What is intellectual property?
According to the World Intellectual Property Organisation, “Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce. IP is protected in law by, for example, patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.”
Almost all businesses rely on intellectual property of one kind or another; its name and logo, designs, inventions, works of creative or intellectual effort and trademarks that distinguish your business can all be types of IP, to say nothing of business-sensitive confidential information like Customer and price data. The IP of a business is often critical to its success, and may be its major asset. A successful challenge to those rights can seriously damage a business, or even cause it to collapse; even an unsuccessful challenge will divert resources away from the business, not only financially but also in terms of the time and energy of the business owners, managers and staff. It is therefore essential to take the time to identify what IP assets you have, and to take appropriate steps to protect them before it’s too late. Litigation should be very much the last resort.
Broadly speaking, IP can either be registered or unregistered. Registered rights are granted on application to an official body such as the UK Intellectual Property Office. However, even if granted, their validity can be challenged. Registered rights are monopoly rights, which means that, once registered, the owner can stop others from using the right without permission. They include patents, trademarks and registered designs, but can also include rights granted by international treaty such as plant breeding.
Unregistered rights arise automatically, and give protection against copying or using the right. They include copyright, unregistered design rights, rights in unregistered trademarks and confidential information.
Patents provide inventors with a legally protectable monopoly over their inventions and protect new and inventive technical features of products and processes. They last for a limited period (20 years in most countries) and can be held in the name of the individual inventor or an organisation.
To qualify for patent protection, an invention must be new, involve an inventive step, and be capable of industrial application and not specifically excluded from protection (some inventions cannot be patented, for instance computer programs, methods of doing business and methods of medical treatment).
Patents can provide a high level of protection and are essential for some industries such as pharmaceuticals, where years of research and development are necessary to commercialise a new product. However, patents are expensive to obtain and maintain. They also involve public disclosure of technology, which could enable a competitor to develop a competing product without infringing the patent.
Trademarks and passing off
A trade mark is a sign or symbol used by a trader to distinguish its products or services from those of other traders; often brand names are the subject of trademarks; not only the name itself, but also the logo style, colour and general “get up”, as well as the packaging or product. The famous Coca Cola bottle is a good example of this. It is possible to obtain trademark protection in some jurisdictions for smells and slogans, but it is, not surprisingly, more difficult to register these marks; Harley Davidson’s application to obtain protection for the well-known “potato-potato” sound of its engines failed, but the “bong” sound denoting that there is an “Intel inside” a computer at start up is protected, as is the roar of the MGM lion.
It is not possible to protect an unregistered trademark, but it is possible to protect the goodwill which an organisation owns in an unregistered mark by a claim for damages in an action for passing off. This requires proof of a reputation in the mark, evidence that a misrepresentation that could mislead the public and proof of damage, for example financial loss or damage to goodwill. By its very nature therefore, a passing off action is complex, lengthy, expensive and best avoided. If you can register a trademark, you certainly should do.
Copyright protects the expression of an idea, not the idea itself. It arises automatically at the point of creation of original artistic, musical, dramatic and literary works, including computer programs, sound recordings, films, broadcasts and the typographical arrangements of published works. It lasts for 70 years from the date of death of the author for artistic, musical, dramatic and literary works. Sound recordings and broadcasts are protected for 70 and 50 years from the date of publication and making respectively.
The owner of a copyright can use it to prevent unauthorised use of the work, such as the making of copies or placing the work on the internet. As a result, it is the right which is used when allegations of plagiarism arise in an academic context.
Design rights protect the appearance of the whole or part of a product. They can be registered or unregistered. A registered design provides a legal monopoly. As with trademarks, design owners can apply for a UK registered design or a Community Registered Design. Protection lasts a maximum of 25 years, with registrations renewed every five years. An unregistered design still attracts protection, but it is not possible to renew and in the UK protection only lasts for 10 years.
Rights in confidential information
Business-sensitive information does not of itself attract protection, but can be the subject of a confidentiality agreement which can be enforced, by injunction and/or a damages claim. This can be part of a wider agreement (for instance, imposed by an employment contract or severance agreement) or a stand-alone agreement between parties. Such documents, also known as non-disclosure agreements, are frequently used in technology transfer and purchase negotiations.
