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IP A-Z

Like most areas of law, Intellectual Property can appear daunting and complex. There are a great many practice areas, subjects and procedures. The SH&P “A-Z” Intellectual Property glossary is a free and easy to use glossary of legal terms commonly used and associated with IP. We hope that it will help you better understand this topic. All of the entries include contact details for SH&P expert advisers. Alternatively, you can request a free, no obligation, IP Consultation and Review here if you require more information or have a particular issue you would like us to help you with.

The Paris Convention for the Protection of Industrial Property was signed in 1883 and has been revised on a number of occasions over the years. It is an international agreement that applies to patents, trade marks, designs and other intellectual property rights.

The most important provisions of the Paris Convention are:-

  • Reciprocity – With regard to intellectual property rights, each contracting state will extend the same protection to nationals (i.e. persons and legal entities) of other contracting states as it grants to its own nationals.‌
  • Priority – When an application for a patent, trade mark or design is filed in one contracting state, the applicant is given a period of time (12 months for patents; 6 months for trade marks and designs) within which to file corresponding applications in other contracting states that claim priority from the initial application. This means that the subsequent applications benefit from the filing date of the initial application.

Passing off is a common law tort practiced in the UK and in other countries such as Australia and New Zealand.

It enables one party to enforce their rights against another under circumstances where those rights are not officially registered, but rather have been subject to use for a period of time. The trader on the receiving end of a passing off action would be accused of misrepresenting the products or services of its accuser, thereby giving the impression to the consumer that those products or services were its own. The law therefore protects the goodwill of a trader from having its products or services misrepresented on the market, leading to detriment to its business.

There is a very strong body of UK case law on the subject of passing off. Over time, this has produced the “Classic Trinity” test which was set out in the case Reckitt & Colman Products Ltd v Borden Inc [1990] by Lord Oliver. In general, for a passing off case to succeed, the following three criteria must be met:

  1. The plaintiff must show that he has an established goodwill in the business name or right upon which he relies; and
  2. He must further show that the actions of the defendant have caused there to be a misrepresentation, such that there is (or could be) genuine consumer deception as to which trader is providing the product or service in question; and
  3. As a consequence of 1 and 2, there must be actual damage to the plaintiff’s business or a reasonable likelihood of damage, if no damage had occurred to that point. Invariably, such damage would amount to loss of trade and sales for the plaintiff, but could also mean damage to its business reputation

The burden is entirely on the plaintiff to show that all three points above are satisfied in order to succeed with a passing off case in court. Since evidence and argument of fact would be needed the bringing to court of a passing off action can be a time-consuming and expensive exercise. Therefore, it is generally unwise for any business to rely on their common law rights without giving thought to officially registering their rights through trade mark registration. By registering instead, this has a far greater deterrent factor and removes much of the evidential burden in trade mark infringement proceedings compared to a passing off action. Often, both actions can be brought simultaneously.

  • Ann Lynch

    Brands & Trade Marks

    Ann joined the firm in 2014 bringing with her almost 20 years’ experience in…
  • David Powell

    Brands & Trade Marks, Domain Names, Websites & E-commerce

    David is a Trade Mark Attorney and a partner of SH&P, which he joined…
  • Jon Welfoot

    Brands & Trade Marks

    Jon joined the firm in 2000. He is an experienced Trade Mark Attorney and…
  • Jonathan Sutton

    Brands & Trade Marks

    Jon has been with SH&P since 1996. Prior to joining SH&P Jon worked as…
  • Julie Gonard

    Brands & Trade Marks

    Julie joined SH&P in 2016, shortly after qualifying with distinction as a UK and…
  • Peter Cornford

    Brands & Trade Marks, Product Design & Copyright

    Peter has worked as a trade mark lawyer for almost 30 years. His experience…
  • Robin Webster

    Brands & Trade Marks, Domain Names, Websites & E-commerce

    After graduating with a degree in Mechanical Engineering from Cardiff University in 1992, Robin…
A patent is an intellectual property right that protects inventions, namely, products or processes. Once a patent has been granted, and in return for having provided a full disclosure of the invention in their patent application, the owner has the right to take action to stop others from making or using that invention without their consent.

