Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights

Title Page
Copyright Page
Preface to the Ninth Edition
Table of Abbreviations
Table of Contents
Table of Cases
Table of Statutes
Table of Statutory Instruments
Table of European and International Legislation
Table of International Treaties, Conventions and Agreements
Part I: Common Ground
	1. Starting Points
		1. General
			(1) “Intellectual property”
			(2) Organisation of the material
		2. Types of Intellectual Property
			(1) Patents (Chs 3–7, 20, 21)
			(2) Copyright (Chs 10–14, 20)
			(3) Trade marks and names (Chs 16–18)
			(4) Other aspirants
				(a) Industrial designs (Ch.15)
				(b) Trade secrets and other confidential information (Chs 8 and 9)
				(c) Further demands
		3. Pressures for Development
			(1) Specific rights and unfair competition
			(2) Enhancement of intellectual property
				(a) Demands for greater protection
				(b) Sources of UK law: legislation and interpretation
				(c) Sources of EU law: general
				(d) The EU Treaty and intellectual property
				(e) Conceptions of Judicial Precedent in the mixed IP systems of the EU and Member States affecting IPRs
				(f) European Convention on Human Rights
				(g) Legal issues across state boundaries; international conventions agreed between states
				(h) International treaties: authority and applicability
			(3) Challenges to intellectual property: political
			(4) Challenges to intellectual property: technological
		4. Property and Monopoly: Economic Approaches
			(1) Property rights
			(2) Monopolist behaviour..
			(3) The presumption against monopoly
			(4) Intellectual property and monopoly
		5. Division of Markets and The European Economic Area
			(1) Dividing markets
			(2) Exhaustion of rights
			(3) The idea of a common market
			(4) Free movement of goods
			(5) Rules of competition
			(6) Relation between the two policies
				(a) Trade between Member States
				(b) The economic counter-balance
			(7) Overview of the parallel importation problem
	2. The Enforcement of Rights
		1. Types of Proceeding
			(1) Civil causes of action
				(a) Owners and licensees of intellectual property
				(b) Defendants
				(c) High Court and County Court
				(d) General torts covering economic loss
			(2) Criminal proceedings
				(a) Offences specifically concerning intellectual property
				(b) Conspiracy to defraud
				(c) Crimes and civil relief
			(3) Administrative procedures
				(a) Customs prohibition
				(b) Trading standards authorities
				(c) Supervision of advertising
			(4) Self-help
		2. Remedies in Civil Actions
			(1) Injunction
				(a) Interim injunction
				(b) Final injunction
			(2) Delivery up
			(3) Damages
				(a) Bases for assessment
				(b) Innocence
			(4) Account of profits
			(5) “Franking”
			(6) Remedies for acts which are not themselves infringements
		3. Securing Evidence of Infringement
			(1) Search order for inspection and other relief; formerly known as the Anton Piller order
				(a) Requirements for the order
				(b) Dangers in the process
				(c) Challenges to the order
				(d) Self-incrimination
			(2) Freezing orders for the retention of assets: formerly known as Mareva injunctions.
			(3) Discovery of names etc: Norwich Pharmacal orders
			(4) Disclosure, interrogatories, inspection
		4. Delayed Ambush and Selective Action
			(1) Limitation of actions
			(2) Acquiescence
			(3) Estoppels of record (res judicata).
				(a) Judgment in rem
				(b) Cause of action estoppel
				(c) Issue estoppel
			(4) Actions concerning foreign intellectual property
				(a) Infringements of foreign rights which have occurred in the territory granting them
				(b) Jurisdiction within EU/EFTA countries: the Recast Judgments Regulation
				(c) Recognition and enforcement: the Regulation and the Conventions
				(d) Action in England respecting infringing activity outside the EU and EFTA
				(e) An International Recognition and Enforcement Convention?
				(f) Transactions in foreign rights
			(5) Making others responsible.
			(6) Establishing freedom from liability
			(7) Threats to sue
Part II: Patents
	3. Growth and Purpose of Patents
		1. The New Deal of 1978
		2. The British Patent System: Historical Development
			(1) Beginnings
			(2) The coming of industrialisation
		3. The “International” Patent System
			(1) Foreign impact upon national systems
			(2) Hostility to patents..
