Patents

The UK patent system is primarily governed by the Patents Act 1977 and Patents Rules 2007. 

A UK patent may be obtained by first filing a patent application at the UK-IPO or entering an international patent application directly in the UK, in which the UK-IPO will act as the granting authority. Alternatively, protection in the UK may be obtained from an application filed at the European Patent Office (EPO). For the most part, patents granted by the EPO that have effect in the UK are treated the same as UK national patents. 

The UK is a Patent Cooperation Treaty 1970 member and also participates in the Global Patent Prosecution Highway Program, a fast-track patent examination programme. 

A UK patent has a maximum lifetime of 20 years from the date of filing, and it must be renewed annually to remain in force once granted. The 20-year term may not be extended, but a Supplementary Protection Certificate (SPC) may be granted in respect of a patented active ingredient, or mixture of active ingredients, of a medicinal or plant protection product. 

The UK is not a member of the Unified Patent Court (UPC), and so the jurisdiction of the UPC does not extend to the UK. However, patent attorneys that are qualified to represent applicants before the EPO who are based in the UK and who hold the appropriate qualification may represent patent proprietors before the UPC. 

Design right

The UK design right system is primarily governed by the Registered Designs Act 1949 and the Registered Designs Rules 2006.

Registered design rights can be applied for at the UK-IPO to protect the overall visual appearance of new and distinctive products. Protection can be obtained for the whole or part of a product resulting from the lines, contours, colours, shape, texture or materials, or ornamentation of the product itself. An application is examined only for formal requirements. The substantive requirements of novelty and individual character of a design may be challenged through the courts or the UK-IPO tribunal. 

The UK is a member of the Hague Agreement for the International Registration of Industrial Designs, thereby UK registered design right may be obtained through designation of an international design application. 

There is also a degree of protection conferred in the UK for designs that are not registered. These Unregistered Design Rights (UDRs) are primarily governed by the Copyright Designs and Patents Act 1988, and they arise automatically when a design is created or a product made to the design is first sold. UK UDRs provide protection for the shape and configuration of an original design. 

Registered designs have a maximum term of 25 years from the date of filing and must be renewed every five years. UDRs expire whichever ends first of: 10 years after a design article was first sold; or 15 years after the design was created. These terms may not be extended. 

Supplementary unregistered design right akin to registered design right may also arise automatically. The right lasts for three years from when the design is first disclosed in the UK. First disclosure in the EU excludes supplementary unregistered design right in the UK, and vice versa. Simultaneous disclosure of a design in the EU and UK is not possible. 

EU community registered designs (CRDs) and unregistered community designs are not included in the territorial scope of the UK, except for designs disclosed in the UK or EU before 1 January 2021. Pre‑existing CRDs have been automatically converted into equivalent UK registered designs. 

Licensing and other instruments

Registered designs, unregistered design rights and patents are intangible property rights that may be sold, assigned and licensed. Patents may also be mortgaged. Licences, assignments and mortgages are registrable against registered rights. 

Licence agreements generally fall into one of: exclusive licences, non-exclusive licences or licences of right. Licensees can register their licence against a patent or registered design at the UK‑IPO, provided they can furnish proof of the licence. Licensees do not require permission from the licensor. 

Exclusive licensees of a patent have the right to bring proceedings for infringement of that patent committed after commencement of the licence. Exclusive licensees of a registered design have all the same rights and remedies as an owner of a registered design, except against the owner. 

Compulsory licences may be granted by the government for patents upon request to the UK-IPO tribunal or court with appropriate justification. An applicant for a compulsory licence must have sought first to obtain a licence from the proprietor. There are several grounds for granting a compulsory licence including, for example, instances where the invention is not being exploited to the fullest extent that is reasonably practicable. 

Patent owners in the UK can endorse their patent as a ‘licence of right’, which is then marked on the patent register. Proprietors of patents so endorsed must grant a licence to anyone who wants one. The UK‑IPO will reduce the renewal fee by 50% for ‘licence or right’ endorsed patents.

