When does your business law client need a specialist IP lawyer?

About the author 

Bill Lister is an IP solicitor and partner of Appleyard Lees. Bill has experience advising a wide range of clients, with a substantial reputation spanning branding issues, registered and unregistered trade marks, copyright, design, patents and trade secrets.

Business lawyers are expected to advise their clients on a wide range of regulatory, statutory and international legal issues. As nearly all businesses own intellectual property rights of some sort (whether they know it or not), lawyers managing their clients’ more general business affairs should be able to recognise (1) considerations when advising clients in this complex area of law, and (2) when their client should consult a specialist IP lawyer.

Considerations when advising clients on their IP 

IP law and litigation – complex areas of law

Intellectual property law has its own particular complexities, whilst intellectual property litigation has its own rules set out in the Civil Procedure Rules, and its own courts – the Intellectual Property Enterprise Court (IPEC) and the Patents Court of the High Court, both which have their own specialist judges.

With its broad and often highly technical nature, a business lawyer cannot be expected to have a detailed knowledge of intellectual property law. This can cause problems as the making of “unjustified threats” of infringement of trade mark, patent or registered design rights can, in some cases, expose a client to the risk of an action for damages and an injunction by a party “aggrieved” by the threats, and may arise where the rights claimed are not solid. Such cases are rare, but not unknown.

All businesses have intellectual property that should be protected 

All businesses have a business name or trading name in the form of registered or unregistered trade marks and therefore have branding, goodwill and a reputation to protect.  Businesses own websites, marketing literature, logos, documents, manuals and artistic designs and therefore own copyright.  This copyright may even apply to software which the business has created.

If the business has created or owns products or industrial designs, these might be protected by registered or unregistered design rights.  Any inventions belonging to the business may be protected by a patent.  Any information it may not want out there concerning its products or processes or, indeed, its business in general, may be protected as trade secrets or by the laws protecting confidential information.  All these rights are lumped together under the general description of “intellectual property.”

When to consult a specialist IP lawyer 

In recent years there has been a movement towards intellectual property litigation being increasingly handled either by dedicated intellectual property solicitors, or by solicitors working within firms of patent and trade mark attorneys who have easy access to specialised prior art search engines and professional skills.

One of the particular advantages of instructing a specialist lawyer, especially in a patent or design right dispute, is that the lawyer may well have a relevant scientific background or at least have a familiarity with the underpinning technology. Patents are usually about technology, or the application of technology, and a familiarity is essential to understanding the issues, analysing validity, instructing and liaising with experts and specialist counsel, and taking instructions from the client. Failure to deal with a validity issue can result in an otherwise sound infringement case being lost and issues of unjustified threats being raised.

Law firms and patent/trade mark attorneys work well together in this regard, not only due to the attorneys having access to specialist professional skills, but also because the attorneys are regulated, not by the SRA, but by the Intellectual Property Regulation Board (IPReg). They are thereby excluded from conducting any legal work other than intellectual property, and therefore pose no threat to the solicitors’ broader relationships with their clients.

Everyone benefits from this arrangement, but in particular, the client!

Speak to an IP lawyer

If you would like to discuss your clients’ intellectual property legal requirements, please contact me, Bill Lister.