4 - 5 G r a y ’ s I n n S q u a r e G r a y ’ s I n n

L o n d o n W C 1 R 5 A H

0 2 0 7 4 0 4 5 2 5 2 w w w . 4 - 5 . c o . u k

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Jane Lambert

Introduction to IP

1 © 2013 J E Lambert

1. Introduction to Intellectual Property 1. Basic Terminology 1.1. Intellectual property (“IP”) is the collective term for the bundle of laws that protect investment in

intellectual assets (“IA”). Some of those laws, such as the law of confidence and the law of passing off, have been developed by the judges over the years. However, most are enactments, whether regulations of the Council of Minister such as the Community Trade Mark

1 and the Community Design

2

Regulations, or statutes of the United Kingdom Parliament, such as the Patents3, Trade Marks

4,

Copyright, Designs and Patents5 or Registered Designs Acts

6.

1.2. IA are the brands, designs, technology or the works of art and literature which give one business a

competitive advantage over all others. 1.2.1. For the purpose of this discussion, a brand means the sign that identifies a supplier or his goods

or services in the market place; 1.2.2. In every day speech the noun “design” is used in two different senses: the decorative features of

an article in the sense of “designer jeans” or “designer handbag” and its functional features in the sense of the design of an engine or circuit;

1.2.3. In this context, technology refers to a new product or a new process; and 1.2.4. Arts and literature include plastic arts such as painting and sculpture, performing arts such as the

work of actors, dancers and musicians works of literature such as novels and poems but also catalogues, directories, tables and even computer programs, film, television, radio and sound recordings.

1.3. Thus, IA are books, inventions and the goodwill attached to a particular business or its goods and

services while copyright, patents and trade marks are the IP that protects them. Sometimes the terms IA and IP are used interchangeably but that is a solecism.

1.4. There is a big divide between industrial property (patents, trade marks, registered designs) and

copyright and related rights which are sometimes called disparagingly “soft IP”. IP connotes industrial property and copyright and related rights.

2. How IP Works 2.1 Patents, copyrights, trade marks and other IP laws protect investment in IA by conferring exclusive

rights on the rights holder. Some of those rights are monopolies such as those conferred by patents and registered designs. Others, such as copyright, prohibit specific acts such as copying or performing a work.

2.2. An example of a monopoly is provided by s.60 (1) (a) of the Patents Act 1977:

“Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say -

1 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.

2 Council Regulation (EC) nº 6/2002 of 12 December 2001 on Community Designs

3 Patents Act 1966 (as amended)

4 Trade Marls Act 1994 (as amended)

5 Copyright, Designs and Patents Act 1988 (as amended)

6 Registered Designs Act 1949 (as amended)

2 © 2013 J E Lambert

(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise.”

2.3. Liability under this section is strict. The patent is infringed by doing any of the above acts in relation to

the invention. Ignorance of the patent or even of the invention is irrelevant. If a product with the features of the invention is made, disposed of, offered for disposal, used or imported the requirements for liability are satisfied regardless of the knowledge or state of mind of the person who does the acts.

2.4. By contrast, s.16 (1) of the Copyright, Designs and Patents Act 1988 (“CDPA”) restricts the following acts to the owner of the copyright in a copyright work: “(a) to copy the work (see section 17); (b) to issue copies of the work to the public (see section 18); (ba) to rent or lend the work to the public (see section 18A); (c) to perform, show or play the work in public (see section 19); (d) to communicate the work to the public (see section 20); (e) to make an adaptation of the work or do any of the above in relation to an adaptation

(see section 21); and those acts are referred to in this Part as the "acts restricted by the copyright".

2.5. S.16 (2) provides that “copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright.”

2.6. Significantly, neither s.16 (1) nor (2) prohibits making a product like the copyright work. The section just

forbids making a similar work by copying. If an identical work can be made without copying or even referring to the copyright work, as can easily happen with photography or computations, then there can be no infringement. That is the main difference between the exclusive rights granted under s.60 (1) of the Patents Act 1988 and those granted by s.16 (1) of the CDPA.

