IP, other decks are better Flashcards
what is intellectual property about?
Regulates the creation, use and exploitation of mental or creative labour Legal rights associated with works of creative effort Provide property protection over intangibles
includes the rights relating to literary, artistic, scientific works, performances photographs, broadcasts, inventions, designs, trademarks, protection against unfair competition etc
what are the _ types of IP?
Patents = Invention
Design = Authorial work
Trademark = Mental association
Trade secrets = Confidentiality
Copyright = Creativity with functionality
what is a patent?
Is an exclusive right granted for an invention. Generally speaking, a patent provides the patent owner with the right to decide how - or whether - the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document.
- A patent is a time limited right granted by a
government to a person in exchange for an
enabling disclosure of an invention. - A balance between two competing goals- giving
adequate economic incentives to pioneering
inventors to invent while making sure that the
improvers that follow, and the public as a whole,
could make effective use of the inventions.
or
A legal title which grants the holder the
exclusive right to prevent others from
taking advantage of her patent without her
authorization.
how long does a patent last?
- For a limited time (up to 20 years).
- US: 20 Years
- EU: 20 Years
- UK: 5 Years (up to 20 if renewed annually from
the 5th year)
decide question later, more on patents
- A patent is sometimes considered as a contract
between the applicant and society. - Applicants and patent owners are interested in
benefiting - personally - from their inventions. - They have the right to prevent others from making,
using, offering for sale, selling or importing a product
that infringes their patent, for a limited amount of
time and in the country for which the patent has been
granted. - The exception to this is used for non-commercial
purposes, for example, private use or academic
research
What right does a patent grant to its owner?
- THE RIGHT TO EXCLUDE third parties from making, using or selling the infringing product.
what is the underlying philosophy around patents
- Society is interested in:
- encouraging innovation so that better products can be made and better production methods can be used for the benefit of all,
- protecting new innovative companies so that they can compete with large established companies, in order to maintain a competitive economy,
- learning the details of new inventions so that other engineers and scientists can further improve them, and
- promoting technology transfer, for example from universities to industry.
- In return for this protection, the applicant has to
reveal his invention to the public, so others can
build on it. As a rule, patent offices publish
applications after 18 months. At this stage they
become visible to everyone. - This “social contract“ is institutionalised in the
form of patent law. - Did you know that Patents are granted in nearly
every country in the world?
what is the relevant legislation for patents
Patent Act 1977
Patent Act 2004
Patent Rules 2007
Intellectual Property Act 2014
1994 Agreement on Trade-related Aspects of IP(TRIPS)
Patent Cooperation Treaty 1970 (PCT)
Paris Convention 1883
What is patentable?
- Process – the steps involved in the manufacture of
an article—for example a specific medicine. - Machine –an apparatus or component.
- Composition of Matter – chemicals, materials.
- Improvements – on any of the categories above
- According to the European Patent Convention, or EPC,
“European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.” - “New to the world” means that there should have been no previous public disclosure of the invention before the date of filing.
- “Inventive step” is quite difficult to assess. To ascertain whether an invention involves an inventive step, the European Patent Office compares it with what would have been obvious to an imaginary person skilled in the art at the time of filing.
industrial application
What conditions must be met to obtain patent protection?
There are numerous conditions that must be met to obtain a patent and it is not possible to
compile an exhaustive, universally applicable list. However, some of the key conditions include
the following:
* The invention must show an element of novelty; that is, some new characteristic which
is not known in the body of existing knowledge in its technical field. This body of
existing knowledge is called “prior art”.
* The invention must involve an “inventive step” or “non-obvious”, which means that it
could not be obviously deduced by a person having ordinary skill in the relevant
technical field.
* The invention must be capable of industrial application, meaning that it must be
capable of being used for an industrial or business purpose beyond a mere theoretical
phenomenon, or be useful.
* Its subject matter must be accepted as “patentable” under law. In many countries,
scientific theories, aesthetic creations, mathematical methods, plant or animal
varieties, discoveries of natural substances, commercial methods, methods for medical
treatment (as opposed to medical products) or computer programs are generally not
patentable.
* The invention must be disclosed in an application in a manner sufficiently clear and
complete to enable it to be replicated by a person with an ordinary level of skill in the
relevant technical field.
Who grants patents?
