Intellectual property law is a relatively complex subject. This chapter concentrates on the more important aspects for users, so that you are aware of the pitfalls and know when to seek professional advice. The appendix at the end of the chapter provides a basic guide to intellectual property and explains the terminology in use.

INTRODUCTION

Intellectual property is an inescapable element of modern business, especially in the field of information technology. It protects both suppliers’ rights in the systems that they provide and users’ rights in aspects of their usage. Everybody needs to know roughly who owns each part of a computer system and how that impacts on its use. They also need to know what not to do with the equipment on the internet, so as to avoid being sued.

There are five main types of intellectual property in the UK:

• Patents–protect inventions, which could be found in any part of a computer system. Software as such is not technically patentable, but if it has other features that fulfil the criteria for patentability this will not prevent the grant of a patent.
• Design–there are, technically, four different types of right, which also overlap with copyright. They cover items that are as diverse as semiconductors and computer graphics.
• Copyright–protects literary, artistic and other works. Software is a literary work and graphical user interfaces are artistic works.
• Database right–covers collections of data that are accessible by electronic or other means.
• Trade marks–broadly, protect brands, such as ‘Microsoft^®’ and ‘Intel^®’.

For those who are not familiar with intellectual property, at the end of the chapter there is a further explanation of these rights. Rights in other territories, even European Union (EU) territories, may be different, although some rights are harmonised throughout the EU.

HARDWARE AND INTELLECTUAL PROPERTY RIGHTS

Hardware is a bit of a misnomer because much hardware contains systems software too. From an intellectual property perspective, the distinction is very important because the real hardware element is sold but the systems software is usually licensed (see the next section), although there is a current legal debate over whether this is appropriate. If hardware is protected this is generally by patents and/or designs, although brands are extremely important in this sector.

The non-software element is treated like any other gadget. If it is protected, you need authority from the person who owns the intellectual property to manufacture, sell or import it, and so on. However, after the first authorised sale of the hardware in the European Economic Area (EEA), all those rights are ‘exhausted’ in the EEA, unless there are special conditions on the sale. This means that if the equipment comes from an authorised source you can do what you like with it, unless there is a special arrangement or you export it from the EEA or do drastic repairs that amount to remaking it (or bits of it).

Authorised sales

So everything is fine if you buy from an authorised source, but how do you tell who is authorised and who is not? There are plenty of people who call themselves ‘authorised dealers’. Some will be fully authorised under all of the necessary rights, some will have limited rights, and others may not be authorised at all.

You can always check the status of a dealer with the equipment manufacturer. Unfortunately, even reputable dealers appointed by equipment manufacturers may not have all the necessary rights because it can be very difficult to check who has relevant rights. The reason for this is that registered intellectual property, such as patents, gives the owner a monopoly. This means, broadly, that anybody making and selling equipment within the specification of registered intellectual property without permission can be infringing that property, even if they are unaware that the rights exist.

Currently, the amount of registered intellectual property is increasing rapidly, so it can be difficult to search for it. As a result, even the larger computer manufacturers may sell infringing hardware without knowing about it, although this is less likely because they have considerable facilities for searching.

Technically, the owner of intellectual property can seize infringing equipment, so it is a serious matter. However, in practice it is rare for an intellectual property owner to seize equipment from end-users.

So what should you do? There should be a relatively low risk if you buy hardware from a reputable supplier who gives you a full indemnity (see Chapter 2) to cover the situation where the hardware infringes somebody else’s intellectual property. You should also pick a supplier with a ‘deep pocket’ who will be sure to meet its obligations under the indemnity.

Special conditions

Some intellectual property owners attach special conditions to the sale of their equipment. This is not the technical terminology, but is an easy way of describing what happens. For example, they may insist that you do not take it outside a particular territory or that you only use it with another piece of equipment. Some of these conditions are unenforceable because they breach trade laws, but others may be enforceable. Most restrictions on exporting goods that have been brought in one EEA country to another EEA country are unenforceable.

