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Basic Guides and FAQ

Basic Guides

Click on the links below to open our basic guides to patents, trade marks, designs and copyright. For a detailed discussion on any specific issue you are faced with, please call us: + 44 (0)115 947 7977.

UK Patents - A Brief Guide
Information on UK patent procedure (PDF file)

International Patent Protection - A Brief Guide
Information about the options available for obtaining patent protection around the world (PDF file)

UK Trade Marks - A Brief Guide
Information about the registration of trade marks in the UK (PDF file)

International Trade Mark Protection - A Brief Guide
Information on the various ways of protecting your trade marks in overseas countries (PDF file)

Design Protection - A Brief Guide
Information about protecting the appearance of a product, in the UK, Europe and elsewhere (PDF file)

Copyright - A Brief Guide
Information and frequently asked questions about copyright protection (PDF file)

FAQs

Here are the answers to the questions we are most commonly asked on patents, trade marks, registered designs and copyright.

What is intellectual property?
What is a patent?
Who grants patents?
What does a UK patent do?
What kind of protection does a UK patent offer?
What rights does a patent owner have?
What are the requirements for an invention to be patented in the UK?
Is it possible to obtain an International Patent?
How do I obtain patent protection overseas?
What is a trade mark?
Who registers trade marks?
What does a registered UK trade mark do?
What kind of protection does a registered UK trade mark offer?
What rights does a trade mark owner have?
What is the difference between the symbols “TM” and ® ?
What are the requirements for a trade mark to be registered in the UK?
How do I obtain trade mark protection overseas?
What is a registered design?
What protection does a registered design provide?
What is copyright?
How is copyright obtained?

What is intellectual property?
Intellectual property (IP) is the name given to a group of legal rights that enable innovators to prevent others taking advantage of the innovators’ creative endeavours. The main forms of industrial intellectual property are patents, trade marks, registered designs and copyright. These are often referred to as intellectual property rights (IPR). The different types of IPR complement each other and provide different kinds of protection for a product.
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What is a patent?
A patent is a form of Intellectual Property Right (IPR) that provides a monopoly or exclusive right to an invention. The invention may be a new product or a process that provides a new way of doing something.
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Who grants patents?
A patent is granted by a national patent office, such as the UK Intellectual Property Office (www.ipo.gov.uk), or by a regional patent office that does the work for a number of countries, such as the European Patent Office (EPO) (www.european-patent-office.org). The Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application which has the same effect as national applications filed in a number of designated countries (please see our leaflet on International Patent Protection for more information). In order to obtain a granted patent for an invention, normally one would initially file a UK patent application, which is referred to as pending until it is granted or refused by the patent office.
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What does a UK patent do?
A patent gives its owner powerful protection for the invention concerned, in that the owner has the right to stop anyone else commercially exploiting the invention. The protection is granted for a limited period, which in the UK and most other countries is 20 years, provided that annual renewal fees are paid. If the renewal fees are not paid, the patent lapses and third parties may exploit the invention without infringement.
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What kind of protection does a UK patent offer?
The owner of the patent has the legal right to stop a third party from commercially making, using, distributing, selling or importing the patented invention in the UK. Any of these actions are called patent infringement. Patent rights are usually enforced in a Court, which has the authority to stop patent infringement. Patent rights may be enforced should a third party directly copy the invention, or even if they arrive at the invention independently.

