Progress on EU trade marks and design protection post Brexit

IP rights and BREXITJerry Walder recently attended the CITMA Spring Conference 2018 in London and listened to a number of very interesting presentations.

CITMA President Kate O’Rourke kicked off  the conference with a round up of the current Brexit position for EU trade marks and designs following the release of the draft EU withdrawal agreement.

The main points relating to intellectual property are:

  • EU Registered TMs and Designs will automatically be “cloned” to provide an equivalent UK right;
  • “Cloned” rights will keep the same filing and priority date as EU “parent” right;
  • For pending EU TM and Design applications (as at 31/12/2020) there will be a priority period of 9 months (ie to 30/09/2021) to file corresponding UK applications.

These are still draft proposals and CITMA and other intellectual property organisations have raised objections to various aspects.  They are continuing to lobby the negotiators on these points.

The draft proposals can be reviewed in full at

The provisions relating to intellectual property are contained primarily within Articles 50-57 (inclusive).

If you have any questions about the impact that these proposals would have on your current and future trade mark and design protection in the UK and EU, please contact us to discuss your options.

Sanderson & Co supports University of Essex with Intellectual Property training sessions

Since moving to our new offices in the Knowledge Gateway at the University of Essex, Sanderson & Co have been increasingly involved with helping students and spin-out businesses to learn about Intellectual Property protection.

Dr. Andrea Salin, recently put his university lecturing experience to good use when he gave a lecture on patents and commercialisation of research to a group of final year students in the School of Biological Sciences at the University of Essex on 24th November 2017.

Dr. Gareth Jones, lecturer in Biochemistry, said “I was very pleased when Dr. Salin accepted to be a guest lecturer on my module as students derive particular benefit from hearing about different issues in Biomolecular Sciences directly from experts in the field.  Dr. Salin gave an overview of different types of Intellectual Property and discussed engagingly what patents are, why and when they are needed by scientific business and their role in the commercialisation of scientific discoveries in particular.”

A few days later, Andrea put his skills to use again talking to a smaller group of post-graduate business start-ups as part of a series put on by the University of Essex Start-up Hub.  The group had a particular interest in the Intellectual Property aspects of software and computer driven technology applications.

There was some excellent feedback from the attendees who really appreciated Andrea’s knowledge of the subject and his enthusiasm for this increasingly important area of Intellectual Property protection.

“Andrea made a complex subject interesting and easy to understand, he even made it enjoyable. Andrea knew the answer to every question he was asked (even the odd and difficult ones asked by me) and he gave really useful advice. I would 100% recommend Sandersons & Co and more specifically recommend Andrea to anyone who had an Intellectual Property needs. Great overview session, just hope it can be longer next time.”
Hayley Jones – Enterprise Assistant

“Dr. Andrea Salin from Sanderson & Co. explained the complexities of the IP process, the regulations and different scenarios in a clear, concise and understandable manner. The presentation was clever and tailored specifically to our necessities. He provided real-life examples to illustrate whether a particular IP type is applicable to us, or not.   Dr. Salin walked us through the fundamentals of IP and build a comprehensive and open environment where  the attendees were able to formulate questions related to particular scenarios of their business. Subsequently, those questions were answered with a great balance among law regulations, business applications and particular project technicalities.   It was a pity the hard stop due external factors, I look forward to have the privilege of being invited to another session with Dr. Andrea Salin from Sanderson & Co. in the near future.”
Emmanuel Ferreyra Olivares – School of Computer Science and Electronic Engineering


Dr. Andrea Salin

Dr. Andrea Salin
tel: +44 1206 571187

10 Essential Tips for Getting IP Right

Does your business understand and manage its Intellectual Property effectively?  If not, you are not alone.  Many small businesses worry that it is too complex for them to handle themselves but too expensive to employ external experts.

However, by following some simple steps, you can avoid the most common IP pitfalls and protect your business.

