Literature reader: D. Gervais, The TRIPS Agreement: Drafting History and Analysis, London: Sweet & Maxwell 2003, p. 274-277 and 296-311
Literature reader: D. Gervais, The TRIPS Agreement: Drafting History and Analysis, London: Sweet & Maxwell 2003, p. 274 – 277
There are no multilateral conventions concerning trade secrets. However TRIPS does provide for protection of certain information to a large extent. The expression ‘undisclosed information’ is not used because undisclosed information do not really have to be protected since no one has the information. Information is in fact selectively disclosed with precautionary conditions.
Article 39 of the TRIPS does provide for that natural and legal persons have the right to lawfully prevent the disclosure or acquisition or usage of certain information without their consent in a manner contrary to honest commercial practices.
(The expression “a manner contrary to honest commercial practices” shall mean at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition. The list given here is not exhaustive, the judicial or administrative authorities have to take into account honest practices established in a specific international trade. If a certain act or omission is gross negligence will be determined on the basis of the national law of the WTO member state.)
The scope of information is provided under Article 39 (2)
(a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
(An information is a secret if persons generally or readily dealing in a certain sector does not have access to such information. The extent of secrecy is determined from a person who is ‘skilled in art’)
(b) has commercial value because it is secret; and
(The information must give competitive advantage to the competitor. The information need not necessarily be able to be put into practice in a valuable way. So does that mean it is a hypothetical or theoretical advantage?)
(c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.
The secrecy maybe ensured through employment agreements or non-disclosure agreements. In terms of Article 39 (3) of TRIPS, the obligation to maintain the secrecy of the information extends to the governmental agencies, when the applicants submit information for obtaining rights with respect to agricultural and pharmaceutical products using new chemical entities, to ensure no unfair commercial use of the said new chemical entities. There is considerable debate and disagreement on what constitutes new chemical entity? It would be difficult to undertake an extensive search like patent related search of the prior art in each case. Hence a chemical entity is considered new if that has not been previously submitted for regulatory approval in the said category. The data submitted should originate as a result of the considerable effort.
The data or information of new chemical entity maybe disclosed
for the sake of public health;
when after the disclosure there is no unfair commercial use of the data or information of new chemical entity
Literature reader: D. Gervais, The TRIPS Agreement: Drafting History and Analysis, London: Sweet & Maxwell 2003, 296-311
Article 44 – Injunctions
44(1) empowers the right holder to desist from an infringement, inter alia to prevent the entry into the channels of commerce. This right is effective only after the infringing goods have cleared the customs. Such an effective clause presumes that goods were being infringed even before the goods cleared customs but due to the lack of jurisdiction, the right holder could enforce his rights. An innocent infringement forms an exception to this right. An innocent infringer is a person who acquired or ordered the subject matter not knowing or having reasonable grounds to know. (Ordering counterfeit products online)
44(2) provides that government or third parties authorized by the government may use the rights of a subject matter after paying remuneration. If remuneration is not paid then right holder is entitled for normal remedies including but not limited to declaratory judgment, adequate compensation etc.
The expression appropriate compensation is used widely in relation to intellectual property laws.
Article 45 – Damages
45(1) The judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.
Article 45(1) empowers the judicial authorities to order infringer pay damages when he knowingly or at least had reasonable grounds to know he is or has infringed upon the rights of a right holder.
The damages includes attorney’s fees as well!!
In terms of Article 45 (2), the judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorney's fees.
In appropriate cases, Members may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity.
In certain circumstances, the judicial authorities can order recovery of profits even when the infringer did not know or did not have the reasonable grounds to know he is or has infringed the rights of the right holder.
It is unclear what those appropriate cases are!!
Basically if the infringer has constructive knowledge then he has to pay. However in appropriate cases even when infringer has no constructive knowledge he has to pay.
Article 46 – other remedies
In order to create an effective deterrent to infringement, the judicial authorities shall have the authority to order that goods that they have found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or, unless this would be contrary to existing constitutional requirements, destroyed. The judicial authorities shall also have the authority to order that materials and implements the predominant use of which has been in the creation of the infringing goods be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements. In considering such requests, the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third parties shall be taken into account. In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit release of the goods into the channels of commerce.
To ensure effective deterrent to infringement, the judicial authorities have the following power
To dispose the infringing goods to the market outside the channels of commerce (i.e. give it to right holder or charitable organisation) or destroy the infringing goods;
To dispose the goods predominantly used for the creation of the infringing goods to the market outside the channels of commerce.
The infringer will not be entitled for any compensation. The decision to dispose or destroy will be taken depending upon the seriousness of infringement and remedies and impact on third parties -> proportionality requirement. Under exceptional circumstances the infringing trademark maybe asked to be removed and then sell the products.
Article 47 – Right to Information
Members may provide that the judicial authorities shall have the authority, unless this would be out of proportion to the seriousness of the infringement, to order the infringer to inform the right
holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution.
The professional infringer can give names of his accomplices, upstream or downstream in the channels of production and distribution, whether in the same country or not. In case of refusal sanctions applicable under national law for non-cooperation with the courts would apply including contempt of court.
Article 49 – Indemnification the Defendant
The judicial authorities shall have the authority to order a party at whose request measures were taken and who has abused enforcement procedures to provide to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of such abuse. The judicial authorities shall also have the authority to order the applicant to pay the defendant expenses, which may include appropriate attorney's fees.
Legal procedures like any other right maybe used in good faith and sometimes abused (not entirely in good faith). In the latter case the plaintiff maybe called upon to compensate the defendant for expenses and trouble caused by the proceedings, notably through provisional measures taken urgently on the basis of evidence analysed only in part and without counter-evidence.
In respect of the administration of any law pertaining to the protection or enforcement of intellectual property rights, Members shall only exempt both public authorities and officials from liability to appropriate remedial measures where actions are taken or intended in good faith in the course of the administration of that law.
Under Article 49(2) a remedial measure maybe ordered against the public authorities and officials when they act in bad faith. Generally there is a presumption that public authorities and officials act in good faith. This presumption can be refuted when there is a departure from established practice where actions taken cannot be justified.
Remedial measure includes compensation and criminal prosecution.
Article 49 – Administrative Procedures
To the extent that any civil remedy can be ordered as a result of administrative procedures on the merits of a case, such procedures shall conform to principles equivalent in substance to those set forth in this Section.
If any administrative authorities are approached seeking the protection under Article 42 to 48, then those administrative authorities have to adhere to same set of procedures as those laid down under Article 42 to 48.
Article 50 – Provisional Measure
The judicial authorities are empowered to give provisional orders to prevent any IPR infringement and preserve relevant evidences concerning the IPR infringement.
Where there is a risk of irreparable harm to right holder or destruction of evidence relating to IPR infringement, the judicial authorities can give ex parte orders.
The judicial authorities has the power to insist on reasonable degree on evidence to demonstrate applicant is the right holder.
After the execution of the ex parte order, the defendant can seek for review and hearing of the decision. Based on the proceedings, the judicial authorities can modify or revoke or confirm the earlier ex parte order. Such the right to review has to be exercised with 20 working days or 31 calendar days whichever is longer.
If the provisional measure is revoked or lapsed due to act or omission of the applicant and if it is discovered or decided that there was no threat of infringement or actual infringement, then defendant on application is entitled for compensation.
Even though Article 50 does not expressly mention availability of injunctions before any infringement has taken place, however Article 50 (3) in principle provides for availability of injunction even when infringement has not started yet.
Online book par: 1.1-1.6, 3.1-3.38, 5.1-5.145, 5.671-5.715;
Paragraphs in the Book:1.1-1.10, 4.1-4.81, 18.1-18.174, 28.1-28.54
Online book par: 1.1-1.6
Intellectual property, very broadly, means the legal rights which result from intellectual activity in the industrial, scientific, literary and artistic fields.
Reasons for IPR
To bestow moral and economic rights to creators for their creations and to clarify the rights of the public to access to those creations.
To encourage creativity and fair trading which would contribute to economic and social development.
