Lecture 6 - Patents, Copyright, Designs and Trademarks
What is a non-disclosure agreement?
A non-disclosure agreement lets you discuss your IP with someone and stops them from telling anyone else about it or using it for themselves. NB Non-disclosure agreements can't protect intellectual property once it's available in public.
Give the definition for a patent
A patent is the exclusive right to use and exploit an invention for 20 years. Not every invention can be patented however. There are 4 basic requirements: (1) The invention must be NEW (2) It must involve an INVENTIVE STEP going beyond the state of the art (3) It must be capable of INDUSTRIAL APPLICATION (4) It must not fall into the classes of non-patentable material, e.g. plants or animals.
What can be registed as a trademark and what cant?
A trade mark must be UNIQUE. It can include: ◦ words ◦ sounds ◦ logos ◦ colours ◦ a combination of any of these Your trade mark can't: ◦ be OFFENSIVE, eg contain swear words ◦ be MISLEADING, eg use the word 'organic' for goods that aren't organic ◦ be too common and NON-DISTINCTIVE, eg be a simple statement like 'we lead the way'.
Give examples of patentable ideas
A well-known example of patented work is the photocopier invented by Xerox. Other examples of patentable work are machines, tools or medicines.
What are the patentees options after the patent has been granted?
After the patent is granted the patentee pays an annual fee; the patent in law belongs to him, and he can sell it or licence it to anyone else. If he chooses to keep it himself he has a monopoly over its exploitation.
What is an Anton Piller order?
An Anton Piller order, which is a particular type of injunction that orders the search of premises and seizure of unlawfully obtained copies. Anton Pillers are used a lot to confiscate pirate CD's/DVD's etc.
When are Anton Pillar orders issued? What is the test used?
Anton Piller orders are only issued exceptionally and according to the THREE-STEP TEST set out by Ormrod LJ in Anton Piller: 1. There is an extremely strong PRIMA FACIE (latin meaning on its first encounter/sight) case against the respondent, 2. The DAMAGE, potential or actual, must be very SERIOUS for the applicant, and 3. There must be clear evidence that the respondents have in their POSSESION relevant documents or things and that there is a REAL POSSIBILITY that they may DESTRYO such material before an inter partes application can be made.
What are the 3 stages of applying for a patent in the UK?
Assuming a patent is being applied for in the UK, there are basically 3 stages in the procedure: (1) A PATENT AGENT DRAFTS and SUBMITS the application to the Patent Office. The applicant company then develops the technology, safe in the knowledge that from the date of filing any other attempt to obtain a patent for the same work by anyone else will be effectively blocked (2) The Patent Office then EXAMINES THE SPECIFICATION, and searches other existing patents to ensure NOVELTY. Once this search is completed the specification is published. (3) Thirdly, a FULL EXAMINATION will take place to ensure that the requirements of the patent legislation have been complied with after this the patent is granted, and lasts for 20 years.
What are the 3 broad geographic choices a business must choose between? What must it consider in these decision?
Before application is made it is necessary to decide which geographical market is to be targeted. A business can choose between a UK, European or international patent. The procedure is similar - the difference lies in where the application is made, and the wider the market, the longer it takes for the patent to be granted, and the more it costs.
Give the relevant case law for passing of and infringment on trademarks
Bollinger v Costa Brava Wine Company 1960 RULING: It was held that wine sold as 'champagne' broke the law, as the name 'champagne' denoted the sparkling wine produced in the Champagne region of France and not just any sparkling wine.
Who holds the copyright? Can it be transfered?
Copyright can be held by the author or creator of the work, but if the author is EMPLOYED by another person or company that person or company will own the copyright. If the work is COMMISIONED the presumption will be that the author owns it, unless otherwise specified in the contract. As with patents, this is PROPERTY IN LAW, and as such may LICENCED to another. >>> For example, if I wanted to copy a substantial part of a book to distribute to my students I would have to apply for, and pay for, a written license to do so, which would then enable me to make copies. (The price varies from publisher to publisher - no rule of thumb.)
