Introduction to Intellectual Property


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These are the slides of a presentation to solicitors, barristers and others at 4-5 Gray;s Inn Square on 26 June 2013. It defines intellectual property ("IP") as the legal protection of intellectual assets ("IA") which are the brands, designs, technology or creative works that give a business a competitive advantage over its rivals. The study discusses how the law protects each of those assets: brands by designs, passing off, geographical indications and registered designs, for example,. and technology by patents, the law of confidence, unregistered design right, plant breeders rights and copyright. However, IP rights create monopolies and restraints of trade that are as harmful as any other. The law that creates these rights also regulates their subsistence and exercise. Thus, IP law strikes a balance between two conflicting interests: that of incentivizing creativity and innovation against promoting competition and freedom of trade. The tension between those two public interests has always existed and its appreciation is fundamental to understanding IP law. One instance where it appeared was in the Uruguay Round of negotiations of trade liberalization between 1986 and 1994 which led to the WTO agreement and TRIPS. Since 1994 IP protection has been one of the conditions of access to the markets of the leading industrial countries. TRIPS refers to four core treaties - Paris, Berne, Rome and Washington. These are the general protection treaties. Others, such as the PCT, Madrid and Hague, facilitate multiple patent, trade mark and registered design applications. There are classification agreements like Nice and Locarno and regional agreements like the European Patent Convention. The presentation considered the harmonization of European copyright, registered design and trade mark law and the Community trade mark and Community design regulations. It identified the core British statutes: the Patents Act 1977, Copyright, Designs and Patents Act 1988, the Trade Marks Act 1994 and the Registered Designs Act 1949. It discussed also some of the more important secondary legislation such as the Patents, Trade Marks and Registered Designs Rules. Finally, it identified some of the sources of law in print and on the internet listing the materials that can be downloaded from the IPO, EPO, OHIM, WIPO and other sites.

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Introduction to Intellectual Property