			(3) Cooperation in patenting: worldwide linkages
			(4) Cooperation in patenting: Western Europe
			(5) A unitary patent for the EU
			(6) A second-tier right for Europe?
		4. Justifying the Patent System
			(1) Basic objectives
			(2) Patents as incentives to invent and innovate
				(a) Types of inventor
				(b) Levels of invention
				(c) Optimum term for patents
			(3) Patents as an information system
			(4) Adapting the patent system: new technology
		5. The Patents Act 1977: Structure and Interpretation
	4. The Patent: Grant and Content
		1. Obtaining a Patent
			(1) General
				(a) Parallel routes
				(b) Competition between the systems
				(c) Languages
			(2) Persons entitled to grant
			(3) Patent specification
			(4) Priority
			(5) Secrecy: national interest
			(6) Unity and division
			(7) Formal examination
			(8) Search and examination
				(a) Introductory
				(b) Search
				(c) Early publication of application
				(d) Amending during prosecution
				(e) The course of examination
				(f) Time limits
			(9) Grant and renewal
				Supplementary Protection Certificates
			(10) Objections to validity after grant
		2. Amendment
			(1) Introductory
			(2) Amendment: general
				(a) Legal requirements
				(b) The discretion
			(3) Correction of errors
		3. Claims
			(1) Claims and infringement: an introduction
			(2) Interpretation of specifications
			(3) The addressee of the specification
			(4) The application file
			(5) Types of claim
				(a) General
				(b) Chemical inventions
	5. Validity
		1. Novelty
			(1) Introduction
			(2) Disclosure through description and use
			(3) Material available for consideration
				(a) Temporal factors
				(b) Territorial factors
				(c) Form
				(d) Degree of dissemination
				(e) Matter in prior specifications
				(f) Special exclusions
			(4) Relations between anticipation and invention in suit
				(a) The comparison
				(b) The anticipation: clarity and sufficiency of a document
				(c) The anticipation: appreciation of significance of an embodiment
			(5) Things and their uses
				(a) New thing with an advantage
				(b) New use of an old thing
				(c) Patents for selected improvements or variants
				(d) New advantage of old thing
			(6) Exclusion by amendment
		2. Inventive Step
			(1) Introduction
				(a) Terminology
				(b) Paraphrases
				(c) Objective test
				(d) Advance in the art
				(e) New advantage and new use
				(f) Perception of problem
				(g) Onus of proof
			(2) Assessing obviousness
				(a) The notional skilled worker
				(b) The uninventive technician’s knowledge
				(c) “Mosaicing”
				(d) Obscure sources: publication
				(e) Obscure sources: comprehension
			(3) The basic comparison
				(a) Proximity to the prior art
				(b) Obvious to try: chemical and biotechnological inventions
				(c) Technical advantage and commercial success
		3. Industrial Application
		4. Patentable Subject Matter
			(1) Intellectual conceptions
				(a) Discoveries
				(b) Schemes for performing mental acts; business methods; presentation of information
				(c) Aesthetic creations
				(d) Computer programs
			(2) Biological subject matter
				(a) Methods of treating the human or animal body
				(b) Plant and animal varieties; certain processes for their production
				(c) “Ordre public” and morality
		5. Clear and Complete Disclosure
			(1) General
			(2) Making the disclosure
			(3) Micro-organism deposit
			(4) Good faith in disclosing
		6. Requirements for Claims
			(1) Claims and disclosure
			(2) Ambiguous claims
	6. Scope of Monopoly
		1. Infringement
			(1) Introduction
			(2) The role of the claims
			(3) Types of infringing activity
				(a) Infringement during manufacture
				(b) Infringement after manufacture: general provisions
				(c) After manufacture: exhaustion of rights
				(d) Before manufacture: “indirect” and other infringement
				(e) New medical and other applications of known substances
			(4) Prior use and commencement of infringement
			(5) Proceedings concerning the infringement and validity of patents
		2. The Specification in Light of The Legal Requirements
