Power of Attorney
October 04, 2022

A Power of Attorney, often abbreviated to POA, is a legal document which provides written authorisation for another party to act on behalf of, or represent, another party in relation to certain affairs or matters. Such matters may include those of legal proceedings, corporate and commercial matters, and even personal affairs, for example, a Lasting Power Attorney (LPA).

When it comes to intellectual property rights specifically, many applicants and rights holders choose, or are obligated by the applicable national or regional IP legislation, to appoint a legal representative or agent as a third party who will act on behalf of the applicant.

Such legal representatives may include a patent attorney, for example, who would represent the IP applicant or registrant before the IPO and/or courts of the relevant country or region in regard to the assigned patent matters. A POA in this instance would serve as written authorisation for the attorney to act on behalf of the patent applicant in relation to the filing and maintenance of the applicant's patent(s).

A Power of Attorney may also be utilised in intellectual property matters in relation to the development of inventions and patents in the workplace. Instances of this nature may ensue when a company has a POA to act in relation to, or obtain, an employee's inventions that had been created and evolved during their employment.

The requirements in relation to obtaining a Power of Attorney, and for providing proof of the same for use in IP matters, vary from country to country. The law in relation to the use of a Power of Attorney in US Law, for example, states that there are multiple requirements for the obtainment and validity of a POA in the jurisdiction.

As such, in order to constitute a valid POA for a legal entity in the US, it must contain the date of POA execution, and be signed by the principal or by another adult being empowered to execute the document in the principal’s presence and under their direction. Furthermore, a POA in the US must be signed and acknowledged before a notary public or be signed by two witnesses.

In addition to domestic legislation and requirements for obtaining a POA initially, national and regional law also obligates applicants and right holders to adhere to rules before the relevant IPO's in which IP is to be filed or maintained. In some countries, for example, the representative or agent with the POA must be an attorney registered within the jurisdiction in which the IP is filed or registered, however, this obligation is not present for all states.

Further, many jurisdictions require the submission of a document confirming the signatory who has executed a Power of Attorney on behalf of the applicant in order to obtain a filing date for their IP, with some countries also mandating that the POA supplied must be an original paper copy, and be a legalised notarised version of the document in order to be valid, an obligation which is not present in every jurisdiction.

A Power of Attorney is an important and oftentimes vital aspect of the registration and maintenance of IP rights. With international legislation and requirements differing, it is important for IP applicants and right holders to pay close attention to the necessary requirements of POA execution and submission in order to successfully manage their IP portfolio.

Trade Secrets

Trade secrets can take many forms, such as products, processes, practices, and many others, and can remain protected on three conditions: the subject matter has to be unknown to the general public, bring economic value by not being disclosed, and its owner has to make sure it remains confidential. If one of these criteria is not met, trade secret protection ends.

When you file a patent application, you are obliged to share your invention with the public. In return, you are granted exclusive rights for exploiting your product for a certain period of time, and moreover, you can license it to other people.

Meanwhile, if you choose to protect your IP with a trade secret, you don’t have to share your invention with the public, and it instead brings you profit by staying undisclosed.

The main benefits of utilising trade secrets over patent protection, for example, is that there is no registration cost, whilst the patent registration process can be relatively costly, and trade secrets have an infinite validity period, whereas patents in most countries are valid for 20 years.

The only people that are allowed to use information which is protected under trade secret laws are those who discover the "secret" on their own, without using illegal means or breaking the law. For example, it is not a violation of trade secret law to research a legally manufactured product and calculate its trade secret.

If we take a look at Coca-Cola, we can observe that the company owns multiple patents relating to the bottle designs, vending machines, artificial sweeteners and many more. After 20 years, all of those patents will expire, and the information will be available for the public.

However, the recipe of Coca-Cola has been protected as a trade secret for over 100 years, and is likely to stay that way unless someone comes up with the identical recipe on their own, which is highly unlikely.

Negotiating the trade secret protection landscape in various countries can be a complicated business. Each country has its own rules on what can be protected, how it’s protected, and the remedies available, therefore we recommend contacting a professional IP attorney to assist with such protection.

Public health and pharmaceutical patents

It is safe to say that we all know the importance of innovation and its place in society. Pharmaceutical inventions, for example, have saved countless lives, with vaccines being one of the most discussed topics of 2020. They are vital to public health, and policy makers must weigh up the factors of pharmaceutical patent rights compared to the accessibility of the inventions to the public, but what is a pharmaceutical patent?

