Frequently asked questions
While we aim to cover as much as possible here, please contact us if you have any specific questions relating to IP protection and enforcement.
What is intellectual property?
Intellectual Property (IP) refers to any creation of the mind, whether it is expressed as an artistic or physical creation. Certain intangible IP rights can be registered. Registrable rights include patents, trade marks and designs.
What can be protected?
There is a wide range of protection available to protect your intellectual property. Patents can protect the way your product works; designs can be used to protect the way your product looks; and trade marks can be used to protect a brand associated with a product.
What can’t be protected?
Certain exceptions apply for registrable rights such as patents, trade marks and designs. These exceptions may depend on the territories you wish to operate in.
In Europe, for example, only novel and non-obvious inventions may be patentable. Also, a European patent application must disclose the invention in sufficient detail for it to be reproduced, which requires a detailed description of the invention.
The subject matter of a European patent must not be excluded by statute. For example, a European patent must not purely be a discovery, scientific theory, mathematical method, aesthetic creation, computer program, mental act, method of playing a game, business method or presentation of information.
Patents in the life sciences field must not interfere with the day-to-day practice of any doctor, which means that methods of medical treatment, diagnosis or surgery practiced on the human or animal body are excluded from patentability. Patents in the life sciences field must also not interfere with the activity of plant or animal breeders, meaning that methods of plant or animal crossing are excluded from patentability. In addition, a patent must not be contrary to public policy or morality.
What is an opposition?
All European patent applications are assessed by qualified European Patent Office (EPO) Examiners to ensure the requirements for patentability are met. If a patent is deemed to be allowable by the Examiners of an Examining Division, then a patent is granted (awarded).
To allow third parties to challenge the grant of any patent, a European Patent may be opposed within nine months of the patent being granted. This allows any third party to file arguments outlining why the patent should not have been granted. An Opposition Division of the EPO then reassesses whether the patent should be maintained or revoked.
What is a patent?
A patent is a contract between a state and a patent applicant to provide special rights for a limited duration. It is intended as a reward for innovation and is a property which can be bought, sold or licenced.
What is a trade mark?
Many things can be registered as a trade mark - names and logos are the most common. A trade mark can be anything that allows consumers to distinguish your goods or services from those of another.
What is a design right?
A registered design protects the visual appearance of a product or item and gives you exclusive rights for that appearance.
How long does IP protection last?
Patents can be protected for up to 20 years if they are regularly renewed. Other forms of IP have a lifespan that depends on the type and jurisdiction. For up-to-date information, please contact one of our specialists.
What is licensing?
Licensing relates to the act of transferring some of the rights in your IP to another. This allows them to use your IP rights for a set period of time and for an agreed fee. A patent owner can license their interests in a patent on an exclusive or non-exclusive basis.
What should I do if someone has infringed my patent or is making unauthorised use of my IP assets?
Seek professional advice and provide your IP attorneys with as much information as possible about the infringed right(s). Taking immediate action without first considering the issues with a professional advisor may bring a number of risks to your business.
What happens to IP during insolvency?
This can be quite complex, but it is worth researching your legal position. Just because the owner of the IP becomes insolvent does not mean the IP is lost. However, you do need to act fast. It is imperative you contact a patent attorney or other IP advisor to discuss your options.
Why do I need IP planning/strategy?
Often, intellectual property can be the most sought-after asset in a firm or associated with a brand. It is therefore worthwhile allocating proportionate resources to protect this valuable asset. Time and money spent initially can save you money further down the line protecting your assets or managing an opposition or infringement. It is important to have regular meetings with your IP specialist to review changing markets, threats and opportunities.
What is patent mapping?
Patent mapping is a great tool to help you manage your IP, your R&D budget and manage knowledge about your competitors. For further information, contact one of our patent advisors who will be able to give you further information.
I want to publish my research. Can I do this without affecting any corresponding patent?
Under European practice, an invention is only considered novel if it does not form part of the state of the art. The so-called “state of the art” includes everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing the European patent application. There is therefore a risk that any pre-filing publication would act to undermine any later patent application.
If obtaining a patent is of interest, you must file a patent application before making any corresponding publication. However, once filed a patent application does not necessarily act to prevent the publication of the research. For example, once a journal manuscript is under preparation, a corresponding patent application could be filed quickly without necessarily needing to delay later submission to the journal.
What is a patent box?
A patent box is a tax relief that is designed to encourage innovation. To find out more information and see if you are eligible, contact one of our patent experts.
What is Patent Prosecution Highway (PPH)?
The Patent Prosecution Highway (PPH) is an agreement between various patent offices around the world to help accelerate the Examination Procedures regarding patent applications. There are potential advantages (and disadvantages) to PPH. For further information contact one of our patent advisors who will be able to give you further information.
How will Brexit affect my IP?
The European Patent Convention (EPC) is outside of the European Union (EU), so Brexit will not have any direct impact on the filing or prosecution of patents at the European Patent Office (EPO).
However, Brexit does have implications for certain other IP rights such as trade marks, designs and Plant Variety Rights. If you are concerned, please contact your IP professionals to discuss this further.
Are there career opportunities at Secerna?
We are a rapidly growing and highly ambitious firm that likes to stay at the cutting edge of technology. With that in mind, we are always on the lookout for skilled people to take on exciting roles with the firm. For details of current vacancies, visit our careers pages.
Does the firm hold graduate taster days or offer work placements?
We hold an annual taster day at our head office in York. These days are great opportunities to learn more about what a career in IP looks like, talk to people working as attorneys, and experience the type of work you could be doing if you choose to work in the sector. Find out more here.
What is a career as a patent attorney like?
Intellectual property is a varied and exciting career path for people who enjoy science and technology but don’t want to continue in academia or research. Our taster days are an ideal way to find out more and ask all the questions you want answers to, or you can read our team profiles to get a feel for life as a patent attorney.
If you have questions about intellectual property that are not covered here, or you would like more detailed information, contact our team.