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Based on 101 reviews

15:31 23 Jul 25

A truly exceptional experience – thank you Albright IP!

I want to personally thank Charlie Heal , Emily Fox, Cara McAtee, and the entire team at Albright IP for their hard work, dedication, and professionalism in helping me submit my first ever patent: the Baffer Ball fire suppression system.

From the very first meeting, Charlie and Emily made everything feel clear, comfortable, and respectful. They listened carefully to my ideas, even though I’m not from a technical or legal background – I’m a painter and decorator by trade. But they believed in my vision and treated it with such care and seriousness that I felt truly supported as an inventor.

Over several months, we worked closely by email and phone. Charlie and the team guided me step by step to build one of the strongest, clearest, and most professional patent drafts I could have hoped for. The claims they wrote are powerful, and the language used shows how deeply they understood my invention. They didn’t just file a document – they helped shape a legacy.

Charlie, even though he is young, is incredibly professional and experienced. I am amazed at how he managed such a complex project with kindness, patience, and precision. Emily and Cara were also fantastic throughout.

This was not just paperwork – this was my dream since childhood. And Albright IP helped me make that dream real.

💬 I look forward to working with them again on future patents. The Baffer Ball is just the beginning – and I am proud that Albright IP was there from Day 1.

Thank you so much again — from the bottom of my heart.
— Morteza

Jilna Shah

07:13 13 Jul 25

I've been working with Marc Maidment on pursuing a patent for my business, and I honestly couldn’t ask for a better attorney. As someone with no experience with the patent process and how it works, Marc takes the time to explain everything clearly and thoroughly, breaking down complex legal processes in a way that is easy to understand.

He’s not only incredibly knowledgeable, but also warm and approachable. No question has ever felt too small, and he genuinely cares about the success of my business. I’d highly recommend Marc to anyone looking for a dedicated, trustworthy, and skilled patent attorney.

Jon Baker

15:23 19 Mar 25

Albright IP have been brilliant from my first call all the way through to submitting our Patent Application. I look forward to working with them on future IP projects. Jon Baker - Design 360 Ltd

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Do I have to identify the designer?
It is possible to waive the name of the designer when filing a European Community Design, but you should be sure that you have the rights to the design

Designs

Protecting wild birds through innovation

Britain’s wild bird population is facing challenges. But innovative engineering combined with strategic IP protection starting to make a real difference?

We spoke with Dick Woods, owner of Finches Friends about his mission to save wild birds and how Albright IP has helped secured his ground-breaking designs.

A personal tragedy sparks a unique solution

For Dick Woods, the journey to becoming a champion for wild birds began with a heart-breaking discovery in his own garden.

“About 10 years ago, we had around 50 greenfinches tragically die,” said Dick. This devastating event led him to investigate a problem that has far wider implications than most bird lovers realise.

“In the UK, we’ve lost six million wild birds over the past 20 years due to disease that’s transmitted through garden bird feeding. A truly frightening statistic, and one that’s completely manmade,” explains Dick.

Transmission of disease is at the point of feeding. Parasites left behind by infected birds spread rapidly in the damp, unclean conditions typical of traditional bird feeders.

Drawing on his background as an engineer and research from the Canadian Wildlife Health Cooperative (CWHC), Dick set out to redesign bird feeders from the ground up.

Engineering solutions that save lives

Finches Friend products address three critical flaws in conventional bird feeder design.

“The key to safe bird feeding is encapsulation,” said Dick. “This means keeping food as if it were in the bag for as long as possible to protect it from the damp – conditions where parasites thrive.”

His designs also incorporate weather protection at feeding points and feature components that are easy and quick to disassemble, making regular, cleaning simple and convenient.

It’s a comprehensive approach to a problem that most bird feeding enthusiasts aren’t even aware of. The company offers five products across three distinct designs:

Hanging feeders featuring encapsulated food storage, carefully designed perches, and rain guards. These feeders have a full UK patent.
Peanut feeders that also have encapsulated food storage, which keeps food dry and ensures nuts are fed through in age order with separate feeding and perching grilles to reduce the transfer of disease.
Window feeders that include encapsulation and improve on the typical open tray design with protective features and proper perching spaces.

Strategic IP protection with Albright IP

When it came to protecting his innovations, Dick turned to Albright IP, continuing a relationship that spans many years. “I am a real relationship person. I need to work with people I know and trust,” he said.

Working closely with Patent Attorney, Director Frederick Noble, Dick has successfully secured a full UK patent for his hanging feeders and is at various stages in the patenting process for his other products, with applications spanning the UK, EU and North American markets.

“With Freddie and Albright IP, it’s been such an easy journey. I can simply trust them to do what needs to be done, and we can have honest, black and white conversations,” added Dick.

He particularly values the ability of patent attorneys to handle a diverse range of inventions.

He said: “It never ceases to amaze me how patent attorneys can deal with something like my fairly simple products one day, and then complex electronics or technologies the next. Albright IP has stepped in to protect my ideas, and I have been able to leave it all in their very capable hands.”

Looking to the future

While commercial success is certainly welcome, Dick’s primary motivation remains the welfare of wild birds. Now approaching his late sixties, he hopes to leave a lasting legacy through Finches Friend, which he runs as a family business alongside his son.

“I started the business, initially, because someone had to make a change,” he reflected. “The main ambition is to leave our wild birds in a much better place than when we started.”