Proprietors of unregistered design right must provide a licence of right to anyone who requests one in the last five years of protection. 

Enforcement 

There are several forums in which a UK patent or design right may be enforced or challenged. All intellectual property rights in the UK may be enforced in the courts in any of the three judicial systems. Rights holders should also consider alternative dispute resolution, which is encouraged by the court system. 

UK courts will hear infringement and validity in the same hearing, but court hearings are split into a hearing for the liability and a hearing to decide the quantum for an award of damages or an account of profits and costs. 

Actions for intellectual property infringement are typically started in the High Court or the Intellectual Property Enterprise Court (IPEC), which are London-based courts applying the law of England and Wales. A claim for damages for cases heard before the IPEC is capped at GBP 500,000 for cases allocated to its multi-track. The IPEC also has a small-claims tracks with a damages cap of GBP 10,000. The damages and costs that may be awarded by the High Court are uncapped. Costs awards at the IPEC are capped at GBP 60,000 for the final determination of a claim and GBP 30,000 for the enquiry as to the quantum of damages. 

The UK-IPO acts as a tribunal in which patent disputes between parties may be heard, including infringement proceedings, requests for a declaration of non-infringement, and revocation actions. The tribunal also hears disputes about proceedings before the UK-IPO (e.g. disputes about the examination of an application). Decisions from the UK-IPO tribunal are appealable to the High Court.

The validity of patents granted by the EPO, which have effect in the UK, may be challenged centrally within a nine‑month window following grant. Opposition could lead to revocation, amendment or maintenance of the patent, which would impact on the scope of the UK part. 

Civil action in the courts may be brought for design rights. However, there is also a criminal offence for intentional copying of a registered design. Referrals to Trading Standards, for example, can be made for criminal registered design right infringement. 

Trade marks are registrable rights in the UK. The trade mark system in the UK is primarily governed by the Trade Marks Act 1994 and Trade Marks Rules 2008. 

A trade mark can be applied for at the UK-IPO to give the proprietor the exclusive right to use the registered trade mark on those goods or services for which it is registered. Refusal of the application may only be based on ‘absolute grounds’, such as the distinctiveness of the mark and policy-based exceptions to the registrability of the mark, and not on ‘relative grounds’. Trade marks can last indefinitely provided they are renewed every 10 years (there is no limit on how many times they can be renewed).

Third parties may oppose the registration of a trade mark application on absolute and/or relative grounds, within two months from publication of the trade mark. 

International applicants may obtain trade mark protection in the UK under national treatment doctrines by applying for a trade mark directly at the UK-IPO or via a Madrid protocol application designating the UK. Trade marks operate on a first-to-file basis, but earlier common law passing off rights can be used to oppose or invalidate a trade mark.

UK trade mark law is largely harmonised with EU trade mark law. However, since 1 January 2021 an EU trade mark will not cover the territorial scope of the UK and pre-existing EU trade marks were automatically converted into equivalent UK trade marks. After 1 January 2021, all new filings for a trade mark must be separately sought in the EU and UK. 

The UK-IPO does not require proof of use during examination or at renewal, but trade marks must be applied for in good faith, and applicants must declare a bona fide intention to use the mark applied for in relation to the goods and services for which protection is sought. 

An individual may also acquire unregistered trade mark protection for a mark which is used to distinguish its goods or services but has not been registered at the UK-IPO. In the UK, unregistered trade marks are protected under common law, which means that a business can rely on its use and reputation to prevent others using a similar mark in connection with similar goods and services.

Licensing and other instruments 

Trade marks can be sold, assigned, mortgaged and licensed. There is no provision for compulsory licensing of trade marks. It is not mandatory to register a licence at the UK-IPO against a trade mark, but exclusive licensees should consider doing so. 

Liability for the goods or services sold under a trade mark by a licensee could fall on the trade mark owner. The trade mark owner should consider regulating through a licensee agreement the quality of the goods/services sold under the licensed trade mark including rights to inspection. 

