TechnologyJane Lambert27 Nov 201116:00 - 18:00

How the Law protects Investment in

Topics

● Trade secrets● Patents● Copyright and Database Right● Unregistered Design Rights● Chip Topographies● Plant Breeders’ Rights

Technology

● Products● Processes● Computer software● Data manipulation● Web based services● Seeds and plants

Trade Secrets

● Law of Confidence● Common law or judge made doctrine● Coco v A N Clark (Engineers) Ltd

○ Information must have quality of confidence○ Imparted in circumstances giving rise to an

obligation of confidence○ Unauthorized use

Trade Secrets

● Quality of confidence○ Information the use or disclosure of which could

injure confider or benefit confidante○ must be secret or at least not generally known○ ceases to be confidential if it can be reverse

engineered○ examples include source code, chemical formulae

● Overlap with database right

Trade Secrets

● Circumstances giving rise to an obligation of confidence○ non-disclosure agreement○ employment relationship○ professional relationship○ obvious from the nature of the information

● Confidentiality agreements not always effective

Trade Secrets

● Unauthorized use○ use for a purpose other than that of the disclosure○ disclosure to a person other than the one authorized

to receive the information○ making and keeping copies of confidential

documents without consent○ failure to return documents disclosed in confidence○ failure to keep confidential documents secret

Trade Secrets

● Remedies○ interim injunction in Chancery Division○ delivery up of confidential documents and any

copies○ final injunction and damages or account of profits○ final injunction can be granted by a district judge of

the small claims track of the IP Enterprise Court● Draft EU Directive on Trade Secrets

Trade Secrets

● Antithesis of patent protection where a monopoly is the reward for disclosure of the technology

● Every patented invention begins life as a trade secret

● Widely used by the software industry

Patents

● Monopoly of a new invention which may be a product or a process○ making, distributing, marketing, importing, using and

keeping a new product○ using a new process ○ distributing, marketing, importing, using and keeping

a product derived from a new process

Patents

● Sources of law○ TRIPS○ Paris Convention○ Patent Cooperation Treaty○ European Patent Convention

● Patents Act 1977● Patents Rules 2007

Patents

● Institutions○ Patent Office (now known as the Intellectual

Property Office or “IPO”)○ European Patent Office (EPO”)○ World Intellectual Property Organization (“WIPO”)

● British patents (for UK alone issued by IPO)● European patents issued by the EPO● European patents (UK) EP designating UK

Patents

● Applications may be made to○ the IPO for British patents○ the EPO for European patents including European

patents (UK)● Applications may also be made through the

PCT for a British or European patent:○ Applications to a patent office outside UK or even

Europe○ processed by the WIPO

Patents

● Applications may be made to○ the IPO for British patents○ the EPO for European patents including European

patents (UK)● Applications may also be made through the

PCT for a British or European patent:○ Applications to a receiving office (patent office);○ published by the WIPO.

Patents

Patentable inventions must ● be new● involve an inventive step● be capable of industrial application● not be excluded by statute

Patents

● Novelty means not part of the “state of the art”

● Prior art includes all matter that has been made available to the public anywhere in the world by written description or otherwise

● Includes but not limited to patents and patent applications and technical literature

Patents

Invention includes an “inventive step” if it is not obvious to a “person skilled in the art” having regard to the state of the art

Patents

Capable of industrial application means that the invention may be used in any kind of industry including agriculture

Patents

Excluded matter includes● computer programs, methods of doing

business and presentation of information “as such”

● inventions contrary to public policy or morality

● methods of treatment and diagnosis but not medicines

Patents

Monopoly enforced by civil proceedings in:● Patents Court● Intellectual Property Enterprise CourtBoth courts are part of the Chancery Division and sit in the Rolls Building.

Patents

Intellectual Property Enterprise Court● specialist list● Judge Hacon and other Enterprise judges● trials limited to one day (or at the most) two● recoverable costs limited to £50,000 for trial

on liability and £25,000 for inquiry or account of profits

Software

Because computer programs “as such” cannot be patented, industry relies on● law of confidence ● copyright ● database right.However, it is possible to patent a software implemented invention in certain circumstances.

Design right

● Part III of Copyright, Designs and Patents Act 1988

● Protects investment in research and development of products that might be protected by utility models (or equivalents) in other countries

● Protection against copying of designs

Design right

● Very short term (15 years if no products are made to the design or 10 years if they are)

● Licence of right available for last 5 years of design right term

● Almost unique to the UK which means that protection does not extend to US, Japanese, Chinese, Russian or Indian designs etc

Semiconductor Topographies

● The Design Right (Semiconductor Topographies) Regulations 1989

● Extended design right protection to semiconductor topographies with○ longer term○ protection for nationals of countries that protect UK

topographies

Plant Breeders’ Rights

● Plant Varieties Act 1997● Council Regulation 2100/94● UPOV Treaty

Any QuestionsJane Lambert4-5 Gray’s Inn SquareGrays InnLondonWC1R 3AHTel 020 7404 5252jlambert@4-5.co.uk