Laoe Module 7 Ipr 2015

Module 7 Intellectual Property

Chapter 14 Intellectual Property Law

Chart in Course Notes

See also IPOS website http://www.ipos.gov.sg/topNav/hom/

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Intellectual Property (IP)

Primary forms

Trademarks

Patents

Registered Designs

Copyright

Trade Secrets

Confidential Information (proprietary information such as knowhow, customers lists, strategy, etc.)

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Intellectual Property

Intellectual Property (IP) refers to the product of your mind or intellect.

IP can be an invention or innovation, special names and images used in trade, original designs or an expression of an idea.

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IP Laws

In nearly all countries, laws exist to protect IP

This may be through a registration process such as patent grants for inventions, trademark registration for signs used in trade, industrial design registration for designs applied to articles and grants of protection for plant varieties

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Unregistered IP

Other forms of IP, that need not be registered, but may be protected nonetheless, include copyright works, geographical indications, layout designs of integrated circuits, confidential information and trade secrets.

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Aim of IP Law

Law in this area seeks to protect creations arising out of the human mind by treating them as items of property

While protecting IP rights belonging to the creators, law tries to balance this protection with the interests of others who may wish to use the creations

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Trademarks (1)

Used to distinguish goods or services from those provided by others

When used with services referred to as a service mark (although Singapore does not make that distinction)

In Singapore, governed by the Trade Marks Act

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Trademarks (2)

Trademark (or mark) any word, name, symbol, or device, or any combination of these which identifies goods (or services) in a way to distinguish them from others

Registration entitles owner to use the mark to exclude others from using it if such use would lead to confusion by the public

The less descriptive or generic, the better.

Unique, fanciful, distinctive make the best trademarks.

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Trademarks (3)

Registered = Unregistered but claimed as a mark by owner

for goods; for services

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Meaning of a Trademark

A sign capable of being graphically represented and Distinguishing goods/services of one

party from another

Sign may be any letter, word, name, signature, numeral, label, shape, color, aspect of packaging or combination thereof

Can even extend to sounds and scents (if can be graphically represented)

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Types of Trademarks

Trademark or Mark: any word, name, symbol or device, any combo thereof

used by company to identify its products and distinguish them from others

Usually word, short phrase, slogan

Service Mark: Same but relates to services (versus goods)

Certification Mark: Used to certify regional material, mode of manufacture,

quality, mode of service, or other characteristics of goods/services, such as UL (meeting Underwriter Laboratory standards)

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Types of Trademarks (2)

Collective MarkA collective mark is a sign used to distinguish the goods or services offered by members of an association or group of traders from goods or services of those who are non-members of the association.

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Types of Trademarks (3)

Trade name name used by a company to identify its business rather than its products

Trade dress total image or overall appearance of a product

Must be distinctive and nonfunctional

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Example of Trade Dress

FISKARS orange-colored handles on scissors

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Registration (1)

Best way to protect trademark is by registration (but not compulsory)

Registration gives owner the right to control the use of the sign

Owner can more effectively stop others from copying it and grant licenses to third parties

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Benefits of Trade Mark Registration

Although it is not compulsory to register a trademark in order to use it, a trade mark registration adds great value to a business.

By filing for registration, the trademark owner obtains a right to ownership and the right to prevent others from using a similar mark without permission.

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Benefits of TM Registration (2)

The owner of the registered trademark can exploit a trademark:

use it to better protect market share/profits by barring others from copying it

license it to third parties for a fee/royalty (e.g. through a franchise)

sell the mark

use the mark to raise equity for the company

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Registration Requires Use

Applicant must have used or intend to use mark in course of trade in relation to specified class of goods/services

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Classification of Goods and Services

Scope of a trademark registration determined by the goods/services in relation to which the trademark is registered

Singapore (and most countries) use the International Classification of Goods and Services as prescribed by the Nice Agreement (as in Nice, France) to classify trademarks

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Nice Agreement

International agreement on classification of goods and services to which Singapore is a party

Nice Agreements list groups these goods and services into classes - a total of 34 classes of goods and 11 classes of services

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Nice Agreement (2)

The Nice Classification is a tool for the classification of goods and services for the purposes of trademark registration used in more than 140 countries worldwide and in international applications for the registration of marks under the Madrid Agreement and Protocol

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Registration

Duration = 10 years, renewable for further periods of 10 years each

Mark can be renewed indefinitely

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Unregistered Marks

For a mark that is not registered, owner can only rely on the common law action of "passing off" to protect the mark against imitation or infringement

This remedy, however, requires trademark owner to prove owner reputation and goodwill, which may pose some problems where the business, or the use of the trademark, has not been established for a substantial period of time