3 IP Policy 3.1 IP strikes a balance between two conflicting public interests: 3.1.1. ensuring vigorous competition between suppliers of goods and services; and 3.12. incentivizing creativity and innovation. 3.2. All IP rights restrict competition which is bad for consumers if taken too far because it reduces choice

and drives up price. 3.3. On the other hand, unless suppliers have a chance to recoup their investment in creating the IA and

preferably make a profit on the side they have no reason to create the IA in the first place. 3.4. Nowhere is this balancing exercise better exercised than in the Statute of Monopolies 1623: 3.4.1. The policy of the statute is set out in the King’s declaration against monopolies:

“The King’s Declaration against Monopolies and Grants of Penalties and Dispensations; For as much as your most excellent Majestie in your Royall Judgment and of your blessed Disposicion to the Weale and Quiet of your Subjects, did, in the yeare of our Lord God One thousand six hundred and ten, publish in Print to the whole Realme and to all Posteritie, that all Graunts Monapolyes . . . are contrary to your Majesties Lawes, which your Majesties Declaracion is truly consonant and agreeable to the auncient and fundamentall Lawes of this your Realme: And whereas your Majestie was further graciously pleased expressely to command that noe Suter should presume to move your Majestie for matters of that Nature; yet nevertheles uppon Misinformacions and untrue pretences of publique good, many such Graunts have bene undulie obteyned and unlawfullie putt in execucion, to the greate Greevance and Inconvenience of your Majesties Subjects, contrary to the Lawes of this your Realme, and contrary to your

3 © 2013 J E Lambert

Majesties royall and blessed Intencion soe published as aforesaid: For avoyding whereof and preventing of the like in tyme to come.”

3.4.2. S.I abolishes monopolies:

“All Monopolies, and Grants, &c. thereof, or of Dispensations, and Penalties, declared void. All [X3Monapolies] and all Commissions Graunts Licences Charters and tres patents heretofore made or graunted, or hereafter to be made or graunted to any person or persons Bodies Politique or Corporate whatsoever of or for the sole buyinge sellinge makinge workinge or usinge of any thinge within this Realme or the Dominion of Wales, or of any other Monopolies, or of Power Liberty or Facultie to dispence with any others, . . ., are altogether contrary to the Lawes of this Realme, and so are and shalbe utterlie void and of none effecte, and in noe wise to be putt in ure or execucion.”

3.4.3. But this section is subject to a number of a number of exceptions, one of which is the

proviso by s.VI:

“Proviso for future Patents for 14 Years or less, for new Inventions. Provided alsoe That any Declaracion before mencioned shall not extend to any tres Patents and Graunt of Privilege for the tearme of fowerteene yeares or under, hereafter to be made of the sole working or makinge of any manner of new Manufactures within this Realme, to the true and first Inventor and Inventors of such Manufactures, which others at the tyme of makinge such tres Patents and Graunts shall not use, soe as alsoe they be not contrary to the Lawe nor mischievous to the State, by raisinge prices of Commodities at home, or hurt of Trade, or generallie inconvenient; the said fourteene yeares to be ccomplished from the date of the first tres Patents or Grant of such priviledge hereafter to be made, but that the same shall be of such force as they should be if this Act had never byn made, and of none other.”

3.5. The first copyright enactment, the Statute of Anne7, came into being for the opposite reason The

balance between the imperative of safeguarding competition and incentivizing creativity and innovation inclined too far towards competition There was an unrestricted free market in printing and publishing books that had depressed the trade.

3.5.1. There had been attempts to censor the press for political reasons under the Licensing Act 1662

by a system of licensing until it was repealed in 1694. 3.5.2. After the Act was repealed there was a free for all in the market which was alleged to have been

to the ”very great Detriment” of authors “and too often to the Ruin of them and their Families”.

3.5.3. S.11 of the Act conferred the following rights upon authors:

“That from and after the tenth day of April, one thousand seven hundred and ten, the author of any book or books already printed, who hath not transferred to any other the copy or copies of such book or books, share or shares thereof, or the bookseller or booksellers, printer or printers, or other person or persons, who hath or have purchased or acquired the copy or copies of any book or books, in order to print or reprint the same, shall have the sole right and liberty of printing such book and books for the term of one and twenty years, to commence from the said tenth day of April, and no longer; and That the author of any book or books already composed, and not printed and published, or that shall hereafter be composed, and his assignee or assigns, shall have the sole liberty of printing and reprinting such book and books for the term of fourteen years, to commence from the day of the first publishing the same, and no longer; and That if any

