Intellectual property law provides tools that can enhance an institution’s ability to capitalise on the value of its expertise and help it exploit innovative opportunities.

There is increasing awareness of the potential commercial and social value in the work of further and higher education institutions and their staff. Education establishments are more than ever expected be involved in the exploitation of their intellectual property creations with outside bodies. Getting licences and agreements right from the outset is crucial to success and effectiveness as well as maximising the return on investment.

In addition as producers and users of intellectual property, compliance with the law and instilling respect for the rights of others continues to present challenges for institutions with large numbers of learners engaging with new technologies.

As well as commercial deals, some institutions make available intellectual property assets that are available free of charge to businesses and individuals who think they can exploit the technology and are interested in working with the institution. See for example the University of Glasgow's Easy Access IP which offers innovation and patents to those who can make best use of the research.

Commercialising research

Institutions are involved in knowledge creation, development and exchange and are working to ensure that new ideas, technologies and innovations flow from their institution into the market place. A successful outcome when commercialising research may be the licensing of intellectual property to a new or existing business.

The reality is that many institutions will have processes in place that manage innovation all the way from disclosure through to a commercial reality, along with staff that provide assistance and support, from finding relevant funding through to the identification and engagement of potential licensees and collaborative partners.

Apart from those that specialise in this area it is valuable for institutions to instil in staff and students a broad understanding of the laws of intellectual property so that awareness is raised and the opportunities to capture innovation at the earliest stage are maximised. By ensuring that its learners and staff understand the regulatory environment that governs this work an institution will be better able to maximise the benefits of research and innovation.  

It is generally the case that where a college is using educational licenses for learning resources and software it is a breach of the licence to use them for commercial purposes. 

Research data, teaching materials, lecture notes may all be works which attract copyright protection.

Copyright is a legally enforceable property right that enables a rights holder to profit from a work such as a book, for example. It does this by preventing others from exploiting the work without the rights holder's say so for a period of time.

Copyright protects original literary, artistic, dramatic and musical works, sound recordings, films or broadcasts, and the typographical arrangement (layout) of published editions. Books, papers and magazines, learning materials, music, artwork and photographs, films, television and radio programmes, software and computer games are all protected by copyright. 

The copyright owner can licence copies or adaptations of the work (eg translations, movie rights to a book etc). A licence is a contractual agreement between the copyright owner and user that limits how the user can use the work.

Software (computer programs) and databases can be protected as literary works, as well as other possible rights.

Copyright is free and automatic – no registration is required.

Copyright law is dealt with in more depth in our copyright guide. 

A patent gives an inventor the right for a limited period to stop others from making, using or selling an invention without the permission of the inventor.

A patent is an intellectual property right, granted to an inventor by a country’s government as a territorial right usually for twenty years. It makes it illegal for anyone except the owner or someone with the owner’s permission to make, use, import or sell the invention in the country where the patent was granted. Patent owners can enjoy exclusive rights to their inventions enabling them to strike licensing deals or keep rivals at bay while they establish their brand.

Patents protect new inventions and cover how things work, what they do, how they do it, what they are made of and how they are made. It gives the owner the right to prevent others from making, using, importing or selling the invention without permission.

Key facts

• An invention must be novel
• Inventions must be kept confidential to be patentable
• Inventions must be capable of industrial application
• Granting a patent application can take several years
• Patents can be renewed for a maximum of 20 years.

Using other people's inventions

If an institution wants to use other people’s patents, it will usually need permission, and this is typically done by approaching the owner to agree a licence with them, or, in some cases, by purchasing the patent from them.  

If you use others’ patented inventions without permission, you are infringing the patent and the owner can take legal action against you and claim damages.

Software patents

Inventions relating to computer software may be patentable, but only if they involve something more than just software running on a computer in a technically ordinary way. Whether a computer-implemented invention is patentable depends on the contribution the invention makes. 

For example, if it provides improved control of a car braking system, it is likely to be patentable, but if it merely provides an improved accounting system, it is probably not patentable because this is a non-technical purpose.

How does our college commercialise technology that we have developed?

If the developed technology fulfils the requirements for patentability then starting a patent application may be the best thing to do.  Once this process is underway then examining what the options exist to commercialise the technology is the next step. 

A summary of the UK application process is available on the Patent Office website.  To be eligible for patent protection, your invention must be new, inventive and must not be of an excluded type.

If an individual staff member has come up with something new and innovative how can he/she be sure that someone else doesn’t copy it and steal the idea?

If the innovation is significant and has potential commercial value then likewise starting a patent application is the best thing to do.  A patent gives the right to stop others from copying, manufacturing, selling, and importing an invention without the owner’s permission. 

