INTRODUCTION TO IPFrancis Davey

Overview• Part I: overview of IP

• health warning: very brief and superficial• at best a road map

• Part IA: confidential information• only a brief mention

• Part II: some practical aspects• ownership of IP• employment and IP• dealing in IP

• Avoided completely• international questions (assume everything happens in the UK)• administrative details (drafting patents etc)

What is intellectual property?• A kind of property

• created by statute• devolve like property by will or intestacy• attract proprietary rights (protection via injunction, account of profits etc)• assignable etc• mystery: patents are not choses in action

• Each carries a bundle of “rights”• may only be done with the owner’s permission• exercising right without permission is normally an infringement• many and complex exceptions

UK intellectual property• Patents • Copyright

• Performer's property rights• Database right

• Designs• Registered designs• Design right• (semiconductor topography)• Community designs (registered and unregistered)

• Plant breeders' rights• Trade Marks

Is registration a requirement?Unregistered Registered

CopyrightPerformer's property rightsDatabase rightDesign right(semiconductor topography designs)Community (unregistered) design right

Community registered design rightRegistered designPatentPlant breeders' rightTrade Mark

Common Features• National (=UK), except:

• Community Trade Marks• Community designs• European Patents

• Special rules on enforcement• additional damages

• Remedies• civil• criminal (usually only business use, but copyright ...)• in rem (destruction or delivery up of articles)

DurationCopyright, except: 70 years

broadcasts, sound recordings and rights in performance

50 years

typographical editions of published works 25 years

Database right 15 years

Design right 15 years

(semiconductor topography) 10 or 15 years

Community unregistered design 3 years

Registered designs (UK + Community) 25 years

Patent 20 years

Plant breeder’s rights 30 years (potatoes, trees and vines)25 years otherwise

Trade Mark Until revoked

Registered IP: common features• Registration procedure

• Fees• Renewal fees

• Revocation or opposition• Registration of transactions• Publication• Right to apply may also be a property right

• eg patents, plant varieties

Patents

Patents: health warning• Almost never litigate

• very expensive

• In practice:• Mark out rights to an idea that may be valuable to investors• Patent portfolios useful as a defence

European Patent Organisation

Patentability• Inventions

• new• inventive• capable of industrial application• not excluded

• Priority• “new” and “inventive” v state of the art• first to file (the universe) vs first to invent (the US)

• Exclusions• “as such” – eg computer programs• general exclusions (immoral, plants, medical procedures)

Patents: infringement• Products

• using the product in almost any way

• Processes• using (or offering for use) the process• using products of the process

• Supplying an essential element of the invention• but not if it is a “staple commercial product”

Copyright

Copyright: LDM works• Literary

• anything written, spoken or sung• includes computer programs and preparatory work• excludes databases

• Dramatic• includes dance or mime

• Musical• .. but none of the above

Artistic works• Artistic works

• graphical work• painting, drawing, diagram, map, chart or plan, and any engraving, etching,

lithograph, woodcut or similar work

• photograph, sculpture or collage• ... artistic quality irrelevant• work of architecture

• building• model for a building

• work of artistic craftsmanship

• Photographs• any record of light or other radiation• not part of a film

Copyright: other works• Films• Sound recordings• Broadcasts (and cable programmes)• Typographical editions of published works

Copyright: rights• Copying (all or a substantial part)• Issuing copies to the public• Renting or lending to the public• Performing, showing or playing the work in public• Communicate the work to the public• Making an adaptation of the work

• or doing any of the above in relation to an adaptation

Rights in performance• Live performances

• performers• person having recording rights

• Some property rights• copying• issuing copies to the public• rental or lending• making available to the public

• Rights against illicit recordings

Copyright exceptions• Temporary copies• Fair dealing

• non-commercial research and private study• criticism or review (of a work)• news reporting (but not for photographs)

• Computer programs• backup copies• various reverse engineering exceptions

• Public interest

More exceptions....