Owner acquires common law rights in that mark by virtue of the use and reputation of the mark, but can be difficult to prove

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Common Law (reminder)

Common law generally refers to the law based on past decisions and general principles, serving as precedent or is applied to situations not covered by statutes

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Registered Marks

A registered trademark grants owner a statutory monopoly

If someone else uses the same or a similar mark on the same or similar goods/services, the registered trademark owner can rely on its registration as proof of its right to the mark and sue for infringement

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Identifying a Registered Trade Mark

and are common symbols associated with trademarks

indicates that the mark is registered and hence protected under the trademark statute

is a symbol used to indicate that the mark is being used by the company as a trademark, but does not denote that the mark is registered or protected under the trademark statute One way for company to acquire common law

rights is by using this symbol

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Grounds for Registration Refusal

A trademark will not be registered if it is identical with an earlier mark and the goods or services for which the trademark is sought to be registered are identical with the goods or services for the earlier mark

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Grounds for Registration Refusal

If the mark is devoid of distinctive character, it will not be registered it must be capable of distinguishing ones products/services from another

If the mark is indicative of the kind, quality, quantity, intended purpose, value, geographical origin or time of production, it cannot be registered (unless well-recognized by the public due to its long use)

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Unregistrable Marks

Some common examples:

Descriptive MarksMarks that describe the goods and services of the business, such as marks that describe the quality ('Super' or 'Best'), quantity ('One dozen'), value ('Cheap'), intended purpose ('Cleaner'), or geographical origin.

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Unregistrable Marks (3)

Some common examples:

Marks 'Common to the Trade' Marks that are signs or indications that are or have become customary in the trade. Some marks have become so well accepted that the term is used to describe the type of the goods or services in general, and no longer serves to distinguish the products offered. Example of a trademark that have become customary in the industry are "escalator aspirin dumpster

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Marks Contrary to Public Policy or MoralityMarks that are generally contrary to public policy or morality, such as promoting immoral behaviour

Deceptive MarksMarks that attempt to deceive the public. For example, marks that misrepresent the nature, quality or geographical origin of the goods or services

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Marks Contrary to Public Policy or MoralityMarks that are generally contrary to public policy or morality, such as promoting immoral behaviour

Deceptive MarksMarks that attempt to deceive the public. For example, marks that misrepresent the nature, quality or geographical origin of the goods or services

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Marks that could Cause ConfusionIt is likely to cause the public to be confused when the mark to be registered is identical or similar to an earlier trademark and is to be registered for similar goods/services

Marks that are Identical/Similar to Well Known MarksA trademark may not be registered if it is identical or similar to an earlier mark that is well known in Singapore (also called famous mark when it has worldwide recognition)

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Exceptions

In general, trademarks that do not have a distinctive character cannot be registered

However, there may be exceptions where the company has built up its branding to such an extent that the mark is associated with the company, even though the mark in itself was not distinctive

For such cases, the mark may still be registered on the basis of substantial use resulting in the mark acquiring a distinctive character

"Sharp" (for televisions) and "Digital" (for computers) are examples of such marks

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Public Access

IPOS provides public access to its records of trademark applications and trademarks registered in Singapore.

Any member of the public may access these records at the Public Search Area at IPOS or via eTradeMarks.

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Infringement of Trademarks

Person infringes trademark if he, without consent of owner, uses in the course of trade an identical/similar mark in respect of identical or similar goods/services

If goods are similar, must be a likelihood of confusion on the part of the public

Enforcement begins with owner of trademark sending a cease and desist letter to infringing party

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Infringement of Trademarks (2)

With well known marks, it is infringement if a sign identical/similar to a trademark is used in

course of trade without permission in relation to goods/services which are NOT similar to those for which trademark is registered,

Such use indicates a connection between owners goods/services,

Public has likelihood of confusion, and

Owners interests are likely to be damaged by such use

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Infringement of Trademarks (3)

Example: cannot use Rolex or Rolax without consent on furniture, cars, etc.

