Intellectual Property Disputes [2024 Guide]

1. Trade marks. A trade mark is a sign used to distinguish the goods and services.
2. Design rights. Design rights protect the shape, configuration or appearance of the whole or part of a product/article (rather than its functional aspects).
3. Patents. A patent protects certain types of technical inventions for a product or a process. Patents do not cover information or what things look like, which might instead be protected by trade marks, copyright or design rights.
4. Copyright. Copyright recognises the intellectual creation, put simply, a right to copy a work such as artworks, music, books and pieces of writing, photographs, films, among others.
5. Database rights. These are defined as a ‘collection of independent works, data or other materials which are arranged in a systematic or methodical way and are individually accessible by electronic or other means’.

ou can use the following means to identify your intellectual property rights

• WIPO. You can use the free WIPO identification self-assessment tool to easily identify IP assets.  You are provided with a report that also gives you recommendations on what IP should be protected and how to manage those rights.  
• You can also use the Government intellectual property overview website to understand what IP is, and how to protect it.
• The European Patent Office (EPO). The EPO, centrally based in Germany, grants European patents covering the member states (to which the UK is one).  There is a list of EPO member states which can be reviewed.  Patents granted by the EPO must be challenged centrally at the EPO via opposition proceedings.

You can search and apply for patents on the EPO website: https://www.epo.org/en and they also have a helpful “new to patents” guide to assist in preparations before filing a patent applications

In the case of registered rights such as patents, trademarks and designs, the first owner is the person who applied for registration.  If no such registration has been made, unregistered trademarks and design rights generally belong to the user.  A stronger position may be if the user has built up reputation and goodwill.  

Within the UK, copyright arises automatically with respect to any original creative work such as

• books,
• website text,
• software code,
• artworks,
• photographs,
• layouts,
• plans; and
• typographies.

Legally, the first owner of copyright is the author or creator of the work.  If the author is somebody’s employee, and his work is created “in the course of his employment”, his employer is the first owner though this is not insurmountable. The determination of employee status is equally important, as will be the existence of a contract of employment and any terms which make mention of intellectual property.

Intellectual property is vital for companies of all sizes. 

Starts ups and small companies should be using intellectual property to preserve current and future interests, and can strategically use the IP as a sword or a shield, or perhaps both, to grow their business potential. 

• While some types of intellectual property don’t require any active registration, other types of intellectual property require registered intellectual property rights.

IP rights are infringed when they are used by an individual, or that individual authorises another to do so, without the permission of the owner.

The key factors to take in to account to ensure controlled use by third parties are set out below

1. Licensing intellectual property

A licence is an agreement between you as the IP owner and another party to grant them permission of use, or to do something that would otherwise be an infringement of the rights without the licence.  You can ‘license-out’ your IP rights to another person or company or you can ‘license-in’ if you want to use another person or company’s IP for your own purpose.

This is often paid as a recurring cost, and is typically referred to as a ‘royalty’.

2. Licensing costs

Typically the intellectual property rights will have been valued prior to entering into a IP license negotiation but this may be done during the course of the negotiation if it has not been done previously.

The licensor is always the owner of the licensed IP, and one license may bew used for multiple intellectual property rights including patents, design rights, and trademarks.

3. Factors to consider during licensing

There are many factors to be considered, which are (not limited) to the following:

• Exclusivity which will usually attract a higher, or upfront fee
• Use
• Territory
• Enforcement of intellectual property rights
• Ongoing payment of IP maintenance and protection fees
• Time period
• Any entitlement to services or support alongside the rights conveyed
• Rights relating to assignment, sublicensing and terminating the license

The key issues to consider or answer on this subject are as follows

1. Who can bring an action?

An owner of Intellectual Property rights should proceed with steps to protect their Intellectual Property through one of the statutory causes of action for infringement once they have sought appropriate advice on the enforcement of their Intellectual Property rights. If rights have been assigned, the assignee may also bring an action, but will need the Intellectual Property owner to be joined to the proceedings.