Intellectual property is traditionally divided into two branches, “industrial property” and “copyright.”. The Convention Establishing the World Intellectual Property Organization (WIPO), concluded in Stockholm on July 14, 1967 (Article 2(viii)) provides that “intellectual property shall include rights relating to:
1. literary, artistic and scientific works,
2. performances of performing artists, phonograms and broadcasts,
3. inventions in all fields of human endeavor,
4. scientific discoveries,
5. industrial designs,
6. trademarks, service marks and commercial names and designations,
7. protection against unfair competition, and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.”
The areas mentioned as performances of performing artists, phonograms and broadcasts are usually called “related rights,” that is, rights related to copyright.
The expression “industrial property” covers inventions and industrial designs. Inventions are new solutions to technical problems and industrial designs are aesthetic creations determining the appearance of industrial products. In addition, industrial property includes trademarks, service marks, commercial names and designations, including indications of source and appellations of origin, and protection against unfair competition.
Scientific discoveries and inventions are not the same. The Geneva Treaty on the International Recording of Scientific Discoveries (1978) defines a scientific discovery as “the recognition of phenomena, properties or laws of the material universe not hitherto recognized and capable of verification” (Article 1(1)(i)). Inventions are new solutions to specific technical problems.
Online 3.1-3.38 (page 174 – 178)
Industrial Property Protection and Development
An efficient patent system contributes to the stimulation of innovation in three main ways.
The existence of the patent system, with the possibility of obtaining the exclusive right to work on the invention for a limited period of time, constitutes an important incentive to inventive and innovative activity.
The limited period of time during which the holder of a patent is entitled to prevent others from using his invention creates an environment which facilitates the efficient development and utilization of patented inventions. It protects the inventor against uncontrolled competition from those who have not taken the initial financial risk. It thus creates conditions in which risk capital can be safely advanced for the transformation of an invention into an innovation. The inventor will be at ease to further develop the invention into a final, commercially polished, product or process that could be marketed and produce a benefit.
It contributes to the dissemination of new knowledge since the right of the inventor to prevent others from using his invention for a limited period is not granted freely. In return for the grant of a patent, the inventor must disclose the details of his invention to society. Thus the information contained in a patent is available for research and experimental purposes (although not, of course, for commercial use) by all during the term of the patent grant. On the expiration of the patent term the information falls into the public domain and is freely available for full commercial use by all. The patent system thereby contributes to the evolution of the technological base of industry.
Governmental benefits for patents holders
reduced taxes in respect of income stemming from licensed patents and know-how;
reduced fees for acquisition and maintenance of industrial property rights by individual inventors;
special loans or subsidies, including interest-free or low interest loans;
grants for development of certain inventions and innovations;
possibilities for concluding governmentally or publicly financed “research contracts.”
4.1-4.81, (217 - 231)
Enforcement of Industrial Property Rights, Copyright and Related Rights
All intellectual property systems need to be underpinned by a strong judicial system for dealing with both civil and criminal offenses, staffed by an adequate number of judges with suitable background and experience. Without a proper system for both enforcing rights and also enabling the grant of rights to others to be resisted, an intellectual property system will have no value.
Industrial property offices frequently have quasi-judicial functions in the administration of industrial property systems, and provide a forum for procedures for contesting rights under consideration or granted by the office. Such procedures are called Opposition. Any person can oppose either before the rights are granted or after they are granted.
In many countries there is no provision at all for opposition because the industrial property office lacks the expertise. This can be the case in those countries, such as France, where no substantive examination is carried out. In such situations, revocation before the courts is the only possibility for securing cancellation or amendment of a competitor’s patent.
Why does the law permit opposition after granting registration right?
No examination is foolproof. With even the most rigorous examination system, the State cannot guarantee that the rights which it grants are valid — there is always the possibility that a prior right has been overlooked or a specification misunderstood.
How to avoid litigation ?
Agreement – A competitor whose operations are obstructed by earlier rights will usually seek to avoid or overcome the problem in a legitimate way, e.g. by inventing around the protected area in the case of an earlier patent. Another approach is to seek a license or to negotiate some other agreement in a friendly way.
Legal Notice – The right holders ought to be vigilant. If a right holder comes across a potential IP infringer then right holder can send a legal notice. Threatening to sue or actually instituting a suit without IP infringement can entail costs and even fines to the right holder.
Negotiation – During the attempts to negotiate, the supposed infringer may claim that he is not infringing; or he may allege that the right is of little value and does not justify significant royalties; or he may argue against the proposed license terms. It may well be worth suggesting that the services of a mediator be used or that the issue should be decided by arbitration. Of course, both sides need to agree to accept an arbitrator’s decision and a contract to that effect may be needed
How can anyone be abreast about the existing patents?
Check out the patent office journals and published applications. One can also learn from the search report, published with the application, of the prior art which will be considered at the examination stage.
Fate of the litigation
It is noteworthy that only a small minority of cases actually get to the trial stage, and the rest are settled along the way, for reasons of time, effort and expense. Cases involving complex technology can take a very long time in court with expert witnesses being called and subjected to examination and cross-examination by both sides. The judge can make various awards. In addition to injunctions, the court may also award damages in respect of the infringement, namely compensation for sales and markets lost as a result of the infringing activity. As an alternative to damages, the owner of the patent can be awarded an account of profits. All the profits derived by the defendant as a result of the infringement may be surrendered to the patent owner. An order requiring the defendant to deliver up to the patent owner, or to destroy, any products or articles incorporating the patented invention can also be made. Finally, the patent owner can secure a declaration that the patent is valid and infringed.
How are counterfeit goods detected?
Right holders may themselves become aware, police authorities or customs
How to defend a patent infringement case?
The issue of infringement is very rarely considered on its own. A patent which can be shown to be invalid cannot be enforceable. In spite of the examination of patent applications during prosecution, no patent system guarantees the validity of a granted patent. In a patent enforcement action, therefore, a defendant will usually add to any defense of non-infringement a further defense, often in the form of a counterclaim, that the patent is invalid and hence not enforceable even if infringed. In some jurisdictions, the issues of infringement and validity are heard together. In others, the question of validity is heard separately by a different court or it may be referred to the Patent Office.
Enforcement of Copyrights
Article 16(1) and (2) of Berne Convention, provide that infringing copies of a work can be seized 1. In any country of the Berne Union where the work enjoys protection;
2. When the copies originate from a country where the work is not or no longer protected.
Article 13(3) of Berne Convention, provides for seizure of copies of certain recordings of musical works imported without permission of the author or other owner of copyright in the country of importation.
The purposes of civil remedies are (i) to provide compensation for the prejudice caused by infringements, (ii) to dispose appropriately of the infringing copies (typically through destruction or other disposal outside the normal channels of commerce), (iii) to dispose appropriately of implements used for infringing activities and (iv) to grant injunctions to prohibit further infringements. Such remedies should always be available irrespective of whether the infringement has been committed willfully and/or for profit-making purposes.
Border measures are intended to prevent infringing copies — or lawful copies in violation of the right of importation — from being brought into the country concerned. They constitute an effective way to counter acts of infringement, because it is frequently easier to prevent the distribution of infringing copies at the border than after the copies have already been brought into the country and put into circulation. Border measures are usually carried out by administrative authorities (customs authorities) and not by judicial authorities.
“Counterfeits” are usually exact copies of a sound or video disc or tape with, for instance, exactly the same packaging as the original, usually including even the trademark. The copies could be either tapes or — more sophisticated — industrially manufactured CDs.
“Bootlegs” are copies of recordings of a live performance or a broadcast, if the recording was made without the authorization of the right-owner concerned.
“Pirate copies,” finally, are unauthorized copies of a sound or video recording which do not attempt to imitate the original but are generally of low quality, with handwritten labels, etc.
The term "counterfeit" describes fake goods. The term "piracy" describes the act of reproducing movies, music, books or other copyrighted works without permission from the copyright owner.
Five categories of works, performances or productions are the most exposed victims of piracy, namely: sound recordings; video recordings; computer programs; broadcasts; and books.
The anti-piracy measures should include the following:
Seizure of the goods suspected to be unauthorized copies;
Sealing the premises where the unauthorized copies are being manufactured, packaged, stored or offered for sale, rental, lending or other distribution;
Seizure of the tools that could be used to manufacture or package the unauthorized copies, and of business documents referring to the copies;
Ordering the termination of the manufacture or distribution of the unauthorized copies;
Ordering the disclosure of the source of the copies suspected to be unauthorized copies.