Visually impaired 3

Education 6

Libraries 11

Public administration 6

Other 28

Total 54

Databases• Database

• collection of independent works, data or other materials• arranged in a systematic or methodical way• individually accessible by electronic or other means.

• Database directive• copyright – “own intellectual creation”• database right

Database right• Substantial investment

• obtaining• verifying• presenting

• Infringed by• extraction• re-utilisation

• Substantial part• repeated insubstantial acts may become substantial

Fixtures Marketing etc• Lists of football fixtures highly valuable• First case, ECJ:

• you didn’t collect the information• no rights for own data?

• Second case:• its really creative so subject to database copyright• anyway, UK database copyright survived• referral to the ECJ

Designs

Designs: varieties

Registered Unregistered

Europe community registered design25 years

community design3 years

United Kingdom registered design25 years

design right15 years

Designs: nature of a design

Registered Unregistered

EuropeNovel

AppearanceNovel

Appearance

United Kingdom

NovelAppearance

Original Shape

Design: rights• Rights

• making an article• making a design document

• Infringement • for unregistered designs – requires copying• for registered designs – absolute

Trade Marks

Trade Marks• No common law of trade marks as property

• action of passing off tort to protect goodwill

• Infringement requires• trade mark use• in the course of business

• Exceptions• may be used for the purposes of identification of goods or services as

those of the proprietor

Trade Mark: infringing useMark Goods or

Services markedAdditional requirement

identical identical

similar identical likelihood of confusion

identical similar

identical or similar different unfair advantage or detrimental to mark

Confidential Information• Breach of confidence

• not a form of property• confidence protected by equity

• Elements• has the necessary quality of confidence• imparted with an obligation of confidence• unauthorised use

• NDA’s have two uses• contractually requiring confidence• creating conditions for breach of confidence claim

Employment• During employment

• implied term of trust and confidence• breach of confidence strictly irrelevant

• Post employment, 3 kinds of information• not really confidential• confidential• equivalent to a trade secret

• Restrictive covenants• may be imposed to restrict information further• usual rules apply

IP and employment

IP and Employment• Work belongs to employer, if:

• created in course of employment• copyright, rights in performance, database right, design rights• subject to agreement to the contrary

• Patents – more complicated• Trade Marks

• not relevant

Patents and employment IInvention made in the course of ... and

normal duties

invention might reasonably be expected to result

specifically assigned duties

duties of the employee special obligation to further employer’s interest

Patents and employment II• Compensation for employer owned inventions

• employee invention• owner by employer• patent grant• outstanding benefit to the employer• just that the employee be compensated

• Compensation for employee owned inventions• patent grant• rights have been assigned or exclusively licensed to the employer• benefit derived by employee inadequate• just that the employee should be compensated

• “Fair” compensation

Patents and Employment III• Employee inventions

• employer may still own copyright or design right in models or documents relating to the invention

• could be used to prevent employee from exploiting invention

• Section 39(3)• excludes copyright and design right from:

• applying for a patent for the invention• performing or working the invention

• applies to those claiming under the employee

Dealing in IP

Ownership• Copyright – author

• LDMA – creator• sound recording: the producer• films: producer and principal director• typographical edition of a published work – the publisher• computer generated works – person making the arrangements

• Designs• commissioner (if made for a commission)• employer (if made in course of employment)• first marketer (if made outside the EU)

• Patents• inventor or employer

Co-ownershipPermission required by all owners to exercise rights

Each owner may exercise rights by themselves

CopyrightRights in performanceprobably: database right

Trade MarkPatent

Assignment• Formalities

• in writing• signed by grantor

• Assignments may be “carved up”• Future assignments

• properly drafted assigns IP in future work• must usually be specifically enforceable

Licences• Licence v Assignment

• depends on construction

• Licences will usually bind successors in title• sometimes except for purchaser in good faith for valuable consideration

and without notice• exclusive licencees may be in a better position

• Rights to sue• exclusive licencees usually have a right to sue• but must usually join owner for anything other than interim relief• properly drafted (non-exclusive) copyright licencees may also have the

right