Intellectual Property And The Law

A Straightforward Guide

• Publisher: Straightforward Publishing Digital
• Year: 2015
• ISBN:
  9781847166333
• Topic: Droit
• Subtopic: Droit de la propriété intellectuelle

This latest publication in the Straightforward Guides Series, Guide to Intellectual property and the Law is a concise guide to the legal framework governing intellectual property. The book is comprehensive and covers all areas relating to copyright, patents etc. It will prove invaluable to all those who seek to understand more about this complex area, whether it be layperson or student.

1

Intellectual Property Introduction and Summary

Intellectual property is an area of law which is complex and rapidly changing. Intellectual property rights is the overall term used to describe the various rights that afford protection to creative and innovative endeavour. There are a number of main rights, described in more detail throughout the book, including the following:

•    Patents. This is a statutory property right that gives the patent holder the exclusive right to use certain inventions. A patent can be obtained by application to the Intellectual Property Office. Many people or organisations will use an agent to obtain a patent but it can be done on a do-it-yourself basis more cheaply. A patent will typically last up to twenty years.

•    Trademarks. A registered trademark is, like a patent, a statutory right and gives the exclusive right to use a distinctive sign in relation to either a product or service. The sign can be a name, a symbol, aroma, jingle etc. A trademark can be obtained via an application to the Intellectual Property Office. A trademark may be renewed indefinitely. Again, agents are used in the process but it can be carried out on a DIY basis.

•    Copyright and moral rights. Copyright is a statutory right subsisting in original literary, dramatic, musical and artistic works and in sound recordings, films, broadcasts, cable programs and the typography of published editions. Owners of copyright will have economic rights within their works, including the important right to prevent unauthorised copying and adaptation. Moral rights are rights that authors retain in their works, irrespective of who owns the economic rights. Copyright varies according to its life span, usually the life of an author plus seventy years. Moral rights are personal to the author and arise automatically. EU copyright protection on sound recordings has been extended from 50 years to 70 years after a work’s release. This applies only to records released after 1963. However, the directive does not apply to 50 year old recordings not yet released.

•    Breach of confidence. The action for breach of confidence can be used to protect certain categories of confidential information, such as commercial information against unauthorised use or disclosure. The origins are contractual or equitable and the duration is indefinite or until the information is released into the public domain.

•    Passing off. Goodwill is a form of property constituting the markets perception of the value and quality of a business and its products. This can be protected against interference or damage by what is known as ‘passing off’. This is a tort that may be used in preventing a trader from making misrepresentations, which damages the goodwill of another trader. Again this is indefinite but ceases when the goodwill of a particular enterprise ceases.

•    Design law. Certain aspects of the appearance of articles, aesthetic or non-aesthetic are protected via a combination of the registered design system, the design right (an unregistered design system) and aspects of copyright law. A registered design is the exclusive right to use certain features of a range of products. A design right is the right to prevent the copying of aspects of the shape or configuration of an article, such as a certain type of car. An unregistered design right will last up to fifteen years. A registered design, which can be granted upon application to the Intellectual Property Office, lasts up to twenty years.

Infringement of Copyright

The holder of an intellectual property right has to be in a position to enforce his or her rights if there is found to be an infringement of the IPR. In the main, civil remedies are available. However, certain infringements constitute a criminal offence. Remedies available after trial are known as final remedies. Interim remedies are also available, which are remedies awarded during trial. In relation to final remedies, financial remedies may take the form of damages or an account of profits.

Account of profits

This is a remedy involving the award to the right holder of the profits that the defendant has made from the infringement. This is a discretionary remedy and the right holder cannot gain both damages and account of profits. Where a right holder has the choice of electing to go for account of profits, that choice should be an informed one. In the case, Celanese International Corporation v BP Chemicals (1999), guidance on calculation of awards under accounts of profit was given, as follows:

a)  The first step is to ascertain the total profits possible from the activities of the infringer.

b)  The total profits should be apportioned to establish the ballpoint profits (profit attributable to the infringement)

c)  The resultant figure should then be adjusted to reflect the nature of the parties cases and:

d)  Any tax paid should then be deducted.

Damages

This is the most common remedy for infringement. Usually they are based on lost profits or a royalty basis. The general rule is that they should be compensatory. They should put the party back in the position they would have been if the infringement had not occurred. Aggravated damages may also be available.