5.1-5.145 (251 - 269)
The Paris Convention for the Protection of Industrial Property
The provisions of the Paris Convention may be sub-divided into four main categories:
A first category contains rules of substantive law which guarantee a basic right known as the right to national treatment in each of the member countries;
To treat all the countries party to Paris Convention as though their own. The national treatment extends to non-members having their business in Paris Convention countries. (Article 2 and 3). there must be actual industrial or commercial activity. A mere letter box or the renting of a small office with no real activity is not sufficient.
This national treatment rule guarantees not only that foreigners will be protected, but also that they will not be discriminated against in any way.
Foreigners can be discriminated when it comes to judicial and administrative procedure. Ex - requirement for foreigners to deposit a certain sum as security or bail for the costs of litigation. Another example is expressly stated: the requirement that foreigners should either designate an address for service or appoint an agent in the country in which protection is requested.
A second category establishes another basic right known as the right of priority;
The right of priority means that, on the basis of a regular application for an industrial property right filed by a given applicant in one of the member countries, the same applicant (or its or his successor in title) may, within a specified period of time (six or 12 months), apply for protection in all the other member countries. These later applications will then be regarded as if they had been filed on the same day as the earliest application. Hence, these later applications enjoy a priority status with respect to all applications relating to the same invention filed after the date of the first application. (Article 4)
Practical advantages, an applicant need not apply in all jurisdictions at the same time. He can spread out and learn the steps in each country.
The right of priority can be based only on the first application for the same industrial property right which must have been filed in a member country. It is therefore not possible to follow a first application by a second, possibly improved application and then to use that second application as a basis of priority.
A patent application for the same invention filed by a third party during the priority period will not give a prior right, although it was filed before the later application. Likewise, a publication or public use of the invention, which is the subject of the later application, during the priority period would not destroy the novelty or inventive character of that invention. It is insignificant for that purpose whether that publication is made by the applicant or the inventor himself or by a third party.
The length of the priority period is different according to the various kinds of industrial property rights. For patents for invention and utility models the priority period is 12 months, for industrial designs and trademarks it is six months.
A third category defines a certain number of common rules in the field of substantive law which contain either rules establishing rights and obligations of natural persons and legal entities, or rules requiring or permitting the member countries to enact legislation following those rules;
3.1 Concerning Patents
Patents for invention granted in member countries to nationals or residents of member countries must be treated as independent of patents for invention obtained for the same invention in other countries, including non-member countries. The rule concerning the “independence” of patents for invention is contained in Article 4bis. It means that the grant of a patent for invention in one country for a given invention does not oblige any other member country to grant a patent for invention for the same invention.
Similarly, a patent for invention cannot be refused, invalidated or otherwise terminated in any member country on the ground that a patent for invention for the same invention has been refused or invalidated, or that it is no longer maintained or has terminated, in any other country.
Compulsory licenses may also be granted for reasons of the public interest, in cases where there is no abuse by the patent owner of his rights — for example, in the fields of military security or public health. There are also cases where a compulsory license is provided for to protect the public interest in unhampered technological progress.
Dependent Patent – If a patented invention cannot be worked without using an earlier patent for invention granted to another person, then the owner of the dependent patent, in certain circumstances, may have the right to request a compulsory license for the use of that invention. If the owner of the dependent patent for invention obtains the compulsory license, he may in turn be obliged to grant a license to the owner of the earlier patent for invention
Temporary Protection – The principle stated in Article 11 is that the member countries are obliged to grant, in conformity with their domestic legislation, temporary protection to patentable inventions, utility models, industrial designs and trademarks in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any member country.
3.2 Concerning Trademarks
An unused registered trademark can be ripped off of its registration.
Concurrent use of two same trademark for same goods are allowed if they coexist in isolation of each and are good faith users, as long as the said concurrent use does not mislead the public or is contrary to the public interest.
After the expiry of the trademark registration period, the right lapses. The right holder is given a 6 months grace after the expiration but before the right lapses so that he has time to renew.
National Treatment – an applicant from the Union can apply for tm registration in any Member State. The Member State cannot refuse registration on the ground that tm has not been registered in the country of the origin. (Article 6).
Well Known TM – A member country to refuse or cancel the registration and to prohibit the use of a trademark that is liable to create confusion with another trademark already well known in that member country. Protection extended to a trademark that is well-known in a member country even though it is not registered or used in that country. The protection of the well-known trademark results not from its registration (which prevents the registration or use of a conflicting trademark) but from the mere fact of its reputation. The protection of well-known trademarks is deemed justified on the grounds that a trademark that has acquired goodwill and a reputation in a member country ought to give rise to a right for its owner. The registration or use of a confusingly similar trademark would, in most cases, amount to an act of unfair competition and be prejudicial to the interests of the public, who would be misled by the use of a conflicting trademark for the same or identical goods than those in connection with which the well-known trademark is registered.
A third party or a private party cannot register the emblems or signs or flags of governmental organisation.
The general rule is -> if a particular work is protected in country A, then its protected only in country A and not country B. However there is an exception carved out in Article 6quinquies which states that if a tm is registered in country A and not be country B, it can use the benefits on registration in country A in country B as well. Reason for the exception -> it is in the interest of both owners of trademarks and the public to have the same trademark apply to the same goods in various countries. The differences in domestic legislation could prevent the uniform use of the same trademark in relation same goods.
1st permitted ground for refusal or invalidation of a trademark exists where the trademark infringes rights of third parties acquired in the country where protection is claimed
2nd Ground for refusal or invalidation is when the trademark is devoid of distinctive character, or is purely descriptive, or consists of a generic name.
3rd Ground for refusal or invalidation exists where the trademark is contrary to morality or public order.
4th Ground for refusal or invalidation exists if the registration of the trademark would constitute an act of unfair competition.
A fifth and last permissible ground for refusal or invalidation exists where the trademark is used by the owner in a form which is essentially different from that in which it has been registered in the country of origin. Unessential differences may not be used as grounds for refusal or invalidation.
3.3 Service Marks
A service mark is a sign used by enterprises offering services, for example, hotels, restaurants, airlines, tourist agencies, car-rental agencies, employment agencies, laundries and cleaners, etc., in order to distinguish their services from those of other enterprises. Thus service marks have the same function as trademarks, the only difference being that they apply to services instead of products or goods.
3.4 Collective marks
Temporary trademark protection to be granted for trademark used in international exhibitions.
A fourth category deals with the administrative framework which has been set up to implement the Convention, and includes the final clauses of the Convention.
Lecture 2
Online book pages: 40-67 (Copyright and Related Rights); 207-230;
(Enforcement(…)) Pages of the Book:151-181 (Copyright and Related Rights); 317-347 (Enforcement(…)) -> unclear which book? Wipo online book has different things.
Literature reader:
- W. Cornish / D. Llewlyn, Intellectual Property: Patents, Copyright, Trademarks and Allied Rights 86th ed., London 2007, par 12/01-12/35;
- Concise European Copyright Law, Th. Dreier and B. Hugenholtz (ed.), Kluwer: Deventer 2007, p. 121-141, 355-366, 369-380 (Bechtold). -> not found!
W. Cornish / D. Llewlyn, Intellectual Property: Patents, Copyright, Trademarks and Allied Rights 86th ed., London 2007, par 12/01-12/35
The copyright owner broadly has two rights – (I) Reproduction Rights; and (II) Performing Rights.
Author of the work has the ownership of the work. To establish copyright infringement, owner has to show –
Causal connection – there has be a relationship or a causal connection between the copyright work and the infringing work. Plaintiff does not have to prove that infringer was aware that the infringing work is violative of the copyright. If the evidence shows that there are striking similarities between the two works, that the plaintiff’s was the earlier in time and that the defendant had the opportunity to get to know the plaintiff’s work, then a court may well find copying proved in the absence of any convincing explanation to the contrary by the defendant.
Misappropriation
Subconscious copying – when the infringer denies any intention to copy. Some judges recognize subconscious copying could occur where a person reads, sees or hears something. A varied factors have to considered to establish infringement.
Indirect copying – when a book is adapted to a play and then a ballet without due permission.