Repairs

When you have bought equipment you generally have a right to repair it, although repairs by somebody who is not authorised by the manufacturer may affect your warranty and maintenance contract. If the repair entails replacing parts that are covered by intellectual property, the same rules apply to repairs as applied to the original sale, so this sort of repair must be made by an authorised person.

SOFTWARE AND INTELLECTUAL PROPERTY RIGHTS

Copying and adapting–the general rules

Copyright is the main form of intellectual property protecting software so it is treated differently from hardware. Software can also be protected by some of the rights protecting hardware, including registered rights. So all of the rules relating to hardware may apply, but there are additional things to think about.

Copyright protects against copying, adapting, distributing and communicating copies of the protected material to the public. It can protect against other things, but these are the main types of protection in this context. You cannot do any of these things unless you own the copyright or have the authorisation (‘licence’) of the copyright owner.

It is fairly unusual for a user to own copyright because most software houses want to grant licences to several users in order to reduce costs and to make maintenance both cheaper and more profitable. However, if a supplier is making a bespoke program and you are to pay the full economic costs of this, there are strong arguments that you should own the copyright if the program is standalone. If you are to own the copyright you need a document that transfers the rights to you.

Simply running software involves copying it, so if you do not own the rights you need a licence to run it. You also need a licence if you are going to alter it because that amounts to adaptation. In practice, few software houses will simply allow you to copy and adapt their software. They tend to specify precisely what you can do with it.

You also need a licence if you are going to rent, lend or broadcast copyright material. The average software user does not want to do any of these things, so they are not covered in this book.

Backup copies

Whatever the licence says, there are some things that the supplier cannot stop you from doing. So if you have a licence, the supplier cannot stop you from making backup copies if you need them for your permitted use of the software.

Maintenance

As a general rule, you can copy or adapt software if that is necessary for you to use the software, provided that the licence doesn’t stop you. So, for example, you can adapt software to correct errors, unless the licence specifically says that you cannot do it.

Decompilation and interfaces

You can decompile a program if you want to create an interface with another program, provided that you do not use the information that you glean from this to do anything else and do not give it to anybody who does not need it to build the interface. Similarly, if you can get the information from another source (such as the supplier) or if you use it to build a copycat program, the decompilation is not permitted.

What does all this mean in practice?

In many cases, it is just not feasible to change the printed terms that you will be offered. The terms may not be enforceable if they are unreasonable, but that is a hard call for you to make without advice and you should never depend on it.

Have a good look at the scope of the licence and look for anything that you would want to do that is left out. If it says ‘copy and adapt’ you will have no problems, unless you want to sell copies, and most suppliers only allow professional distributors to do that. If it is of more limited scope and sets out a list of things that you can do, you need to scrutinise the list.

Many users cannot and do not want to maintain software, but they may want to know that they can go to another supplier if something goes wrong. This is precisely what many suppliers want to avoid because they do not want anybody else meddling with their trade secrets or depriving them of maintenance fees. So some clients ask for maintenance rights, whilst many suppliers try to avoid granting them; in the end, it is a matter for discussion, although the supplier will often win the argument.

You will encounter similar problems with decompilation, but in that case the supplier can only prohibit decompilation if it provides sufficient information to allow you to build an interface. So this is less of a problem.

In any event, the right to adapt for the purpose of maintenance may well be of limited use unless you have a copy of the source code. This topic is dealt with in more detail in Chapter 5.

Transferring a licence

Many licences prohibit the transfer of rights to somebody else and sometimes the consent of the licensor is required before the rights can be transferred. This may limit the scope for selling on systems. Before you sell or transfer a computer, you need to check that you can pass on rights in the software and possibly rights under maintenance contracts, depending on the circumstances. This can be crucial in the context of outsourcing.

Non-compliance

Needless to say, if you do something outside the scope of your licence, which is prohibited by copyright, technically you are infringing copyright and the copyright owner may sue you and seize the software. In practice, if you do something accidentally and no real harm is done, the copyright owner may give you a warning, without taking the matter any further.