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Fair Use

Not an infringement to use a registered trademark if such use constitutes fair use

in comparative commercial advertising/promotion

used for non-commercial purposes

used for the purpose of news reporting or news commentary

Called fair use doctrine

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Parallel Imports

Process whereby trademarked goods/services intended for a certain country are sold without consent of the trademark owner in an unintended country

This also applies to patent and copyright

This is permitted in Singapore, although there are some exceptions for patented pharmaceuticals where it is not permitted

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Consequences of TM Infringement

If trademark owner proves infringement, owner can seek An injunction

Damages (prove actual loss)

Statutory damages (only for counterfeit use)

Court order to remove infringing sign or delivery of infringing copies

Criminal sanctions for counterfeiting of trademarks (used in trade)

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Singapore TM Infringement

Infringement

If unauthorized third party uses mark identical or similar to registered mark creating a likelihood of confusion among the public

Customs authorities can seize infringing goods on importation; Police will conduct raids

Counterfeiting: Criminal penalties possible (as well as civil); violated party can bring private criminal action with permission from Attorney Generals office (by fiat)

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International Protection

Paris Convention and TRIPS Agreement provide that owner of well-known (or famous) trademark in a convention country may restrain, by injunction, its use in another country

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International Protection (2)

To obtain injunction, identical/similar mark used on any goods/services

Indicates a connection to, and is likely to damage interests of, trademark owner, or

Usage causes dilution in an unfair manner of the distinctive character of the mark, or takes unfair advantage of the distinctive character of the mark

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Dilution in effect means cheapen or tarnish the image of a luxury brand (example replicating the Louis Vuitton watch flower design)

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International Registration

Trademark protection is granted only to use in the country where registered!

Registration in each country where trade is conducted is required

Madrid Protocol (Singapore joined in 2000) makes this international process cheaper and less cumbersome

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Patents

Idea behind patents = to protect inventions and thereby increase incentive to invent

Singapore follows the first-to-file system (as opposed to the first-to-invent used in the US) so best to file without delay The first person to file an application has priority over

others for the same invention as evidenced by the Date of Filing accorded to the patent application.

Governed by the Patents Act (1995) View the Patents Legislation online at IPOS

website http://www.ipos.gov.sg (Legislation).

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Patent Definition

A Patent is a monopoly right given by a government to the owner of an invention to enable him to prevent others from using, copying or making the invention without his consent in the country in which he has obtained patent protection.

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Process

To obtain a patent in Singapore, one must submit a patent application to the Registry of Patents.

Patent application should contain particulars including a full written explanation or disclosure of the invention and the mechanics by which the invention works.

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Process (2)

A patentable invention can be a product or a process that gives a new technical solution to a problem. It can be a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.

A patent once granted, may be challenged by anyone, on the ground that the invention is not patentable.

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Need for Registration

To have a valid patent it must be registered

Complicated, time-consuming, requires the services of a patent agent or patent attorney

Right to apply generally lies with inventor/co-inventors

In Singapore, unless contract provides otherwise, an invention made in the course of employment by an employee belongs to the employer, thus the employer may apply

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Criteria for Registration

For an invention to be patentable, it must satisfy three key criteria:

Must be new (novel), not part of the state of the art,

Involve an inventive step, and

Be capable of industrial application (in the US = reduced to practice, i.e., someone has taken the theoretical concept and actually made the invention)

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1st Criteria - Novelty

New or Novel The invention should not have been made

known to the public in any way, anywhere in the world. Owners of inventions should be careful to keep the invention secret, until a patent application has been successfully made.

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1st Criteria Novelty (contd)

New or Novel An invention could be considered as not new if

it has already been made available to the public by word of mouth, or

it has been commercially exploited, or it has been featured in an article or advertised, or it has been demonstrated Any such disclosure may be novelty destroying and

forms one of the grounds for revocation of a patent.

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Novelty (2)

In certain cases, it may be necessary to disclose the invention before the application for a patent is made, e.g. disclosure to a marketing consultant, or other third party advisor

Care must be taken to ensure that the disclosure is made in confidence so that such disclosure will not be fatal to the application

Imperative to use confidential disclosure or secrecy agreements to retain confidentiality

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2nd Criteria: Inventive Step

Inventive Step

The invention must be something that represents an improvement over any existing product or process that is already available. The improvement must be non-obvious to a person who is skilled in the art in that technological field of the invention.

If an invention is new yet obvious to a person skilled in the art, the invention would not fulfil the inventive step requirement.

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3rd Criteria: Industrial Application

Industrial Application

The invention must be useful and have some form of practical application.

It should be capable of being made or used, or achieving a concrete end result in any industry.

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Non Patentable Inventions

In Singapore: An invention of a method of treatment of the human or

animal body by surgery or therapy or of diagnosis practised on the human or animal body shall not be taken to be capable of industrial application, and hence, is not patentable.

Also, an invention that is generally expected to encourage offensive, immoral or anti-social behaviour will not be published or patentable even if it satisfies the three key criteria.

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Patent Information Search

Know the state-of-the-art before filing for a patent

Prior Art searches are required for full disclosure in a patent application

Avoid re-inventing the wheel and infringing other patents filed or granted.

