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Francis Davey 'An Introduction to IP'


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Presentation given at Open GLAM Legal Clinic @ the Wellcome Collection, 24.11.11

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Francis Davey 'An Introduction to IP'

  1. 1. INTRODUCTION TO IPFrancis Davey
  2. 2. Overview• Part I: overview of IP • health warning: very brief and superficial • at best a road map• Part IA: confidential information • only a brief mention• Part II: some practical aspects • ownership of IP • employment and IP • dealing in IP• Avoided completely • international questions (assume everything happens in the UK) • administrative details (drafting patents etc)
  3. 3. What is intellectual property?• A kind of property • created by statute • devolve like property by will or intestacy • attract proprietary rights (protection via injunction, account of profits etc) • assignable etc • mystery: patents are not choses in action• Each carries a bundle of “rights” • may only be done with the owner’s permission • exercising right without permission is normally an infringement • many and complex exceptions
  4. 4. UK intellectual property• Patents• Copyright • Performers property rights • Database right• Designs • Registered designs • Design right • (semiconductor topography) • Community designs (registered and unregistered)• Plant breeders rights• Trade Marks
  5. 5. Is registration a requirement?Unregistered RegisteredCopyright Community registered design rightPerformers property rights Registered designDatabase right PatentDesign right Plant breeders right(semiconductor topography designs) Trade MarkCommunity (unregistered) design right
  6. 6. Common Features• National (=UK), except: • Community Trade Marks • Community designs • European Patents• Special rules on enforcement • additional damages• Remedies • civil • criminal (usually only business use, but copyright ...) • in rem (destruction or delivery up of articles)
  7. 7. DurationCopyright, except: 70 yearsbroadcasts, sound recordings and rights in 50 yearsperformancetypographical editions of published works 25 yearsDatabase right 15 yearsDesign right 15 years(semiconductor topography) 10 or 15 yearsCommunity unregistered design 3 yearsRegistered designs (UK + Community) 25 yearsPatent 20 yearsPlant breeder’s rights 30 years (potatoes, trees and vines) 25 years otherwiseTrade Mark Until revoked
  8. 8. Registered IP: common features• Registration procedure • Fees • Renewal fees• Revocation or opposition• Registration of transactions• Publication• Right to apply may also be a property right • eg patents, plant varieties
  9. 9. Patents
  10. 10. Patents: health warning• Almost never litigate • very expensive• In practice: • Mark out rights to an idea that may be valuable to investors • Patent portfolios useful as a defence
  11. 11. European Patent Organisation
  12. 12. Patentability• Inventions • new • inventive • capable of industrial application • not excluded• Priority • “new” and “inventive” v state of the art • first to file (the universe) vs first to invent (the US)• Exclusions • “as such” – eg computer programs • general exclusions (immoral, plants, medical procedures)
  13. 13. Patents: infringement• Products • using the product in almost any way• Processes • using (or offering for use) the process • using products of the process• Supplying an essential element of the invention • but not if it is a “staple commercial product”
  14. 14. Copyright
  15. 15. Copyright: LDM works• Literary • anything written, spoken or sung • includes computer programs and preparatory work • excludes databases• Dramatic • includes dance or mime• Musical • .. but none of the above
  16. 16. Artistic works• Artistic works • graphical work • painting, drawing, diagram, map, chart or plan, and any engraving, etching, lithograph, woodcut or similar work • photograph, sculpture or collage • ... artistic quality irrelevant • work of architecture • building • model for a building • work of artistic craftsmanship• Photographs • any record of light or other radiation • not part of a film
  17. 17. Copyright: other works• Films• Sound recordings• Broadcasts (and cable programmes)• Typographical editions of published works
  18. 18. Copyright: rights• Copying (all or a substantial part)• Issuing copies to the public• Renting or lending to the public• Performing, showing or playing the work in public• Communicate the work to the public• Making an adaptation of the work • or doing any of the above in relation to an adaptation
  19. 19. Rights in performance• Live performances • performers • person having recording rights• Some property rights • copying • issuing copies to the public • rental or lending • making available to the public• Rights against illicit recordings
  20. 20. Copyright exceptions• Temporary copies• Fair dealing • non-commercial research and private study • criticism or review (of a work) • news reporting (but not for photographs)• Computer programs • backup copies • various reverse engineering exceptions• Public interest
  21. 21. More exceptions....Visually impaired 3Education 6Libraries 11Public administration 6Other 28 Total 54