• If Intellectual Property rights are breached, the owner is entitled to commence legal proceedings against the infringer. 
• The remedies available will likely be an injunction to prevent further use, and remedies to compensate for any losses that might have been incurred as a result of the infringement.

If Intellectual Property is owned by more than one person, any one of the owners can bring proceedings.

2. Is it possible to have more than one party as a defendant?

It is possible to join any number of parties as a defendant into the same proceedings for breach of the same action.  The Court also has discretion to add a party to proceedings if it is desirable to do so to resolve the issues expeditiously.

3. Time limit to bringing proceedings

The time limit to bring proceedings is 6 years from the date the cause of action began, which is the date the infringing act occurs.

The key steps to consider when defending intellectual property rights and taking legal action include

1. Applying for a declaration of non-infringement

A party can apply to court for a binding declaration of non-infringement.  It is also possible to apply for this kind of order without there being a pre-existing dispute.

2. Stay of proceedings

In the case of patent proceedings, a party may apply to the court to stay (put a hold on) proceedings pending the outcome of an EPO decision.  This is where the European Patent Office are already ruling on the validity of a patent.  This is not guaranteed, and is at the discretion of the court, but may be a valid argument to UK court proceedings continuing whilst there are others pending.

The court will, at all times encourage (but cannot compel) parties to use Alternative Dispute Resolution or ADR.  The main forms are arbitration and mediation and the court can stay proceedings whilst ADR is considered by the parties. 

ADR may be a welcome alternative as both arbitration and mediation are often cheaper and faster than court proceedings, and have the benefit of being held in a private rather than in the public domain, as with court proceedings.

Law of confidence protects confidential information, and any public disclosure could be actionable. 

There are two ways of protecting confidential information

1. By way of contract with a confidentiality agreement (and breach of such would be a breach of contract); and
2. Where no contract was formed, a 3 stage test of quality of confidence, communicated imparting an obligation of confidence and ‘unauthorised use’.

A breach of confidentiality is when private information is disclosed to a third party without the owner’s consent.  Consent may be protected by contract, or due to an imparted obligation against unauthorised use.

In a commercial setting, the latter is likely to apply to the disclosure of sensitive or commercially valuable information such as trade secrets, a product or process information or customer details.  

It is important to understand how the law of confidentiality applies and how it can protect confidential information. At Francis Wilks & Jones – our team can help you do this.

Commercial information protected under the law of confidential information can take many forms. It includes information that may be protectable under copyright or patent too.  Examples are:

• Formulae/recipes which cannot be analysed in the final product
• Processes
• Business methods (until they are used in public)
• Financial information
• Statistical information
• Customer lists / contacts
• Invoice information
• Plans, sketches and drawings
• Improvements to products or processes
• New inventions while the filing of a patent application is pending
• Business plans
• Computer programs
• Discoveries, scientific theories or mathematical methods
• Unpatentable (minor) improvements to a product or process

There will be deemed to be a breach of confidentiality in the following circumstances:

• The information was obtained in circumstance which give rise to a duty of confidence;
• The information has the necessary quality of confidentiality;
• The information has been used in an unauthorised way; and
• Detriment (or risk of damage in cases where an injunction may be sought) must have been suffered as a result of its unauthorised disclosure.

We can assist in assessing whether your claim satisfies the above. Contact our expert team today.

Confidential information can be protected for as long as it retains its confidential nature, which in theory could be indefinitely.

However, there will be limitations:

• It is out of date and no longer has any commercial value;
• NDAs are typically limited in time;
• In the case of ex-employees, duration may be found to last for a similar period to any restrictive covenant in the ex-employee’s contract.

A claim must be brought within six years from the date of the breach.

A successful claim for misuse of confidential information may lead to:

• An injunction – this is usually the most popular route, it is fast an effective at stopping the action, but can be little use if the information has been used and is known.
• Damages or an account of profits – usually this will be a calculation of the loss which has been caused to the claimant.  A consideration of what profits have been achieved based on the use of the information.

