These are the slides of a presentation that I gave to the Manchester Trainee Solicitors Group at BPP Law School in Manchester on 29 April 2015. This was a mixed audience consisting of trainee solicitors and graduate students. Most were from the UK but there were a few from other countries. Some of the trainees were employed in IP or TMT departments of major law firms. Others were in company and commercial departments. In this talk I decided to talk about the treaties and policy that shape our IP statutes.

1. An Introduction to IP for Commercial Lawyers
Jane Lambert
29 April 2015

2. Agenda
• Intellectual property and intellectual assets
• International legal framework for IP
• Institutions
• Types of IP
• Choosing the right kind of IP
• Practical tips
• Enforcement
• Contracts relating to IP

3. Intellectual Property and
Intellectual Assets
• Two concepts are often confused even by
lawyers and it is vital to know the
difference.
• Confusion between the concepts can give
rise to disputes.

4. Intellectual Property
• Intellectual property (“IP”) is the umbrella
name for the bundle of rights that protect
investment in intellectual assets.
• Examples include patents, trade marks,
registered designs, unregistered design
rights, copyrights, obligations of
confidence and rights to bring
an action for passing off.

5. Intellectual Assets
• Intellectual assets (“IA”) are the subject of
such legal protection.
• Examples include inventions, novels,
computer programs, performances, films
and goodwill.
• They are assets that give one business a
competitive advantage over
all others.

6. Intellectual Assets
Intellectual assets (“IA”) fall into the
following categories:
– Brands
– Design
– Technology
– Works of art and literature.

7. Intellectual Assets
It is often possible to protect the same IA in
different ways:-
• an advance in technology may be
protected by a patent or by the law of
confidence as a trade secret; or
• a brand may be protected by registration
of a trade mark or by the law
of passing off

8. Intellectual Property
Some IP rights need to be registered with a
national or regional intellectual property office: -
• examples of registered rights include patents,
trade marks and registered designs.
• others arise automatically such as copyrights
and rights in performances,
obligations of confidence
and the right to bring an action
for passing off

9. Policy
Intellectual property laws balance two
conflicting public interests:
– Incentivizing investment in technology, creativity
and marketing; and
– Preventing monopolies and promoting
competition and freedom of trade.
Proviso vi of the Statute of Monopolies 1623 is
an example of the first imperative.
The Statute of Anne 1710 is an
example of the second.

10. International Legal Framework
• International trade and investment is
regulated by the Agreement establishing the
WTO (“the WTO Agreement”).
• Any country seeking access to the markets of
world’s richest nations must adhere to the
WTO Agreement.
• The WTO Agreement has several annexes
one of which is TRIPS.
• TRIPS is therefore a condition of
WTO membership

11. TRIPS
• WTO member states must adhere to
Paris, Berne and Rome Conventions and
Washington Treaty.
• They must also provide minimum
protection for works of art, brands,
geographical indications,
technology, semiconductor
topographies and undisclosed
information.

12. International Treaties
• Paris Convention for the protection of
industrial property 1883
• Berne Convention for the protection of
literary and artistic works 1886
• Rome Convention for the protection of
performers, producers of phonograms and
broadcasting organizations
1961

13. International Treaties
• Washington Treaty on Intellectual Property
in Respect of Integrated Circuits 1989
• Patent Co-operation Treaty (“PCT”) 1970
• European Patent Convention (“EPC”) 1973
• Madrid Protocol 1989
• Hague Agreement 1925
• Nice Agreement 1957

14. International Treaties
• WTO member states are required to
implement obligations under those treaties
into their domestic laws.
• Obligations can be enforced by other
member states under dispute settlement
procedures annexed to WTO agreement.
• Sometimes also by businesses
and individuals under bilateral
investment treaties (“BITs”).

15. Implementation in UK
• Registered Designs Act 1949
• Patents Act 1977
• Copyright, Designs and Patents Act 1988
• Trade Marks Act 1994
• Plant Varieties Act 1997

16. Implementation in EU
• Community trade mark regulation 2009
(“CTM Regulation”) which establishes
Community trade mark (“CTM”)
• Community design regulation 2002 which
establishes registered Community designs
(“RCD”) and unregistered Community
designs (“UCD”)
• Community plant variety rights
regulation 1994

17. Implementation in EU
• Community Patent Convention 1974 signed
but never implemented
• Stumbling blocks
– Dispute resolution
– Language
• Unitary Patent
– Agreement on Unified Patent
Court
– Regulations on enhanced
co-operation

18. Institutions
• Intellectual Property Office: UK patents,
trade marks and designs and implementation
of IP Policy
• European Patent Office (“EPO”):
established by EPC for registration of
European patents on behalf of member
states
• OHIM (Office for
Harmonization in the Internal
Market): CTM and RCD registry

