Intellectual Property

Protection of Intangible Intellectual Assets

Intellectual property can be a fixed and definite thing, even if it remains intangible. Domain names, registered designs and patents are all protected because they are registered at an appropriate registry. Unregistered trademarks, copyright and unregistered design right are also protected, but their protection does not (in the UK) arise from registration. We advise on aspects of all of these intellectual property rights, and liaise with patent agents and trademark attorneys when dealing with the specialist areas which they cover (for example, international trademark registration, or registration and assessment of patents).

We advise on:

  • Domain names
  • Copyright
  • Design Right licensing
  • Trademark licensing
  • Patent licensing

Exploitation of Rights

The value of intellectual property lies in its exploitation. The means of extraction of value from your portfolio of IP are virtually limitless: the law is extremely flexible in this area, allowing great scope not only for creativity in the creation of IP in the first place, but also in its exploitation. When advising in this area, we focus on the long term: is an outright sale appropriate, or is would a licensing deal be a better bet? If you want a royalties agreement, do you want an option to buy out all the rights in the IP in the future? Areas of exploitation we cover include:

  • Licensing
  • Assignment
  • Royalty deals
  • Publishing contracts
  • Joint ventures

Our work also includes rights clearances: examining items of your intellectual property (for example a film portfolio) to determine the extent to which they can be exploited.

We have also worked with a number of well known fiction and non-fiction authors to assist in structuring their intellectual property assets so as to maximise flexibility and security and, with the assistance of specialist UK and international accountants, to minimise their international tax profile.

Protection of Intellectual Property

As an intangible, your intellectual property can be open to special risk. How can you be sure that the copyright in software you are thinking of buying really belongs to the seller, for example? We can help you to:

  • Verify the ownership of your IP (due diligence)
  • Ringfence your IP from risk
  • Protect your IP through registration
  • Deal with free and open source software licensing issues

Special Considerations

Intellectual property has some special wrinkles you will need to be advised on. For example, there are rights connected to copyright which cannot be transferred and will always remain with the author, called the “moral rights” under UK law. These rights can be waived, but under the law of some other countries (France for example), they cannot be, and you may find that the author of a work still retains some control over it in certain parts of the world, even if it has been assigned to you.

There are also some other rights to ongoing payment for exploitation of work such as sound recordings.

We advise on all of these areas.

For more information, contact Andrew Katz.

Team

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