With another version of the hanging feeder already in development and plans to expand patent protection, the partnership between Finches Friend and Albright IP continues to demonstrate how thoughtful engineering combined with strategic IP protection can address significant environmental and human behavioural challenges.

To learn more about Finches Friend and their innovative bird feeders, visit www.finchesfriend.com

If you have any patent, design or trade mark queries, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.

When can hobbies cross the line

A fully accurate representation of the Ellon Brewery

I like making my own beer. You could call it a hobby, but I prefer to think of it as ‘proper science’. It is an ancient and mysterious art, complete with Ye Olde English-isms. My favourite is wort – the liquid extracted from the grains with hot water which is highly sugary, and therefore fermentable. Wort is a very difficult liquid to control when transferring between plastic buckets; it has a habit of escaping from its container and making the floor sticky. Sparging is another good one. This is the process of sprinkling hot water onto the grains during the lauter to rinse the sugars into the wort. I have a spinning sprinkler to do this for me. It inevitably ends up falling off its precarious perch, and into the boiling hot wort.

That said, the fun part of the brewing process comes from playing with hops. You control the taste of the beer primarily with hops.

“If the hops are boiled for a long period of time, or if the quantity of hops boiled is large, the beer made will be more bitter.”
“It can be difficult to prepare a beer with a relatively large amount of hop oil extracts and an increased aroma, and that is not very bitter.”

The two quotes are directly taken from GB2531055B, a British patent in the name of BrewDog Plc, allegedly, the #1 Craft Brewer in Europe.

It had not occurred to me when I started my home brewery that there might be a risk of patent infringement. Beermaking is such an old discipline that surely there couldn’t be an invention to be protected. Am I to be that most despicable of creatures – the dirty infringer? Now, before any hotshots at Lawrie IP Limited decide to hunt me down, my crude home set-up does not include integer (iv) of claim 1 as granted:

My cooling apparatus is very much connected between the kitchen tap and the drain waste outlet of my washing machine – no wort passes through my copper pipes. Joke’s on you, James Watt!

Real beer, straight from a bucket.

Still, suddenly finding that your side hustle could lead to legal problems is a definite worry. So, how can you mitigate the risk of infringement?

UK patent law has a private and non-commercial I would have been fine here, since my actions were performed in the ‘safety’ of my own home, for my own personal consumption. Intellectual Property is, at its core, a commercial tool, and therefore this is a sensible safety valve for private individuals.
If you are acting commercially – don’t infringe! This is oversimplified, yes, but if you don’t take all of the features of a patent claim, you shouldn’t infringe the patent. In my case, I don’t have the necessary fluid connection to infringe GB2531055.
That said, craft-based businesses may often find themselves more likely to infringe design right or copyright, where there may be a temptation to draw inspiration from popular products. Original works are always more likely to keep you safe from an infringement risk.

If your hobby ventures into a commercial arena, for instance, if you sell products on Etsy, make sure that you aren’t treading on anyone’s toes in the process!

IP renewals: are you up to date?

We have had quite a few enquiries recently from people who have just realised they’ve forgotten to renew their Trade Marks or registered designs.

Why is this happening all of a sudden?

In many cases the problem seems to be that records have not been properly updated after Brexit. Many businesses took advantage of the EU-wide registration system, obtaining EU Trade Marks and EU registered designs. When the UK left the EU, every single one of these EU rights in force at the end of the transition period (31 December 2020) was “cloned” on to the UK register.

So, the geographical extent of the EU right was retained, automatically and for free, by copying the registrations on to the UK register. However, with the UK no longer part of the EU, this was done by creating a legally separate UK national registration and – you guessed it – when it expires it has to be renewed separately.

Registered designs last five years between renewals and Trade Marks last ten, so we may continue to see these ‘renewals missed because of Brexit’ for some time yet.

The good news is that usually a missed renewal can be put right without too much cost or fuss, provided it is caught reasonably quickly.

If you are less than six months late, then the registration can just be renewed by paying a modest extra fee. If you are more than six months late, but inside 12 months, then you will have to pay another fee on top of that and also provide an explanation of why the renewal fee was not paid on time. However, the UKIPO won’t be judging you too much on why you failed to pay on time – the rule is that as long as the failure was unintentional the right will be restored.

If you have registered EU Trade Marks or designs in the past, now would be a good time to check your records and check you have a system in place for renewing the UK rights when the time comes.

If you need any assistance managing your portfolio or renewing lapsed rights, please just get in touch and we will provide you with help.

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Patents for neural networks

On 19th July the Court of Appeal handed down their Judgment in Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Limited [2024] EWCA Civ 825. This is an interesting case about the patentability (or not) of an invention involving an artificial neural network. Of course, there are quite a lot of patent applications involving artificial neural networks (some of them drafted and filed by us for our clients), so in that respect the decision in Emotional Perception is potentially important for a lot of people.

Emotional Perception’s application was filed in 2019. After several amendments and rounds of correspondence, the application came to a UKIPO hearing in 2022. The Hearing Officer refused the application as relating to subject matter excluded from patentability under section 1(2) of the Patents Act. The law states that a program for a computer as such is not a patentable invention. The Hearing Officer in essence found that the claimed system, which included an artificial neural network, was a program for a computer as such and therefore refused the application.

