Intellectual Property in the United Kingdom

Intellectual Property in the United Kingdom Part 4

2009-09-23T08:47:00.000-07:00

Registerable designs

design
means the appearance of the whole or part of a product resulting from the features of, in particular,
the lines,
contours,
shape,
texture or
materials
of the product or its ornamentation.

(See: section 1 (1) of the Registered Designs 1949 Chapter 88)

product
means any industrial or handicraft item other than a computer program; and, in particular, includes
packaging,
get-up,
graphic symbols,
typographic typefaces and
parts
intended to be assembled into a complex product.

complex product
means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product.

(See: section 1(3) of the Registered Designs Act 1949 Chapter 88 )

Novelty and individual character

A design shall be protected by a right in a registered design to the extent that the design is new and has individual character.
A design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.

A design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.

In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.

A design has been made available to the public before the relevant date if it has been published (whether following registration or otherwise), exhitited, used in the trade or otherwise disclosed before that date.

(See: section 1B (1-5) of the Registered Designs Act 1949 Chapter 88)

Designs dictated by their technical function

A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product's technical function.
A right in a registered design shall not subsist in features of appearance of a product which must necessarily the reproduced in their exact form and dimentions.

That is so as to permit the product in which the design is incorporated or to which it is applied
to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.

A right in a registered design is not prevented from subsisting in a design serving the purpose of allowing multiple assembly or collection of manually interchangeable products within a modular system.

(See: section 1C of the Registered Designs Act 1949 Chapter 88)

Proprietorship of designs

The author of a design shall be treated as the original proprietor of design.

Where design is created in the pursuance of a commission for money or money's worth, the person commissioning the design shall be treated as the original proprietor of the design.

Where, a design is created by an employee in the course of his employment, his employer shall be treated as the original proprietor of the design.

The author of a design means the person who creates it.

In the case of a design generated by computer in such that there is no human author, the person by whom the arrangements necessary for the creation of the design are made shall be taken to be the author.

(See: section 2 of the Registered Designs Act 1949 Chapter 88)

Right given by registration

The registration of a design gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.

The use of a design includes a reference to-
the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied; or
stocking such a product for those purposes.

The right conferred is subject to any limitation attaching to the registration in question. This includes in particular any partial disclaimer or any declaration by the registrar or a court of partial invalidity.

(See section 7 of the Registered Designs Act 1949 Chapter 88)

Duration of right in the registered design

The right in a registered design subsist in the first instance for a period of five years. That is from the date of registration of the design.

The period for which the right subsist may be extended for a second, third, fourth and fifth period of five years. This is done by applying to the registrar for an extension and paying the prescribed renewal fee.

(See section 8 subsection 1 and 2 of the Registered Designs Act 1949 Chapter 88)

Intellectual Property in the UK Part 3

2009-09-22T12:08:00.000-07:00

Intellectual Property Rights in the United Kingdom Part 3.

1. Trademarks

A trade mark means any sign capable of being re-presented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, consists of:
• words (including personal names);
• designs;
• letters;
• numerals or,
• the shape of goods or
• their packaging.
(See section 1 of the Trade Marks Act 1994 Chapter 26)

A registered trademark is a proprietary right obtained by the registration of the trademark under the Trade Marks Act of 1994 Chapter 26. The proprietor of a registered trade mark has the rights and remedies provided by this Act.

A trade mark does not have to be registered. If an unregistered trade mark is used you will have certain rights under the common law. It is easier to enforce the rights of a registered trade mark.

No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark. Nothing in this Act affects the law relating to passing off.
(See section 2 of the Trade Marks Act 1994 Chapter 26)

2. Rights Conferred by Registered Trade Mark.

The proprietor of a registered trade mark has exclusive rights in the trade mark. The rights in the trade mark are infringed by use of the trademark in the United Kingdom without the proprietor's consent.

The rights of the proprietor have effect from the date of registration. This is the date of filing of the application for registration.

No infringement proceedings may be begun before the date on which the trade mark is in fact the registered.
(See section 9 of the Trade Marks Act 1994 Chapter 26)

3. Infringement of a Registered Trademark

A person infringes a registered trademark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(See section 10 (1) of the Trade Marks Act 1944 Chapter 26)

Furthermore a person infringes a registered trademark if he uses a sign where because-
(a) the sign is identical with the trademark, or
(b) the sign is similar to the trademark,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark.
(See section 10 (2) of the Trade Marks Act 1944 Chapter 26)

Further generally a person infringes a registered trademark if he uses in the course of trade a sign which is identical or similar to the trademark. That is where the trademark has a reputation United Kingdom. That is where the use of the sign takes unfair advantage of, or is detrimental to the distinctive character or the repute of the trademark.
(See section 10 (3) of the Trade Marks Act 1944 Chapter 26)