DATABASES AND INTELLECTUAL PROPERTY RIGHTS

Taking a licence of somebody else’s rights

The intellectual property rights protecting databases are relatively easy to understand provided that you can envisage the constituent parts of a database.

Databases are usually manipulated by software. Then there is the form of the actual database, the collection of data to populate it, and finally individual items of data.

From a legal perspective, the software is no different from any other software. The form of the database is protected by copyright in a similar way to software. The collection of data may be protected by copyright, to a certain degree, if the selection or arrangement of the contents constitutes the author’s own intellectual creation. There is also database right, which can protect the contents of the database against substantial extraction and re-utilisation. In order to qualify for protection there must be a substantial investment in either obtaining, verification or presentation of the contents of the database and the resulting database must be arranged in a systematic and methodical way, accessible by electronic or other means. The right does not protect the individual items of data. Individual items of data, such as photographs, may also be protected by copyright.

So what does this add up to in practice? It means that you need a licence to use any of the rights protecting a database that you do not own. You need to ensure that the licence covers the way that you envisage using the database in terms of extraction and re-utilisation of data. In particular, if you are using a database to extract large amounts of data, you need to watch out for any limits on usage.

Protecting your own rights

It also means that in setting up your database and populating it you will acquire rights in the data that you assemble provided that you or your employees do this, or you acquire the rights under a written contract with the person who does.

If you ever need to enforce your rights you will need to prove that they are still current. This entails keeping records of the dates when the database is finished or made available to the public (if earlier), together with a copy of the database at that time. You need to do the same thing each time that it is substantially updated, because major updates may qualify for further protection.

You also need records of the nationality of the person, company or partnership that took the financial risks of making it. The database will only qualify for protection if the maker is from the EEA. If it is a company it must be incorporated in the EEA with either its central administration or principal place of business in the EEA or its registered office and a firm base in the EEA.

It is worthwhile marking all copies of the database with the name of the owner. This may deter infringers and will help you to claim damages from them. It could also, potentially, be used as evidence of the origin of any pirate copies.

WEBSITES AND INTELLECTUAL PROPERTY RIGHTS

Make sure that you own your website

Many people spend a great deal of money on websites, but allow the designer to own rights in them. It is a bit like buying something and leaving part of it in the shop on a permanent basis. Nonetheless, appreciable numbers of people do this, probably because they are now used to somebody else owning the software that they use.

The contents of a website are protected by copyright, which arises automatically when it is created, provided that it is first published in the UK (or another country, such as an EU state that is party to the same treaty as the UK) or fulfils certain other criteria. It is also possible to apply for registered designs in respect of specific graphics such as icons. This is a registered right, so it gives monopoly protection, which means that anybody else using a design within the scope of the registration will infringe.

Trade mark protection may be available for signs that are used on your website. These can overlap with registered designs in this context. As a very general rule, in the UK, trade mark applications are more expensive to process than ones for designs. However, trade marks can give broader protection and they can last indefinitely if you pay the renewal fees.

Many websites are dependent on software to assist in navigation and to process data that are input. The same rules apply to this software as to any other software. Similarly, there may be a facility for accessing and searching a database and that database should be treated in the same way as any other database.

Look after your rights

Copyright, registered designs and trade marks can all be valuable assets of a business, and can be used to protect it against imitators, so you should aim to own rights in your website. Consultants who build websites are likely to use certain generic material on each job. They would be foolish to give this to you, but anything that is specific to your project should be yours and you should protect it.

Before your designer starts work, you should have a written agreement, transferring rights in the material he creates to you and obliging the designer to keep the designs confidential in case you want to register them. Otherwise, the designer may be able to argue that he owns the copyright, and you just have a licence or somebody else may try to register the design before you do.

If you own the copyright in your website, it is worthwhile marking it to deter infringers, to ensure that you can claim damages from them and to take advantage of protection under international copyright treaties. You should put the © symbol followed by the name of the copyright owner and the date of first publication on the website.

If you put material onto a website, visitors are entitled to assume that they can use it in some way, so you need to be clear about what they can do. For example, if they can make copies solely for domestic use, but not for a business or any other purpose, you must state that specifically. Similarly, if they may not adapt it or give other people copies, you need to say so and the notices must be prominent so that they cannot miss them.