  1. 1. Introduction to Intellectual Property Jane Lambert Thursday, 26 June 2013 16:00 – 18:00
  2. 2. Contents • What is Intellectual Property? • Why do we have it? • The WTO Agreement and TRIPS • The Treaties • European Patent Convention • EU Directives and Regulations • Statutes and Case Law • Sources of IP Law
  3. 3. What is Intellectual Property? Intellectual property (“IP”) is the collective term for the bundle of laws that protect investment in intellectual assets (“IA”).
  4. 4. What are Intellectual Assets? IA are the brands, designs, technology or the works of art and literature which give one business a competitive advantage over all others.
  5. 5. What are Brands? For the purpose of this discussion, a brand means the sign that identifies a supplier or his goods or services in the market place.
  6. 6. What are Designs? In everyday language “design” can mean the appearance of an article as in “designer handbag” or in a technical arrangement as in an “engine design”.
  7. 7. What are Designs? The former are called “decorative” or “ornamental designs” and the latter “functional designs”. The law protects both in the UK and most other countries.
  8. 8. What is Technology? Essentially new products and processes. English law is not very good at protecting new services or such as new methods of business or software.
  9. 9. Works of Art and Literature Essentially these fall into two categories: • Permanent works like books, CDs, film, music or drawings; • Performances of actors, dancers, musicians or singers
  10. 10. How does the Law protect Brands? • Registered Trade Marks • Passing off • Geographical Indications • Registered Designs
  11. 11. How does the Law protect Designs? • Functional designs by unregistered design right • Decorative designs by registered designs, registered Community designs, unregistered Community designs and artistic copyright
  12. 12. How does the Law protect Technology? • Patents • Trade Secrets • Unregistered design rights • Plant breeders’ rights for new plant varieties • Literary copyright for computer programs and databases
  13. 13. How does the Law protect Works of Art and Literature? • Copyright protects original artistic, dramatic, literary and musical works, broadcasts, films, sound recordings and typographical arrangements of published editions. • Artists, dancers, musicians and other performers (and those with exclusive contracts to film or tape them) have the right to object to unauthorized filming or taping known as “rights in performances”.
  14. 14. Competition and Freedom of Trade Monopolies and other exclusive rights conferred by IP laws restrict competition and freedom of trade just like any other monopoly or restraint of trade.
  15. 15. Competition and Freedom of Trade To mitigate the effect of such restrictions the statutes and common law subject the subsistence and exercise of IP rights to conditions.
  16. 16. Function of IP Law To strike a balance between conflicting public interests: • Incentivizing creativity and innovation; while • Safeguarding competition and freedom to trade.
  17. 17. Tension between conflicting public interests Illustrated by: • Statute of Monopolies 1623 which established patents; and • Statute of Anne 1710 which established copyright.
  18. 18. Statute of Monopolies 1623 Essentially a competition statute as it abolished monopolies but allowed an exception for inventions to incentivize innovation.
  19. 19. Statute of Anne 1710 Licensing system required to incentivize writers and publishers in a completely unregulated market.
  20. 20. Tension between conflicting public interests The tension between those conflicting public imperatives resurfaces at international conferences, in national legislatures and the courts and its appreciation is fundamental to understanding IP.
  21. 21. The WTO and TRIPs An instance where this tension arose was in the Uruguay round of negotiations to liberalize world trade in goods and services between 1986 and 1994.
  22. 22. The WTO and TRIPs The Agreement establishing the World Trade Organization (“WTO”) in 1994 annexed an Agreement on Trade Related Aspects of Intellectual Property Rights (“TRIPS”).
  23. 23. The WTO and TRIPs TRIPS requires WTO member states to protect the IA of its own citizens and residents and those of other member states
  24. 24. The WTO and TRIPs Since 1994 providing minimum IP protection has been a condition of favourable access to the markets of the world’s leading industrial countries.
  25. 25. The Treaties TRIPS refers to four core treaties: • Paris Convention 1883: patents, trade marks and industrial designs; • Berne Convention1886: copyrights; • Rome Convention 1961: rights in performances; and • Washington Convention 1989: semiconductor topographies.
  26. 26. The Treaties Treaties can be divided into four groups: • Protection Treaties: Paris, Berne, Rome etc.; • Prosecution Facilitation: PCT, Madrid Protocol and Hague; • Classification: Nice and Locarno; and • Regional: European Patent Convention (“EPC”).
  27. 27. European Patent Convention • Establishes a European Patent office in Munich; • Grants European patents for new inventions on behalf of national governments which rank alongside national patents; and • Harmonizes the substantive laws of the contracting states.
  28. 28. EU Directives and Regulations • From earliest days of the European project national IP rights were a barrier to trade between member states. • ECJ (now CJEU) developed doctrines that limited the exercise of those rights insofar as they restricted free movement of goods. • Solution was to harmonize national member states’ IP laws and create Community IP rights.
  29. 29. EU Directives and Regulations • Extensive harmonization of copyright, registered design and trade mark law by a series of directives. • Community trade marks and design registration. • Less success with patents owing to disputes over language and enforcement. • But agreement has been reached on a unitary patent.
  30. 30. Statutes • Registered Designs Act 1949 • Patents Act 1977 • Copyright, Designs and Patents Act 1988 • Trade Marks Act 1994 The IPO has compiled useful unofficial consolidations of those statutes which can be downloaded from its website.
  31. 31. Rules • Patents Rules 2007 • Trade Marks 2008 • Registered Designs Rules 2006
  32. 32. Law of Confidence “In my judgment, three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself, in the words of Lord Greene, MR in the Saltman case on page 215, must ‘have the necessary quality of confidence about it.’ Secondly, the information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorized use of that information to the detriment of the party communicating it.” Megarry J in Coco v A N Clarke (Engineers) Ltd [1967] RPC 41, 47
  33. 33. Passing off Lord Oliver set out the three basic requirements of an action for passing off in Reckitt and Colman Products Ltd v Borden Inc and Others RPC 341, 405.
  34. 34. Passing off “Goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with an identifying ‘get-up’”.
  35. 35. Passing off “Misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.”
  36. 36. Passing off “Damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”
  37. 37. IP Litigation All IP cases are allocated to the Chancery Division, the Patents County Court or a County Court attached to a Chancery District Registry (Birmingham, Bristol, Caernarfon, Cardiff, Leed s, Liverpool, Manchester, Mold, Newcastle, Pr eston)
  38. 38. IP Litigation Patents, registered designs and registered Community designs, semiconductor topography and plant varieties cases are assigned to a special court within the Chancery Division known as the “Patents Court” or to the Patents County Court.
  39. 39. IP Litigation Patents County Court has a small claims track for IP cases other than patents, registered and registered Community designs, semiconductor topography and plant breeders rights.
  40. 40. IP Litigation Practice is to be found in: • CPR Part 63 and PD Part 63 • Chancery Guide • Patents Court Guide • Patents County Court Guide • Small Claims Guide
  41. 41. Where to find your law Printed materials: • Reports of Patent Cases (“RPC”) • Fleet Street Reports (“FSR”) • European Intellectual Property Review (“EIPR”)
  42. 42. Where to find your law Online: •BAILII: (CJEU, General Court, Supreme Court, Court of Appeal, Chancery Division, Patents Court and Patents County Court) • IPO: Decisions of hearing officers and appointed persons, unofficial consolidations of core statutes, statutory instruments and rules, tribunal practice notes and Manual of Patent Practice)
  43. 43. Where to find your law Online: • EPO: EPC, Official Journal and decisions of boards of appeal •OHIM: Community trade mark and design regulations, trade mark and design directives and decisions of boards of appeal • WIPO: Treaties and conventions
  44. 44. Where to find your law Text Books • Terrell on Patents • Kerly on Trade Marks • Morcom and others: “Modern Law of Trade Marks” • Laddie, Prescott and Vitoria: “Modern Law of Copyright and Designs”
  45. 45. Where to find your law Text Books • Copinger and Skone James on Copyright • Wadlow: “The Law of Passing off”
  46. 46. Any Questions Jane Lambert 4-5 Gray’s Inn Square Gray’s Inn London WC1R 5AH