Substantial taking – depends not on the quantity but on the quality what has been taken. Substantial taking of the ideas is permitted but expression of ideas is not allowed.
Unaltered copying – did not understand
Extent of defendant’s alteration
Character of plaintiff’s or defendant’s work – criteria differs for artistic and literary work and so on and so forth.
Nature of plaintiff’s work – In Warwick Film vs. Eisinger, an author published an edited version of Oscar Wilde’s trials, a transcript of which had appeared earlier. The said author acquired copyright in the while by virtue of his work in selection an providing linking passages. The defendant in the said case took substantial portion from the transcript and hence court held that the author’s edited portion was not infringed.
Extent of plaintiff’s effort
Undue advantage taken by defendant– the defendant is entitled to use the plaintiff’s work as a source of ideas or information if he takes it as a starting point for his own collation of information or as a means of his own independent research. However he is not entitled to copy what the plaintiff has done as a substitute for exercising his own labour, skill and judgment.
Whether the defendant’s use will seriously interfere with the plaintiff’s exploitation of his own work – it is irrelevant if there is or a likelihood of competition between infringed work and the original work.
Reproduction by the original author – suppose that an author creates a work, and subsequently, at a time when he does not own the copyright, he reproduces it in a second work. Some concession in his favour seems called for, in order to allow him to continue doing the kind of work at which he is proficient. But across the spectrum of copyright activity it is difficult to know how far judges would accord him any greater freedom than is permitted to others.
Infringement carried out by others – under tort law employer can be vicariously held liable for the infringement committed by his employees during their course of employment and acts of the independent contractors which he specifically requested. Legislature with the Copyright, Design and Patents Act 1988, introduced three forms of infringement where employer can be held liable for
authorizing infringement by others – it is necessary to show an act of infringement has occurred as a result of the authorization;
permitting a place of public entertainment to be used for performance of a work – people who organize pubic entertainments by hiring musicians as independent contractors are likely to authorizing or permitting infringement if they simply leave the choice of music to the musicians. Accordingly they ought to procure an appropriate license from the Performing Right Society themselves or require the musicians to do so. If the defendant is not the organizer of the entertainment but only the owner of the hall, he is unlikely to be held culpable if he is simply indifferent to the choice of music;
providing apparatus for performing, playing or showing a work etc. – refers to authorization by implication. An Australian university was held to have authorized infringement by allowing library reader to use its copying machine without giving precise information about the limits to copying within copyright legislation and any supervision. On the other hand if the university loaned the book home and the student copied the book at home then university would not have authorized infringement. The reasoning holds true for the manufacturer of a twin deck cassette recorder. He cannot be held has authorized any infringement just because he advertised about the possibility of recording.
The Copyright, Design and Patents Act 1988 recognizes two broad categories of infringement (1) restricted acts or primary infringement which occur without regard to the defendant’s state of mind; and (2) secondary infringements which are committed only if the defendant knew or had reason to believe a defined state of affairs relating to infringement.
Rights concerning with Reproduction and Adaption
Primary infringement – copying: Copyright work may be infringed by coping it, issuing it to public, or by making an adaption of it. Infringing acts include (a) storing the work in any medium by electronic mean – which clearly covers computer storage and presumably extends to the incorporation of the work in a record or film and transcription into digital form; and (b) converting a 2 dimensional artistic work into 3 dimension and vice versa. But other changes of form may also count for instance turning a story into a ballet copying a photograph by painting, making a knitting pattern into a fabric and turning a drawing such as a cartoon into a sketch. Making a photograph of the whole or a substantial part of any image forming part of a film, broadcast or cable programme – for instance for a post-card – is such an infringement. The publisher’s copyright in typographical format is infringed solely by making a facsimile copy, even if it is enlarged or reduced.
Primary Infringement – issuing copies, rental and lending: Parallel importation of products legitimately marketed in other countries.
Secondary infringement – dealing with copies: infringement of all forms of copyright may be committed by a defendant concerned in the commercial exploitation of copies, if he knows or has reason to believe that the copies were infringement when they were made.
Rights concerned with communication to the public: performance, broadcasting, internet and similar provision
Primary infringement – communication to the public: performing rights comprise of performing, playing or showing a work in public, broadcasting it and cable-casting it. With the advent of internet definition of communication to public has broadened. The ECJ has determined that, in the interests of authors, ‘communication to the public’ must be interpreted broadly. Accordingly, a hotel which receives a broad-cast through a central aerial and then communicates it to bedrooms is transmitting to the public and must obtain copyright licenses to do so. That of course would not be necessary if the set in each room received the broadcast directly.
The possibilities in this field of infringement have become complex. If for instance, a copyright musical work is performed to a public audience at the same time as being televised, both the performance and the broadcast require a license. If the broadcast is received and shown publicly, this calls for license of the copyright in music to broadcast.
Performance in public: to qualify to ‘performance in public’ the performance does not have to be to a paying audience or by paid performers. It is enough that entertainment is being offered incidentally as part of some commercial activity (such as running a hotel, or even a shop that is seeking to sell the records being played) or industrial production (music while you work). Even such worthy institutions as a women’s institute and a football club’s supporter’s association engage in public performance, where they restrict audience to their own members or allow in guests. A school play or other performance will public performance if parents and friends are present.
Broadcasting: the broadcasting and cable transmission of copyright works require authorization. However this portion of the copyright in a sound recording (as distinct from any copyright in works recorded) is subject to a statutory license.
Secondary infringement – performance: these are (a) permitting premises to be used for an infringing performance; and (b) providing certain apparatus (for playing recordings, showing films and receiving broadcasts etc.)
Online book pages: 40-67 (Copyright and Related Rights); 207-230
Online book pages: 40-67 Copyright and related rights
Copyright law deals with particular forms of creativity, concerned primarily with mass communication. It is concerned also with virtually all forms and methods of public communication, not only printed publications but also such matters as sound and television broadcasting, films for public exhibition in cinemas, etc. and even computerized systems for the storage and retrieval of information.
Copyright deals with the rights of intellectual creators in their creation. Most works, for example books, paintings or drawings, exist only once they are embodied in a physical object. But some of them exist without embodiment in a physical object. For example music or poems are works even if they are not, or even before they are, written down by a musical notation or words.
Copyright law, however, protects only the form of expression of ideas, not the ideas themselves. The creativity protected by copyright law is creativity in the choice and arrangement of words, musical notes, colors, shapes and so on. A greater number of productions in literature and the arts, would imply numerous so-called “auxiliaries” (the performers, producers of phonograms and broadcasting organizations) in the book, record and entertainment industries. Legislation could provide for the protection not only of the creators of intellectual works but also of the auxiliaries that help in the dissemination of such works, in respect of their own rights.
Copyright protection, from the viewpoint of the creator of works, makes sense only if the creator actually derives benefits from such works, and this cannot happen in the absence of publication and dissemination of his works and the facilitation of such publication and dissemination.
For works to be eligible for copyright protection it must
Be original intellectual creation. A non-exhaustive, illustrative enumeration of these is contained in national copyright laws.
Originate from the author. He must have their origin in the labor of the author. But it is not necessary, to qualify for copyright protection, that works should pass a test of imaginativeness, of inventiveness.
The work is protected irrespective of the quality thereof and also when it has little in common with literature, art or science, such as purely technical guides or engineering drawings, or even maps. Following category of work deserve protection
Literary works: novels, short stories, poems, dramatic works and any other writings, irrespective of their content (fiction or non-fiction), length, purpose (amusement, education, information, advertisement, propaganda, etc.), form (handwritten, typed, printed; book, pamphlet, single sheet, newspaper, magazine); whether published or unpublished; in most countries “oral works,” that is, works not reduced to writing, are also protected by the copyright law;
Musical works: whether serious or light; songs, choruses, operas, musicals, operettas; if for instructions, whether for one instrument (solos), a few instruments (sonatas, chamber music, etc.), or many (bands, orchestras);
Artistic works: whether two-dimensional (drawings, paintings, etchings, lithographs, etc.) or three-dimensional (sculptures, architectural works), irrespective of content (representational or abstract) and destination (“pure” art, for advertisement, etc.);
Maps and technical drawings;
Photographic works: irrespective of the subject matter (portraits, landscapes, current events, etc.) and the purpose for which they are made;
Motion pictures (“cinematographic works”): whether silent or with a soundtrack, and irrespective of their purpose (theatrical exhibition, television broadcasting, etc.), their genre (film dramas, documentaries, newsreels, etc.), length, method employed (filming “live,” cartoons, etc.), or technical process used (pictures on transparent film, videotapes, DVDs, etc.).
