Types of intellectual property rights in the United Kingdom

Христина Кметик, Юлія Белуга

Purpose of the article. This scientific research is devoted to the study of such categories of the intellectual property in the UK as patents, copyright, registered and unregistered designs, trademarks and trade secrets, as well as the analysis of the procedures of their protection under the effective UK legislation.

The presentation of the main material. In recent years the accent of social and economic development of the countries all over the world has moved from production to intellectual activities. The experience of the developed countries shows a firm and purposeful tendency to the priority of such social activities as science, technique, culture, creative work. The new priorities of social activities stipulate for due legal protection of all types of creative work. Therefore, at the end of the last century many countries started to renew intellectual property legislation, especially the issue on its legal protection. The new laws on intellectual property protection were adopted and international organizations revived their activities concerning legal protection of creative results in many countries.

The UK stopped being a Member State of the European Union (in the following - “EU”) on 31 January 2020, and the “transition period” governed by the Withdrawal Agreement (2018) [2] expired on 31 December 2020. Upon the expiry of the transition period, for EU rights obtained or arising under an EU regime, the UK extracted from each EU-wide right a UK right of the same scope. The extracted rights are now treated as national UK rights. Renewal fees are payable to the relevant UK office, and the rights are enforceable in the courts in the UK as national rights.

For national intellectual property rights covering the UK, there was little change to the existing systems of protection and enforcement upon the expiry of the transition period.

In the UK depending on the nature of your intellectual property, it will fall into one of a number of different categories and can be broken down as: patents; copyright; designs - registered and unregistered; trademarks; trade secrets [3]:

Patents are the most commonly sought form of intellectual property protection for commercialising university research. They relate to how something works, preventing the unauthorised usage of a process or invention. For an invention or idea to be eligible for a patent, the claimed invention should in the opinion of a patent examiner, satisfy three criteria: a) it should be novel; b) it should involve an inventive step; and c) it should have industrial application. If all three are met, then the idea is considered to be an invention and a patent will be granted. A patent is effectively a contract with the state: if an inventor teaches the world how to solve a technical problem in a new and inventive way, the state grants the inventor a monopoly of up to 20 years (in exchange for publication of the invention) to exploit the invention within the territory. However, in any territory where patent protection is not sought, the invention will be available to use by anyone without restriction.

Fundamentally, it is important to remember that a patent grants the owner the right to stop others from using their invention. The 20-year monopoly is important for companies as it gives time for the applicant to commercialise their invention with limited competition, and to potentially recoup their investment in order to help fund future projects.

The test for novelty is absolute and requires that the claimed invention is unique and not been made available to the public at the time of filing. If the combination of technical features in the claim can be found within published material anywhere in the world prior to the filing date, then the innovation is not considered new and the invention, as claimed, may be rejected.

The test for inventive step addresses the hypothetical question of whether a person “skilled in the art” would arrive at the same combination of tec h- nical features, as claimed, to address the same problem. In other words, are the technical features claimed and their combination obvious to a skilled person when considering the problem to be solved? If the patent examiner considers the technical features as claimed to be an obvious choice, or would be arrived at by routine experimentation, then the invention as claimed may be rejected.

Finally, the test for industrial application is more straightforward, in that the invention merely has to be useful and solve some technical problem without consideration of any economic factors, i.e. an invention can have industrial application whether or not there is an economic market in which to exploit it.

If the company decides to proceed with filing a patent application, then it is recommended to hire a patent attorney to draft the application before filing it at the patent office. It is important to remember that although the cost of applying for a patent is relatively low, professional advice can be a lot more - a patent attorney or advisor typically costs Ј4,000. However, this figure ignores the fact that, in most cases, the search report will bring relevant prior art to your attention.

If you wish to proceed with your application, your patent attorney or advisor will be required to make amendments to your claims and/or explain why this prior art is not relevant to your invention. Each time your patent attorney does this, you will incur a cost of approximately Ј1,500. This government figure will only reflect the cost of obtaining a patent on very basic technology, and only then if it required no amendment or further correspondence between the patent attorney and the Intellectual Property Office (in the following - IPO).

After filing, the application will receive a search and initial examination report after approximately 6 months, which will provide an early indication of whether or not the examiner considers there to be any 'prior art' that is relevant to the invention as claimed. If the company wishes to seek patent protection outside the UK (for export or licence opportunities), a foreign patent application needs to be filed by the 12-month international filing deadline. This deadline is relatively strict. After this deadline, no foreign patents can be applied for that claims the same invention. The application remains secret until 18 months after filing, at which point it will be published and enters the public domain together with any foreign applications filed by the applicant covering the same invention. If the Search Report is not favourable then the decision may be taken to withdraw the original application before publication at 18 months, this way the innovation has not entered to public domain and it can subsequently be redrafted with more technical detail in light of the examiner's feedback, and then be refiled as a fresh application.