7 An Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors or Purchasers of such Copies,

during the Times therein mentioned.1710

4 © 2013 J E Lambert

other bookseller, printer or other person whatsoever, from and after the tenth day of April, one thousand seven hundred and ten, within the times granted and limited by this act, as aforesaid, shall print, reprint, or import, or cause to be printed, reprinted, or imported, any such book or books, without the consent of the proprietor or proprietors thereof first had and obtained in writing, signed in the presence of two or more credible witnesses; or knowing the same to be so printed or reprinted, without the consent of the proprietors, shall sell, publish, or expose to sale, or cause to be sold, published, or exposed to sale, any such book or books, without such consent first had and obtained, as aforesaid: then such offender or offenders shall forfeit such book or books, and all and every sheet or sheets, being part of such book or books, to the proprietor or proprietors of the copy thereof, who shall forthwith damask, and make waste paper of them; and further, That every such offender or offenders shall forfeit one penny for every sheet which shall be found in his, her, or their custody, either printed or printing, published, or exposed to sale, contrary to the true intent and meaning of this act; the one moiety thereof to the Queen's most excellent majesty, her heirs and successors, and the other moiety thereof to any person or persons that shall sue for the same, to be recovered in any of her Majesty's courts of record at Westminister, by action of debt, bill, plaint, or information, in which no wager of law, essoin, privilege, or protection, or more than one imparlance shall be allowed. II. And whereas many persons may through ignorance offend against this act, unless some provision be made, whereby the property in every such book, as is intended by this act to be secured to the proprietor or proprietors thereof, may be ascertained, as likewise the consent of such proprietor or proprietors for the printing or reprinting of such book or books may from time to time be known; be it therefore further enacted by the authority aforesaid.”

3.6. Despite their different origins the two statutes had the following in common:

3.6.1. They struck a balance between the two conflicting public interests; 3.6.2. They were exceptions to the presumption against restraint of trade; and 3.6.3. Those exceptions subsisted for a limited period only.

3.7. This creative tension has continued to subsist at a national, European and global level ever since.

4. TRIPS and the WTO Agreement 4.1. On 15 April 1994 the governments of the leading industrial nations concluded the Uruguay round of

negotiations on liberalizing world trade in goods and services by signing the Marrakech Declaration.8

4.2. The parties agreed to a set of rules for trade in goods and services that were to be administered by a

new international institution known as the World Trade Organization (“WTO”). 4.3. The Agreement establishing the WTO

9 consists of a short basic text and a number of complex annexes

one of which is Annex 1C: The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”).

4.4. TRIPS requires contracting parties to the WTO Agreement to adopt minimum legal protection in the

following areas: 4.4.1. copyright and related rights

10

4.4.2. trade marks11

8 http://www.wto.org/english/docs_e/legal_e/marrakesh_decl_e.htm

9 http://www.wto.org/english/docs_e/legal_e/04-wto_e.htm

10 §1 http://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm#1

5 © 2013 J E Lambert

4.4.3. geographical indications12

4.4.4. industrial designs

13

4.4.5. patents14

4.4.6. layout-designs (topographies) of integrated circuits

15

4.4.7. protection of undisclosed information16

4.5. Part III requires member states to:

4.5.1. provide effective but fair and equitable enforcement measures;17

4.4.2. which must include civil and administrative procedures

18 including injunctions

19 and provisional

measures for the preservation of evidence20

and border controls;21

and 4.4.3. there must be criminal penalties for counterfeiting and piracy.

22

5. Treaties 5.1. Art 2 of TRIPS refers to the following treaties:

23

5.1.1. Paris Convention (Paris Convention for the Protection of Industrial Property)

24

5.1.2. Berne Convention for the Protection of Literary and Artistic Works25

5.1.3. Rome Convention (International Convention for the Protection of Performers, Producers of

Phonograms and Broadcasting Organizations)26

5.1.4. Washington Treaty (Treaty on Intellectual Property in Respect of Integrated Circuits).

27

5.2. The Paris Convention requires contracting parties to protect inventions, trade marks and industrial

designs and suppress unfair competition. Anyone who applies for a patent for an invention in any one of the contracting states is allowed 12 months priority over everybody else in all other contracting states. Similarly, anyone who applies for a trade mark or industrial design protection in any one of those states enjoys 6 months priority in all other states. The Convention establishes a Union of contracting states which meets periodically in assembly and a secretariat known as “the International Bureau”.

5.3. The Berne Convention requires contracting states to protect on a reciprocal basis the literary and artistic works of their own citizens and those of other contracting states from copying, publication, performance or other exploitation without the author’s consent.