A pharmaceutical patent, much like a regular patent, grants exclusive right over the use of an invention to the patent owner, however there are a few differences in terms of validity periods and licensing. In addition to the basic validity period of 20 years from the filing date, a Supplementary Protection Certificate (SPC) may be granted in respect of pharmaceutical patents in more than 20 countries, including the US, UK and some countries of the EEA (European Economic Area), for example. The latter issues the SPC, which allows for an extension providing either an overall maximum of 15 years of exclusivity from the date of the first marketing authorisation (MA), or 5 supplemental years after the expiry of the patent, and is designed to compensate the inventor(s) for any time lost between the granting of the patent and the MA of the same.

In the UK an SPC will not extend the term of a patent, but gives similar protection, which enters into force when the patent expires and can last for up to 5 years. An SPC for a medicinal active ingredient may also be extended for a further six months if it has undergone the appropriate pediatric testing. It is worth noting that this may be subject to change after Brexit is finalised.

A similar system applies in the US, however, the Certificate Extending Patent Term applies to the entire patent in this jurisdiction. Furthermore, the term of a patent eligible for extension shall be extended by the time equal to the regulatory review period for the approved product. Such period occurs after the date the patent is issued, whereas in the EEA the scope is narrower, applying only to the active ingredient(s) of the patented product.

The duration of the certificate can also be limited in certain instances, for example, when a patent term has already been extended under a specific national law.

Although patent protection contributes to greater pharmaceutical research funding, which is a strong incentive to continued development of life-saving inventions, it can also hinder individuals from obtaining the treatment they need due to monopolization of patented treatments and corresponding increases in costs. A possible remedy to this is compulsory licensing, a mechanism which allows another party to produce a patented product or process without the express consent of the owner of the pharmaceutical patent itself. Safeguards such as this ensure that the pharmaceutical industry can be compensated for its scientific advances and contribution to the public health, while also preventing monopolization. On the flip side, however, critics have argued that licensing may create incentive issues, with companies purchasing licenses and increasing treatment costs as opposed to researching and developing new ones.

The socio-ethical implications of pharmaceutical patent rights on the wider public health are contentious, and require a collective approach of resolution. A combination of policy reform, standardised pharmaceutical state funding, company obligations, and a collaborative commitment to the stabilisation of pharmaceutical treatment costs may be the key to fairness and accessibility for the good of public health.

How Copyright Works

A copyright is a legal right protecting an original work created by an individual and fixed in a tangible medium. Similarly to other types of IP rights, copyrights prevent others from using original work without prior permission from the owner. This can include the prevention of other people copying or adapting your work, distributing, renting, or putting copies of your work online, or performing your work in public. However, one of the most significant differences of copyrights from other types of IP is that they are granted automatically, as opposed to needing to be applied for and examined prior to the granting of protective rights by a specific patent office. A copyright is therefore assumed to be in place from the moment one produces original literary, dramatic, musical and artistic work, including photography, as well as non-literary written work such as software, web content or databases. The layout of published versions of written, dramatic or musical works, recordings of film, television, sound, music, or broadcasts are also subject to copyright protection.

The validity period of copyrights can vary for each type of work in different jurisdictions, and can be governed in other countries by national laws based on minimal standards provided in international agreements such as the Berne Convention.

In the UK, written, dramatic, musical and artistic works, including photography, are typically protected by copyright for 70 years following the year of the author's death, films for 70 years from the death of the director, screenplay, author and composer, whichever occurs last, and sound and music recordings for 70 years from the first date of publication. Broadcasts are protected for a lesser term of 50 years from the first broadcast, whilst a layout of published versions of written, dramatic or musical works is valid for 25 years from the first publication date.

Whilst a copyright is automatically available for the aforementioned works, the onus is on the owner of the right to protect it against infringement. In this regard, although some use of a copyright is allowed under certain circumstances, such as fair use, the majority of third parties who wish to use a work for a commercial purpose must first obtain a permission or license, a contractual agreement between the owner and the user of the right. A licence can be used to control the ways in which the work is used, as well as the length of time it can be used for. Other contractual agreements also come into play when it comes to things like negotiations of the sale or transfer of rights via assignment, or the organisation of economic rights, for example.

Certain parties such as schools, archives, public administration or libraries may be able to use the work without permission from the copyright owner, and therefore it is important to verify if the use you wish to halt qualifies as infringement before taking action.

The above covers the basics of copyright in the UK, however, the law on copyright in other countries may differ. For more information on copyright in your jurisdiction, please contact us.