It is easy to catch infringers on the web

The second thing to remember about websites is that they are very public. Some people think that infringement of intellectual property goes unnoticed on the web. The truth is that sophisticated software has been developed to search for infringers, especially trade mark infringers. It is also easier to prove infringement because the evidence is recorded. See the sections below on internet use for further information on infringement.

DOMAIN NAMES AND INTELLECTUAL PROPERTY RIGHTS

Why there are problems

In the 1990s one of the more memorable rackets was buying up domain names that corresponded to famous trade marks and then holding the trade mark owner to ransom by demanding vast sums to transfer the domain name to them. Courts in many jurisdictions have now put a stop to this by holding that the ‘cyber-squatters’ are infringing trade marks.

Unfortunately, that is not the end of the story. There are still problems with domain names and trade marks. Trade marks are registrable in 45 different classes of goods and services and it is possible to subdivide each class by specifying only some of the goods or services within that class. So a great many businesses with the same trade mark may co-exist without problems.

This is not so with domain names because it is only possible to register a name once. So, for example, if the BCS has registered ‘BCS.org’ nobody else can register ‘BCS’ with the top-level domain of ‘.org’. The situation has improved with the creation of further top-level domains, such as ‘.biz’, but the old ones like ‘.com’ are still the most popular.

Opposing a registration

Domain names are generally allocated to the first person to register (although there maybe special arrangements for trade mark owners to have priority when top-level domains are allocated). This means that if somebody has already registered the name that you are seeking to register, you will only be able to oppose the registration in limited circumstances.

You can complain if a name within the top-level domains, such as ‘.com’, ‘.net’, or ‘.org’:

• is identical or confusingly similar to your trade mark; and
• the person using the domain name has no right or legitimate interest in that domain name;
• the person using the domain name registered it and is using it in bad faith.

The domain name registry may cancel the domain name or transfer it. In some circumstances it is unclear whether there has been bad faith but in others, such as cyber-squatting, this has been relatively easy to decide. This also applies to certain country-code top-level domains. In the case of other top-level domains, the grounds for opposition will depend on the rules of the domain name registry concerned.

In addition to using the procedure in the relevant domain name registry, it is also possible to bring an action for trade mark infringement in a conventional court, although this may be difficult if the domain name owner is in a different business and the trade mark is not well known.

Avoiding disputes

If a domain name is not used or is not commercially important, and where there are no grounds for opposing its continued registration, it may be possible to purchase the domain name for a relatively modest sum.

In practice, the best way to avoid disputes is to register a domain name early and, if you can afford it, registering a corresponding trade mark in the same jurisdiction as the domain name registry can help too. If you think that there are grounds for opposing a domain name registration, it is best to seek professional advice.

It goes without saying that if you are registering a domain name you need to be careful to avoid infringing somebody else’s trade mark (see the next section).

THE INTERNET AND TRADE MARKS

Infringement

The international trade mark system has historically been divided by national boundaries or by trading blocs. Internet use is international by its very nature, so if you use a trade mark on the internet there is a technical possibility of infringing separate trade marks in a large number of territories. Registration in one or more jurisdictions will not protect you from infringement in others.

In order to infringe a trade mark, it is usually necessary to use at least a similar mark for the same or similar goods or services as the trade mark is registered for. In Europe, if the mark or services are similar but not identical, and you want to claim infringement, you must show that people would be confused about where the goods or services come from.

Well-known marks are a special case because it is possible to infringe them by trading in different goods or services and, in the EU (including the UK), if without due cause the use would take unfair advantage of the mark or be detrimental to it. In the USA, use of marks that blurs their distinctiveness or tarnishes their reputation may also amount to trade mark dilution. Some uses, such as referring to the owner’s goods and services in an honest way, will not infringe in some territories.

In practice, it is most likely that somebody will take action if you are actively using a mark in a particular jurisdiction, more especially if you trade there or have assets in that jurisdiction, because the trade mark owner then has a more realistic possibility of suing you successfully.

