Legal Practice Notes

This Practice Note sets out how intellectual property and related rights, together with data protection duties, operate in the setting of web crawling, indexing, caching and scraping, viewed from a website operator’s standpoint. An explanation of the terminology The principal concepts of crawling, indexing, caching and scraping are outlined below. Crawling Web crawling is the activity whereby automated programmes (often called ‘bots’, ‘spiders’ or simply ‘web crawlers’) are deployed to traverse and read information across the web. One well-known crawler is Googlebot, which Google uses to copy web pages onto its servers; Google then indexes them (see the section on Indexing) to support searching of the internet. Website operators often provide ‘sitemaps’ (an XML file listing all pages on a site) to assist and enhance search engines’ crawling. Crawlers can also be put to other uses such as ‘scraping’ (see the section on ‘ Scraping’) or...

Opposition proceedings After the Registrar at the UK Intellectual Property Office ( IPO) accepts a trade mark, it appears in the online Trade Marks Journal and becomes available for public scrutiny. There is then a two-month window—extendable to three months on notice to the IPO—during which any interested party can challenge the application. The individual or entity initiating the opposition is termed the opponent. Objections may alternatively be lodged via a third-party observation, and in some cases third parties may receive permission to intervene. The legal framework and process are set out in section 38 of the Trade Marks Act 1994 ( TMA 1994) and in rr 17–21 of the Trade Marks Rules 2008 ( TMR 2008), SI 2008/1797, as amended by the Trade Marks ( Fast Track Opposition) ( Amendment) Rules 2013, SI 2013/2235. The burden of proof rests with the...

This Practice Note This Practice Note sets out who holds ownership of IP generated in the course of employment. It then outlines the legal position and prevailing practice for businesses when securing IP rights from employees and contractors, highlighting key considerations. It further offers practical guidance on the principal IP clauses and related provisions commonly found in employment contracts and contractor agreements, as well as practical steps. On a day-to-day basis, employees, consultants and contractors create valuable IP for organisations as part of their assigned duties and responsibilities within their roles. For example: R& D personnel may devise inventions that are capable of being protected by patent. They may also develop new formulae, recipes or algorithms, or design novel methods or processes to make operations more efficient. If these are kept confidential, significant rights can exist as know-how or trade...

The Copyright and Rights in Databases Regulations 1997 ( CRD 1997) The Copyright and Rights in Databases Regulations 1997 ( CRD 1997), SI 1997/3032, gave effect to the EU Database Directive by revising UK copyright law as it relates to databases. The CRD 1997 also established a distinct, sui generis protection: the database right. Unlike copyright, this right applies whether or not the database is an intellectual creation, provided there has been sufficient 'investment'. Copyright in a database and the database right are separate and independent. For deeper guidance on copyright in databases and the database right, see Practice Note: Copyright in databases and database right. Being EU-derived legislation, the CRD 1997 continues to have effect in the UK as assimilated law. Assimilated law is the term for retained EU law ( REUL) that remains in force after the end of 2023. The shift from REUL to...

Scope of this Practice Note A company may use its intellectual property to secure a loan. In commercial finance, IP is frequently taken as collateral: as one element of an all‑assets security package (see Practice Note: Key features of debentures) in financings to borrowers in sectors where IP carries particular value, for example: biotechnology, pharmaceutical, electronics and telecommunications industries (where patents are especially significant) global retail industries (where trade marks are especially important) film production and software manufacturing industries (where copyright is especially central) This Practice Note does not deal with taking security over IP in the EU or other overseas jurisdictions. Lenders should obtain appropriate local law advice when taking security over a...

Types of patent claims Patent claims fall into two principal classes: product claims and process claims. Section 60(1) of the Patents Act 1977 recognises that these two claim types attract distinct scopes of protection. Beyond this basic division, claims can also be grouped according to their specific configuration or characteristics. These configurations and characteristics have developed through case law, patent office practice and legislative developments. This Practice Note outlines several of the key claim forms practitioners most frequently meet. Claims to products A product claim targets a thing per se, such as an article, machine, substance or composition. These claims require the item to include specified technical features, whether structural or functional, to set it apart from what is known. Structural features concern the product’s physical attributes, while functional features relate to what the product can achieve. Any structure capable of performing the stated function may fall...

The legal framework This Practice Note outlines the rules of trade mark law governing parallel trade. Parallel imports—often called ‘grey market’ products—are authentic items put on sale by, or with the approval of, the rights holder, but later brought into a specific market for resale without that holder’s permission. They are distinct from counterfeits or ‘black market’ items. For guidance on counterfeit goods, see: Anti-counterfeiting—overview. Key rules derive from the Treaty on the Functioning of the European Union ( TFEU) and Directive ( EU) 2015/2436, which regulates national trade mark registrations across Member States and is given effect in the UK through the Trade Marks Act 1994 ( TMA 1994). This Practice Note details how UK trade mark law addresses parallel imports. It examines the circumstances in which a trade mark proprietor’s rights are exhausted and when the rights holder can block grey market goods from...