Intellectual property basis for SME's

Intellectual property is vital to business growth and brand recognition, but it can be difficult to know where to begin, especially for small and medium sized enterprises (SME's). A 2019 study by the EUIPO and EPO demonstrated that SME's which filed for at least one IP right were 21% more likely to experience subsequent growth and up to 33% if bundles of IP rights were filed, i.e. a combination of patents, trademarks and designs. So how does an SME approach this?

One of the most important elements in separating a new business from its competitors is the branding. Creating a brand with a slogan or logo that draws people in and is trusted is a lot of the fight toward becoming a reputable SME which will be chosen over its competitors. It is also crucial for SME's to obtain trademark registration to protect them against unfair competition, preventing others from utilising a similar or identical mark for their own gain, misleading or confusing consumers by mimicking another brand’s trademark, or wrongfully benefiting from another company's good reputation.

With a large number of SME's constituting tech businesses, patents and utility models can be essential in protecting advancing technology which can catapult their success. Approximately 18% of all patent filings from Europe submitted to the EPO in 2020 were made by SME's or individuals, showing that although the majority are from business giants, smaller companies are joining the trend. However, due to globalization, patent protection in multiple jurisdictions is becoming more and more commercially necessary, which can amount to hefty filing and enforcement fees that smaller businesses may not be able to pay. On the flip side, a niche innovation could be worth spending a substantial amount in the beginning, in order to reap the benefits of ownership, lucrative licensing and the propensity to garner a substantive patent portfolio in the future. Therefore, evaluating which innovations to prioritise for protection may be a middle ground for SME's which won't incur as heavy a cost as patenting all of the business’s inventions, and might pay off in the long run.

A unique design can set a brand apart from its competitors in a bold way if done correctly. If, for example, a chair is designed in a more ergonomic way than its competitors, consumers are undoubtedly more likely to opt for the better design. To protect a design like this from being imitated by other companies, an industrial design right can prove effective for SME's, as they can present as a consumer-facing piece of IP which can substantially contribute to the reputation of the business and their products.

If you are interested in knowing more about IP for SME's, feel free to contact us.

Joint IP Ownership

Intellectual property, from trademarked brand logos to patented inventions, is often the result of a collaborative effort between individuals, businesses, academic institutions and the like. With multiple contributors comes the potential need of filing for protection for more than one applicant, but whilst co-ownership of IP can yield its rewards, it is accompanied by risks requiring several points of consideration.
The particular legal nuances of joint ownership of IP vary from country to country, and it is helpful for prospective co-owners to consider the jurisdictional laws prior to obtaining IP protection collaboratively.
In relation to UK patents, for example, patentees are entitled to equal, undivided shares in the patent, regardless of the individual contribution overall. Furthermore, permission by all co-owners of a patent must be provided in order for one to license the patent to a third party, however, this may not be the case in other territories.
Another interesting point for consideration is observed in the European Patent Office (EPO) rules. As per the rules, it is possible to appoint a single "common representative" for dealing with all matters that may arise during the application prosecution, who represents all co-applicants referenced in a patent application before the EPO. The first named applicant in the filing request will be considered as the common representative, unless any other representative has otherwise been indicated in the application materials. As the EPO does not need to seek approval from the other co-applicants in relation to the majority of requests from the common representative, an agreement between all applicants is likely to be beneficial in mitigating the risk of conflict between co-applicants throughout the prosecution and maintenance of a patent.
Regarding trademarks, in some countries, the national legislation does not officially provide for joint ownership of a trademark, with the exception of collective marks, a contentious point which has been the subject of court proceedings in recent years in Russia for example. As such, due consideration should be given to the legislation regarding joint ownership of a mark in the respective territories applicants wish to register.
Similarly to the laws governing other types of IP, the legislation in relation to European Community Designs specifies that if a design was developed by an employee in the execution of their duties or under the instruction of the employer, the design shall be owned by the employer in full unless otherwise specified. In such instances, the employee will be unable to be considered as a co-owner, or to jointly own the design.
Co-ownership, like many other aspects of obtaining IP protection, requires much thought and consideration of possible issues which may pay off in the long run, but pose as contentious points of risk.
The aforementioned risks may be mitigated by the drawing up and adherence to agreements set forth by all co-owners of an IP right. These agreements can allow for a foundation on which decisions as to the right will be made, for example, pre agreed decisions on the prosecution of a patent, licensing, disputes etc. Applicants may also consider alternative options, such as licensing agreements in relation to patents for example.