  1. Understand and identify what IP your business holds.
    Your technical innovations, distinctive brands and designs, original authored materials, technical know-how and trade secrets are all your Intellectual Property.  Some arise automatically but some must be applied for.
  2. IP is not only for big companies.
    IP rights help ensure that the people who create ideas are rewarded for their efforts.   They help individuals and start-ups to compete with larger companies. They can be extremely valuable and are a crucial component in building your business.
  3. IP rights are key business assets.
    They can generate income through commercialisation and licensing and add value to your SME.  Investors need to know your IP is protected.
  4. Consider licensing your IP.
    If your IP would be useful to other businesses, you may be able to license its use to them. It is a low risk way of exploiting your IP and can provide small businesses with new opportunities for conducting business domestically or abroad.
  5. Make sure you know who owns the IP.
    Under UK law an employer owns the IP created by its employees working “in the course of their employment”. However, contractors and consultants usually own everything they create – even if you have commissioned it – unless they assign ownership to your company with a simple contract.
  6. Confidentiality is vital to start with.
    If you don’t keep your IP confidential you risk someone else discovering and benefiting from your innovation. Also, some forms of IP cannot be obtained if the idea has been made public before you apply to protect it.  Third parties may need to sign non-disclosure agreements at early stages.
  7. Think strategically.
    Align your business plan with your IP development.  Consider an invention capture process so that you identify and protect new IP at the appropriate times.
  8. Think about international protection.
    Most IP rights are territorial and give no protection outside that territory.  You need to balance the costs of broader international protection against the likely risks and benefits of operating in the countries where you make, buy, or sell your products.
  9. Stay vigilant.
    Regular searches of published IP rights will prevent you unknowingly infringing someone else’s IP. Infringement can result in substantial fines or injunctions for your company. Searches can also identify when somebody else is infringing your rights.
  10. Use your IP rights correctly.
    Your IP rights can be challenged and invalidated if you don’t look after them.  g. Trade marks must be used regularly and correctly.   Patented products should be marked appropriately.
James Sanderson - Patent & Trade Mark Attorney

James Sanderson – Senior Partner

“A proactive, well designed IP strategy can help drive the growth of your company and does not have to be expensive.

Much of the work involved can be managed internally but sound professional guidance will give you vital peace of mind.

It is much cheaper to get professional advice and quality IP protection ahead of time rather than having to try and sort out the mess after things have gone wrong.”


Grab it! – The Art of Invention Capture

Protect your innovationsOK… unless your invention is self-propelled or attached to something else that is, it’s unlikely that things are going to get that dramatic… but invention capture can still have a major impact on your business.

What is invention capture?

Invention capture is the process by which an organisation uses a structured approach to identify and collate the innovations generated by their staff.

The majority of patented inventions are for small improvements to existing technologies or processes.  With Intellectual Property increasingly being recognised as a vital part of business strategy, identifying and protecting innovations that may give a commercial advantage is essential.

The invention capture process is a collaboration between the inventors, managers and patent practitioners.  Larger organisations may have an in-house patent department who will facilitate the process.

For organisations without in-house patent practitioners, regular meetings with their patent attorneys can help them to identify new innovations which could be patentable.  The patent attorneys can then also work with the organisation’s management team to decide which of these patentable inventions should proceed to patent applications.

What is the process?

  1. Educate

The initial stage of the process will be to educate the inventors and their managers about what they should be aware of and be looking for while doing research and development.

  1. Brainstorm

The patent practitioner will organise and moderate a brainstorm session with the inventors and managers to talk about recent research and development work to identify new improvements and discoveries.  You may find that you identify a small development which may have enormous significance to the business.

  1. Document

The patent practitioner will create draft invention capture documents for each invention based on notes and discussions at the brainstorming session.  The invention capture document will contain details of the invention as well as indications of the level of importance the company.  Once the content of the invention capture document is agreed, the document is signed and dated.

