Intellectual Property

Across the world, people assert their intellectual property rights in different ways, converting their brands and innovations into valuable assets. In the UK intellectual property rights can attach to the following:

• Trade marks
• Patents
• Designs
• Copyright
• Databases
• Confidential Information (including trade secrets)

Each of these categories of intellectual property have distinct features which your product must have to benefit from legal protection. So, for example:

• A trade mark distinguishes the goods or services of one enterprise from those of other enterprises
• A patent must in some way provide a new and novel way of doing something or offer a new solution to a problem
• Registered designs must be new (that is, substantially different from anything else)
• Copyright will attach to original artistic or literary work, together with other dramatic works, publications and broadcasts, etc.
• Database rights serve to protect the investment you have made in developing and maintaining your databases.

Intellectual property protection is crucial if you want to avoid your innovations and developments being exploited by others at your expense. But it’s a complex area of law. Not every development is capable of protection, and often more than one intellectual property right will attach to a particular product or work. When it comes to advising you on how to protect your intellectual property rights it’s important to highlight that the way they are protected differs depending on the nature of the property you are seeking to safeguard. Some rights arise automatically on creation of the work – for example copyright, database rights and unregistered design rights. In other cases, including patents and registered trade marks or designs, you must proactively apply to register your right to obtain legal protection. If your creation is in the public domain before you have registered it, you could potentially lose any legal claim or right over it.

Collaboration is common – in business, industry and the arts. And it’s not unusual for intellectual property to be owned jointly, or licensed exclusively as part of a collaboration. Precise ownership of the rights will depend on the circumstances in which the product or work was developed and what type of intellectual property right you are seeking to assert. For example, co-ownership of a registered design might arise in a different way to co-ownership of a trademark.

From a legal perspective, co-ownership of intellectual property should always be carefully managed. There are multiple ways disputes can arise. For example, what happens if one co-owner wants to sell the intellectual property rights? Do the co-owners separately own particular aspects of the work or product? We advise on disputes when they arise, and we help clients avoid disputes by drawing up comprehensive collaboration agreements where ownership of intellectual property rights is clearly defined.

Many of our clients outsource creative and development projects to outside agencies and freelancers – development of web sites, advertising and marketing campaigns and software development are all examples of tasks commonly commissioned externally. Unlike work that’s carried out by employees, self-employed individuals or consultants will normally retain the intellectual property over work you’ve asked them to create – unless there’s an agreement to the contrary that gives the company paying for work ownership of the intellectual property rights. This is a complex area of law, and it’s a common area of dispute between companies and commissioners on the one hand and developers and creators on the other.

Dependent on the terms agreed between the parties, a commissioning company may only have a limited, implied right to use the intellectual property rights in the work solely for the purpose it was commissioned. We advise businesses on how they can assign intellectual property rights away from the freelancer to the business through bespoke consultancy, work for hire and other agreements.

As an employer being able to assert ownership of the intellectual property rights attaching to work or products created by your employees is critical. And as an employer, you’re legally entitled to ownership of anything an employee makes in the normal course of their employment. The issue is not always clear-cut however, particular in an age of hybrid, remote and other forms of working.

When disputes arise between employee and employer over intellectual property ownership it’s usually because there is some doubt over whether the work was created in the course of employment. Take the example of software that’s developed by an employee at home, outside of their working hours. Is it created ‘in the course of employment’?

It’s an area of debate and each case will depend on its facts. However as an employer you can take steps to strengthen your position in the event of dispute. You can put very clear, precise intellectual property rights provisions in your employment contracts that nail down ownership of intellectual property rights as far as possible, including provision for assignment of rights to the employer in circumstances (where this doesn’t happen as a matter of law).