			(1) The description
			(2) The claims
			(3) Pitfalls of saying too much
	7. Property Rights and Exploitation
		1. Initial ENtitlement and Property Dealings
			(1) The right to grant: general
			(2) The right to grant: employees
				(a) Common law rules
				(b) The changes in the 1977 Act
				(c) Basic entitlement under the 1977 Act
				(d) Compensation and employers’ inventions
				(e) Applying the compensation scheme
				(f) Compensation and inventions to which an employed inventor is entitled
				(g) Scope of the provisions
				(h) Bypassing the Act: collective agreements
				(i) Bypassing the Act: individual agreements
				(j) Bypassing the Act by not patenting
				(k) Administration
			(3) Dealing in rights
				(a) Formalities
				(b) The Register
			(4) Co-ownership
		2. Licences of Patents and Allied Rights
			(1) Traditional approach
			(2) Types of licence
				(a) Interests at the start
				(b) Rights in the technology
				(c) Exclusivity
			(3) Particular terms in licences
				(a) Basic obligations
				(b) Duration
				(c) Improvements
				(d) Ties
				(e) Protection for the licensor
				(f) Protection for the licensee
			(4) Competition law criteria
			(5) Development of European Commission policy on patentlicences
			(6) Exclusivity
			(7) Restrictive terms
				(a) Restrictions on production and sale
				(b) Previous objections now lifted
		3. Compulsory Licences
			(1) Compulsory licensing under the 1977 Act
				(a) Legal grounds
				(b) The discretion
		4. Crown Use
Part III: Confidence and Personal Privacy
	8. Confidential Information
		1. Introduction
			(1) Nature of the liability
			(2) Confidence and patents
			(3) Confidence and copyright
			(4) Historical and doctrinal
		2. Requirements for Liability
			(1) Subject matter capable of protection
				(a) Types of information
				(b) Information and observation
				(c) Public knowledge
				(d) Public interest
				(e) Government secrets
			(2) Confidential obligation
				(a) Confidence in the receipt of information
				(b) Fiduciary duties
				(c) Employer and employee
				(d) Government departments and agencies
				(e) The indirect recipient
				(f) Absence of any relationship
			(3) Unauthorised use
				(a) Wrongful acts
				(b) The defendant’s state of mind
				(c) Detriment to the plaintiff
		3. Remedies
			(1) Injunction and other equitable remedies
				(a) Interim injunctions
				(b) Discretion to grant injunction
			(2) Damages and other monetary relief
		4. Confidential Information as “Property”
		5. Trade Secret Misuse: Criminal Responsibility
		6. Eu Harmonisation of Trade Secrets Protection
	9. Personal Privacy
		1. Privacy and Confidence
			(1) Independence for privacy claims..
			(2) The European Convention
			(3) Privacy: the English tradition
			(4) Jurisdictions concerned with privacy
			(5) Emergence of personal privacy action from breach of confidence
		2. Constituent Elements of Privacy Claims
			(1) Reasonable expectation of privacy....
			(2) Claimants: data subjects and carers; legal persons and similar entities
			(3) Duration of the claim
			(4) Defendant’s breach
			(5) The defendant’s state of mind
			(6) Justifiable disclosures: general
			(7) Justifiable disclosures: freedom of expression in the media
			(8) The subject’s interest: continued secrecy or exploitation
		3. Consequential Issues
			(1) Rapid response: prior restraint
			(2) Compensation after disclosure
			(3) Data protection compensation
			(4) Control over the Press: the future
Part IV: Copyright and Designs
	10. Range and Aims of Copyright
		1. Historical Introduction
			(1) The emergence of copyright
			(2) Additions to copyright: nineteenth-century experience
			(3) International relations and the Act of 1911
			(4) Developments since 1945
				(a) The 1956 Act
				(b) International developments
				(c) The new activism: from 1985
				(d) International conventions: current scope
				(e) Copyright, unfair competition and industrial design
		2. Values and Interests
		3. Economic and Public Interest Perspectives
			(1) Market power and individual works
			(2) Collective enforcement....