11

§2 http://www.wto.org/english/docs_e/legal_e/27-trips_04_e.htm#2 12

§3 http://www.wto.org/english/docs_e/legal_e/27-trips_04b_e.htm#3 13

§4 http://www.wto.org/english/docs_e/legal_e/27-trips_04b_e.htm#4 14

§5 http://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm#5 15

§6 http://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm#6 16

§7 http://www.wto.org/english/docs_e/legal_e/27-trips_04d_e.htm#7 17

Art 41 http://www.wto.org/english/docs_e/legal_e/27-trips_05_e.htm#1 18

Art 42 http://www.wto.org/english/docs_e/legal_e/27-trips_05_e.htm#2 19

Art 44 20

Art 50 http://www.wto.org/english/docs_e/legal_e/27-trips_05_e.htm#3 21

Art 51 http://www.wto.org/english/docs_e/legal_e/27-trips_05_e.htm#4 22

These terms are defined at paragraph 15.2 below. Art 61 http://www.wto.org/english/docs_e/legal_e/27-trips_05_e.htm#5 23

Art 2 (1) of TRIPS requires WTO member states to comply with arts 1 to 12, and art 19, of the Paris

Convention. Art 2 (2) provides that nothing in TRIPS shall derogate from members’ obligations under the Paris, Berne and Rome Conventions and Washington Treaty. 24

20 March 1883 http://wipo.int/treaties/en/text.jsp?file_id=288514 25

9 Sep 1886 http://www.wipo.int/treaties/en/text.jsp?file_id=283698 26

26 Oct 1961 http://www.wipo.int/treaties/en/text.jsp?file_id=289757 27

26 May 1989 http://www.wipo.int/treaties/en/text.jsp?file_id=295136

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5.4. “Literary and artistic works” is defined by art 2 as:

”every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.”

28

5.5. The Convention also establishes a Union which meets in assembly and a secretariat called the

“International Bureau. 5.6. The Rome Convention requires contracting states to protect performers (actors, dancers, musicians,

singers and other entertainers) from unauthorized taping and broadcasting and record companies and broadcasters from unauthorized reproduction and broadcasting of their broadcasts and sound recordings.

5.7. The Washington Treaty protects on a reciprocal basis the topography of semi-conductor chips. 5.8. There are other important treaties and conventions which are normally divided into four groups:

5.8.1. Protection Treaties: Treaties that supplement the protection provided by the core conventions such as the Patent Law Treaty

29, Trade Mark Law Treaty

30, WIPO Copyright Treaty

31 and WIPO

Performances and Phonograms Treaty (WPPT)32

. 5.8.2. Prosecution Facilitation Agreements: Treaties that enable simultaneous applications to be made

to more than one patent office from a single application such as the Patent Co-operation Treaty (“PCT”)

33, Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks)34

and the Hague Agreement (Hague Agreement Concerning the International Registration of Industrial Designs).

35

5.8.3. Classification Agreements: Agreements on the classification of trade marks, designs and other

intellectual assets such as Nice36

for trade marks and Locarno37

for industrial designs. 5.8.4. Regional Agreements: Co-operation agreements between groups of countries in a particular

area such as the European Patent Convention.38

6. European Patent Convention

28

http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P85_10661 29

1 June 2000 http://london-patent-box-eorg.eventbrite.co.uk/ 30

27 Oct 1994 http://www.wipo.int/treaties/en/text.jsp?file_id=294357 31

20 Dec 1996 http://www.wipo.int/treaties/en/text.jsp?file_id=295166 32

20 Dec 1996 http://www.wipo.int/treaties/en/text.jsp?file_id=295578 33

19 June 1970 http://www.wipo.int/pct/en/texts/articles/atoc.htm 34

27 June 1989 http://www.wipo.int/treaties/en/text.jsp?file_id=283484 35

2 June 1934 http://www.wipo.int/treaties/en/text.jsp?file_id=284233 36

15 June 1957 http://www.wipo.int/treaties/en/classification/nice/trtdocs_wo019.html 37

8 Oct 1968 http://www.wipo.int/treaties/en/classification/locarno/trtdocs_wo014.html 38

http://www.epo.org/law-practice/legal-texts/html/epc/2010/e/index.html

7 © 2013 J E Lambert

6.1. The European Patent Convention (“EPC”) was made on 5 Oct 1973. Contracting parties include all the member states of the EU plus several such as Switzerland, Norway and Turkey that are not.

Source: EPO

Source: EPO 6.2. The EPC establishes a patent office at Munich known as the European Patent Office (“EPO”)

39.

39

http://www.epo.org/

8 © 2013 J E Lambert

6.3. The EPO examines applications for patents for any one or more of the contracting parties and grants patents (known as “European patents”) on behalf of the contracting states. European patents are treated for all intents and purposes as equivalent to patents granted by national patent offices.

6.4. European patents granted for the UK are known as “European patents (UK)”. 6.5. Most applicants for European patents designate the UK, Germany, France, the Netherlands, Italy and

Switzerland but there is nothing to prevent an applicant for applying for a European patent for just one of those states (say Monaco) or all of them.