The contents of the invention capture document can then form the basis of a patent application.  A patent application can be prosecuted straight away or the management team may decide to defer an application, or decide that they do not wish to proceed with a patent application.

As always, it is essential to ensure that the invention is not publicly disclosed prior to submitting a patent application as this would prevent the invention being patentable.

  1. Monitor

In addition to identifying the inventions generated by your own business it is advisable to stay informed about the patenting activities of your competitors and others in the fields of technology relevant to your business.  Your patent practitioner can set up alerts with the US Patent Office, WIPO or EUIPO which will flag up new patent applications which may be of interest to you.


If you would like to discuss setting up robust invention capture procedures please contact us for more information.


A (very) rough guide to patenting your invention in the UK

What is a patent?

A patent is an exclusive right that is granted by a country’s patent office to work an invention in that country for a period of up to 20 years.

A UK patent can be obtained by filing an application directly at the UK patent office or by filing a European patent application.

What can be patented?

In the UK and Europe, an invention (either product or process) that is technical in nature can be patented.

Discoveries, scientific theories and mathematic methods are not considered to be inventions per se, but a practical application of these may be patentable.

Presented information, aesthetic creations, methods for performing mental acts, playing games or doing business, and computer programs, are also not considered to be inventions per se, but they may still have technical elements to them that may be patented.

Can I patent my product/process?

Products/processes can be patented if they are new and inventive.

To be new a product/process cannot have been publically described prior to the filing date of the patent application either by you or by anyone else.

To be inventive the product/process must have new features that would not have been obvious to use to someone in the relevant technical field of the invention.

How do I get patent rights?

Talk to us about your invention. We can advise on patentability, prepare and file a patent application, and prosecute the patent application through to grant.

Alternatively you may acquire or exclusively licence someone else’s patent. We can assist with due diligence in connection with this.

What is involved in the patent application process?

We can write a patent application and send it to you for approval. Once approved, the application can initially be filed at the UK patent office. On request, the UK patent office will search databases for existing documents that describe your invention. Then, on request, the UK patent office will examine your application to see if it meets the requirements for patentability. If the requirements are met, a patent will be granted for your invention.

How long does it take?

It typically takes around 3-4 years to obtain a direct UK patent.

Download a copy of our UK Patent Application Timeline


Click to download a copy of our UK Patent Application Timeline

What does it cost?

It depends on the complexity of the invention and the nature of any objections that may be raised by the patent office.  It typically costs £4000-£6000 + VAT to obtain a UK patent. Annual renewal fees of a few hundred pounds each are then payable after grant.

Want to find out more?

If you would like to discuss your options in more details please contact us.

Looking after your trade mark

Congratulations – you’ve registered your trade mark!

Protect your IP when you trade overseas

Your trade mark

  • Protects your company’s name or logo
  • Gives you exclusive legal ownership of your brand name
  • Stops others using your registered trade mark
  • Gives you a valuable asset
  • Protects your domain name from those acting in bad faith
  • Ensures you are not infringing the registered rights of anyone else.
  • Allows you to protect the growing reputation and goodwill of your business
  • Stops others holding you to ransom.

Now what?

Depending on which territory you have registered your trade mark in, you will have a number of years during which your trade mark will continue to protect your brand.   Its protection should continue for as long as you continue to pay the maintenance fees.

But… you need to make sure you are using it correctly to prevent it being challenged and potentially revoked.

Use it or lose it

You can’t just register your trade mark and then do nothing with it.  It must be used within a 5 year period, and use may not stop for any continuous 5 year period, or it will be vulnerable to revocation.

For example, Lacoste have recently lost their crocodile trade mark in New Zealand after it was challenged by Crocodile International for lack of use.

Use your trade mark correctly

You should always use the trade mark in the form in which it is registered and for the goods or services for which it is registered.  Incorrect use can leave a trade mark vulnerable to cancellation by a third party.