Computer programs (either as a literary work or independently).
Many copyright laws protect also “works of applied art” (artistic jewelry, lamps, wallpaper, furniture, etc.) and choreographic works.
A copyright in a work comprises of the following rights –
Right to copy the work – right to rental;
The right to reproduce the work;
Right to perform the work in public;
Right to make a sound recording of the work – The right to authorize the making of a sound recording belongs to the owner of the copyright in the music and also to the owner of the copyright in the words. If the two owners are different, then, in the case of a sound recording incorporating both music and words, the maker of the sound recording must obtain the authorization of both owners. Under the laws of some countries, the maker of a sound recording must also obtain the authorization of the performers who play the music and who sing or recite the words;
Right to make a motion picture of the work;
Right to broadcast the work; right to translate the work – When a work is broadcast, a wireless signal is emitted into the air which can be received by any person, within range of the signal, who possesses the equipment (radio or television receiver) necessary to convert the signal into sounds or sounds and images. When a work is communicated to the public by cable, a signal is diffused which can be received only by persons who possess such equipment linked to the cables used to diffuse the signal.
In principle, according to the Berne Convention for the Protection of Literary and Artistic Works, owners of copyright have the exclusive right of authorizing both the wireless broadcasting and the diffusion by cable of their works.; and
Right to translate and adapt the work – Translations and adaptations are themselves works protected by copyright. Therefore, in order, for example, to reproduce and publish a translation or adaptation, the publisher must have the authorization both of the owner of the copyright in the original work and of the owner of copyright in the translation or adaptation.
Moral Rights – wherein the author can claim the authorship of the work and right to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the work which would be prejudicial to the author’s honor or reputation.
Neighboring Rights
There exist rights related to, or “neighboring on”, copyright. These rights are generally referred to as “related rights” (or “neighboring rights,”) in an abbreviated expression. It is generally understood that there are three kinds of related rights:
The rights of performing artists in their performances,
The rights of producers of phonograms in their phonograms, and
The rights of broadcasting organizations in their radio and television programs.
Ownership of copyright
The person who created the work, that is to say, the author of the work is generally the owner of copyright in a work. There can be exceptions to this general principle. Such exceptions are regulated by the national law. For example, the national law may provide that, when a work is created by an author who is employed for the purpose of creating that work, then the employer, not the author, is the owner of the copyright in the work. It is to be noted, however, that the “moral rights” always belong to the author of the work, whoever may be the owner of the copyright.
Limitation on copyright protection
Time limitation
Copyright does not continue indefinitely. The law provides for a period of time, a duration, during which the rights of the copyright owner exist. The period or duration of copyright begins with the creation of the work. The period or duration continues until sometime after the death of the author. The purpose of this provision in the law is to enable the author’s successors to have economic benefits after the author’s death. It also safeguards the investments made in the production and dissemination of works. In countries which are party to the Berne Convention, and in many other countries, the duration of copyright provided for by national law is the life of the author and not less than fifty years after the death of the author.
Geographic limitation
The owner of the copyright in a work is protected by the law of a country against acts restricted by copyright which are done in that country. For protection against such acts done in another country, he must refer to the law of that other country. If both countries are members of one of the international conventions on copyright, the practical problems arising from this geographical limitation are very much eased.
Permitted use
Certain acts normally restricted by copyright may, in circumstances specified in the law, be done without the authorization of the copyright owner. Some examples of such exceptions are described as “fair use.” Such examples include reproduction of a work exclusively for the personal and private use of the person who makes the reproduction.
Non Material Use
In some countries, works are excluded from protection if they are not fixed in some material form. In some countries, the texts of laws and of decisions of courts and administrative bodies are excluded from copyright protection. It is to be noted that in some other countries such official texts are not excluded from copyright protection; the government is the owner of copyright in such works, and exercises those rights in accordance with the public interest.
Piracy and Infringement
The unauthorized copying of copyright materials for commercial purposes and the unauthorized commercial dealing in copied materials is known as “piracy”.
Remedies
The main remedies which are available to a copyright owner in respect of infringement in common-law jurisdictions are an injunction to restrain the continuation of the infringement, and damages to compensate the copyright owner for the depreciation caused by the infringement to the value of his copyright.
Anton Piller Order – The order to enter the premises of the defendant or the infringer to search and seize based on an ex parte application.
Discovery against 3rd parties – In certain common-law jurisdictions it has been decided that an innocent third party, who becomes caught up in the wrongdoings of another, is liable to furnish a plaintiff with evidence in his possession relevant to the prosecution of an action by the plaintiff against the wrongdoer.
Interlocutory injunctions – are court orders to compel or prevent a party from doing certain acts pending the final determination of the case. It is an order made at an interim stage during the trial, and is usually issued to maintain the status quo until judgment can be made.
Final remedies – The two usual remedies which are available for copyright owners in common-law jurisdictions following the final trial of an infringement action are a perpetual injunction and damages.
Intellectual Property and Traditional Cultural Expressions
The relationship between tradition, modernity and the marketplace may not, however, always be a happy one. Indigenous and traditional communities refer inter alia to the:
unauthorized adaptation, reproduction and subsequent commercialization of traditional cultural expressions, with no sharing of economic benefits;
use of traditional cultural expressions in ways that are insulting, degrading and/or culturally offensive;
failure to acknowledge the source of a tradition-based creation or innovation.
The protection of expressions of traditional cultures may refer to protection of:
The expressions themselves; and/or,
The reputation or distinctive character associated with them; and/or,
Their method of manufacture (in the case of a handicraft, for example).
The meaning and scope of terms such as “traditional cultural expressions,” otherwise known as “expressions of folklore,” “indigenous culture and intellectual property” and “intangible and tangible cultural heritage” (which is perhaps the most comprehensive term) have been discussed at local, national and international levels. They potentially cover an enormous variety of customs, traditions, forms of artistic expression, knowledge, beliefs, products, processes of production and spaces that originate in many communities throughout the world. There are no widely-accepted definitions of these terms, since what is considered “cultural heritage” or “traditional cultural expressions” depends upon the context and the purpose for which the definition is developed.
Pre-existing traditional culture is generally trans-generational (that is, old), collectively “owned” by one or more groups or communities and is likely to be of anonymous origin, to the extent that the notion of authorship is relevant at all. Pre-existing traditional culture as such and particular expressions thereof are generally not protected by current copyright laws and are treated, from the perspective of the intellectual property system, as part of the “public domain.” This is the approach followed in the national laws of States such as Australia, Belgium, Canada, Colombia, the Czech Republic, Honduras, Italy, the Netherlands, Japan, Kyrgyzstan, the Republic of Korea, the Russian Federation and Vietnam
On the other hand, a contemporary literary and artistic production based upon, derived from or inspired by traditional culture that incorporates new elements or expression is considered as a “new” work. Such a contemporary production may include a new interpretation, arrangement, adaptation or collection of pre-existing cultural heritage and expressions in the public domain, or even their “re-packaging” in the form of digital enhancement, colorization and the like. Contemporary, tradition-based expressions and representations of traditional cultures are generally protected by existing copyright for which they are sufficiently “original”.
“‘traditional cultural expressions’ means and includes
verbal expressions, such as folk tales, folk poetry and riddles, signs, symbols and
indications;
musical expressions, such as folk songs and instrumental music;
expressions by actions, such as folk dances, plays and artistic forms or rituals; whether or not reduced to a material form; and
tangible expressions, such as:
productions of folk art, in particular, drawings, paintings, carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware, jewelry, basket weaving, needlework, textiles, carpets, costumes;
crafts;
musical instruments;
architectural forms.”
Enforcement of Industrial Property Rights, Copyright and Related Rights
Online WIPO 207-230
(207 – 219 – already covered under Lecture 1) (This will have 219 – 230)
Activities within WIPO Concerning Enforcement – WIPO administers many international conventions and treaties relating to intellectual property. WIPO also develops new legislative provisions, both to adapt existing provisions to the new technologies and to reflect the progressively emerging consensus in favor of increasing the level of these provisions.
