With new laws and regulations coming into force it’s worth knowing what the future might hold for intellectual property
Recent trends in patent prosecution and new registered design and copyright laws reflect the changing legal landscape in the UK. Coupled with the rise of new technologies, some have even forewarned of the death of intellectual property.
Intellectual property rights are being stretched by new technologies and the changes in markets and channels which they have brought about. The internet has broken down international borders and technological barriers, resulting in an unofficial deregulation of certain property rights. Intellectual property is disseminated (often unlawfully) further than was previously possible or intended.
Since intellectual property (particularly copyright) can be infringed so easily and thoroughly, this has led some commentators to state that the death of intellectual property is imminent. The argument runs, in essence, 'We can't regulate this any more, so let's stop trying'.
The 'no IP' camp represents an increasingly powerful and effective rival to mainstream business. A good example of this in action is Linux (an open-source software platform, developed by its users, which rivals Microsoft's Windows), which can be downloaded from the internet by users worldwide. Linux relies on its users to develop the technology further to improve it.
Being an open-source technology means that the intellectual property developed by its users when they change the software's structure, or make amendments to the source code, is shared among all Linux users without the protection of intellectual property rights. This is an example of a type of highly evolved software which would normally be protected by hundreds or thousands of different intellectual property rights. What is interesting about Linux is that it eschews conventional conceptions of intellectual property ownership in the interests of collusive and inclusive technology sharing.
It is difficult and expensive for intellectual property rights owners to prevent this kind of sharing through legal enforcement, so some record companies are now experimenting with technical measures to prevent intellectual property infringement at source. CDs are being produced containing a microchip which can prevent the CD being copied or being 'ripped' and uploaded onto the internet.
The predicted 'death of intellectual property' shows no signs of materialising. In fact the opposite seems to have happened, in that legislators have been prodded into reinforcing existing laws (particularly those in relation to copyright), and the businessmen and lawyers are more vigilant for infringement and piracy than ever before. Initiatives by the Recording Industry Association of America against MP3 piracy made this clear.
There is a perception that business methods and computer programs are not protectable with patents as they are expressly specified to be 'excluded subject matter' under the relevant legislation. Recent trends in patent prosecution and Patent Office practice have indicated that the conventional perception does not always hold.
To obtain protection, patent claims can succeed by directing themselves to new inventive methods of implementing a business method. Patents may be granted for computer related inventions or business method related inventions, if what is claimed has a technical effect.
In a decision made by the European Patent Office (EPO) Appeal Board in 2000, it was held that 'if a method has a technical character, it still may be a method of doing business, but not a method for doing business as such'. Therefore, by protecting the method of implementation there is indirect protection for the method itself.
It seems that applications for methods of doing business are often inextricably interlinked with new inventive software - indeed computer programmes are the most commonly employed method of implementing a new and inventive business method.
Although the European Patent Office regards software-implemented business methods as inventions, UK companies are generally less enthusiastic about (or attuned to) using this means of protection than US companies. In 1999, US companies filed around ten times the UK number of business method patents in Europe.
The English courts' approach to enforcing intellectual property rights has changed since the justice system was fundamentally altered by the adoption of the Civil Procedure Rules in April 1999.
These replaced the Supreme Court and High Court and County Court Rules for cases initiated after that date. All parties are now encouraged to avoid litigation wherever possible, and to view litigation as a last resort, ie parties are to co-operate, not do battle.
Although litigation in itself is very costly, the court now has a very wide discretion as to how it awards costs. An unreasonable approach to litigation; a spurious demand followed by litigation without merit; litigation that is under-prepared and other transgressions can result in adverse orders as to costs irrespective of the actual winner of the litigation.
Standard procedures are to be rolled out by the courts which dictate the progress of litigation on main specialist areas. They are designed to promote dispute resolution between parties on an equal footing, at a reasonable cost, speedily and in an easy and understandable way.
Streamlined procedures for intellectual property disputes are already in operation in the UK. These cut out time-consuming and expensive components such as experiments and some cross-examination.
Also, the courts are seeking to edge litigants towards a conciliation-based approach to IP dispute resolution. It remains to be seen whether all this will have the desired effect on the speed and cost of proceedings.
The law on protecting designs in the UK has changed thanks to an EC directive. This directive harmonises design law in all of the EU member states. The law came into full effect in 2003.
A design now not only means the whole of a product but can also mean part of a product, so small features in a design can also be registered and protected by law. The new legislation means that it is also possible to protect different aspects of the appearance of a product including colour and texture, packaging, 'get-up' and graphic symbols (such as computer icons).
The changes in the law now mean that designs can in some cases be protected both by registration at the Designs Registry and as conventional trade marks. The respective laws protect similar features in designs and trade marks, so that when considering registering a design for protection, also consider whether features may qualify for trade mark protection. For example, logo designs, letters, numerals, the shape of packaging or of goods themselves (even including colours and the general get-up of a product) can be registered as trade marks. This has the benefit of offering indefinite protection, provided the ten-yearly renewal fees are paid.
Furthermore, there is now a 12-month grace period so that designs can be published and market tested before the cost of a design registration is incurred (see the When to Go to Market, When to Disclose subsection under Challenges). The new law also gives a wider definition of infringement, so that unauthorised stocking and exporting of products using designs fall within its scope.
