INTELLECTUAL PROPERTY LAW NOTES
1. Introduction to IP
What is IP?
- Intangible Property (legal property rights out of either intellectual creative efforts or
commercial reputation and good will)
- Rights to stop others (require conversion of product of brain into financial value)
- IP litigation
- Commercial value of IP
IP Audit:
1. IP rights available – identify IPRs
2. Why rights available – look at conditions for existence of IPRs
3. Protection provided – what each right protects? What it allows the owner to do?
4. Steps (if any) required to gain rights. How is it obtained? How long it lasts?
Registered rights = right to be unique, monopolistic
Unregistered rights = right not to be copied
(therefore, registered rights tend to be stronger than unregistered)
Pg 220 summary tables
Copyright **Always consider first
= right to prevent copying of creative expression (tangible expression of ideas)
e.g. writing (in emails), art, music, architecture, film and computer software
• No registration, arises automatically on creation of work
• Copyright protects literary, dramatic, musical and artistic works, as well as sound
and film recordings, broadcasts and typographical arrangements.
• Tangible expression is protected by CR – no CR in an idea, just the material form
• Threshold for artistic works is low (no requirement for artistic quality, just a
minimum amount of intellectual effort)
• A qualifying person who by their skill and labour creates an original work will
enjoy copyright protection for a defined period of time.
• In the majority of cases copyright lasts for 70 years from the end of the calendar
year of the author's death, although other lessor periods apply for some works
• Risk of losing CR case because judge might disagree with client’s opinion on
similarity
à therefore often used as a background right on internet cases
Instead get ISPS to block sites, go after distributors, make headlines
What is protected? ‘Artistic output’; creative expression
What benefit is there? Preventing copying
How is it obtained? Arises automatically (no registration)
How long does it last? 70yrs from death (usually)
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,Trademarks (should always think of passing off too)
= brand name or other mark of trade origin
e.g. Coca-cola for soft drink
BMW for cars and motorcycles
Levi’s for jeans
• Best protected by registration (UK-IPO or EUIPO) – gives statutory rights under Trade
Marks Act 1994
• TM rights perpetual and must be renewed every 10 yrs
• To register TM, it must:
- Be capable of being represented in manner enabling competent authorities and
public to determine clear and precise subject matter of protection
- Not be devoid of distinctive character or be descriptive in relation to goods or
services for which protection is sought
- Not have become customary in the trade, or generic
- Not be morally objectionable
- Not fall within number of specifically excluded TMs
- Not conflict with earlier rights owned by 3rd parties
• If trademark not registered, can only be protected by the law of passing off
• Application process takes 4-6 months UK/6-8 months EU
• Current fees in UK (£200 paper/£170 online and £50 for each additional class) and
EU (€850 for first class, €50 for second class and €150 for each additional class
online/€1000 first, €50 second, €150 each additional paper)
What is protected? A brand name and/or a logo for goods or services (also, in
limited circumstances, shapes)
What benefit is there? Exclusive right to the use of the trade mark with statutory
protection
How is it obtained? Registration
How long does it last? Indefinitely
Passing Off (common law tort)
= Enables business to defend itself from someone who is trying to take unfair advantage of
the trading reputation of that business
e.g. using its name or selling goods in similar packaging
• To rely on passing off against 3rd parties, TM owner must:
o Have built up goodwill in the TM; AND
o Be able to show a 3rd party’s use of that TM would constitute a
misrep and would cause them damage.
What is protected? Goodwill e.g. a logo or a name or associated ‘get up’
What benefit is there? Gives protection against unfair imitation
How is it obtained? Arises automatically (no registration)
How long does it last? Indefinitely
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,Design rights
= can be registered if relating to appearance of an object (but not if solely to its technical
function)
Registration gives statutory protection for up to 25 yrs and must be renewed every 5yrs.