A patent is granted by a national patent office or by a regional office that carries out the task for
several countries. Currently, the following regional patent offices are in operation:
* African Intellectual Property Organization (OAPI)
* African Regional Intellectual Property Organization (ARIPO)
* Eurasian Patent Organization (EAPO)
* European Patent Office (EPO)
* Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent
Office)
* Intellectual Property Office (IPO)
Under such regional systems, an applicant requests protection for an invention in one or more
member states of the regional organization in question. The regional office accepts these patent
applications, which have the same effect as national applications, or grants patents, if all the
criteria for the grant of such a regional patent are met.
There is currently, no universal, international system for the grant of patents.
Do I need a patent attorney/agent to prepare and file a patent application?
In general, applicants can prepare their patent applications and file them without assistance from
a patent attorney. However, given the complexity of patent documents and the legal skills
required, such as claim drafting, it is highly advisable to seek legal assistance from a patent
attorney/agent when drafting a patent application.
Furthermore, the legislation of many countries requires that an applicant, whose ordinary
residence or principal place of business is outside the country, be represented by an attorney or
agent qualified in the country (which usually means an agent or attorney who resides and
practices in that country). Information on the qualified attorneys and agents can be obtained
directly from national and regional IP offices.
How much does it cost to patent an invention?
The costs vary considerably from country to country (and even within a country). As the official
fees vary widely from country to country, please contact the relevant national or regional patent
office which will be able to give you details on the fee structure. Consult our list of national and
regional intellectual property offices.
The cost of patenting an invention depends on factors such as the nature of the invention, its
complexity, patent attorney’s fees, the length of the application, and possible objections raised
during the examination by the patent office. Some countries offer discounts to small- and
medium-sized enterprises and applicants filing the application online. In addition, some countries
allow expedited examination upon payment of additional fees.
In addition to the national official filing fees, once a patent is granted by the patent office, you
must pay maintenance or renewal fees, generally on an annual basis, to maintain the validity of
the patent.
In case you decide to patent your invention abroad, you should also consider the relevant official
filing fees for each country in question, the translation costs, and the costs of using local patent
agents, which is a requirement in many countries for foreign applicants.
How can patents be obtained worldwide?
At present, you cannot obtain a universal “world patent” or “international patent”. Patents are
territorial rights. In general, an application for a patent must be filed, and the patent granted and
enforced, in each country in which you seek patent protection for your invention, in accordance
with the law of that country. Therefore, one way of obtaining patents in a number of countries is
to file a national patent application with each relevant national patent office.
In some regions, a regional patent office, for example, the European Patent Office (EPO) and
the African Regional Intellectual Property Organization (ARIPO), accepts regional patent
applications, or grants patents. These have the same effect as applications filed, or patents
granted, in the member states of that region. This means that, in certain regions, you can obtain
a regional patent from a regional patent office, which is valid in some or all of its member states.
If you are seeking patent protection in a number of countries worldwide, a good option is to file
an international application under the Patent Cooperation Treaty (PCT), administered by WIPO.
Any resident or national of a state party to the PCT (contracting state) can file a single
international application which has the effect of a national patent application (and certain
regional patent applications) in some or all PCT contracting states. In some cases, this can be a
more straightforward choice than choosing to try to submit individual applications in each and
every country in which you require protection. Find out more about the PCT System.
What practical steps do I have to take to obtain patent protection?
The first step in securing a patent is the filing of a patent application. Many patent offices provide
a specific form to fill in. In some patent offices, you can file a patent application on line.
In the patent application, in general, you must describe the title of the invention, as well as
provide an indication of its technical field. You must also include the background to and a
description of the invention, in clear language and enough detail that a person with an average
understanding of the field could use or reproduce the invention. Such descriptions are usually
accompanied by visual materials such as drawings, plans, or diagrams to better describe the
invention and an abstract, which contains a brief summary of the invention. You must also clearly
and concisely define the matter for which patent protection is sought in the “claims” part of the
patent application.
In addition, depending on the applicable patent law, you may need to submit various kinds of
statements, declarations or supporting documents to a patent office. In view of the complexity it
is recommended that you consult a patent attorney or a patent agent to prepare a patent
application.
What happens after I’ve submitted my application?
The procedures vary significantly from one country to another, so it is impossible to provide an
exhaustive step-by-step overview. If you wish to research a country’s legislation in the field of
patents independently, you can browse the WIPO Lex database of intellectual property (IP)
legislation from around the world.
