This chapter explores the issue of patent ownership and the related question of who is entitled to be granted the patent. It begins by considering aspects of British law dealing with ownership and who is properly entitled to the grant of a patent as well as the remedies available where the wrong person has applied for a patent or a patent has been granted to the wrong person. It then analyses in detail who counts as an inventor, issues surrounding inventions allegedly produced by artificial intelligence, joint inventors, and entitlement issues that arise in relation to inventions created by employees.
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Chapter
21. Ownership
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
Chapter
8. Patents—an overview
This chapter, which comments on the patent system, argues that while there is sufficient evidence to criticize the patent system, the mere fact that thousands of patents are granted annually suggests that all is not lost. Much of the law functions well and the time taken to grant a patent is a result of painstaking efforts to ensure that the invention fits in with the legal criteria. In so far as the patent system may be criticized, it is clearly having trouble getting to grips with ‘cutting edge’ issues, such as biotechnology, nanotechnology, and synthetic biology. The bottom line is that despite its imperfections, the patent system is a high-quality system involving detailed claims and their full examination.
Chapter
1. Introduction to copyright
This introductory chapter provides an overview of copyright protection. It discusses how United Kingdom copyright law has developed from the mid-16th century onward. The purpose of giving this account is to highlight two recurring themes: firstly, the law's struggle to keep up with changing technology; and, secondly, the effect of external influences on domestic law. The chapter then looks at the theoretical justifications for copyright and the extent to which they accord with the current law, and the principal characteristics of copyright, including the crucial difference between protecting an idea and protecting the expression of that idea. There are a number of aspects of copyright that do not apply to other intellectual property rights like patents and trade marks. Understanding these differences will help one in distinguishing between the different types of intellectual property right.
Chapter
15. Introduction to patents
This chapter discusses patents, which protect inventions — often new medicinal compounds or new aspects of technology — that are novel, inventive, and capable of industrial application. There are four arguments in support of patent protection. The first is a moral justification based on the assertion that there is a natural property right in ideas. The second argument is that justice and fairness demand that there should be a reward for services useful to society. The third argument is that patents are necessary to secure economic development. Finally, the fourth justification is the ‘exchange for secrets’ theory. The Patents Act 1977 dealt with the substantive law of UK patents for the first time. The Act's provisions are influenced primarily by the terms of the Patent Co-operation Treaty 1970 and the European Patent Convention 1973. The chapter then considers the five key stages in the UK procedure to obtain a domestic patent.
Chapter
16. Ownership of patents
This chapter assesses the ownership of patents. Teams of researchers often work together towards a common goal. This means that there are sometimes disputes about who actually invented the product or process covered by a patent. Resolving these disputes is of significance because under patent law the owner possesses the right to grant licences to make use of the patented invention in exchange for a fee or royalties, and the right to sue for infringement. Before deciding who is entitled to the ownership of an invention it is first necessary to examine what is meant in law by the word ‘inventor’. Having examined the criteria used by the courts to identify an inventor, one must now consider the special statutory rules concerning employee–inventors. Once it has been decided who owns an invention, there is a scheme of compensation for employee–inventors.
Chapter
19. Inventive Step
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter examines the requirement that an invention is patentable if it involves an ‘inventive step’ or ‘non-obviousness’, that is, the invention is not obvious to a person skilled in the art, and the difficulty of deciding whether an invention is obvious (non-inventive) or non-obvious (inventive). It first considers the approach used by the European Patent Office to deal with the obviousness of a patent and compares it with that in the UK. It then explains the concept of the state of the art in an obviousness examination before concluding with an assessment of the way in which the inventive step has been addressed in a number of different circumstances.
Chapter
19. Design rights
This chapter considers two forms of design right available in the United Kingdom: registered and unregistered design rights. The former is the older concept and was initially applicable to designs intended to be imprinted on linen; the system was extended to other forms of product by the Copyright and Design Act of 1839. This offered protection for ‘the ornamentation and for the shape and configuration of any article of manufacture’. The notion of unregistered design right was introduced to the United Kingdom in the Copyright, Designs and Patents Act 1988. Design rights in tablet computers are also discussed.
Chapter
9. Software
This chapter examines whether software should be protected by patent law or by the law of copyright, or through a sui generis form of protection. It first provides a historical background on software and copyright protection, before discussing the scope of software copyright protection and copyright infringement. The chapter then looks at several forms of copyright infringement such as offline, online, and employee piracy, and also explains the look and feel infringement by citing three cases: Navitaire v easyJet, Nova Productions v Mazooma Games, and SAS Institute v World Programming Ltd. In addition, it considers permissible acts under the UK’s Copyright, Designs and Patents Act 1988 without infringing the rights of the copyright holder. Finally, the chapter analyses cases relating to patent protection for computer software, including software patents under the European Patent Convention and the decision in Aerotel v Telco & Macrossan.