Make sure it stands out

It is important that you make it clear that that it is a trade mark.  Failure to notify the public that your sign is a registered trade mark may affect your ability to claim full damages in an infringement action.

To make is stand out you can use…

  • Quotation Marks: “Sanderson & Co” trade mark attorneys.
  • Capital Letters: SANDERSON & CO trade mark attorneys.
  • Different Typeface: SANDERSON & CO trade mark attorneys.
  • Bold Print: SANDERSON & CO trade mark attorneys.
  • Colour: SANDERSON & CO trade mark attorneys.
  • Footnote: Place an asterisk next to the mark and then place at the end of the publication *trade mark.
  • Symbols: ® (if registered) or ™ (if not registered).

Generally, it is not necessary to mark every occurrence of a trademark or service mark in an article, press release, advertisement or on a website, etc;  but identification of the mark should occur at least once in each piece, either the first time the mark is used or with the most prominent use of the mark.   When in doubt it’s better to over mark it!

™ or ® – what’s the difference?

  • ™ can be used if you are claiming something is a trade mark
  • ® should only be used if you have REGISTERED it as a trade mark
  • It is an offence to use ® if it is not registered

Avoid Genericide

The term genericide refers to the way in which careless and incorrect use of a trade mark can lead to it becoming a generic term for the product that it describes.  This causes it to lose distinctiveness and therefore no longer be registerable.  eg ASPIRIN, ESCALATOR, KLEENEX, BAND-AID, YO-YO, THERMOS and WINDSURFER

To avoid genericide always use your trade mark as an adjective rather than a noun or verb.

E.g.  LEGO toy blocks or OREO cookies

Top tips for using your trade mark correctly…

Use it or lose it

Make sure the trade mark stands out in any materials

Use as an adjective NOT a noun

Use it as it is registered and for the goods or services for which it is registered

Monitor and act immediately on any misuse of the mark

Regularly review the protection you have to ensure it remains relevant for your evolving business

BREXIT – what happens to UK and EU Intellectual Property Rights…?

IP rights and BREXITWell in reality, it will be business as usual for at least the next 2 years.  During that period the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) will work with the UK Government to negotiate for the best outcome for intellectual property rights holders.


  • The European patent system is independent of the EU, and so Brexit will have no effect on European patents or applications. The UK’s membership of the World International Property Organisation (WIPO) will also be unaffected.
  • UK patent attorneys will still be able to prosecute European patent applications for all UK and overseas clients.
  • European patent applicants will not lose any rights and patents already obtained via the European patent office are unaffected.
  • UK patent attorneys can still prosecute Patent Cooperation Treaty (PCT) patent applications – which provide protection in the applicant’s chosen countries – for all UK and overseas clients.
  • PCT patent applicants will not lose any rights.


Trade Marks & Registered EU Designs

  • NO IMMEDIATE CHANGES… There will be a negotiation period of at least two years before the UK leaves the EU – and that period will only start once the UK officially notifies the EU of its intention to leave, which may not happen straight away.
  • European Union Trade Marks (EUTMs) and Registered Community Designs (RCDs) will therefore still give protection in the UK until at least June 2018.
  • The Institute of Trade Mark Attorneys (ITMA), the UK’s Intellectual Property Office and the Minister for Intellectual Property will work to ensure the best possible outcome for owners of intellectual property rights and for practitioners in the UK.
  • They will also work to ensure the transition of all EU-based trade mark and design rights to UK-based protection to be simple and cost effective.

For further information, or to discuss the implications of Brexit on your UK and European Intellectual Property Rights, please contact James Sanderson or Jerry Walder on 01206 571187.

Protecting your Intellectual Property when trading overseas

Protect your IP when you trade overseasWhen you are considering trading internationally you need to make sure that you are protected against your invention being copied or your name, logo or brand being used inappropriately.

Protecting your intellectual property through the use of patents, trade marks and registered design rights defends you against other companies or individuals who may try to copy your goods or pass themselves off as your company.

