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An Introduction to IP for Commercial Lawyers
Jane Lambert
29 April 2015
Agenda
• Intellectual property and intellectual assets
• International legal framework for IP
• Institutions
• Types of IP...
Intellectual Property and
Intellectual Assets
• Two concepts are often confused even by
lawyers and it is vital to know th...
Intellectual Property
• Intellectual property (“IP”) is the umbrella
name for the bundle of rights that protect
investment...
Intellectual Assets
• Intellectual assets (“IA”) are the subject of
such legal protection.
• Examples include inventions, ...
Intellectual Assets
Intellectual assets (“IA”) fall into the
following categories:
– Brands
– Design
– Technology
– Works ...
Intellectual Assets
It is often possible to protect the same IA in
different ways:-
• an advance in technology may be
prot...
Intellectual Property
Some IP rights need to be registered with a
national or regional intellectual property office: -
• e...
Policy
Intellectual property laws balance two
conflicting public interests:
– Incentivizing investment in technology, crea...
International Legal Framework
• International trade and investment is
regulated by the Agreement establishing the
WTO (“th...
TRIPS
• WTO member states must adhere to
Paris, Berne and Rome Conventions and
Washington Treaty.
• They must also provide...
International Treaties
• Paris Convention for the protection of
industrial property 1883
• Berne Convention for the protec...
International Treaties
• Washington Treaty on Intellectual Property
in Respect of Integrated Circuits 1989
• Patent Co-ope...
International Treaties
• WTO member states are required to
implement obligations under those treaties
into their domestic ...
Implementation in UK
• Registered Designs Act 1949
• Patents Act 1977
• Copyright, Designs and Patents Act 1988
• Trade Ma...
Implementation in EU
• Community trade mark regulation 2009
(“CTM Regulation”) which establishes
Community trade mark (“CT...
Implementation in EU
• Community Patent Convention 1974 signed
but never implemented
• Stumbling blocks
– Dispute resoluti...
Institutions
• Intellectual Property Office: UK patents,
trade marks and designs and implementation
of IP Policy
• Europea...
Institutions
• Plant Varieties Rights Office: part of
DEFRA which enforces Plant Varieties Act
1997
• Community Plant Vari...
Types of IP
• Brands: UK and Community trade marks, passing off,
geographical indications
• Design
– Decorative: registere...
Choosing the right IPR
• Identify the income streams for the business
over the business planning period
• Anticipate threa...
Enforcement
• Save for bootlegging, counterfeiting, piracy
and deliberate copying of registered and
registered Community d...
Enforcement
• Within the Chancery Division there are two
specialist courts: Patents Court and the
Intellectual Property En...
Enforcement
• IPEC has a small claims track for claims
under £10,000 in which the district judge
can award injunctions and...
Enforcement
• Hearing centres outside London are at
Birmingham, Bristol, Caernarfon, Cardiff,
Leeds, Liverpool, Manchester...
Alternatives to Litigation
• Comptroller-General of Patents, Designs
and Trade Marks has jurisdiction over
certain patent,...
Alternatives to Litigation
• IPO Examiners can give non-binding opinions
on validity, infringement and other disputes
rela...
Alternatives to Litigation
• WIPO provides arbitration, mediation and
other ADR services.
• IPO provides a mediation servi...
Enforcement
• England and Wales is arguably the most
expensive jurisdiction in the world to
enforce IP rights.
• In 2003 I...
Enforcement
• Costs have been reduced since 2010 with
£50,000 costs cap for multitrack claims in
IPEC and small claims jur...
Contracts relating to IP
• Assignments: transfers of IPR (analogous to
conveyances of freehold)
• Licences: permission to ...
Usual Clauses in Licences
• Recitals
• Parties
• Definitions and Interpretation
• Grant
• Rights
• Territory
• Term
• Mini...
Usual Clauses in Licences
• Reporting
• Inspection of records
• Computation of Royalties
• Undertaking to pay royalties
• ...
Usual Clauses in Licences
• Whole agreement
• Severance
• Force majeure
• Notices and notifications
• Choice of law
• Choi...
Any Questions?
Jane Lambert
4-5 Gray’s Inn Square
London
WC1R 5AH
Tel 020 7404 5252
jlambert@4-5.co.uk
http://nipclaw.blog...
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An Introduction to Intellectual Property for Commercial Lawyers

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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.

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An Introduction to Intellectual Property for Commercial Lawyers

  1. 1. An Introduction to IP for Commercial Lawyers Jane Lambert 29 April 2015
  2. 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. 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. 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. 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. 6. Intellectual Assets Intellectual assets (“IA”) fall into the following categories: – Brands – Design – Technology – Works of art and literature.
  7. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 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. 32. Usual Clauses in Licences • Recitals • Parties • Definitions and Interpretation • Grant • Rights • Territory • Term • Minimum Transactions
  33. 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. 34. Usual Clauses in Licences • Whole agreement • Severance • Force majeure • Notices and notifications • Choice of law • Choice of jurisdiction
  35. 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

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.

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