matt, Author at Sonder & Clay

Author: Andrew Clay

Patents in the UK are one of the most important IP rights as they protect the investment made in developing new products and processes.

In this post we explain what patents are, how to get them and what rights they give you.

What is a patent?

A patent is a statutory monopoly, lasting for up to twenty years, granted in respect of a new product or process, which meets certain criteria. If your product or process is protected by a patent then only you (and businesses you license) can lawfully commercialise that product or process. If third parties import, make or sell the patented product or use the patented process then you can sue them and claim damages or an account of their profits and seek an injunction. Having a patent can protect your new product or process from competition and can thus allow you to have a bigger market share and/or charge more for your product or process.

What can be patented in the UK?

A valid patent can be obtained for a new product or process, which is not an obvious development over what was already known and which is capable of being applied industrially. Tens of millions of patents have been filed over the years worldwide, illustrating the enormous range of what can be protected. The range of things that can be patented is therefore very broad as illustrated by the following examples of patentable inventions:

an improved gearbox
a new polymer or other chemical entity
a class of chemicals to improve the way fuels perform in engines
a new arrangement of components in a floor cleaner
the use of a new drug to treat a particular illness
a device to hold taxi licences on windscreens
a new design of a memory bus or semiconducting material

What cannot be patented in the UK?

However not every invention can be patented: for example new ways of doing business, mathematical methods and software and most surgical techniques are not patentable. All patentable inventions must be new and not merely an obvious tweak over what was previously out there.

Newness (or novelty) is a very strict requirement for patented inventions: disclosing your invention before your file for patent protection to just one person, who is not bound by an obligation of confidentiality can invalidate your patent. The golden rule is therefore to file for your patent before you disclose your invention to any third party.

How do I get a patent in the UK?

To ensure you obtain a patent right in the UK it is advisable to consult with a good patent attorney to help navigate you through the process, which can be quite complicated.

In essence for the UK you, or your patent attorney, will file a written description of your invention at the UK’s Intellectual Property Office and then at some point you also file some claims. Claims are relatively short written descriptions of the invention. The wording of the claims is of critical importance to the patent owner as they define the ambit of the monopoly granted by the patent

Next, the patent office will check to see if the invention is really new and not obvious by comparing it with previously filed patents and sometimes other sources such as scientific journals: their results are provided to the owner of the patent application in a search report. The patent office will also provide their views on the invention’s patentability in an examination report. There is usually some back and forth between the patent office and the patent attorney, in which the patent attorney attempts to overcome any objections to the patentability of the invention raised by the IPO, often by amending the claims and/or the written description of the invention.

The patent process in the UK typically takes around two to three years but can be speeded up if there is urgency, for example because there is an infringer in the market who must be stopped. The patent application is typically published 18 months after being filed but that can also be speeded up.

How much does it cost to get a patent in the UK?

The cost of a patent depends on the nature of the invention and where you want to obtain patent protection. For example, obtaining patent protection in the UK will cost at least £5 to £10k for a fairly simple invention but typically its between £15k and £40k. Very complex high tech inventions can cost much more.

Worldwide patent protection often costs at least a £100k and is much higher for complex high tech inventions.

In addition to the costs of filing a patent and the professional fees of patent attorneys, annual renewal fees are also payable to keep the patent in force. For a patent in the UK these are only payable once the patent has been granted and are payable annually from the fourth anniversary of the filing date of the application: they range from £70 (year 5) to £610 (year 20).

Who owns the patent rights in my invention?

Generally the inventor is the owner of the patent rights but if the inventor is employed then the employer will generally own the patent rights if the employee created the invention in the course of their employment, subject to certain exceptions.

Where a third party, such as a consultant, creates an invention pursuant to a commission then the ownership position will depend on the precise nature of the inventor’s commission: for that reason if you are engaging a consultant to assist on a technical project, where an invention might result, then the ownership of any patent rights should always be dealt with expressly in the contract with the consultant before they start work. The paying party will want to own the patent rights in any invention the third party might create. Our IP Solicitors and Chartered Trade Mark Attorneys are accomplished in all types of issues relating to IP ownership or the rights to use IP rights.

How do I use my patent after it has been granted?

Patents are essentially negative rights: they allow you to stop others from commercialising your new product or process. You can use them in two basic ways: you can force others to leave the market or you can charge them for being in the market.