Do your homework

It is important when looking to move into foreign markets to ensure that you will not be inadvertently infringing the existing rights of other companies within those markets. It is essential to do your research with robust intellectual property searches before embarking on costly and time consuming sales and marketing programmes.

Do I have rights in other countries?

Intellectual property rights are generally territorial. A granted patent or trade mark / design registration in the UK does not give you automatic rights for protection in another country.  You must have applied for and been granted a patent, trade mark or design registration in a particular country in order to have those rights in that country.

Protection within the EU

Having a UK patent, trade mark or registered design does not give you automatic protection within other EU countries. You can file individual applications in each country you would like to seek protection.  Alternatively, you can apply for a European patent or European Community trade mark or design registration.

A European patent application is a single application which if successful will result in a single European patent. To have effect, the granted European patent must then be validated in each European country where protection is required.  This incurs separate fees for each country.

A European Community trade mark or design registration covers all 29 countries of the EU.

Protecting your inventions outside the EU:

Separate patent applications can be filed in each country where you would like to seek protection. Alternatively you can file an International patent application.

There is no such thing as an International patent – only an International application. At a particular point in the process an International application must be converted into separate national applications in the countries of interest and the cost at this stage is comparable to filing separate national patent applications.  Each separate national application then proceeds in the same way as a standard national application.

An International application is ultimately more expensive than filing separate national applications but it gives you more time to decide on the particular countries where you wish to seek protection and also delays expenditure.

Protecting your trade marks outside the EU:

There is no such thing as a single worldwide trade mark registration.  There is an International trade mark application procedure known as the Madrid Protocol which allows a single application to cover a large number of different countries.

Under the Madrid Protocol there must be a ‘home’ trade mark registration or application, for example in the UK or the EU.  As such, you must first file a UK or EU application before you can use the Madrid Protocol system to cover other states.

Protecting your designs outside the EU:

Most countries require separate individual design applications to be filed in that country in order to obtain protection. There is no such thing as a single worldwide or ‘global’ design registration.  There is an International design application procedure known as the Hague Agreement but at present this covers only a limited number of countries.

Do I have to apply straight away in every country?

From the filing date of a first patent application, there begins a 12-month priority period within which further patent applications may be filed in other countries.  These further patent applications may then take the priority of the initial filing date which means that they will be considered as having been filed on the same date as the first application.

Following the filing of a first trade mark or design application there is a 6-month priority period within which design/trade mark applications (for the same design/trade mark) may be filed in other countries.  Those applications can then claim the initial “priority” date of the first application.

The priority period enables you to spread the costs and also allows you to assess the commercial viability of your product before deciding where you wish to seek protection.

Take some advice

Obtaining the most appropriate IP rights for you can be complicated. While much information and application forms are available through the UK Intellectual Property Office and the European registry (OHIM), a qualified patent or trade mark attorney will be able help you to develop an effective strategy for your IP protection and guide you through the process.

Sanderson & Co offer a free half hour consultation at our office in Colchester or London if you would like to discuss your options for international IP protection.

Caroline Ward

Caroline Ward

Contact us to discuss your options.

Caroline Ward
Sanderson & Co
tel: 01206 571187

How does IP help small companies grow?

Some companies think that investing in Intellectual Property isn’t right for them…. it’s something that the big boys do…  Wrong!  IP isn’t just for large companies with deep pockets.  UK SME’s file over 10x as many patents and trade mark applications as big companies.   The time and money that you have invested in your innovation and business should be protected by IP rights.

  • IP encourages investment in your company
  • IP protects against unsafe and counterfeit goods
  • Inventions that are protected by patents are valuable business assets
  • Registering your trade mark allows you to safely extend its business use
  • IP protects and supports innovation
  • Innovation promotes business growth
  • Profits from patented inventions attract reduced UK corporation tax through the Patent Box so you get to keep more of your profits to re-invest in business growth

Below is a short film from Ideas Matter –

IP By Numbers: Video from Ideas Matter on Vimeo

Contact Sanderson & Co to talk about how you can make the best use of IP rights.

