#3248 - Other Ip Rights - Commercial and IP

Intellectual Property Rights

Other IP Rights

Patents:

Protects new inventions / how things work / industrially applicable processes and devices
Confers the benefit of monopoly right over that invention – to the proprietor
Obtained through registration
Lasts for 20 years from application – gives the inventors a chance to make money and recoup their expenditure.
Others should be able to learn from inventions and after 20 years the invention will be available for anyone’s use.
Patent Act 1977

Obtain a patent:

Apply to:	UK Patent Office [UKPO]; or EU Patent Office [EPC]
Cost	UK: Average 2000 [cost of employing a Patent attorney]. Paper filing costs 280. EU: Average 3000
Timeline	Application = 2-3 years to grant.
Initial protection before the patent is granted [but after application] Before the application:	Filing the application generates a “priority date”. Infringement proceedings may be taken in respect of acts done after this date. Once a prototype is created – consider registering a trademark; UDR; RDR or use the law of secrecy. Early protection can be sought by inventor filing a description of the invention with the Patent Office stating that he has an intention to apply for a patent. [detailed specification, claim and abstract must be submitted within 12 months] When ready, the application would proceed as normal but with the priority is granted from the initial date of filing [S.15 PA 1977]
Patent Specifications	Sets out the detail of the invention – showing exactly how it works. Forms a hypothetical fence around the area which the inventor claims as his own.
Renewal fees	Must be paid yearly – otherwise the patent will lapse.

Conditions of obtaining patent:

S.1(1)(a)

Invention is new

Is the product new or can we find the information in an existing source? [State of the art at the priority date].

So long as the information has not been made available / disclosed to the public before the date of filing the application [or the priority date].

Product is not new if there been “enabling disclosure” disclosure that would enable someone to make the product.

S.1(1)(b]

It constitutes an “inventive step”

“a quantum leap over the existing technology”. It must show thinking which has not been seen before.

Would the invention have been imagined by some unimaginative person skilled in the art [i.e. someone knowledgeable but lacking in inventive spark]. Known as the “uninventive technician”.

See further criteria for this point in Windsurfing International Inc V Tabur Marine.

Does the invention add to the state of the art? [Sausage machine case]

Commercial success can be an indicator

S.1(1)(c)

capable of industrial application

It must be possible to make the product / carry out the process. [i.e. can the invention be put into practice]

S.1(2)

it is not within any of the exclusions

S.1(2) and (3) 1977 Act. Includes;

Computer software [but does it have technical effect i.e. practical application – maybe it can be patentable]
Scientific theory / mathematical method
Performing a mental act – e.g. business method / planning
Anything contrary to public policy

Who owns the patent?

S.39(1)

Employees =

S.130(1) PA: employee = someone working under a contract of employment.
Employee creates the invention – the patent belongs to the EMPLOYER where:
- S.39(1): The invention is made in the course of the employee’s normal duties and it is reasonably expected that invention will be created [JOB description should emphasize that employee is expected to create inventions]

[Doctor case – Great Glasgow Health Authority – job was to treat patients not invent machines]

S.39(2): The invention might be reasonably expected to result from his duties within the job description. Because of the particular responsibilities arising from his duties, employee had a SPECIAL OBLIGATION to further the interests of the employer’s undertaking.

S.42: you cannot contract out of these provisions. A provision in the employment contract that future inventions made outside the course of employee’s duties are to vest in the employer would be ineffective [VOID]
Compensation for employee inventors: S.40 – provided that outstanding benefit is received by employer AND it is just compensation that is awarded. [S.41 gives more guidance on this]

Non-use of the Patent:

If proprietor fails to use the product with the registered patent – what happens?

A person can apply for a compulsory license: Once 3 YEARS has elapsed from GRANT of the patent. Must show the patent has been unused or underused.
Proprietor can grant Licenses of right: The IPO will endorse the register with a notice that licenses to exploit the patent are available “as of right”. Any person who wishes to make use of the patent can approach the proprietor.

