Intellectual Property Law Essentials (2 October 2013)

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The shortened URL for this document is:http://jiscleg.al/IPLawEssentials

1. Introduction

2. What is a Patent? 

3. What is Copyright?

4. What is a Trade Mark?

5. How are Designs Protected?

6. What is the Database Right?

7. What is Passing Off?

8. How are Intellectual Property Rights Enforced?

1. Introduction

Intellectual property law protects the legal rights of creators and owners in relation to intellectual creativity. It lets people own the work they create.  Intellectual property rights (IPR) are, broadly, rights granted to creators and owners of works that are the result of human intellectual creativity.  These works can be in the industrial, scientific, literary or artistic domains.  They can be in the form of an invention, a manuscript, a suite of software, or a business name, as examples.

The four main types of intellectual property rights are patents, trade marks, designs and copyright.

In general, the objective of intellectual property law is to grant the creator of a work certain controls over the exploitation of that work, as the ability of others to copy the work or invention may deprive the creator of reward and incentive.

Some intellectual property rights require registration, such as the patent right, whilst other rights such as copyright accrue automatically upon the work's creation.

What is the significance of intellectual property for colleges and universities? 

There is increasing awareness of the commercial and social value in the work of further and higher education institutions and their staff.  Education establishments are more than ever expected to be involved in the exploitation of their intellectual property creations with outside bodies.  Intellectual property law provides tools which can enhance an institution’s ability to capitalise on the value of its expertise and help it exploit innovative opportunities.  Making sure that licences and agreements are fit for the purpose right from the outset is crucial to enable institutions to have control over their outputs and to permit them to maximise the return on investment.

In addition, as substantial users of intellectual property, institutions need to consider their compliance with the law when using other people’s materials and inventions.  Instilling respect for the rights of others in this regard continues to present challenges for institutions that have large numbers of learners engaging with new technologies.   

Commercialising Research

Institutions are involved in knowledge creation, development and exchange and are working to ensure that new ideas, technologies and innovations flow from their institution into the market place.  A successful outcome when commercialising research may be the licensing of intellectual property to a new or existing business.  The reality is that many institutions will have processes in place that manage innovation all the way from disclosure through to a commercial reality, along with staff that provide assistance and support, from finding relevant funding through to the identification and engagement of potential licensees and collaborative partners.  Apart from those that specialise in this area it is valuable for institutions to instil in staff and students a broad understanding of the laws of intellectual property so that awareness is raised and the opportunities to capture innovation at the earliest stage are maximised.  By ensuring that its learners and staff understand the regulatory environment that governs this work an institution will be better able to maximise the benefits of research and innovation. 

Example

It is generally the case that where a college is using educational licenses for learning resources and software it is a breach of the licence to use them for commercial purposes.

2. What is a Patent? 

A patent is an intellectual property right, granted to an inventor by a country’s government as a territorial right, usually for twenty years.  Patents protect new technology for both products and processes.  Patent owners can enjoy exclusive rights to their inventions for up to twenty years, enabling them to strike licensing deals or keep rivals at bay whilst they establish their brand.  The public benefits from seeing details of inventions when published, and can use that information as a springboard for their own innovations.

In the UK obtaining a patent involves making a formal application to the Intellectual Property Office.  Having a patent makes it illegal for anyone except the owner or someone with the owner’s permission to make, use, import or sell the invention in the country where the patent was granted.  

Patents protect new inventions and cover how things work, what they do, how they do it, what they are made of and how they are made.  It gives the owner the right to prevent others from making, using, importing or selling the invention without permission.

  • Inventions must be kept confidential to be patentable
  • Inventions must be capable of industrial application
  • Granting a patent application can take several years
  • Patents can be renewed for a maximum of 20 years

Using other people's inventions

If an institution wants to use other people’s patents, it will usually need permission, and this is typically done by approaching the owner to agree a licence with them, or, in some cases, by purchasing the patent from them.  If you use others’ patented inventions without permission, you are infringing the patent and the owner can take legal action against you and claim damages.