Emotional Perception appealed and, at the end of 2023, the High Court overturned the UKIPO’s decision. That judgment caused quite a stir, not so much because of the result for Emotional Perception, but because of what seemed to be a very broad statement that an artificial neural network “is not a program for a computer for these purposes”. Following that High Court decision, the UKIPO updated the Manual of Patent Practice to say “examiners should not use the program for a computer exclusion to object to inventions involving ANNs”.

So the UKIPO appealed that result to the Court of Appeal. In a unanimous judgment, the Court of Appeal have now allowed the UKIPO’s appeal and so Emotional Perception’s application is refused again.

Birss LJ’s judgment is reasonably short, clear, and firmly based on authority. There are two points of general importance that come out of it:

A [trained] artificial neural network is a programmed computer. “…it is a machine for processing information… [the] weights are a computer program… For a given machine, a different set of weights will cause the machine to process information in a different way.” Birss LJ recognises that the way in which the program is “written” is different from “conventional” programs, but says that this does not matter. He points out that conventional computer programs are to some extent automatically generated anyway, in that they are created by compilers “under the direction of a human programmer” who writes the high-level code.
It does not make any difference whether the artificial neural network (or any computer program) is implemented in hardware or software. This should surprise nobody and in fact the Court of Appeal basically said the same thing over 30 years ago in Gale’s Patent Application [1991] RPC 305.

For what it is worth, I think those points must be entirely correct. There seems to be no justification for treating artificial neural networks any differently from “conventional” programs. Does this mean that artificial neural networks can’t be patented at all? No, it doesn’t. There are plenty of examples of patents covering systems which use ANNs, just as there are plenty of examples of patents covering other types of software. We have handled many of these applications ourselves.

What makes software potentially patentable is some form of “technical effect”. Both the UK Courts and the EPO have, albeit in somewhat different ways, endorsed “technical effect” as the test of what is patentable and what is not. But what is “technical”? The term is very difficult to define in words, and I won’t attempt to do so. However, despite a few questionable decisions on the borderline, the overall body of the case law over several decades now gives us a reasonably consistent guide to what software is going to be patentable and what isn’t. If the software leads to an improvement in a technical process (say, a machine in a factory runs more efficiently with the new software, or a measurement of the outside world is estimated more accurately with the new software) then that is likely to be a technical effect. A technical effect has also been consistently recognised in image, video and audio processing. However, most forms of text processing and data organisation (including much that involves sophisticated AI) are not patentable.

Having decided that artificial neural networks are to be treated exactly the same as other types of programs, the Court of Appeal proceeded to analyse Emotional Perception’s application against this background. Although it isn’t in my opinion clear-cut or easily susceptible to rigorous intellectual justification, the Court’s eventual rejection of the application does seem to be entirely consistent with previously decided cases. Although the invention in this case involved analysis of audio (which might well be technical), that audio analysis seems to be essentially assumed as possible with existing technology. The real contribution apparently lay in how the results of that analysis were used in combination of labels on the audio track to drive a better recommendation. That sort of thing has been fairly consistently rejected as non-technical.

So where does all this get us? Not, on the face of it, very much further than we were before it all began. My main emotion about the whole thing is something of the sadness of a lost opportunity. On the face of it Emotional Perception might well have come up with something quite clever, and this is definitely not always something that can be said about inventions which end up being the subject of excluded subject matter cases. It seems to me perfectly obvious that a great deal of technical skill went into developing it, and yet the well-worn path of the case law ended with rejection because of the “non-technical” nature of what it did. The opportunity was there for a decision that really got to grips with this elusive test of “technical character”, and in particular address the inequity that difficult technical work to reach one kind of product is not protected when difficult technical work to reach another kind of product is.

But, for reasons which aren’t entirely clear to someone not involved, but which possibly included a misunderstanding of the UKIPO’s arguments (or maybe just confused arguments), this core point ended up getting sidelined by distractions. Sir Anthony Mann in the High Court had understood the UKIPO to have conceded that a hardware implementation of an ANN would be patentable (because there was no program). He then reasoned that a software “emulation” of an ANN was in substance the same thing, and so must be patentable as well. The weakness in this argument will be obvious to anyone who understands that any program at all can (in principle at least) be “implemented in hardware”. Although it was apparently cited in argument, the High Court’s judgement did not mention Gale’s Application at all, which basically made this point over 30 years ago.

At least the Court of Appeal has not muddied the waters any further. They seem to have firmly returned the patentability of artificial neural networks to the status quo ante, which thankfully makes no less sense than it did eight months ago.

There might be another appeal (it would be to the Supreme Court, which really is the last chance saloon). If there is, perhaps they will get the chance to properly dig into the technical character of the invention without getting distracted.

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Updated UKIPO practice: Address for Service

**A new practice rule at the UKIPO requires a UK-based address for service to be put in place for UK designations of International Trade Mark & Design Registrations.**

At present, there is no strict requirement for a UK address for service to be in place for all direct national Applications/Registrations, but there is a strong push towards this being insisted upon. The intention behind the practice change is to bring the UK into line with the EUIPO approach and accords with the end of the extended post Brexit transition period, due to end on 31 December 2023. Up until recently, the UKIPO was attempting to serve papers in contentious proceedings to overseas owners by post, but it has become evident that procedural deadlines could be missed, without these having come to the attention of the owner or their overseas representative. As a consequence, and following the recent decision of the Appointed Person (AP) in Tradeix Ltd v New Holland Ventures Pty Ltd BL (O/681/22) (Marco Polo Case), the UKIPO will now require a local address in the UK before any formal serving of documents in contentious proceedings relating to UK designations of International Trade Mark or Design registrations. Failure to provide a UK address for service may result in a challenged registration being cancelled or an opposed Trade Mark or Design being treated as withdrawn, as the procedural papers may not be served in time.