Infringement

S.60 PA 1977
No need to show copying

Copyright

Basics:

Protects the results and expressions of creative ability / ARTISTIC element
Arises automatically – no registration
It lasts for 70 years from death of the creator [limited to 25 years if the article is produced industrially]
Copyright, Designs and Patent Act 1988
RDR can coexist with Copyright – subject to S.51 CDPA

2 types:

Creative / classic: literature, drama, theatre, musical, artistic craftsmanship
Entrepreneurial: films, sound, published editorials, broadcasts.

Drawings of design Prototypes [so long as it has enough artistic merit] could also be RDR – they are not mutually exclusive rights! [NB. Cannot be combined with UDR however]

Moral rights:

Rights retained by the artist even after he sells his copyright to someone else. They include: [does not apply to employees]

right to be identified
right to object to derogatory treatment
right against false attribution of a work
right to privacy in private photographs and films

These are inalienable rights – they cannot be assigned. [S.94 CDPA]. But they can be waivered.

Ownership of the copyright:

S.11(1) CDPA: the author owns
EMPLOYMENT: S.11(2): If work is made by employee in the course of employment = employer owns the copyright
COMMISSIONED: S.11(1) author owns the work
FUTURE work: Employer can assign the work to himself – so long as it is in writing!

Infringement

S.16 - 26 CDPA 1988
Copying: Must be of a substantial part [cannot copy a line; sentence etc]
Primary infringement [S.16 – 21] = Infringer is liable regardless of his state of mind. Copying of the whole / substantial part.
Secondary Infringer [S.22-26] = infringing copies [e.g. pirate copies]. Claimant must show that infringer knew he was copying. [NB. Courts can impose a presumption of copying if the goods are very similar. The burden of proof then reverses and defendant must show he did not know he was copying.]

Defences:

Fair Dealing S.29-30:

S.29: for research / private study

S.30(1) For purposes of criticism / review

S.30(2) For purposes of reporting current events

Consent to copying

Registered Design Rights

Basics:

Registered Designs Act 1949
Protects new designs for manufactured products [2d and 3d aspects]
Affords the benefit of Monopoly rights – max 25 years. [Stronger than UDR]
Can exist alongside UDR and Copyright [but for copyright – subject to S.51 CDPA]

1(2)

Design – the appearance of the whole or part of a product resulting from the features of, in particular, the lines, colors, contours, shape, texture, or materials of the product or its ornamentation.

1(3)

Definition of Products is wide: Any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type faces and parts intended to be assembled into a complex product.

Includes the packaging and get up of goods.

Designs must be NEW and have INDIVIDUAL character. [S.1B test]:

[Novelty is considered when the application to register is first filed! Not earlier!]

New	Design must not already exist No identical design No design whose features differ only in immaterial detail has been made available to the public before the relevant date.
Individual character	Design must offer a different overall impression from earlier designs
NB.	12 month grace period: designer may disclose the design – this will not effect the design’s novelty or assessment of individual character

What cannot be registered:

Technical function: features dictated solely by the product’s technical function. [i.e. has there been no design freedom available – it is that way because it has to be otherwise the product does not work]
Interface features: shapes compelled to be a exact shape in order to be able to fit into / around some other product

Ownership of registered designs [S.2]

S.2(1)	Author has first ownership of design
S.2(1B)	If created in course of employment = ownership belongs to employer
S.2(1A)	If design is the result of a commission = ownership belongs to commissioner, not the designer. [This is OPPOSITE to the situation with copyright]

Further protection

Packaging and “get up” could be registered as RDR
Put registered number and “Registered Design” on products [If the number is not provided then the owner may be unable to claim damages or an account of profits – S.24B RDA]
The words “Registered Design applied for” can be used
Keep signed / dated record of the design. Send in a sealed...

#3248 - Other Ip Rights - Commercial and IP

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