  22. 22. Databases• Database • collection of independent works, data or other materials • arranged in a systematic or methodical way • individually accessible by electronic or other means.• Database directive • copyright – “own intellectual creation” • database right
  23. 23. Database right• Substantial investment • obtaining • verifying • presenting• Infringed by • extraction • re-utilisation• Substantial part • repeated insubstantial acts may become substantial
  24. 24. Fixtures Marketing etc• Lists of football fixtures highly valuable• First case, ECJ: • you didn’t collect the information • no rights for own data?• Second case: • its really creative so subject to database copyright • anyway, UK database copyright survived • referral to the ECJ
  25. 25. Designs
  26. 26. Designs: varieties Registered UnregisteredEurope community registered community design design 3 years 25 yearsUnited Kingdom registered design design right 25 years 15 years
  27. 27. Designs: nature of a design Registered UnregisteredEurope Novel Novel Appearance AppearanceUnited Kingdom Novel Original Shape Appearance
  28. 28. Design: rights• Rights • making an article • making a design document• Infringement • for unregistered designs – requires copying • for registered designs – absolute
  29. 29. Trade Marks
  30. 30. Trade Marks• No common law of trade marks as property • action of passing off tort to protect goodwill• Infringement requires • trade mark use • in the course of business• Exceptions • may be used for the purposes of identification of goods or services as those of the proprietor
  31. 31. Trade Mark: infringing useMark Goods or Additional Services marked requirementidentical identicalsimilar identical likelihood of confusionidentical similaridentical or similar different unfair advantage or detrimental to mark
  32. 32. Confidential Information• Breach of confidence • not a form of property • confidence protected by equity• Elements • has the necessary quality of confidence • imparted with an obligation of confidence • unauthorised use• NDA’s have two uses • contractually requiring confidence • creating conditions for breach of confidence claim
  33. 33. Employment• During employment • implied term of trust and confidence • breach of confidence strictly irrelevant• Post employment, 3 kinds of information • not really confidential • confidential • equivalent to a trade secret• Restrictive covenants • may be imposed to restrict information further • usual rules apply
  34. 34. IP and employment
  35. 35. IP and Employment• Work belongs to employer, if: • created in course of employment • copyright, rights in performance, database right, design rights • subject to agreement to the contrary• Patents – more complicated• Trade Marks • not relevant
  36. 36. Patents and employment IInvention made in the course of ... andnormal duties invention might reasonably be expected to resultspecifically assigned dutiesduties of the employee special obligation to further employer’s interest
  37. 37. Patents and employment II• Compensation for employer owned inventions • employee invention • owner by employer • patent grant • outstanding benefit to the employer • just that the employee be compensated• Compensation for employee owned inventions • patent grant • rights have been assigned or exclusively licensed to the employer • benefit derived by employee inadequate • just that the employee should be compensated• “Fair” compensation
  38. 38. Patents and Employment III• Employee inventions • employer may still own copyright or design right in models or documents relating to the invention • could be used to prevent employee from exploiting invention• Section 39(3) • excludes copyright and design right from: • applying for a patent for the invention • performing or working the invention • applies to those claiming under the employee
  39. 39. Dealing in IP
  40. 40. Ownership• Copyright – author • LDMA – creator • sound recording: the producer • films: producer and principal director • typographical edition of a published work – the publisher • computer generated works – person making the arrangements• Designs • commissioner (if made for a commission) • employer (if made in course of employment) • first marketer (if made outside the EU)• Patents • inventor or employer
  41. 41. Co-ownershipPermission required by all owners to Each owner may exercise rights byexercise rights themselvesCopyright Trade MarkRights in performance Patentprobably: database right
  42. 42. Assignment• Formalities • in writing • signed by grantor• Assignments may be “carved up”• Future assignments • properly drafted assigns IP in future work • must usually be specifically enforceable
  43. 43. Licences• Licence v Assignment • depends on construction• Licences will usually bind successors in title • sometimes except for purchaser in good faith for valuable consideration and without notice • exclusive licencees may be in a better position• Rights to sue • exclusive licencees usually have a right to sue • but must usually join owner for anything other than interim relief • properly drafted (non-exclusive) copyright licencees may also have the right