			(3) Entrepreneurs and authors
			(4) The duration of copyright
		4. The CDPA 1988 and Pre-Existing Works
	11. Subsistence of Copyright
		1. The General Picture
		2. The Type and Quality of Subject Matter
			(1) Original literary, dramatic, musical and artistic works
				(a) Literary works
				(b) Dramatic works
				(c) Musical works: type and quality
				(d) Artistic works
				(e) Computer-generated works
			(2) Films
			(3) The entrepreneurial copyrights
		3. Formalities and Permanent Form
			(1) Absence of formalities
			(2) Permanent form for the work
		4. Qualification
			(1) Qualification by personal status
			(2) Connection by publication
		5. Publication
		6. Term of Copyright
			(1) Classical works of authorship
			(2) Films
			(3) Photographs
			(4) Revived copyright: protection of third parties
			(5) “Neighbouring” copyrights
			(6) Special cases
				(a) Anonymous and pseudonymous works
				(b) Crown and parliamentary copyright
			(7) Lesser terms outside the EEA
	12. Infringement of Copyright and Moral Rights
		1. Infringement: Basic Concepts
			(1) Ownership of the original work
			(2) Misappropriation
				(a) Causal connection
				(b) Subconscious copying
				(c) Indirect copying
			(3) Substantial taking..
				(a) Unaltered copying
				(b) Extent of defendant’s alteration
				(c) Character of claimant’s or defendant’s work
				(d) Nature of claimant’s effort
				(e) Extent of claimant’s effort
				(f) Manner in which the defendant has taken advantage of claimant’s work
				(g) Whether the defendant’s use will seriously interfere with the claimant’s exploitation of his own work
				(h) Reproduction by the original author
			(4) Infringement carried out by others..
		2. Classes of Prohibited Act
			(1) Rights concerned with reproduction and adaptation
				(a) Primary infringement: copying
				(b) Primary infringement: issuing copies, rental and lending
				(c) Secondary infringement: dealings with copies
			(2) Rights concerned with communications to the public: performance, broadcasting, internet and similar provision
				(a) Primary infringement: communication to the public
				(b) Performance in public
				(c) Broadcasting
				(d) Secondary infringement: performances
		3. “Fair Dealing” and Like Exceptions
			(1) Fair dealing
				(a) General
				(b) Research or private study
				(c) Reporting current events
				(d) Criticism or review
				(e) Parody, pastiche and caricature
				(f) Quotation
				(g) Illustration for instruction
			(2) Other exceptions
				(a) Exceptions designed to encourage collective licensing schemes
				(b) Exceptions concerning artistic works
				(c) Broadcasts
				(d) Preservation and making available
				(e) Text and data mining
				(f) Orphan works
				(g) Public administration
				(h) Miscellaneous defences in the CDPA 1988
				(i) Internet transmission
		4. Public Policy
			(1) Policy against legal protection
			(2) Policy favouring dissemination
		5. Actions for Infringement
			(1) Damages
			(2) Presumptions in copyright infringement actions
		6. Moral Rights
			(1) Protection of authors under general legal rules
			(2) Right to be identified
				(a) Entitlement and duration
				(b) Assertion
				(c) Preclusion
				(d) Acts covered
				(e) Impact
			(3) Right to object to derogatory treatment
				(a) Entitlement and duration
				(b) Exercise and preclusion
				(c) Acts covered
				(d) Impact
			(4) False attribution
			(5) Right to privacy
			(6) Overall significance
	13. Property Rights and Exploitation
		1. Initial Ownership
			(1) Literary, dramatic, musical and artistic works; films
				(a) Legal framework
				(b) Employment
				(c) Contracts to the contrary
				(d) Copyright extended and revived
			(2) Entrepreneurial copyright
		2. Assignments and Licensing
			(1) The distinction
			(2) Formal requirement
				(a) Statutory provisions
				(b) Implied licences
				(c) Trans-national movement of goods
			(3) Co-ownership of copyright
		3. Dealings Based on Copyright
			(1) Types of dealing
			(2) Legal controls on bargaining
				(a) Restraint of trade
				(b) Undue influence
				(c) EU competition law
			(3) The main copyright industries
				(a) Publishing
				(b) Music
				(c) Screenwriting: film, television and video
				(d) Visual arts
				(e) Digital licensing
			4. Control of Monopoly
				(1) The CDPA 1988
				(2) The Copyright Tribunal
				(3) Dominant position in the EU
	14. Copyright: Particular Cases
		1. The Media and The Public Interest in News
			(1) Copyright in news