Could you benefit from tax incentives for innovation?

research and development innovationsInnovation can be a powerful driving force for businesses, offering opportunities for growth and expansion.  For smaller organisations, taking the decision to invest in the necessary research and development can seem daunting, but the UK government offer a number of financial incentives to encourage investment and promote innovation.

Knowledge Transfer Partnerships

If you don’t have the expertise in-house, or feel you would benefit from some external academic knowledge and experience, you might like to consider a Knowledge Transfer Partnership (KTP).

A KTP is a partnership between your business and an academic institution (such as university, further education college or research and technology organisation), enabling you to access skills and expertise to help your business develop.  A KTP is part-funded by a Government grant with SME’s only expected to contribute about a third of the costs involved in a project.

KTPs can help business to:

  • find innovative solutions for business challenges
  • enhance your competitive advantage
  • expand market opportunities
  • generate a significant increase in profit
  • improve business performance
  • use graduates to accelerate innovation
  • get advice and support from experts

University of Essex Knowledge Transfer Partnerships

For more information visit

Enhanced Corporation Tax Relief for Research and Development

Enhanced Corporation Tax relief is available for expenditure on eligible Research and Development (R&D) activities.

For small and medium sized entities this relief can be as much as 225% of their expenditure on R&D, every £1 spent attracts tax relief of £2.25. For larger entities the relief reduces to 130%.

Eligible R&D activities are those that seek to achieve a scientific or technological advance and the qualifying costs include the following:

–          Employee costs relating to the R&D activities
–          Materials used for the purpose of the R&D
–          The cost of utilities used in the R&D activities

For more information visit the HMRC website at

Patent Box

Patent Box allows companies to apply a lower rate of Corporation Tax to profits earned from their patents. The relief is being phased in from April 2013 with the full benefit of 10% Corporation Tax being available from April 2017.

To qualify for Patent Box a company must have been involved with the development of the patent and must own or exclusively license them.

All granted UK and European patents qualify for Patent Box regardless of when they were granted, as well as patents from the following countries in the European Economic Area: Austria, Estonia, Hungary, Romania, Bulgaria, Finland, Poland, Slovakia, Czech Republic, Germany, Portugal, Sweden, Denmark

Qualifying income can arise from a number of sources including:

  • The sale of patented products or a product incorporating a patented invention including the sale of spare parts of such products even if the spare part itself is not patented.
  • Licence fees and royalties from a right granted over the patent.
  • Proceeds from the sale or exclusive licence of the patent.
  • Income received as compensation for patent infringement.
  • A notional royalty where a patented process or patented tool is used to generate profits that would not themselves qualify for the Patent Box relief.

For more information visit the HMRC website at

Could Patent Box work for you?

Previously companies may have felt that it was not worth the expense of applying for a patent, especially if the product was likely to have a relatively short life span.  With the total cost for securing a UK patent grant likely to be around £3000 to £3500, it may be that Patent Box allows the cost benefit calculations to swing back towards aquiring a patent.

Patent Box also shifts the focus of patent protection away from trying to establish as broad a protection for the product as possible: a more narrow focus can make it easier to get a granted patent while still allowing a company to make a claim using the Patent Box regime.

“Having a granted Patent is a prerequisite for anyone wishing to take advantage of the Patent Box scheme. However, potential users of the scheme need to bear in mind that a patent application must be filed before any public disclosure of the invention takes place. You cannot wait until you are sure you have a commercially successful product before deciding to patent it, in order to get the Patent Box tax breaks. So, SMEs will need to be pro-active in determining at an early stage in product development process, which inventions to patent.”
Jerry Walder – Partner

For more information and advice about how you could take advantage of the Patent Box scheme please contact Sanderson & Co.