Using metatags and keyword advertising is lawful, yet it has prompted disputes where site operators select competitors’ trade marks as keywords to channel traffic to their own pages. The competitor’s trade mark is usually not visible in the advert or on the advertiser’s site, but the advert or the web link appears when an internet user enters the competitor’s mark as a search term. The central issue is whether employing third-party trade marks in metatags or keyword advertising amounts to infringement. Terminology ‘ Metatags’ are keywords and descriptions inserted in the invisible hypertext mark-up language (html) of websites. They indicate a site’s content. When an internet user types a keyword or description into a search engine, it searches the metatags as well as the visible text on websites to present a list of the most relevant sites (the ‘natural’ results). Website owners use metatags to...

This Practice Note delivers practical guidance on the valid execution of simple contracts and deeds by liquidators. A liquidation may be: insolvent (where a company cannot meet its debts or its liabilities exceed its assets), or solvent It may be initiated by court order (compulsory liquidation) or out of court (voluntary liquidation). For information on each type, see: Compulsory liquidation—overview Creditors' voluntary liquidation ( CVL)—overview Members' voluntary liquidation ( MVL)—overview Quick view The outline below summarises execution formalities relevant to liquidators and indicates where corresponding precedent execution clauses are located. For fuller detail, navigate to the document type via the links in the first column. Simple contracts: May be made by the company (see section 43(1)(a) of the Companies Act 2006 ( CA 2006)). Under the...

This Practice Note explores applicable law clauses—also called governing law clauses, proper law clauses or choice of law clauses. It explains why parties agree an applicable law clause and the key matters to weigh up. It also provides insight into circumstances in which parties may alter the applicable law clause in their contract, and considers whether floating applicable law clauses and stabilisation clauses are effective. For an introduction to applicable law, see Practice Note: Applicable law—a guide for dispute resolution practitioners. Contracts may include a single provision combining jurisdiction and applicable law. For guidance on jurisdiction clauses, see Practice Note: Jurisdiction agreements—introduction. What is an applicable law clause? An applicable law clause records the parties’ agreement, reached during contract negotiations, specifying which country’s laws the courts are to apply if a dispute arises between the contracting parties and proceedings are commenced that require a...

Future copyright Subject to certain caveats (set out in more depth in Practice Note: Copyright—subsistence and qualification), copyright comes into being automatically once a protected work is captured, or 'fixed', in a lasting medium, for instance in writing, on film, or as a sound recording. Before that moment, the work is a 'future work' and falls outside the protection of the Copyright, Designs and Patents Act 1988 ( CDPA 1988). Where a work has not yet been fixed but is expected or foreseen, a prospective owner can treat it as if already created. By way of illustration, they may assign or licence the future copyright in that future work, even though, at the time of making the arrangement, the work in question does not yet exist physically......

Guide to executing simple contracts across jurisdictions This guide explains the requirements for signing simple contracts in a range of international jurisdictions. A table gives a quick-reference snapshot of the execution formalities for companies, individuals and partnerships in different countries. Fuller commentary for each overseas jurisdiction listed in the table appears in the sections below. For guidance on the execution of deeds in various jurisdictions, see Practice Note: Execution of deeds—jurisdictional guide. For electronic signatures, see Practice Note: E-signatures—jurisdictional guide. For the formation of contracts, see Practice Note: Contract formation—jurisdictional guide. For executing documents under Scots law, see: Execution— Scotland—overview. Please note: this is an introductory resource only, and local advice from suitably qualified legal professionals in the relevant country should be obtained where appropriate. Summary table What are the requirements for companies when executing contracts? What are the requirements for...

This Practice Note provides practical guidance on the proper execution of documents by non- Companies Act corporations This Practice Note offers practical direction on executing documents correctly for corporations outside the Companies Act. Such corporations arise under statute, like local authorities and building societies. A corporation has a legal identity distinct from its members, enabling it to enter contracts, own property, and bring or face proceedings in its own name. Here, the focus is on corporations aggregate (groups of persons) rather than corporations sole (a single office-holder). The expressions ‘body corporate’ and ‘corporation’ are broad and include entities constituted by: Statute: including building societies, co-operative or community benefit societies (formerly industrial and provident societies), and friendly societies A general Act of Parliament: such as local government authorities, corporations overseeing public services and industries, bodies with general administrative and advisory roles, and certain entities carrying out special...

