Monthly Archives: May 2014

Guidance: Patent classification

Updated: Additional guidance and links information changes to document.

As a patent granting authority we perform searches on UK patent applications. We use classification schemes to help narrow down our search. We classify all applications before we publish them so that the classification information is available on the day of publication.

We classify UK patent applications by their technical content. There are several patent classification schemes that can be used and currently we apply the international patent classification to all our applications.

We used to apply our own UK patent classification but following a public consultation we decided to stop doing this from 1 July 2007.

Use this guide to find out about the different classification schemes.

Source: UK IPO News

Guidance: Searching for similar trade mark goods/services in other classes

Updated: Updated cross search list added.

When we receive your trade mark application and search our register for earlier trade marks which may be the same as or similar to your mark, we only look in classes that may contain the same or similar goods or services to those in your application.

If we do find an earlier mark we will tell you and, if you decide to continue with the application, we will write to the owners of any earlier conflicting national UK trade marks and international registrations designating the UK identified in the search when the application proceeds to publication in the trade marks journal.

For each of the classes of goods and services we use a list of appropriate classes that we may search. This list is not exhaustive – we will use our discretion to decide exactly which classes to search.

Using the cross search list

The application class number takes you to another page which lists the search classes together with the goods and/or services within each class, which may be the same or similar to the goods and/or services in your application.

Example of how to search for potential conflict:

  • Class 11 lists class 21 – cooking utensils’

  • Then go to class 21 where you will see ‘class 11 – electrically heated cooking utensils’

This means you would probably only consider there is a conflict between these classes in respect of those specific goods.
If they are not listed in a specification, there is no clash.

Retailing versus goods

Applications in class 35 that include services connected to retailing should indicate the type of goods that are sold. When we carry out a search for earlier marks we will include the appropriate classes for those goods.We should only tell you about existing marks when their distinctive and dominant elements are identical, or nearly identical.

Use our search list to find classes that contain the same or similar goods or services to the classes you have applied for.

Source: UK IPO News

Guidance: Protecting your UK intellectual property abroad

Updated: International trade mark applications can now be emailed to the UKIPO.

Intellectual property (IP) rights are territorial. They only give protection in the countries where they are granted or registered.

IP BASICS: Should I protect my Intellectual Property overseas?

If you only have UK protection, others may be allowed to use your IP abroad without infringing your rights.

The above guides contain information on European Union Trade Mark, Patent Cooperation Treaty, European patent application, Registered Community Design.

If you are thinking about trading abroad then you should consider registering your IP rights abroad.

Some countries may allow you to extend your United Kingdom (UK) protection, and accept it as protected in that country after completing certain local formalities.

The World Intellectual Property Office provides a list of all national IP offices.

Source: UK IPO News

Detailed guide: Copyright notices

Updated: Copyright notice: printed music (2/2016) added.

The copyright notice service allows anyone to ask us to provide basic guidance on an area of copyright law where there is particular confusion or misunderstanding.

It is intended to provide an authoritative, impartial and reliable point of reference. It does not register copyright works.

Copyright is an automatic right and there are no official formalities to acquire copyright protection. There is no public or Government register of copyright in the UK.

The copyright notice service does not intend to deal with specific disputes which are primarily of interest only to the parties concerned.

It does not make new law or issue a direction to a judicial making body. It is not a substitute for a legal case and it is not a statutory piece of legislation.

The service is aimed at those who do not have access to expert legal advice such as Small and Medium sized Enterprise (SME) and is designed to address issues which are of broad concern.

The copyright system can be inconsistent and confusing, particularly in relation to the application of new technologies, and this leads to imbalances of information between rights holders (such as publishers) and users (such as teachers and researchers).

By providing clear and reliable information on what is permissible under copyright law, the notices help schools and other educational institutions make better judgments about lawful uses of copyright works, for example.

To request a notice, please complete the online form. The issue should be outlined as clearly as possible with relevant background.

While we prefer you submit requests using the online form, we will accept requests in writing:

Copyright Notices

Intellectual Property Office

4 Abbey Orchard St

London

SW1P 2HT

There is no fee to submit a request.

For any general enquiries about copyright notices, please email copyrightnotices@ipo.gov.uk.

We have discretion over when to respond to a request for a notice and it is unlikely that it will be able to provide a notice in response to every request.

We will periodically review notices to ensure they remain up to date both in terms of the law and developments in technology. Notices will be clearly marked with the date of issue or update.

Prioritisation criteria

  1. Can the question(s) raised be answered by general rather than specific guidance?
  2. Is there a demonstrable need for a copyright notice on the question(s) because of:
    a) the number of requests?
    b) the lack of existing guidance on the question(s) from the IPO or other body, eg other authoritative and impartial sources? and/or
    c) the introduction of new technology raising novel issues?
  3. Is a copyright notice likely to have a significant impact because it will provide clarity on:
    a) practical situations encountered by large numbers of right holders/users, eg teachers and students? and/or
    b) facilitating innovation or reducing actions which infringe copyright?

We issue copyright notices in response to requests or on our own initiative.

We have discretion whether to respond to a request for a notice.

Copyright notices are intended to set out general guidance; if the request is for guidance on a specific dispute or set of facts or will require evaluation of evidence, the requestor should seek his or her own legal advice.

In deciding what guidance to give through copyright notices, we will take into account:

  • our available resources
  • within that constraint, as many of the prioritisation criteria set out above as we consider relevant

The fact that one of the criteria or one example of the factors relevant to one of the criteria is met in any particular case does not necessarily mean a notice will be issued.

Prioritisation criteria will be kept under review and this information will be reissued with any revised criteria.

Published notices

  1. Digital images, photographs and the internet
  2. Assignment of copyright
  3. Performance of live music
  4. Knitting and sewing patterns
  5. Public exhibition of copyright works
  6. Printed music

Source: UK IPO News

Guidance: Examining patent applications relating to chemical inventions

Updated: Examining patent applications relating to chemical inventions updated.

This guide covers:

  • introduction
  • basic considerations
  • novelty
  • plausibility
  • inventive step
  • industrial application
  • plurality
  • sufficiency
  • annex A – index of court cases and IPO decisions
  • annex B – index of European Patent Office and Technical Board of Appeal decisions
  • footnotes

Source: UK IPO News

Guidance: How to classify trade marks

Updated: General indication of goods and services updated.

If you do not know which class(es) your goods or services are in, you may wish to use the classification search tool TMclass. This will help you to search for, and classify, your goods and/or service needed to apply for trade mark protection. A TMclass tutorial is also available.

Alternatively, contact us tmclassificationenquiries@ipo.gov.uk.

The trade mark classification system is divided between goods, in classes 1 – 34 and services, in classes 35 – 45.

Please note that these lists (class headings) do not include all goods or services in a particular class.

Source: UK IPO News