Types of Intellectual Property Rights

Patents

the right to exclusive use of an invention

application - by an inventor/on inventor's behalf

The Patents Act 1977

patent may be granted if:

  • the invention to be patented is new;
  • there is an inventive step involved;
  • it is capable of industrial application;
  • the granting of a patent has not been excluded

EXCLUSIONS

  • scientific/mathematical discoveries;
  • works of artistic, literary, dramatic, musical nature;
  • ways of performing a mental act, playing a game or doing business;
  • certain computer programmes;
  • the presentation of information

a patent should not be provided on the ground of it being contrary to the public policy or morality

a patent shall not be granted for the invention of a method of treatment of human/animal body by surgery or therapy of a method of diagnosis practised on such bodies

patents produced in the course of employment = owned by the employer; registered in the employer's name

  • if the employee makes an application to the Patent Office in their own name - employer can take action against the employee to have the application transferred to their name
  • if the invention is of outstanding benefit to the employer - the employee can apply for compensation from the employer
  • patents - personal property that can be sold, licensed, charged or transferred; can be owned by more than one person

patent rights - territorial

The Patents Co-operation Treaty - provides the filing of a single application designating the countries for which the applicant seeks protection

The European Patent Convention provides for an application to be filed at the European Patent Office

an inventor whose patent is infringed is entitled to an injunction, delivery of the infringing articles and damages

valid for 4 years, must be renewed (up to max of 20 years)

Trade Marks

any sign which can distinguish the goods and services of one trader from those of another

to be registerable, a trade mark must be:

  1. distinctive to the goods or services which registration is sought;
  2. not deceptive, or contrary to law or morality;
  3. not similar or identical to any earlier marks for the same or similar goods/services

can be renewed indefinitely, provided the renewal fees are paid regularly

to be registered in the UK, the trade mark must be capable of being represented graphically, in either words, pictures or both

anyone who infringes will be liable to a civil action by the owner.
The police and trading standards can bring criminal proceedings for breach. Arsenal Football Club plc v Reed

companies need to ensure that the trade mark is registered in the name of the company and not - employee, director, shareholder

what can be registered:

  1. trading names when they are used in connection with goods or services (M&S)
  1. stylised name, such as signatures (Cadbury)
  1. newly invented words (Appletise)
  1. geographical names (St Tropez for cosmetics)
  1. distinctive packaging (Cola-Cola bottle)
  1. sounds, smells and colours

Remedies:

  • an injunction (a court order preventing the offender from continuing with the tort);
    • an order that the infridged goods be delivered up or dealt with in a way so as to ensure they no longer infridge the trade mark (destruction);
    • damages (for loss of profits)
    • an account of the profits made by the infringer

Passing off

unauthorised use of an unregistered trade mark, where the 3rd party passes off, or represents the goods/services as their own

  1. there is misrepresentation by word, image or deed;
  2. misrepresentation was by a trader in the course of business
  3. there is a risk of confusion (common field of activity)
  4. the claimant has some reputation in the name;
  5. the action must injure the goodwill or the business;
  6. there was actual damage to the goodwill or business

Spalding v Gamage (The Court established a three-part test for a successful claim of passing off. First, the claimant's product must have goodwill. Second, there must be a misrepresentation by the defendant's product, and third, there must be damages inflicted upon the claimant.

Warnink v TownsendThe Court held that wares whose name falsely suggests its character or quality can be prevented from selling the product under that name.