Whites IP Ltd



24A Carnatic Road, Liverpool L18 8BZ


0151 7 246 246 or  +44 151 7 246 246 from outside UK


mwhite@whitesip.com     www.whitesip.com


[Meetings by appointment]


 


Patents



Registered & Unregistered Designs



Trade Marks & Service Marks



Copyright

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Types of IP



Patents

Patents can be obtained for inventions in most technical areas. They can be obtained for products, methods, or uses.

In the majority of countries a patent lasts for 20 years from filing, assuming annual renewal fees are paid to maintain it. There is a tough search and examination. Thus, if a patent is granted, this generally takes several years. Protection can be broad and can therefore often be valuable, depending on the invention. It is not usually necessary to limit to dimensions, materials or examples.

A patent application is examined to see if the invention is new and non-obvious, This is assessed from the viewpoint of a notional non-inventive person in the relevant technical field. Hindsight is not permitted. (Many inventions are obvious with hindsight, but this is not the test for patentability.) The application is also examined for other requirements, e.g. to see if the invention is described clearly and completely enough to be performed by a skilled person.


Using the priority system, it is possible to file foreign applications within 12 months from the filing of the UK application and to retain the UK date for priority purposes. We frequently use the priority route to file European, US and International patent applications.

Trade Marks

Registered trade marks protect brands used on goods or services. They can last indefinitely, provided that they are renewed. The oldest UK registered trade mark is the Bass "red triangle" mark, which was registered in 1876 and is still in force.


Trade marks can be used to protect words, logos, combinations of the two. They cover the same or similar marks as the registered mark, as well as the same or similar goods or services. (Trade marks cannot be applied for in isolation. They must be filed in respect of particular classes to cover the goods or services, in respect of which the mark is intended to be used.)


Thus registered trade mark protection is much stronger than for the mere registration of a name at Companies House, or the registration of a domain name with an ISP. The mark must be distinctive (i.e. not descriptive of the relevant goods or servces). There is an examination system, but it is generally less complicated than for patent applications. If an application is accepted by the examiner, there is a two-month opposition period during which third parties can raise objections.


Most trade mark applications are not opposed. If no objections are raised, or if any that are raised are dealt with, the mark will be registered.

Registered Designs

Registered designs can be applied for in respect of a wide range of articles. They cover appearance and not function. Unlike unregistered design right (see later) there is no need to show copying.


The potential term of protection is relatively long. Indeed a registered design can be renewed to give a maxium term of 25 years from filing, assuming the registered design is renewed every 5 years.The maximum term is therefore 5 years longer than for a patent.

A further advantage is that EU and UK registered designs benefit from a grace period of a year.This means that if a product has been disclosed it may still be possible to protect it, provided action is taken within a year of the disclosure. Examination is usually much less tough than for patents. Most registered design applications that we file are allowed within a period of months. By filing multiple designs and by being careful not to limit designs unduly, effective protection can be obtained.


Some clients ask us to file file both a registered design application and a patent application for the same product.This can help maximise protection and increase the potential deterrence to competitors.

Copyright

Unlike registered designs, copyright protects only against unauthorised copying. Thus if someone has independently created an identical or similar work to your own, there is no copyright infringement.


Copyright arises automatically upon creation of the copyright work. There is no UK registration system. People sometimes file a copy of the works with a legal adviser, post it to themselves by sealed registered mail, or use other methods to try to prove dates.


Copyright term can be very long. Indeed it can sometimes be 70 years after the death of the author or creator of the work.


Unregistered Design Right


The shapes of most three dimensional industrial articles are not protected by copyright, but may be protected by unregistered design right (also known as "UDR" or simply "design right").


However UDR has various limitations, as well as many exclusions. Like copyright, it is limited to copying.The term is however shorter than copyright. UK UDR has a term that is between 10 and 15 years. EU UDR has a term of only 3 years.Whilst UDR is useful if there are no other rights, it is often considered a relatively weak right.


Indeed even if it applies, we advise that patent or registered design protection should be applied for, if possible.