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Patent Information Search (contd)

There are resources available to help search for existing patents and published patent applications.

IPOS and USPTO (US Patent and Trademark Office www.uspto.gov) provides the following basic search tools but as any disclosure made known to the public in any way, anywhere in the world could destroy the novelty of an invention, more in-depth searches should be conducted with the assistance of patent professionals using commercial search tools.

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ePatents and SurfIP

ePatents (www.epatents.gov.sg) This is a one-stop solution designed to facilitate online

patent related searches and transactions in Singapore. SurfIP (www.surfip.gov.sg) This is a One-stop First-stop IP portal which performs

simultaneous worldwide searches on patents, trademarks and industrial designs databases.

These tools and resources provide non-exhaustive searches.

Therefore, hiring of a professional patents agent/attorney is necessary for any patent filing

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Where to File?

While it is not mandatory to apply for patent protection in Singapore first before seeking patent protection overseas, any person resident in Singapore is required to obtain written authorisation from the Registrar of Patents for an invention, before he files outside Singapore a patent application.

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Where to File? (2)

As an alternative to seeking written authorization, a person resident in Singapore may file a patent application for an invention first in Singapore. If no direction prohibiting or restricting the publication or communication of information contained in the patent application has been issued by the Registrar of Patents within 2 months from that filing, he may then proceed to file overseas (National Security Clearance)

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Filed Patent Application

Once a Date of Filing has been obtained for the patent application, the invention can claim a "Patent Pending" status and the applicant can proceed to disclose the invention as indicated in the patent application to interested parties.

As part of the application process, the patent application will be published soon after 18 months if the statutory requirements are met.

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Filed Patent Application (contd)

Once published, details of the invention will be made available for public inspection.

The Patents Journal is published monthly which contains information of published patent applications. Recent publications of the Patents Journal are available for free at http://www.epatents.gov.sg/Journal/

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Benefits of a Patent

Apart from using the patent to prevent others from exploiting the invention, the patent owner can exploit his patent in many ways:

use the patent to raise funds for his business

license it to third parties for commercial returns (earn a royalty or other payments)

sell the patented invention for a sum of money

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Duration and Property Rights

Once granted (registered) a patent is valid for 20 years from the Date of Filing

Nonrenewable

Item of property that can be assigned, licensed or used as security/collateral (mortgaged)

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Rights Conferred by a Patent

For a patent granted in Singapore, the rights conferred by a patent extend only throughout Singapore

It confers on the owner the right to prevent others from exploiting the invention without consent during the term of the patent, subject to the payment of annual renewal fees

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Infringement of Patents

Infringer = Any person, without consent of owner who makes, uses or imports the invention

If person makes a variant of the invention, but still followed the essential features of the invention, that is infringement

Exceptions

Acts done for private and non-commercial purposes

Experimental purposes

Use for government services

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Infringement (2)

If infringement is proved, owner may be entitled to: An injunction

Damages

Account for profits

Delivery of infringing materials

Infringing a patent does not result in criminal liability

Note regarding US practice: treble damages for committing intentional infringement

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By registering in Singapore, only protected in Singapore

To get protection in other countries, one must file individually in those countries, or seek to register under provisions of the Patent Co-operation Treaty (PCT)

Using the PCT may be cheaper, faster and less cumbersome

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Deciding which country to file your patent applications in depends very much on where one seeks patent protection

It is ultimately a commercial decision based on cost and market

Patent requirements differ from country to country and costs including translation and professional fees, and annual maintenance fees once granted

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Recent Singapore Patent Developments

Search and Examination Unit (S&E) established in May 2013 to support the 2012 introduced positive grant system; new staff added September 2013

Aim to determine patentability of invention within 12 months, applicants to receive search and examination results faster, able to obtain grant of patent in 2-3 years (currently 5 years)

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Recent Singapore Patent Developments (2)

Patent Prosecution Highway (PPH)

PPH programs enable participating national intellectual property offices to share S&E, expediting prosecution of patent applications by avoiding redundant work

Singapore currently participates in PPH programs with several IP offices: US, Japan, South Korea, China and the ASEAN Patent Examination Co-operation countries

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Registered Designs

A Design refers to the features of shape, configuration, pattern or ornament applied to an article by an industrial process. It is the appearance of articles we see everyday. An article refers to any object to which the design is applied.