Forcing third party infringers out of the market

If a third party uses your invention without your consent then you enforce the patent against them. Typically a letter before action is sent first and then if the matter cannot be settled a private civil enforcement action has to be started. Patent infringement actions can be very expensive to fight.

Charging third parties to be in the market

If third parties want to use your patented invention then you can alternatively grant them a licence to do so via an IP licensing agreement. Typically the licence is granted in exchange for a royalty, which varies with the scale of the licensee’s exploitation of the licensed patent. The licence should clearly define what rights the licensee has and on what the licensee has to pay royalties.

Can I claim Patent Box relief in the UK?

Another benefit of having a patent is that it can enable you to claim what is known as patent box relief. Patent box relief is a statutory deduction on your corporation tax calculation which reduces the effective rate of corporation tax on income derived from exploiting the patented invention (such as product sales or licence income) from 25% (the large company rate after March 2023) to just 10%.

How do I use patents owned by third parties?

If you use inventions protected by third parties without their consent then they may sue you, seek an injunction and damages or an account of your profits. It is generally possible to quantify this risk by getting what is called a freedom to operate search carried out by your patent attorney or specialist IP solicitor. However such searching and the analysis of third party patents that is required can be very expensive and often there can be significant uncertainties about the scope of third party patents, with the result that there remains some residual risk.

What Sonder & Clay can do for you?

Patents represent a very important tool to protect technical inventions. Sonder & Clay’s accomplished IP Solicitors will help you exploit and enforce your patents to maximise their value. Our team enjoy years of IP experience and will devise a licensing or exploitation strategy to help deliver a return on your research and development investment. We can also help you find a good patent attorney with the right technical expertise to help protect your new product or process. Learn more about our patents service and please get in touch to book a free consultation.

Author: Colleen Washington

Copyright in the UK reaches every aspect of life – the music you listen to on the way to work, the software on your computer or phone, the content and appearance of the apps you use, the newspaper you pick up for the train journey home, and the movie you watch in the evening! It is likely that they are all protected by copyright, which is an incredibly wide-ranging and useful Intellectual Property Right. However, it is also very easy to overlook copyright and to end up on the wrong end of an allegation of copyright infringement.

In this article, I explain the key points you need to know about copyright in the UK and answer some frequently asked copyright questions from our clients at Sonder & Clay.

What is copyright?

Copyright is an important Intellectual Property Right in the UK and gives a range of exclusive rights to the creators of original works including literary, dramatic, musical and artistic works and also sound recordings, films, broadcasts and the typographical arrangement of published editions. These rights are all set out in the Copyright, Designs and Patents Act 1988 and enable the copyright owner to control what happens to their copyright work and to prevent others taking unfair advantage of their hard work and expertise.

Why is copyright so important?

Copyright protection is of great importance to many of Sonder & Clay’s clients and we often receive enquiries relating to copyright protection, particularly from clients in the Tech or IT sectors or in creative industries. Below are some of the key reasons why copyright\ is so important.

It is very wide-ranging

Copyright in the UK, protects a very wide range of original creative works, including written works like books and magazines, computer software and software apps, the appearance of webpages and graphical user interfaces, artistic works such as drawings, paintings, sculptures and ‘flat’ designs applied to wallpaper or fabrics, photographs, video clips and films, music and sound recordings, broadcasts…the list goes on.

Copyright subsists automatically in the UK, once a work is created and recorded in a permanent form, provided that certain qualifying criteria are met (which in practice they almost always are). There is no need for a copyright work to be registered in order to benefit from copyright protection. There are also long-standing international conventions which extend copyright protection for UK copyright works to most other commercially significant countries.

Copyright can also last a very long time, although the precise length of copyright protection depends on a number of factors, including the type of work. For example, in the case of literary, dramatic, musical or artistic works, copyright in the UK generally lasts from the date when the work was recorded and does not expire until 70 complete calendar years have passed from the end of the calendar year in which the author of the work died. This means that many apps and other new software products (which are protected as literary works) will likely continue to enjoy copyright protection deep into the next century.

The copyright owner has the exclusive right to do, and authorise others to do, certain acts in relation to their copyright work; these include (amongst other rights) the exclusive right to make copies the work, to issue copies of the work to the public and to put a protected work on to a website. It is an infringement of copyright in the UK to do any of those acts without the authorisation of the copyright owner. Importing, possessing in the course of a business and selling items which you know or have reason to believe are infringing copies is also unlawful. There are some exceptions which apply in limited circumstances, but these don’t arise very often. Note also that certain acts that amount to copyright infringement can also give rise to criminal liability on the part of the infringer.