Intellectual Property Litigation
In many intellectual property systems, it is common to have some form of internal appeal against a patent or trademark examiner’s decision. Boards of Appeal exist for instance in the European Patent Office and the United States Patent and Trademark Office. In a number of countries, the Commissioner or Registrar is able to summon witnesses, administer oaths, require the production of documents or articles and award costs. His functions are therefore often referred to as “quasi-judicial”. Third parties or interested parties can question the validity of the IPR before the registration through a pre-grant appeal or a post-grant appeal after the registration has been bestowed. In most intellectual property systems the courts play an important role in hearing appeals from decisions of the Industrial Property Office and in adjudicating infringement actions.
Procedure of the hearing –
Legal Notice
Summons
Pre-Hearing Conference
Evidence – The evidence put forward in pre-grant appeals will in most cases be quite different from the evidence presented in post-grant appeals.
Three forms of evidence may be distinguished — ”documentary evidence,” namely evidence supplied by writings and documents of all kinds, “real evidence,” namely evidence supplied by things themselves rather than by a description of them, and “expert evidence,” namely oral evidence supplied by an expert.
Market survey evidence – In trademark cases in particular, evidence of the “public mind” or the state of public opinion in relation to a particular trade name, mark or get-up is both relevant and admissible.
Final disposition – When disposing of the appeal, the court normally has the following courses of action available: it may refuse the appeal, it may grant the appeal, it may refer the case back to the Patent Office for reconsideration, or, if the decision appealed against was a decision to reject the application, it may amend the claims and give directions to the Patent Office to grant the patent for invention.
Infringement
Patent Infringement
The first task in any patent infringement action is to accurately assess the limit of the rights granted.
Defenses – The usual defense in an infringement action is that the alleged infringement simply does not fall within the scope of the patent in suit. But far more important than the defense will often be a counterclaim for revocation of the patent. As in trademark infringement, there are a number of statutory grounds by which a defendant can seek to impugn the validity of the patent: to mention some, he may rely upon anticipation, that is lack of novelty, that the invention is obvious, that the patentee has not sufficiently or fairly set out the manner in which the invention is to be worked, that the invention is not useful, that it has been obtained on a false suggestion or misrepresentation or that it has wrongfully been obtained from another.
Copyright Infringement
Possible copyright infringements include – improper reproduction – more number of copies than authorized.
(More on this in Lecture 1)
Defenses for copyright infringement – the most obvious defense is that the impugned work was independently arrived at. Other defenses may be:
That, although there has been some degree of copying, a substantial part of the work in issue has not been taken;
that the work is no longer in copyright;
certain other statutory defenses such as fair dealing and use for educational purposes.
Trademark Infringement and Passing off
Trademark Infringement is a statutory tort arising by virtue of registration of the trademark in issue at a national Trademarks Registry. Trademarks may of course only be registered after satisfying specific conditions imposed by statute and enforced by the Registry.
To register a trademark, the mark should possess the following traits (a) distinctiveness of the proposed mark; (b) whether it is an invented word; (c) whether it has any direct reference to the character or quality of the goods in respect of which registration is sought; (d) whether it has a geographical signification; (e) whether it has signification as a surname, etc.
During the trademark infringement trial, the plaintiff has to submit the trademark registration certificate. On submission of the trademark registration certificate, the court will assess the following
the mark itself and the exact manner in which it is represented, particularly if it is a device mark;
the goods in respect of which registration has been secured;
the name and details of its proprietor; \the date of the registration;
whether it has been registered in Part A or Part B of the Register.
Passing off – non registered trademark owners can sue a person for usage of the same or similar trademark. In case of non-registration, the owner of unregistered trademark has to prove his reputation.
Infringement of registered designs – barely an explanation given
Remedies
Interlocutory order
Final order
Damages
Lecture 3
- A.C. Beunen, Protection for databases, The European Database Directive and its effects in the Netherlands, France and the United Kingdom, Wolf Legal Publishers: Nijmegen 2007 (Doctoral thesis, Leiden University), p. 26-46, 76-77, 105-108.
A.C. Beunen, Protection for databases, The European Database Directive and its effects in the Netherlands, France and the United Kingdom, Wolf Legal Publishers: Nijmegen 2007 (Doctoral thesis, Leiden University), p. 26-46
The right in the database stems from the substantial investment and not originality. According to the directive, the required investment must be qualitatively and/ or quantitatively substantial and be made either in the obtaining, verification and / or presentation of the contents of the database. An assessment of the substantial investment criterion depends on factors such as the database’s size and subject-matter. Thus, a substantial investment is a relative notion. For this reason it will be difficult for the ECJ to develop a general standard for a uniform interpretation of the substantial investment criterion. The databases are eligible for protection regardless of whether or not they have been made available to the public.
Article 7
They are absolute rights which may be transferred, assigned or licensed. Their protection only extends to the database as a whole or substantial thereof. Small parts or individual elements are not covered. The scope of the rights of extraction and re-utilization is similar to that of economic rights belonging to copyright. The extraction right corresponds to the reproduction right, while the reutilization right encompasses the rights of distribution and communication to the public.
The repeated ad systematic use of insubstantial parts is prohibited provided that such use conflicts with a normal exploitation of the database or unreasonably prejudices the legitimate interests of its maker. The sui generis rights is assigned to the maker of the database.
Article 8
3 prohibitory restrictions, 1st addressed to the sui generis right holder and the other two to the lawful user. They cannot be overridden by contract. The provisions of Article 8 apply only to published databases.
Article 9 self-explanatory
Article 10
Paragraph 3 of Article 10 states that the term of protection for a database may start anew after the database has been substantially changed resulting from successive addition, deletions or alterations through a substantial investment. The directive considers a substantially updated version as a new database worthy of its own term of protection. Thus, it does not renew protection for an already existing database. Moreover the new protection term does not apply merely to the changed contents. The whole content of the database whether changed or not profits from a new protection term after the database was substantially changed.
Article 11
Database made by producers in non-EU countries can otherwise only become eligible for the sui generis right by reciprocity. For this, such third countries must offer EU producers a protection comparable to the sui generis right, with a protection term of no longer than 15 years. Subsequently the European Council on proposal by the Commission must conclude an agreement on reciprocity with such a country.
76 – 77 – the originality criterion in the directive
In order to qualify for copyright under the directive, a database needs to constitute the author’s own intellectual creation as regards its selection or arrangement. Gaster indeed argues that the harmonized criterion treads the middle ground between the continental and the Anglo-American approach. It may be argued that many databases do not display an original structure in the sense of the Directive. This is because most of them are made for the benefit of users in search of specific information, so that their structure as to be as functional as possible. This, there is good reason to assume that protection by copyright will only be of limited importance for database. This was in fact the very reason why the new sui generis right was introduced.
In the Netherlands, a work must have an original character of its own and has to bear the personal imprint of the author. The selection of a collection must express a personal view of the author.
105 – 108 The sui-generis right
The substantial investment should be substantial in a qualitative and or quantitative way and must have gone into either the obtaining, verification or presentation of the contents. A quantitative investment may relate to the amount of money spent on the making of the database or to the quantity of the data collected, verified and / or presented. The expenditure of time, effort and energy also counts. One must have substantively invested in obtaining or verifying or presently the contents.
The Dutch spin-off theory applies to the situation where a company already disposes of the data necessary for the database as a result of its main activities, while the production of the database as a result of its main activities, while the production of the database is arguably an additional activity. This theory implies that a database which is produced as a spin-off or a by-product of the producer’s activities may well lack a substantial investment.
Lecture 4
- G. Patterson, ‘Novelty and Inventive Step’, in: A Concise Guide to European Patents, Law and Practice, London: Sweet & Maxwell 1995, p. 133-147 and 150-159;
- J. Park, ‘Interpretation of Patent Claims in the EPO, USPTO, and JPO in the Context of the Doctrine of Equivalents and Functional Claims’ in: E.I.P.R. 2005, p. 237-249;
- J. Pagenberg / W.R. Comish, ‘Conclusion and Proposals for Greater Harmonisation’ in: Interpretation of Patents in Europe. Application of Article 69 EPC, Cologne: Carl Heymanns Verlag 2006, p. 281-284;
- A. Kur and A. Metzger, ‘Exclusive jurisdiction and cross border IP (patent) infringement suggestions for amendment of the Brussels I regulation’, IER 2007, 1.