Software Patents

Inventions relating to computer software may be patentable, but only if they involve something more than just software running on a computer in a technically ordinary way.  Whether a computer-implemented invention is patentable depends on the contribution the invention makes.  For example, if it provides improved control of a car braking system, it is likely to be patentable, but if it merely provides an improved accounting system, it is probably not patentable because this is a non-technical purpose.

3. What is Copyright? 

Copyright protects original literary, artistic, dramatic and musical works, sound recordings, films or broadcasts, and the typographical arrangement (layout) of published editions.  Books, papers and magazines, music, artwork and photographs, films, television and radio programmes, software and computer games are all protected by copyright.  The owner of copyright can licence copies or adaptations of the work (e.g. translations, movie rights to a book etc). 

Software (computer programs) and databases can be protected as literary works, as well as other possible rights.  Software copyright is not essentially different from any other sort of copyright.  However, there are certain aspects of copyright law that are specific to software, because there are practical differences between software and other things that can be copyrighted (books, poems, drawings, sculptures, etc.).

Copyright is free and automatic – no registration is required.

More detail on copyright can be found on the separate Copyright Law Essentials paper on the Jisc Legal website at – www.jisclegal.ac.uk/copyright.

4. What is a Trade Mark?

Trade marks are symbols that differentiate goods and services in the marketplace (like brand names and logos).  They can be used as marketing tools so that customers can recognise particular products or services.  The trade mark can be, for example, words, logos or a combination of both and distinguishes particular goods and services from those of competitors.  A trade mark must be distinctive in terms of the goods and services provided, i.e. it must be recognisable as a sign that distinguishes one organisation’s goods or services from someone else's. A registered trade mark must be renewed every 10 years to keep it in force.

5. How are Designs Protected?

Designs protect the physical appearance and visual appeal of products.  In the United Kingdom, designs are protected in two ways.

Registered designs

A registered design is a legal right which protects the overall visual appearance of a product in the geographical area in which it is registered.  The visual features that form the design include such things as the lines, contours, colours, shape, texture, materials and the ornamentation of the product which, when applied to the product, give it a unique appearance.  It is also possible to register a design showing the ornamentation alone e.g. a pattern to go on a product or a stylised logo.

Unregistered designs - design right

If a design is not registered, it may still have some automatic protection by unregistered rights.  A design right protects the design from copying.

These are made up of:

  • UK design right
  • Unregistered community design
  • An automatic copyright in the design drawings

UK design rights apply to original, non-commonplace designs of the shape or configuration of products.  Design right arises on the creation of the work in the UK, and for community design rights when the design is made available to the public.  Design right protects the design from being copied.  Protection for UK design rights is only available to nationals of certain countries.

6. What is the Database Right?

Irrespective of copyright protection, a database may be protected by the database right.  This is intended to protect and reward investment in the creation and arrangement of databases.  This protection can apply to both paper and electronic databases.

  • For copyright protection to apply, the database must have originality in the selection or arrangement of the contents
  • For database right to apply, there must have been a substantial investment in obtaining, verifying or presenting its contents
  • It is possible that a database will satisfy both these requirements so that both copyright and database right apply

There is no registration for database right - it is an automatic right like copyright and commences as soon as the material that can be protected exists in a recorded form.  However, the term of protection under the database right is much shorter than under copyright - it lasts for 15 years from making but, if published during this time, then the term is 15 years from publication.

7. What is Passing Off?

The law of passing off entitles a business (A) to prevent other business (B) from unfairly using its (A’s) goodwill.  Essentially, someone must not sell their own goods under the pretence that they are the goods of someone else.  This applies equally to colleges and universities.

8. How are Intellectual Property Rights Enforced? 

Enforcing intellectual property rights against infringers can be time-consuming and expensive.  IP protection is territorial, which means registered protection in the UK applies only within the UK.  However, the majority of countries have similar laws relating to intellectual property and protection can be sought in other countries.

In general by application to the courts the intellectual property rights holder can: 

  • stop a person making further infringing use of the material by seeking an injunction, interdict or other order
  • claim damages from those who infringe their intellectual property rights
  • compel the infringing party to give up or destroy the infringing article

Posted on 02/10/2013