intellectual property law

• Intellectual property (IP)


  That area of law which concerns legal rights to protect intangible property such as innovation, creative effort, commercial reputation and goodwill
• Subject matter of intellectual property

  • Literary and artistic works
  • Films
  • Computer programs
  • Inventions
  • Designs and marks used by traders for their goods or services
• The law deters others from copying or taking unfair advantage of the work or reputation of another and provides remedies should this happen
• Parliament passed a new Intellectual Property Act in 2014
• Lord Younger, Minister for Intellectual Property: 'Continued investment in intellectual property is vital to all businesses, as it contributes £16 billion to the UK economy each year. It is essential that we continue to work hard to create the right environment for them to flourish so we can benefit from their creative designs, inventions and ideas. I am confident that this Act will further strengthen our world-class IP system – from research to market – and to help businesses of all sizes continue to thrive.'
• Areas of Intellectual Property Law

  • Patents
  • Breach of confidence
  • Trademarks
  • Copyright
  • Design law
• Patents


  A statutory property right that gives the patent owner the exclusive right to use certain inventions
• Breach of confidence


  The action for breach of confidence can be used to protect categories of confidential information (e.g. personal or commercial information against unauthorised disclosure or use)
• Trademarks

  • Registered trademarks are statutory rights and give the exclusive right to use a distinctive sign (e.g. name, symbol, scent, jingle etc.) in relation to a product or service
  • Trademarks can be a badge of origin of goods. They can become very valuable over time, after other rights have expired
• Copyright


  • A statutory right that exists in original literary, dramatic, musical and artistic works and, in sound recordings, film, broadcasts and the typography of published editions
  • Owners of copyright have a number of economic rights in their works including the right to prevent unauthorised copying and adaptation and there is now protection afforded to technological protection measures
  • There are also moral rights - rights that authors retain in their works, irrespective of who owns the economic rights
  • The law that governs copyright in the UK is called the Copyright, Designs and Patents Act 1988
• Design law


  • Can't protect the way things work
  • Certain aspects of the appearance of articles are protected via a combination of Registered Designs, Design Rights (an unregistered design system), and Copyright
• Discoveries or theories cannot be protected. You only have an unenforceable ethical right to be known as the originator of these.
• Mathematical models cannot be protected.
• Why protect your IP?


  • So that your science can be turned into benefit
  • To secure your rights and your sponsor's rights
  • To enable investment to take place
  • If you have protected your intellectual property, you will be entitled to legal remedies against those who then use your property without your permission: Injunctive relief, Damages / Account of profits, Criminal sanctions (e.g. piracy / counterfeiting)
• Patents


  • Main legislation: Patents Act 1977 (as amended)
  • This is a very strong form of protection and is reserved for 'inventions' that satisfy 5 standards (s.1): It is an 'invention', the invention is new, it involves an inventive step, it is capable of industrial application, it is not on the excluded list
• Patent Examples


  • Dyson's dual cyclone bagless vacuum cleaner
  • A new type of longer lasting light bulb
  • A new type of ignition system for a petrol engine
  • A new way of making synthetic rubber tyres
  • A novel technique for making plate glass
• Obtaining a patent


  • A patent may be granted in respect of a new invention capable of industrial application and gives its owner a monopoly right that can last for up to 20 years
  • Involves an application to the UK Patent Office (now known as the UK Intellectual Property Office)
  • A patent is a territorial right, so it is necessary to apply for a patent in each jurisdiction for which protection is desired
  • Brexit will not significantly affect patents as the UK is part of the European Patent Convention
• The Patents Act 1977 does not provide a definition of 'invention' but instead sets out a list of things that are considered not to be inventions "as such"
• What is NOT an invention?

  • Discoveries, scientific theories and mathematical methods are not inventions 'as such'
  • Discoveries - the line between discovery and invention can be difficult to draw, but a mere discovery must be developed and applied in some way before it constitutes an invention
  • Scientific theories and mathematical methods - on their own they are not inventions, but where they are developed or applied in some way, they will be patentable inventions
• Fujitsu Ltd's Application (1997)

  • Fujitsu wanted to patent a new tool for modelling crystal structures on a computer, but the Court of Appeal held that although this was a useful tool, it was just a different way of portraying the structure (using a computer) and did not have a 'technical contribution', so it was not an invention and could not be patented
• Other things that are not inventions 'as such'

  • A scheme, rule or method for performing a mental act, playing a game or doing business (s.1(2)(c))
  • The presentation of information (s.1(2)(d))
  • Literary, dramatic, musical and artistic works or any other aesthetic creation whatsoever
• Computer Programs


  • Computer programs are not inventions 'as such'
  • However, patents for software-related inventions are granted where there is a substantive 'technical contribution'
  • Computer programs are protected by copyright law as literary works
• Computer programs are not inventions
• Patents for software-related inventions are in fact granted where there is a substantive 'technical contribution' as this is not considered to be a computer program 'as such'
• Deciding whether there is a technical contribution


  1. Ask whether technical means are used to produce a result or solve a problem

  2. Ask whether the invention produces a technical result
• Computer programs are protected by copyright law
• Things copyright law forbids you from doing with software


  • Giving a copy to a friend
  • Making a copy and then selling it
  • Using the software on a network (unless the licence allows it)
  • Renting the software without the permission of the copyright holder
• License agreements between the company that developed the software and the end user are often agreed before the software is installed
• Categories of non-patentable invention

  • Inventions contrary to public policy or morality
  • Certain biological subject matter (e.g. animal or plant varieties, the formation and development of the human body, mere discoveries of elements of the human body)
• Novelty


  An invention must be 'new' and not previously have been made available to the public
• State of the art

  All matter made available to the public before the priority date of the invention (the date of the first patent application)
• Inventive step


  The invention would not be obvious to a person skilled in the art
• Skilled man


  The average person in the relevant art, possessing the relevant skills, knowledge and qualifications
• Windsurfer test to assess obviousness

  1. What is the inventive step involved in the patent?

  2. At the date of the first application, what was known on the subject matter relevant to the step?

  3. How does the step differ from what was known?

  4. Without hindsight, would the taking of that step be obvious to the person skilled in the art?
• It is not possible to simply take two existing inventions and put them together to establish a new invention, where this new invention would be the obvious product of the two original inventions
• Industrial application


  The invention must be capable of being applied in industry, including agriculture
• Virtually all inventions bar those that are theoretically impossible (e.g. perpetual motion machines) can be said to meet the industrial application requirement
• An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not capable of industrial application, but a product consisting of a substance or composition invented for use in any such method is capable
• Whether an invention is novel and / or obvious is by no means clear
• The courts take a very individual approach to each case as it is presented to them based on the individual facts