In summary;

Previously, the UKIPO would send papers in contentious proceedings to the proprietor at the foreign address, and they would get two months to defend;
Now the UKIPO will notify the foreign address and give them one month to appoint a UK Address for Service, after which the papers will be “served” and then the appointed UK representative receives the two month deadline to defend.

To avoid an issue, it is recommended that a genuine UK address for service be put in place as a routine formality, and in any event, prior to any proceedings being contemplated or defended.

Our recommendation:

To eliminate unnecessary risk, we strongly recommend that you take steps to appoint a UK representative for your client’s UK designations of International Trade Mark and Design Registrations, and take the same action for direct national UK Trade Mark and Design Registrations. This will avoid the complex reporting process set out above, that could result in rights being lost just through non-compliance or missed deadlines. Albright IP will be pleased to step in as UK representatives for your clients’ Trade Mark and Design rights. For more information, please contact our Trade Mark team trademarks@albright-ip.co.uk or our Design team designs@albright-ip.co.uk The new practice rule may seem complex, but the mechanics behind it will hopefully become more straightforward once it has been in place for a while, especially if most UK designations have a UK representative in place before any proceedings arise. Hence, a proactive and timely action to appoint a UK representative now is to be recommended.

New approach for invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use, and rectification:

Where a UK designation is challenged without a valid UK address for service in place, the UKIPO will issue a preliminary letter directing the proprietor to provide valid service address within a period of one month from the date of the letter alongside their intention to oppose the application for invalidation, revocation or rectification. Failure to do so will result in the UKIPO treating the UK designation as undefended. A letter will be issued notifying the proprietor of the UKIPO’s intent to treat the challenge as undefended and possibly to declare the right invalid or revoked. This letter will be sent to the non-UK address currently on file and will give them a 14-day period in which to reply. Failure to respond will result in the UKIPO issuing a decision on the undefended challenge. If the UK designation is declared invalid, revoked or rectified, WIPO shall be informed accordingly.

New approach for oppositions against published International Registration with a designation in the UK:

For Oppositions against pending UK designations, a ‘notice of provisional refusal based on an opposition’ will continue to be sent to WIPO, who will then relay the information to the applicant using the non-UK address for service. WIPO’s actions will continue to constitute as effective service of the opposition. At this stage, the UKIPO will then send a letter to the applicant duplicating the information relayed by WIPO, namely that the two month period to initiate a defence has been activated and to confirm that a valid UK address for service is required. Where an applicant submits a counterstatement and a valid UK address for service, the proceedings will continue in accordance with the standard practices. If only the counterstatement is filed (and no appointment request), the UKIPO will issue another letter to the address held by WIPO requesting a valid UK address for service to be in place within one month of receipt of the letter. In cases where the applicant fails to be attentive by providing a valid UK address for service, the UKIPO will issue WIPO with a final notice of refusal. The Opposition will be treated as if no counterstatement was supplied. It is however important to note that this consequence will only apply to the goods and/or services against which the opposition was directed.

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Seven registered design disasters, and how to avoid them

Registered Designs are probably the least well-known of the Intellectual Property rights, but they can be a powerful and cost-effective tool, if used properly. A Registered Design protects the appearance of a product, and can be used to prevent competitors from marketing products which produce the same overall impression on an informed user.

Of course, that’s not the whole story. The devil is in the detail, and there are various factors which need to be taken into account to get the best protection for your designs. Make sure you don’t fall into any of the traps below!

(This article was first published in 2013, and has now been updated March 2021)

1. You don’t register because “it’s a functional product, so registered designs don’t apply”

It is true that registered designs cannot protect “the way things work” – that is the domain of patents. Features of the appearance of a product which are “solely dictated by technical function” are excluded from design protection. However, this is rarely a significant limitation in practice. A product which does a technical job will look the way it does partly because of that technical job, but there will almost certainly be a “product design” element as well. If the product could do the same job and look different, even just a bit different, then there is potentially a design to be protected.

It is very rare that the design of a whole product is really “solely dictated by technical function”. With that in mind, registered designs should be considered for almost any product which somebody is potentially going to look at.

Here are a few examples of registered designs for useful products which have actually been successfully enforced.

Coat hanger

Electric skin brush

Blind headrail

UK Registered design 2080944

Mainetti v Hangerlogic [2012] EWPCC 42

EU Registered design 000407747-0001

L’Oréal v RN Ventures [2018] EWHC 173 (Pat)

EU Registered design 000361118-0001

Louver-Lite v Harris Parts [2012] EWPCC 53

2. You disclose the design before registering

In the UK and Europe, a twelve month grace period is available for validly registering a design following disclosure. However, you should not take advantage of this grace period without fully understanding the risks of doing so.

Most other countries around the world do not have a grace period for disclosure. Unregistered design rights are also rare outside Europe. By disclosing your design before filing your UK or European Design registration, you potentially destroy any possibility of validly registering your design overseas.

Furthermore, if you launch a product before filing a registered design, and a competitor subsequently launches a similar product (again, before your registration), then no action can be taken unless you can prove that the competitor copied your design.