6.6. Once granted a European patent is enforced in the courts of the countries for which it was designated. 6.7. When it comes into force the unitary patent will designate the territories of all the member states of

the EU except Spain and Italy as a single entity for the grant of a European patent. There will also be a unitary patent court with a chamber in London. Applicants will still have the choice of a patent for individual member states of the EU or the whole of the EU less Spain and Italy.

6.8. Since European patents have the same status in contracting states as patents granted by national

patent offices the law of the contracting states have had to be harmonized with the EPC. In the UK Parliament enacted the Patents Act 1977

40 for that purpose.

7. EU Legislation 7.1. From the earliest days of the European project national IP rights operated as a barrier to trade within

the Community. The European Court of Justice (as it was then called) developed doctrines that prevented reliance upon such rights in certain circumstances but the obvious solution in the long term was to harmonize national IP laws and create new Community IP rights.

7.2. Accordingly, the Council of Ministers has adopted Directives harmonizing national laws in relation to: 7.2.1. copyrights and related rights 7.2.3. trade marks 7.2.3. registered designs. 7.3. It has also created Community trade marks, designs and plant breeders’ rights. 7.4. Over the last 40 years there have been negotiations for a Community patent and there was actually a

Community Patent Convention in 1973 which the UK signed and ratified by passing the Patents Act 1977 but the Convention and it never came into force.

7.5. The stumbling blocks were language and enforcement:

7.5.1. Spain and Italy wanted Spanish and Italian to be used in addition to English, French and German at the EPO.

7.5.2. National courts were to enforce the Community patent and there were concerns that the judiciary in some member states were just not up to the job.

7.6. The unitary patent will overcome both objections by leaving Spain and Italy out and by setting up a

unified patent court which will sit in Paris, London and Munich.

8. Copyright and Related Rights 8.1. Between 1986 and 2004 the Council of Ministers adopted the following legislation in relation to

copyright and related rights.

40

http://www.ipo.gov.uk/patentsact1977.pdf

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Date Directive/Regulation Description

16 December 1986

Council Directive 87/54/EEC

Legal Protection of Topographies of Semiconductor Products

14 May 1991 Council Directive 91/250/EEC

Legal Protection of Computer Programs

19 November 1992

Council Directive 92/100/EEC

Rental Right and Lending Right and Certain Rights Related to Copyright in the Field of Intellectual Property.

27 September 1993

Council Directive 93/83/EEC

Coordination of Certain Rules Concerning Copyright Applicable to Satellite Broadcasting and Cable Transmission

29 October 1993

Council Directive 93/98/EEC

Harmonising the Term of Protection of Copyright and Certain Related Rights

11 March 1996 Directive 96/9/EC

On the Legal Protection of Databases

22 December 1994

Council Regulation 3295/94

Measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods

20 November 1998

Directive 98/84/EC

On the Legal Protection of services based on, or consisting of, Conditional Access

25 January 1999

Council Regulation 241/1999

Measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods

22 May 2001 Directive 2001/29/EC

On the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society

27 September 2001

Directive 2001/84/EC

On the Resale Right for the benefit of the author of an original work of art (droit de suite)

29 April 2004 Directive 2004/48/EC

On the enforcement of intellectual property right

Source: Intellectual Property Office

41

8.2. Some of those directives implement treaties:

8.2.1. Council Directive 87/54/EEC on the Legal Protection of Topographies of Semiconductor Products implements the Washington Treaty;

8.2.2. Directive 2001/29/EC on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society implement the WIPO Copyright and Performances and Phonograms Treaties.

8.3. Others such as Council Directive 2004/48/EC on the Enforcement of Intellectual Property Rights

implemented TRIPs. 8.4. Yet others, such as Directive 2001/84/EC on the Resale Right implemented policies that were important

to particular member states.

8.5. The principal copyright statute in the UK is the Copyright, Designs and Patents Act 1988 (“CDPA”) which

created three IP rights: 8.5.1. Copyright 8.5.2. Rights in performances 8.5.3. Unregistered design right. 8.6. The CDPA has been amended many times often by statutory instrument to implement the above

directives.

41

http://www.ipo.gov.uk/pro-types/pro-copy/c-law/c-law-abroad.htm

10 © 2013 J E Lambert

8.7. A convenient unofficial consolidation of Parts I and II on copyright and rights in performances but not Part III unregistered design rights can be downloaded from the IPO website at http://www.ipo.gov.uk/cdpact1988.pdf.