However, it is recommended that you consult either a practicing lawyer specializing in IP or the
relevant IP office. Consult our directory of national and regional IP offices.
Can the decision to grant a patent be challenged?
The grant of a patent can be challenged either via a patent office or in a court of law. A court may
invalidate or revoke a patent upon a successful challenge by a third party. In addition, many
patent office’s provide administrative procedures that allow third parties to oppose to the grant
of a patent (including so-called “opposition systems”), for example, on the basis that the claimed
invention is not new or does not involve an inventive step.
is it possible to extend the term of patent protection?
In some countries, patent protection may be extended beyond 20 years or a Supplementary
Protection Certificate (SPC) may be issued in very specific cases. The extension aims to
compensate for the time expended on the administrative approval procedure before products
can be put on the market. The time taken for this procedure means that the patent owner may
sometimes not be able to benefit from his right for a considerable period of time after the grant
of the patent.
Can I obtain a patent for a software-related invention?
Possibly, but laws and practices in this regard can differ from one country or region to another.
For example, in some countries, “inventions” within the meaning of patent law must have a
“technical character”. In other countries, such requirements do not exist, meaning that in these
countries’ software is generally patentable subject matter.
However, this does not mean that all software will be able to be patent protected. In order to
obtain a patent, a software invention must not fall under other non-patentable subject matter
(for example, abstract ideas or mathematical theories) and has to fulfill the other substantive
patentability criteria (for example, novelty, inventive step [non-obviousness] and industrial
applicability [usefulness]).
It is therefore recommended that you consult a practicing lawyer specializing in intellectual
property or the intellectual property offices of those countries in which you are interested in
obtaining protection. Consult our directory of national and regional intellectual property
offices to get in contact with a local IP professional or browse the WIPO Lex database of
intellectual property legislation from around the world.
However, according to a well-established principle, copyright protection extends only to
expressions, not to ideas, procedures, methods of operation, or mathematical concepts as such.
Thus, many companies protect the object code of computer programs by copyright, while the
source code is kept as a trade secret.
Can I patent my app?
Whether you can obtain patent protection for an app depends on which element of your app you
wish to protect. If you want to protect a technical idea or feature relating to the app, patent
protection is a potential option. Depending on the applicable national law, the software that runs
your app may be able to be protected by patents if it has certain technical features. You must be
mindful however that your technical idea must meet all of the patentability requirements to
obtain patent protection, and it may take years to get a patent.
In addition, it is important to ask yourself which element(s) of your app should be protected from
free use by competitors. The software that runs your app can be protected
by copyright (potentially also by patents, as described above). If you are interested in protecting
logos or signs contained within your app however, you should consider protecting them
using trademarks. Literary and artistic works included within your app, such as original databases,
musical works, audio-visual works, works of fine art and photographs, are protected by copyright.
Graphical objects and layouts can be protected using industrial designs
How can I search for inventions that have already been patented?
Please see the questions and answers under the topic “Patent Information”, in particular, the
answer to the question “Where can I find patent information?”.
How can I find the patent laws of various countries?
WIPO Lex provides easy access to intellectual property legislation from a wide range of countries
and regions as well as to treaties on intellectual property.
Many national or regional patent offices also provide information concerning national or regional
legislation on their websites. Consult our list of national and regional intellectual property offices.
when is an invention new?
- The invention must be new at the date of filing of the
patent application. - “New” means that the invention does not form part of
the state of the art. - The state of the art comprises everything made
available to the public by means of a written or oral
description, by use, or in any other way, before the date
of filing of the European patent application. - It is vital that you keep your invention confidential until you have filed your application.
what is copyright?
Grant authors, artists and other creators, protection for their literary and artistic creations, generally referred to as “works”. It includes software creation. Copyright protects the independent expression of an idea. Not the idea itself.
Does not protect “ideas” only the expression of ideas—thus have a copyright in the book not the plot, generally, although some have tried to test this! Only protects against copying—taking of your skill, labour and effort. So, if independently developed and same as yours—no violation of copyright.
Variety of terms—but generally life of author plus 50 - 70 years
(depending on type of work)
what is included in copyright law?
