Intellectual property

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Liz Cohen is a partner and Claire Phipps-Jones a senior associate in the IP litigation team at Bristows LLP

What is intellectual property (IP) law?

It’s the global Samsung v Apple smartphone wars, the ‘understated and extreme simplicity’ of Apple’s iPad, the disappearance of The Pirate Bay, the reason why anyone can publish the football fixtures, the law preventing you from ‘jailbreaking’ your games console, the reason that you don’t buy your Predator football boots from ‘Adidos’ and can’t wear a Topshop T-shirt with Rihanna’s face on it, the secret behind the distinct taste of Coca-cola and your love of seedless grapes, to name but a few!

Intellectual property law protects those rights that are intangible intellectual creations. The obvious rights covering most of the examples referred to above are patents (protecting inventions), trade marks (brands), designs (3D shape/conformation) and copyright (in relation to literary and artistic works), but there are other rights such as database rights, confidential information, trade secrets and plant variety rights.

There are many opportunities in IP, and your work can involve any part of the lifecycle of an IP right. This can include assisting in the creation and registration of rights, for example, by drafting and processing patent/trade mark applications with registries in the UK and abroad. It can entail assisting in transactions involving IP rights to allow a rights holder to exploit and make money from its right, for example, by drafting and negotiating R&D agreements, or dealing with the transfer or licensing of IP rights in corporate transactions. Of course, it can also involve litigating IP rights when it all goes wrong!

Useful/key skills which are needed

Practising IP can involve contentious and non-contentious work, with most firms having combined departments. However, firms with a greater focus on IP, such as Bristows LLP, separate out such work into various departments by IP right and/or whether the work is litigious.

Working in IP involves working with clients ranging from individual inventors, artists, musicians, designers and writers to massive global corporations. A particularly meticulous nature and love of language is of assistance when involved in, for example, the drafting of an IP right or non-contentious transactional work, where it is necessary to map out the possible future consequences of one’s choice of words. An ability to understand and apply legal principles to sometimes complex situations with an eye on your client’s industry and commercial drivers is a crucial skill when identifying a suitable strategy in litigation or in possible settlement negotiations.

In the case of litigation, the job also involves liaising with patent and trade mark attorneys (who are generally responsible for registering IP rights and will have made various submissions on the validity of a given right in order for it to be granted), experts in the relevant industry (in particular with regard to whether an invention was new and non-obvious when it was applied for, or perhaps to assist in determining what a patent claim actually means to those in the industry and whether an allegedly infringing product actually infringes), barristers and in many cases lawyers from other jurisdictions to ensure alignment of the approach taken in proceedings across the globe. This obviously requires good communication skills, both oral and written.

Day-to-day work

In the patent litigation department at Bristows, your day largely depends on the stage of each of the various litigation projects that you are working on. It can involve initial meetings or calls with clients to discuss a case and its prospects, drafting pleadings, considering prior art (earlier publications that can be used to invalidate a patent), reviewing documents to determine whether they are relevant and need to be disclosed, preparing a product or process description with the client (which involves drafting a detailed description of the product or process that is alleged to be infringing), meetings with experts, conferences with counsel to discuss and prepare the case for trial, and obviously days in court. Alongside which there is always correspondence with the opposing side, calls and correspondence with the client to keep them well informed and obtain instructions, and often calls with foreign counsel to ensure alignment in various jurisdictions.

It is not unusual to have a number of cases each at a different stage, so managing you time is vital to ensure that all deadlines are met. Of course, there is often other work, such as preparing freedom to operate advice including infringement and validity opinions, for example, considering whether a client’s proposed new commercial product may potentially infringe an existing patent held by a third party prior to launch. This can involve reviewing not only the new product, but conducting searches of and reporting on potentially relevant patents.

You may also be involved in patent licensing and settlement negotiations, although at Bristows such agreements would largely have significant input from our commercial IP/IT team, which specialises in transactional IP.

Developments in this area in the past 12 months

The joy of working in IP is the dynamic subject matter of your work. The scope of patented inventions obviously moves on with time, so what was a hot topic in terms of patent litigation a decade ago is likely to be old news now. The current hot topics in patent litigation continue to be telecoms (with a particular focus on standard essential patents and fraud licensing rates, and life sciences (with an increasing focus on biologics). Brexit may also have some effect on IP legislation, which is currently derived from European treaties, directives and regulations. However, the biggest impact in hard IP is the likely commencement of the Unified Patent Court, which is expected in the coming few years.

The advent of the internet and the digital age means that written, audio and visual information has never been more accessible, resulting in some very interesting new issues regarding the responsibility for infringement and policing of copyright and trade marks online. The role of internet service providers (ISPs), search engines and sites such as eBay remains a popular subject of trade mark litigation.

Bristows LLP

Bristows is an independent, full-service law firm based in London with an international client base that includes some of the world’s leading innovative companies. We are particularly well known for our work in the TMT and life sciences sectors and representing businesses with significant IP and technology assets.

Recognised for groundbreaking and complex work, we distinguish ourselves through the depth of our knowledge in each of our disciplines. A high proportion of Bristows’ lawyers have specialist backgrounds, including technical degrees, PhDs and practical experience related to the industries we represent. This enables our clients to call on a rare blend of legal and commercial understanding.