Patents in the United Kingdom (and many other countries) have a maximum term of 20 years – subject to their annual renewal. Once a patent has expired it becomes property of the public domain and others can make use of the invention. Like other forms of property, patents can be bought/sold, licensed and mortgaged.

In order to be patentable in the UK, the invention must be new (i.e. have novelty, in the sense that it has not previously been made available to the public), involve an inventive step (i.e. not be an obvious modification of something already known) and be capable of industrial application (i.e. it can be made or used in any kind of industry). Certain types of subject matter are excluded from patent protection in the UK, including:

  • Discoveries, scientific theories and mathematical methods;
  • Aesthetic creations (literary, dramatic, musical or artistic works);
  • Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
  • Presentations of information.

An application for a patent needs to include a written description of the invention concerned. This must give sufficient detail about the invention to enable it to be understood and reproduced by a person who is skilled in the relevant field of technology. The description may be accompanied by drawings of the invention. A patent application also contains one or more claims which define the invention in terms of its distinctive technical features and, assuming that it is eventually granted, will determine the scope of protection afforded by the patent.

It is important to be aware that an application will always be published even if it is never granted. Until grant, a patent is often denoted as “patent pending”. A qualified patent attorney is able to advise on the prospects for patentability of an invention and is skilled in the preparation and filing of a patent application.

Patents effective in the United Kingdom can be obtained either through the UK Intellectual Property Office (UK IPO), which grants national UK patents, or the European Patent Office (EPO), which grants European patents that can be made effective in the UK. If patent protection in other countries is of interest, separate applications may be filed in each of the countries concerned or the most cost-effective approach may be to file an International application under the PCT system.

  • Ceili Williams

    Inventions & Innovations, Product Design & Copyright

    Ceili enjoys the complexities of the role of a patent attorney: getting to grips…
  •  

  • Joanne Heaton

    Inventions & Innovations

    Jo joined the firm as a qualified attorney at the beginning of 2000. She…
  •  

A patent attorney is an attorney who specialises in patent law, handling the preparation and filing of patent applications in the UK and elsewhere and also advise on the infringement and validity of patents.

“Patent attorney” is a protected title and so can be used only by those who are professionally qualified by examination. All qualified patent attorneys are regulated by an independent regulatory body, the Intellectual Property Regulation Board (IPReg). This sets them apart from others operating in this area, such as “patent consultants” or “patent advisors”, who are unregulated and are unlikely to have any professional qualifications.

Chartered Patent Attorneys are members of The Chartered Institute of Patent Attorneys, which was founded in 1882 and incorporated by Royal Charter in 1891.

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  • Ceili Williams

    Inventions & Innovations, Product Design & Copyright

    Ceili enjoys the complexities of the role of a patent attorney: getting to grips…
  • Joanne Heaton

    Inventions & Innovations

    Jo joined the firm as a qualified attorney at the beginning of 2000. She…
  •  

Introduced in the United Kingdom in April 2013, the Patent Box is a tax relief system which entitles companies to pay a reduced rate of corporation tax on a proportion of the profits that are generated from patented inventions.

In order to qualify for the Patent Box, a company must be liable for payment of corporation tax in the UK.  They must also either be the sole proprietor of the patent concerned or the holder of an exclusive licence under the patent.  The Patent Box applies to national UK and European patents (i.e. those granted by the EPO) and national patents granted in a number of the European Economic Area (EEA) countries.

The reduced tax rate cannot be claimed before the patent has been granted.  There is also a requirement that the company must have carried out “qualifying developments” in relation to the patent (e.g. significantly contributing to creating or developing the patented invention).

Profits qualifying for the reduced rate of corporation tax include those arising from:-

  • The sale of products incorporating one or more inventions covered by the patent
  • The sale of spare parts for such products.
  • Royalties received for the use of an invention covered by the patent.
  • Damages paid by third parties for infringing the patent.
  • The sale of the patent.

