How the law protects investment in technology - trade secrets, patents, design rights and plant varieties

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On Wednesday 27 Nov 2013 I addressed a seminar on trade secrets, patents, copyrights, design rights, semiconductor topographies and plant varieties. Although I delivered my talk without slides I have …

On Wednesday 27 Nov 2013 I addressed a seminar on trade secrets, patents, copyrights, design rights, semiconductor topographies and plant varieties. Although I delivered my talk without slides I have prepare these as an aide mémoire for those who attended the talk. They are supplemented by an accompanying handout.

Patent law developed during the industrial revolution when technology meant new products and processes but it now includes software, data, silicon chips and new plant and seed varieties. Consequently patents are fine for protecting developments in manufacturing but not quite so good protecting the new information based industries.

In addition to my overview of these rights I discussed the advantages and disadvantages of patents as opposed to trade secrets law. I suggested a simple IP strategy for most and discussed enforcement.

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  • 1. How the Law protects Investment in Technology Jane Lambert 27 Nov 2011 16:00 - 18:00
  • 2. Topics ● ● ● ● ● ● Trade secrets Patents Copyright and Database Right Unregistered Design Rights Chip Topographies Plant Breeders’ Rights
  • 3. Technology ● ● ● ● ● ● Products Processes Computer software Data manipulation Web based services Seeds and plants
  • 4. Trade Secrets ● Law of Confidence ● Common law or judge made doctrine ● Coco v A N Clark (Engineers) Ltd ○ Information must have quality of confidence ○ Imparted in circumstances giving rise to an obligation of confidence ○ Unauthorized use
  • 5. Trade Secrets ● Quality of confidence ○ Information the use or disclosure of which could injure confider or benefit confidante ○ must be secret or at least not generally known ○ ceases to be confidential if it can be reverse engineered ○ examples include source code, chemical formulae ● Overlap with database right
  • 6. Trade Secrets ● Circumstances giving rise to an obligation of confidence ○ ○ ○ ○ non-disclosure agreement employment relationship professional relationship obvious from the nature of the information ● Confidentiality agreements not always effective
  • 7. Trade Secrets ● Unauthorized use ○ use for a purpose other than that of the disclosure ○ disclosure to a person other than the one authorized to receive the information ○ making and keeping copies of confidential documents without consent ○ failure to return documents disclosed in confidence ○ failure to keep confidential documents secret
  • 8. Trade Secrets ● Remedies ○ interim injunction in Chancery Division ○ delivery up of confidential documents and any copies ○ final injunction and damages or account of profits ○ final injunction can be granted by a district judge of the small claims track of the IP Enterprise Court ● Draft EU Directive on Trade Secrets
  • 9. Trade Secrets ● Antithesis of patent protection where a monopoly is the reward for disclosure of the technology ● Every patented invention begins life as a trade secret ● Widely used by the software industry
  • 10. Patents ● Monopoly of a new invention which may be a product or a process ○ making, distributing, marketing, importing, using and keeping a new product ○ using a new process ○ distributing, marketing, importing, using and keeping a product derived from a new process
  • 11. Patents ● Sources of law ○ ○ ○ ○ TRIPS Paris Convention Patent Cooperation Treaty European Patent Convention ● Patents Act 1977 ● Patents Rules 2007
  • 12. Patents ● Institutions ○ Patent Office (now known as the Intellectual Property Office or “IPO”) ○ European Patent Office (EPO”) ○ World Intellectual Property Organization (“WIPO”) ● British patents (for UK alone issued by IPO) ● European patents issued by the EPO ● European patents (UK) EP designating UK
  • 13. Patents ● Applications may be made to ○ the IPO for British patents ○ the EPO for European patents including European patents (UK) ● Applications may also be made through the PCT for a British or European patent: ○ Applications to a patent office outside UK or even Europe ○ processed by the WIPO
  • 14. Patents ● Applications may be made to ○ the IPO for British patents ○ the EPO for European patents including European patents (UK) ● Applications may also be made through the PCT for a British or European patent: ○ Applications to a receiving office (patent office); ○ published by the WIPO.
  • 15. Patents Patentable inventions must ● be new ● involve an inventive step ● be capable of industrial application ● not be excluded by statute
  • 16. Patents ● Novelty means not part of the “state of the art” ● Prior art includes all matter that has been made available to the public anywhere in the world by written description or otherwise ● Includes but not limited to patents and patent applications and technical literature
  • 17. Patents Invention includes an “inventive step” if it is not obvious to a “person skilled in the art” having regard to the state of the art
  • 18. Patents Capable of industrial application means that the invention may be used in any kind of industry including agriculture
  • 19. Patents Excluded matter includes ● computer programs, methods of doing business and presentation of information “as such” ● inventions contrary to public policy or morality ● methods of treatment and diagnosis but not medicines
  • 20. Patents Monopoly enforced by civil proceedings in: ● Patents Court ● Intellectual Property Enterprise Court Both courts are part of the Chancery Division and sit in the Rolls Building.
  • 21. Patents Intellectual Property Enterprise Court ● specialist list ● Judge Hacon and other Enterprise judges ● trials limited to one day (or at the most) two ● recoverable costs limited to £50,000 for trial on liability and £25,000 for inquiry or account of profits
  • 22. Software Because computer programs “as such” cannot be patented, industry relies on ● law of confidence ● copyright ● database right. However, it is possible to patent a software implemented invention in certain circumstances.
  • 23. Design right ● Part III of Copyright, Designs and Patents Act 1988 ● Protects investment in research and development of products that might be protected by utility models (or equivalents) in other countries ● Protection against copying of designs
  • 24. Design right ● Very short term (15 years if no products are made to the design or 10 years if they are) ● Licence of right available for last 5 years of design right term ● Almost unique to the UK which means that protection does not extend to US, Japanese, Chinese, Russian or Indian designs etc
  • 25. Semiconductor Topographies ● The Design Right (Semiconductor Topographies) Regulations 1989 ● Extended design right protection to semiconductor topographies with ○ longer term ○ protection for nationals of countries that protect UK topographies
  • 26. Plant Breeders’ Rights ● Plant Varieties Act 1997 ● Council Regulation 2100/94 ● UPOV Treaty
  • 27. Any Questions Jane Lambert 4-5 Gray’s Inn Square Grays Inn London WC1R 3AH Tel 020 7404 5252 jlambert@4-5.co.uk