What should you do?

There is no easy answer to this because laws and trading methods are still being developed. Full international searches are prohibitively expensive for many companies. However, it should be possible to search for trade marks in the major jurisdictions before using a mark on the internet. If you cannot afford a professional search by a trade mark attorney, some patent offices, such as the UK, provide limited internet searching facilities. Nonetheless, a professional search is always preferable.

Examples of infringement

In addition to using a trade mark on a website, or as a domain name, the most likely ways in which trade marks can be infringed on the internet are through linking and framing, and metatags.

Linking and framing

There are two types of links on web pages: hypertext links and inline links.

With a hypertext link, you click on an icon and your browser retrieves material from a second website. With an inline link, material from a second website is automatically retrieved by and shows as an integral part of the first website.

Framing is an extreme form of linking where material from the linked site is framed by advertising and other material from the first site, so that it appears as if it is all on the same site. Linking technologies allow people to pretend that somebody else’s content is theirs. Links that bypass the home page of another site can bypass valuable advertising.

In terms of intellectual property, linking can lead to confusion over whose products are being displayed under which marks. So, for example, the marks from the linked site may appear with products from the first site and the products of the linked site may appear under the trade marks of the first site.

Legally this may amount to trade mark infringement, unfair competition or passing off, depending on the jurisdiction, so it is safest not to skip home pages and to inform users that they are entering another site.

Metatags

Search engines find and classify websites by reference to keywords. Website owners assist the engines by embedding keywords, to increase use of their sites. Some unscrupulous people have embedded competitors’ trade marks and well-known marks as keywords to try to divert business to their sites. In the UK, this usually amounts to trade mark infringement or passing off if there is a likelihood that those using the search engines would think that the site with the metatag is the site of the trade mark owner. There are similar remedies available in other jurisdictions.

Keyword advertising, where banner advertisements are linked to keyword search terms, presents similar problems, although in many cases generic words will be used so there will be no trade mark infringement or passing off.

THE INTERNET AND COPYRIGHT AND DATABASE RIGHT

Publishing literature, art and music on the internet, as well as other forms of broadcasting, merit a separate book, so they are not included in this chapter. Basic copying from websites is dealt with in the section on websites.

The aspect of ordinary usage that deserves further mention is the copyright aspect of linking. Creating links may not infringe copyright because the material on the other website is not copied or otherwise affected when the link is created.

However, there is a possibility of copyright infringement through linking because the owner of a copyright work has the exclusive right to communicate that work to the public and linking may infringe that right, more especially if the site to which the link is made prohibits linking.

Similarly, it is possible to infringe database right through linking if the material on the site that is linked qualifies for protection by database right.

APPENDIX: A BASIC GUIDE TO INTELLECTUAL PROPERTY AND RELATED RIGHTS

Copyright

What is copyright?

Copyright protects the means of expression of concepts, including literary works, fine art, crafts, music, films, broadcasts, and so on. In order to qualify, works must be original; that is to say that they have not been copied, although EU law for both software and databases states that in order to be original the material must be the author’s ‘own intellectual creation’. There is usually a requirement that a work is recorded in some permanent form.

Three-dimensional works are not protected by copyright, except for artistic works, such as sculpture or architecture, and works of artistic craftsmanship.

Duration

In the case of literary, dramatic, musical and artistic works, protection generally lasts for 70 years after the end of the year in which the author dies. There are exceptions, notably for computer-generated works, which are only protected for 50 years after the end of the year in which they were created.

No registration

Copyright arises automatically on creation, and in the UK and many other jurisdictions there is no need for registration. There are exceptions, most notably in the USA for certain purposes. As an unregistered right, copyright does not protect against independent creation of the same or a similar work, provided that there is no copying involved.

Computer software qualifies for copyright protection as a literary work. This stretches the right somewhat and produces a rather unsatisfactory result. It means that copyright protects the way that code is written, as opposed to the underlying concepts, which are often more valuable. There is a certain amount of overlap between concept and expression, but not much.

