Guidance

UK toolkit for US SMEs

Updated 8 March 2024

1. Introduction

This toolkit has been produced to inform United States (US) small and medium-sized enterprises (SMEs) about protecting their intellectual property (IP) within the United Kingdom (UK) and the tools available to help them. As many IP rights are ‘national rights’ there are often differences in how, and the level to which, your IP rights are protected in the UK compared to the US.

2. Support for SMEs

The UK has an extensive variety of support to help SMEs operating in the UK to recognise and understand how to protect their IP rights. The UK Intellectual Property Office (IPO) has a range of guidance available on its website at IP for Business. They also offer business education programmes such as the IP Masterclass. Further details of support offered are detailed in the IPO’s IP Basics guide for businesses.

Support available in the UK also includes the UK Patent Libraries and Business & IP Centre (BIPC) network. Across England there is a network of Growth Hubs with trained advisors who can provide tailored guidance to businesses. Support for businesses is also available through Scottish Enterprise, Invest Northern Ireland and Welsh Government.

3. Patents

A patent protects your invention and allows you to take legal action against anyone who makes, uses, sells or imports your invention without permission. On expiry of your patent, other people can make and sell your invention. Additionally, as patents are territorial rights, other people will be able to make and sell your invention in any territories where patent rights are not held.

To get a UK patent for your invention you have to apply to the UK’s Intellectual Property Office and pay the relevant fees. The fees to apply for a patent can be viewed online.

It can take several years before a patent is granted. Patent protection covering the UK lasts up to 20 years, with renewal fees required each year.

You can also gain patent protection in the UK through the European Patent Office or through the Patent Cooperation Treaty, administered by the World Intellectual Property Organization (WIPO). This may be appropriate if you are seeking to do business in countries other than the UK.

We strongly advise seeking legal advice before applying for a patent as it is a complex process and practice varies between countries. Seeking advice from a qualified patent attorney (also known as a patent agent) or other professional advisor will greatly improve your chances of gaining strong protection. You can obtain a list of patent attorneys from the Chartered Institute of Patent Attorneys Find a Patent Attorney - CIPA.

4. Copyright

Copyright gives its owner the exclusive right to manage and control the use of their creative works. In the UK, copyright is an automatic right which comes into being as soon as a qualifying work is created. As a result, there is no formal registration or fee to pay.

As there is no official copyright register in the UK, it can be useful for copyright owners to take steps to prove that they are the creator of their works in case this is ever called into question. Ways to do this include retaining any rough drafts, plans or notes of works produced.

Alongside this, some people choose to mark their work with the copyright symbol © and an accompanying statement. Although this doesn’t confer any additional legal protection in the UK, it can help to draw third parties’ attention to the fact that copyright is in force and that they need to seek permission if they want to use the work.

For most types of work, copyright lasts for the life of the creator, plus 70 years from the end of the calendar year in which they died. However, this will vary depending on the type of work and when it was created.

5. Trademarks

A trade mark distinguishes the goods and services of one trader from those of others. This can be through a word, phrase, logo, shape, colour, sound, aspects of packaging, or any combination of these. Registered trade marks will allow you to take legal action against anyone who uses your brand without your permission, including counterfeiters and sell and license your brand.

 Registered trade marks can be identified by the ® symbol, to show that it’s yours and warn others against using it. If your mark is registered in the US, you can use the ® symbol prior to application for a UK trade mark. It is worth noting that it is an offence in the UK to use this symbol on a mark that is not registered anywhere in the world for the relevant goods or services.

In the UK, trade marks are registered for a fee by the Intellectual Property Office and can be registered in as little as three months from the date of filing. They can be renewed every ten years and can be renewed indefinitely.

If you plan to export your product to multiple countries, you can also protect your trade mark in the UK  by designating the UK in an international application (via the ‘Madrid System’) made at WIPO.

5.1 Unregistered trade marks

The law of ‘passing off’ prevents someone representing their products or services as being those of someone else (including unregistered marks).This does not give that person monopoly over the appearance or look and feel of a product but is instead designed to prevent misrepresentation to the public when sold.