19. Institutions
• Plant Varieties Rights Office: part of
DEFRA which enforces Plant Varieties Act
1997
• Community Plant Varieties Office:
enforces Community plant variety rights
• World Intellectual Property
Organization (“WIPO”): UN
specialist agency for IP

20. Types of IP
• Brands: UK and Community trade marks, passing off,
geographical indications
• Design
– Decorative: registered designs, RCD, UCD. Copyright
– Functional: unregistered design right
• Technology: patents, trade
secrets, design rights, copyright in programs,
database rights, plant breeders’ rights
• Works of art and literature:
- Graphic arts and literature: copyright
and publication right
• - Performing arts: rights in
performances

21. Choosing the right IPR
• Identify the income streams for the business
over the business planning period
• Anticipate threats to those income streams
• Consider counter-measures to those threats
most of which will be commercial
• For threats such as plagiarism
choose appropriate legal
protection
• Ensure funding for enforcement

22. Enforcement
• Save for bootlegging, counterfeiting, piracy
and deliberate copying of registered and
registered Community designs which are
offences, IPR have to be enforced by civil
proceedings.
• CPR Part 63 requires IP actions to be
brought in Chancery Division or
County Court hearing centres
with Chancery District
Registries

23. Enforcement
• Within the Chancery Division there are two
specialist courts: Patents Court and the
Intellectual Property Enterprise Court
(“IPEC”).
• Patents Court hears patents, registered and
registered Community design, semiconductor
topography and plant variety claims.
• IPEC hears claims under
£500,000 that can be heard in 2
days

24. Enforcement
• IPEC has a small claims track for claims
under £10,000 in which the district judge
can award injunctions and orders for
delivery up but where costs are limited to a
few hundred pounds.
• All other cases can be heard in the
Intellectual Property List of the
Chancery Division or Chancery
County Court hearing centres.

25. Enforcement
• Hearing centres outside London are at
Birmingham, Bristol, Caernarfon, Cardiff,
Leeds, Liverpool, Manchester, Mold,
Preston and Newcastle upon Tyne.
• Mercantile Courts and the Technology and
Construction Court occasionally hear IP
issues (eg. Intercity Comms v
Solanki [2015] EWHC B3
(Mercantile) (27 Feb 2015)

26. Alternatives to Litigation
• Comptroller-General of Patents, Designs
and Trade Marks has jurisdiction over
certain patent, trade mark and registered
and unregistered design right disputes.
• EPO can hear oppositions to grants of
European patents.
• OHIM can hear revocation and
invalidity disputes relating to
CTM and RCD.

27. Alternatives to Litigation
• IPO Examiners can give non-binding opinions
on validity, infringement and other disputes
relating to patents and will soon be able to
give similar opinions in relation to registered
and unregistered designs;
• WIPO and other bodies can determine gTLD
and certain ccTLD
disputes;
• Nominet can determine certain
.uk domain name disputes

28. Alternatives to Litigation
• WIPO provides arbitration, mediation and
other ADR services.
• IPO provides a mediation service.
• Other arbitrators (including 4-5 Gray’s Inn
Square) provide specialist IP dispute
resolution services

29. Enforcement
• England and Wales is arguably the most
expensive jurisdiction in the world to
enforce IP rights.
• In 2003 IPAC found that the average cost
of enforcement in France, Germany and
Netherlands was €50,000 or less but £1
million in Patents Court and
£150,000 – 250,000 in Patents
County Court

30. Enforcement
• Costs have been reduced since 2010 with
£50,000 costs cap for multitrack claims in
IPEC and small claims jurisdiction but
litigation in the rest of the Chancery Division
and the County Court is expensive.
• IP owners should be advised to take out IP
insurance and instruct a watch
service as soon as they apply
for IP rights.

31. Contracts relating to IP
• Assignments: transfers of IPR (analogous to
conveyances of freehold)
• Licences: permission to do what otherwise
might be unlawful:
– Exclusive: tantamount to assignment and
perhaps analogous to a long lease;
– Sole: licensor retains right to
use the IA but agrees not to grant
more than one licence;
– Non-exclusive: permission to do
what would otherwise be
unlawful

32. Usual Clauses in Licences
• Recitals
• Parties
• Definitions and Interpretation
• Grant
• Rights
• Territory
• Term
• Minimum Transactions

33. Usual Clauses in Licences
• Reporting
• Inspection of records
• Computation of Royalties
• Undertaking to pay royalties
• Termination
• Remedies
• Exclusion on Collateral
contracts, representations
and warranties

34. Usual Clauses in Licences
• Whole agreement
• Severance
• Force majeure
• Notices and notifications
• Choice of law
• Choice of jurisdiction

35. Any Questions?
Jane Lambert
4-5 Gray’s Inn Square
London
WC1R 5AH
Tel 020 7404 5252
jlambert@4-5.co.uk
http://nipclaw.blogspot.co.uk