Certain design features do not qualify for protection. These include features of the appearance of a product which are solely dictated by the product's function where there is no creative design freedom. For example, a mini-disc must possess certain design features to be usable in mini-disc players, such as its size and shape. These features are not protectable, but other aspects, such as the colour and get-up of the mini-discs, can be.
Registration can be obtained in the UK on this basis now. The EU-wide registration system for the right (with rights of enforcement across the Union) is provided for in the directive and an unregistered right (lasting for three years from first marketing in the EU and protecting substantially the same types of design) is already in operation.
From 31 October 2006 various changes to UK design regulation procedures will come into force with a view to simplifying the procedure for applicants and making the cost of applying for multiple designs lower. There is also a new policy promoting openness, enabling files concerning the acceptance and maintenance of design applications and registrations to be inspected.
Although inventions made by employees in the course of their employment automatically vest in their employer, employees were previously entitled to receive compensation from their employer if their invention resulted in a patent of outstanding benefit. In practice employee compensation has not yet in practice been granted because the employee had to show that any benefit had derived from the existence of the patent itself, rather than the invention that was the subject of the patent.
The amended Act provides for employee compensation in the event that a patent, or the invention that it describes, should prove to be of outstanding benefit. An employee may now (as before) rely on evidence of royalty payments from a licensee, or profits due to others being blocked from entering the market to illustrate the benefit of the patent. Now, however, an employee may rely on evidence of profits due to the invention being a successful technical solution in itself as a means of demonstrating the benefit of the invention. However, profits due to successful marketing are still off-limits, as are benefits arising after the patent ceases to be in force.
The Directive on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society ('the Directive') was implemented in the UK on 31 October 2003. It takes affect UK law in a number of ways.
The Directive was designed to clarify and harmonise EU copyright law and in particular rights of reproduction, distribution and communication, and the legal protection of anti-copying devices and rights management systems.
The new law provides performers, record companies, and broadcasting organisations with the exclusive right of making available to the public certain copyright works and materials 'in such a way that members of the public may access them from a place and at a time individually chosen by them'. This helps to clarify the copyright position on interactive on-demand transmissions (such as pay-per-download services).
In line with recent policy, one group favoured in the new law is internet service providers. Temporary acts of reproduction (such as the copying that occurs in web-based transmissions and storage) will not constitute infringement as long as they are: 'transient and incidental [and] an integral and essential part of a technological process' and have as their sole purpose either that they enable 'a transmission in a network between third parties by an intermediary' or a 'lawful use'.
EU member states now have an obligation to provide legal protection from the circumvention of 'technological measures' designed to minimise or prevent copyright infringement, such as encryption. A new civil remedy will probably be introduced against such unauthorised acts.
Member states are also required to protect against the manufacture of, or dealing in, illegal circumvention devices and services. In addition to civil remedies, criminal sanctions are expected, consistent with the existing copyright offences.
The new law requires member states to provide legal protection for electronic rights management information used by right holders to identify, attract, and assist with utilisation of their works. This will most commonly relate to copyright proprietorship notices and other 'tagging' material and it is expected that a civil remedy for removal of such material will be introduced.
Another change is in relation to the 'fair dealing' exceptions, which provide a defence to infringement of a work where the copying is for particular purposes, such as reporting current events or criticism and review. Requirements for attributing source material are likely to be more stringent under the new law. The defence to infringement where the copying has been for the purposes of news reporting is now extended to photographs. The fair dealing exceptions in relation to unpublished works are limited.
A key development which was extensively lobbied (for and against) was the introduction of a right for individuals to reproduce material for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation. The UK legislation is not required to adopt this provision and is very unlikely to do so.
Although the Directive is aimed at increasing legal certainty through harmonisation of copyright law in Europe, there are 20 optional 'exceptions' or defences to infringements. This means that, in practice, one member state may permit certain acts of copying whereas another member state may not. It seems that with the possibility of such divergence of copyright law between member states, harmonisation will be impossible to achieve.
On 1 October 2005, the Community Designs Regulations 2005 (the "Regulations") came into force. Key changes are as follows:
- Threats of infringement - There are provisions which provide a remedy for any persons aggrieved by groundless threats being made to bring infringement proceedings in relation to UK registered designs and in relation to Community Designs (registered or unregistered).
- False claims of protection - Section 35 of the Registered Designs Act 1949 makes it an offence to falsely claim that a design is registered. This protects competitors from unfairly being discouraged from competing in an area where there is in fact no protection. The Regulations introduce equivalent offences for false claims regarding Community Registered Designs as applied to UK registered designs.
In each case the changes are to introduce equivalent provisions for Community Registered and Unregistered Designs to those which exist for UK registered designs. In this way the UK and Community systems will operate consistently as far as possible.
The World Intellectual Property Organisation (WIPO) had its first international patent application filed electronically under the Patent Cooperation Treaty (PCT) following a pilot test phase introduced last November. Dutch electronics company Philips became the first to submit its PCT application electronically with WIPO’s new PCT-SAFE (Secure Applications Filed Electronically).