The existence of a patent may be enough on its own to stop others from trying to exploit an invention.  If it does not, it gives the right to take legal action to stop others exploiting an invention and to claim damages.

What do I need in order to get a patent?

An invention can be patented if it is:

• New – not already known to the public before the date a patent is applied for;
• Inventive – not an obvious modification of what is already known; and
• Capable of industrial application, that is, can be made or used in any kind of industry.

Who grants patents?

UK patents are granted either by the Patent Office as a result of a patent application filed with us or by the European Patent Office as a result of a patent application filed under the European Patent Convention (EPC).

Is it a costly exercise getting a patent?

Applying for and renewing a patent can be expensive and take a long time. Before applying for a patent it is necessary to consider how commercially successful the invention is likely to be and how quickly it will be possible to get it on the market.  The likely costs of developing, manufacturing and marketing the invention should also be considered.  Other ways of different aspects of a product or process include.

• Registered design
• Registered trade marks
• Unregistered design right and copyright
• Secrecy, private ‘know-how’ and confidentiality agreements.

Further details of these different forms of intellectual property, are available on the Patent Office website.

Why would I need a patent?

If an invention is not patented, anyone can use, make or sell the invention without permission.  It may be possible to try and keep the invention secret, but this may not be possible for a product where the technology is on display

How do I know if my invention is worth patenting?

An invention will be worth patenting if the college has a realistic prospect of being able to protect, sell, licence, share or use invention in order to benefit commercially.

What do I need to do to have my invention patented?

A summary of the UK application process is available on the Patent Office website. The process involves preparing a ‘patent specification’ which includes a written ‘description’ of the invention.  It is then necessary to fill in and submitting a form together with the appropriate fees which is followed by a preliminary examination by the Patent Office. 

If the application meets all the requirements of the Patents Act 1977, the Patent Office will grant the patent, publish the application in its final form and issue a certificate.  For work related inventions many institutions will have research and knowledge exchange services which will deal with the process on an individual’s behalf.

Design is all about the way an object looks: its shape, its visual appeal. A design right protects the design from copying. In the United Kingdom designs are protected in two main ways: unregistered designs and registered designs.

Ownership

The creator of the design is usually the first owner of the intellectual property in a design. Design right automatically protects a design for ten years after the design was first sold or fifteen years after it was created - whichever is earliest. The UK law is now (post Intellectual Property Act 2014 amendments to the CDPA) that in the absence of a contract to the contrary, where a design has been commissioned, the designer will be the initial owner of the design, and not the person who commissioned it.  

Unregistered designs

Two forms of unregistered design right exist covering the UK.

The first covers the UK only, the second is the so-called community unregistered design right, covering the whole of the European Union (EU). The two forms of design right co-exist, although are not identical.

• In essence, the UK design right protects original, non-commonplace designs of the shape or configuration of products and can last fifteen years
• Community design right gives protection against deliberate copying of designs for up to three years

UK design right

Unregistered design right gives automatic protection for the internal or external shape or configuration of an original design and does not involve any formal application procedure. It allows the rights holder to stop anyone from copying the shape or configuration of a product, but does not give protection for any of the two-dimensional aspects, for example patterns. Design right is free protection for 3D shapes only. Two-dimensional designs can be protected using copyright or registered designs.

UK design right lasts either ten years after the first marketing of products that use the design or fifteen years after creation of the design, whichever is earlier. For the first five years anyone can be stopped from copying the design. For the rest of the time the design is subject to a license of right. This means that anyone is entitled to a licence to make and sell products copying the design.

Design right is like copyright in that the protection arises automatically when the design is created. Unlike copyright, design right is effective only in the United Kingdom.

Community design right

An unregistered community design does not require an application procedure as the right arises automatically upon creation. As with UK unregistered design right, unregistered community design protection arises for the shape and configuration as applied to a product. However, the community version also provides protection for the appearance of a product/article resulting from the lines, colours, texture and/or materials and/or from ornamentation and surface decoration of a product.

Registered designs

Designs can be protected in the UK by registering them by application to the UK Designs Registry. The design must be new and have 'individual character' in that the design must produce a different overall impression from earlier designs. As with patent protection, the novelty requirement is absolute.

A registered design gives the owner a monopoly right in the design. This means that third parties cannot produce products which incorporate the registered design regardless of whether they knew about or copied the design. The protection extends to the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture, materials of the product or its ornamentation.

Community design

Designs can also be registered in foreign countries and across the whole of the EU via a so-called 'community design'. A design application must be filed, in the UK or through the community design system, within twelve months of the first marketing of a product to the design. This registered right gives monopoly protection to original designs for up to twenty five years.

