Intellectual property

What’s it all about?

Intellectual property, or IP law as it’s often known, concerns intangible creations of the mind. It protects these creations through granting copyright, patents and trade marks.

The basis for legal protection lies in recognising that a creator is entitled to the ownership of his or her creation. The theory goes that this incentivises further innovation for the benefit of society. Like any property rights, IP law allows the owner to benefit from their own work and investment in that creation.

IP terminology

IP
Copyright confers a temporary exclusive right over the expression of an idea.

Copyright confers a temporary exclusive right over the expression of an idea. The idea itself is not protected, only the manner in which it is expressed. So long as a creative work meets the hurdle of originality, copyright vests automatically and (law students will be relieved to hear) without formalities; generally once a work is fixed in some material, reproducible form. The copyright holder, such as an author or artist, has the right to authorise or prohibit a third party copying the literary, artistic, dramatic or musical expression, usually for the life of the author plus seventy years. There are also related but weaker rights for performers, producers and broadcasters. Copyright attributes correct authorship and acts as a general incentive and reward tool.

A patent (“pay-tent” if you’re patently referring to glossy shoes) is a document issued upon application which describes an invention. It creates a legal situation in which the patented process or product can only normally be exploited (made, used or distributed) with the authorization of the patent owner. Patents pervade everyday life, from ball point pens to electric lighting and iphones; protecting new ways of doing something or creating a solution to a technical problem. Protection conferred by a patent is limited in time, generally to 20 years.

The traditional function of a trade mark (or trademark across the pond) is to indicate the commercial origin of goods or services. Trade marks are signs which guarantee source quality for the benefit of consumer choice and reliability. Trade marks can be unregistered (™) or registered (®) so long as they are distinctive and do not conflict with prior marks. Trade marks also act as an enforcement mechanism to discourage imitators and fraudsters from piracy and counterfeiting brand names.

Design rights protect ornamental and aesthetic aspects of an article to ensure a fair return on investment made in aesthetically pleasing designs. Design rights provide only a right to prevent copying and can last up to 25 years.

Practising IP law

An IP lawyer has the chance to operate in a niche market and at the forefront of change and innovation, especially relating to attractive industries such as music, sport and pharmaceuticals; technology, media and telecommunications (TMT).

There is no set formula to a day at the office in IP law so be prepared for surprises. Unlike other areas of law, no two clients have the same IP issue, which brings with it its own hectic challenges and excitement. An IP lawyer must be supremely adaptable; you can work with crazy inventors to start-up companies to international blue chips. They must be prepared to advise clients (and colleagues) on the constantly changing IP landscape of UK and EU regulations.

IP lawyers are usually split between the contentious and non-contentious. Work in non-contentious IP involves dealing with intellectual property rights (IPRs): licensing, assignment and co-existence agreements; registration of trade marks and designs, and filing for patents as well as performing searches and due diligence. Brand protection and management; regulatory compliance and preventing conflicts with third parties all fall under this category.

Contentious IP law involves writing consent and desist letters as well as negotiating to resolve disputes and, of course, preparing for litigation.

Some lawyers specialise in ‘hard’ IP which refers to registered IPRs such as patents. Other registered rights include registered trade marks, design rights, domain names and don’t forget plant breeder rights!

Hard IP is opposed to ‘soft’ IP matters which refer to the unregistered: copyright, database rights, unregistered trade marks and the tort of passing-off. The terms are somewhat ambiguous as some only refer to ‘hard’ IP as patent law and ‘soft’ IP as the antonym to label the rest. Generally speaking, hard IP requires more specialist, technical knowledge (which is why many firms that specialise in IP have more lawyers with a science background than average).

Skills needed

Analytical and problem solving skills should be a given for IP lawyers when drafting licences and advising clients on managing and exploiting their IPRs.

An eye for detail is crucial in considering litigation correspondence and commercial deals – lawyers must be especially diligent in knowing and having evidence of exactly the IP assets that are being purchased.

There are enough overlaps in IP law to keep happy those with an interest in other areas. Clients tend to have an international presence and with certain IPRs harmonized across the EU, there is a crucial cross-border element. This intersects with unfair competition law, especially relating to restrictions on parallel trade and EU free movement of goods provisions. Corporate, employment and other commercial areas need IP lawyers: for example, where a corporate deal contains the assets of a company which relies heavily on its IP portfolio. Knowledge of the law of confidence, trade libel and injurious falsehood wouldn’t be wasted.

