’ll provide clear guidance at every stage to help you work within your budget.
Online and social media issues
The Internet and social media has no doubt revolutionised they way your business communicates with your customers but it has also created a whole new range of IP considerations. Online media provides the opportunity for your trade mark or trade name to be used by third parties in a manner you may object to. In an ideal world, infringement proceedings should be issued every time you became aware of an infringing use of your trade mark on the internet. But unfortunately, we do not live in an ideal world. The cost of issuing trade mark infringement proceedings can be prohibitive especially if there are only one or two objectionable references to your mark.
We recognise the need for your business to be able to act fast and to obtain immediate results and we have a proven track record of using the VERO system on eBay, and corresponding complaint procedures on Google Adwords, Twitter and Facebook.
Click here for further information
- Why should I protect my IP?
How can I protect my IP?
Why should I protect my brand?
Trade marks are a valuable business asset. Your trade marks and brands are what differentiate your business from your competitors. Upon seeing your trade marks, consumers link them to your business. Hence, your trade mark is synonymous with your business’s reputation, goodwill and image. If your business has spent a large amount of time and money in advertising and promoting its brand, you should file a trade mark application.
A registered trade mark provides your business with the right to use that mark for the goods and services for which it is registered. It also has the following benefits:
- Registering a trade mark puts third parties on notice of your business’s rights
- Most countries operate a first to file system and registration of the trade mark acts as proof of those rights.
- Although rights in a trade mark can be accrued through use of the mark, such use must be significant and it is much more difficult to enforce the same.
- Registering a trade mark may deter third parties from using your mark or something similar.
- A registered trade mark is an asset which can be sold or licensed and which can be listed in the balance sheet as an asset.
A trade mark is valid for 10 years following registration and is renewable for 10 year periods thereafter for as long as the mark is of interest to your business. The oldest registered trade mark dates back to 1865, it is the Bass triangle which is still prominently used today.
When should I apply for a trade mark?
As soon as you know which trade mark your business wants to use. A trade mark does not already have to be in use to apply for the mark, although in certain jurisdictions, you may need to prove use of the mark before the same can be registered. In fact it is very important to have the interest in the mark registered as soon as possible to prevent a third party from beating you to it.
How do I get one?
To obtain a trade mark you need to file a trade mark application at the national trade mark Office of the country in which you want to obtain the trade mark – in the UK this is the UK Intellectual Property Office (UKIPO). The application will be examined to check the mark is registrable, as in most countries it is not possible to register a mark which is descriptive or laudatory. Some trade mark Offices will also conduct searches for earlier identical/similar marks.
Why should I use a Trade Mark Attorney when I can file an application myself?
Trade Mark applications must be filed to cover the exact goods and/or services the trade mark will be used for. This may seem simple, however it is very important that you obtain advice to ensure you are including all of the correct goods and/or services your business provides. A trade mark registration is a legal document and the accuracy of the content dictates how useful it is to your business
Why should I use a registered trade mark attorney when I can do it myself?
Our trade mark attorneys have many years’ experience in preparing and filing trade mark applications including dealing with national Offices around the world. We will use our experience to provide your business with the broadest trade mark protection we can, in order to create a sphere of protection around your trade mark which would be difficult for a third party to successfully break.
Click here for further information.
How can I protect my invention?
If your business has an invention, you need a patent which protects the idea behind the invention rather than the product or process. This is a right which protects how an invention works. You can use a patent to stop competitors from making, selling, using or importing something which works in the same way. Or you can use a patent to generate income if you are happy to grant licences to allow others to use your idea. A patent can last for up to twenty years, and can provide your business with a real commercial advantage over competing businesses.
To obtain a patent you need to file a patent application at a national Patent Office. Your patent application needs to include a full description of how your invention works, drawings showing the invention, and a set of claims which define the scope of protection your business wants.
The Patent Office will then examine the application, including carrying out a search to look for similar inventions and if it is satisfied that your invention is new and inventive it will grant your business a patent.
Why should I use a patent attorney if I can file myself?
Patent applications are legal documents, and how well they are written affects how useful the resulting patents will be for you. It is crucial for the patent to be worded correctly. This is why we strongly recommend using a professional firm and of course, we would say, use us!
There are many reasons for filing patent applications. You may wish to have a defensive tool to protect your market and this is the traditional reason for having a patent. The UK now has a patent box which can give your business significant corporation tax savings and the savings can in some cases be greater than the costs of obtaining your patent. Some people think a patent is worth it just for the marketing kudos. Patents are intangible assets of your company and can increase its value as well as be bought and sold. Whatever the reason, we can help you understand patents and get the wording right for your need.