9. Trade Marks 9.1. On 21 Dec 1988 the Council of Ministers adopted Council Directive 89/104/EEC (the First Trade Mark

Directive) to harmonize member states’ trade mark laws. 9.2. Parliament passed the Trade Marks Act 1994 to give effect to that Directive. This Act has been

modified many times. An unofficial but convenient consolidation of the Act can be downloaded from the IPO website at http://www.ipo.gov.uk/tmact94.pdf .

9.3. The First Trade Mark Directive has been repealed and replaced by Directive 2008/95/EC of the

European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks

42 which is now the harmonizing directive.

9.4. Council Regulation (EC) No 40/94 on the Community trade mark established a Community trade mark

which has effect throughout the EU unlike a European patent which designates individual countries. 9.5. That Regulation has now been repealed and replaced by Council Regulation (EC) No 207/2009 of 26

February 2009 on the Community trade mark43

(“the CTM Regulation”). 9.6. The CTM Regulation establishes a Community trade mark registry at Alicante known as OHIM (Office for

Harmonisation in the Internal Market (Trade Marks and Designs)44

which examines applications for trade marks , issues them for the whole EU and resolves disputes between examiners and applicants and between applicants and registered proprietors and third parties.

10. Designs 10.1 As noted at paragraph 1.2.2. above we refer to design in two senses in everyday speech: 10.1.1. functional design as in the shape, layout or configuration of an engine; and

10.1.2. ornamental design as in the appearance of an item of furniture or clothing. 10.2. Most countries protect functional designs as a type of short term and sometimes unexamined patent

known as “a utility model” or by a general law of unfair competition. 10.3. Until 1989 the UK and most other common law countries protected functional designs indirectly by

artistic copyright but this created the anomaly that a drug that might cost millions to develop was protected by patent law for 20 years but its container was protected for the life of the designer plus 50 years. This anomaly was abolished by s.51 (1) of the CDPA.

45

10.4. Part III of the CDPA created a new IP right called unregistered design right which exists only in the UK

and some of its dependencies.

42

OJ 8.11.2008 L 299/25 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2008:299:0025:0033:EN:PDF 43

OJ 24.3.2009 L 78/1 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:078:0001:0042:EN:PDF 44

http://oami.europa.eu/ 45

S.51 (1) provides: “It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.”

11 © 2013 J E Lambert

10.5. The shape or configuration of an article or part of an article is protected against copying for up to 15

years (or 10 years) if a product made to the design is marketed. 10.6. The IPO has not consolidated Part III of the CDPA but the whole Act may be consulted at

http://www.legislation.gov.uk/ukpga/1988/48/contents. 10.7. Most countries protect ornamental designs by a system of design registration not unlike a patent. In

the USA such IP right is actually called a “design patent”. 10.8. The current statute is the Registered Designs Act 1949.

46 It has had major overhauls in 1989 when the

CDPA came into force and again in 2001 to give effect to the Designs Directive (Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs)

47

which harmonized EU design law. There will soon be a third with the Intellectual Property Bill. 10.9. On 12 Dec 2001 the Council adopted Council Regulation (EC) No 6/2002 of 12 December 2001 on

Community designs48

which established a design law for the whole EU. The regulation created two IP rights:

10.9.1. registered Community designs; 10.9.2. unregistered Community designs. 10.10 Designs that are new or have individual character can be registered at OHIM as registered Community

designs or at any of the national IP offices as registered designs. 10.11. Designs that could be registered as registered Community designs are protected against infringement

resulting from copying throughout the whole EU for up to 3 years. 10.12. Thus, we have in the UK a very complex design regime: 10.12.1. Community design registration; 10.12.2. national design registration; 10.12.3. unregistered Community designs; 10.12.4. national unregistered design right; and 10.12.5. indirect protection of two dimensional objects by copyright.

11. Breach of Confidence 11.1. This is entirely judge made law. 11.2. The basic principle was set out by Megarry J in Coco v A N Clarke (Engineers) Ltd [1967] RPC 41, 47:

“In my judgment, three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself, in the words of Lord Greene, MR in the Saltman case on page 215, must ‘have the necessary quality of confidence about it.’ Secondly, the information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorized use of that information to the detriment of the party communicating it.”

11.3. The law of confidence can protect secret commercial or technical information indefinitely.

46

http://www.ipo.gov.uk/regdesignactchanges.pdf 47

OJ L 289 , 28.10.1998 P. 28 – 35 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:31998L0071:EN:HTML 48

http://oami.europa.eu/ows/rw/resource/documents/RCD/regulations/62002_en_cv.pdf

12 © 2013 J E Lambert

12. Passing off 12.1. This is another common law IP right. 12.2. The basic principles were set out by Lord Oliver in Reckitt and Colman Products Ltd v Borden Inc and

Others: 49

“The law of passing off can be summarised in one short general proposition - no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”

13. Institutions 13.1. The Intellectual Property Office (“IPO”)

50 is in Newport, Gwent with a small London office. It is an

executive agency of the Department of Business, Innovation and Skills. Its primary function is to register patents, trade marks and designs. Its chief executive officer is the Comptroller-General of Patents, Designs and Trade Marks (“the Comptroller”). In trade mark and registered design matters he is referred to as “the Registrar”.