A person uses a sign if he-
(a) affix it to goods or the packaging thereof;
(b) offers or exposes goods for sale, put them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c) import or export goods under the sign; or
(d) users the sign on business papers or in advertising.
(See section 10 (4) of the Trade Marks Act 1944 Chapter 26)

A registered trademark is not infringed by-
(a) the use by a person of his own name or address.
(b) The use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
(c) the use of the trademark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),
provided the use is in accordance with honest practices in industrial or commercial matters.
(See section 11 (2) of the Trade Marks Act 1944 Chapter 26)

4. Duration and Renewal of Registered Trade Mark

A trade mark shall be registered for a period of 10 years from the date of registration.
Registration of a trade mark May be renewed for further periods of 10 years.
(See section 42 of the Trade Marks Act of 1994 Chapter 26)

Renewal takes place at the request of the proprietor subject to payment of a renewal fee.
(See section 43 (1) of the Trade Marks Act of 1994 Chapter 26)

Intellectual Property in the United Kingdom Part 2.

2009-08-16T05:12:00.000-07:00

Intellectual Property in the United Kingdom

Part 2

For a similar discussion on intellectual property in the United States click here.

1. Copyright

Copyright subsists in the following descriptions of work:
a) origional literary, dramatic, musical or artistic works,
b) sound recordings, films or broadcasts, and
c) the typographical arrangement of published traditions.

See: Section 1 (1) of Copyright, Designs and Patents Act 1988 Chapter 48

2. Literary, Dramactic and Musical Works

Literary work means:
any work other than a dramatic or musical work, which is written, spoken or sung.
This includes:
a) a table or compilation other than a database,
b) a computer program,
c) preparatory design material for a computer program, and
d) a database.

Dramatic work includes:
a work of dance or mime.

Musical work means:
a work consisting of music. That is exclusive of any words or action intended to be sung, spoken or performed with the music.

See: Section 3 (1)

3. Artistic Works

Artistic work means:
a) a graphic work, photograph, sculpture or collage, irrespective of the artistic
quality.
b) a work of architecture being a building or a model for a building, or
c) a work of artistic, craftsmanship.

Building includes:
any fixed structures, and a part of a building or fixed structure.

Graphic work includes:
a) any painting, drawing, diagram, map, chart or plan, and
b) any engraving, etching, lithograph, woodcut or similar work.

Photograph means:
a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film.

Sculpture includes:
a cast or a model made for purposes of sculpture.

See: Section 4

4. Sound Recordings

Sound recording means:
a) a recording of sounds, from which the sounds may be reproduced, or
b) a recording of the whole or any part of the literary, dramatic or musical work,
from which sounds reproducing the work or part may be produced.

That is regardless of the medium on which the recording is made or the method by which the sounds are reproduced or produced.

See: Section 5 A

5. Films

Film means:
a recording on any medium from which a moving image may by any means be produced.

The soundtrack accompanying a film shall be treated as part of the film.

See: Section 5 B

6. Duration of Copyright in Literary, Dramatic, Musical or Artistic Works

Generally speaking copyright expires at the end of the period of 70 years from the end of the calendar year in which the author dies.

See: Section 12 (2)

7. Duration of Copyright in Sound Recordings

Generally speaking copyright in sound recordings expires at the end of the period of 50 years from the end of the calendar year in which the recording is made.

See: Section 13 A (2)(a)

8. Duration of Copyright in Films

Copyright in a film generally expires at the end of the period of 70 years from the end of the calendar year in which the death occurs of the last to die of the following persons:
a) the principal director,
b) the author of the screenplay,
c) the author of the dialogue, or
d) the composer of music specially created for and used in the film.

See: Section 13 B (2)

9. Duration of Copyright in Broadcasts

Copyright In a broadcast generally expires at the end of the period of 50 years from the end of the calendar year in which the broadcast was made.

See: Section 14 (2)

10. Duration of Copyright in Typographical Arrangement of Published Editions

Copyright in the typographical arrangement of a published edition expires at the end of the period of 25 years from the end of the calendar year in which the edition was first published.

See: Section 15

11. Rights of Copyright Owner

The owner of the copyright in a work has the exclusive right to do the following acts in the United Kingdom:

a) to copy the work;
b) to issue a copy of the work to the public;
c) to rent or lend the work to the public;
d) to perform, show or play the work in public;
e) to communicate the work to the public;
f) to make an adaption of the work or to do any of the above in relation to an
adaption.

See: Section 16 (1)

For a similar discussion on intellectual property in the United States click here.

Intellectual Property in the United Kingdom Part 1.

