How the law protects investment in technology - trade secrets, patents, design rights and plant...
-
Upload
jane-lambert -
Category
Business
-
view
679 -
download
0
description
Transcript of How the law protects investment in technology - trade secrets, patents, design rights and plant...
![Page 1: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/1.jpg)
TechnologyJane Lambert27 Nov 201116:00 - 18:00
How the Law protects Investment in
![Page 2: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/2.jpg)
Topics
● Trade secrets● Patents● Copyright and Database Right● Unregistered Design Rights● Chip Topographies● Plant Breeders’ Rights
![Page 3: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/3.jpg)
Technology
● Products● Processes● Computer software● Data manipulation● Web based services● Seeds and plants
![Page 4: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/4.jpg)
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
![Page 5: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/5.jpg)
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
![Page 6: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/6.jpg)
Trade Secrets
● Circumstances giving rise to an obligation of confidence○ non-disclosure agreement○ employment relationship○ professional relationship○ obvious from the nature of the information
● Confidentiality agreements not always effective
![Page 7: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/7.jpg)
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
![Page 8: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/8.jpg)
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
![Page 9: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/9.jpg)
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
![Page 10: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/10.jpg)
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
![Page 11: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/11.jpg)
Patents
● Sources of law○ TRIPS○ Paris Convention○ Patent Cooperation Treaty○ European Patent Convention
● Patents Act 1977● Patents Rules 2007
![Page 12: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/12.jpg)
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
![Page 13: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/13.jpg)
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
![Page 14: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/14.jpg)
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.
![Page 15: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/15.jpg)
Patents
Patentable inventions must ● be new● involve an inventive step● be capable of industrial application● not be excluded by statute
![Page 16: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/16.jpg)
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
![Page 17: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/17.jpg)
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
![Page 18: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/18.jpg)
Patents
Capable of industrial application means that the invention may be used in any kind of industry including agriculture
![Page 19: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/19.jpg)
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
![Page 20: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/20.jpg)
Patents
Monopoly enforced by civil proceedings in:● Patents Court● Intellectual Property Enterprise CourtBoth courts are part of the Chancery Division and sit in the Rolls Building.
![Page 21: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/21.jpg)
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
![Page 22: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/22.jpg)
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.
![Page 23: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/23.jpg)
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
![Page 24: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/24.jpg)
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
![Page 25: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/25.jpg)
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
![Page 26: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/26.jpg)
Plant Breeders’ Rights
● Plant Varieties Act 1997● Council Regulation 2100/94● UPOV Treaty
![Page 27: How the law protects investment in technology - trade secrets, patents, design rights and plant varieties](https://reader034.fdocuments.in/reader034/viewer/2022052505/554c370cb4c905191f8b58a0/html5/thumbnails/27.jpg)
Any QuestionsJane Lambert4-5 Gray’s Inn SquareGrays InnLondonWC1R 3AHTel 020 7404 [email protected]