Witness statements of fact under CPR 32 This Practice Note sets out broad guidance on preparing factual witness statements in civil proceedings under CPR 32. It explains what the statement should contain, how the courts approach such evidence, the importance of using the witness’s own words, keeping accounts consistent across different witnesses, and the method for referencing documents exhibited to statements. It also considers the presence of expert opinion within factual statements and whether such material is admissible. The Note assists with interpreting and applying the relevant CPR provisions. For information tailored to a particular court, see Court specific guidance below. It should be read alongside the following Practice Notes: Planning, interviewing and assisting witnesses Drafting witness statements—formalities and dealing with problematic witnesses—which covers formatting, prescribed wording, and the statement of truth Exhibits to witness statements and...

This Practice Note explores the definition, interpretation and practical use of conditions precedent in commercial arrangements. It also reviews common conditions precedent and key drafting considerations... What are conditions precedent? In a commercial contract, a condition precedent identifies an event that must occur before either: the contract itself, or a party’s obligations under the contract, take effect Until that event is fulfilled, neither the agreement nor the relevant duty is binding. The leading authority on construing a condition precedent is Bremer Handelsgesellscheft Schaft mb H v Vanden Avenne Izegem PVBA [1978] 2 Lloyd’s Rep 109 (not reported by Lexis Nexis®). There, Lord Wilberforce explained that whether a clause amounts to a condition precedent, or is some other form of contractual term, turns on: (i) the wording of the clause, (ii) its place within the agreement as a whole, and (iii) broader legal...

This Practice Note offers hands-on guidance on what is required for a company seal. If a company keeps a seal and chooses to use it, practitioners must check it meets the applicable provisions of the Companies Act 2006 ( CA 2006). Do note, not every company holds a seal, and those that do are not required to execute simple documents under seal, where appropriate and necessary. For more detail, see Practice Note: Execution formalities—companies. We have developed a comprehensive, interactive collection to help users pinpoint and navigate key concepts and frequent issues when executing documents, including guidance on using a company seal. It brings together practical guidance, relevant precedent clauses and Q& As for each section or phase, enabling users to work methodically through that stage. For further information, see: Execution collection for...

Legislative framework This Practice Note explores the transfer of IP rights. It sets out the statutory rules on the formal requirements for effecting legal assignments of patents, trade marks, copyright and designs, as contained in the Patents Act 1977 ( PA 1977), the Trade Marks Act 1994 ( TMA 1994), the Copyright, Designs and Patents Act 1988 ( CDPA 1988), the Registered Designs Act 1949 ( RDA 1949) and Assimilated Regulation ( EU) 6/2002, and addresses the possibility of partial assignments. It also addresses equitable assignments of IP rights. Alongside the shared principles applicable to patents, trade marks, copyright and designs, it identifies the specific issues to be considered when transferring each distinct right. The Note additionally deals with the assignment of rights that may arise in future, and with assignments of comparable trade marks and re-registered designs. It explains how to...

This guide outlines the rules and requirements for the execution of deeds across multiple international jurisdictions. A table offers a quick-reference overview and summary of the execution formalities for companies, individuals and partnerships in a range of countries. Further detail on each overseas jurisdiction listed in the table appears in the sections that follow, including any variations in limitation periods for claims under contracts made as a deed. Each section corresponds to the overseas jurisdictions shown in the table for reference. For the execution of contracts across jurisdictions, see Practice Note: Execution of contracts—jurisdictional guide. For electronic signatures in different jurisdictions, consult Practice Note: E-signatures—jurisdictional guide. For the formation of contracts across jurisdictions, refer to Practice Note: Contract formation—jurisdictional guide. For the execution of documents under Scots law, see Execution— Scotland—overview. Note that this is an introductory resource only; seek local advice from...

Electronic signatures This Practice Note sets out the legal position on electronic signatures—also called digital signatures, e‑signatures, E‑ Signatures, e Signatures, paperless signing or electronic document signing. It explains the categories of electronic signature and the technology used to generate digital signatures, including public key infrastructure ( PKI). It reviews key UK legislation such as the Electronic Communications Act 2000 ( ECA 2000) and the UK e IDAS Regulation, and outlines best practice for executing documents by electronic means. An electronic signature functions as the digital counterpart to a handwritten signature, connecting an individual with the contents of an electronic document. The Note focuses on the general law in England and Wales for commercial contracts in a business‑to‑business context. Readers should be aware that particular transactions may present distinct issues, for example due to laws applicable to consumers. For practical guidance on signing when one or more...

Databases For many years, databases—particularly electronic ones—have been a significant component of digital economies across the globe. Numerous jurisdictions view investing in and leveraging databases as essential to fostering an information market. In the UK, the principal legislation concerning IP protection for databases comprises: the Copyright, Designs and Patents Act 1988 ( CDPA 1988) the Copyright and Rights in Databases Regulations 1997 ( CRD 1997), SI 1997/3032, which gave effect to Directive 96/9/ EC on the legal protection of databases ( EU Database Directive) in the UK (now assimilated law, see: Databases and assimilated EU law, below) A database can receive protection in a range of ways: copyright can shield literary and artistic works, including tables and compilations forming part of a database, provided they are original works......