An obligation of confidentiality can be breached by either:

• Disclosing it to an unauthorised recipient; or
• Using the information for an unauthorised purpose.

Rights under a breach of confidence can be enforced against:

• The recipient of the information; and, or
• Any subsequent third party recipient of that information, even where that third party had no knowledge of its confidential nature when it received the information but later becomes aware of that fact.

A breach of confidentiality may be justified or defended under the following circumstances:

• The information is already in the public domain;
• The information is not actually confidential in nature; and
• There is a public interest in disclosing the information.

Opposition proceedings are an administrative process available which allows third parties to formally challenge the validity of Intellectual Property.  Challenges may relate to a pending patent application, of an already granted patent, or of a trademark. 

You can bring opposition proceedings anonymously or by a “strawman” so the information does not need to identify the actual party behind an opposition.  However, the entity must be a person or a legal entity, so where a strawman process is opted for, it is common to use a law firm as representation.

Our brilliant team at FWJ are happy to help represent you if you need help.

To challenge or oppose the grant of a patent, a notice of opposition musty be filed within 9 months of the date of grant of the patent.

This deadline is not extendible, so it is important to act quickly if you wish to file opposition proceedings.

Should you need urgent assistance filing opposition proceedings – our team can help. Or call Emma Haymes today for immediate help.

Opposition is the legal procedure that allows you to try to stop a published mark going on to become registered. You can oppose the entire application, or only some of the goods or services it covers.

• A granted European patent provides a monopoly right to the owner over an invention in any of the 38 member states.
• Filing an opposition is a cost-effective way of knocking out a patent in multiple territories without having to deal with individual applications.

initiate opposition proceedings, a written statement of case which provides an indication of the facts, the evidence relied on and the arguments in support of the grounds upon which the opposition is based is required.

In addition to this

• payment of the opposition fee (between £100-200) and
• you need to provide an address for service ie. your own, or a representative’s address. 

We can act as your representative in claims like this. If it is urgent –

call Emma Haymes today for immediate help.

The possible grounds of opposition are that the patent:

• Lacks novelty – the invention is not patentable as it is not ‘new’.
• Lacks an inventive step
• Relates to subject matter excluded from patentability
• Does not contain sufficient information for the skilled person to implement the claimed invention.
• “Added matter” – the subject matter of the patent extends beyond the content of the application as originally filed.
• Is not industrially applicable

A patent can be opposed on any, or all, of these grounds, and in part or in its entirety, but only grounds properly substantiated by the end of the 9 month opposition period can be relied upon. 

Patentability requirements such as clarity, are not valid grounds of opposition and cannot be raised in a notice of opposition. 

• A ground of opposition is properly substantiated if the EPO & proprietor can understand and evaluate the nature of the objection without conducting their own investigation. 
• Evidence can be referred to in the opposition, but may be filed at a later date if necessary. 
• Oppositions can also include witness statements as supporting evidence.

What are Trade mark opposition proceedings?

When a trade mark application has successfully completed and accepted it is open to any third party to oppose its registration.

It is possible to oppose, object or challenge the entire application or the registration of the mark for only some of the goods and services.

Should you need urgent assistance as a third party – our team can help. Or call Emma Haymes today for immediate help.

There is an initial two-month opposition period beginning immediately after the date of the publication of the trade mark in the IPO TJM – Trade Marks Journal.

• This may be extended to three months for any party who files a ‘notice of threatened opposition’ within the initial two months. 
• This grants a further month’s grace period to pull together the necessary information for opposition.

Opposition is the legal procedure that allows you to try to stop a published trade mark going on to become registered.  There are certain grounds with which you can bring such an opposition claim, which can be found within the grounds of trade mark opposition section.

To initiate opposition proceedings, a written statement of opposition should be filed which provides an indication of the facts, the evidence relied on and the arguments in support of the grounds upon which the opposition is based.  There is no fee payable.

Should you need urgent assistance filing trade mark opposition proceedings – our team can help. Or call Emma Haymes today for immediate help.

