August 2019 - MLP Law

Intellectual Property Rights

What are UK Intellectual Property Rights?

UK Intellectual Property Rights (IPRs) can be broken down into different categories:

  • Patents
  • Trademarks
  • Un-registered Designs
  • Registered Designs
  • Copyright

Patents protect inventions for up to 20 years for both the product and the process. To be granted a Patent your product / invention must be (a) something that can be made or used, (b) new and (c) inventive (not modified from something that already exists). It can take several years to get a Patent granted and your Patent will be published 18 months after filing the application.

Trademarks protect a business’ brand name, product or service by using words, logos, sounds or a combination of any of them. It distinguishes your goods and services from your competitors. To be effective, it needs to be registered for all the classes of goods and services for which it is going to be used. Trademarks are renewed every 10 years.

Un-registered design rights are an automatic protection for the shape and configuration of a product, both internally and externally, providing it is an original design and that it’s a design that is non-commonplace. Protection can last up to 15 years, however in the last 5 years of protection you must give a licence of right to anybody who asks.

Registered designs protect the overall visual appearance of a product (2D and 3D), providing the design is new, is not offensive, does not utilise protected flags or emblems and is not an invention (you will need a patent for this).  Protection can last for up to 25 years but must be renewed every 5 years.

Copyright protects a wide range of written and recorded material. You don’t have to apply for copyright it is automatically applied. The scope of its protection extends to software, databases, photography, drawings, literally work and promotional material. It must be written down or recorded and the protection can last a long time.

What about European and Worldwide IPRs?

IPRs are only generally valid in the country where the right is registered. In order to get European and / or Worldwide protection for your IPR, you must either:

  1. register your right in the country where you want protection;
  2. apply to have your right protected in multiple European counties; and / or
  3. apply to have your right protected in multiple Worldwide countries.

Each application for National, European and Worldwide protection can coexist together.

Patents for European applications must be submitted through the European Patent Office (EPO). Patents for worldwide applications are submitted under the Patent Cooperation Treaty and can be done through the national IP Office or the EPO. It can take up to 4 years to be granted the patent after you make your application

Applications for a European Union Trademark (EUTM), previously called a Community Trademark (CMT), must be submitted through the European Union Intellectual Property Office (EUIPO). A EUTM is valid for 10 years and is renewable every 10 years.  Applications for a worldwide trademark must be based on an existing trademark application and can be applied for with the World Intellectual Property Office (WIPO).

As with trademarks, applications for European design rights, both registered (RCD) and unregistered (UCD) must be submitted through the EUIPO. You get 5 years’ protection for a RCD and this can be renewed every 5 years to a maximum of 25 years. International design protection is applied for with the WIPO but unlike trademarks, does not have to be an existing design.

It is not necessary to apply for copyright in most countries in order to have the protection (as it is an automatic protection), nevertheless, in some countries, voluntary registration does give the creator additional benefits such as proof of ownership.

How Important is Intellectual Property for my business?

If you own a business it’s very likely you own Intellectual Property.

Over time, businesses build up goodwill and recognition that is linked to the brand, the products and the services they offer.

It is important that IPRs form part of any business plan. IPRs can, and are valued, just like any other business asset. Having ideas, products, goods, services or any other assets that can be linked to IP (and can be protected) will raise the value of the business.

Therefore, as a business grows, IPRs become an important business asset and so should be identified as early as possible.  What might seem unimportant today may well be worth millions in the future.

The UK Intellectual Property Office (IPO) have a useful health check tool on their website which will help you identify the IP in your business.  https://www.ipo.gov.uk/iphealthcheck.

How to use the protection given?

Businesses invent products to solve problems and as IPRs are a legal form of protection to stop others using, making and importing your creation its vital to know how to use them.

  • Licence to others for use

Granting a licence permits the other person / company to use the IPR and do something usually in return for a fee.  Without this licence, anything that is done can be classed an infringement.

Licencing out is a great way to share costs and risks.  You receive revenue from that licencing but do not take all the risk of manufacturing, promoting and/or selling a product. A business may want to collaborate / work together to develop new products and services. You may licence to other businesses to sell in territories that you cannot cover.

Whoever you grant a licence to is free to use the IPRs so you will need to consider the commercial aspects of your business: will your brand be affected, could a competitor work around it and take away market share or will it restrict the growth of your business by the licensor charging royalties that are too high.

  • Confidentiality Agreement / Non-disclosure Agreement (NDA)

Before revealing details of your product / venture to other interested parties, you can ask them to sign a Confidentiality / Non-disclosure Agreement to prevent them from stealing your IPR / ideas.  These are relatively simple and straightforward to draw up but can slow down the process if the other side are reluctant to sign and / or have the Agreement looked at by a legal representative.

  • Install an early warning system

Installing software so that when any images are uploaded by someone else it recognises and compares this to your IPR giving you the chance to take action as early as possible.


If you or your Company would like any advice on protecting or licencing out your Intellectual Property Rights please call us on

0161 926 9969 or alternatively email commercial@mlplaw.co.uk.

 

 

Encouraging employee-commitment through long service benefits

Employee benefits are non-cash provisions that are of financial value and cost to the company, which are offered in addition to an employee’s normal wage or salary. Such benefits are a brilliant way to encourage loyalty from your employees and increase overall workplace morale. Benefits could include a gym membership, a cycle to work scheme or an additional day off on your birthday, to name but a few.

A recent study by Investec Click and Invest suggests that the ‘job for life’ mentality is over, with millennials only staying in posts for an average of three years. This, combined with ACAS reporting that it costs £30,000 to replace a single member of staff on average, means that more than ever, businesses need to consider policies which helps retain employees.

A common way of further encouraging employee-loyalty is to increase the amount or quality of benefits on offer in line with how long an employee has worked at the company. However, many employers have concerns about the risks of implementing a benefits scheme which has caveats based on length of service. A surprisingly common dilemma is this; “does offering a benefit which is only on offer to those with more than five years’ service discriminate against younger employees who haven’t had the chance to accrue five years’ service?” Short answer: no. Long answer: Paragraph 10 of Schedule 9 of The Equality Act 2010 specifies that such benefits will not amount to age discrimination if they relate to a service requirement of 5 years or less, stating:

“It is not an age contravention for a person (A) to put a person (B) at a disadvantage when compared with another (C), in relation to the provision of a benefit, facility or service in so far as the disadvantage is because B has a shorter period of service than C.”

To put it more simply – as an employer you will not be put at a disadvantage for rewarding those with longer service and you are well within your rights to only offer certain increases in benefits based on the number of years an employee has spent with a company. Where you wish to base benefits on service of more than 5 years, this will still be possible subject to being able to meet further justification tests.

So, the jury is in, and the verdict is this: staff retention is incredibly important but increasingly difficult, and a good array of benefits will not only encourage employees to stay with the company, but also help in attracting the best talent.

If you have any questions regarding the legality of the benefits you are offering to your employees, or if you feel you may be experiencing discrimination by not being offered a certain benefit – please get in touch with our Employment Team on 0161 926 1508, or follow our employment law-specific Twitter account @HRGuruUK.