IP and Technology
28 March 2014
24 March 2014
24 July 2014
2 January 2014
Lookalikes: a wealth of confusion… brand-owners vs own-branders | competition law vs law of unfair competition
28 March 2014
Intellectual property rights (IPRs) offer protection over original creative works. The most commonly known are patents, trade marks, design rights and copyright, though IPRs also extend to niche areas such as plant varieties, performers’ rights and database rights. Each IPR protects a different aspect of a creative work.
A patent is an exclusive right granted for an invention which can be a new product or a new process. Design rights protect aspects of the visual appearance of a product including its shape. Trade marks protect brands and allow traders to distinguish the goods and services they offer from those of their competitors. Patents, trade marks and registered design rights provide monopoly protection. Copyright is not a monopoly right but protects certain original works such as literary and artistic works, music, film, sound recordings and broadcasts from being copied.
Technology, media and telecommunications (TMT) isn’t a practice area in the same way as employment law or litigation. Instead it is a sector-focused discipline being defined more by the industries involved than the particular type of law practiced. The typical clients of a TMT lawyer might include production companies, distributors and broadcasters, channel providers, content providers, finance providers and governmental and other public bodies. The diverse nature of TMT means a lawyer will have to be able to advise on a wide range of legal issues in these sectors.
The working culture
Intellectual property (IP) lawyers have a diverse practice. Clients range from creative artists to multinational pharmaceutical companies. On contentious matters, IP lawyers often work in a team comprising one or more partners with several associates and trainees. On the non-contentious side smaller teams are more commonly used but may well include colleagues from other departments. Given the international presence of many key clients in the IP sector and the fact that certain IPRs are harmonised across the EU there may well be travel opportunities, either when working with multinational companies or on secondment to overseas offices.
For their part, TMT lawyers are expected to provide industry-specific advice across a range of legal disciplines such as commercial advice on IT transactions, dispute resolution, contract management, corporate restructuring, business growth and financing, regulatory compliance, outsourcing, employment and competition law. TMT lawyers must ensure that they have an up-to-date understanding of the latest developments in their specialist sector, particularly new innovations in technology.
Our increasingly connected world also means that clients, more than ever, need advice in multiple jurisdictions. This brings an international flavour to TMT and IP work along with its own challenges and rewards.
What other practice areas do IP/TMT lawyers work most closely with?
The overlap between IP and competition law is becoming more important as monopolies granted by IPRs are inherently anti-competitive. Traditionally, this overlap arose in the licensing of IPRs but more recently issues in respect of arrangements that seek to curb parallel trade in pharmaceuticals in Europe. IP/TMT lawyers also frequently work with commercial, corporate, employment and banking teams. For example, work with other practice areas could include advising on the regulatory issues involved in a corporate deal in the telecoms sector, setting up a joint venture company for the development of a new technology or helping a company stop a departing employee from stealing its trade secrets.
What phrase is an IP/TMT lawyer most likely to use and what does it mean?
You’ll often hear the terms “infringement” and “validity” used in IPR-based litigation. Infringement relates to whether a third party is using an IPR without permission or beyond the scope of use granted by its owner. Validity relates to whether an IPR should exist in the first place. Understanding the arguments around these two concepts and how they interact is often the key to success in an IPR dispute.
It’s also handy to know that it’s a “patent” not a “pay-tent” (unless you’re interested in shiny shoes) and a “trade mark” in the UK but a “trademark” in the US. For any of the technical terms and acronyms you might come across, Wikipedia is always your best friend.
As a trainee in an IP department you are likely to experience a wide variety of work ranging from heavy duty patent litigation for multinational high-tech corporations to getting involved in advising start-up businesses on the protection of their IPRs. A passion for science and technology is highly valued if you have an interest in patents but other types of IPR (sometimes called “Soft IP”) are open to people from all backgrounds.
Due to the specialised nature of some of the work involved in IP as well as the contrast with matters you are likely to encounter in other legal departments, being a trainee can be a steep learning curve. That said, along with gaining an appreciation of the particular statutory and regulatory framework within which the IP sector exists, many of the tasks you will be given as a trainee will be similar to those in other departments. You will be expected to show an eye for detail when reviewing commercial agreements and litigation correspondence. You will hone your legal research skills in the process of briefing your colleagues on relevant aspects of constantly changing UK and European regulations in this field and you will need to display analytical and problem-solving capabilities when tasked with drafting licences for clients looking to exploit their IPRs. Your ability to organise yourself and others will be tested by preparing and managing documentation ahead of court hearings and client meetings.
For trainees interested in the TMT sector, project management skills can be just as important as having a strong academic background. TMT lawyers are frequently called upon to support large-scale project work and must be able to keep a cool head in order to meet tight deadlines. This aside, it is important for TMT lawyers to keep abreast of the latest developments in this sector. Having the initiative to identify the technological and regulatory changes that might impact on clients can make a trainee stand out from the crowd.
The IP and TMT arenas are fast-paced. In recent years they have been converging, which means lawyers have to expand their knowledge and adapt quickly by gaining new skills. In an ever-changing world, regulation often fails to keep up with new technology so IP and TMT lawyers often find themselves dealing with situations where the law wasn’t designed to cover the new ways in which our media, technology and communications operate. This is perhaps most obvious from the ongoing debate over the application of libel and privacy laws to social networks and other online media. However it applies equally to the growth of other technologies such as cloud computing and peer-to-peer file sharing.
Forthcoming reform to watch out for from a UK perspective includes the implementation of the Digital Economy Act 2010 to try and curb infringement of copyright online. At an EU level, data protection and online privacy are taking a centre stage with the recent introduction of the new rules on website cookies and proposals for a comprehensive reform of the EU’s 1995 data protection rules and privacy which were formulated at a time where less than 1% of Europeans used the internet.
Joe Jackson is an associate and Toby Bond is a trainee at Bird & Bird