Seeking intellectual property advice
Finding the right advice and advisor is the first step in making the best decisions for your invention or business.
Initial guidance and information
Before choosing an advisor, you should get a basic knowledge of the various Intellectual Property (IP) rights.
The free, fast and easy-to-use online IP Health Check tool can help you identify your IP assets and provide you with the next steps on how to protect them.
You can access advice and support through a network of 15 PatLib Centres (Patent Libraries) covering all regions of the UK. The centres have qualified and experienced staff who offer help on a variety of services. These include patent searching, clinics with IP professionals and business advice.
The British Library Business & IP Centre in London supports entrepreneurs, inventors and small businesses. They provide help from initial inspiration to successfully launching and growing a business.
Patent attorneys and trade mark attorneys
Patent attorneys and trade mark attorneys are legally qualified and regulated advisors. They can provide all the specialist services necessary to get the best out of your IP. It is possible to handle your IP without any legal representative. However, you would be exposed to many potential pitfalls and complicated difficulties. IP law is complex and requires considerable knowledge and skill to negotiate well. Where your valuable business assets are at stake it is not worth taking such risks.
Advice from a patent attorney/trade mark attorney is given in confidence (subject to legal privilege). Attorneys are regulated by an independent regulatory body, Intellectual Property Regulation Board (IPREG).
Details on the professions and how to find a local attorney can be found on the following websites:
- The Institute of Trade Mark Attorneys (ITMA)
- The Chartered Institute of Patent Attorneys (CIPA)
- Institute of Professional Representatives before the European Patent Office (EPI)
- Search for Professional Representatives before the European Union Intellectual Property Office (EUIPO) that governs European Union Trade Marks and Registered Designs
IP is a specialist area and you need to be sure that any solicitors you use are knowledgeable and skilled in IP. Your usual solicitor is unlikely to have such skills.
IP solicitors specialise in transactions which involve IP. This includes:
- licensing and the buying and selling of businesses
- IP dispute resolution and litigation
They don’t apply for patents or other forms of intellectual property, although some do apply for registered trade marks. Some solicitors are additionally qualified as a Trade Mark Attorney.
Solicitors are regulated under the Legal Services Act. The Solicitors Regulation Authority (SRA) regulates solicitors in England and Wales. It also regulates registered European and foreign lawyers. They are the independent regulatory body of the Law Society of England and Wales.
- Law Society - can provide details of suitable solicitors in your area
IP barristers give specialist advice in IP matters and conduct cases in courts. The more experienced members of this group are generally able to provide a certain amount of business advice around IP too, although it is not normally their speciality.
Introduction to an IP barrister will normally be through a solicitor, a patent attorney, a trade mark attorney or an accountant.
- Bar Council - can provide details of barristers licensed for public access
Advice when considering a patent
We strongly recommend you seek legal advice before applying for a patent as it can be a complex and costly process. A patent specification is a legal document and requires specialist skills to draft properly. Your chances of obtaining a useful patent are much greater if you use an attorney.
Most people would not buy a home without professional help, and yet obtaining a patent is more difficult than that. If you get your patent application wrong from the start, it can be impossible to correct an error. This will result in a lost opportunity to protect your invention. It may mean that your application cannot be granted, or that your granted patent is less commercially valuable than it might have been. As with most legal assistance, patent attorneys charge for their services. However, many will provide an initial short consultation free of charge giving basic advice. CIPA can help you locate an attorney in your area.
Alternatively, you can attend a free 30 minute IP Clinic, run in partnership with CIPA, at the IPO. They give you the chance to meet with a patent attorney and an examiner from the IPO to discuss any IP queries you may have. CIPA also run other IP clinics at other sites around the UK.
IP rights abroad
Arranging for patent, registered design or trade mark applications to be filed for you anywhere in the world is something only a well connected and experienced IP attorney can do, as their skills extend beyond the law and practice of the UK and Europe. Adopting an appropriate international IP strategy can be vital for a business. Making the right choices is very important.
There are many aspects to consider. For example, the following issues might be considered when deciding where to seek patent protection:
- should patents be obtained only in countries where manufacture is likely to take place
- should patents instead be obtained only in countries where the most sales occur
- should a European patent be extended to be enforceable in all of the member states of the European patent system
- or would a select few be sufficient for the client’s purposes
There are a variety of routes to obtaining IP protection internationally. There are international IP conventions and treaties that an IP attorney can use to your advantage when seeking IP rights around the world.
Invention promotion companies
Some invention promotion firms may offer you free information on how to patent and market your invention.
Some unreliable firms promise to evaluate your invention for a fee of a few hundred pounds. They then tell you that your invention has great market potential. They may offer to promote your invention to manufacturers if you pay a fee of several thousand pounds up front. Once you have paid up, they may do little or nothing for you.
Reputable companies will carry out the research and provide a genuine market evaluation. It will give you an honest review of your invention’s potential. They don’t use bogus research and mass-produced positive reports. They don’t charge large advance fees up front, as some unreliable companies do. They will recommend what research should be carried out to evaluate your invention. If the outcome is positive, they will tell you how they would market it. They will give you an estimated breakdown of what the costs will be at each stage of the process and the level of risk involved.
If an invention promotion firm approaches you, take great care. Question their claims and assurances that your invention will make money. No-one can guarantee your invention’s success.
Entering into a contract with one of these companies is no different to any other major financial arrangement. Make sure your contract contains all the terms you have agreed to and be sure to get independent legal and financial advice.
Published: 8 December 2014
Updated: 23 February 2016
- Video 'IP BASICS: Is Intellectual Property important to my business?' added to the guide.
- First published.