On Wednesday 27 Nov 2013 I addressed a seminar on trade secrets, patents, copyrights, design rights, semiconductor topographies and plant varieties. Although I delivered my talk without slides I have prepare these as an aide mémoire for those who attended the talk. They are supplemented by an accompanying handout. Patent law developed during the industrial revolution when technology meant new products and processes but it now includes software, data, silicon chips and new plant and seed varieties. Consequently patents are fine for protecting developments in manufacturing but not quite so good protecting the new information based industries. In addition to my overview of these rights I discussed the advantages and disadvantages of patents as opposed to trade secrets law. I suggested a simple IP strategy for most and discussed enforcement.

1. How the Law protects
Investment in
Technology
Jane Lambert
27 Nov 2011
16:00 - 18:00

2. Topics
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Trade secrets
Patents
Copyright and Database Right
Unregistered Design Rights
Chip Topographies
Plant Breeders’ Rights

3. Technology
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Products
Processes
Computer software
Data manipulation
Web based services
Seeds and plants

4. Trade Secrets
● Law of Confidence
● Common law or judge made doctrine
● Coco v A N Clark (Engineers) Ltd
○ Information must have quality of confidence
○ Imparted in circumstances giving rise to an
obligation of confidence
○ Unauthorized use

5. Trade Secrets
● Quality of confidence
○ Information the use or disclosure of which could
injure confider or benefit confidante
○ must be secret or at least not generally known
○ ceases to be confidential if it can be reverse
engineered
○ examples include source code, chemical formulae
● Overlap with database right

6. Trade Secrets
● Circumstances giving rise to an obligation of
confidence
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non-disclosure agreement
employment relationship
professional relationship
obvious from the nature of the information
● Confidentiality agreements not always
effective

7. Trade Secrets
● Unauthorized use
○ use for a purpose other than that of the disclosure
○ disclosure to a person other than the one authorized
to receive the information
○ making and keeping copies of confidential
documents without consent
○ failure to return documents disclosed in confidence
○ failure to keep confidential documents secret

8. Trade Secrets
● Remedies
○ interim injunction in Chancery Division
○ delivery up of confidential documents and any
copies
○ final injunction and damages or account of profits
○ final injunction can be granted by a district judge of
the small claims track of the IP Enterprise Court
● Draft EU Directive on Trade Secrets

9. Trade Secrets
● Antithesis of patent protection where a
monopoly is the reward for disclosure of the
technology
● Every patented invention begins life as a
trade secret
● Widely used by the software industry

10. Patents
● Monopoly of a new invention which may be a
product or a process
○ making, distributing, marketing, importing, using and
keeping a new product
○ using a new process
○ distributing, marketing, importing, using and keeping
a product derived from a new process

11. Patents
● Sources of law
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TRIPS
Paris Convention
Patent Cooperation Treaty
European Patent Convention
● Patents Act 1977
● Patents Rules 2007

12. Patents
● Institutions
○ Patent Office (now known as the Intellectual
Property Office or “IPO”)
○ European Patent Office (EPO”)
○ World Intellectual Property Organization (“WIPO”)
● British patents (for UK alone issued by IPO)
● European patents issued by the EPO
● European patents (UK) EP designating UK

13. Patents
● Applications may be made to
○ the IPO for British patents
○ the EPO for European patents including European
patents (UK)
● Applications may also be made through the
PCT for a British or European patent:
○ Applications to a patent office outside UK or even
Europe
○ processed by the WIPO

14. Patents
● Applications may be made to
○ the IPO for British patents
○ the EPO for European patents including European
patents (UK)
● Applications may also be made through the
PCT for a British or European patent:
○ Applications to a receiving office (patent office);
○ published by the WIPO.

15. Patents
Patentable inventions must
● be new
● involve an inventive step
● be capable of industrial application
● not be excluded by statute

16. Patents
● Novelty means not part of the “state of the
art”
● Prior art includes all matter that has been
made available to the public anywhere in the
world by written description or otherwise
● Includes but not limited to patents and patent
applications and technical literature

17. Patents
Invention includes an “inventive step” if it is not
obvious to a “person skilled in the art” having
regard to the state of the art

18. Patents
Capable of industrial application means that the
invention may be used in any kind of industry
including agriculture

19. Patents
Excluded matter includes
● computer programs, methods of doing
business and presentation of information “as
such”
● inventions contrary to public policy or
morality
● methods of treatment and diagnosis but not
medicines

20. Patents
Monopoly enforced by civil proceedings in:
● Patents Court
● Intellectual Property Enterprise Court
Both courts are part of the Chancery Division
and sit in the Rolls Building.

21. Patents
Intellectual Property Enterprise Court
● specialist list
● Judge Hacon and other Enterprise judges
● trials limited to one day (or at the most) two
● recoverable costs limited to £50,000 for trial
on liability and £25,000 for inquiry or account
of profits

22. Software
Because computer programs “as such” cannot
be patented, industry relies on
● law of confidence
● copyright
● database right.
However, it is possible to patent a software
implemented invention in certain
circumstances.

23. Design right
● Part III of Copyright, Designs and Patents
Act 1988
● Protects investment in research and
development of products that might be
protected by utility models (or equivalents) in
other countries
● Protection against copying of designs

24. Design right
● Very short term (15 years if no products are
made to the design or 10 years if they are)
● Licence of right available for last 5 years of
design right term
● Almost unique to the UK which means that
protection does not extend to US, Japanese,
Chinese, Russian or Indian designs etc

25. Semiconductor Topographies
● The Design Right (Semiconductor
Topographies) Regulations 1989
● Extended design right protection to
semiconductor topographies with
○ longer term
○ protection for nationals of countries that protect UK
topographies

26. Plant Breeders’ Rights
● Plant Varieties Act 1997
● Council Regulation 2100/94
● UPOV Treaty

27. Any Questions
Jane Lambert
4-5 Gray’s Inn Square
Grays Inn
London
WC1R 3AH
Tel 020 7404 5252
jlambert@4-5.co.uk