Chapter
2. The international and European framework
This chapter considers the international aspects of intellectual property rights. It summarizes the various international conventions, treaties, agreements, and protocols that are in place, all of which are administered by the World Intellectual Property Organization. The chapter also discusses European initiatives in the areas of patents, trade marks, industrial designs, and copyright.
Chapter
14. The Body as Property
A. M. Farrell and E. S. Dove
This chapter explores the debates that have arisen in relation to questions of ownership and control of our bodies, and what we are (or should be) able to do, with our separated human body parts and tissue. In recent years, this debate has centred on the status of the body as property, key aspects of which are examined in this chapter. In order to explore the parameters of this debate, the chapter proceeds with first identifying key terms, before moving on to examine key concepts such as ownership, control, and commodification; various property models in human tissue; and a comparative overview of jurisprudence addressing questions of trade and property in human tissue. Thereafter, an examination is provided of key UK case law which engages with the property approach in human tissue, covering reproductive material, the embryo, and the dead body, by way of example. The final section briefly examines intellectual property in human tissue.
Chapter
19. Intellectual Property Law
This chapter considers the major intellectual property rights in the UK and the protection the law gives to these rights. It explains the meaning of copyright, patents, trade marks, and design rights, and considers the types of works that might be protected by them. It explains whether the rights need to be registered and if so the process of registration. It examines the time limits for the protection of the various rights and the remedies available for infringement of them. It also considers the protection the law gives to intellectual property via the tort of passing off. The chapter concludes with a discussion of the possibilities of protecting intellectual property rights outside the UK.
Chapter
24. Intellectual Property and Data Protection
The final chapter in the book examines matters relating to the intellectual property created and/or owned by a business and their responsibilities for the data they access and/or produce. Given the value of the outputs from the intellectual creativity of persons (software programs, books, music recordings etc.), this chapter outlines the rights available to protect them and the consequences for infringement. It first identifies the law surrounding creative ideas and work (copyright) before a product’s appearance (design rights) is considered. The chapter continues by assessing the protection of a brand name and image (trademarks) and finishes the substantive issues through examination of inventive ideas and works (patents). Confusion of the public through the unlawful use of an existing business’ name or product can result in the tortious liability of ‘passing-off’. Intellectual property is produced by employees and the consequences of employment status for the rights to exploit the property must be effectively managed. The chapter concludes with an assessment of developments in data protection—the GDPR, Data Protection Act, and the tactics available to businesses to avoid transgression of the law.
Book
Lionel Bently, Brad Sherman, Dev Gangjee, and Phillip Johnson
Intellectual Property Law provides a detailed analysis of intellectual property law with reference to a wide range of academic opinion, giving a broad context for exploring the key principles of the subject. The book covers a number of areas of intellectual property law including copyright, patents, the legal regulation of designs, trade marks and passing off, confidential information, misuse of private information, and litigation and remedies. In this sixth edition, the introduction has been updated to take account of the United Kingdom leaving the European Union. Important developments covered include CJEU decisions on the concept of a copyright work, communication to the public, digital exhaustion and defences, and the Court of Appeal’s analysis of joint authorship.
Chapter
14. Introduction to Patents
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter introduces the reader to patents, how they work, and the laws governing them. It begins with a history of the patent system in the UK up to 1977. This is followed by a discussion of various justifications that have been proposed in support of the patent system, such as the natural rights of inventors to their work and the public benefits that flow from the grant of patent monopolies. It also considers the current regulatory regime governing the creation and use of patents in the UK and Europe, with particular reference to the European Patent Convention and the Patents Act 1977. Finally, the chapter discusses the impact of the European Commission on patent law and some of the international treaties that have influenced British patent law, including the Patent Cooperation Treaty, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the Convention on Biological Diversity. The chapter also speculates on the impact of Brexit on UK patent law.
Chapter
15. Nature of a Patent
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter provides an overview of the nature of the patent, with emphasis on the variety of ways in which patents are described, how they are drafted, and what they contain. It begins by looking at the types of patent in the UK and the two authorities that grant patents in the country: the UK Intellectual Property Office and the European Patent Office. It then considers the complex and difficult process of drafting a patent before discussing the four key parts of a patent, namely, an abstract, a description of the invention, one or more claims, and any drawings referred to in the description or claims. It also looks at some of the more common types of claims.
