It is possible to use a copyright symbol {©)

followed by the author's name and date to

Indicate that it is intended that the work should

have copyright protection, but it is not necessary

to do this.

Patent

Type of IP interest Patent

How the interest or right arises

A patent is a territorial right given to the patent

holder lor a statutory period of years. It must be

applied for in each jurisdiction for which protection

Is required. In the uk, it may be granted by the

UK Patent Office; in the USA it is issued by the

Patent and Trademark Office.

To be patentable, an invention must:

• be novel, that is, not made public anywhere before the filing date on which the application/ description is submitted for patent;

• be capable of industrial application, that is, use or application in some kind of industry, for example be a process, a material, or a device;

• result from an inventive step. In the US, the test is to be non-obvious, that is, be something distinctive which could not have been produced by anyone with relatively good knowledge in the relevant area;

• not be an excluded thing 'as such' (Patents Act 1977). For example, it cannot be a discovery, a scientific theory, an aesthetic creation or, in the UK, a business method.

What protection is available?

The invention becomes a property interest

Vested in the inventor, which he/she can transfer,

by assignment, to another.

It confers the right to exclude others from

making, using or selling the invention.

The import into the UK of a product with a UK

patent will be in contravention of the patent.

Action required

An application should be filed on the Patent Office before any steps are taken to make the invention public.

A patent application may fail or the grant of a patent can be revoked, that is, removed from the Register in terms of the Patent Acts 1997, if, for example, a successful application is made to the Court in counter-claim on grounds such as:

• the invention is contrary to public policy or morality (for example, human cloning processes) or;

• the person granted the patent does not have entitlement to it.

42.1 Make adjectives from rhe nouns in brackets. Put a stress mark in from of rhe srrcsst'd syllable in each adjective. Look at A and В opposite to help you.

1. Patent holders have (territory) rights over their inventions.

2. Copyright is a statutory right in an (origin.) work.

3. A number of rights fall wirhin (intellect) property, including copyright, design, patents, and trademarks.

4. To be patented, an invention must have some sort of (industry) use; this might include, for example, in agriculture.

5. Discoveries of elements of the human body arc not (patent).

6. The invention has to be (novelty) and must not have been disclosed before.

42.2 Find four words in A opposite rhar can be used to make word combinations with 'copyrighr'. Then use rhe appropriate words to complete rhe sentences below.

1 It is essential to identify the first copyrighr before determining whether a

particular form of work qualifies for protection.

2 The duration of copyrighr is calculated by reference ro rhe author of the

copyright work.

3 Copyright in product design and in rhe presentation of merchandising for

products like toys and cosmetics.

42.3 Complete the definitions. Look at A and В opposite ro help you.

1 - a properry righr that subsists in cerrain tangible creative works

2 - a right that exists as soon as a work rhar can be prorcctcd by

copyright is created in material form

3 - the transfer of IP righrs from rhe owner of the rights to another person or

organisation

4 - having a fixed material existence

5 - the right to own a patent

6 - the date on which the full description of an invention is

formally applied for

7 - the criterion for assessing whether an invention is not an

obvious development of what has been done before, in rhe judgement of someone who is skilled in rhe relevanr area

8 - not having been disclosed anywhere else in the world before

9 - the capacity of an invention to meet the criteria set by statute in order for an

application to be granred

12.4 Choose rhe correct phrase in brackets to complete rhe sentences. Look at A and В opposite to help you.

1. The Act generally gives the owner of copyright (the right to exclude / exclusive rights / excluding rights) to reproduce the copyrighted work and to perform the work publicly.

2. I he patent gives (the right to exclude / excluding rights to / exclusive rights to) others from importing rhe invention.

What is not patentable in a jurisdiction you are familiar with? How may copyright be enforced?

For information about the Patent Office in the UK, go to: www.patent.gov.uk/; for the US Patent and Trademark Office, go to: www.uspto.gov/web/offices/.

Trade marks, domain names, and remedies for IP infringemen

Trade marks and domain names

Trainees ar a law firm have been asked ro help prepare a section on Inrellecrual Property (IP) law for the monthly e-newsletter circulated to clients. Some of their preparatory notes are below.