More information

• Gov.uk - intellectual property: designs

Trade marks are symbols that distinguish goods and services in the marketplace (like brand names and logos) from those of competitors. It can be for example words, logos or a combination of both. They are signs used in trade and a trade mark is usually used as a marketing tool so that customers can recognise particular products or services.  

In the United Kingdom, trade marks are protected in two main ways.

Trade marks, or more precisely the goodwill associated with the business conducted under the trade mark, is protected via the common law tort of 'passing off'. If you can prove that you have established, via the use of the trade mark, 'goodwill' in the business associated with that trade mark, then this goodwill is protectable. Goodwill is essentially a reputation in the mark.

Trade marks are also protected via statutory protection under the Trade Marks Act 1994. Trade marks can be protected by registering the trade mark at the UK Trade Marks Registry. A registered trade mark in the United Kingdom is infringed by the use of the same or similar sign in relation to the same or similar goods and services for which the trade mark is registered.

Further details are available on the UK government website.

European and international trade marks

You can use a single application system to apply for an International trade mark (for certain countries throughout the world), or a community trade mark (for protection in Europe).

Both these single application systems cover many countries including the United Kingdom. An international application can be made at the same time as making a UK application.

Community trade mark (CTM)

If you want trade mark protection in countries which are members of the European Union (EU), you can apply for a community trade mark (CTM) through the Office for Harmonization in the Internal Market (OHIM), based in Alicante, Spain. The CTM system creates a unified trademark registration system in Europe, further details are available from the Intellectual Property Office.

Key facts

A trade mark must be:

• Distinctive in terms of the goods and services provided.  In other words it can be recognised as a sign that distinguishes one organisation's goods or service from someone else's
• Renewed every 10 years to keep it in force.

Intellectual property rights can be bought and sold and will involve binding contracts. Usually a document trail exists to establish ownership. Rights can also be acquired at the stage that works are created.

Copyright

If a literary, dramatic, musical or artistic work, or a film, is created by an employee in the course of employment, the employer is the first owner of copyright subject to any contrary agreement. This will be the case with almost all the work created by employed staff at FE and HE institutions with the college or university owning the copyright in the work created.

Patents

At present, if an employee in the UK invents something in the course of their employment, the employer owns the rights to any patent that follows. However, the employee may be entitled to an award of compensation – as long as "the invention or the patent for it (or the combination of both) is … of outstanding benefit to the employer."

Designs

The creator of the design is usually the first owner of the intellectual property in a design. Design right automatically protects a design for ten years after the design was first sold or fifteen years after it was created - whichever is earliest. There is no official symbol to show that a design is registered, but it is possible to display the design number on the object or product once it is registered.

Design registration provides considerable benefits, although your design may have some automatic protection under unregistered design right and copyright laws.

If you are the creator of a design, you will probably be regarded as the owner of that design and entitled to apply for design registration. Some exceptions apply, for example where designs are created in the course of employment. The UK law is now (post Intellectual Property Act 2014 amendments to the CDPA) that in the absence of a contract to the contrary, where a design has been commissioned, the designer will be the initial owner of the design, and not the person who commissioned it.  

Trade marks

The first owner of a trade mark will generally be the company that first uses the mark, subject to the mark not already being registered by someone else. Copyright ownership will also be relevant where the trade mark originates from a copyright work, such as a novel logo. Copyright ownership can arise automatically or by means of transfer of rights.

Further details are available on the UK government website.

A database, that is a collection of data or other material that is arranged in such a way so that the items are individually accessible, may be protected by copyright as a literary work and/or database right. This protection can apply to both paper and electronic databases.

• For copyright protection to apply the database must have originality in the selection or arrangement of the contents
• For database right to apply there must have been a substantial investment in obtaining, verifying or presenting its contents.

It is possible that a particular database will satisfy both these requirements so that both copyright and database right apply.

There is no registration for database right - it is an automatic right like copyright and commences as soon as the material that can be protected exists in a recorded form. However, the term of protection under database right is much shorter than under copyright.

Database right lasts for fifteen years from making but, if published during this time, then the term is fifteen years from publication.

Copyright

The duration of copyright is dependent on the type of work in question.

Literary, dramatic, musical and artistic works

The lifetime of the author plus a period of seventy years from the end of the year in which the author dies.

Computer generated works

Fifty years from end of the year in which the work was made.  A work is deemed to be computer generated where there is “no human author”.

Films

Seventy years from the end of the year in which the death occurs of the last to die of the principal director, author of the screenplay. author of the dialogue or composer of the music specially created for and used in the film.