Define copyright What is the relevant legislation?
Copyright is the right to PREVENT COPYING (patent is the right to prevent exploitation) for life of the creator, plus 70 years, of the authors concrete expression of: (1) Original literary, artistic, dramatic or musical works. Under the CDPA 1988, literary works includes computer programmes, and (2) Non-original publications such as films, sound recordings, technical drawings, broadcasts and typeset.
Where are copyrights most often used? Give commercial examples of copyright
Copyright is very important to the arts, but also has important industrial and commercial application. For instance, literary works include mundane but commercially valuable works such as product instructions, training manuals and written databases.
What are designs?
Designs are concerned with the OUTWARD APPEARANCE OR SHAPE OF PRODUCTS , e.g. the design of a car like the Mini or the Beetle. A business can choose to protect its design by either a registered or unregistered design.
What is the diference between a design and a copyright?
Designs are not to be confused with design drawings or plans, which will be on paper, and protected by copyright. Design is the physical appearance of a product.
What is to infringement on copyright?
Fair dealing
What is fair dealing?
Fair dealing is a limitation and exception to the exclusive right granted by copyright law to the author of a creative work. Fair dealing does not constitutive infringement: the main example of fair dealing is copying for private study or research.
What is the protection for unregistered trademarks?
For business who have had their name or symbol copied, but who have not registered it as a trademark, there is protection in the tort of 'passing off'. Remember a tort is a group of civil wrongs such as negligence, nuisance or defamation. 'Passing off' means the act of passing goods off as being those of the plaintiff - or being connected with those of the plaintiff.
How can companies protect themselves from employees leaving with valuable information? What is the technical term for this?
However, when an employee leaves, with this type of knowledge, it could cause a great deal of damage to the business if he set up in competition or went to work for a competitor, and used this information. So there is a clause which companies can put into their contracts of employment called a RESTRICTIVE COVENANT. >> This prevents an employee from working in competition with the company for a specified time, within a specified geographical area.
Where are tradmarks registered, and what are the effects of registered tradmarks?
If a Trademark is REGISTERED with the Trade Marks registry of the Patent Office. Its effect is to grant a monopoly over the use of the mark indefinitely, subject to regular renewal.
What are the ways a patent can be infringed? What is the reqreuiment?
Infringement can be by 1. DIRECT COPYING, 2. ADAPTATION >> Adaptation includes translating a literary or dramatic work, transcribing a musical work and converting a computer program into a different computer language or code 3. BROADCASTING, or 4. PERFORMING. It must also involve use of a 'SUBSTANTIAL' part of the work (no statutory guidance as to what substantial means, it depends very much on the originality of the work - it is a QUALITATIVE not a quantitative JUDGMENT)).
Is an idea intellectual property?
Intellectual property is something unique that you physically create - an idea alone is not intellectual property. For example, an idea for a book is not intellectual property, but the words you've written are
What is intellectual property?
It is the term given to the area of law that protects original works, such as inventions, designs, books etc.
Why is intellectual property neccesary?
It prevents work from being copied or imitated and thereby prevents competitive advantage being gained by anyone but the originator of the work, or the owner of the copyright. By knowing your rights and having the right type of protection you can stop people stealing or copying: ◦ your inventions ◦ things you write, make or produce ◦ the design or look of your products ◦ the names of your products or brands
Give the relevant case law for enforcement of Restrictive Covenants
Lansing Linde v Kerr 1991 FACTS: The employee was a senior executive for a forklift truck company. A clause in his contract said that after employment he would not work in competition with the company for 12 months, anywhere in the world. He left and became Managing Director of a competing company. RULING: Held, the clause was not enforceable, as the geographical area was too wide. If it had been limited to the UK, it would probably have been enforceable.
Outline the 4 types of protection a product can have
Multiple protection - for a single product you could;- 1. register the name and logo as a trade mark 2. protect a product's unique shape as a registered design 3. patent a completely new working part 4. use copyright to protect drawings of the product
How many legal protections can one product have?
