The Pitfalls

There are a number of things to watch out for when you are considering your rights, but here is a shortlist of the issues that we come across regularly when we work with a client for the first time.

Keep it confidential until you speak to us!

If you want to protect a technical idea or concept, then we may advise you to file a patent application. However, an idea or concept MUST be confidential at the time that a patent application is filed if you want to ensure the best chance of obtaining any truly useful and robust protection. As a general rule, it is best not to tell anyone who is not bound by confidentiality, e.g. outside your organisation, until you have taken advice and know of your options. If this is impractical, then a written confidentiality or non-disclosure agreement may help, but there is no better protection than keeping it to yourself in the meantime. If you find yourself with a breach of confidentiality on your hands, then please do get in touch as soon as possible so that we can explore the options for you.

If you want to protect a design, then we may advise you to file a registered design application. A design does not need to be confidential at the time that an application is filed, although it is generally preferable. If a registered design is wanted, an application must, however, be filed within 12 months of the design being made public to ensure the best chance of obtaining useful protection.

Beware of relying on an unregistered trade mark!

The UK law on registered trade marks specifies that the first person to file an application for the trade mark is the owner of that registered right. The registration allows the registered owner to prevent anyone else from using that trade mark or a similar trade mark for the same thing, unless there has been some earlier use of the trade mark by another.

However, problems can arise for you as owner of an unregistered trade mark who has only been using the trade mark for a short period of time or in a small geographical area. If someone else manages to obtain a trade mark registration after your own use began, the registered owner of the trade mark is likely to be able to prevent you from expanding your use of the trade mark geographically, which is limiting your business. In the worst case, the registered owner could prevent you from using your trade mark entirely. Getting out of such a position can be difficult and costly, not only from the point of view of legal advice and fees, but also in the possible re-branding that might need to occur, having a massive impact on your goodwill and your reputation.

Don’t miss the opportunity to file foreign applications.

Patents, registered trade marks and registered designs all provide an opportunity to file a first application in the UK and then file foreign applications up to 6 months or a year later, whilst retaining the benefit of the first filing date. This is called claiming priority.

In the case of registered trade marks this is useful, but it is not essential to file foreign applications within the 6 months.

For patents and registered designs it is much more critical and if the deadlines are missed, it can mean that you may have scuppered your chances of getting protection for your invention abroad. We strongly recommend that a strategy for foreign protection is considered at an early stage taking these deadlines into account.

If you find yourself in one of these situations, we may be able to advise on the potential for minimising the impact, so please contact us.