It is possible to oppose the entire application or the registration of the mark for only some of the goods and services.  Anyone can oppose on the first ground, but only the proprietor of an earlier trade mark / right can bring opposition proceedings for relative grounds.

• Absolute grounds covers defects in the trade mark itself. Non distinctive or generic goods and/or services are covered and should therefore be free for everyone in that line of trade to use.
• Relative grounds such that there exists an earlier trade mark or earlier right (which does not have to be registered) owned by the opponent which the applicant’s trade mark is in conflict with if it were used.

Disputes may be brought relating to intellectual property which may not actually be invalid and an action may need to be brought to defend, revoke / seek a declaration of invalidity.  Claimants may also require legal assistance to bring actions to protect their intellectual property, which is being dismissed as invalid / with a threat of revocation.

An action for revocation is available when a patent has been granted, to any person, whether they have a legal interest in seeking the revocation or not – with one exception, when revocation is sought on the grounds of non-entitlement which is explained further in the non-entitlement section.

1. Non-patentability

The invention must be novel, involve an inventive step and capable of industrial application.

• Novelty – A patent lacks novelty if the alleged invention was already part of the ‘state of the art’ before the earliest claimed priority date, this can include product, process or any other information publicly available.
• Inventive step – A patent lacks inventive step if the alleged invention was obvious to the person skilled in the technical field of the invention as at the priority date of the patent.
• Industrial application – An invention is taken to be capable of industrial applicability if it can be made or used in any kind of industry, including agriculture.

2. Non-entitlement (granted to a person not entitled to it)

This is a claim that the person granted the patent, is not entitled to it.  This claim can only be brought by the person who thinks he is legally entitled to the patent.

3. Insufficiency (not described sufficiently)

This will apply where the specification has not disclosed the invention clearly and completely enough for it to be performed by the skilled person without undue effort.  A threshold test of sufficiency is often considered with the “lack of plausibility”.

4. Added matter (subject matter extends beyond the content of the originally filed application)

This applies where the scope of protection of the patent extends beyond that disclosed in the application for the patent as filed.  The test again here, will be to determine if there is added matter, through the eyes of the skilled person.

5. Unallowable post-grant extension

This applies where the protection granted by the patent has been extended by an amendment after grant, which should not have been allowed.

There are different time limits depending on the type of patent and the type of action being brought. 

Our brilliant team can assess the patent in question and advise on time limits. It is always sensible to take legal advice on this issues as missing time limits can be disastrous in claims like this.

If you have any concerns about time limits – call our expert Emma Haymes today for immediate help.

A patent can be found to be partially invalid i.e. some claims are invalid, and some valid.  In this instance, the court may revoke the patent or may grant a specified time frame to allow the specification to be amended to the satisfaction of the court.

The following are narrow exclusions from patentability:

• discoveries, scientific theories and mathematical methods;
• aesthetic creations (including literary, dramatic, musical and artistic work);
• a scheme, rule or method for performing, playing a game or doing business, or a program for a computer; and
• the presentation of information

Costs will be dependent on the forum in which the claim is brought.  Court fees before the Unified Patent Court comprise of fixed fees and value-based fees.

• Infringement actions and actions for a declaration of non-infringement
  • Have fixed court fees of €11,000 where the value of the case is up to and including €500,000.
  • Value-based fees are then added to the fixed fee if the claim is above €500,000 and are determined according to a rising scale with the minimum additional value-based fee starting from €2,500 on an action with a value of up to €750,000, and the maximum additional value-based fee being €325,000 for actions with a value of more than €50 million.
• Revocation actions have a fixed fee of €20,000 with no additional value-based fees.

An action for revocation is available when a trade mark has been granted, to any person, whether they have a legal interest in seeking the revocation or not.

• If you are considering making an application for revocation, an approach should be made to the registered trade mark proprietor to see whether matters can be resolved without the need to resort to legal proceedings.  
• If an application is filed without this initial contact and the mark is surrendered there will be no costs award so you will not recover the cost of filing the application for revocation.