One product may be protected by several legal protections. It is possible for an artifact, an artifact's physical design and the written plan for the artifact all to be protected under different headings.
What is the difference between registered and unregistered trademarks? What are the implications in terms of infringeents?
Only registered trade or service marks have STATUTORY PROTECTION : For protection for UNREGISTERED trademarks you need to look at the COMMON LAW.
What do patents incentivize? What is the trade-off with a patent?
Patents are seen as very important as they encourage research and development. The protection enables a business to have a monopoly over the exploitation of the invention. HOWEVER, in return for the protection the business must DISCLOSE the processes behind the invention. So in other words the patent does not protect the discovery by keeping it a secret - it prevents anyone else from EXPLOITING THE INVENTION (it is a negative right)
What is the court procedure for passing off claims on unregistered trademarks?
Procedure - there is no procedure as the protection arises automatically (e.g. no procedure for the applicant to get protection) The plaintiff has to prove 3 things for a successful passing off action:- 1. There is 'goodwill' attached to his trademark, ie it is well known, 2. The defendant misrepresented goods as being or connected with, the goods of the plaintiff, and that 3. Damage to his business will or has occurred.
Give an example of a case where intellectual property was infringed
Procter and Gamble & United Biscuits 1983 Procter & Gamble had patented " crisps 'n' chewy cookies" in the US and United Biscuits produced similar products. United biscuits had to pay out $125 million.
Outline Counterfeiting
Relates to trademarks, eg dealing in fake branded goods. Counterfeiting can be defined as the manufacture, importation, distribution and sale of products which FALSELY CARRY THE TRADEMARK of a genuine brand WITHOUT PERMISSION AND FOR GAIN
What are the rememdies for passing off?
Remedies : damages and/or injunction.
What are the rememdies for breach of restrictive covenant?
Remedies for breach of restrictive covenant are 1. damages, 2. and/or more usually, injunction.
What are the remedies for infringment on trademarks?
Remedies for infringement are 1.) damages, 2.) injunctions and/or destruction of goods that have the copied trademark on them.
Will the courts enforce Restrcitive Covenants? What factors are considered?
The Courts will only enforce these covenants if they are REASONABLE. If they are TOO RESTRICTIVE, they will be seen as anti-competitive and not enforced. Factors relevant to whether the clause is reasonable include 1. duration, 2. area, 3. nature of information, 4. prejudicial affect an ex-employee and 5. risk of harm to the ex-employer
What is the purpose of copyright? How does it differ to a patent?
The essential purpose of copyright is to PROTECT EXPRESSION OF IDEAS, NOT THE IDEAS THEMSELVES. It prevents others from taking the benefit of intellectual effort. It differs from patent in that the protection does not operate as a MONOPOLY - it is open to others to create and use the same work independently. >> The protection merely prevents others from copying the work.
What is the law governing intellectual property?
The law governing this area is The Copyright Designs and Patents Act 1988, and The Trademarks Act 1994. This is a complex area of law, which we examine in outline only.
What is the law of passing off?
The law of passing off prevents one trader from misrepresenting goods or services as being the goods and services of another, and also prevents a trader from holding out his or her goods or services as having some association or connection with another when this is not true.
What is the relevant case for an Anton Piller order?
The order is named after the 1975 English case of Anton Piller KG v Manufacturing Processes Limited, dealing with the theft of trade secrets. They are now formally known as search orders The applicant, Anton Piller, was a German manufacturer of MOTORS and eELECTRIC GENERATORS used in the COMPUTING INDUSTRY. The respondent was the appellant's AGENT in the United Kingdom. As agents the respondents had received CONFIDENTAL INFORAMTION surrounding the appellant's business. The appellants found out that the respondents had been in secret communication with other German companies with a view to giving those companies detailed plans and drawings of the appellant's products so that they could be copied. Anton Piller commenced ex parte proceedings seeking an INJUNCTION to restrain copyright infringement as well as a court order to permit entry to the respondent's premises to SEARCH AND REMOVE CONFIDENTIAL INFORMATION OWNED BY THE APPLICANT . The injunction was granted but the order for inspection and removal was refused. The appellants appealed the denial of the latter order. In the COURT OF APPEAL the order was granted. From this initial order has grown the jurisprudence on Anton Piller orders, commonly known as civil search warrants.