Assuming the Search Report is favourable, and examination is requested then the application will enter the formal examination phase of the process. This part of the process can take some time, but the objective is to seek a granted patent within 2-3 years of the filing date. The examination step can take longer if the examiner considers there to be a lot of prior art in the field of the claimed invention. In this situation the patent attorney will often negotiate with the examiner and narrow the scope of the claimed invention to avoid the prior art. If the examiner is then satisfied, a patent will be granted for the claimed invention.

A brief overview of the patent application process is illustrated as below [4]:

Copyright may subsist, inter alia, in original literary, dramatic, musical and artistic works, sound recordings, films, broadcasts and typographical arrangements of published editions, provided the work qualifies by its author's nationality or domicile or by the place of first publication of the work. Protection arises automatically when works are recorded in writing or some other form.

Copyright in literary, dramatic, musical or artistic works generally lasts for 70 years from the end of the calendar year in which the author dies. For some literary works, including computer-generated works, databases, tables and compilations, and for sound recordings and broadcasts, protection will last for 50 years from the end of the calendar year in which they are created.

Copyright is infringed if the work, or a substantial part of it (assessed qualitatively), is copied, not if another work is created independently.

Unlike trademarks, designs and patents, copyright in the UK cannot currently be registered (so there is no central register and no fee requirement). Copyright arises automatically in the UK as soon as certain requirements are met, including the need for the work to be written down or recorded.

It is best practice to mark original work with the copyright symbol ©, the name of the author/creator, and the date of creation - not least so (recognising that there is no register) third parties are put on notice that the work is protected by copyright and can trace the copyright owner.

The UK has signed various copyright treaties which allow the UK to provide copyright protection in respect of copyright protected in other signatory countries. If you have copyright outside the UK, those treaties may operate to provide automatic protection in the UK too [5; 6].

A mark or sign may be registered as a trademark if it is capable of distinguishing the goods or services of one undertaking from those of another and of being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of protection. It should also not be devoid of distinctive character nor consist exclusively of indicators that may designate the kind, quality, quantity or other characteristics of the goods or services, although it may be shown that the mark has acquired distinctiveness through use. Registered trademarks can include words, domain names, colours and the shape of goods or their packaging, as well as non- traditional marks such as sounds (although, in practice, registration of non-traditional marks is difficult to obtain).

A mark can be registered for the UK by making an application to the UK's IPO. Also, the UK is a member of the Madrid system for international registration of trademarks [7], and so registration covering the UK can be sought pursuant to that system too.

A mark will be registered for specified goods and services listed in the classes of the Nice classification system [8].

The proprietor of a mark has the exclusive right to use the registered mark in connection with the classes of goods or services for which it is registered (except in respect of honest concurrent use). The mark may be enforced in respect of:

- an identical mark for identical goods or services;

- an identical or similar mark for identical or similar goods or services where such use has caused or is likely to cause confusion; and

- if a mark has a reputation, in respect of an identical or similar sign for goods and services where the use causes detriment or leads to unfair advantage.

A mark may remain registered indefinitely provided that the renewal fees are paid.

In the UK, unregistered rights in a brand may be created through use of that brand over time, as goodwill is built in it: this may enable the owner to bring a passing off action to prevent third parties from using an identical or highly similar brand. However, there are disadvantages to relying on this approach - not least its uncertainty and the heavier burden of proof.

Trademark protection is territorial, so that applications need to be filed in each country or territory of interest to a business. This means that even if a company has trademark registrations elsewhere, i.e. Japan or the USA, these rights will not automatically extend to the UK.

In the UK, there are currently two ways of obtaining registered trademark:

- a UK national trademark application; and

- an international trademark application designating the UK or EUTM.

Even if a brand is well established in another territory, it is strongly recommended to conduct clearance searches in the UK before launching or filing a new trademark application here, to see if there are any earlier trademark right holders that may object to the application or that you could be infringing by using your brand.

When you apply to register a trademark in the UK you have to specify the goods and services that you intend to use the brand for. These are organised into 45 different classes under the Nice classification system. Official trademark application fees are charged on a per class basis. The UK's IPO accepts a broader list of goods and services than certain territories, such as the USA, so it is recommended to seek UK counsel input into a trademark specification even if one has already been prepared and filed in another territory.

Once a UK application has been filed it will be examined by the UK's IPO to ensure that it complies with various registration requirements. The IPO will also conduct a search of the IPO Register for earlier rights they consider to be similar to the mark applied for - the application will not be refused on this basis, but earlier right holders will be notified of the application and it will be for them to take action if they consider there to be a conflict. Assuming there are no major issues during examination, the application will be published for opposition purposes. If no oppositions are filed by third parties the application will proceed to registration and a certificate will be issued. For a straightforward application this process typically takes around four to six months.

UK registrations can be renewed every 10 years, for a fee, and can last indefinitely so long as they are used and renewed.

Once an initial trademark application has been filed in (almost) any territory the filing date may be preserved for additional applications abroad provided those application are filed within six months. This ability to back-date later applications is known as 'claiming priority' and is useful as it allows time to see how the first application progresses before any investment is made in additional territories, as well as helping to stagger costs. The UK's IPO accepts priority claims from earlier applications/registrations, and UK applications can be used as priority applications. Later applications can be made after the end of this priority period, but those later applications will simply be dated at the date of the application.