In the case of a patent relating to a process, income from a licence to use that process would qualify.  If a company uses its own patented process, a notional arm’s length royalty may be calculated.

Patent attorneys and tax accountants are able to advise on the Patent Box.

In the United Kingdom, a patent is infringed by the unauthorised manufacture, use, offer for sale or importation of the invention concerned. The scope of the protection afforded by a patent is determined by the wording of its claims.

Infringement proceedings cannot be commenced until a patent has been granted. In England and Wales, patent infringement actions take place in the Patents Court or the Intellectual Property Enterprise Court (IPEC) – both are within the Chancery Division of the High Court. The IPEC is more appropriate for cases that are less complex and of smaller value (relief is capped at £500,000 and costs are capped at £50,000).

The relief available to the proprietor of a patent that is held to have been infringed includes: a) the granting of an injunction; b) an order for the delivery up or destruction of the infringing products; and either of c) damages or d) an account of profits.

By agreement between the parties, patent infringement disputes may be heard at the UK Intellectual Property Office (UKIPO). However, relief available at the UKIPO is limited to damages and a declaration that the patent is valid and has been infringed.

The Patent Cooperation Treaty (PCT) is a system that makes it possible to seek patent protection simultaneously in a large number of countries by filing a single application. It is administered by WIPO.

For applicants from the United Kingdom, a PCT application (also referred to as an “International application”) can be filed in English at the UK IPO. The application automatically designates all of the PCT contracting states (more than 150 countries). There are two stages to a PCT application, namely:-

  •  The International Phase – An International Search Report (prepared by the EPO for PCT applications filed through the UK IPO) will be issued. The application will be published 18 months after its priority date. There is the option of requesting an International Preliminary Examination, but the result is non-binding.
  • The National/Regional Phase – At this stage, the applicant needs to choose (from all of the PCT contracting states) the countries/regions in which they wish to pursue patent protection and then take the appropriate action. For example, the national phase could be entered in the UK, China, Japan and the USA (which would require taking steps at the national Patent Offices of each of those countries) and/or the regional phase entered in Europe (which requires taking steps at the EPO). Following entry into the national/regional phase, the PCT application ceases to exist as such and is then processed as a separate application in each country/region according to their respective laws and procedures – for example, a further search and examination may be conducted.  Assuming that the outcome is successful, the resulting patents will be granted by the national/regional Patent Offices concerned.

A major advantage of the PCT system is that it enables applicants to initially cover a large number of countries in a single application and so postpone a decision on the countries in which they actually wish to proceed (and therefore defer the associated substantial costs, such as translations) until the deadline is reached for entering the national/regional phase.

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  • Ceili Williams

    Inventions & Innovations, Product Design & Copyright

    Ceili enjoys the complexities of the role of a patent attorney: getting to grips…
  • Joanne Heaton

    Inventions & Innovations

    Jo joined the firm as a qualified attorney at the beginning of 2000. She…
  •  

A plaintiff is the name given to a party who brings a lawsuit (also sometimes known as an “action”) before a court. By doing so, the plaintiff seeks a legal remedy against a defendant and asks the court to make a judgment on the basis of the facts of a case. If successful, the court will issue judgment in favor of the plaintiff and make the appropriate court order (for example, an order for damages to be paid by the defendant to the plaintiff).

The term “Plaintiff” is used in civil cases in most English-speaking jurisdictions, although in England & Wales a plaintiff is often referred to instead as a “claimant”. In criminal cases, the prosecutor brings the case against the defendant, but the key complaining party is often called the “complainant”.