Copyright also protects manuals (in whatever form they are produced), the structure, the collection of data and certain items of data in databases, and the contents of websites.

Moral rights

With certain notable exceptions, authors of copyright works have moral rights. These rights are, broadly, the right to be identified as the author; the right to object to derogatory treatment of a work; the right not to have a work falsely attributed; and the right to privacy of certain films and photographs. Exceptions to these rights include computer programs and computer-generated works. Employees have limited moral rights. Moral rights cannot be transferred, but they can be waived.

Database right

Database right protects the collection of data in a database, provided that the data are arranged in a systematic and methodical way and are individually accessible by electronic or other means. The right lasts for 15 years from the end of the year in which it is completed or the end of the year when it is made available to the public, if that happens before completion.

Databases must be original. The database must be sufficiently original to ‘constitute the author’s own intellectual creation’. There is a further requirement that there has been a substantial investment in obtaining, verifying or presenting the contents of the database.

Database right is another unregistered right, which arises automatically and can be circumvented by independent creation of a similar database (see section on databases above).

Patents

What is patentable?

Patents protect new inventions that make an inventive step beyond the current technology and which are of use to industry. Some types of invention, such as software and business methods, are unpatentable as such, but they can still be patented if there is another facet of the invention that is patentable.

So, for example, word-processing software is generally viewed as plain software, but software that has a technical effect, such as control software used in a car, may still be patentable. An appreciable amount of software is now patented, and some of the large software providers have a considerable number of patents.

As a registered right, a patent can be exceedingly powerful, so there are strict requirements for validity. In industrialised countries, inventions are unpatentable if they have been disclosed to anybody, with limited exceptions such as certain confidential disclosures. As regards the inventive step, it must be something that would not be obvious to a skilled but unimaginative worker in the field.

Patents and applications contain a description of the invention together with ‘claims’ that set out the features of the invention that merit protection. They generally last for 20 years from the date when the application was filed, subject to payment of renewal fees. Patents are always subject to revocation on the grounds that they do not meet the requirements for patentability. In the territories where they are granted, they provide a monopoly within the scope of the claims.

Formalities

Applications for patents must be made for each territory where protection is required. There are international filing systems that assist with delivering the applications and it is possible to postpone dealings with national and regional patent offices for around 30 months.

After patents are filed there is usually a search to determine whether the invention is novel. This is followed by examination of the application in each patent office where the application is made, to see whether the invention meets the requirements for patentability. At this stage the scope of the claims may be reduced during negotiation with the examiner.

As a result of this procedure and the requirement for translations, patenting can be costly, especially large-scale international filings. However, a patent is the best means of protection for a great many inventions and can be very valuable.

Confidential information

In England, it is possible to protect confidential information, such as secret formulae and sensitive commercial information. Protection arises automatically if the information is genuinely confidential, but it is lost if the information ceases to be confidential. It is possible to get an injunction to prevent disclosure, but after information has become widely known you can only claim damages for the unauthorised disclosure.

Proving that information is confidential and that disclosure is unauthorised can be difficult, but it is much easier if you have a contract that says that it is confidential and that it must not be disclosed.

Strictly speaking, confidential information is not intellectual property.

Trade marks

What is registrable?

In the UK and the EU, trade marks protect signs that indicate the origin of goods and services. They are not confined to word marks and logos. Provided that they can be represented graphically, they can even be shapes and smells, although many such applications have been refused.

In principle, anything may be registered provided that it is capable of distinguishing the goods of the trade mark owner. However, if a mark is descriptive of the goods themselves it may be refused registration.

Registration may also be refused if a mark is too close to a mark that is already registered or if use of the mark could lead to passing off (see below).

Infringement

Trade marks provide a limited monopoly. They can be used to prevent others from using the same mark on the same goods or services, or, if there is a possibility of confusion, a similar mark with similar goods or services. Well-known marks can also be infringed if they are used on different goods that would not be confused where, without due cause, the use would take unfair advantage of the mark or be detrimental to it.

