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INTELLECTUAL PROPERTY IN THE UK: A BRIEF OVERVIEW

The main purpose of intellectual property law is to encourage innovation and creativity through the creation of a wide variety of goods and assets that are the result of what the World Intellectual Property Organisation, commonly known as WIPO, describes as “creations of the mind”. To achieve innovation and creativity, the law gives people and businesses property ownership rights to the information and the intellectual goods they create, usually for a limited period of time. Because businesses can then profit from these rights, this gives an economic incentive for their creation.  No investment in new technology or products would ever be authorised or made by any business without considering its ability to protect that investment.

Origins of Intellectual Property

Patents

Letters Patent” were originally issued by whoever was the reigning monarch to grant monopolies over particular industries to skilled individuals with new techniques.  Originally intended to strengthen England’s economy by making it self-sufficient and promoting new industries, the system gradually became seen as a way to raise money (through charging patent-holders) without having to incur the public unpopularity of a tax.   Queen Elizabeth I, in particular, was said to be a great abuser of the system, by issuing patents for common commodities such as starch and salt.  James I was apparently an even worse offender.  The English Parliament subsequently made several efforts to curtail the reigning monarch’s power resulting in the Statute of Monopolies, which was passed on 25 May 1624.

Trade Marks

A trade mark (or trademark) is a recognisable sign, design or expression which identifies products or services of a particular source from those of others; trade marks used to identify services are usually called service marks.  Trade marks may be located on packaging or on the actual items being sold or protected.  

It is believed that blacksmiths who made swords in the Roman Empire were the first users of trade marks. Other notable trade marks that have been used for a long time include Lowenbrau which claims use of its lion mark since 1383. The first trade mark legislation in the UK was passed by the English Parliament under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold.  The first modern trade mark laws emerged in the late 19th century.

Copyright

The Statute of Anne in 1710 was brought into force to bring order to the book trade:  “An Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors or Purchasers of Copies”. The recital to the legislation stated:

“Whereas Printers, Booksellers … have of late frequently taken the Liberty of Printing, Reprinting, and Publishing Books, without the Consent of the Authors or Proprietors of such Books, to their very great Detriment, and too often to the Ruin of them and their Families:   For Preventing therefore such Practices for the future, and for the Encouragement of Learned Men to Compose and Write useful Books; May it please Your Majesty, that it may be Enacted…

Current Intellectual Property Practice

Intellectual property (“IP”) is now generally more broadly defined as a category of property that includes what has been described as “intangible creations of the human intellect”.  It includes:

  • patents;
  • copyrights;
  • trade marks;
  • database rights;
  • registered design rights;
  • unregistered design rights;
  • trade secrets;
  • moral rights;
  • rights against unfair competition;
  • artistic works such as music and literature.

The UK Copyright, Designs and Patents Act 1988 is the current legislation setting out the legal framework governing copyright, designs and patents in the UK and their enforcement.

The Trade Marks Act 1994 is the current law governing trade marks within the UK. It implements EU Directive No. 89/104/EEC (The Trade Marks Directive) which forms the framework for the trade mark laws of all EU Member States.

The European Commission also works to harmonise laws relating to what are known as “industrial property rights” within the EU to avoid barriers to trade and to create efficient EU-wide systems for the protection of such rights. European Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 deals with the enforcement of intellectual property rights.

What types of activity by a business may involve the creation or exploitation of IP?

  • Technical Development work
  • Design work
  • Bespoke manufacturing contracts
  • Creation of customised software, documentation, film/photographs
  • Routine record keeping/collation of results or information etc
  • Granting exploitation rights to third parties
  • Commissioning of specialist advice or services from third parties
  • Creation and use of computer software
  • Use/reuse of drawings, designs, instructions
  • Retro-engineering – manufacturing of spare parts

What types of activity by a business may involve infringement of third party-owned IP?

  • Technical development work
  • Design work
  • Bespoke manufacturing contracts
  • Creation of customised software, documentation, film/photographs
  • Granting exploitation rights to third parties
  • Use of computer software
  • Use/reuse of drawings, designs, instructions
  • Retro-engineering – manufacturing of spare parts
  • Copying documents, magazines, journals
  • Copying documents, illustrations etc from the internet
  • Listening to the radio at work

About the Author

David McIntosh was admitted as a Solicitor in 1988 and is a highly experienced commercial projects lawyer who has advised clients in a number of different fields including intellectual property, data privacy, procurement law (both public and private), manufacturing, distribution, information governance and general regulatory matters covering both the nuclear and pharmaceutical sectors.

Prospect Law is a multi-disciplinary practice with specialist expertise in the energy, infrastructure and natural resources sectors with particular experience in the low carbon energy sector. The firm is made up of lawyers, engineers, surveyors and other technical experts.

This article remains the copyright property of Prospect Law Ltd and Prospect Advisory Ltd and neither the article nor any part of it may be published or copied without the prior written permission of the directors of Prospect Law and Prospect Advisory.

This article is not intended to constitute legal or other professional advice and it should not be relied on in any way.

For more information or advice on Intellectual Property issues generally and information or advice on who owns the IP in your portfolio and how to take steps to protect that IP, please contact David McIntosh on dmc@prospectlaw.co.uk or +44 (0) 7483 300 132.

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