2009-08-02T05:26:00.000-07:00

1. Introduction

At long last to have finally finalised your invention. You hope to make an fortune. The first step would be to protect your invention. It is important to realise that your invention forms part of your intellectual property. To safely exploit your invention it needs to be protected. The world of intellectual property however is a complex one.

I do not recommend that you should try and do this yourself. For this you should rather approach a qualified professional intellectual property attorney. He will be in the best position to see to it that your invention is well protected.

However before you go and see a patent attorney it will be advisable that you get to know what it is all about. You will then be in a much better position to instruct your intellectual property or patent attorney. This is what I hope to achieve with this and forth coming articles.

2.Types of Intellectual Property

There are generally four types of intellectual property rights which can be used to protect your invention. They are:
a. Patents
b. Designs
c. Trademarks
d. Copyright.

I shall give a brief overview of each type.

3. Patents

Briefly one could say that a patent protects the technical workings of your invention.
Let's take a look at what the legal formulations for patentable inventions are.

4. Patentable Inventions

A patent may be granted only for an invention which meets the following conditions:
a. The invention must be new.
b. It must involve an inventive step.
c. It must be capable of industrial application.
d. The grant of a patent for the invention must not be excluded as provided in the Act.
(See: section 1 (1) of the Patents Act of 1977)

The following are not inventions and are therefore excluded from patent protection.
They are:
a. A discovery, scientific theory or mathematical method.
b. A literary, dramatic, musical or artistic work or any other city creation whatsoever.
c. A scheme, rule or method for:
(c)i. performing a mental act,
(c)ii. playing a game, or
(c)iii. doing business, or
(c)iv. a program for a computer.
d. The presentation of information.
(See: section 1 (2) of the Patents Act of 1977)

A patent shall not be granted for an intervention of which the commercial exploitation would be contrary to public policy or morality.
(See: section 1 (3) of the Patents Act of 1977)

A patent shall not be granted for the invention of:
a. A method of treatment of the human or animal body by surgery or therapy, or
b. A method of diagnosis practised on a human or animal body.
(See: section 4 A (1) of the Patents Act of 1977)

5. Novelty

As set out above and one of the requirements for an invention to be patentable is that the invention must be new. We shall now take a look at how novelty is formulated in the Patents Act of 1977.

An invention shall be new if it does not form part of the state of the art.
(See: section 2(1) of the Patents Act of 1977)

The state of the art in the case of an invention shall comprise all matter.

That is all matter whether it is:
a. a product,
b. a process,
c. information about either, or
d. anything else.

The matter that is taken into account to determine novelty is all matter which has at any time before the priority date of the invention been made available to the public.

It is matter whether it has been made available to the public in the United Kingdom or elsewhere.

It could have been made available to the public by:
a. written or
b. oral description,
c. by use or
d. in any other way.
(See: section 2 (2) of the Patents Act of 1977)

Briefly summarized it is all matter made available to the public all over the world that is taken into account to decide whether your invention is new. It could be said that the novelty requirement in the United Kingdom is that of absolute novelty.

Generally speaking one could say that the priority date of an invention is the date on which the application for the patent was filed.
(See: section 5 (1) of the Patents Act of 1977)

Under certain conditions the state of the art may also include matter contained in an application for another patent. This is so even if this other patent was published on or after the priority date of your invention.
(See: section 2 (3) of the Patent Act of 1977)

Disclosure of matter may subject to certain conditions be excluded from the prior art if it has been obtained unlawfully or in breach of confidence by any person.
(See: section 2 (4) of the Patents Act of 1977)

What all of this is above really means is that you must keep your invention secret at least up until the time your file an application for a patent for your invention. If you do not to do this you may destroy the novelty of your invention. As explained above your priority date normally starts from the date that you file an application for a patent for your invention.

6. Inventive Step

An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art. That is having regard to any matter which form part of the state of the art by virtue only of section 2 (2). Section 2 (3) is to be disregarded.
(See: section 3 of the Patents Act of 1977)

7. Industrial Application

An invention shall be taken to be capable of industrial application if it can be used in any kind of industry. This includes agriculture.
(See: section 4 of the Patent Act of 1977)

8. Term of Patent

A patent shall take effect on the date on which notice of its grant is published in the journal. The patent shall continue to be in force until the end of the period of 20 years. That 20 years begins to run from the date of the filing of the application for the patent.
(See: section 25 (1)of the Patent Act of 1977)

It takes about 3 to 4 years from the filing of a patent for a patent to be granted. This means that you will have approximately 16 - 17 years to exploit your invention.

Next time I hope to say something about other types of intellectual property rights that can be used to protect your invention. They are designs, trademarks and copyright.

For a similar discussion on intellectual property in the United States click here.