Registered Designs are used primarily to protect designs for industrial use. It is the right given by the government to the owner to control the use of his design. Governed by the Registered Designs Act

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Protecting Drawings

Drawing of a design may amount to an artistic work for which copyright protection may exist

However, if a design could be registered as under the Registered Designs Act, and it is not, it will not be protected by copyright (see sec 74 of Copyright Act)

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Criteria for Registration

If the features of the shape or configuration are solely determined by the function of the article, then the design cannot be registered

Example: round shape of a ball non-registrablesince the shape is dictated solely by its function

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Criteria for Registration (2)

A design refers to the features of shape, configuration, pattern or ornament applied to an article by an industrial process.

To qualify for registration, a design must, in general, satisfy two key criteria:

Design must be new

Design must be industrially applied onto an article

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Criteria: Novelty

The design must be new: The registered design must not have been

registered in Singapore or elsewhere; or published anywhere in the world before the date of application of the first filing

Thus the owner of a design should be careful not to disclose the design to anyone, until a design application is filed (use confidentiality agreement)

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Criteria: Novelty (contd)

The design must be new: If a design is the same as another that is

registered in respect of the same or any other article, it is not new

Generally, a design is not new if it differs only in immaterial details, or features, from other designs that are commonly found in trade

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Criteria: Industrial Application

The design must be industrially applied onto an article:

Design has to be applied to an article by an industrial process, i.e. more than 50 copies of the article have been or are intended to be produced for sale or hire.

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Design Search

Before filing an application for the registration of a design, it is advisable to first conduct a search of the existing designs to ensure its ability to be registered

Some resources available to help search for existing designs include IPOS eDesigns, SurfIP

Check the databases of other countries

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Designs that Cannot be Registered

Under the Registered Designs Act, the following cannot be registered: designs that are contrary to the public order or

morality.

computer programmes (copyright available) or layout-designs of integrated circuits.

designs applied to certain articles: works of sculpture (other than casts used as models to be multiplied by industrial process); wall plaques, medals and medallions; and printed matter primarily of a literary or artistic character

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Designs that Cannot be Registered (contd)

Under the Registered Designs Act, the following cannot be registered: any method or principle of construction.

designs that are solely functional.

designs that are dependent upon the appearance of another article, of which it is intended by the designer to form an integral part; or enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function.

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Classification

When applying for registration of designs in Singapore, the design owner is required to classify the article or articles to which the design is applied. Classification is done in accordance Locarno Classification for Industrial Designs, which lists the headings of the 32 classes and their subclasses.

The Locarno Classification is based on the Locarno Agreement Establishing an International Classification for Industrial Designs, a multilateral treaty administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

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Duration and Rights

Duration Once registered is valid for 5 years and may be extended

for a second and third periods of 5 years each

Benefits of a Registered Design Right to make or import into Singapore, or sell or hire out

any article in respect of which the design is registered

Right to prevent others from using the design without permission.

Item of Property Can be licensed or sold

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Infringement of Registered Designs

If someone tries to make, import, sell or hire out any article in respect of which the design has been registered without owner consent, an action may be brought to

recover damages

obtain an injunction

Order of delivery up or disposal of infringing articles

No criminal liabilities are imposed for infringements of registered designs

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Protection only in Singapore

In some other countries, those that use the Hague System administered by WIPO, one application can be filed and registration acquired

Not all countries have registered designs, for example, the US has design patents valid for 14 years, nonrenewable, and a different approach is taken (more reliance on trademark and copyright protection)

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Copyright

Copyright does not seek to protect ideas, facts or information

Instead it seeks to protect the form of expression of those ideas, facts or information

Thus if X tells his idea to Z, and Z writes a play in his own words, the copyright in that play would be with Z and not X

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Copyright Copyright protects works like novels,

computer programs, plays, sheet music and paintings

Governed by the Copyright Act Generally, the author of a copyright work has

the right to reproduce, publish, perform, communicate and adapt his work - these different exclusive rights form the bundle of rights that we call copyright

These rights enable a copyright owner to control the commercial exploitation of his work

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Copyright

For a work to be protected by copyright, it has to be original and expressed in a tangible form such as in a recording or in writing. Originality simply means that there is a degree of independent effort in the creation of the work. It is not a question of whether the work has creative merit.

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Copyright Two Requirements

Copyright comes into being if these requirements are met: Content must be creative in some way

Mere facts, basic concepts, standard forms, minimal expressions (like title of a book) dont qualify

Practically every other creative effort does: Commercial posters, routine business documents, love notes,

even your kids crayon drawings

Creative content must be fixed in a tangible medium of expression Anything from impulses on a magnetic hard disk to pigment

on a physical medium (crayon drawings)

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Process of Copyright Creation and Protection

(1) Create the work - Copyrights spring into existence almost magically when works are created and fixed into tangible medium

(2) Place copyright notice on the work 2013 Kathleen Metzger

(3) Register the copyright which enables owner to sue for infringement

- Registration is necessary when selling or licensing copyrighted materials

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No Need for Registration

Copyright protection is automatic In Singapore, an author automatically enjoys

copyright protection as soon as he creates and expresses his work in a tangible form. There is no need to file for registration to get copyright protection - also true for the US - however enforcement is much easier if registered.