			(2) Fair dealing and recorded speech
			(3) Organisation and journalist
			(4) Press publishers right
		2. Reprography and Recording: Educational and Private Copying
			(1) Visual copies of literary and other material
				(a) Fair dealing and other exceptions
				(b) The reprography problem
				(c) Rights for publishers
			(2) Audio and video copying
		3. Cable and Satellite Transmission
		4. Rights in Performances
			(1) The current law
			(2) Other characteristics
			(3) Remedies for infringement
		5. Public Lending Right
			(1) Background
			(2) The PLR scheme for books
			(3) Public “rental”
		6. Artists’ Resale Right: Droit De Suite
		7. Crown and Parliamentary Copyright
	15. Industrial Design
		1. Background
			(1) Origins of design registration
			(2) Copyright Act 1911
			(3) Copyright Act 1956
			(4) Design Copyright Act 1968
			(5) British Leyland v Armstrong; Canon v Green Cartridge
			(6) Copyright, Designs and Patents Act 1988
			(7) The EU interventions by Regulation and Directive
			(8) Order of the chapter
		2. Registered Designs
			(1) Requirements for a registrable design (validity)
				(a) Product design
				(b) Novelty and individual character
				(c) Technical function
				(d) Public policy and morality
				(e) Proprietorship and dealings: right to be named
			(2) Registration and term.
			(3) Property rights
			(4) Right given by registration
				(a) The test of scope
				(b) Wrongful acts
				(c) Exclusions from protection
				(d) Innocent infringement
				(e) “Complex products”
			(5) Crown use
		3. Eu Unregistered Design Right (UDR)
		4. Artistic Copyright
			(1) The exclusion of design documents and models
				(a) “Design document or model recording or embodying a design for anything other than an artistic work”
				(b) “shape or configuration… other than surface decoration”
			(2) The limitation of duration
		5. UK Unregistered Design Right
			(1) Subject matter
			(2) Qualification
			(3) Exclusive right
			(4) Authorship and first ownership
			(5) Duration and licences of right
			(6) A brief comparison
			(7) Topography right
Part V: Trade Marks and Names
	16. Competitor and Consumer
		1. Underlying Themes
		2. Historical Development
			(1) Judicial protection
			(2) The Trade Marks Register
			(3) Trade marks in world trade
				(a) International agreements
				(b) The Community (now EU) Trade Mark and the EU Trade Mark Approximation Directive
				(c) Unfair competition and consumer protection
				(d) Source indications and other naming systems
		3. The Purpose of Protecting Trade Marks
			(1) Trade mark functions
			(2) Information versus promotion
			(3) Functions and rights
	17. Common Law Liability
		1. Passing Off
			(1) The claimant’s reputation
				(a) Not just confusion
				(b) Distinguishing feature
				(c) Secondary meaning
				(d) Personal names
				(e) Mark becoming descriptive
				(f) Concurrent reputation
				(g) Geographical considerations
				(h) Temporal considerations
				(i) Dealings in trade reputation
			(2) Defendant’s representation
				(a) Defendant’s state of mind
				(b) Form of passing off
				(c) Likelihood of confusion
				(d) Descriptive connotation
				(e) Responsibility upon the defendant
				(f) Proof of likely deception
			(3) Likelihood of damage
				(a) Likely damage
				(b) Goods or business not the same
				(c) Not trading in the same geographical area
				(d) Not trading: other sufficient reputation
				(e) Not trading: sponsorship and personality association
			(4) The proper scope of passing off
				(a) Nature of the deception
				(b) Nature of the injury
				(c) Character merchandising
		2. Injurious Falsehood
			(1) Elements of the tort
				(a) The falsehood
				(b) Malice
				(c) Special damage
			(2) Particular aspects
				(a) Relation to other torts
				(b) False claims of infringement
				(c) Comparative advertising
	18. Registered Trade Marks
		1. Registration Systems
		2. The Process of Registration
			(1) Procedure for a UK application
				(a) Applicants
				(b) Priority
				(c) Classification
				(d) Search and examination
				(e) Opposition
				(f) Appeal
				(g) Registration and term
			(2) Madrid Protocol: international applications
			(3) EU trade marks
		3. Proprietary Interests and Licences
			(1) Assignment
			(2) Licensing
		4. Conditions for Securing Registration: Absolute Grounds
			(1) “Trade mark”
				(a) Capacity to distinguish
				(b) Graphical representation
				(c) Undertaking
			(2) Absolute and relative grounds
			(3) Absolute grounds: general categories....