Sound recordings

Fifty years from the end of year in which it was made or, if published or made available to the public during this time, 70 years from the end of the year in which it is first published or made available to the public.

Broadcasts

Fifty years from the end of the year the broadcast was made.

Typographical arrangement of published editions

Twenty five years from the end of the year of first publication.

Patents

A patent is an intellectual property right, granted to an inventor by a country’s government as a territorial right usually for twenty years. As long as renewal fees are paid every year, a UK patent has a life of twenty years and provides protection throughout the UK, but no further.

Designs

By registering a design the proprietor obtains the exclusive right for twenty five years. A United Kingdom or community design registration may last for up to twenty five years, but has to be renewed every five years.

UK unregistered design right has a duration of ten years from the end of the year of first sale of the article, subject to an overall maximum of fifteen years.

Community unregistered design right lasts for three years from the date on which the design is first made available to the public in the EU.

Trade marks

Trade mark registration can be renewed indefinitely. However, to keep a trade mark in force, it must be renewed on the tenth anniversary of the filing date and every ten years after that.

Intellectual property laws distinguish deliberate theft and innocent infringement. Different rules apply to different types of intellectual property.

Legislation covers both civil infringement - against patents, trade marks, designs and copyright - and criminal offences in the case of trade marks and copyright. Ignorance, ie not knowing that a work is protected, is not a defence for either copyright or design right infringement.

Copyright

Copyright is only infringed if the unauthorised use involves the whole or a 'substantial part' of the copyright work. Unauthorised use usually involves copying, issuing copies, renting or lending, performing, showing, playing, communicating or adapting the copyright work.

In order to succeed with an action for infringement, it is necessary to establish that the alleged infringing party actually copied the work protected rather than arrived at their work by means of independent creative activity.

Copyright crime

Deliberate infringement of copyright on a commercial scale may be a criminal offence. This activity is usually known as copyright piracy and is often also linked to wilful infringement of trade marks known as counterfeiting where criminal offences also exist. Piracy and counterfeiting are often also referred to as intellectual property or IP crime.

So, if the infringement of a copyright work is intentional, is on a large scale and copies of a work are being made for sale, being imported, distributed, sold or put on the internet, then it is worth informing the police or the local Trading Standards department. They can decide whether action by them, including possible prosecution, is justified. 

Exceptions

For copyright a number of exceptions and defences apply to schools, universities and other educational establishments when using content that belongs to someone else. These are explained in more detail in the our copyright guide.

In general use of a copyright work is not an infringement if it is used fairly and with acknowledgement, for the purpose of non-commercial research, private study, illustration for instruction or criticism or review.

Patents

Infringing a patent means manufacturing, using, selling or importing a patented product or process without the patent owner's permission. The owner of a patent can take legal action against you and claim damages if you infringe their patent.

Exceptions

Defences to patent infringement are given under section 60(5) of the Patents Act 1977. In general it is permissible to use a patent if it is done privately and for non-commercial purposes. Also patent laws in most European countries include a “research exception” (or “research exemption”) which permits use of a patented invention for experimental purposes without infringing the rights of the holder.

It is likely that the experimental use defence is becoming increasingly important as patenting (particular in relation to biotechnology) enters the traditional domains of ‘pure’ scientific research carried out within universities.

Prior use

Section 64 of the Patents Act 1977 gives third parties a right to continue acts which would otherwise infringe a patent, if those acts were begun before the priority date.  The prior acts (or preparations) must have been done in "good faith". This is a common English legal term and is generally understood to exclude acts done on the basis of information originating from the inventor and performed without consent.

Designs

A design right protects the design from copying. By registering a design the proprietor obtains the exclusive right for twenty five years (provided renewal fees are paid every five years) to make, offer, put on the market, import or export the design, or stock the product for the above purposes. These rights are infringed by a third party who does any of the above with the design, for commercial gain without the permission of the rights holder.

Unlike registered design protection, design right is not an absolute form of protection. With UK unregistered design right in order to successfully pursue an alleged infringer, it is necessary to show that the features of the design in question were copied.

For a design protected by design registration however, it is merely a matter of considering the similarities between the designs irrespective of whether the alleged infringing design might have been created quite independently from reference to the alleged infringed design.

Registered design

A competitor will infringe if they produce a product which uses the same design as the registered design, or which uses any design which does not produce a different overall impression on the informed user. This means that the competitor should not escape being liable for infringement merely by making trivial changes to the registered design.

