Intellectual property - What is it?
Intellectual Property law encompasses a variety of rights that protect creativity and inventiveness in its myriad forms with different remedies. The law is founded on the principle - promoted by the 17th Century Philosopher John Locke amongst others - that a person should enjoy the fruits of his labour. Philosophers have not always found intellectual property rights to be justified, however, and there are mahy commentators who doubt that all intellectual property rights are justified in the form that they currently take. However, out job is to work with the law as it stands.
The World Intellectual Property Organisation has defined Intellectual Property as "the rights in relation to: literary, artistic and scientific works; the performance of performing artists, phonograms and broadcasts; inventions in all fields of human endeavour; scientific discoveries; industrial designs; trade marks; service marks and commercial names and designations; and all other rights resulting from intellectual activity in the industrial, scientific, literary and artistic fields."
As “property” rights, Intellectual Property Rights are exclusionary – so that third parties are prohibited from their use and exploitation.
With normal property rights then the nature of the object in which property rights subsist gives it a monopolistic character. For example if the property is a bicycle only one person can own and use it. If one person is using the bicycle no-one else can do so.
However, Intellectual Property Rights are fundamentally different – concurrent use of inventions or copyright materials is possible. For example, one invention could be produced by a number of manufacturers and used by hundreds or thousands of people. A musical performance can be recorded and then broadcast and then replayed hundreds of times by hundreds of different people. Use and/or performance does not diminish value or cause the Intellectual Property to perish, unlike the position with most normal property.
Intellectual Property Rights historically originated at least by the time of the Romans, who used trademarks. Patents were issued in 15th Century Venice. Now Intellectual Property Rights are largely the creation of UK and EU legislation and international treaties. The main statutory provisions in the UK are the Patents Act 1977, and the Copyright Design and Patents Act 1988.
Contract Law (i.e. the law relating to creation and enforcement of obligations under a legal contract) is also used by persons and businesses to ensure that they own information they have developed and/or are paying for which is essential to their business. We also use contract law to set out the terms on which an owner permits others to use IP.
An easy way to distinguish the different categories of Intellectual Property rights from each other is to recognise those that are “hard” and those that are “soft”.
Copyright, Database Rights, Unregistered Design Rights and Unregistered Trade Marks, Trade Secrets and Confidential Information
These require no registration, no fee and no formalities. They arise automatically – you get “something for nothing”
Copyright arises under the Copyright Design and Patents Act 1988 and international treaties and is free and automatic as soon as any original musical, dramatic, literary or artistic work is created. Research papers, contents of laboratory notebooks, seminar papers, photographs, websites and software can all be protected as literary works under the law of copyright.
In the US it is possible to register copyright to demonstrate ownership of that particular work and in the UK a register of copyright similar to that has been recommended in the Gowers Report. No such UK register currently exists. One way of showing that you own copyright at a particular point in time is to make a copy of the work in question and send it through the post in a sealed envelope. The envelope should be date marked and preferably recorded/signed for delivery then left unopened. If required you could dramatically prove as a matter of evidence by opening the envelope in a court of law that copyright existed on the marked date!
Similar protection extends to such things as databases although the rights last only 15 years from when the last addition to the database was made.
True copyright lasts for the lifetime of the author plus 70 years.
Unregistered Design Rights
For up to 15 years the external appearance of articles whether they are artistic or functional can be automatically protected, but only if the design is the shape or configuration of a product (so for example textiles are not covered although they may be eligible for registration as a Registered Design or have copyright protection).
There is also a European Community unregistered design right which gives protection against deliberate copying of designs for up to three years, but only outward appearance is protected.
Unregistered trade marks ™ provide businesses with protection in their good name and reputation. These rights actually don’t arise under Statute but under the common law “tort” (i.e. obligations in law arising independently of a contract) of “passing off”.
Trade Secrets and Confidential Information
This is a separate category. There is no statutory recognition of these rights as Intellectual Property as such but many businesses rely on them. A famous example is the ‘Coca Cola’ Recipe which was kept as a trade secret. The law of contract is used to protect proprietary information belonging to a person, business or organisation and the secret is disclosed to persons on a strict ‘need to know basis’ and only where the recipient of the secret or confidential information has agreed in a legal contract to keep the information secret and only to use and treat it as expressly specified in the contract. The type of information which is relevant here is information critical to business success and/or valuable to its competitors.