It is sometimes the case that trade mark licences are geographically constrained. Offering a geographic licence for a trade mark can be used as a useful negotiation tool during opposition of a trade mark. 

Enforcement

A third party may initiate a revocation or invalidity action on a trade mark or classes thereof at the trade mark tribunal or the courts. Trade marks or specific classes of a trade mark are subject to revocation when there has been an uninterrupted period of five years of non‑use of the trade mark in a class in the UK at any point in the life of the trade mark. 

Decisions from the trade mark tribunal are appealable to the High Court or to an appointed person. Appointed person decisions are final.

Civil trade mark infringement actions may be brought before the courts. Trade mark infringement can also involve a criminal offence, particularly where counterfeit goods are concerned. Cases of trade mark infringement involving significant harm to the UK economy and the general public may be referred to The Police Intellectual Property Crime Unit. Trading Standards will also investigate and seek to prosecute intellectual property crime including trade mark infringement involving counterfeiting. 

Copyright is an automatic right in the UK that arises upon creation of an original work and consequently requires no registration. Copyright law is primarily governed by the Copyright, Designs and Patents Act 1988 (miscellaneous provisions). This provides the creators of literary, dramatic, musical, artistic works, sound recordings, broadcasts, films and typographical arrangement of published editions with rights to control the ways in which their material may be used.

Duration

The duration of copyright right depends on the category of the work. 

Authorial work rights last 70 years plus life of the author. An exception is provided for orphan works which last for 70 years from the date of creation, or if published within that period, 70 years from publication. 

Computer‑generated authorial works last 50 years from the date of creation.

Sound recording rights last 50 years from the date when the recording was made, or if published within that period, 70 years from publication. 

Film rights last for 70 years plus life of the last to die of the principal director, the screenplay or dialogue author, or the composer of music created for and used in the film. Copyright in orphan films has the same duration as the copyright in orphan authorial works. 

Typographical arrangements rights last 25 years from publication. 

The duration of certain copyright relating to ‘entrepreneurial rights’ arising from non-UK nationals are limited to the duration of copyright in the country in which the creator is a national. 

Database rights

Database rights protect the contents of a database. A database does not have to be original for it to qualify for database rights, but there needs to have been a substantial investment in obtaining, verifying or presenting the data.

Database rights were first introduced throughout Europe by the EU Database Directive, which was subsequently implemented into UK law via the Copyright and Rights in Databases Regulations 1997. Since leaving the EU the reciprocal recognition for new database rights between the EU and UK has ceased. However, the UK and EU have agreed to continue the reciprocal recognition of rights created before 1 January 2021. These remnants of EU legislation will continue to last 15 years from the creation or publication of a database. Databases created by UK owners on or after 1 January 2021 are required to rely on alternative means of protection in the EEA; for example, licensing agreements or copyright, where applicable.

Licensing and other instruments

Copyright works and database rights can be sold, assigned and licensed. 

There are several licensing mechanisms in which copyright holders may obtain revenue for their works. Copyright holders can either directly license their works to licensees, or alternatively they can join licensing bodies and collecting societies who will administer and license the copyright on their behalf in exchange for royalties. Collecting societies are regulated in the UK under the Collective Management of Copyright (EU Directive) Regulations 2016.

Exclusive licensees of copyright have the same rights and remedies as copyright owners, except against the owner. 

Copyright owners may also opt to offer a licence to all members of the public through a public licence, which may impose terms on the licensees.

Enforcement 

Copyright infringement can be brought before the civil courts. 

Simple cases of copyright infringement involving damages of up to GBP 10,000 are typically brought before the small claims track of the IPEC. Rights holders such as photographers generally represent themselves in the small claims track. More complex cases and/or cases involving a higher quantum of damages can be brought before the IPEC multi-track or before the High Court, wherein rights holders should be adequately represented. 

There are several exceptions to copyright and database rights including under the umbrella of fair dealing. For example, research and private study, criticism or review, or news reporting.

