What’s it all about?

Intellectual property (IP) rights offer protection for intangible assets which are original creative works. The four most important IP rights (IPRs) are patents, trade marks, design rights and copyright but IPRs also include plant varieties, performers’ rights and database rights. Each IP right protects a different aspect of a creative work.

A patent is an exclusive right granted for an invention which can be a new product or a new process. Design rights protect aspects of the visual appearance of a product including its shape. Trade marks protect brands and allow traders to distinguish the goods and services they offer from those of their competitors. Patents, trade marks and registered design rights provide monopoly protection. Copyright is not a monopoly right but prevents certain original works such as literary and artistic works, music, film, sound recordings and broadcasts from being copied.

Technology, media and telecommunications (TMT) is a sector-focused discipline. The diverse nature of TMT means a lawyer will have to be able to advise on a wide range of issues in these sectors. TMT lawyers act for clients including production companies, distributors/broadcasters, channel providers, content providers, finance providers, technical platforms or service providers and government/other official bodies. As the speed of convergence increases traditional media business models are fast disappearing and businesses are increasingly focusing on content ownership. Many new business models are cross-border and cross-media, which raises issues relating to the use and distribution of content.

The working culture

IP lawyers have a diverse practice. Clients range from creative artists to multinational pharmaceutical companies. On contentious matters IP lawyers often work in a team comprising one or more partners and several associates. On the non-contentious side smaller teams are more common but may well include colleagues from other departments. Given the international presence of many key clients in the IP sector and the fact that certain IPRs are harmonised across the EU there may well be travel opportunities, either when working with multinational companies or on secondment to overseas offices.

For their part, TMT lawyers are expected to provide industry-specific advice across a range of legal disciplines such as commercial advice on IT transactions, dispute resolution, contract management, corporate restructuring, business growth and financing, outsourcing, employment and competition law. TMT lawyers must ensure that they have an up-to-date understanding of terminology and developments in their specialist sector.

What other practice areas do IP/TMT lawyers work most closely with?

The overlap between IP and competition law is becoming more important as monopolies granted by IPRs are inherently anti-competitive. Traditionally, overlap arose in respect of the licensing of IPRs but more recently issues have arisen in respect of arrangements or agreements that seek to curb parallel trade in pharmaceuticals in Europe. IP/TMT lawyers also frequently work with commercial, corporate, employment and banking teams.

What phrase is an IP/TMT lawyer most likely to use and what does it mean?

The phrase ‘It’s a patent, not a p-ay-tent’ might be useful to help people distinguish between a form of IP protection and the shiny coating on shoes.

Skills required

As a trainee in an IP department you are likely to experience a wide variety of work ranging from heavy duty patent litigation for multinational high-tech corporations to getting involved in advising start-up businesses on the protection of their IPRs. There is no doubt that an interest in science and technology is a prerequisite for success if you have an interest in patents.

Due to the specialised nature of some of the work involved in IP as well as the contrast with matters you are likely to encounter in other legal departments, being a trainee can be a steep learning curve. That said, along with gaining an appreciation of the particular statutory and regulatory framework within which the IP sector exists, many of the tasks you will be given as a trainee will be similar to those in other departments. You will be expected to show an eye for detail when reviewing drafts of commercial agreements, as well as party and client correspondence. You will hone your legal research skills in the process of briefing your colleagues on relevant aspects of constantly changing UK and European regulations in this field and you will need to display analytical and problem-solving capabilities when tasked with drafting licences for clients looking to exploit their IPRs. Your ability to organise yourself and others will be tested by preparing and managing documentation ahead of court hearings and client meetings.

Recent developments

The IP and TMT arenas are fast-paced. In recent years they have been converging, which means lawyers have to expand their knowledge and adapt quickly by gaining new skills.

A recent development likely to have a significant effect on the IP and TMT arenas is the Digital Economy Act 2010 which seeks to protect the creative economy of the UK.

The act includes provisions in relation to communications, infrastructure, copyright licensing and online activities.

It was accelerated through Parliament in the ‘washing-up’ period as one of the last pieces of Labour legislation and is still the subject of much debate. Proceedings seeking a judicial review of the act have been brought in relation to whether the provisions conflict with EU legislation including that concerning data protection and electronic privacy. Ofcom, the regulatory body for the communications sector, has been tasked with developing a code of practice to govern the act’s initial obligations phase.

Paul McMahon (below), Trainee, and Emily Peters, Associate, Bird & Bird