  • Ann Lynch

    Brands & Trade Marks

    Ann joined the firm in 2014 bringing with her almost 20 years’ experience in…
  •  

  • Joanne Heaton

    Inventions & Innovations

    Jo joined the firm as a qualified attorney at the beginning of 2000. She…
  • Ceili Williams

    Inventions & Innovations, Product Design & Copyright

    Ceili enjoys the complexities of the role of a patent attorney: getting to grips…
  •  

  • David Powell

    Brands & Trade Marks, Domain Names, Websites & E-commerce

    David is a Trade Mark Attorney and a partner of SH&P, which he joined…
  • Jon Welfoot

    Brands & Trade Marks

    Jon joined the firm in 2000. He is an experienced Trade Mark Attorney and…
  • Jonathan Sutton

    Brands & Trade Marks

    Jon has been with SH&P since 1996. Prior to joining SH&P Jon worked as…
  • Julie Gonard

    Brands & Trade Marks

    Julie joined SH&P in 2016, shortly after qualifying with distinction as a UK and…
  • Peter Cornford

    Brands & Trade Marks, Product Design & Copyright

    Peter has worked as a trade mark lawyer for almost 30 years. His experience…
  • Robin Webster

    Brands & Trade Marks, Domain Names, Websites & E-commerce

    After graduating with a degree in Mechanical Engineering from Cardiff University in 1992, Robin…
A Power of Attorney is a written legal document which when executed, authorises one party to carry out certain actions on your behalf.

It is common for overseas legal attorneys to request a signed Power of Attorney in order for them to act on behalf of a client. Usually, a Power of Attorney will allow the attorney to undertake tasks and sign and submit documents on a client’s behalf which can be more practical and cost effective than authorising every individual action the attorney needs to perform.

It is possible to give the attorney wide powers to enable them to deal with all IP matters and any unforeseen matters that may arise. However, should you wish for an attorney to only act for a specific IP matter, it is usually possible to limit the Power of Attorney accordingly.

Most foreign attorneys will provide a bilingual Power of Attorney for execution which enables the client to understand what matters they are providing authorisation for.

The person signing the Power of Attorney must have authorisation to sign on behalf of the company e.g. Company Secretary. Some territories will also ask that the Power of Attorney be signed in the presence of a Notary Public. If the Power of Attorney is being signed in the presence of a Notary in the UK, the document will also need to be legalised with Apostille by the Foreign and Commonwealth Office in order for the document to be used in the country for which it is required.

Furthermore, there are occasions where Powers of Attorney will require legalisation up to the Consulate of the country for which it is to be used. The Notary will usually arrange for this legalisation to take place on your behalf.

  • Ann Lynch

    Brands & Trade Marks

    Ann joined the firm in 2014 bringing with her almost 20 years’ experience in…
  •  

  • Joanne Heaton

    Inventions & Innovations

    Jo joined the firm as a qualified attorney at the beginning of 2000. She…
  • Ceili Williams

    Inventions & Innovations, Product Design & Copyright

    Ceili enjoys the complexities of the role of a patent attorney: getting to grips…
  •  

  • David Powell

    Brands & Trade Marks, Domain Names, Websites & E-commerce

    David is a Trade Mark Attorney and a partner of SH&P, which he joined…
  • Jon Welfoot

    Brands & Trade Marks

    Jon joined the firm in 2000. He is an experienced Trade Mark Attorney and…
  • Jonathan Sutton

    Brands & Trade Marks

    Jon has been with SH&P since 1996. Prior to joining SH&P Jon worked as…
  • Julie Gonard

    Brands & Trade Marks

    Julie joined SH&P in 2016, shortly after qualifying with distinction as a UK and…
  • Peter Cornford

    Brands & Trade Marks, Product Design & Copyright

    Peter has worked as a trade mark lawyer for almost 30 years. His experience…
  • Robin Webster

    Brands & Trade Marks, Domain Names, Websites & E-commerce

    After graduating with a degree in Mechanical Engineering from Cardiff University in 1992, Robin…

Under the provisions of the Paris Convention, an applicant for a patent, trade mark or design has a period of time (12 months for patents; 6 months for trade marks and designs) within which to file corresponding applications in other countries which claim priority from the initial application. A claim to priority means that the subsequent application benefits from the filing date of the initial application and, consequently, will not be adversely affected by events (such as the publication of an invention, or the filing of applications by other parties) that occur during the intervening period.