In certain circumstances, copyright infringement such as piracy amounts to a criminal offence under the Copyright, Designs and Patents Act 1988. Serious copyright infringements can be reported to the dedicated police unit and to Trading Standards. 

Licensing disputes between copyright holders and collective licensing organisations can be resolved through the Copyright Tribunal. 

On the whole, this is not applicable. However, under the common law of passing off, so-called ‘unregistered trade marks’ may provide protection to the get-up of a product. Passing off rights require there to be goodwill and reputation in in the goods of a trader. Unregistered design right also protects the shape and configuration of three-dimensional objects. 

On the whole, this is not applicable. However, common law remedies for breach of confidence or the tort of passing off may be available, as well as the protection of a name through a trade mark. The UK also provides for a right to privacy in certain photographs and films under the Copyright Designs and Patents Act 1988.

Trade secrets relate to commercially valuable confidential information, such as technical know-how and commercial data, which has commercial value because it is secret. Reasonable steps to keep information secret must be taken by the person lawfully in control of the information, in order for the information to acquire the statutory protections afforded to trade secrets. 

Acquisition, use and disclosure of trade secrets are each protectable under UK law, namely under The Trade Secrets (Enforcement, etc.) Regulations 2018 and the Computer Misuse Act 1990. 

Trade secrets are protectable for as long as the confidential information is kept secret and the information remains commercially valuable. 

Breaches of confidence are also protected in the common law. Information is protectable in the common law provided that it has the necessary quality of confidence and it has been imparted in circumstances importing an obligation of confidence. Unauthorised use of that information that is detrimental to the information owner can give rise to a breach of confidence claim. 

Licensing and other instruments 

Trade secrets may be sold, assigned and licensed like other intangible property. As it is important that the trade secret remains secret, licence agreements should be drafted to oblige the maintenance of secrecy on the licensee. 

Enforcement

Owners of trade secrets may apply to the court for interim remedies, such as interim injunctions prohibiting: provisionally, the use of or disclosure of a trade secret; placing of infringing goods on the market; and the seizure or delivery up of suspected infringing goods. Final remedies from the court include orders for injunctions and correction measures. Correction measures include, for example, recalls of infringing goods, destructions of the same, and deprivation of the infringing quality of an infringing good. 

A claimant seeking interim remedies cannot do so through the IPEC small claims track, and instead should pursue a claim through the IPEC multi-track or High Court. 

The UK provides for moral rights under the Copyright, Designs and Patents Act 1988, and it is a member of the Berne Convention for the Protection of Literary and Artistic Works. 

Authors of works in the UK have the right to attribution, the right to object to derogatory treatment of a work, the right to object to false attribution, and the right to privacy of certain photographs and films. These non-economic rights in copyright cannot be sold, but the rights pass onto the author’s estate and the author may waive their moral rights. The right to attribution must be asserted by the author in order for the moral right to subsist. 

Employees generally have no automatic moral rights to employee-created works. 

Moral rights generally last the duration of the copyright, except for the right to object to false attribution, which lasts 20 years from the death of the author. 

• The UK has a scheme for the protection of plant breeder rights, i.e. for new plant varieties that have been bred. 
• The UK has a scheme for the protection of semiconductor topography rights, which are a form of unregistered design right.
• Employers are generally first owners of intellectual property in the UK when intellectual property has been created during the course of employment. However, employees can apply to the court or UK-IPO tribunal for compensation from their employer when an invention for a patent has been of ‘outstanding benefit’ to the employer. 
• Unjustified threats of infringement proceedings regarding the assertion of patents, registered and unregistered design rights, and/or trade marks are potentially actionable before any of the three judicial courts systems of the UK, as provided for by the Intellectual Property (Unjustified Threats) Act 2017. Rights holders should seek legal advice before contemplating legal action.
• Registration of instruments involving the assignment or an exclusive licence of (at least) trade marks or patents should be completed within six months of the date of the instrument. Failure to register such instruments by that deadline could result in a deduction in a costs award to a successful litigant, because the courts may only award costs incurred from the date in which that instrument concerning the right asserted is registered.