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Presentation given at Open GLAM Legal Clinic @ the Wellcome Collection, 24.11.11
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INTRODUCTION TO IPFrancis Davey
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)
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
UK intellectual property• Patents • Copyright
• Performer's property rights• Database right
• Designs• Registered designs• Design right• (semiconductor topography)• Community designs (registered and unregistered)
• Plant breeders' rights• Trade Marks
Is registration a requirement?Unregistered Registered
CopyrightPerformer's property rightsDatabase rightDesign right(semiconductor topography designs)Community (unregistered) design right
Community registered design rightRegistered designPatentPlant breeders' rightTrade Mark
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)
DurationCopyright, except: 70 years
broadcasts, sound recordings and rights in performance
50 years
typographical editions of published works 25 years
Database right 15 years
Design right 15 years
(semiconductor topography) 10 or 15 years
Community unregistered design 3 years
Registered designs (UK + Community) 25 years
Patent 20 years
Plant breeder’s rights 30 years (potatoes, trees and vines)25 years otherwise
Trade Mark Until revoked
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
Patents
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
European Patent Organisation
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)
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”
Copyright
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
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
Copyright: other works• Films• Sound recordings• Broadcasts (and cable programmes)• Typographical editions of published works
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
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
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
More exceptions....
Visually impaired 3
Education 6
Libraries 11
Public administration 6
Other 28
Total 54
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
Database right• Substantial investment
• obtaining• verifying• presenting
• Infringed by• extraction• re-utilisation
• Substantial part• repeated insubstantial acts may become substantial
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
Designs
Designs: varieties
Registered Unregistered
Europe community registered design25 years
community design3 years
United Kingdom registered design25 years
design right15 years
Designs: nature of a design
Registered Unregistered
EuropeNovel
AppearanceNovel
Appearance
United Kingdom
NovelAppearance
Original Shape
Design: rights• Rights
• making an article• making a design document
• Infringement • for unregistered designs – requires copying• for registered designs – absolute
Trade Marks
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
Trade Mark: infringing useMark Goods or
Services markedAdditional requirement
identical identical
similar identical likelihood of confusion
identical similar
identical or similar different unfair advantage or detrimental to mark
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
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
IP and employment
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
Patents and employment IInvention made in the course of ... and
normal duties
invention might reasonably be expected to result
specifically assigned duties
duties of the employee special obligation to further employer’s interest
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
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
Dealing in IP
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
Co-ownershipPermission required by all owners to exercise rights
Each owner may exercise rights by themselves
CopyrightRights in performanceprobably: database right
Trade MarkPatent
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
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