Where the grace period is relied on, there is a burden on the design owner to establish that they are the creators of their design or a successor in title[1]. This ought not to be particularly onerous if good records have been kept, but nonetheless design owners have sometimes come unstuck on that point.

We don’t say that the grace period should never be used. For small businesses in particular, deferring the cost of registration until the commercial success of a product has been established can be a valuable option. Reviewing your registrations within the grace period and potentially registering more designs might also be a good idea. However, at the very least you should discuss your plan with an attorney before your product is disclosed. That way, the best strategy can be developed bearing in mind your requirements for protection at home and overseas and the need to manage your cashflow.

[1] See T-68/10 Sphere Time v OHIM

3. You update the product, but fail to register the newer version

Whether a particular competing product infringes or does not infringe a registered design depends only on whether the allegedly infringing product is or is not too close to the design which has been registered.

It is of course very common for designs of products to go through multiple versions, and almost all products which reach the marketplace will look somewhat different from the picture on the drawing board at the beginning of the design process.

For the best protection, it is vital that registrations are secured for updated versions. Failing to do this can allow a competitor to release something which is very similar to your product, but different from your registered design.

This pitfall is extremely well illustrated by the high-profile Samsung v Apple[1] case in the Court of Appeal. Apple relied on a European Registered Design filed back in 2004 – the iPad was not released until 2010. The problem this caused for Apple was neatly summarised by the Judge in the case, Sir Robin Jacob.

“…this case is all about, and only about, Apple’s registered design and the Samsung products. The registered design is not the same as the design of the iPad. It is quite a lot different. For instance the iPad is a lot thinner, and has noticeably different curves on its sides… Whether the iPad would fall within the scope of protection of the registered design is completely irrelevant. We are not deciding that one way or the other. This case must be decided as if the iPad never existed.”

[1] [2012] EWCA Civ 1339

iPad

(Image credit: Yutaka Tsutano / Flickr)

Apple’s registered design

Samsung Tablet 10.1

The lesson is clear – if you want to protect your place in the market, keep your registrations up-to-date!

4. You don’t really consider the scope of protection provided by the registration

In contrast to a patent application, it is not necessary to describe in words what is new about your design, and what protection you are seeking. But just because you don’t have to write it down, that doesn’t mean you don’t have to think about it!

It’s useful to keep in mind the legal definition of a design that can be protected:

“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

This definition gives a non-exhaustive list of features which might be considered to be part of a design. It’s worth taking the time to think about each one, and which are the most important in your particular case.

For example, if your product has a new shape and a new surface pattern in a particular colour, then you need to think about what you want to protect. If you file colour photographs showing the whole product, then potentially a product with the same shape and pattern but in a different colour might not infringe, depending on the importance of the colour to the overall impression. Almost certainly, a completely different product with the same surface pattern would not infringe – so if you want to protect the pattern, you should consider a registration which does not include the shape of the product at all. Likewise, a registration covering the shape without the surface pattern is probably advisable.

In the UK you can submit a short written “disclaimer” listing anything shown in the drawings you don’t want to be included. In Europe you can’t, so it is particularly critical to make sure there is nothing in the drawings which you don’t want to limit the scope of protection.

The Magmatic “Trunki” suitcase is a well-known example of a registered design which turned out to be narrower than the owner had hoped. Greyscale CAD renders were registered. The Court of Appeal found it relevant that “each of the representations shows a distinct contrast in colour between the wheels and the strap, on the one hand, and the rest of the suitcase, on the other”. This was “a fairly striking feature of the CRD and it is simply not present in the accused designs”.

Suitcase

EU Registered design 000043427-0001

To be fair to Magmatic, the ”Trunki” design was registered in the early days of the EU design regulation and it is easy to be wise in hindsight.

5. You file inadequate representations

If you file a representation which for some reason is inadmissible, then in most cases your only choices will be either to delete the representation or to lose your filing date.

So before you file, check carefully that all your representations do in fact show views of exactly the same design (i.e. features match in different views).

Also, be mindful of the overall quality of the images you are filing – if they are so poor that the design is not clearly shown, then what you are registering is not a design, just a blur!

6. You forget to renew your UK registration

Since the UK left the European Union EU designs no longer provide coverage in the UK.

However, every owner of an EU design which was in force on 31^st December 2020 was given, automatically and for free, an equivalent UK registration.

The UK design has to be renewed separately though – so don’t forget that when the renewal date for your EU design comes round, you need to renew in the UK as well.

7. You file a design without consulting an attorney

Yes, it’s easy to register a design and get a certificate. But getting good legal protection is more complicated than that.

At Albright IP, we regularly represent clients on both sides of disputes where design infringement is alleged. We’ve seen the problems which can arise when the registration is filed at the wrong time, showing the wrong product, or showing unimportant features. We can advise you on exactly what to file to get the best possible protection within your budget.

If you have any questions about registered designs, design patents or IP in general, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.

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Why is Intellectual Property training invaluable to both businesses and their people…

The world of intellectual property can be pretty complex and impenetrable if it’s not your area of expertise. However, understanding why it matters to your business, the benefits of protecting it and the risks associated with not doing so are really important – which is why we set up our IP Untangled training programme.

It’s not a death-by-PowerPoint session, nor a day-long course where we try and turn attendees into IP experts.

Rather, it’s a one or two-hour round-the-table introduction to IP, covering the four main headline areas of patents, trade marks, designs and copyright.