Exceptions

There are exceptions which provide that use of a design will not generally be infringement when, for example, the use was for non- commercial purposes, for experimental purposes or for citations and teaching purposes. The limitations are that the use is fair and does not prejudice the normal exploitation of the design and that the source is acknowledged.

Trade marks

A registered trade mark is a property right whereby the owner is granted exclusive rights in relation the use of the trade mark. If someone uses an identical or similar trade mark for identical or similar goods or services to a trade mark already in use without the owner's consent, that person infringes the trade mark. Remedies are available to the owner to prevent an ongoing infringement, including damages for past infringements.

Exceptions

The Trade Mark Act 1994 specifies the following defences to trademark infringement – all of which must be done in accordance with honest practices in industrial or commercial matters:

• Use of another registered trademark - If someone else has in fact registered another trademark in relation to the same goods and services as an already existing trademark then there will be no trademark infringement
• Use of own name and address - If a company uses their name and address as a trademark then this will not be seen as trademark infringement
• Use of certain indications - If someone else uses certain indications such as the kind of goods or services, the quality and quantity of the goods or services, the value or geographical origin of the goods or services then this will not constitute an infringement of a registered trademark
• Use of a trade mark where it is necessary to indicate the intended purpose of a product or service will mean that there will be no infringement
• The use of an earlier mark - There will be no infringement where there has been use of an earlier right in the course of trade in a certain area.

Further details are available on trade mark infringement on the UK government website.

Passing off

If you have not registered your trade mark you may still be able to take action against someone who uses your mark on his or her goods or services without your permission, using a "passing off" legal action. Passing off comprises three elements, goodwill, misrepresentation and damage. To be successful you must prove that:

• The mark is yours
• You have built up a reputation in the mark
• You have been harmed in some way by the other person's misrepresentation of your mark.

Further information on intellectual property crime and infringement is available on the UK government website.

Copyright

Copyright is essentially a private right so decisions about how to enforce the right, that is what to do when a copyright work is used without permission, are generally for the copyright holder to take.

By application to the courts the copyright owner can:

• Stop a person making further infringing use of the material by seeking an injunction, interdict or other order
• Claim damages from those who infringe their copyright
• Compel the infringing party to give up or destroy the infringing.

Additional remedies are available for infringement on a commercial scale. Deliberate infringement of copyright on a commercial scale may be a criminal offence. This activity is usually known as copyright piracy and is often linked to wilful infringement of trade marks known as counterfeiting where criminal offences also exist.

Piracy and counterfeiting are therefore often also referred to as intellectual property or IP crime. In the unlikely situation that a senior office holder in an FE or HE institution knowingly facilitated the commercial abuse of copyright law the institution could be held responsible.

Patents

Intellectual property rights usually give the right to stop others from copying, manufacturing, selling, and importing an invention without the owner’s permission. The existence of a patent may be enough on its own to stop others from trying to exploit an invention. If it does not, patent law gives the right to take legal action to stop others exploiting an invention and to claim damages.

Designs

Registering a design gives exclusive rights for the look and appearance of the product or object. The existence of a design registration may be enough on its own to stop others from trying to exploit the design. If it does not, it gives the right to take legal action to stop others exploiting the design and to claim damages.

It is possible to get a court order to force an infringer to cease trading. It is then possible to consider whether to negotiate or to take legal action for compensation. Infringement actions are taken to the high court of England and Wales, the high court of Northern Ireland or the court of session in Scotland.

Trade marks

If someone uses an identical or similar and confusable trade mark for identical or similar goods or services to a trade mark already in use without the owner’s consent, that person infringes the trade mark. In an infringement action, the registered owner may claim any of the following remedies:

• Damages or an account of profits
• An order for the offending sign to be erased, removed or obliterated from any infringing goods, material or articles. If this is not reasonably practicable, an order may be sought for the infringing party to destroy or deliver the infringing goods to a person in the court direct
• Injunctive relief (or, in Scotland, Interdict).

Further information on intellectual property crime and infringement is available on the UK government website.

International

Many institutions are involved in overseas learning and it is essential to know how to use, guard and enforce their intellectual property rights and the licenses they pay for. Intellectual property rights are territorial and you can learn about intellectual property protection abroad here.

• The law in relation to intellectual property (IP) rights infringement - Intellectual Property Office
• The intellectual asset management guide helps education institutions to protect intellectual assets created by staff and students
• Identify your intellectual property assets with the online IP health check tool from the Intellectual Property Office
• IP for universities: guidance, tools and case studies
• The e-learning training modules 'IP Equip' helps with an understanding of intellectual property rights ie trade marks, patents, copyright and designs
• Discover ways to help researchers find and use your digital collection