A LEADING LAW FIRM
WITH A
APPROACH
An Introduction to Intellectual
Property
Mark Pearce
What is IP
• The product of creative thinking
• Intellectual Capital/Property
• Intellectual property rights are rights protecting
intellectual property
• Aim to encourage creativity and development, to
discourage theft of ideas
• Essentially IP rights are “negative” rights – i.e. the right
to prevent acts, not a positive right to do things
What does IP protect?
•
•
•
•
Confidential Information
Inventions – patents
Trade Marks – trade marks, passing off
Literary, artistic and graphical works, works of artistic
craftsmanship – copyright
• Designs – registered designs, unregistered design right
®
® 87294 A (1889)
©
Confidential Information
• Law protects information which:
– is confidential (i.e. not public)
– has “the necessary quality” (i.e. has some value)
– was disclosed under an obligation of confidence
(express or implied)
• No statute
– equity
– contract
Confidential Information - NDAs
• Non-Disclosure Agreements (NDAs) also known as
Confidentiality Agreements (CDAs)
• Regulates disclosure of confidential information and
allows monitoring
• Restricts purpose that the information can be used for
• Prevents unauthorised disclosure or use of information
• NDAs are valuable evidence of disclosure under
obligation of confidence
Confidential Information – practical
considerations
• Avoid technical publications (and anticipation of patent
claims) if patent application not yet filed
• Still necessary for patentability purposes after initial
application – pre-publication amendments, added matter,
re-filing
• Retain control of information and/or material
Why do we have patents?
• Public Policy, the State:
– wants to encourage innovations; but
– monopolies are a bad thing
• Patents are a compromise; a statutory monopoly for a
limited time to encourage innovation, but in return the
investor must teach the public how to work his invention
Patent legislation
• Patents Act 1977
– reflects European Patent Convention
• Biotechnology Directive (Council Directive 98/44 on the
Legal Protection of Biotechnology Inventions)
What can be patented?
• An invention which is:
– new;
– involves an inventive step;
– is capable of industrial application; and
– is not expressly excluded.
s. 1 Patents Act 1977
Novelty
• An invention shall be taken to be new if it does not form
part of the state of the art (s.2(1))
• The state of the art…shall be taken to comprise all
matter….which has at any time before the priority
date…been made available to the public (s.2(2))
State of the art
• The state of the art includes material published in any
way:
– oral disclosure (beware overheard conversation)
– physical disclosure - sale or use can amount to
disclosure (Lux v. Pike - traffic light system trial;
Windsurfer)
• The danger of anticipating yourself:
– sales
– demonstrating
– publication
Inventive step
• An invention shall be taken to involve an inventive step if
it is not obvious to a man skilled in the art, having regard
to any matter which forms part of the state of the art (s.
3)
Not obvious?
• An inventive step does not need to be rocket science
• Not obvious means not obvious
• The “person skilled in the art” knows a lot but lacks any
inventive ability
• Most clients overestimate the inventive step requirement
Exclusions
• Certain inventions are expressly excluded:
– discovery, scientific theory or mathematical model
– literary, dramatic, musical or artistically work or any
other aesthetic creation
– presentation of information
• BUT computer software can be protected if it has a
technical effect
Processes and products
• Inventions can be:
– product; or
– process
• Ranitidine hydrochloride (ZANTAC)
– in various forms
• Method for isolating most effective form of Ranitidine
Hydrochloride
More examples of patents
• “Frankenfish” – modified fish for faster growth
• “Edinburgh” patent – isolation, selection and propagation
of animal transgenic stems cells
• Harvard “Oncomouse” – patent for transgenic mouse
predisposed to develop cancer tumours
What does a patent look like?
• Front page
– standard info
– abstract
• Figures
• Specification
– must teach the man skilled in the art to work the invention
(including examples)
– describes prior art and the nature of the inventive step
• Claims
– Extent of statutory monopoly
– methods/products
Patent
So what does a patent give you?