13.2. The Comptroller exercises executive and judicial functions. His executive function is to examine patent

and trade mark applications. That role is exercised by examiners. His judicial function is to adjudicate disputes between applicants and examiners and between applicants or proprietors of registered rights and third parties. That function is performed by officials known as “hearing officers.”

13.3. OHIM (Office for Harmonization in the Internal Market) at Alicante registers Community trade marks

and registered Community designs. Like the IPO it exercises executive and judicial functions. Its executive functions are performed by a number of Divisions and its judicial functions by Boards of Appeal. OHIM has five official languages: English, French, German, Spanish and Italian.

13.4. The EPO in Munich is responsible for examining and granting European patents on behalf of the

governments of the contracting parties. It also exercises executive functions through various Divisions and judicial functions through Boards of Appeal. Its official languages are English, French and German. The EPO is the smallest of the five leading patent offices of the world. The other leading patent offices

49

[1990] 1 WLR 491, [1990] RPC 341, [1990] WLR 491, [1990] 1 All ER 873, [1990] UKHL 1 50

http://www.ipo.gov.uk/

13 © 2013 J E Lambert

are the United States Patents and Trade Mark Office, Japan Patent Office, State Intellectual Property Office of China and the Korea Intellectual Property Office of South Korea.

13.5. The World Intellectual Property Organization (“WIPO”)

51 is the UN agency responsible for co-ordinating

intellectual property policy. It is the custodian of most of the world’s IP Treaties and Conventions. It is also the clearing house for applications under the Patent Co-operation Treaty, the Madrid Protocol and the Hague Agreement. It provides arbitration, mediation and other dispute resolution services including domain name dispute resolution services for generic and many country code top level domains. WIPO developed from the International Bureau established by the Paris and Berne Conventions. Those International Bureaux merged in 1893 to form BIRPI (United International Bureaux for the Protection of Intellectual Property). WIPO became a specialist UN agency on the 26 April 1974 the anniversary of which is World Intellectual Property Day. The WIPO is based in Geneva with a satellite office in Singapore.

14. Obtaining Intellectual Property Rights 14.1. Intellectual property is divided into two categories: 14.1.1. Rights that have to be registered: patents, trade marks, registered designs

14.1.2. Rights that come into being upon the fulfilment of certain conditions: copyright, unregistered design right, rights in performances, database right, unregistered Community designs, obligations of confidence and passing off.

14.2. The process of applying for a patent, trade mark or registered design is sometimes called “prosecution”. 14.3. Patent prosecution is undertaken by professionals known as patent attorneys or patent agents. They

usually have a first or research degree in natural sciences, engineering or technology and are trained in intellectual property law. Patent attorneys can appear as advocates and conduct litigation in court, the IPO and other tribunals and are eligible for judicial office. They are regulated by the IP Regulation Board (“IPReg”)

52. Their representative body is the Chartered Institute of Patent Attorneys (“CIPA”).

53

14.4. Trade mark applications are prosecuted by professionals known as trade mark attorneys or trade mark

agents. Many but by no means all patent attorneys are also trade mark attorneys. They are also regulated by IPReg and their professional body is ITMA (Institute of Trade Mark Attorneys).

54 Like

patent attorneys they have rights to conduct litigation and appear as advocates in their specialist areas. 14.5. In order to obtain a patent an inventor or patent attorney on his behalf has to satisfy the examiner that

his invention is: 14.5.1. new 14.5.2. involves an inventive step 14.5.3. is useful, and 14.5.4. does not fall within any excluded category. 14.6. S.14 (2) of the Patents Act 1977 requires an applicant to file with the IPO:

“(a) a request for the grant of a patent; (b) a specification containing a description of the invention, a claim or claims and any drawing

referred to in the description or any claim; and (c) an abstract;”

14.7 The specification is an important document because it teaches the world how to make or use the invention and sets out the boundaries of the monopoly that is sought.