Not compulsory to have notifications such as subject to copyright laws all rights reserved or But a good idea because it puts people on notice!

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The Symbol

The use of the symbol is simply a notice of a claim by the copyright owner that copyright exists. It does not give the copyright owner any substantive right and is therefore not crucial to the enjoyment of copyright protection.

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The Symbol (2)

Conversely, the non-use of the symbol does not imply a waiver or loss of copyright. It may, however, be a relevant fact in infringement proceedings. If an infringing party claims that he did not know that the material was protected under copyright law, the Court may take that into account and award lower damages. The use of the symbol would generally stop the infringing party from successfully relying on such an argument.

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The Symbol (3)

In practice, the symbol is usually followed by the year when copies of the work were first made available, and the name of the copyright owner, e.g. 2005 John Smith

Sometimes, near the symbol, there may be a statement indicating the terms of permitted use, e.g. for Private Use Only. Where the owner does not allow use, the term All Rights Reserved may be found after the symbol.

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In Singapore: 2 Pre-conditions to Copyright

Copyright exists only in respect of certain types of matters

There must be some connection between the author/maker and Singapore

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Copyright only in Certain Matters

Two broad categories:

Works

Subject matter other than works

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Copyright: Works

Refers to original literary, dramatic, musical and artistic works (including compilations and computer programs)

Originality does not refer to novelty or something inventive; only necessary that the work is not copied from another work and must be a result of ones own skill, labor or judgment

Literary merit is totally irrelevant; but literary work must offer information or pleasure or instruction to the reader and cannot be too short like a slogan or title

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Copyright: Subject Matter Other Than Works

Entrepreneurial rights (also referred to as neighbouring or related rights):

Sound recordings

Films and movies

Broadcasts

Cable programs

Published editions of works

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Copyrights of Various Persons

One particular product could encompass copyrights of various persons

For example, a musical recording

Author of the lyrics

Person creating the musical composition

Recording company which recorded it

Broadcast station which broadcasts it

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No Copyright

For matters not listed in the Copyright Act, there is no copyright.

Example, no copyright over ones face or voice

Use of a famous persons image in an advertisement is not breach of copyright (although celebrity could claim passing off, defamation, etc.)

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Works Protected by Copyright

Literary works, such as Written works, Books, Articles in journals or newspapers, Lyrics in songs, Source codes of computer programs

Dramatic works, such as Scripts for films and drama, Choreographic scripts for shows or dance routines

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Works Protected by Copyright (2)

Musical works, Music (i.e., melody)

Artistic works, such as Paintings, Drawings, Sculptures, Engravings, Photographs, Buildings or models of buildings

Works of artistic craftsmanship, for example designer furniture that is not mass produced

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Published editions of literary, dramatic, musical or artistic works

Typographical arrangements of a published work

Sound recordings

An aggregate of sounds recorded on tapes, CDs, etc.

Films

An aggregate of visual images and sounds recorded on tapes, video compact discs, digital versatile discs, etc.

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Television and radio broadcasts

Broadcasts by way of television or radio

Cable programmes

Programmes (visual images and sound) included in a cable programme service sent by means of a telecommunication system

Performances

By performer such as musicians, singers and comedians

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What is Not Protected by Copyright?

Subject matter not protected by copyright includes:

ideas (e.g. a new business idea that has not been documented);

concepts (e.g. an idea for a new game show that has not been written down);

discoveries (e.g. a research finding that has not been known before);

procedures (e.g. the steps involved when applying for a travel visa);

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What is Not Protected by Copyright? (2)

Subject matter not protected by copyright includes:

methods (e.g. the unique solution to a mathematical problem);

subject matter that has not been made tangible in a recording or writing (e.g. a speech or a dance that has not been written or recorded); and

subject matter which is not of original authorship (e.g. works which contain information in the public domain such as standards and the like).