You only need to ask yourself “would this information be of use to our competitors?” Or in the case of the University “would the leaking of this information assist other research groups (including those in industrial and commercial entities) or prejudice a patent filing?” Once these secrets are disclosed it is impossible to retrieve them. In a University context part of our raison d’être is the dissemination of knowledge so decisions need to be made as to what knowledge we disseminate and what we keep secret and/or disclose only after we have secured potential ‘hard rights’ for us, or for our collaborators.
Soft Rights - some general observations
The difficulty with ‘soft’ rights is that where you believe a person is infringing your rights it is up to you to assert your rights against the infringer. You have to show that the right actually exists and that it belongs to you and that the infringer is unlawfully interfering with your rights. In the case of copyright, you have to prove that the infringer has copied your work. In the case of confidential information you have to show that you owned the right and that the infringer breached his legal obligations. All of this presents a significant evidential burden.
With soft rights you also sometimes need to be careful not to make assumptions about owning your creation and if necessary make a legal contract to achieve your ends. So for example if a creative work is produced in the course of employment copyright will usually belong to the employer. But if a Company pays a contractor to create a work but neglects to acquire copyright it will be retained by the contractor who may be entitled to further payment if the Company re-uses and/or adapts the work beyond the scope of what was initially agreed.
Patents, Registered Designs and Registered Trade Marks ®.
Hard rights require a positive act by the owner to arise. The owner pays for (and complies with all requirements in respect of) the entry of his name on a register, which describes the nature of the right and names the owner, so there is no need as a matter of evidence in any infringement action to prove these factors. A further advantage is that with hard rights ignorance of a person’s registered rights is not a defence to an infringement action.
However despite registration trademarks can become unenforceable for non-use. Patents also can be rendered invalid, in spite of the arduous and expensive process that leads to grant.
A patent protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made.
A patent gives the owner the right to prevent others from making, using, importing or selling the invention without permission.
To be patentable the invention must be new, have an inventive step, be capable of being made or used in some kind of industry and not be within various exceptions. If you publish results which disclose an invention before filing a patent you will destroy novelty in your own invention, and won't be able to be awarded a patent in Europe. In the US however there is a 12 months 'grace' period from publication during which you can file a patent application.
The procedure required to obtain a patent is time consuming and expensive, particularly where, as will usually be the case, the applicant wishes to prosecute patent rights abroad, (pursuant to the Patent Co-operation Treaty). It can take anything from between 3 and 7 years for a patent to be granted (even longer in some jurisdictions) and, depending on the countries in which one wants to pursue rights, can cost anything from £5K-£30K (a fairly conservative estimate). If litigation ensues then the costs will be astronomical.
The University, through Bath Ventures, will make patent filings to preserve commercialisation potential in relation to academic inventions which have a prospect of market interest. It will then seek to enter into commercialisation arrangements which will usually include a term whereby the cost of patent prosecution and any infringement proceedings will not be borne by the University.
The UK design right protects the overall appearance of a design, (but not features dictated by technical function) and gives monopoly protection for 25 years. In order to qualify for protection the design must be original i.e. demonstrably new with individual character. The protection can be extended internationally, mainly to commonwealth countries.
Digitised icons and computer generated characters can now be registered. The creator can now bring an action on the basis of the design right for the way things looks on screen rather than having to show copyright infringement of the underlying code.
The right is registered by filing an application in the Design Registry which is part of the Patent Office.
It is also possible to file a single application for a Community Design Right which gives protection against deliberate copying of designs for up to 25 years.
Registered Trade Marks
A registered trade mark is a ‘badge of origin’. The owner is allowed to use the ® symbol.
Since the trade mark is registered the owner can prevent anyone else from using the same or similar word, logo or sign in relation to trade in the same or similar goods and services.
Not everything is registerable as a trade mark e.g. trade marks cannot be descriptive or laudatory.