Rights granted by convention
Certain forms of very novel IP are not, by their very nature, appropriate for any form of legislative or common-law protection. Biotechnology is a case in point; it has therefore been necessary for interested parties at a national level to produce a template that attempts to balance sufficient protection of commercial sensitivities to allow investment in the technology with enough academic freedom to allow research to be conducted. A case in point is plant breeding, which obviously has worldwide significance for food security. This is a complex and fast-moving field of international law in which, not for the first time, science and technology is moving faster than national and international legislators.
The concept of the patent arose to protect inventions from exploitation, and accordingly require proof of an “inventive step”; however, plant breeding, while producing new varieties, are not necessarily the result of an inventive step; rather, they are the evolved product of a focused breeding program. Hence they are unsuited to protection by patent, and indeed by any other IP protection. To deal with this, the International Union for the Protection of New Varieties of Plants (the UPOV Convention of 1961) established and regulated a system of ‘Plant Variety Rights’, intended to grant legal protection of new varieties. Under the Convention on Biological Diversity, ‘countries of origin’ have rights to control access to their genetic resources, from which arose the “The Nagoya Protocol. This aims to ensure that the benefits arising from the utilisation of genetic resources are shared in a fair and equitable way.
Plant variety protection grants the owner exclusive rights in the reproductive material (seed, bulbs, cuttings, etc.) of the specific new variety. Protected seed which has been acquired for planting may be planted, but if the product of the harvest is for consumption; replanting it breaches the breeder’s right. As a result there is a tension between the two rights. In an attempt to resolve this conflict, the plant variety system also contains exemptions which, in general, allow breeders to use protected varieties as a starting point for breeding further varieties (the “breeder’s privilege”) and yet also allows farmers, under certain conditions, to save seed from a crop sown from a purchased protected variety for subsequent sowing on their own farms (the “farmer’s privilege”).
The European Union has adopted Regulation 2100/94 on Community Plant Variety Rights. This Regulation establishes a Community Plant Variety Right granted by a European Plant Variety Office which supplements national offices. Following introduction of the Regulation and the revision of UPOV, the British Government revised the Plant Varieties and Seeds Act 1964. Most provisions of the new Plant Varieties Act 1997 came into force on 8 May 1998.
Article 53(b) of the European Patent Convention (EPC) continues to exclude from patent protection plant varieties or essentially biological processes for the production of plants, although this exclusion does not apply to microbiological processes or their products. Restrictions on patentability of plant varieties are not, however, present in the patent laws of some other countries, e.g. the United States, Japan and Australia.
Protect your IP!
Most obviously, you should take steps to ensure the physical security of your IP, by for instance ensuring that it is kept on an encrypted drive, that up to date network hygiene measures are in place, and that your data is protected against hacking and other forms of data breach (including by your own employees potentially). Hence access to it should be restricted and recorded. There may also be Data Protection Act implications in case of loss of some forms of IP of course.
You should also audit your IP regularly, and also audit the legal framework that you have in place to protect it, including ensuring that your employment contracts contain suitable confidentiality restrictions, both during and after employment, and non-disclosure agreements are used where appropriate. If it is possible to register rights then explore the commercial benefits of doing so (ie to balance the potential risks to your business if the IP was unprotected against the costs of obtaining that protection). The legislation is complex, and the assistance of a patent attorney could be invaluable.
If you have suffered a loss of IP and you are considering legal action, the first step is to be able to prove breach. This often requires expert evidence, for example a musicologist might well be necessary to show that the melody complained of is in fact a modified copy of another’s work and hence is a breach of copyright. In some cases it is possible to use hidden features in a piece of IP which, when reproduced, will prove that the source is not original. For example steganography can be used to incorporate a physical feature that is irrelevant to functionality but is nevertheless unwittingly reproduced in an unauthorised copy. If your IP is kept digitally, you may need the assistance of a suitable expert to analyse your systems.
In England and Wales the Civil Procedure Rules require a formal letter of claim be sent before proceedings for breach are issued. However, if the context is urgent it is possible to obtain an injunction to restrain breach, either with or without notice. Whether or not an injunction is obtained, the proceedings must be in the form of a damages claim; it is therefore also important to be able to demonstrate that the breach is causative of some form of financial loss. A Claimant must be able to show that either the breach has or will have caused the owner of the IP financial loss, or alternatively that the wrongdoer has been wrongfully enriched as a result. This often requires expert accountancy evidence.
Often, from a litigator’s point of view, the most difficult part of building a case of IP breach is the absence of evidence, and in particular documentary evidence. Maintaining your records (both digital and paper forms) is therefore critical.