Intellectual Property Law: Nutshells Set 1

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The main rights under Intellectual Property include...?

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1) Patents

2) Breach of Confidence

3) Trade Marks

4) Passing Off

5) Copyright and Moral Rights

6) Design Law

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Patents?

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1) Novel, industrially applicable inventions capable of an inventive step

2) Statutory IPR obtained via application to the patent office

3) Up to 20 years duration

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Breach of Confidence?

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1) Government, personal, industrial or trade secrets possessing the necessary quality of confidence

2) Equitable action arising via contract or the confidentiality of a relationship

3) Indefinite, but lasting until the information is released into the public domain

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Trade Marks?

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1) Distinctive signs capable of being represented graphically

2) Statutory IPR obtained via application to the Trade Marks Division of the Patent Office

3) May be renewed indefinitely

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Passing off?

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1) Protects against misrepresentations damaging the goodwill of an enterprise

2) A tort

3) Indefinite, but lasting until enterprises goodwill ceases

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Copyright?

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1) Literary, musical and artistic works, sound recordings, films, broadcasts etc

2) A statutory IPR which arises automatically

3) Varies. Maximum life of author plus 70 years.

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Moral Rights?

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1) Right to paternity and integrity, right to object to false attribution in relation to certain copyright works. Right for privacy for photographs and films

2) Established by statute, personal to author, arise automatically

3) P&I: last for same period relevant to copyright. Right to object: 20 years from death of person subject to false attribution

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Unregistered Design Right?

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1) Functional Design of Articles

2) Statutory IPR which arises from recording of design

3) Up to 15 years

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Registered Design?

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1) Aesthetic or functional aspects of the appearance of the whole or part of the product

2) Application to the Designs Registry of the Patent Office required

3) Up to 25 years

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Financial compensation for losses caused by infringement?

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May take the form of damages or an account of profits

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Account of profits?

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Equitable remedy involving the award to the right-holder of the profits that the defendant has made an infringement. Where it exceeds a normal damages award, AOP prevents unjust enrichment.

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What is Account of profits available for?

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1) Patent Infringement

2) Action for breach of confidence

- Peter Pan v Corsets Silhouette 1963

3) Trade mark infringement

- My Kinda Town v Soll 1982

4) Copyright infringement

5) Infringement of design right

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Can a right-holder get both damages and account of profits?

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No. Potton v Yorkclose 1990

AOP is a discretionary remedy. Where they have a choice, it should be an informed one. Island Records Ltd v Tring International Plc 1995

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How do you calculate an award under Account of Profits?

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Celanese International Corp v BP Chemicals 1999

1) Ascertain total profits possible form infringers activities

2) Total profits should be apportioned to establish profit which attributed to infringement

3) Resultant figure should be adjusted to reflect nature of parties cases

4) Deduct tax paid

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Damages?

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Most common pecuniary remedy and available for all branches of IP. May also have punitive damages (though rarely awarded)

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What are the non pecuniary remedies?

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1) Declaration

2) Delivery Up and Destruction

3) Court order for a party to reveal relevant information

4) Injunction

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Declaration?

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Declaratory relief (declaration of infringement or of non-infringement) is descretionary

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Delivery up and Destruction?

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The court will order the delivery up of the infringing articles or documents for destruction, or will require their destruction under oath from the defendant. Delivery Up may also be awarded in interim proceedings.

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Court order for relevant information?

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Under Civil Procedure Rules (31) could be used to obtain name and address of supplier or importer. Useful as can reveal those directly responsible for infringement.

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Injunction?

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Prohibitory. Used to prevent initiation/continuation of act.

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What are the Interim Remedies?

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1) Interim injunction

2) Ex-Parte Orders

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When should an Interim Injunction be granted and what case was this set out in?

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1) Claimant should have arguable case (except in boc - higher standard)

2) Damages would not provide an adequate remedy

3) Courts should consider balance of commercial convenience. If equal, should act to preserve status quo. BOC - privacy v freedom of expression

American v Cyanamid v Ethicon

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Ex Parte Orders?

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Proceedings without notice.

1) Search Orders

2) Freezing injunction

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Search order?

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Civil Procedure Rules.

Must be likelihood of real and serious damage, clear evidence of docs/property at infringers site, and serious possibility they will be destroyed.

must be carried out on business premises during business hours by independent experienced solicitor

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Freezing Injunction?

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Freezes assets of alleged infringer

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What is a Patent?

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Governmentally awarded monopoly rights over new inventions that are industrially applicable.

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What are the criteria that must be satisfied for a patent?

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1) Restriction to subject matter

2) Novelty must be present

3) Inventive step must be present

4) Must be capable of industrial application

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Obtaining a patent?

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Territorial right; need patent for each jurisdiction you want it to apply in

1) National route (UK Patent office/UKIPO)

2) European Patent convention (EU Bundle)

3) Patent Cooperation Treaty

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Things not inventions : "As Such"

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1) Abstract, aesthetic, non technical

2) Discoveries, Scientific theories, Math. Methods

3) Literary, Drama, Music, Artistic works

4) Computer programs USUALLY

5)

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Discoveries, scientific theories, mathematical methods?

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Excluded from patents.

Ex:

Find a new compound in the human body = discovery

Use new process to isolate it = Invention and PATENTABLE

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Computer programs?

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Patents can be given for software programs

1) Technical means uses to solve a problem or produce a result?

2) Did it produce a technical result?

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Four step test proposed by patent office?

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1) Properly construe the claim, which analyses the scope of the potential monopoly before moving on to decide if it's excluded

2) Identify the actual contribution. See if the patent application adds to human knowledge.

3) Falls solely within the excluded subject matter

4) Actual or alleged contribution is actually technical in nature

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Importance of Astron Clinica Ltd 2008 case?

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Aligned UK and European patent offices, overturned practice of rejecting computer program patents.

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Non-patentable inventions?

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1) Inventions contrary to public policy or morality

2) Certain biological subject matter

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Inventions contrary to public policy or morality?

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E.g. grossly obscene matter/ incitement to riot or engage in criminal acts

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Certain biological subject matter?

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1) animal or plant varieties/essential macrobiotic processes

2) formation and development of the human body and mere discoveries of elements of the human body

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Novelty?

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Not previously made available to the public