A patent can only be obtained for an invention which is new. This means that telling even one other person about your invention could jeopardise your chances of obtaining a patent. It is therefore extremely important to keep your invention completely secret until you have filed a patent application. You can use non-disclosure or other agreements to talk to others whilst still keeping your idea secret and we can help you understand how to discuss your technology.
How do I file a patent application?
Our patent attorneys are skilled at meeting inventors to understand your invention and then to work with you to draft the patent application which is a mixture of a legal and a technical document. Once you are happy with the application we can file it at an appropriate patent office and then use our excellent records system to make sure that the application is well looked after and no deadlines are missed. You will also need to think about the territories in which your business needs protection and we can help you understand where you might need to file and also understand the life-time costs and implications of those overseas filings.
You can make use of our free initial meeting to help better understand whether your idea can be protected.
Click here for further information
How can I protect how my product looks?
If your business has a distinctive product in terms of the appearance of the product itself or its packaging, you need to think about protecting that design. A registered design protects the appearance of the whole or of a part of a product or packaging for up to twenty-five years from an application to register the design being filed, provided renewal fees are paid every five years. Your business MAY have some automatic rights just because you have created the design and we can help you understand these to ensure that these are enforceable.
Designs are intangible assets of your business and can be beneficial in marketing and obtaining investment in your products as well as protecting the innovative designs of your business. There are registered designs that you need to apply for and design rights, which are similar to copyright and may be created when you come up with a design.
Why obtain registered design protection?
A registered design provides your business with a monopoly in a design, which can be enforced to prevent others from making, selling, using, importing or exporting a product or packaging that produces the same overall impression to the design in question.
Having a registered design also makes it easier to prove your business has rights in the design as you will have an official record of when the application for the registration of the design was filed and when the design was registered.
Obtaining a registered design will give rise to a public record of the existence of your design and your rights in that design which can deter others from working on similar ideas.
What is registrable?
A registered design protects features such as the lines, contours, colours, shape, texture or materials of the product or its ornamentation. Protection can be provided for the design itself irrespective of the product to which it is applied.
The appearance of a product is protectable provided that it is new and produces a different overall impression to existing products.
Registered design protection does not protect the functionality or solely functional features of the product which instead can be protected by a patent.
Registered design protection further does not protect features which allow the product to be mechanically connected to, or placed in, around or against another product so that either product may perform its function.
When should I register the design?
It is preferable to file a registered design application whilst your product is confidential. However, there is a grace period of twelve months from the first disclosure of the design by the designer during which an application for a registered design can be validly filed in the European Union. However, you should be aware that relying on this grace period may well prevent your business protecting its design in many countries which require a design not to have been published before applying in that country.
How do I register the design?
To obtain a UK or EU registered design you will need appropriate drawings or photographs, which we can generate for you, showing all aspects of the finalised product, packaging, etc., which must be filed at the UK or EU Designs Registry. The application undergoes a formal examination but no examination is carried out by the Registry to ensure that the design is new. The application then proceeds to registration and your business will be provided with a registration certificate within a few weeks of filing. It can be possible to include more than one design in a single application and so design registration provides a quick and cost effective route to obtain a registered right.
To obtain protection for a design outside of the UK / EU, it is necessary to apply for a registered design in each country/region of interest. It is generally possible to claim the filing date of the first UK application filed provided that each other applications filed within six months of the original application.
Click here for further information.
What about my company name and domain name?
Incorporating the company before Companies House and securing the .com and .co.uk domains are amongst the first tasks to be done when setting up a new company. Do remember that trade marks, company names and domain names are three separate legal rights. Owning one doesn’t automatically mean you can have the others rights.
Some businesses also want to register the company name or domain name as a registered trade mark. This is possible and the benefits this would bring will depend on the trading style of the business and how the company and domain names are to be used. This is the type of advice that we would give your business should you request us to undertake an IP audit for you.
Companies House are also relatively relaxed in the acceptance of company names which means that you need to be vigilant and monitor what other similarly named companies are being incorporated. You may wish to use our company name watching service which is designed to flag the incorporation of a name which is too close. If action is needed, we can guide your business through the process of trying to secure a name change from the Register before the Company Name Tribunal which is a specific section of the UK Intellectual Property Office.
Likewise, it is advisable to operate a domain name watching service particularly with the ever increasing number of generic top-level domains (gTLDs) available to ensure that your virtual space is not compromised. Once again, this is a service we are able to provide.
Click here for further information.
- Why should I protect my brand?