• Statutory monopoly
• 20 years from filing
• A right to prevent others working the invention (NOT a
right to work the invention)
• No guarantee it works
Applying for a patent
• Application to national patent office
• PCT applications
– National and Regional Phase
• Priority dates
• Searches
• Examination
• Grant
• Opposition
Cost of filing a patent
• Depends on the territory
• Preparing and filing a UK patent application will cost
approximately £3,000 – 5,000 plus VAT
• Costs will vary depending on the complexity of the patent
• A patent application is a lengthy process and usually
takes over 2 years
• Other national costs
• “World wide” protection
Patent infringement
• The following can be infringing acts:
– making;
– disposing of;
– using;
– importing; or
– keeping a product; and
– using or offering for use a process.
• Innocent infringement
• Don’t need to be the manufacturer to infringe
• Contributory infringement
Patent enforcement
• High Court
– Unlimited damages
– Very costly (perhaps £500,000 typical)
• Patent County Court/Intellectual Property County Court (PCC)
– Financial limit of £500,000 (exc. interest) on damages or profits
recoverable from the infringer
– Maximum costs recoverable from the losing party are £50,000 in
contested actions for patent infringement and validity, and at
£25,000 in all other cases
• Costs of litigation remain substantial and unpredictable
Confidential Information v Patents
• Advantages/disadvantages of keeping ideas
“Confidential” v Patent
– no requirement to disclose how to do it
– problems of policing patent infringement in process
industries
– no absolute monopoly
Trade Mark
• Signs capable of distinguishing the goods or services of
one undertaking from those of another
• Capable of being graphically represented (can include
shapes and sounds as well as traditional words and
logos, but probably not smells)
• No limit to renewals (UK registered TM No. 1 dates from
1876 and is still in force)
Trade Mark
Process of registering a trade mark
• A search to determine if the mark is free to use and
register
• Filing of an application with the UK Intellectual Property
Office
• Advertising the application in the Trade Mark Journal
• The application will be open to opposition for two
months, with the possibility of a one month extension
• Assuming there have been no objections, the application
will then be granted and a Registration Certificate issued
• Registration will take approximately 8 months from the
start to the finish
Cost of registering a Trade Mark
• Depends on the territory and the number of classes
• A UK registration (inc legal fees) will cost approximately
£1,000 plus VAT
• Community Trade Mark Registration (inc legal fees) will
cost approximately £3,000 plus VAT
Copyright
• A right to prevent unauthorised reproduction of your
original works and to recover damages for infringement
• Unregistered right in most of the world (therefore there
are no registration costs)
• Registerable in some states of the USA
What does copyright protect?
• Original literary, dramatic, musical or artistic works
– literary works include tables or compilations,
computer programs and databases
– artistic works include graphic works, photographs,
sculptures, collages, works of architecture and works
of artistic craftsmanship
• Sound recordings, films, broadcasts or cable
programmes
• Typographical arrangement of published editions
How long does it last?
• Identity of author known
– 70 years from the end of the calendar year in which
the author dies
• Identity of author unknown
– 70 years from end of calendar year in which work
made; or
– if during that period the work is made available to
public then 70 years from the end of the calendar
year in which it is first made available
Restricted acts
•
•
•
•
•
•
Copying the work
Issuing copies of the work to the public
Rent or lend copies of the work
Perform, show or play the work in public
Broadcast or include the work in a cable programme
Make an adaptation of the work
Who owns it?
• The author of a work is first owner of copyright, subject
to:
– Where a work is made by an employee in the course
of his/her employment the employer is first owner of
copyright
• Joint owners where contributions not distinct
• If contributions are distinct then each owns copyright in
their contribution
Protected design
• No longer protected by © in design drawings
• Registered and unregistered design protection regimes
• UK and EU design protection regimes
Cost of registering a design
• Will depend on how many images are being registered
• UK registration (inc legal fees) will cost approximately
£500 plus VAT
• Community design (inc legal fees) will cost
approximately £800 plus VAT
Professional Support
• IP is crucial to any business
• It is very easy to get wrong
– Patent drafting
– Agreements
• Benefits of proper advice