				(a) Statutory provisions
				(b) Countervailing evidence to show acquired distinctiveness
				(c) Indefeasible objections
				(d) “Devoid of distinctiveness”
				(e) “Descriptiveness”
				(f) “Customary usage”
			(4) Absolute grounds: specific categories
				(a) Shapes
				(b) Personality and character merchandising
				(c) Public interest
				(d) State, official and Royal emblems and other indicia
		5. Conditions for Securing Registration: The Relative Grounds
			(1) Earlier marks
			(2) Earlier rights
			(3) Anti-dilution measures
			(4) Other factors
				(a) Public interest
				(b) Scope of objections
				(c) Disclaimer
			(5) Comparison between marks
				(a) The basis for comparison
				(b) Factors in the comparison
			(6) EU trade marks
		6. Revocation and Invalidity
			(1) Revocation for non-use
				(a) Scope of the ground
				(b) Exceptions
			(2) Mark becoming generic
			(3) Mark becoming deceptive
		7. Invalidity of a Registered Mark
			(1) Absolute grounds
			(2) Relative grounds: acquiescence..
		8. Infringement
			(1) Infringement of a UK registered mark
				(a) Types of use amounting to infringement
				(b) The wrong to the registered mark
				(c) Scope of infringement: other factors
				(d) Defences, or limitations upon infringement
			(2) Exhaustion of right
			(3) Infringement of an EUTM
			(4) Trade marks and parallel importing
	19. Intellectual Property in The Eu
		1. The Internal Market: “Intellectual Property”
			(1) Free movement of goods
				(a) Preliminary factors
				(b) Basic rule and its application
				(c) Justifications
				(d) The “common origin” adventure
				(e) Absence of consent
				(f) Repackaging and relabelling
			(2) Rights in performance and other temporary use...
		2. Internal Market: Unfair Competition
		3. The Rules of Competition
		4. Parallel Importation from Outside The EEA
Part VI: The European Dimension and New Technologies
	20. Digital Technology: Computers and The Internet
		1. Computer Programs
			(1) Copyright in programs
				(a) Existence of copyright
				(b) Exclusive rights
				(c) Substantial taking
				(d) Exceptions
				(e) Screen displays
			(2) Patents for computer programs
				(a) Patentable subject matter
				(b) Other types of non-patentable subject matter
				(c) Scope of rights
		2. Stored Content and Output
			(1) Databases
				(a) Copyright originality
				(b) The Database Directive
			(2) Computer output
			(3) Multi-media: program and content mixed
				(a) Work
				(b) Author
				(c) Adaptation
				(d) Moral rights and digital manipulation
		3. Material on The Internet
			(1) Introductory
				(a) The internet and copyright
				(b) Copyright and adjunct protection
				(c) Legislative moves
				(d) Private international law and procedure
			(2) UK law and its amendment
				(a) Illicit material
				(b) Legitimate material
		4. Domain Name and “Adword” Disputes
			(1) Internet addresses
			(2) Adwords
	21. Intellectual Property in Biotechnology
		1. Introduction
			(1) A half-century of modern biotechnology
			(2) Biological basis
			(3) The HGP and its politics
			(4) Public and private research in biotechnology
			(5) Growth of patents for biotechnological inventions
		2. Patent Systems and Bioethics
			(1) Discovery and invention..
		3. Patentability: Public Policy and Morality
			(1) Justiciability
			(2) Morality: genetic animal design
			(3) Public policy: GM plants
			(4) Ethical objections: human tissue
			(5) Clarification by directive
			(6) Human stem-cell research
		4. Patents and Human Genetics
			(1) Novelty and inventive step
			(2) Industrial application and proportionate claims
			(3) “Anti-commons” that impede R & D
			(4) Research tool patents and experimental use
			(5) The causes of anguish
		5. Other IPRS and Genetic Knowledge
		6. Derived Cell-Lines and Participation
Index