In order to succeed in a ‘passing-off’ case, a claimant has to prove:

a) they possess goodwill in their mark.

b) misrepresentation by the defendant.

c) damage caused to their reputation or goodwill.

6. Designs

Design refers to the appearance or ‘look’ of products. There are two types of design protection in the UK:

6.1 Registered designs

Design registration protects the appearance or ‘look’ of the whole or part of a product, providing it is new and has individual character. Design registration can protect shapes, lines, contours, texture, or ornamentation.

In the UK these are registered for a fee by the Intellectual Property Office.

A registered design gives you the right to prevent others from using it for up to 25 years, but  you must renew your design registration on its fifth anniversary. You’ll then need to renew every 5 years up to a maximum of 25 years.

You can also protect your design in the UK by designating the UK in an international application (via the ‘Hague System’) for the protection of industrial designs made at WIPO.

6.2 Unregistered designs

Automatic design rights also exist in the UK via the UK Unregistered Design Right and the Supplementary Unregistered Design Right. Both give the owner the right to prevent unauthorised copying of the design in the UK. The qualification requirements for both types of unregistered design rights are quite complex, so we would strongly advise that you seek legal advice.

The UK Unregistered Design Right automatically protects your design for 10 years after it was first sold or 15 years after it was created, whichever is earliest. The right only applies to the shape and configuration of objects.

In addition, the appearance of a product is protected in the UK for 3 years from the date you make your design public. This is known as ‘Supplementary Unregistered Design Right’.

The appearance of a product can be 2-dimensional and 3-dimensional and includes its shape, colours, texture, materials and ornamentation.

7. Trade secrets

Trade secrets are protected in the UK through common law and other legislative provisions. Trade secrets cover a wide range of different types of information and may include, for example, commercial data as well as technological and product information.

The Trade Secret (Enforcement, etc) Regulations 2018 sets out standards for measures and procedures that should be available in the event of the unlawful acquisition, use or disclosure of trade secrets.

Information may be protected as a trade secret if it has the necessary quality of confidence about it. In other words, the information must not be public knowledge or public property. If the information has commercial value, for example, if it gives you a competitive advantage in the market, and you have taken reasonable steps to keep the information secret, it may be eligible for protection as a trade secret.

Where there has been a breach of confidence in relation to trade secrets, proceedings may be filed in the courts.

8. Enforcement of IP rights

The UK Intellectual Property Office provides guidance for businesses on how to protect and defend intellectual property, and how to avoid infringing someone else’s intellectual property.

9. Impact of the UK exiting the European Union (EU) on IP rights

The guide to registering your rights in the EU and EEA has now been updated following the UKs departure from the EU.

10. Further online tools

• Business Lifecycle framework – the framework has been developed to support entrepreneurs and businesses to understand and manage their IP at every stage of their business lifecycle

• IP equip – for business and advisors to learn about IP and how it can help a business. Includes four light touch modules covering the basics of copyright, designs, trade marks and patents

• IP Healthcheck – diagnostic tool for business and their advisors to identify the IP within their business, at the end of the process a report of the findings is available

• B2B toolkit - For businesses and business advisors, the toolkit provides the resources needed to successfully collaborate and ensure IP is protected, utilised, owned, managed and licensed throughout

• IP for investment - For businesses seeking equity finance to grow, the toolkit supports a business or their advisor in identifying IP assets and their relationship to growth, plus providing guidance on ‘investor readiness’

The above tools are available from Welcome to IPO’s online support tools. These have been designed to help you with your intellectual property.

11. Contact details

You can contact one of the UK IPO’s IP advisers on +44(0)300 300 2000, or email enquiries@ipo.gov.uk them. Calls to +44(0)300 numbers are charged at your network provider’s standard national rate.

The IPO’s postal address is:

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

12. You can also get in touch via:

• information@ipo.gov.uk
• Facebook
• Twitter
• LinkedIn
• UK IPO’s website