Formalities

As with patents, an application needs to be made in each territory where protection is required and there are international conventions that assist with this. In addition to national marks in the EU, there is a separate Community mark that covers the entire EU. In the UK, trade marks are renewable every 10 years, and may last indefinitely with continued renewal. Like patents, they are always subject to revocation on the grounds that they no longer meet the requirements for registration.

Passing off

Passing off is a right that protects goodwill. Technically, there must be a misrepresentation made in the course of trade to existing or prospective customers that is calculated to injure the goodwill of an enterprise and is likely to cause damage.

This is not as complicated as it sounds. It usually involves one business trying to persuade customers of another that they are one and the same so that the clients of the first business will buy from the second. Selling lemon juice in a plastic lemon that was suspiciously similar to another trader’s packaging has been sufficient to give rise to a claim for passing off.

Like confidential information, it is not, strictly, an intellectual property right, but it can be very useful for protecting unregistered trade marks and get-up, and there are no formalities. However, lesser-known enterprises may have difficulty in demonstrating sufficient goodwill to take action.

Designs

Currently there are so many rights protecting designs that it can be confusing.

There are two types of right under UK law that are valid in the UK only: design rights and registered designs. Under European law, which is applicable throughout the EU including the UK, there is a new registered community design and a community design right.

UK registered designs

• Scope–This protection is similar to the registered Community design that is described below.

  Registered designs protect the appearance of the whole or part of a product resulting from features of lines, contours, colours, shapes, textures and/or materials, and/or ornamentation in particular. They cover graphic symbols such as computer icons, typographic typefaces, packaging and get-up.

  This right does not protect parts of objects that are dictated solely by their technical function, are hidden from view during normal use, or are features of objects that fit mechanically around other objects so that either object may perform its function.

• Novelty and individual character–Designs must be ‘new’ and have ‘individual character’ in order to qualify for protection. For these purposes ‘new’ means that it has not been disclosed prior to the previous 12 months in such a way that it would become known to specialists in the industry sector within the community. It is unwise to take advantage of this 12-month period, in case somebody else makes a similar design during that period.
• Formalities–Registered design rights may be granted on application to the UK Patent Office. Rights last for a maximum of 25 years provided that they are renewed every 5 years. In common with patents and trade marks, registered designs are subject to revocation on the grounds that they do not fulfil the requirements for registration. As a registered right, the protection provides a monopoly within the registered specification, although the scope of that monopoly may well be interpreted narrowly, more especially in very popular forms of design. Registered design protection is available in many other territories.

UK design right

A design right is an unregistered right that is peculiar to the UK. It protects aspects of shape and configuration (whether internal or external) of the whole or part of an article. It does not protect surface decoration, parts of articles that are designed to fit around other objects, or which are designed to match other objects, or principles of construction.

In the context of computers, a modified form of this right protects semiconductor topographies (i.e. chip designs). It can also protect the shape of new equipment, such as a mouse with an unusual shape.

The right lasts for 15 years from the end of the year in which the design was first recorded in a design document or an article was made to the design, whichever happened first. This 15-year period is reduced if articles made to the design are legitimately marketed in the first 5 years, in which case the right lasts for 10 years from the date of the first sale or hire.

Anybody can apply to the Intellectual Property Office for a licence during the last five years of the right.

Community designs

There is a registered Community design, which covers the same scope as UK registered designs (see above) but which extends across the entire EU.

Unregistered Community designs, which also apply throughout the EU, are similar to the registered variety, although they only last for three years from the date when they are first made available to the public within the Community. If the design becomes known to specialists in the design sector concerned, then for these purposes, it is deemed to be available to the public.

The unregistered right is intended to protect designs that are short-lived. Like the registered right, designs must be new and have individual character.

An unregistered design does not qualify for protection unless it is made available to the public. So the first person to disclose a design is entitled to any unregistered design right, although somebody who develops the design independently and not by copying can still use the design.

Taking advice

You will need to take advice from a specialist intellectual property practitioner. If you do not know of one, the Law Society should be able to help you to find one. There are other sources of this information, but they are not always reliable.