Preparation of derivative works
Reproduction and distribution of copies
Exclusive rights conferred
Note that names and titles
are not protected as literary
works – e.g., Exxon Corp v
Exxon Insurance Consultants
International Ltd [1982]
No registration is required in
the UK
But lists and compilations
can be protected—i.e., TV
schedules, timetable index,
street directories etc. (also
consider data base
protection)
what are the rights of owners under copyright?
To distribute the work to the public
To communicate the work to the public (i.e., via radio)
To perform, show or play the work in public
To rent or lend the work to the public
To make an adaptation of the work
To authorise others to carry out any of these activities
To copy the work
Criteria for protection
- Recorded in material form—fixed.
- Original (for literary, dramatic, artistic and musical works).
- Not necessary to be inventive, novel or unique but the author must have expended the necessary “skill labour or effort” in creating the work.
- Derivative works may attract copyright protection but may also infringe copyright in the existing work.
- S 3(2) Copyright, Designs and Patents Act 1988: “Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise…”
- Recording does not need to be done by the individual author or with their permission.
exemptions for copyright? (8)
Criticism / review /reporting
Accidental inclusion of copyright work
Fair dealing
Non-commercial research & private study
Teaching/Education
Pubic interest? – But would need consent
Helping disabled individuals i.e., Visually impaired
Library / Archives
what is fair dealing?
Fair dealing for criticism, review or quotation is allowed for any type of copyright work. Fair dealing with a work for the purpose of reporting current events is allowed for any type of copyright work other than a photograph. In each of these cases, a sufficient acknowledgement will be required [UK Law]
Fair use of copyrighted works, as stated in US copyright law, “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” [US Law]
what is the length of protection under copyright?
Written, dramatic, musical and artistic work = 70 years from author’s death
sound and music recording = 70 years from date of first publication
films = 70 years after the death of the director, author and composer
Broadcasts = 50 years from the date of first broadcast
layout of published editions of written, dramatic or musical works = 25 years from date of first publication
Forms of ownership under copyright? (4)
Joint works
Employee works
Balance of power
Transfer of ownership
copyright legislation concerning computer programs
Copyright, designs and patent act 1988 recognises copyright to exist in computer programs as a form of literary work.
International agreement over the protection of computer programs was reached through Art 4 TRIPS agreement and Art 4 WIPO Copyright Treaty
Whitford committee’s report (1977) and unauthorised copying
of computer programs. Green paper in 1981: recommendation to reform copyright law to include computer programs.
Copyright (computer program) regulations 1992
S1 (1) CDPA 1988
Copyright (computer program) regulations 1992
Sections 50, 50 A, 50B, 50BA CDPA 1988 And Sections 17, 18, 19 CDPA 1988
Section 3 (1) b and (c) CDPA 1988
Art 1 (2) DIRECTIVE 2009/24/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 23 April 2009 on the legal protection of computer program
Literal vs Non-literal
Literal: The same language of programming is employed in two different computer programs. See: Ibcos Computers v Barclays Mercantile High Finance
(1994)
Non-literal: Some elements are copied. These can include the method of programming, the outcome/ function intended or they way it operates.
Navitaire Inc v easyjet airline company (2004) and (2006)
Three-stage test for non-literal copying
Abstraction - discovering the non-literal elements by a process akin to reverse engineering beginning with the code of the claimant’s program and ending with its ultimate function. This process retraces and maps out the designer’s steps and produces, inter alia, structures of differing detail at varying levels of abstraction
Filtration - the separation of protectable expression from non-protectable expression material. Some elements will not be protected being ideas, dictated by or incidental to ideas, required by external factors (scenes a faire doctrine) or taken from the public domain. these elements are filtered out leaving a core of protectable material - the program’s ‘golden nugget’ or protected expression
Comparison - a determination of whether the defendant has copied a substantial part of protected expression - whether any aspect has been copied and, if so, whether this represents a substantial part of the claimant’s program
Copyright law for software
Can be protected by Patents (protecting the
functionality) or by Copyright (protecting the
expression from copying).
If your software is written by a third party for you
—who owns the IP in the code? Check the
contract!
Off-the-shelf software—i.e., word processing
packages—users have a limited license to use,
generally, all IP rights retained by the software
supplier
personal copies - To copy CD, DVD, Music and video from one device to another Software based products can prevent copying even for personal use by using
technological measures such as encryption, etc.
explain adaptation and decompilcation of computer programmes
Decompilation is a type of reverse-engineering that performs the opposite operations of a
compiler.
here are two different types of reverse translation of software or compiled programming code in general. One is disassembly, where machine language code is converted into human-readable assembly code. The other is decompilation, where byte code is converted
back into the original programming language.