It is important to note that a patent is a negative right. Having a patent does not necessarily mean that you can exploit your own invention yourself, but rather that you can stop others using the invention. If your invention requires the use of an earlier patented invention, permission from the earlier patent owner must be obtained before you can use your invention.
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What rights does a patent owner have?
A patent owner has the right to decide who may, or may not, use the patented invention for the period in which the invention is protected. The patent owner may give permission to third parties to use the invention on mutually agreed terms. This is called licensing the patent, and may be used to generate revenue via licensing fees. The patent owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. This is called assigning the patent. Once a patent expires, the protection ends, and an invention enters the public domain. Once this occurs, the owner no longer holds exclusive rights to the invention, which then becomes available for commercial exploitation by others.
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What are the requirements for an invention to be patented in the UK?
An invention must, in general, fulfil a number of conditions to be protected by a patent. It must have an element of novelty, i.e. some new characteristic or feature, which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called "prior art". The invention must also involve an inventive step, i.e. it must not merely be a minor, obvious development of existing technology, which would have been routinely deduced by a person with average knowledge of the relevant technical field. The invention must also have a practical use, and not merely be an abstract idea. Finally, the subject matter of the invention must be accepted as being "patentable" under UK law. For example, in the UK and many other countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, and methods for medical treatment (but not medical products) are generally not patentable.
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Is it possible to obtain an International Patent?
No. There is no such thing as a single international or world-wide patent. In order to obtain patent protection for an invention overseas, it is necessary, in most cases, to file separate national patent applications in each country in which protection is sought, and to prosecute each patent application before the corresponding national patent office. However, various systems exist for filing international patent applications, which help to streamline at least the early stages of the international patenting procedure, and effectively postpone the need to file national patent applications.
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How do I obtain patent protection overseas?
There are three commonly-used ways of obtaining foreign patent protection:
(i) file separate national patent applications in each country of interest;
(ii) file an international Patent Cooperation Treaty (PCT) patent application; and
(iii) (for European countries) file a European patent application.
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What is a trade mark?
A trade mark is any sign or symbol, which can distinguish the goods and/or services of one trader from those of another. Essentially, a trade mark is a badge of origin, and is used so that customers can recognise the goods or services of a particular trader. Hence, the trade mark contributes to the commercial value of the goods or services to which it is applied, and increases marketability.

A trade mark may be a word (e.g. Nike), a group of words (e.g. Marks & Spencer), a logo (e.g. the Adidas stripes), a phrase or slogan (e.g. I can’t believe it’s not butter!), pictures, or any combination of these.
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Who registers trade marks?
A trade mark is registered by a national Trade Marks Registry, such as the UK Trade Marks Registry (www.ipo.gov.uk/types/tm), or by a regional Trade Marks Registry that does the work for a number of countries, such as the European Union Intellectual Property Office (EUIPO), which is responsible for registering European Union trade marks (www.euipo.europa.eu). In order to obtain a registered trade mark, normally one would initially file a UK trade mark application or a European Union trade mark (EUTM) application, which is referred to as being pending until it is registered or refused by the Trade Mark Registry. Foreign trade mark protection is also possible with foreign Trade Mark Registries.
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What does a registered UK trade mark do?
A registered trade mark provides the owner with powerful protection for their trade mark. Once accepted by a Trade Marks Registry, a trade mark is registered for an initial period of ten years. However, the protection may be extended for an unlimited period, provided that renewal fees are paid every ten years. The trade mark is registered in respect of specified goods and/or services, which are categorised according to the classes of a standard classification system.
If the renewal fees are not paid, the registration lapses. Furthermore, if a registered trade mark is not used commercially for a continuous period of five years, then it may be attacked and invalidated by a competitor, and removed from the register. Therefore, there is a strong incentive for owners to use their trade marks.
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What kind of protection does a registered UK trade mark offer?
The owner of a registered trade mark has the legal right to stop a third party from commercially using the identical mark for identical or similar goods/services. In addition, it is possible to stop a third party from using a confusingly similar trade mark for similar goods/services.

The owner can prevent the third party from affixing the registered trade mark to goods or packaging; selling or offering to sell goods or services using the registered trade mark; importing or exporting goods using the trade mark; or using the trade mark on business papers, or in advertising. Any of these actions constitutes registered trade mark infringement. Trade mark rights are usually enforced in a Court, which has the authority to stop trade mark infringement.
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What rights does a trade mark owner have?
A trade mark owner has the right to decide who may, or may not, use the registered trade mark. The trade mark owner may give permission to third parties to use the registered trade mark on mutually agreed terms. This is called licensing the trade mark, and may be used to generate revenue via licensing fees. The patent owner may also sell the registered trade mark to someone else, who will then become the new owner of the registration. This is called assigning the trade mark.
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What is the difference between the symbols “TM” and ® ?
You can use the symbol ™ after your trade mark, whether the mark is registered or not. This has no legal effect, but it does no harm and may serve to notify third parties that you regard the mark as your property and hence deter them from using the same mark or something similar to it.

