Dealing with intellectual property can be a confusing exercise but for many businesses it is crucial to their success. This is why it is important that you pick your intellectual property solicitor carefully. To help you make an informed decision and give you an idea of what to expect from their service TakeLegalAdvice.com has asked a selection of intellectual property solicitors for their opinions.

What does an intellectual property solicitor do?

“For many companies intellectual property is an extremely valuable but not fully appreciated or understood assets,” says intellectual property solicitor Stephen Sidkin, a partner at city law firm Fox Williams. Intellectual property solicitors work in a broad range of areas, he says, but most commonly ones for which design is central to their business such as manufacturing and the creative industries.

Intellectual property essentially provides a controlled monopoly for designers to exploit, Sidkin says. An intellectual property solicitor works on the sale and purchase of IP, its registering and licensing and deals with third-party IP claims.

Sidkin goes on to describe the various forms of intellectual property:

COPYRIGHT

An idea cannot be protected but through copyright the form of an idea can, such as in the writing of a book or the recording of a record. This lasts for the life of the creator plus 70 years.

TRADEMARKS

A trademark is “a badge of identity” or “the personification of a brand” says Sidkin. It identifies a supplier or creator and comes in different forms including words and logos. You can even trademark smells, colours and sounds. A trademark lasts for an indefinite period of time.

PATENTS

If you patent an invention you can exploit it. You will have to go through an examination process describing what your invention does and why it is unique. Once you have the patent you have a monopoly right.

What to look for in an intellectual property solicitor

“When instructing an intellectual property solicitor the value-added bit comes with industry knowledge and experience,” says Piers Clayden (right), a partner at City and Thames Valley law firm Manches. “For instance you may operate in a highly regulated sector that requires a specific awareness.”

He says that being proficient in black letter law is not enough. An intellectual property solicitor needs to be able to apply it.” This is why a broader commercial awareness is also important,” he said.

How you can assist your intellectual property solicitor

Intellectual property solicitor Simon Jacobs, a partner at Central London lawyers Seddons, suggests that the most useful thing you can do is prepare a briefing note providing:

• an explanation of what you believe you own
• an explanation what you think the problem is
• any relevant documentation

All of the panel solicitors emphasised the importance of this last point. Jacobs advises that you provide your intellectual property solicitor with as much information as possible as unrelated issues can sometimes prove to be of great significance. “If in doubt pass it over,” he says, “don’t worry about giving too much paperwork as your intellectual property solicitor should be adept at dealing with it.”

Piers Clayden suggests that asset registers of owned intellectual property are helpful and if your organisation is particularly large then a well set up database of trademarks is particularly useful. Copyright arises automatically without the need for registration making it particularly important to keep good records showing how you developed it and how it is unique to you.

What your intellectual property solicitor should be able to tell you

Generally your intellectual property solicitor should be able to give you a reasonably accurate idea of how long a piece of work should take and how much it will cost. “This is especially true for commodotised, non-contentious pieces of work like drafting license agreements,” says Piers Clayden.

“On the enforcement side, with things like infringement, it is more difficult,” he adds. “However, your intellectual property solicitor should be able to break the process down into smaller stages with short term estimates as the case progresses.”

“The more information you provide your intellectual property solicitor with the less time they will have to spend finding it out and the lower your costs will be” says Simon Jacobs. In terms of cost Jacobs also suggests that you try and agree the best possible fee package. “Your solicitor will have a commercial approach so do not be afraid to try and negotiate.”

Intellectual property and the internet

The internet has presented fresh challenges for intellectual property solicitors and many businesses may understandably feel threatened by its reach. Web 2.0 services pose particular problems, points out Piers Clayden. Social networking websites such as Facebook and the opportunity for individuals to upload their own content on sites such as YouTube mean that material may be used without the appropriate permission. “There is a misconception that if something is on the internet then it is in the public domain but it depends under what terms the material has been posted” he explains.

“The problem with the internet is that while it is universal, intellectual property is not,” says Piers Clayden. The internet has enabled widespread intellectual property abuse when intellectual property law is unique to each state.

“With the internet it is very easy for someone to exploit good will or concepts and distribute products without you knowing,” says Simon Jacobs. However ISPs are well-experienced in dealing with claims, he says, and your intellectual property should aim to achieve an “interim hold on infringement.”

“There are perennial problems,” Jacobs concludes, “but ultimately legal principles should stand up.”

Useful links

Intellectual Property Lawyers' Association

Commercial solicitors