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Connection to Singapore

Singapore citizens or residents, Singapore-incorporated companies are qualified persons

Works first published in Singapore

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Duration of Copyright

For authors works, generally copyright extends for duration of the life of author plus 70 years

For sound recordings and films, 70 years from first publication

For broadcasts and cable programs, 50 years from broadcasting

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Ownership of Copyright

Generally authors/makers have copyright

Exceptions for works created in course of employment; unless contract provides otherwise, employer has copyright

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Rights Conferred by Copyright

Vary by subject matter

For Works, the right to Reproduce the work in a material form

Publish the work

Perform the work in public

Communicate the work to the public

Make an adaptation of the work

For sound recordings, films, broadcasts, cable programs: right to make copies

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Item of Property

Copyright is a form of property. It can be licensed or transferred, either as an entire bundle (all of the distinct rights under copyright) or as a single, distinct right within the copyright bundle (e.g. only the right to reproduce).

Rights licensed can be exclusive or nonexclusive

Licences are sometimes implied, for example, sending a letter to the newspaper to be published gives the newspaper an implied licence to do so

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Infringement of Copyright

Doing any of the acts that the copyright holder is entitled to do, results in an infringement, such as reproduction

Form of expression copied need not be identical, sufficient if it is in a material form, it results in a copyright infringement

Examples of copyright infringement: translating a novel into another language or making the novel into a movie

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Infringement of Copyright (2)

How much must be copied for it to amount to reproduction?

Substantial copying

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Copyright Infringement (3)

Defenses For Works, copying amounts to fair dealing (and

thus a defense) for purposes of research or study if amount copied is less

than 10% or one chapter of the work (not true in the US)

Purposes of criticism and review or reporting current events

For computer programs if copy is made by owner of program for purpose of replacing the original, that would be a defense

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Copyright Infringement (4)

Defenses (contd)

Making of a copy of broadcast or cable program for private or domestic use

Other defenses for educational institutions, libraries, government services

fair use doctrine is an important defense applicable in the US (and elsewhere) especially in cases of research, teaching and news reporting

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Consequences of Infringement

Action for damages or an account for profits can be brought

Action for statutory damages (counterfeiting)

Injunction, order of delivery up, disposal of infringing copies

Anton Pillar Order can be issued enabling plaintiff to search premises and seize documents or property to prove infringement

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Consequences of Infringement (2)

Criminal offense for a person to make or have in possession or import into Singapore infringing copies if he knows or ought reasonably to know them to be such with the intention to sell, let for hire, distribute or exhibit for purposes of trade.

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Performance Rights

Copyright Act recognizes live performance rights

If a person records a live performance without performers consent, could be infringing rights of the performer

Exceptions for domestic/private use apply

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Infringement on the Internet

Notice and Takedown Procedure US Digital Millenium Copyright Act (1998) exempts service

providers from liability for facilitating their users copyright infringements: Service provider must register an agent (so it can receive

complaints) If copyright owner complains about a users infringement,

service provider must take down the alleged infringing material and provider must also give user notice of the complaint and takedown

If user insists that the material be reposted, service provider must do so, but user becomes susceptible to suit by copyright owner

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A copyright work created by a Singapore citizen or resident is protected in many countries overseas by virtue of international agreements.

Generally, under these international agreements, the work would be protected in countries that signed the agreements as though the work was made there.

Some countries such as Canada and the U.S. provide for registration to facilitate proof of copyright in infringement proceedings.

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Berne Convention (Singapore acceded 1998) a convention on copyright protection of literary and artistic works including films. It is administered by WIPO.

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) (1994) of the World Trade Organization (WTO) is an international agreement on intellectual property rights also governs copyright (patent, trademarks as well)

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Trade Secrets and Confidential Information

A Trade Secret is some information or "secret" that is important to the

business is not known to the public.

trade secret is commonly used to refer to information that has commercial value.

Law on Trade Secrets concerns the protection of confidential information which has commercial value.

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Trade Secrets and Confidential Information (contd)

Trade Secret law protects this information as a secret from everyone except certain key people in the company. Therefore, legal action can be taken against someone who reveals this secret information to others, especially when he is aware that it is a secret.

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Protection of Trade Secrets

Trade secrets are only protected from misappropriation from owner by others

Same information developed independently, or from another source, use cannot be precluded by owner of trade secret

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Trade Secrets

There are no registration procedures, and there is no specified time limit within which the secret may be protected. When a trade secret is leaked out, this breach of confidence is an action that may be taken in court, as this leak of the secret is unfair to the company, and may have harmful consequences.

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Protecting Trade Secrets

Trade secrets only protectable under the law if proper steps are taken to keep valuable information secret

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Examples of protective measures:

Confidentiality agreements with employees and suppliers

Marking documents and drawings as CONFIDENTIAL or PROPRIETARY

Maintaining physical barriers

limiting entrances and exits, visitor control systems, locking drawers and clearing desks, requiring identification badges to be worn at all times

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However, not all information can be considered a trade secret. To determine if there is a breach of confidence, the Court will consider whether:

the information was confidential (secret) to the company and reasonable measures are taken to maintain confidentiality;

the information was let out in a situation in breach of a promise of confidence or secrecy; and/or

the information was used in an improper way that has resulted in financial damage to the company.