What considerations should a business make before applying for a patent?
The procedure for obtaining a patent is COSTLY and LENGTHY. Because of this a business should ask itself whether a patent is really necessary, bearing in mind alternative methods of protection, size of the prospective market, likelihood of competition, cost and time involved and the expected commercial life of the invention.
What are the remedies to infringement on copyrights?
The remedies available are: 1.) Damages and/or 2.) An injunction. A business can either obtain an ordinary injunction preventing further breaches of copyright, or an Anton Piller order, which is a particular type of injunction that orders the search of premises and seizure of unlawfully obtained copies. Anton Pillers are used a lot to confiscate pirate CD's/DVD's etc.
What are the remedies avaialble to the patentee?
The remedies available to the patentee include: 1.) damages, damages are compensatory . The measure of damages is, as far as possible, a sum that will put the claimant in the same position as he would have been in if he had not sustained the wrong. 2.) INJUNCTION and English law permits a patent holder or an exclusive licensee to apply for an interim injunction to restrain the defendant from carrying out the allegedly infringing act for the period until trial. 3.) DESTRUCTION of infringing articles. (actually destroying the machine, drug etc that has been copied by the defendant)
How long does the whole patent process usually take?
The whole process usually takes several years, often around the 4 year mark (depending on complexity) to be granted.
What are the 2 criminal offenses in intellectual property? List them.
There are 2 offences which as well as being actionable in CIVIL LAW, can also be CRIMINAL OFFENSES 1. Counterfeiting --> trademarks 2. Piracy --> copyright
What are the 2 possible types of infringements on a patent?
There are 2 types of infringement of a patent 1.) "Actual infringement" is the reproduction of a machine or process as defined in the patent. 2.) "Contributory infringement" is ASSISTANCE in actual infringement, e.g. sale or importation.
What is the process of applying for copyright? What is recomended to avoid disputes?
There is no procedure for application for copyright. It arises AUTOMATICALLY with the expression of the idea. Sometimes it is useful to maintain proof of the date of production of the copyright material where there is a possibility of dispute as to originality. This explains the copyright stamp you see on all books, ie the c with the circle around it.
What are the 2 criminal offenses in intellectual property goverened by? Who are they enforced by? What do penalties include?
These offences are governed by the CDP Act and the Trademarks Act. They are enforced by the Trading Standards Office. Penalties include fines up to £50,000 and even up to 10 year's imprisonment.
What is a RESTRICTIVE COVENANT?
This prevents an employee from working in competition with the company for a specified time, within a specified geographical area. Put into their contracts of employment
Define trademarks Under what legislation are they protected? Give an example
Under the Trademarks Act 1994 a trademark is a WORD or SYMBOL, or COMBINATION of both, which is distinctive enough to distinguish one company's goods from those of any other. Also includes jingles. Examples include Coca Cola, or the stork on Stork margarine. Both goods and services can be trademarked.
What are the 4 types of intellectual property we have discussed.
We have so far discussed four types of intellectual property : (i) Patents (ii) Copyright (iii) Designs (iv) Trademarks
If you are employed by someone and you created intellectual property there under who owns it? What is the exception?
You usually won't own the intellectual property for something if you were employed and created it as part of your work. The exception to this is with patents, where under the CPD (The Copyright Design and Patents Act 1988) Act, if an employee creates something that is 'OF OUTSTANDING BENEFIT', they are entitled to a 'fair share' of the profits. >> Incentivizes employees?
Outline Piracy
´piracy', which relates to COPYRIGHT, eg fake DVD's. Piracy includes COPYING, DISTRIBUTION and IMPORTANTION of infringing works.