The Decompilation of computer programmes DOES fall under Exceptions
INTEROPERABILITY
- Interoperability has been defined as “the ability of computer programs to exchange information, and of such programs mutually to use the information, which has been exchanged.”
- However… achieving interoperability through reverse engineering can infringe the rights of the original owner.
- One of the main motives for reverse engineering software is to enable new software
products to interact with programs that are already available. - Given this, courts have recognised that reverse engineering is important for public benefit and to encourage inventors and businesses thereby maintaining healthy competition in the market.
explain Trade secrets for software and the 2 requirements that has to be met
While copyright is the main form of legal protection of software, most proprietary software companies also ensure that the source code of the software is kept as a trade secret, and only disclosed under a secrecy agreement where disclosure is necessary, such as to producers of related software.
* There are two basic requirements for information to be treated as confidential according to UK law:
* It must have the necessary quality of confidence.
In other words, it must not be public
property or public knowledge.
* It must be imparted in circumstances importing
an obligation of confidence i.e. when shared it
must not be done so as if it were public property
or public knowledge
Trademark
Is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, logos, company names, product names, and slogans that identifies and distinguishes the source of the goods of one party from those of others.
Trade secrets
The law of confidence Applies to Trade secrets And protects information Which is secret or private and not generally known, from unauthorised use or disclosure by persons under a duty not to use or disclose the information. It is more appropriate for certain types of information which for example is not capable of being “reverse engineered”. It also requires corporate policies for the purpose of protection.
Design
Is shape, pattern, ornamentation or some other feature or combination of these applied to an article, object, product or goods. The design may be created […] in order to make the thing to which the design is applied look attractive or distinctive or to work or operate efficiently in a functional sense. Some designs may be both attractive and functional.
what are the 2 justifications for IP?
John and the labour theory (1693):
Nature was created for all to share; it is a common (a natural right);
Each one owns their body, and the labour it produces
Mixing labour with nature/material from the commons creates a property entitlement in the result
Hehelian Rationale:
Hegel and the personhood or self-realisation theory;
To be fully self-realised, an individual must be able to ‘protect’ his/her will onto objects in the external world
This requires a stable set of claims over those objects i.e., property rights
UK sources for IP? (6 examples)
Registered Designs Act 1949- as amended
The Patents Act 1977-as amended
Trademarks Act 1994 – this was passed to implement the EU TM
Directive and the Community TM Regulation
UK GDPR 2021
Data Protection Act 2018
Copyright, Designs and Patent Act 1988 – initially just domestic law-
but has since been amended to implement a number of EU Directives
international sources for IP? (5)
Paris Convention for the Protection of Industrial
Property 1883
Berne Convention for the Protection of Literary and
Artistic Works 1886
WIPO Copyright Treaty (WCT)
Copyright and Related Rights (Neighbouring
Rights Convention)
WIPO Performers and Phonograms Treaty
(WPPT)
challenges in the digital environment and some of their solutions?
Some examples of the challenges in the digital environment are:
* Less restricted modes of access to digitised materials
* The cost to make the unauthorised copies available on another platform is usually not
significant
* Monitoring and control of illegal copying can be more challenging in the digital
environment
Examples of the solutions (currently being practised) are:
* Encryption
* Watermark
* Access control systems
zWhat is patentable?
- Process – the steps involved in the manufacture of
an article—for example a specific medicine. - Machine –an apparatus or component.
- Composition of Matter – chemicals, materials.
- Improvements – on any of the categories above
- According to the European Patent Convention, or EPC,
“European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.” - “New to the world” means that there should have been no previous public disclosure of the invention before the date of filing.
- “Inventive step” is quite difficult to assess. To ascertain whether an invention involves an inventive step, the European Patent Office compares it with what would have been obvious to an imaginary person skilled in the art at the time of filing.
industrial application
when is an invention new?
- The invention must be new at the date of filing of the
patent application. - “New” means that the invention does not form part of
the state of the art. - The state of the art comprises everything made
available to the public by means of a written or oral
description, by use, or in any other way, before the date
of filing of the European patent application. - It is vital that you keep your invention confidential until you have filed your application.