G. Patterson, ‘Novelty and Inventive Step’, in: A Concise Guide to European Patents, Law and Practice, London: Sweet & Maxwell 1995, p. 133-147 and 150-159;
Articles 54 and 56 EPC deal respectively with the requirements of novelty and inventive steps as prerequisites for patentability.
1st step is identifying if the patent application constitutes the state of art.
2nd step is identifying if the patent involves inventive process, that is to say, whether the claimed subject matter was or was not obvious to a person skilled in the art.
What qualifies as State of Art
Published prior art – i.e. that which has been made available to the public, such as prior published documents, prior used products, etc. [Article 54(2)]
Prior rights – i.e. the content of European patent application as filed which have been filed but not published. [Article 54(3)]
The contents of the application which become part of the “state of the art” by virtue of Article 54(3) EPC are expressly excluded from consideration in deciding whether there has been an inventive step. A basic principle underlying Article 54(3) is to avoid (as far as possible) the granting of more than one European patent in respect of exactly the same invention.
It is only prior filed European patent application that form part of the state of the art under Article 54(3). A prior national patent application is not a European patent application within the meaning of Article 54(3) and is accordingly not within the state of the art for the purpose of Article 54(3).
Article 54 (2) deals with made available to the public, which includes
What has been made available to the public in the physical sense (by physical means such as a documents, a prior used product etc.)
What information in the form of a technical teaching has been made available to a skilled person as a result of the physical means having been made available?
Available in the sense of Article 54(2) EPC involves two separate stages
Availability of the means of disclosure.
Availability of information which is accessible and derivable from such means.
It is not necessary that any particular member of the public actually received information before the relevant filing date. What matters is whether such information was made available before that date of filing. The scale on which information has been available to the public is, in principle, irrelevant. Thus, a single copy of a document or a single sale of an apparatus is sufficient.
Whether information disclosed as ‘confidential’ to a designated few amounts to prior art or not depends on case to case basis.
Publication by written description – The content of the document is admissible prior art if the document was in a place which member of the public had access. For example – a document which is proved to have been on the shelves of a public library is part of the published prior art, regardless of whether anyone looked at it.
Publication by oral description – oral description in terms of a lecture would be take into consideration. In the absence of a record of an oral description, difficulties may often arise in determining what was made available to the public.
Article 55 sets out two circumstances in which disclosure that has become part of the published prior art is nevertheless excluded from the consideration as prior art.
An evident abuse in relation to the application or his legal predecessor
Disclosure due to or in consequence of an evident abuse in relation to the application or his legal predecessor is excluded from the published prior art. The expression ‘an evident abuse’ seems intended to cover cases such as when an inventor discloses an invention in confidence but the invention is subsequently made available to public in breach of confidence.
A display of the invention at an official international exhibition.
The display of the invention must be
By the applicant or his legal predecessor; and
At an official or officially recognized international exhibition; and
When filling the patent application, the applicant must state that the invention has been so displayed; and
Within 4 months of the filing date, the applicant must file a supporting certificate.
The fact that the contents of prior filed applications are only considered from the point of view of novelty and not as regards inventive step makes the distinction between novelty and inventive step an important one. Having filed a first European applicant, an applicant may subsequently file one or more subsequent European applications in respect of developments to the subject matter of the first application, before publication of the basic application. Provided that the claimed subject matter of each such later application is novel over the contents of each of the earlier applications, such claimed subject matter is separately patentable.
A claimed invention lacks novelty unless it includes at least one essential technical feature which distinguishes it from the state of the art. The determination of novelty thus involves a comparison between the information or technical teaching, which is within the state of art, and the claimed invention. When deciding upon the novelty of a claim following steps to be taken
1st step : A basic consideration is to construe the claim is in order to determine its technical features
2nd step : whether what has been made available to the public includes all of the claimed technical features.
Since novelty is an absolute concept, a definition of an invention which differs only in wording is insufficient; what has to be established in the examination as to novelty is whether the state of art is such as to make available the subject matter of the invention to the skilled person in a technical teaching.
It is only the actual content of a document (As understood by a skilled person) which destroys novelty. It is not permissible to combine separate items of prior art together.
General Principles
In some circumstances the subject matter of patent application is nothing but an inevitable result of a prior art which has not been patented or even published yet, hence this inevitable result is excluded from the ambit of prior art. If an application is made to patent inevitable results they will be rejected for lack of novelty.
Information disclosed solely in a drawing forms part of state of the art when a person skilled in that art is able to read them without any description.
The application filed for chemical and other technical information must be in readable form for a person skilled at art.
If the patent application has some overlapping ranges of prior art, then it must have inventive steps.
If the product is novel, the process to procure the patent product maybe patented. Novelty is not conferred upon a product merely by reason of the history of its origin. If the product of a new process is in all respects identical with the product of a known process, there is no novelty either in a claim to the product per se of the new process or in a claim to the product by new process.
Methods of treatment of the human or animal body are excluded from the patentability.
Determination of inventive steps
The assessment of inventive step is essentially objective
The presence or absence of an inventive step is predominantly determined on the basis of technical assessment of the inventiveness of the advance made from the closest prior art.
Having assessed the inventiveness from the closest prior art, there should be no need t peruse the older art.
Commercial publications and products are to be assessed with same degree of strictness or same scale as technical patent applications especially when identifying /assessing the closest prior art. Because a person skilled in art would display same degree of curiosity or interest as that of a technical person skilled in art.
Technical progress is not really a requirement for inventiveness and patentability under the EPC. Nevertheless lack of technical progress may well indicate a lack of inventive step. In particular there is no invention in merely making the prior art worse especially if such consequence is substantially foreseeable even if some aspect of the results may not be accurately predictable.
Check limitations on doctrine of equivalence
- J. Park, ‘Interpretation of Patent Claims in the EPO, USPTO, and JPO in the Context of the Doctrine of Equivalents and Functional Claims’ in: E.I.P.R. 2005, p. 237-249;
One of the primary goals of interpreting patent claims is to obtain an appropriate understanding as to what the inventor actually invented and what is the intended scope for the protection of the claim. The claim interpretation is undertaken by a variety of parties each with different objects. The patent office interprets claim language in order to examine the invention for validity, whereas patent counsel construes the claim to estimate the potential infringement risk or the value of a licensing agreement. However the most important claim interpretation is done in courts to determine the validity of the patent or infringement over disputed claims. If the defendant’s product or process includes every limitation of the patented claim, the claim is said to read on that product or process and the defendants are subject to literal infringement.
The doctrine of pith and marrow defined the scope of patent protection by the substance of the invention. According to the doctrine an infringement could be established if the defendant’s device or process included all the essential elements of the patent.
A variant does not infringe a claim unless
It would have no material effect on the way the invention works,
The lack of material effect would have been obvious to one skilled in the art at the date of publication, and
It would be apparent to the skilled reader that the patentee could not have intended the particular claim language to exclude such a known minor variant having no material effect.
In the united kingdom, it is possible for the courts to appoint technical experts to assist them as scientific advisers, while investigating the technical evidence for construing claims. The technical experts help the judge understand the patent specification from the perspective of person skilled in the art.
Interpretation of Article 69 -> the extent of protection is not to be limited ‘by the strict, literal meaning of the wording used in the claims’. Article 69 shall be interpreted as ‘defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties’.
The doctrine of equivalents – in the case of patent infringement inquiry in the US, two stages of analysis are normally performed by courts to investigate the infringement. The 1st stage is literal infringement and the 2nd stage is infringement under the doctrine of equivalents. Literal infringement examines whether the alleged device falls exactly within the boundaries of the claims of the patent by comparing the textual meanings of the claims with the features of the challenger’s claims.
If no literal infringement is found then 2nd step of analysis is the doctrine of equivalents. At this stage claims are interpreted beyond their strict literal meaning and the scope of the claims maybe extended to the features that are equivalent to those literally claimed. This suggests that the exclusive rights provided by a patent are based on but not exclusively limited to the language of its claims.
