Intellectual Property

World Intellectual Property Organization
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Jane Lambert

5 Jan 2017

Revised 16 Jan 2017


Intellectual property ("IP") is the collective name for the bundle of laws that protect investment in intellectual assets. Examples include patents, trade marks, copyrights and registered designs.  Intellectual assets are the subject of IP protection such as inventions, brands and literary or artistic works in the widest sense.  They are called "intellectual assets" because they are assets that can generate income or constitute some other benefit just like buildings, machinery or cash in hand and intellectual in that they are creations of the mind.

IP laws protect such investment by reserving initially the exploitation of the intellectual asset to the persons who created it. Thus, the inventor of a new product, his or her employer or other person claiming through him or her earns the right to prevent others from making, importing, disposing of or keeping the product with a patent and the author of a novel or those claiming through him the right to restrain others from copying, publishing, renting, lending or translating the work with a copyright.  Of course, an inventor, designer or author can assign, or agree that someone else should acquire his or her rights and if he or she is employed in research or development or some creative capacity such an agreement will be implied. The rights conferred by a patent or copyright are examples of intellectual property rights or "IPR". Doing any of the acts that are reserved to an IPR owner is called infringement.

IPR are enforced mainly by civil proceedings brought by the rights owner.  The remedies that the courts will grant include injunctions (orders by a court to stop, or refrain from, infringing the IPR disobedience to which can be punished by fine or imprisonment), damages (compensation for past infringement) or an account of profits (computation and surrender of ill-gotten gains), delivery up (surrender) and forfeiture of all infringing products or articles and costs (reimbursement of at least some of the successful parties' expenses which can include solicitors and counsels' fees and other outgoings). However, some IP infringements such as counterfeiting and piracy (trade mark and copyright infringement on a large scale) are also offences. In some countries customs officials will impound allegedly infringing items at ports and airports or frontiers.

Most IP claims in England and Wales are brought in the Chancery Division of the High Court of Justice or the County Court. Within the Chancery Division there are two specialist IP courts. The Intellectual Property Enterprise Court ("IPEC") hears IP claims under £500,000 with a small claims track for all IP claims except patent, registered design, registered Community design, semiconductor topography and plant varieties cases under £10,000. The Patents Court hears high-value or complex patent, registered or registered Community designs, semiconductor topography or plant variety cases.

Most IPR are granted for countries or groups of countries. Some such as copyright, unregistered design right and rights in performances come into being automatically when certain conditions are met. Others require registration by national or regional intellectual property offices. The Intellectual Property Office ("IPO") in Newport grants patents, trade marks and registered designs for the UK. The European Union Intellectual Property Office ("EU IPO") in Alicante registers trade marks and designs for the whole EU including the UK that are known respectively as EU trade marks ("EUTM") and registered Community designs ("RCD").

There is also a European Patent Office ("EPO") in Munich that grants patents (known as "European patents") for any one or more of the states that are party to the European Patent Convention including the UK. European patents granted for the UK ("European patents (UK)") are treated for all practical purposes as though they had been granted by the IPO. The advantage of applying to the EPO for European patents for several countries is that it is easier and cheaper than applying simultaneously to several national intellectual property offices.

The European Patent Convention is one of a number of international agreements for IP co-operation to which the UK is party. Other important ones include the Paris Convention for the Protection of Industrial Property ("Paris"), Berne Convention for the Protection of Literary and Artistic Works ("Berne") and TRIPS (the Agreement on Trade-Related Aspects of Intellectual Property Rights).  Paris and Berne are administered by a UN agency known as the World Intellectual Property Organization ("WIPO") in Geneva.

The main IPR are as follows:


Copyright
The right to prevent others from copying, publishing, renting lending, performing, making available or adapting a copyright work
Passing off
Common law action to restrain a trader from misrepresenting his goods, services or business as those of or somehow connected with those of another trader by adopting the same or similar brand name, logo or get up.
Patent
A monopoly of a new invention. If the invention is a product, the right to prevent others from making, disposing of, offering to dispose of, using or importing the product or keeping it whether for disposal or otherwise. If the invention is a process, the right to prevent others from using the process or from disposing of, offering to dispose of, using or importing any product obtained directly by means of that process or keeping any such product whether for disposal or otherwise.
Registered Design
An exclusive right to use the design and any design which does not produce on an  informed user a different overall impression including  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 o stocking such a product for those purposes.
Rights in Performances
The right of a performer, or of a broadcaster, film or recording studio with an exclusive contract with the performer, to object to the unlicensed broadcasting, filming or taping of the performance.
Trade Mark
The right to prevent others from using the same or similar mark in the course of trade in respect of the same or similar goods or services or use in respect of dissimilar goods or services where use would take unfair advantage of or be detrimental to the distinctive character of the mark,
Trade Secret
A right to prevent others from using or disclosing secret commercial or technical information that has been disclosed in confidence.
Unregistered Design Right
The right to prevent others from making articles to a design or a design document for making such articles.

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