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Intellectual Property Laws and systems in UK and USA

July 22, 2021
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This article is written by Amrit Kaur, a student of Dr. B.R. Ambedkar National Law University, RAI, Sonepat. The article talks about the UK and USA’s intellectual property laws and systems and the related aspects.

Introduction

Intellectual property refers to the creations which have been developed by the author using his intellect, e.g.- literary works, artistic works, designs, symbols, etc. Meanwhile, intellectual property rights are the rights granted to individuals over their intellectual inventions. Usually, the intellectual property rights are granted for a set period to the author. These rights offer the authors exclusive rights over their invention. Intellectual Property encompasses a wide variety of activities and is vital to both cultural and economic life. Various laws that safeguard intellectual property rights acknowledge this relevance.

Intellectual property rights have long been acknowledged by several legal systems. Patents to protect inventions, for example, were awarded in Venice as early as the fifteenth century. The Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886) was the first modern attempts to safeguard intellectual property via international law. Today there are more than 25 international treaties based on intellectual property rights which are overseen and managed by World Intellectual Property Organisation (WIPO). Even Article 27 of the Universal Declaration of Human Rights (1948) talks about protecting intellectual property rights.

Human development and well-being are dependent on our ability to generate new ideas and inventions. Technological growth necessitates the creation and implementation of new inventions, while a dynamic culture is always looking for new methods to express itself. Thus, intellectual property rights are quite important in today’s ever-changing world. They are important also because inventors, artists, scientists, and companies devote a significant amount of time, money, energy, and effort to the development of their ideas and products, and to motivate them to do so, they must be able to earn a reasonable return on their investment. This return entails granting them the right to safeguard their intellectual property.

Different categories of Intellectual Property

Intellectual Property is divided into two main categories:

  1. Copyright and the related rights 
  2. Industrial Property

Copyright and the related rights

The rights of the creators of creative and artistic works like paintings, books, sculptures, films, etc. are protected by the right of copyright up to 50 years after the death of the creator.  

The rights of performers (e.g. actors, singers and musicians), phonogram manufacturers (sound recordings), and radio broadcasting companies are also protected by copyright and the related rights (often referred to as “neighbouring” ones). The fundamental societal aim of copyright protection and associated rights is to promote creative effort and to reward it.

Industrial Property

Industrial Property can be further divided into two main categories:

The first category is defined as the protection of distinctive signs, specifically, trademarks (that differentiates between the goods or services of one organization and that of other organizations) and geographical indications (which indicates a good as originating in a particular place and its characteristics primarily based on its that particular geographical location).

Other industrial property categories are largely safeguarded to promote innovation, design, and technological development. Inventions (covered by patents), industrial designs, and trade secrets come within this category.

Common types of Intellectual Property Rights

Copyright

Copyright refers to the right given to the creators of literary and artistic works. Copyright is generally granted for the works like books, songs, web content, paintings, etc. In simpler terms, copyright does not protect the original idea of the author but it protects the form in which the idea has been expressed. Copyrights, with a few exceptions, provide the owner of the protected material, the authority over the work’s reproduction, performance, new versions or adaptations, public performance, and distribution of the work.

Patent

Patents are one of the most commonly used intellectual property rights. They are used to protect creative ideas or processes which are novel, beneficial, and unobvious. Nowadays even newly developed plant species, or strains, are being protected by patents. A patent gives the patent holder the authority to decide if others can utilize the innovation and if they can, then how. In return for this privilege, the patent holder makes technical data about the invention publicly accessible in a published patent document.

Trademarks

Trademark refers to a sign which helps one to distinguish the product and services of one organisation from that of another. It includes signs, symbols, logos, words, phrases, etc.

Design Rights

Design Rights protect designs such as drawings and computer models, etc.

Trade Secrets

Trade secrets include the manufacturing procedures, systems, equipment, formulae, strategies, and other information which is very confidential and exclusive to the organisations using them. Trade secrets act as competitive advantages for the business. They provide a competitive edge to the organisations using them.

Intellectual Property Rights in the UK

In the UK, two types of protection are generally provided on intellectual property rights depending on the creation of the author. These two types of protection are as follows:

Automatic Protection 

In this, the person need not apply for the right but is provided automatically with the creation of the product itself. The types of protection under it include copyright (which includes art, literature, sound recordings, music, TV, films, web databases or contents, and photography) and design rights that are given for the shape of the objects.