6 copyright FAQs

Copyright can be complex and every situation will raise different issues. Copyright is relevant to many ordinary and everyday business activities and here are a few of the questions that commonly arise.

1. I paid for a design agency to create an illustration for me. Do I own the copyright in the illustration?

Generally, the author of a copyright work is the first owner of the copyright in that work, subject to any contractual provisions to the contrary.

This is why it is so important to enter into clear written contracts with third parties who create copyright works for you. Those written contracts with third parties, such as design agencies, marketing and PR consultants, and website developers, should contain express provisions that deal with ownership and use of the copyright (and any other intellectual property rights) in the work that they create for you. Typically, if you are asking a third party to create something original for you, you will want to own the copyright in that work, so you will want to ensure that the contract includes an assignment of the copyright (and any other intellectual property rights) in that work.

However, even if you did not enter into a written contract which deals with copyright ownership, all is not lost; in the absence of express contractual terms dealing with ownership, the law will usually imply terms that are necessary to give business efficacy to an agreement. However, this can result in a costly dispute about the precise scope of the rights that should be implied and it is always best to make the position clear in a written contract at the outset.

The position for employee creators is different; if an employee creates a literary, dramatic, musical or artistic work or a film in the course of their employment, the copyright in such works is generally owned by their employer, unless there is an agreement to the contrary.

2. I developed a website for a customer and I incorporated some of my pre-existing software into the development. What happens to my pre-existing software?

Computer software/code is protected as a copyright work in the UK. If you own pre-existing software, you should clearly deal with this in the development contract with your customer. You will want to ensure that you retain ownership of your pre-existing software/code, so that you can use it for other developments and customers. You might also want to consider whether you can negotiate retaining some of the rights in the developed software, at least on a royalty-free licence basis, so that you are able to use parts of the code that you have developed for other clients in non-competing fields.

3. I am an employee and I have made a copyright work in my own time, outside work. Who owns the copyright in that work?

As mentioned above, if an employee creates a literary, dramatic, musical or artistic work or a film in the course of their employment, the copyright is generally owned by their employer, unless there is an agreement to the contrary. Disputes often arise about precisely what falls within the scope of an employee’s ‘course of employment’ and therefore whether something created by the employee belongs to the employer or the employee. As an employee, if you don’t have an agreement with your employer dealing with ownership of your independent project, make sure that your employment contract is clear about what your role is and what you are engaged to do for your employer and be careful to ensure that your independent project does not fall within the scope of those employment duties. Also, make sure that you work on your independent project wholly outside work hours and that you do not use work computers, work software licences or other work-related information or materials or opportunities that you are only aware of through your employment.

4. Do I have to register my copyright work in the UK in order to have copyright protection?

No. Copyright subsists automatically once the work is recorded in a permanent form.

5. I only used part of someone else’s copyright work. Is that still an infringement of copyright?

Many people believe (wrongly) that they can avoid copyright infringement by copying just a part of someone else’s copyright work. In fact, copyright is infringed by doing a restricted act (such as copying) in relation to the whole or a substantial part of the copyright work. What amounts to a ‘substantial part’ of a copyright work is not determined by the quantity of the work taken, but rather by the quality of what is taken. What matters is the significance of the part that has been taken. Each situation will be different, but there is a risk of copyright infringement, even if you take just a part of someone else’s copyright work. There is an old adage in copyright law: if it is worth copying it is worth protecting.

6. I found a photograph on the internet and I want to use it on my website. Does copyright in the UK protect material that the copyright owner has put onto the internet?

Yes. Just because material is posted or available on the internet, or is otherwise widely available, does not mean that it can be copied and used freely. The photograph is likely to be protected by copyright and should not be copied without authorisation.

We specialise in copyright law

Our accomplished Chartered Trade Mark Attorneys and IP Solicitors provide guidance on all aspects of copyright law to maximise commercial value and protect creative works against copyright infringement. With our guidance, you can ensure creative assets are adequately protected to prevent others from taking them, commercialise your copyright by licensing it and add tangible value within your business.

Read more about our Copyright services, meet our team or get in touch to book a free consultation with us.