Intellectual property

Sharpe Pritchard recognises the importance of intellectual property (IP) as a key asset to our clients in both the public and private sectors. We have helped our public-sector clients identify and commercialise their IP rights as means of generating steady streams of revenue in a challenging climate of budget cuts. For our clients in the private sector, their respective brands are valuable assets that we work hard to protect.

Our specialist IP team’s wide-ranging expertise in this area means that we are able to assist you throughout the lifecycle of your IP, from advising on the suitability of proposed trademarks and checking their availability to providing transactional advice on the disposal of IP rights. All members of our team are commercial lawyers in their own right with expertise in related fields such as outsourcingdata protection, and IT, so that we can provide a seamless commercial service.

Our cost-effective and commercially focused advice covers issues relating to copyright, passing off, moral rights, design rights, database rights, trade marks, domain names, licensing, publishing, software development, and confidential information. Our services include brand clearance and searching, intellectual property audits, trade mark and domain name registrations and monitoring, commercialisation strategies, royalty arrangements, assignment of rights, and dealing with infringements of IP rights.

Recent work

  • Successfully registering a series of related trade marks in respect of new information sharing system for use by various police forces designed to speed up crime detection and the identification of suspects;
  • Determining the ownership of the copyright subsisting in a software solution designed for a new transport delivery model on behalf of a new technology company;
  • Advising numerous technology start-ups on the trade mark registration process and on their respective strategies for the protection of their IP, including copyrighted works, confidential information and trade marks, all of which are being used in collaborative multi-party projects;
  • Successfully acting on behalf of a public body accused of having infringed third-party copyright in a widely read blog;
  • Acting for a central government department on complex software licensing and IP rights relating to a major IT outsourcing programme, including assisting with the continued use of IP upon the expiry of various contractual arrangements and the transition to replacement contracts to ensure service continuity and value for money;
  • Advising on the IP issues arising out of a publishing arrangement in respect of a commemorative book and drafting a bespoke publishing contract;
  • Developing an enforcement and brand management strategy for a central London authority’s recently acquired copyright in its street name plates and drafting the contractual documentation for the licensing of these rights to third parties;
  • As part of a substantial intellectual property right dispute, advising on the use of ‘clean room design’ procedures as a method of avoiding infringing third-party IP rights;
  • Providing advice on complex copyright and moral rights issues in multiple jurisdictions arising out of the international tour of a theatre production and working on related agreements with the production’s musicians, producers, composer, author and leading actor;
  • Advising a central government department on a passing off claim and potential domain name dispute;
  • Securing a local authority’s ownership of the IP rights subsisting in a bespoke animation to be rolled out for the promotion of oral health amongst children; and
  • Assisting a public body in protecting its copyright in a suite of educational documents prepared for schools and academies and drafting related licence agreements.

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