Type of IP interest Trade mark

How the interest/right arises

A trade mark, or mark, needs to be registered at the

Patent Office to be protected. A trade mark is territorial.

It can be a sign including words, symbols, or pictures,

or a combination of all these elements. Its function is to

represent the goods graphically and distinguish them

from other goods. It is essentially a badge of origin

enabling customers to recognise a brand.

A service mark is the same as a trade mark but it

identifies the source of a service.

What protection is available? To be capable of registration, a trade mark must be original and sufficiently distinctive from any other marks for the same or similar goods or services. The mark must be specific to the goods or services to which it is to apply and

must not be misleading or contrary to law or morality.

In the UK, a trade mark can be enforced to protect the mark's proprietor under the Trade Marks Act 1994, which implements the EC (European Community) Trade Mark directive. Action required

Application to the Trade Mark Registry at the UK Patent Office for a national trade mark; or for a CTM (Community Trade Mark) valid throughout the EU (European Union), to OHIM (the Office for Harmonisation in the Internal Market - Trade Marks and Designs); or to the Patent and Trademark Office for granting of a trademark in the USA. Not all trade marks are registerable, for example where the shape results from the nature of the goods, such as an umbrella.

The matk may be licensed for authorised use.

BrE: trade mark; Amfc: trademark

Type ol IP interest Domain name

How the interest/right arises

Domain names are unique Internet addresses which

distinguish one computer from all others connected to the

Internet, for example google.com

Top level domains (TtD) include two letter country

codes (ccTLD) such as .uk and jA. Generic TLDs (gTLD)

include .com, .org, .biz, and .coop. Below these are the

second level domain names, for example 'McDonalds' in

McDonalds.com

What protection is available? Disputes may arise when:

• two or more people are entitled to use the identical trademark in different countries and each claim the same domain name; or

» a third party registers a domain name the same as, or very similar to, a famous name or trademark, hoping to sell it or to use the business value of a well-known name - a practice known as cybersquatting, or net name piracy

Action required

Domain names can be registered directly at accredited registrars, that is, Internet name licensing authorities, or by buying them from Internet naming companies. Names are registered for one or more years, often with annual renewal.

Disputes maybe referred to accredited dispute resolution providers, such as the World Intellectual Property Organization (WIP0), or country registrars.

Remedies for IP infringement

IP rights can be enforced through civil remedies, and may involve criminal sanctions, As a final remedy, the rightholder can obtain financial compensation for losses caused by infringement by choosing between damages or an account of profits which the defendant made irom the infringement. Other final remedies may include delivery up and destruction of infringing documents, a court order to reveal relevant information, or an injunction. An interim

remedy, that is, a provisional one, may include an interim injunction to stop an infringing activity, a search ordet to look for evidence of infringement, and a freezing injunction to freeze the assets of an alleged infringer before trial.

If there is misrepresentation as to the trade origin of goods leading to damage to the trading goodwill of another person, it may give rise to an action in tort - a civil wrong known as 'passing off.

43.1 Complete the definitions. Look at A and В opposite to help you.

1 - anything graphic that conveys information, for example numerals, words,

letters, packaging, shape of the goods, etc. 2 - using clear images, lines, characrers, musical notation, internationally

recognised colours, etc. 3 - any sign, represented graphically, which is capable ol

distinguishing rhe goods or services of one business from others 4 - part of an Inrerner address indicaring the type

of organisation or country location

5 - person or organisation that interferes wirh or violates another's rights

6 - action whereby a person or business registers a domain name and uses ir in

bad faith or inrends to sell it to those who have a legitimate interest in the name

7 - a property righr associated with the attracting of business

custom

8 - a civil action where there has been misrepresentation of goods

or services leading ro damage to the goodwill of a business

9 - court order ro stop the movement or sale of assets

10 - temporary court order until the trial

11 — organisations which offer a service to

investigate complaints and reach decisions 12 -a discretionary remedy available when there

has been infringement of intellectual property, involving the award to the righrholdcr of

profits made from the infringement by the defendant

43.2 Replace rhe underlined words and phrases in rhis extract from an advertisement for a short

course for lawyers on trade marks with alternative words and phrases from A and В opposite.

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