However, once your trade mark is registered, you can then use the registered symbol, ®. We recommend that you do this, as it notifies third parties that your mark is registered, and will generally act as a strong deterrent to imitation of the mark.

For example, you could mark your registered trade mark as follows:-
Trade Mark® is a registered trade mark of [Your name].

Please note that it is an offence to use the ® symbol if your trade mark is not registered.
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What are the requirements for a trade mark to be registered in the UK?
In order to be registerable in the UK, your trade mark must be:

(i) distinctive (i.e. not descriptive) for the goods or services which you are applying to register it for; (ii) not deceptive, or contrary to law or morality; and (iii) not confusingly similar or identical to any earlier marks for the same or similar goods or services.

We can advise you whether or not your trade mark is likely to meet requirements (i) and (ii) above. In order to advise whether your trade mark meets requirement (iii), it is necessary to carry out searches.
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How do I obtain trade mark protection overseas?
There are three commonly-used ways of obtaining trade mark protection overseas:-
(i) file separate national trade mark applications in each country of interest;
(ii) file a European Union trade mark (EUTM) application, which covers all member states of the EU; and
(iii) file an international trade mark application using the Madrid Protocol.
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What is a registered design?
The design of a product refers to the outward physical appearance of the product, and is what makes it attractive and therefore appealing to customers. Hence, the design contributes to the commercial value of the product, and increases its marketability.

In many cases, it is possible, and advisable, to register the design of a product. Registration provides much greater protection than relying on unregistered design rights.
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What protection does a registered design provide?
The owner of the registered design has the legal right to prevent a third party from making, using, stocking, distributing, selling or importing any product in which the registered design is incorporated, or to which the design has been applied. Any of these actions is called registered design infringement.

Registered designs are usually enforced in a Court, which has the authority to stop design infringement. The benefit of protecting your design with a registered design is that you can prevent third parties from copying your design directly, or even if they arrive at your design completely independently. Hence, design registration is a true monopoly right, providing much stronger protection than unregistered design right (a form of protection similar to copyright), and being much easier to enforce as there is no need to prove that copying has taken place.

Importantly, a registered design is not restricted to any specific product; it is the design (2D or 3D) which is protected, not just the product. Furthermore, the registration protects the design when it is applied to any product, whether or not it is related to the product that you have applied the design to. For example, if you design a new 3D shape for a telephone, then infringement would be found if someone used the same design for some unrelated product (e.g. a kettle) without your permission.
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What is copyright?
Copyright is a form of Intellectual Property Right (IPR) covering works that fall into three classes:-
(i) original literary, dramatic, musical, and artistic works;
(ii) sound recordings, films, broadcasts, or cable programs; and
(iii) the typographical arrangement of a published edition.

It is important to note that copyright protection does not depend on the artistic or literary merit or quality of the work. However, in order to attract copyright, the work must be original, i.e. the work must not itself be a copy of an existing work, and the author must have exercised sufficient skill, labour and effort to produce the work to justify copyright protection.

In many cases, a work may be protected by more than one class of copyright. For example, a cinema film can contain at least four separate copyrights, i.e. a literary work (for the original book), a dramatic work (for the film script), a musical work (for the music score), and a film (for the film recording itself).
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How is copyright obtained?
Unlike most other forms of Intellectual Property, copyright does not generally have to be actively applied for, as there is no registration system. Copyright therefore costs nothing to acquire. Copyright arises automatically as soon as a work is created. Nevertheless, it is important to keep records of the creation of all original works, e.g. so that you will be able to prove that copyright existed in the work on a particular date. This could be important should infringement occur, as you will need to establish, possibly in a Court of law, that copyright does subsist in the work.
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