Frequently Asked Questions 2017-08-31T07:54:08+00:00

Frequently Asked Questions

Here are some issues clients have asked me more than once so maybe they will help you too

Patents

You cannot get a patent for any invention that you have already published.

If you are a UK inventor, you can also find out a lot of basic information from the UK Intellectual Property Office’s web pages . In other countries the rules may be different. The European Patent Office also grants patents effective in the UK but it is unwise for an unrepresented inventor to attempt to navigate the services of the EPO. You will also find a lot of useful information on here and the web sites of other member firms of the Chartered Institute of Patent Attorneys. Treat other unregulated sources of information with care.

If its a UK patent then life is very easy. You simple dust off your credit card and check that you have the patent number to hand and then go to this page on the official UK IPO web site.
Do check that you are on a .gov.uk page if you have followed a link from anywhere else.

If you want your agent to do it for you then that’s fine. I do have to charge you a fee for that and you will get a reminder next year.

Several other countries have IPO web sites that allow you to pay online with varying degrees of ease. After a while you might realise it is easier to use someone who does it all the time.

The inventor is the actual deviser of the invention. The invention is defined in the claims. The main claim in your patent application is a very abstract distillation of your inventive concept. Typically it expresses the combination of technical features that the inventor has realised is enough to solve the technical problem.  Look at your main claim and in particular how it differs from the closest prior art ( the nearest thing that has been published in the same technical field) and that is your inventive concept. Whose idea was that?

There may have been quite a lot of work to be done to get from that bright spark of an idea to having enough information to draft the patent application and even more work to be done after that to test and refine a product that has some hope for bringing the idea to market. The people who do the testing, the trials and the detailed design are not inventors. The people who provide the money to allow these tasks to be carried out are not inventors. This may not seem fair. Its the law.

There is a World Intellectual Property Office (WIPO) based in Geneva, but there is no such thing as a World Patent. WIPO operates the PCT – international patent system. A PCT application allows you more time to decide the territories in which you need patent protection. The time available only extends to 2.5 years from your first filing date (priority date) or a little bit (one month) longer in a few countries like the UK and EPO. Your PCT application is subject to a further search so you get some feedback on whether your applications are likely to succeed.

The PCT system does not cover the whole world but a very large part is covered but only the most affluent of companies choose to take advantage of every designation.

Copyright

Copyright arises automatically but has one of the most complex statutory backgrounds ever

The author, artist or the one who made the arrangements if the work was created on a computer. Unless they were workign in the course of their employment when the employer gets the copyright. If they were not working in England at the time then things may be different. Copyright can be transferred by written assignment but it does not pass with the copyright work. So if you buy a picture you do not have the right to reproduce it.

In most cases for 70 years after the death of the author

There are specific arrangements of the music to Happy Birthday to You that did enjoy copyright protection. That’s not usually the version you sing in the pub even if someone is playing the piano.  After a 2015 lawsuit in the USA Warner/Chappell Music are no longer collecting fees.

Trademarks

Even if you call your business No Name you have a trade mark. Some names can be protected because they represent the company’s goodwill but there are limits

As long as you like provided you pay the renewal fees and answer challenges about its use. A UK registration is good for ten years from the application date. After that it must be renewed – a simple online procedure.

The idea is that you should be using your trade mark on all the goods and services for which it is registered. After its been on the register for 5 years, you may be asked to prove that you are. This will happen if someone wants to use a similar mark and thinks your registration is a problem for them.  Many registrations fall into disuse or were registered for far more goods than they have ever been used on.

If you have a US registraiton you will be required to use it before you register it and confirm it is still in use at regular intervals. This means the US register is a lot more informative than the register of European Union Trade Marks (EUTM). When you apply for a UK mark you must declare that you use or intend to use it. Not so at the European Union Trade Mark Office where applicants register their marks for great swathes of goods and services.

Its difficult. The shape of your goods is their design. Its often what makes them usable and its not necssarily an indication of who made them. Mostly people want to register shape marks to prevent competition. Shape mark registrations for the Mag lite, the Rubik’s cube and those knife handles with dots on the grips have all been rejected. There are however 3D or shape marks on the register. Best avoided.

No. You will need many registrations if you have a global brand. There really are only a few brand owners who register all over the world and there are a lot of registries out there. Most of them contain a registration of IKEA. The Madrid system facilitates the making of applications in lots of countries and an International Registration obtained using the Madrid system is a great asset when it comes to the time to renew or assign your registrations so do use it.

General

These are questions that relate to one or more rights, for example disputes and licensing.

Its a contract between the IP owner and the licensee. It can take many forms and, subject to compliance with competition law, can be freely negotiated between the parties. The big issues are will it be exlusive and will the IP owner be competing with the licensee, how long will it last and what does it cost. The cost is usually called a royalty. Mostly its expessed as a percentage of the licensee’s sale price but there are no rules. You can charge a penny a unit for example. As in book publishing there can be an advance but thats not very common in patent and trade mark licences. Minimum royalties are often agreed to make sure the licensee makes some sales.

The  Comptroller-General of Patents, Designs and Trade Marks is the statutory title of the head of the UK Patent Office now usually called the Intellectual Property Office. It is his duty to grant patents and register trade marks. His signature (it has been a her once) is on the certificates. Since May 2017 its been Tim Moss

Not usually. However there are criminal offences such as counterfeiting where the Police do take an interest. The City Of London Police host PIPCU,  the  Police and Intellectual Property Crime Unit

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