Chapter
16. Procedure for Grant of a Patent
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter explains the processes involved in granting patents as well as the factors that applicants must take into account when deciding whether to patent an invention in the UK. The role of patent agents and the choice of route to take to secure grant of the patent are considered. The chapter then documents the procedures in the application for a patent, paying particular attention to some of the key features of the UK and European Patent Office patent application processes together with the Patent Cooperation Treaty. It also describes situations in which applicants and patentees are able to amend their applications and the restrictions under which such amendments operate. Finally, it looks at a number of proposals to reform the patent procedure.
Chapter
20. Internal Requirements for Patentability
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter deals with the internal requirements for patentability (that is, the focus is on the way the patent is drafted). It first discusses the sufficiency of disclosure, with particular reference to the scope of the patent monopoly, the ‘technical contribution’ made by the invention, and whether the invention is disclosed in a manner that is clear and complete enough for it to be performed by a person skilled in the art. It then turns to the form and content of the claims, with emphasis on the clarity and conciseness of the claims, whether they are supported by the description, and whether they relate to one invention. It also considers the requirement that the patent must not be amended to prevent it from acquiring additional subject matter or extending the protection conferred by the patent, along with restrictions on such amendments.
Chapter
22. Infringement
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter deals with patent infringement and the scope of protection that the law provides to patent owners. It discusses three criteria that are used to determine whether a patent has been infringed: the types of activity that constitute an infringement; whether the activity in question falls within the scope of the patent monopoly; and whether the defendant is able to invoke any of the defences that are available to them. The chapter discusses in detail the right to make a product (and the relationship with repair), the concept of a ‘direct’ product from a patented process, and infringement of new medical use patents, as well as ‘indirect’ infringement by supplying means to put an invention into effect. It then considers the scope of protection, closely examining the evolution in the United Kingdom of the interpretation of claims and the recognition of a doctrine of equivalents extending the scope of protection beyond the terms of the claims. The chapter also examines the defences of private and non-commercial use, experimental use, and ‘farmers’ privileges’.
Chapter
3. Theoretical Accounts of European Intellectual Property
Justine Pila and Paul L.C. Torremans
This chapter offers a full and critical account of the arguments for and against the existence of IP systems in general, and of European IP systems in particular. It begins by considering two general theories in support of the recognition of IP rights as natural rights: the first casting IP as supporting the personal development and autonomy of individual creators (the argument from personhood), and the second casting IP as securing for creators such rights as they deserve by virtue of their acts of intellectual creation (the argument from desert). From natural law accounts of the existence of IP the chapter goes on to examine three other theories grounded in considerations of justice, utility, and pluralism respectively. According to the first, IP is defensible as a means of preventing people either from being enriched unjustly or from harming others by unfairly ‘reaping where they have not sown’. According to the second, IP rights are privileges conferred by the state on specific individuals in the pursuit of certain instrumentalist ends, such as encouraging socially desirable behaviour on the part of their beneficiaries or discouraging socially undesirable behaviour on the part of those whose freedoms they restrict. And according to the third, IP is a regulatory mechanism by which different understandings and traditions of protecting creative and informational subject matter are reconciled in support of legal and social pluralism. The chapter concludes with a discussion of the implications of the theoretical accounts for the duration of copyright and related rights protection and the patentability of biotechnology.
Book
Each Concentrate revision guide is packed with essential information, key cases, revision tips, exam Q&As, and more. Concentrates show you what to expect in a law exam, what examiners are looking for, and how to achieve extra marks. Intellectual Property Concentrate is the essential study and revision guide for intellectual property law students. The clear, succinct coverage enables you to quickly grasp the fundamental principles of this area of law and helps you to succeed in exams. After an introduction to intellectual property and common themes, the book covers: copyright; computer programs and databases; moral rights; performers’ rights; trade secrets and confidential information; patents; designs; and passing-off and trade marks. Written by experts and covering all the key topics so you can approach your exams with confidence, the book is: clear, concise, and easy to use, helping you get the most out of your revision; full of learning features and tips to show you how best to impress your examiner; and accompanied by online resources including multiple-choice questions and interactive flashcards to test your understanding of topics. Its ‘Exam essentials’ feature prepares you for your intellectual property law exam by giving help and guidance on how to approach questions, structure answers, and avoid common pitfalls.
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