The SC set forth the doctrine holding that the important factor in determining equivalency is whether persons reasonably skilled in art would have known that interchangeability of substitutes for an element of the patent. The court adopted the so-called function way result test. The function way result test considered whether the element in the accused device ‘does substantially the same function in substantially the same way to achieve substantially the same result’ as the element in the patent claim.
In Japan they have rejected doctrine of equivalent. They have shown a preference for the interests of the public over those of the patentees.
Lecture 5
Industrial Designs
(Page 112 – 118)
Industrial Design (refers to the right granted in many countries, pursuant to a registration system, to) protect the original ornamental and non-functional features of an industrial article or product that result from design activity.
If the technical performance of the various products offered by different manufacturers is relatively equal, aesthetic appeal, along with, of course, cost, will determine the consumer’s choice.
In the United Kingdom, the first law giving protection to industrial designs was the Designing and Printing of Linens, Cotton, Calicoes and Muslins Act of 1787, which gave protection for a period of two months to “every person who shall invent, design and print, or cause to be invented, designed and printed, and become the Proprietor of any new and original pattern or patterns for printing Linens, Cottons, Calicoes or Muslins.”
The formulation of a legal system for the protection of industrial designs, like the provision of legal protection for all forms of intellectual property, requires the establishment of a balance of interests. On the one hand, there is the need to provide efficient and effective protection, in order that the law may fulfill its function of promoting the design element in production. On the other hand, there is the need to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity, so that the least number of impediments are introduced to the free use of available designs.
Design as conception or idea
The design right does not extend to articles or product but to designs which are applied or embodied in a particular article or product.
Application to or Embodiment in an Article
A design can be protected only if the design is capable of being used in industry, or in respect of articles produced on a large scale. – this is the distinction between design and copyright. A particular drawing or pattern without any use or utility receives copyright protection but to receive design protection, it has to be used.
Exclusion of designs dictated by functions
Industrial design protection shall not extend to designs dictated essentially by technical or functional considerations.
Screws and piston rings, for example, may be produced by hundreds of different manufacturers, and all articles within each class are intended to perform the same function. If a design for one such article, for example, screws, is dictated purely by the function which the screw is intended to perform, protection for that design would have the effect of excluding all other manufacturers from producing items intended to perform the same function. Such an exclusion is not warranted, unless the design is sufficiently novel and inventive to qualify under the rigorous standards for patent protection.
Novelty or original
Rights of the design holder
Copyright accords to an author the right to prevent the copying of a work, industrial design law accords to the proprietor the exclusive right to prevent the unauthorized exploitation of the design in industrial articles.
Nature of the rights
a. Make articles to which the design is applied or in which the design is embodied;
b. Import articles to which the design is applied or in which it is embodied;
c. Sell, hire or offer for sale any such articles.
Duration of the rights
The term for an industrial design right varies from country to country. The usual maximum term goes from 10 to 25 years, often divided into terms requiring the proprietor to renew the registration in order to obtain an extension of the term.
Cumulative rights
Supposing a particular design embodies elements or features which are protected both by the copyright law and the industrial design law, may a creator
of an industrial design claim cumulatively or simultaneously the protection of both laws? If this question is answered affirmatively, protection is cumulative. Cumulation of protection means that the design is protected simultaneously and concurrently by both laws in the sense that the creator can invoke the protection of either or both, the copyright law or the industrial design law, as he chooses. It also means that if he has failed to obtain the protection of the industrial design law by failing to register his design, he can claim the protection of copyright law, which is available without compliance with any formality. Finally, it means that after the term of protection of the registered design expires, the creator may still have the protection of the copyright law.
Ex – France and Germany
Co-existence rights
Co-existence of protection means that the creator may choose to be protected either by the industrial design law or by the copyright law. If he has chosen the one, he can no longer invoke the other. If he has registered the industrial design, at the expiration of such registration he can no longer claim protection under the copyright law, at least for the particular application of the industrial design.
Many countries this format exists.
If the validity of trademark has to be decided, it can be decided in the court where the trademark is valid. The cross border injunction are not internationally accepted even though Dutch courts do grant them.
Lecture 6
Trademarks
The Law Relating to Trade Marks
Section 1 – Definition of a community trade mark and obtaining a community trade mark
Saying we are not tresor – is it allowed or not allowed?
Essentially saying my product is just like tresor but tresor.
Comparative advertising is allowed and EU promotes it. One needs to use competitor’s trademark for comparative advertising.
In O2 case, the company compared its own rates with that of its competitor to prove O2 is better. The comparison clearly was within the ambit of Article 9 (2)(a). There is no escape clause in 9(2)(a). ECJ came up with Function Theory and said if the functions of the trademark is not detrimental then it’s not infringement. -> Way for fair competition.
Investment function of the trademark is hurt in tresor case. Plus it did not really compare merely asserted it’s not tresor. Advertisement function.
Comparative Advertising Directive – fair, correct and relevant aspect of the product is be compared. And not present your own product as the copy of the competitor’s product.
Previously there used to be national trademark laws. If you want to have tm in 5 countries but not whole of EU. Then you can approach WIPO and make application.
If EUTMR does not provide for a specific aspect then national law can be relied on for filling that void.
Core requirements -> distinguish our goods and services from that of others. It is not necessary to show who the owner is, it is essential to distinguish A from B. But not who is the owner of A or B.
Word marks
Graphical representation – smell cannot be graphically represented. ECJ has accepted musical notes as tm after they submitted musical notes.
Graphical representation has been replaced as reproduce in registry so now hologram and moving images can be tm.
Smell of fresh cut grass is tm for tennis balls. But ideally it should have been refused because fresh cut grass is synonymous with tennis – not distinctiveness!!
Single colors can be used as TM so long as they have acquired distinctiveness
Protecting unregistered trade marks in UK 🡪 Yes, unregistered trademarks can be protected by the common law tort of passing off. Article 5(4)(a) of the Trade Marks Act 1994 prevents the registration of a mark by virtue of passing off.
You or your company must prove, through factual evidence, that:
you have an established trade mark that has acquired a reputation and/or goodwill in the mind of the relevant public;
the offending trade mark has been, or is likely to be, confused with your established trade mark; and
your business under your established trade mark has been, or is likely to be, "damaged” by use of the offending trade mark.
If the proceedings before us are successful, the compensation is that the offending trade mark will not be registered or is removed from our register.
How to avoid tm being customary name or a verb – Google or Xerox
Use of a generic name along with this new mark like Google search.
Shapes have higher standard.
Only a mark which departs significantly from the norm or customs of the sector and thereby fulfills its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [Trade Mark Regulation]. ‘Therefore, the Court of First Instance rightly took into consideration the shapes and colours of sweets commonly used in trade in assessing whether the mark applied for is, or is not, devoid of any distinctive character.’ (Para 27, case C-24/05). ‘A three-dimensional mark may in certain circumstances acquire distinctive character through use even if it is used in conjunction with a word mark or a figurative mark. Such is the case where the mark consists of the shape of the product or its packaging and where they systematically bear a word mark under which they are marketed.’ (Para. 59, case C-24/05). ‘It follows that a mark can be registered under Article 7(3) [Trade Mark Regulation] only if evidence is provided that it has acquired, through the use which has been made of it, distinctive character in the part of the Community in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). The part of the Community referred to in Article 7(2) may be comprised of a single Member State’ (Para. 83, case C-25/05). ‘Since, in paragraphs 85 to 87 of the judgment under appeal, following an assessment of the facts and evidence, the Court of First Instance found, first, that the mark applied for was devoid of any distinctive character, ab initio, in all of the Member States of the Community and, second, that the appellant did not establish that that mark was the subject of advertising campaigns in certain Member States during the reference period, it rightly found that the figures provided in relation to the advertising costs incurred by the appellant did not provide proof that the mark had acquired distinctive character as a result of the use which had been made of it.’ (Para. 86, case C-25/05).
You cannot have chicken tonight for fishes – deceptive trademark
Functions of trademark Source indicator, Communication function, Identification function
Advertising function, Quality(guarantee) function and Investment function
Post sale confusion – most courts say yes, it is trademark infringement!
Monopoly vs. Anti–Monopoly -> no likelihood of confusion. It’s a legal fiction.
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