IP training for business

We explore what we mean by IP, what needs to be considered when protecting a product and offer an overview of patents. We explain the potential tax savings to be secured through R&D tax credits, and how you could reduce your corporation tax by up to 50% with something called Patent Box.

We also review Registered Designs and ask whether they offer value for money, and what you need to consider when it comes to protecting intellectual property abroad.

These sessions can be adapted to reflect the level of knowledge among attendees, and we include time for questions so we can address any particular concerns or areas of interest. We try and make the training as relevant as possible for delegates.

Why are we running this training?

Our experience shows that most people working within companies often don’t really think about IP (apart from those tasked with it). They might have some inkling, but they very rarely actually understand what it’s all about and why they should be looking out for it. All too often it’s something that doesn’t appear on their radar until their innovation is on the market!

We get a lot of people coming to us for help at this stage as they realise that perhaps they should have protected their product.

Our IP Untangled sessions are designed to help you avoid this and other pitfalls – we emphasise the importance of having some internal processes in place, how pro forma invention evaluation forms can help, and the importance of ensuring that your designers, engineers and business teams all understand why thinking about your IP really matters.

Adapted for you

Of course, some companies will be more IP savvy and we often provide training for other non-IP attorney firms. In this case we can adapt the training to focus on more detailed issues, such as infringement searches or analysis, how to read a patent and how to analyse it, and how to conduct pre-patent searches to determine what’s already out there.

The tailored approach means we can help both companies without IP experience and those who have in-house legal support but lack IP expertise. Our aim is to make the training fit the needs and knowledge of our customers.

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When To Start Product Manufacturing Part 2

(Research by Alysia Draper)

Do you have an innovative new product that has been undergoing product manufacturing and development, and that you are now excited to share with the world?

Perhaps you have already produced a prototype and are eager to start manufacturing your product on a large scale. But have you thought about protecting your product and what options are available to you to do so?

Intellectual property (IP) rights are intended to cover this form of protection and include filing a patent application to protect the inventive concept of the product, as well as a design application to protect the visual appearance of the product. The inventive concept of the product outlines the ways in which the product differs technically to similar products already available on the market today.

This article is split into two parts: Part 1 discusses patent applications and Part 2 discusses design applications. Both articles aim to identify:

How to avoid disclosing your invention to the public and why it is important to avoid doing this.
When to consider IP in regard to your invention.
When to file a patent and a design application, and which order the applications should be filed.
The options available if you change the underlying idea for your invention.

So, when do I start the product manufacturing process? The answer to that question first requires a basic understanding of patent protection, because the two things (product manufacture and patent protection) are intrinsically interlinked.

Part 2 – Design Applications

The aim of filing a design application is to protect the ‘look’ of the final product before the public launch of the product. Once the design application is filed, amending the submitted drawings is not possible. If you amend the visual aspect of your product, the filed design application will no longer protect your new product and you will therefore need to file a new design application. This second filing will have a later filing date and therefore the timeline of a design application starts from the beginning again.

There is a common notion that a design registration is a ‘poor man’s patent’, being cheaper and easier to obtain. Many people opt to file a design application, knowing that in the U.K. there is a 12 month grace period following the first disclosure of the product where the applicant can validly file a design application. The designer, owner of the design or an authorised individual is allowed to disclose the design in this period. This means that the visual aspects of your product can be disclosed and a design application can be safely filed later in the U.K.

Therefore, we would advise only filing a design application once the final product is clear in your mind: if the final product is not ready then it would be best to wait to file a design application until the product is finalised.

As a reminder from Part 1, if a design application is filed before a patent application is filed, the design application could disclose the invention. As patent applications do not have a grace period for disclosure in the UK, you have to ensure that a patent application is filed before the design application. This is shown visually in Figure 1.

We therefore advise against disclosing the invention before filing a patent and/or a design application, however the possibility of using the 12 month disclosure period before filing a design application gives you time to observe the reaction from the public before you file. If the response is negative, then you know that you need to change the design.

In conclusion, it is best to wait until both the patent and design applications are filed before the product manufacture process. This could save you time and money as you will be confident that the manufacture of the invention is worthwhile as the invention is suitably protected.

Summary

In this article we have concluded the following points:

A design application can be filed to protect the visual aspect of your invention and we advise filing this after filing a patent application to avoid disclosing the invention unintentionally.
IP should be considered before starting the large-scale production for your invention as this will prevent you wasting large amounts of money on an invention that may already be disclosed.

If you would like to talk to an expert in product design, Duku is our sister company and works closely with the attorneys at Albright IP. Duku is a high-quality and efficient product design company; you can browse the projects they have been involved in at https://www.duku.co.uk/. If you are interested in filing a design application and/or a patent application with Albright IP, and need assistance with the product design process, then the team at Duku will be happy to help.

If you have any patent, design or trade mark queries, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.

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When To Start Product Manufacturing Part 1

(Research by Alysia Draper)

Do you have an innovative new product that has been undergoing product manufacturing and development, and that you are now excited to share with the world?

This article is split into two parts: Part 1 discusses patent applications and Part 2 discusses design applications. Both articles aim to identify:

How to avoid disclosing your invention to the public and why it is important to avoid doing this.
When to consider IP in regard to your invention.
When to file a patent and a design application, and which order the applications should be filed.
The options available if you change the underlying idea for your invention.

