#19690 - 1. Intellectual Property Introduction Lecture And Table Of Contents - Intellectual Property Law

TABLE OF CONTENTS

Some Key Questions

1. What is intellectual property?

2. What is its function?

3. What are its justifications?

4. How to balance moral/ethical and commercial aspects?

   1. Rights of user / rights of holder

   2. What rights do you get as a beholder?

5. A positive or negative right?

Some characteristics of intellectual property rights

Cornish, Chapter 1: ‘Starting points’ pp.35–41.

1. Property right

2. Monopolistic nature

3. Temporal nature

4. Territorial nature

Property rights

There are many similarities between tangible property rights, such as land, and intangible intellectual property rights (when embodied in a tangible form), such as a trademark. Both have value and can be bought, sold, mortgaged and licensed. However, there are some fundamental differences. If A owns a CD and I steal it, A no longer has a CD. However, if A owns a CD and I copy it, A still has the CD but I have infringed his intellectual property (copyright) in the CD. Intangible right (which is embedded) of the CD cannot be infringed upon. Furthermore, if A writes a letter on a piece of paper and gives it to B, B owns the paper and can use the letter almost as they please. However, A’s copyright in the letter stops B from publishing it in, say a newspaper, without infringing A’s rights. You may have bought your mobile phone and can use it without (virtually) any restrictions. You probably don’t even realise that the phone will have patents, copyright, design rights and trade marks protecting it. The phone is your property and its normal use unrestricted.

Trademark is a negative right to stop others from using one’s invention. A patent is a positive right to use and exploit someone else’s invention

Copyright has an expiry after death – Shakespeare’s works may be used/duplicated in any sort of way

Territorial nature

One very important point about intellectual property rights is that they are territorial in nature. They arise out of the result of national legislation which authorises the grant of such rights. Patents, registered design rights, trade marks are rights granted by the national intellectual property office

(UKIPO - https://www.gov.uk/government/organisations/intellectual-property-office/)

Copyright, unregistered design rights arise automatically, providing certain criteria are fulfilled. The rights associated with passing off and confidentiality are a result of a judicial decision in favour of the claimant. The territorial nature of these rights mean that, for example, a patent granted in the UK is only enforceable in the UK. A US patent is only enforceable in the US. The result of this is that a patent or trade mark will need to be separately registered in each country where protection is sort. There are various international conventions that aid this process.

IP law is largely EU implemented law !

There is one notable exception to this rule. EU law has developed certain pan-European protection for trade marks, design rights, and soon patents, where a single application to the granting office will provide the applicant with a single right which covers all EU Member States. In addition, a single application to the European Patent Office (not an EU body) for a patent under the European Patent Convention will give the applicant a bundle of national patent rights. In the next few years the EU will introduce the Unitary Patent which will provide the applicant with a single right which covers 25 EU Member States (those signed up to the unitary patent system).

It should also be born in mind that even though there are some international conventions and treaties that seek to harmonise intellectual property law, there are many differences between countries law and their interpretation of those laws.

Monopolistic nature

Intellectual property rights are often described as exclusive rights. What this means is that the holder of the right can exclude all others from using whatever has been protected by the intellectual property right. This right is negative in nature. So for example, if A has a patent over a drug, no-one else can manufacture that drug. In addition, the exclusive right means that only the holder of the right can exploit whatever has been protected by the intellectual property right. Again for a patented drug the holder of the right can offer it for sale, dispose of it, keep it or use it by way of trade, or license others to carry out these activities. So an intellectual property right gives rise to a legal monopoly.

Present day intellectual property legislation contains many built-in safeguards to ensure that a balance is struck between the rights of the intellectual property owner and free competition. Some of these safeguards require the owner to pay renewal fees regularly (in the case of patents, registered designs and trade marks). Others require the owner to make effective use of the intellectual property right: hence failure to exploit a patent may result in compulsory licensing and failure to use a trade mark for more than five years means that the registration may be revoked at the instance of any third party. In the case of copyright and designs, the competition authorities may intervene where the owner has abused the right. So there are some checks and balances in place to stop an abuse of the monopoly right.

Temporal nature

With the exception of trade marks, all intellectual property rights are of finite duration. Patent duration is 20 years, copyright, in general, is life plus 70 years, design rights 15 years and trade marks 10 years but renewable indefinitely.

Summary

The four principal characteristics of intellectual property rights is that they create intangible rights of property, that they are territorial in nature, that they confer exclusivity and are for a limited duration. The intangible rights accorded to the intellectual property owner must be kept separate from the ownership of the physical medium in which those rights are embodied. Territoriality means that intellectual property rights are confined in their effect to the state which has ‘granted’ that right. Exclusivity means that the owner of the right can prevent others from certain types of conduct and that they are the only person who can do this for the duration of the right concerned.

What falls under the scope of intellectual property?

Coverage: Subject Matter

Innovation, invention, design, original art, literature, commercial marks and presentation, etc.

Coverage: Legal

Copyright, Patents, Trade Marks, Confidentiality, Passing Off, Plant Variety Rights, Design Rights, Moral Rights, etc.

Your phone is a bundle of IP rights.

There are other forms of IP such as plant variety rights and semi conductor

Confidentiality/Trade Secrecy

The law of confidentiality and trade secrets is used to protect trade, government and personal information. Any information that may be used in the operation of a business and that is sufficiently valuable to afford an actual or potential economic advantage is considered a trade secret, for example, information on a particular manufacturing process may be protectable as a trade secret. The government may use confidentiality laws to protect against the release of information by its employees. For example, in AG v Guardian Newspapers (No. 2) [1988] 3 All ER 545 the government used confidentiality laws to try and stop the publication of the memoirs of a former MI5 agent. Lastly, the law of confidentiality has been used to protect personal information as in Argyll v Argyll [1967] Ch 302 where the courts stopped the publication of letters between the Duke and Duchess of Argyll. More recently the law of confidentiality has been used as a ‘law of privacy’ to protect private personal information in such cases as Douglas v Hello! Ltd [2001] EMLR 199 and Campbell v MGN [2003] QB 633. This is seen as a separate area of the law of confidentiality.

1) Must have a secret, commercial value, and 2) reasonable steps must have been taken to conceal the information, and 3) there is a misuse of the information

The action for breach of confidence does not depend on statute, but on case law. The accepted requirements for the action (established by Megarry J in Coco v Clarke [1969] RPC 41) are that the successful claimant must prove that:

• there existed confidential information

• the defendant owed the claimant a duty of confidence (which may be inferred from the circumstances, such as the parties being in a joint venture)

• breach of that duty by the misuse or wrongful disclosure of that information by the defendant.

The courts must be satisfied that all these requirements are met for the action to be successful.

In June 2016 the European parliament adopted Directive 2016/943 on trade secrets. The United Kingdom’s implementing law is the Trade Secrets (Enforcement, etc.) Regulations 2018 (SI 2018/597.) The substance of the Directive largely reflects the existing UK law on trade secrets. UK law on breach of confidence will continue to run in parallel with the new rights and remedies set out in the Directive. However the new law does provide a new harmonised definition for trade secrets. Information will be considered a trade secret if it:

• is secret – in the sense that it is not (as a body or in the precise configuration and assembly of its...