Can also be UDR (typically weaker, arguably cheaper, quicker)
• Protect “the appearance of the whole or part of a product resulting from the
features of, in particular, the lines, contours, colours, shape, texture or materials of
the product or its ornamentation”
• To register design, it must both:
- Be novel AND
- Have individual character
• Must not fall within following specific exclusions to protection:
- Where design is dictated solely by technical function
- Where design subsists in features necessary so that it can connect to another
product(s)
- Where design is contrary to public policy or morality
• Registration process takes one month/one week
• Current fees are in UK (£50 online/£60 paper)
• If 2D can only be RDR
Can also be unregistered (only needs to be original – up to 15 yrs)
If 2D or 3D can be URDR
REGISTERED DESIGN RIGHT
What is protected? New designs for products
What benefit is there? Monopoly right to use and benefit from the design
commercially
How is it obtained? Registration
How long does it last? 25 yrs from registration (maximum)
UNREGISTERED DESIGN RIGHT
What is protected? 3 D shapes of articles
What benefit is there? Prevents commercial copying of articles
How is it obtained? Arises automatically (no registration)
How long does it last? 10 yrs in most cases (maximum of 15)
Patents (think of confidentiality as alternative)
= protection for an invention (commercial IP right) – right to operate with limited
competition
e.g. wonder drug to treat cancer, better mousetrap, DNA cloning
Registered right at the Patents Office (in UK or Europe)
èRight to monopoly of up to 20 yrs over the technology revealed in the patent (after this
period, invention is then public property and anyone can use it)
DOES NOT guarantee that the product will be successful
• To patent, invention must:
a) Be novel
b) Involve an inventive step
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, c) Be capable of industrial application
• CANNOT patent:
- Scientific/mathematical discoveries, theories or methods
- Literary, dramatic, musical or artistic works
- Ways of conducting certain acts e.g. playing a game or doing business
- Animals or plant varieties
- Methods for medical treatment or diagnosis
- Design or presentation of information
• Application process takes 4-5 yrs
• Costs over £20,000 for worldwide protection for a very simple invention
• Current fees in UK (£512.50 paper/£385 online) and EU (€4,695 paper/€4,565 online)
What is protected? New invention or process
What benefit is there? Monopoly right to apply the technology
How is it obtained? Registration
How long does it last? 20yrs from application
Confidentiality
• Potentially suitable alternative to patenting
• Protected by law of confidence if information:
- Has necessary quality of confidence about it
- Is disclosed in circumstances importing an obligation of confidence
e.g. Coca-Cola recipe
What is protected? Secret information
What benefit is there? Protects against unauthorised disclosure
How is it obtained? Arises automatically (no registration)
How long does it last? Indefinitely
Domain Names
• Check register of domain names and choose how long to register for (1-10 yrs)
Registration:
- Intellectual Property Office (UK)
- Office for the Harmonisation of the Internal Market (EU)
Database right
What is protected? Collections of information
What benefit is there? Protects against unauthorised copying
How is it obtained? Arises automatically (no registration)
How long does it last? 15yrs from creation or revision of database
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,TRIPS (Agreement on Trade Related Aspects of Intellectual Property Rights)
o WTO members are subject to this
o Applies basic international trade principles to MSs regarding IP rules
o Establishes minimum standards for availability, scope and use of IP
o Does not address new developments like digital CR and the internet
See textbook for Singapore Treaty on Law of TMs (pg 222), Patent Law Treaty (pg223),
Patent Cooperation Treaty System (pg223), Madrid System for international registration of
marks (pg224), the Hague System (pg 225)
Artificial Intelligence: Navigating the IP Challenges
e.g. machine learning, speech and audio recognition, computer vision and emotion
recognition
IP Implications
• Potential for AI to engage in acts of content creation
• AI systems develop decision-making algorithm and rules to try and improve future
decisions
• Large volumes of data are input to detect patterns and create algorithms
Contractual Issues
• Commercial agreements to develop AI systems will need to take account of all the
usual issues associated with developing software incl. ownership and licensing
• Collaboration will result in AI supplier using data to develop a solution – if supplier
wants to offer this to others could be hindered if that organisation obtains rights in
the IP that is developed as part of the collaboration
• Questions of who owns any CR, database right or other IP rights in baseline data
about customers
à All depends on contractual terms and the parties’ bargaining power.
Underlying Ownership
• Problems arise where general purpose AI system developed by one entity and
subsequently adapted by second entity for specific purpose by training – who owns
the IP rights in the resulting trained system?
• To determine:
o CR – is there authorship (human author) or if not, computer-generated?
o Patent – who came up with the inventive concept?
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, 1. Intro to IP – Prep and WS Tasks
PREP TASK 1: DIFFERENT IPRS AND ADVISING CLIENTS ON APPROPRIATE WAYS TO PROTECT
PRODUCTS
TRADEMARKS
“Signs or symbols capable of indicating origin of goods and services and distinguishing those from
those of another origin”
1. TMs are classified into certain groups or classes. Which classes relate to TMs for goods, and
which relate to TMs for services?
- Goods = Classes 1-34
- Services = Classes 35-45
* things within same class are not identical/interchangeable
2. Which class includes fireworks?
- Class 13
3. Could you register a state’s national flag as a TM?
- No, certain signs are unacceptable as TMs and cannot be registered – it’s a protected
emblem
4. If you own a TM, are you automatically entitled to the corresponding domain name?
- No, a domain name is entirely different and just because you have a TM doesn’t entitle
you.
- Though if you have a TM and someone else is using the domain name and trading in
that way, will have IP right to restrict their use of it.
PATENTS
1. How much does it cost to file a “request for a grant of patent” online?
- No fee is due immediately.
- Ultimately £75 (reduced to £60 if paid straight away)
2. According to a 2005 study, over half the value of all patents lay in less than what % of them?
- 1% - huge number of patents of little or no value out there
3. According to the IPO, what other ways are there of protecting an invention, other than
patenting it? Why do you suggest that applying for patent in some situations may be
inadvisable?
- May be possible for registered design to be applied for depending on product nature
- Law of confidence and confidentiality are usually used
- Be first to take invention to market and focus on forming strong brand and establish
market share ahead of competitors
- Patents are expensive to get and enforce, and time consuming
- Inventor may not be able to sell enough to justify the expense
- Plus patent has a time limit
4. What is a non-disclosure agreement and what’s its purpose?
- NDA is another term for a confidentiality agreement – inventors often insist on people
signing this
- Patent application can be defeated if details of the invention have become available to
the public before the patent application is made
- Often the party that comes up with the invention will need help of a third party
manufacturer – inventors are reluctant to disclose details of their invention without a
confidentiality agreement in place
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