Part 1 – Patent Applications

Typical timeline for a Patent Application in the UK from start to grant

How to Avoid Disclosing Your Invention Before Filing a Patent Application

An invention can be disclosed in a number of ways, from purposely advertising the invention online or even through unintentionally posting about the invention on your social media.

The easy answer here is to avoid disclosing your invention at all until your intellectual property rights (a patent application and/or a design registration) are safely filed. The general rule of thumb which will always keep you safe is to keep the invention under wraps, and fully launch the product only after applying for legal protection.

Be aware that a design registration (also called a ‘design patent’ in the USA) protects the exterior ‘look’ of a product. It does not protect the function of the product. To protect the clever function or the technical improvement, irrespective of how the product actually looks to the consumer, then that is what a patent is for.

It is also worth bearing in mind that a design registration and a patent application work together, and it is often the case that both will be required for a new and innovative product.

But, what happens if I file a design registration to the ‘look’ of my product, before I then file a patent application? It is critical to remember that a design application will often publish very quickly. If your invention or development is disclosed by filing the design application first, it is highly likely that you will not be able to achieve a granted patent following that disclosure. Therefore, an important consideration when one files a design application is that you could be disclosing the invention before a patent application is filed. This example is outlined in Figure 1.

Although a marketing team may want to gauge customer interest by advertising the product, it is critical that this is avoided prior to filing your patent rights. As mentioned above, although in the UK a design application allows disclosure up to 12 months before filing (but remember this is not the same in all territories around the world!), disclosure before filing a patent application is not as lenient and will invalidate your rights. Just to reiterate the point above, the safest rule is to file first before any disclosure.

Once a patent application is filed, the invention can be disclosed. The patent application will automatically become available to the public, and therefore publicly disclosed at 18 months after filing the application, unless it is a requirement to remain a secret.

If you need to disclose the invention, for example you need a product designer’s opinion to see whether it is possible to produce the invention, or for financial reasons, a non-disclosure agreement (NDA) should be used. This is a contract binding the parties to confidence. You can be assured that all regulated patent attorney firms are required to keep the information about your invention confidential. Therefore, an NDA is not required with a qualified, chartered and regulated patent attorney.

Our advice for filing a patent application to avoid any difficulties is simple: ensure that you have a concrete idea of what the final product will be and then file the patent application as soon as possible; ideally before the product manufacturing process. Once the patent application is filed, then the filing of a design application can be considered in preparation for the launch of the final product.

Why Should IP Protection be Considered Early?

Figure 2 below outlines an example of a scenario if IP protection is not considered early. For clarity purposes, let’s say that you, the reader, are Company A and you have invented product X. Company B has the same brainwave as you and immediately files a patent application for product X.

Figure 2 – Why file patent application early

If applying for a patent application is left too long, then there is no guarantee that the inventive concept will be protected if another company files a patent application covering the same subject matter. The inventive subject matter to be protected is outlined in the claims of the patent application.

When a patent application is filed, the invention benefits from a ‘patent pending’ status. Having a ‘patent pending’ status provides the application with ‘provisional protection’. This so-called ‘provisional protection’ period is active between the publication of the patent application up until the grant of the patent application. If an infringing act is undertaken by another party in the ‘provisional protection’ period, the applicant may be able to collect retrospective damages.

Even if the original company, in this case Company A, invented product X, it would be a huge risk to continue making, disposing of, using, importing or keeping the product as these would constitute infringing acts. See our section on patent infringement. Therefore, the importance of filing a patent application early is clear.

Before a patent application is filed, or product manufacturing has begun, it is advised that due diligence is carried out. This involves conducting a search to check if any IP rights already exist and, therefore, if there is a risk of infringement before the launch of your product.

In Figure 3, we are using the examples of Company A and Company B once more. Again, let’s imagine that Company A is you, the reader.

Figure 3 – The disclosure pitfall

As explored in Figure 3, potential disclosure of the invention is another important aspect to consider. Company A has dreamt up an invention X, but it just so happens that another party, Company B, also has the same idea and puts it onto their weekly newsletter which is sent to their database of 500 customers. Even if Company B doesn’t file a patent application, they have still publicly disclosed the invention to their customer database via their newsletter. While Company A could file a patent application, the prior disclosure by Company B would prevent the application from being granted even if Company A came up with the invention in the first place.

These examples are why considering IP protection early in the development process is a priority. Doing so could save you valuable time and money over the longer run.

What if You Want to Change the Product After Filing?

Let’s assume that the suggestion to file an initial patent application early on to protect the broad concept prior to serious product design, prototyping and manufacture has been undertaken. What if you or the product design team comes up with further features for the invention during the development and testing phases?

It is important to note that there is a 12-month period following the first filing of a patent application in which you can file a second or an updated patent application. The second patent application can claim the same filing date as the first application for the original material, but the second application can incorporate further or new features of the invention, provided those further features have not already been made public.

The first patent application includes:

– A broad outline of your invention. – Specifics of the current features, including caveats which may cover some versions of the product which may be manufactured by you (or your competitors) in the future.

During the next 12 months after filing the first patent application (assuming this is at the UK Intellectual Property Office), a search report will be issued for the first application. This is a report with basic analytics which outlines any documents or products that could be similar to your own invention. The search report can provide a potential direction for how to develop the invention in the first application further.

Alternatively, if you want to change your product slightly after the first application, you can decide to file a further updated patent application.