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Confidentiality

Maintaining Confidentiality = Protecting Trade Secrets The best way of protecting confidential information is

to make sure that no one else knows the information.

This can be done by including specific terms in private agreements and contracts between the owner of the information, the company, and anyone to whom the information is disclosed to ensure that they keep the information confidential.

Only disclose when there is a demonstrable need to know

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Protecting Confidentiality

Only allow certain people to access such confidential information

Have employees sign contracts called non-disclosure agreements, which provide that they have to maintain confidential all company proprietary information

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Protecting Confidentiality (contd)

Have non-disclosure agreements signed by anyone else who comes in contact with the company, such as consultants or vendors, and who have the chance to learn about the confidential information

Keep a clear record of all business deals that may cover any confidential information

Seek professional advice on protecting trade secrets and confidential information.

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Confidential Information

Essential means of protecting trade secrets

Case law governs; no statutory granted rights

Breach of confidential information arises from contract

Non-disclosure agreement (NDA)(confidentiality, secrecy agreement, other names)

NDAs are essential part of doing business and should be in place for business discussions with third parties and with employees and contractors

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Non-Disclosure Agreement

See Appendix, pg 53 in Course Notes

Typical US form agreement containing standard clauses Purpose

Definition of confidential information

Exceptions to confidential information

Use, controls

Publicity

Injunctive (specific) relief

No license, no commitment

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Patents and Confidential Information

Generally, it is not possible to maintain a patent and ensure non-disclosure of confidential information for the same invention.

Under patent law, the owner of the invention obtains a 20-year monopoly to exclude others from making, using or selling the invention without his consent.

In return, the owner makes a full disclosure of the invention for the world to know. Thus, details on/about a patented invention can never be kept confidential.

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Copyright and Confidential Information

Confidential information with copyrightable material will be protected by both copyright law and law regarding confidential information.

One such example is a computer software programme. With inherent copyright protection for the software programme, the owner may commercialise the software product while maintaining confidentiality of the underlying architecture, algorithms and source code.

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Comparing IP Types

See chart in Course Notes under Module 7

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Comparison of Intellectual Property Types (US law)

PATENT TRADEMARKS COPYRIGHTS TRADE SECRETSProtects Inventions Designations of

origin

Expressions of ideas Information used in

business

Registration Required Optional Optional no

Requirements New, useful,

unobvious

First to use,

distinctive

Originality Confidential ,used in

business

Exclusive rights

begin

Upon issuance of

patent

Upon

use/registration

Upon fixing in tangible

medium of expression

Upon creation

Term 20 years from filing,

not renewable

Registration 10

years, renewable

Varies, but 70 years at

minimum

Indefinite if maintained a

secret

Pros Strong rights,

protected from

independent

developments by

others

Some rights

accrue

automatically with

use

Rights accrue automatically,

inexpensive

Lasts forever, so long as

secret, inexpensive

Cons Must disclose, give

up secrets, expensive

to procure, maintain

and enforce

Need to police

infringements or

may lose rights

Easy to design around, does

not cover independent

developments by others

Hard to keep a secret,

does not cover

independent

developments by others

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Protection of confidential information varies from country to country, however it is a clear principle acknowledged under the WTO TRIPS (Art 39).

In some countries, trade secrets are protected under separate laws governing information disclosure (certain US states have legislation defining and regulating use of trade secrets)

There are also laws in the EU and the US that govern data protection and privacy

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IP Strategy

Cost and time involved makes it prohibitive to secure complete global IP protection

File/register by region where there is a substantial market for companys products

Identify the major countries (those with the largest economies):

be sure to file/register IP

in those countries

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Module 7 Key Points

IP protection under Singapore law

Trademarks/trade names/trade dress

Patents

Copyrights

Registered Designs

Trade secrets and confidentiality

Steps to take to acquire protection

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Module 7 Key Points (2)

For each form of IP know:

What types of creative works are covered

Length of protection

Advantages and disadvantages of each; Why chose one form over the other? Refer to US chart in the Course Notes

Applicable international conventions

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Module 7 Key Points (3)

Features of typical US NDA

International IP protection

Protect IP assets in major countries in region where commercially active

IP is a valuable asset in nearly every business

Essential to take steps to protect intangible assets, just as one would purchase insurance to protect investment in tangible assets

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Laoe Module 7 Ipr 2015

Documents

Transcript of Laoe Module 7 Ipr 2015