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http://wipo.int/portal/index.html.en 52

http://ipreg.org.uk/ 53

http://www.cipa.org.uk/ 54

http://www.itma.org.uk/

14 © 2013 J E Lambert

14.8. The claims, which are usually set out in numbered paragraphs, list the features or integers of the

invention . 14.9. The examiner considers whether there is anything close to the invention. If he finds something that

conflicts with the application he will bring it to the attention of the attorney who may redraft his application to meet the objection. The application is then published so that third parties can review and, if so advised, challenge it. Unless the examiner can think of a good reason for rejecting the application it will proceed to grant.

14.10. A patent can be revoked after grant. 14.11. Trade mark applications are similarly examined. 14.12 There is no substantive examination of applications for the registration of design s at OHIM ir in the IPO.

15. Enforcing Intellectual Property Rights 15.1 Most IP rights are enforced by civil proceedings in the High Court or County Court. 15.2. Bootlegging, counterfeiting and piracy (that is to say infringing rights in performances, trade marks and

copyright on an industrial scale) is an offence punishable by up to 10 years imprisonment, an unlimited fine or both.

15.3. Intellectual property proceedings are allocated to the Chancery Division, the Patents County Court or to

county courts with a chancery district registry attached (that is to say, Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle and Preston).

15.4. Patents, registered design and registered Community design, plant breeders’ rights and semiconductor

topography cases are assigned to a specialist court within the Chancery Division known as “the Patents Court” or the “Patents County Court” both of which sit in the Rolls Building.

15.5. The Patents County Court has a multitrack and small claims track. 15.6. Intellectual property litigation is governed by CPR Part 63

55 and the Part 63 Practice Direction.

56

15.7. Guidance on Patents Court procedure is provided by the Patents Court Guide.

57 There is also a Patents

County Court Guide58

and a Guide to the Small Claims Track of the Patents County Court.59

16. Licensing 16.1 Licences may be contractual, gratuitous or compulsory and express or implied. 16.2. Contractual and voluntary licences may be:

16.2.1. exclusive: a complete transfer of rights from the licensor to the licensee including the right to sue;

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http://www.justice.gov.uk/courts/procedure-rules/civil/rules/part63 56

http://www.justice.gov.uk/courts/procedure-rules/civil/rules/part63/pd_part63 57

http://www.justice.gov.uk/downloads/courts/patents-court/patent-court-guide.pdf 58

http://www.justice.gov.uk/downloads/courts/patents-court/patents-court-guide.pdf 59

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15 © 2013 J E Lambert

16.2.2. sole: the exploitation of the IP right is shared by the licensor and a single licensee; and 16.2.3. non-exclusive: the licensor reserves the right to grant as many licences as he wishes.

16.3. For most IP rights exclusive licences have to be granted in writing. All others can be oral or implied. 16.4. Compulsory licences are imposed upon patentees who do not exploit their inventions in the public

interest. The scope for compulsory licensing has been limited by TRIPS, 16.5. Licences of right are offered by patentees in exchange for a reduction of renewal fees. 16.6. The term licence of right also applies to the right of a third party to apply for a licence to make articles

to a design on terms settled by the Comptroller if not agreed in the last 5 years of the design right term. 16.7. The terms by which groups of IP owners, such as collecting societies, license their rights are regulated

by the Copyright Tribunal.

17. Further Reading 17.1 The main law reports for IP cases from courts and tribunals around the world are the Reports of Patent

Cases (“RPC”)60

and Fleet Street Reports (“FSR”).61

17.2. Two excellent publications are the European Intellectual Property Review (“EIPR”)

62 and the Journal of

Intellectual Property Law and Practice (“JILP”).63

17.3. The main practitioners’ works are: 17.3.1. Terrell on Patents (17

th ed)

64

17.3.2. Kerly on Trade Marks (15th

ed)65

and Morcom’s “Modern Law of Trade Marks” (4th

edition)66

17.3.3. Laddie Precott and Vitoria “Modern Law of Copyright and Designs” (4

th ed)

67 and Copinger and

Slone James on Copyright (16th

edition)68

17.3.4. Russell Clarke and Howe on Industrial Designs (8

th ed)

69.

17.4. Recent Patents Court, Patents County Court and Chancery cases are on http://www.bailii.org/ 17.5. Recent decisions of the IPO hearing offices are on the IPO website. So, too, is the Manual of Patent

Practice which is an excellent text book. 17.6. Recent case law from the EPO Boards of Appeal is available from the EPO website. 17.7. Similarly, useful material on Community designs and trade marks is available from the OHIM site.

60

Oxford Journals 61

Sweet & Maxwell 62

Sweet & Maxwell 63

Oxford Journals 64

Sweet & Maxwell 65

Sweet & Maxwell 66

Lexis-Nexis 67

Lexis-Nexis 68

Sweet & Maxwell 69

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