This second application builds on the claims and description of the first application and can claim the filing date of the first application, as long as a second application is filed within 12 months of the first application. Any new material in common to both applications will be backdated to the filing date of the first application. However, new features cannot be backdated.

If, however, the inventive concept of the product has deviated significantly from your original application and the aspects of the invention are not supported by the original application, then a new patent application will need to be drafted directed to the new concept.

If you are still figuring out the main concept of your product, then it is best to have a fully formed idea, than something incredibly broad, i.e. if you are not completely sure what the product is trying to achieve. At this point, we will not be able to fully visualise the invention, if the concept itself is vague and drafting a patent application may be difficult.

Therefore, before manufacturing of the invention is considered, you must envisage what the final product will be before you can effectively think about the IP side of things. This will prevent you putting substantial amounts of time and money into the manufacture of products that, in the end, you might not be able to sell.

Summary

In this Part 1 article we have concluded the following points:

Once you have a finalised product, we strongly recommend that you first file a patent application covering the inventive aspects or technical improvements before you disclose the invention to the public or begin product manufacture.
IP should be considered before starting large-scale production of your invention, as this will prevent wasting large amounts of money on an invention that may already be disclosed.
If you decide to change your product after filing a first application, there is an option to file a second application covering the new aspects of the invention, provided the second application is filed within 12 months of the first application.

If you have any patent, design or trade mark queries, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.

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Where’s your IP at?

Julia House, Director and UK & European Trade Mark Attorney at Albright IP talks about their IP portal and the challenges companies face when managing multiple brands…

Put simply, if you don’t know what you’ve got, then you can’t make it work for you. In a world where protecting your ideas, designs and innovations is increasingly important in order to maintain your competitive edge, effective intellectual property portfolio management is critical.

A lapsed patent or trademark could be all the invitation a competitor needs to enter into what was previously a company’s own commercial space.

For companies which have a large and / or growing intellectual property (IP) portfolio, keeping proper track of what’s on the books can be a real challenge, particularly if they operate in multiple countries with multiple assets.

Failure to do so can be costly – but can also be easily avoided when you’re an Albright IP customer.

For all our major clients, we provide a secure IP information portal accessed via our website, which enables them to keep real-time track of all their IP assets, from patents and trademarks to registered design and copyright. This is something that is free to use and access, its an automated process so there is nothing that needs to be done from the clients point of view.

Everything you have on your IP ‘books’ is listed, and our powerful software can be used to data mine the detail to provide chapter and verse about every single brand or asset. The software has been developed after many years of managing IP for clients and attorneys across the world and is the perfect portfolio tool to manage what can be a complex and time consuming tracking process.

A clear view of your assets

Having clear visibility of your IP assets is imperative to allow you to safeguard your IP and take a strategic approach to your markets, the products within it and your future plans.

Clients can easily view whether patents are about to expire, when renewals are required, which countries they are ‘live’ in and where they may be gaps in trademark coverage. From this real time view, they can identify where action may need to be taken, whether they have one product in many countries, or multiple products in one of more countries.

One of the most valuable aspects is the real time reporting, which allows those people designated to look after IP within a company the ability to showcase it ‘live’ in company meetings. This comes without the need to collate all the data beforehand – a significant administrative saving.

It’s in the detail

It’s not just about the nuts and bolts of day-to-day IP management. Businesses need to be fully aware of all their IP assets if they’re going to successfully enforce commercial rights and protect their markets and profits. IP assets are often listed on the balance sheet and may be used as a surety to raise finance – another compelling reason for companies to be in control of all their IP asset detail.

The Albright-developed software provides the perfect password-protected platform for our clients to better manage their portfolio and ensure they’re getting maximum value from their assets, across their lifetime. It can also help clients identify IP assets that are no longer performing for them, or which no long fit with business strategy – and in turn, make it easier to divest if appropriate.

Clients can also use the portal to instruct us to take a particular action, for example, if they want us to explore expanding a patent to a new territory or confirm details of regulations in a specific country or market.

So, if you have a portfolio of brands, our advice is simple. Make sure that you know where you IP is and we’d encourage you to think about whether you’re making full use of our tried and tested tool. If you are in any doubt, then come and talk to us about the Albright IP Portal and we can ensure your IP is working for you and not the other way around.

If you need to defend or oppose a European Patent, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide you.

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A new practice rule at the UKIPO requires a UK-based address for service to be put in place for UK designations of International Trade Mark & Design Registrations.

In summary;

Our recommendation:

New approach for invalidation, revocation on the grounds of non-use, revocation on grounds other than non-use, and rectification:

New approach for oppositions against published International Registration with a designation in the UK:

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1. You don’t register because “it’s a functional product, so registered designs don’t apply”

2. You disclose the design before registering

3. You update the product, but fail to register the newer version

4. You don’t really consider the scope of protection provided by the registration

5. You file inadequate representations

6. You forget to renew your UK registration

7. You file a design without consulting an attorney

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IP training for business

Why are we running this training?

Adapted for you

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Part 2 – Design Applications

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Part 1 – Patent Applications

How to Avoid Disclosing Your Invention Before Filing a Patent Application

Why Should IP Protection be Considered Early?

What if You Want to Change the Product After Filing?

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A clear view of your assets

It’s in the detail

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LONDON MEETING ROOM

**A new practice rule at the UKIPO requires a UK-based address for service to be put in place for UK designations of International Trade Mark & Design Registrations.**