Current issues in IP

Generally, IP law struggles to keep pace with technological advances which makes the discipline fast-paced and exciting. Here are a few things to look out for:

  • The Intellectual Property Act 2014. Overall, this aims to improve the efficiency of the IP rights systems; simplifying, modernising and improving protection. In relation to substantive law, a criminal offence has been created for intentional copying of a registered design while absent any contrary agreement, ownership of UK registered designs will now vest in the designer – and not in any person or company who commissioned the design.
  • Copyright law. As widely reported, the Act creates a UK parody exception which is more in line with the US doctrine of fair use. Under the Act, a parody will imitate work for a humours or satirical effect. Note ‘effect’ rather than ‘intent’ – so if you didn’t find litigation amusing before, you should start to now!
  • Patents. The Unitary Patent and Unified Patent Court (UPC) for Europe is creeping closer. This will remove the need for separate validation and translation in each Member State with a centralised court in Paris and subdivisions in London and Munich to avoid the need to litigate in each country of infringement. This should make Europe more attractive to investors but don’t even put the Champagne on ice yet – the UPC requires ratification in at least 13 countries and as of now it has just five signatures. Information regarding infrastructure, renewal fees and rules of procedure remain unresolved.
  • Trade Marks. Attempts are made to register almost everything as a trade mark. Following EU Trade Mark Directive reforms, the need for a mark to be represented graphically is replaced by the requirement of precise identification. This should allow for more flexibility in terms of registering non-traditional marks while at the same time increasing legal certainty. So expect more attempts to register anything from sound marks to smell marks and thanks to Apple, even shop-floor layouts.

Becoming an IP lawyer

IP law is not a common module on LLB degrees, so taking it as part of an LLM is useful but a costly affair. Be sure of your interest first. There are specialist IP Law LLMs as well as Graduate Diplomas in IP which can help students to stand out and show a real interest in the practice area. Further education to put off the real world or launder an underwhelming first degree, however, will not wash!

Those with technical backgrounds in science will stand out to law firms that specialise in patents and pharmaceuticals in particular, while skills in project management will aid the brand management tasks involved in IP. Work schemes in IP law firms and in-house internships are good options for relevant experience and seeing things from the business point of view. As well as improving your practical skills, getting out there and involved will add evidence to your claims of an interest in IP.

According to Tessa Finlayson, an associate at Bird & Bird, applicants to IP law firms must be academically bright and be able to understand the complex and complicated aspects of IP and then apply them in a commercial and practical way.

IP is as future-proof an area of law as there is but those who enjoy the challenge of change must be prepared to keep pace with it. Finlayson emphasises that being aware of case law as it develops can make the difference when acting to protect the future of a company in taking strategic steps or in assisting a company to make/save significant amounts of money, especially in savagely competitive fields such as IT and telecommunications.

Otherwise, in applying to IP law firms, the usual but important rules apply: show that you have the personality of the firm; display your communication skills and that you are approachable. Be human. Can you get on in a team, take on responsibility and will clients be receptive to you? When asked about your interest in IP, law firms won’t want to hear of how you didn’t quite make it to be Shakespeare, Mozart or van Gogh. You’re a lawyer, so present strong evidence of your interest in the practice area.

Firms with IP expertise

The majority of large commercial firms will have some sort of IP capability; however, students with a special interest in working in this area should be sure to do their research. For example, while the magic circle firms possess very strong IP groups, this type of work is not their primary focus, and so a stint in the department is by no means guaranteed as a trainee.

There are, however, a number of mid-sized London firms at which IP is a much stronger focus. For example, Bird & Bird, Taylor WessingOlswang and Simmons & Simmons are all well-known for intellectual property work.

There are a number of boutique firms that specialise in IP law: one of the most notable is Powell Gilbert. However, many of these smaller firms do not take on trainees. While not a true boutique, Bristows is a small firm that has a particularly heavy focus on IP.

IP law is by no means the preserve of London firms: many large regional players have very impressive IP teams and even relatively obscure local firms take on matters for household name clients.

Some reading to get you started…

Will Hazelwood has a first-class LLM in IP Law from Trinity College Dublin. He is shortly to start a training contract at Olswang