BUSINESS BRIEF: UK
BUSINESS BRIEF: UK Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
National patent applications are filed at the UK Intellectual Property Office (UKIPO) by filing a specification with a description and claims. European patents can be validated in the UK from patent applications filed at the European Patent Office (EPO).
A national UK or EPO patent application must be filed before public disclosure of the invention and a patent must be granted/validated in order to take action against infringement in the UK.
What are the costs for obtaining a patent, and what are the costs of defending it?
A typical UK patent from filing to grant may cost £3,000 to £5,000 for a straightforward case.
Actions for infringement may be brought before the High Court or the Patents County Court (PCC). Hearings are before a single judge sitting without a jury. Typically the judges specialise in IP matters.
A High Court action could cost at least £150,000 to £300,000 for a full infringement/validity trial. Remedies available include damages for actual loss and injunction to stop continuing infringement. Costs are generally awarded to the successful party but recovery is usually limited to costs that are proved to be proportionate to the value of the case. Te PCC is considerably cheaper for smaller claims and has a cap on costs awards of £50,000 and maximum damages of £500,000.
Is there anything unusual about the patent law that companies should be aware of? What are the most common mistakes businesses make?
UK patent law is mostly harmonised with that of other EU countries so there are no unusual
practices. However, in the case of suspected infringement businesses should be aware not to make ‘unjustified threats’.
A common mistake made by businesses is publicly disclosing an invention before filing a patent application, which will likely lead to the patent being invalid.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Treats usually come from either blatant disregard of rights (eg, counterfeit products) or, by contrast, someone who is completely unaware of the existence of patent rights. In the first case strong action is recommended, including the involvement of customs to seize goods. In the second case, oſten a notifying letter informing of the existence of a patent may be sufficient to have the infringing product withdrawn from sale. In all cases prompt and proportionate action is recommended with the aim of avoiding litigation.
Trademarks
How do you register or secure trademark rights and what protection does it grant? By filing an application at
the UKIPO, at the
Community Trademark (CTM) Office (OHIM), or by filing an International trademark designating the UK or Community. Registration gives the owner the exclusive right to use the mark for the goods/services that it covers in the UK. Protection may be available for unregistered marks under common law subject to the establishment of the necessary goodwill and reputation through trade in the UK under the trademark. Te law recognises the concept of well-known marks.
What are the costs for registering a trademark and what are the costs of defending it?
Tese depend on which registration system is used. A national UK trademark in one class
136 World Intellectual Property Review Annual 2013
from filing to registration costs £675 to £725 in a straightforward case. Additional classes cost £150 if filed in a multi-class application. A CTM application in up to three classes from filing to registration costs about £1,650 to £1,750 in a straightforward case, depending on the exchange rate with the Euro.
Actions for infringement or passing off may be brought before the High Court or the PCC. Hearings are before a single judge sitting without a jury. Typically the judges specialise in IP matters.
A High Court action could cost at least £150,000 to £300,000 up to and including full trial. Remedies available include damages for actual loss and injunction to stop continuing infringement. Costs are generally awarded to the successful party but recovery is usually limited to costs that are proved to be proportionate to the value of the case. Te PCC is considerably cheaper for smaller claims and has a cap on costs awards of £50,000 and maximum damages of £500,000.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
Treats to trademark owners usually come from either blatant disregard of rights (eg, counterfeit products) or from online infringement or misuse of trademarks. In either case immediate and strong action is recommended, if necessary, involving customs or Trading Standards in the case of counterfeits. In other cases of infringement prompt and proportionate action is recommended with the aim of avoiding litigation, eg, sending a ‘cease and desist’ letter and obtaining undertakings. Alternative dispute resolution and settlement are actively encouraged.
What are the most common mistakes trademark owners make?
Owners oſten assume that the registration gives them total freedom to use the mark rather than the
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