The trademark registration symbol ® should only be used in the UK after a valid UK registration has been obtained. The ^TM symbol can be used to indicate a trademark before an application is filed or while it is pending. This applies to use on products or packaging, as well as on a website directed at the UK [5; 6].

Designs can protect the appearance, shape, configuration or decoration of the whole or part of a product. Requirements for protection include that the design is new, and creates a different overall impression to any earlier design already in the market. The design should not be made public before registration is sought.

In the UK, designs may be protected by a mixture of registered and unregistered rights, which vary in their subsistence, scope and duration.

Designs that are new and have individual character can be registered with the UK's IPO. The UK is also a member of the Hague Agreement for the international registration of industrial designs [9], allowing the UK to be a designated state in such an application.

Three-dimensional and two-dimensional designs can all be protected as a registered design. Registered designs are monopoly rights (which can be enforced without copying having occurred). The term of protection is 25 years provided that renewal fees are paid.

The law in the UK provides for two types of unregistered design right to arise automatically where qualifying criteria are met:

- “UDR” protects the shape and configuration of the whole or part of an article (external or internal) that is original, recorded in a design document or is the subject of an article made to the design, and created by a qualifying person. It will not subsist in a method or principle of construction, the shape or configuration of an article that “should fit” another, or the appearance of an article that “should match” another; nor does it protect 2D designs such as ornamentation or surface decoration (which may be protected by copyright). Protection is the lesser of 15 years from first recording in a design document or first making to the design, or 10 years from first making the article available for sale or hire (dates calculated from the end of the relevant calendar year). The owner has exclusive rights to reproduce the design for commercial purposes. During the final five years of the term, licences of right are available.

- “Supplementary unregistered design” protects designs that are new and have individual character (i.e., like a registered design), and so can protect 3D and 2D designs. Such protection lasts for a period of three years from the date on which the relevant design is first made available to the public (provided this is not before 31 December 2020).

Designs can be registered through the UK's IPO. Before launching or applying to register a design it is advisable to conduct a clearance search. Once registered, designs can be renewed (on payment of renewal fees) every five years for up to 25 years. Since 1 January 2021, EU registered designs are no longer valid in the UK [5; 6].

A trade secret is the information or know-how belonging to a company that is kept confidential due to the value it brings to the business. Typical examples of a trade secret may be a secret ingredient within a recipe (or the recipe as a whole), or a chemical compound that is the 'secret sauce' within a product or a process. The decision to maintain an innovation as a trade secret is primarily driven by the need to preserve a competitive advantage against others through secrecy, for example; company 'X' does not want the group of companies 'Y' to know about invention 'Z' because invention 'Z' may be a key differentiator between the companies.

Up until 2018, there was a great uncertainty as to what qualified as a trade secret, how to seek protection and when you should choose to protect an innovation as a trade secret over and above pursuing a patent. The Trade Secrets Directive now provides greater clarity. The Trade Secrets Directive was drafted by the European Council and it was later implemented in the UK in June 2018 through the Trade

Secrets Regulation. Their purpose is the protection of undisclosed know-how and business information from being unlawfully acquired, used and disclosed. It is also intended to standardise national laws and remedies related to trade secrets in EU member states. These Regulations complements existing common law, which will continue to apply, addressing any gaps in the law and clarifying procedural implementation across jurisdictions. Previously, confidential information was protected through case law. In order to successfully claim for a breach of confidence, it will still be necessary to establish the following:

- the information has the necessary quality of confidence (i.e. it is not generally known by the general public, or persons who specialise in that subject);

- the information was shared in circumstances imparting an obligation of confidence (i.e. a reasonable person would have realised that the information was being given in confidence);

- there has been an unauthorised use of that information to the detriment of the party communicating it (i.e. it has been used by the recipient for purposes beyond the consent of the owner, or it has been disclosed to third parties without the owner's consent).

Trade secrets are redefined by the Regulations as being information that:

- is secret - i.e. is not generally known among, or readily accessible to, persons within the circles that normally deal with this kind of information;

- has commercial value because it is secret; and

- has been subject to reasonable steps to keep it secret by the person lawfully in control of the information.

Under the Regulations, the limitation period for bringing a claim is six years, either from the day that the unlawful use of trade secrets ceases or the day of knowledge of the trade secret holder, whichever is later. It is also stipulated that trade secrets should be protected during court proceedings [10].

International researchers also point on security of trade secrets in the context of new working conditions connected with the COVID-19. During the pandemic, the world community received another reason for its internal changes in different directions to give a quick response to its continued existence and development in the fight against COVID-2019 [11, p. 439]. The coronavirus pandemic had unexpected consequences in the business world, including particular concerns on information security issues, as these types of issues can have an immense impact on the intellectual property of the establishments, especially when the company's core assets contain a trade secret [12].