Non-pecuniary remedies

As follows:

a)  Declaration. Declaratory relief (a declaration of infringement or of non-infringement) is discretionary.

b)  Delivery up and destruction. In order to ensure that injunctions are properly effective, the court has the power to order delivery and destruction of infringing articles or require the defendant to destroy articles.

c)  Discovery of names. This is a discretionary disclosure, known as a Norwich Pharmacal order (after Norwich Pharmacal 1974) which is made to an innocent third party requiring them to reveal the names of those that are ultimately responsible for the infringement.

d)  Injunction. This is a court order at the court’s discretion.

Interim remedies
Interim injunctions

An interim injunction is usually the most effective remedy for an IP right holder. To gain an interim injunction, the claimant should have an arguable case. Also, it should be seen that damages would not provide an adequate remedy. The courts should consider the balance of commercial convenience. If this is equal, the courts should act to preserve the status quo.

Ex parte orders

Inter parte proceedings (now known as proceedings on notice) are proceedings where the defendant has been served and has sufficient time to prepare his defences. In contrast, ex parte hearings (known as proceedings without notice) are hearings where only one side is represented. This party is under a duty of full and frank disclosure. Ex parte orders preserve the status quo pending a full hearing. There are two such orders that are relevant:

a)  Search orders, formerly known as Anton Pillar orders after Anton Pillar (1976), the case where the first such order was granted). The grant of a search order allows the premises of an alleged infringer to be searched and evidence of infringement to be seized.

b)  Freezing injunctions. These were formerly known as Mareva injunctions. These injunctions freeze the assets of an alleged infringer prior to trial (Mareva 1975) thus preventing transfer of assets.

Criminal sanctions

Intellectual property right remedies usually involve civil remedies but some criminal sanctions are available. For the statutory IPR’s, the individual statutes provide for criminal sanctions, e.g. the Copyright, Designs and Patents Act 1988 s.107 provides for imprisonment and fines for secondary infringement. Also, there is the general common law crime of conspiracy to defraud, which may be used in order to protect IPR.

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2

Patents and the Law

Historical background to patents and patent law

Patents were originally granted by the Crown exercising its Royal Prerogative. Letters patents were a royal proclamation that the bearer had the Crown’s authority to do whatever had been authorised within the letters. The earliest record of a granted patent dates from 1331, to a Flemish weaver who wanted to practice his trade in England. Most of the patents granted at the time were to encourage trade rather than new inventions. In many cases, the grant of a patent was a way of controlling trade and towards the end of Elizabeth 1’s reign, there were many abuses of the system.

The Statute of Monopolies 1623 was passed to control or limit these abuses. Monopolies per se were excluded unless they came within the exception in s.6. Under s.6 a 14-year monopoly could be granted for ‘any manner of new manufacture’. The Patents Act 1835 was passed to deal with disclaimers and prolongations of claim, but the first comprehensive statute on the subject was the Patent Law Amendment Act 1852 which set up the Patent Office and Registrar of Patents. The Act also introduced the important requirement that a ‘specification’ be filed with an application describing the nature of the invention.

In 1883, the Patents, Designs and Trade Marks Act was passed to enable the United Kingdom to satisfy its obligations of reciprocity under the Paris Convention for the protection of Industrial Property. This Act required a full specification including detailed claims to be completed by the applicant and examined by the Patent Office before a patent would be granted. The case of Nobel’s Explosive Company Limited v Anderson (1894) established that it was no longer possible to claim that the patent extended to matter contained within the specification where such matter was not in the claim. This highlighted the use of claims to mark the legal boundaries of the claim.

At this point in time, the United Kingdom patenting system was purely a deposit system, where applications were checked simply to make sure they had been completed correctly. The need to prove that an invention was really new did not come until the passing of the Patents Act 1907 which introduced the practice of checking patents for novelty, with searches being extended to cover patents granted over the last 50 years. The grounds for declaring a patent invalid were codified in the 1907 Act. In the 1919 Patents Act it was stated that invalid claims within an application would not invalidate the whole application.

The entire patents system was overhauled in 1949 by the Patents Act 1949, and the modern law on patents is set down in the Patents Act 1977, as amended by:

the Copyright Design and Patents Act 1988

the Patents and Trade Marks (World Trade Organisation) Regulations 1999

the Patents Regulations 2000

the Enterprise Act 2002

the Regulatory Reform (Patents Order) 2004

the Patents Act 2004

the Medicines (Marketing Authorisations etc.) Amendment Regulations 2005

the Intellectual Property (Enforcement, etc.) Regulations 2006

the Patents (Compulsory Licensing and Supplementary Protection Certificates) Regulations 2007

the Legal Services Act 2007

the Crime and Courts Act 2013

the Enterprise and Regulatory Reform Act 2013(Competition)

(Consequential, Transitional and Saving Provisions) Order 2014

the Copyright (Public Administration) Regulations 2014

the Intel...