Protection to be applied for

In this, the person does not get the protection automatically but he/she has to apply for it. The types of protection under it include trademark, registered designs, and patents. 

These types of intellectual properties are not to be disclosed to anyone and are to be kept secret but if a situation arises that the idea needs to be discussed with someone, a non-disclosure agreement should be used.

Intellectual Property regime in the UK

In the UK, there are different provisions and acts for different Intellectual Property rights. These are as follows:

Patents

Trademarks

  1. A national trademark application in the United Kingdom; and
  2. An application for an international trademark designating the UK or the European Union Trademark.
  1. Registered Trademarks: It is highly recommended to have your trademark registered in the UK as it will establish your clearer right.
  2. Unregistered Trademarks: An unregistered right is created by the long-term usage of a brand which creates its reputation or goodwill. In such cases, the right against passing off can be used to safeguard the unregistered trademarks, names, logos, or get-ups from being misappropriated by those looking to profit from the claimant’s goodwill.

Impact of Brexit

Every European Union Trademark registered before January 1, 2021, was automatically cloned and was registered as a new and distinguishable mark on the UK trademark registry. However, any European Union Trademark application that was outstanding on January 1, 2021 (and so was registered after that date) was not cloned under this procedure. Owners of such trademarks will have nine months to register a comparable UK trademark.

Copyright

Designs

The designs are of two types:

Registered Designs

Every design is advisable to run through a clearance test before filing its application for registration in the UK Intellectual Property Office. A registered design can be renewed after every 5 years up to 25 years.

Unregistered Designs

To preserve specific shapes and configurations (3D), the UK ‘design rights’ emerge automatically. It is to be noted here that the unregistered design rights offer less protection and are of shorter durations than registered designs.

Trade Secrets

There is no central registry in the UK regarding the same. The only way to protect trade secrets like recipes, etc. is not to disclose them, or if it is necessary to disclose them then as stated earlier a non-disclosure agreement should be used.

Landmark judgments 

Actavis v. Eli Lilly (2017)

The Patent situation in the UK was altered dramatically after this verdict of the Supreme Court of the UK. In this case, the Actavis’s variant, consisting of pemetrexed dipotassium, was held to be immediately contravening Eli Lilly’s patent claims for pemetrexed disodium. Accordingly, the court held that a variant outside of the normal interpretation of the claim but ‘equivalent’ to the claimed subject might be called as infringing a patent claim, thereby possibly extending the coverage and protection under patents in the United Kingdom. Thus, this case left behind the jurisprudence of assessment of the patent law and ushered in the new reign of the ‘doctrine of equivalents’ in the UK.

Unwired Planet v. Huawei (2017)

In this case, the High Court of England and Wales found that patents owned by Unwired Planet were valid, were infringed by Huawei, and were necessary to the 3GPP telecommunications standard. Thus the court stated that the license terms were ‘fair, reasonable and non-discriminatory (FRAND) between the parties. Even though just a few UK patents were found to be legitimate and infringed upon, the FRAND license was ruled to be a worldwide portfolio license by the court. This was the first time a court in the world had to decide on a global portfolio license. Because the license taken by Huawei was not as per terms as laid by the court to be FRAND, the High Court also developed new injunctive relief called a ‘FRAND injunction’. The FRAND injunction was to be discharged against Huawei only if Huawei entered into a FRAND licence with the Unwired Planet. The parties were also given the freedom to apply to the court with regards to the injunction when the licence term would end. 

Intellectual Property Rights in the US

The Intellectual Property regime in the USA

Patents

  1. a written document containing a description and claims
  2. drawings if necessary
  3. an oath or statement, and 
  4. filing, search, and examination fees.

Anyone who invents or discovers a new and useful process, the machine, item of manufacturing, or composition of matter, or any new and useful improvement thereof, may be issued a utility patent.

Design Patents may be awarded to anybody who creates a novel, original, and ornamental design for an item of manufacturing.

Plant Patents may be awarded to anybody who invents or discovers and reproduces asexually any novel or distinctive plant variety.

Trademarks

It is to be noted here that a service mark is similar to a trademark, except it is used to identify and differentiate the source of a service rather than a product. Both trademarks and service marks are frequently referred to as ‘trademarks’ or ‘marks’.

Copyright

Trade Secrets

In the United States, trade secrets are protected as long as the information is confidential, has commercial worth, and appropriate safeguards are taken to secure it. Depending on the nature of the information one seeks to protect, what constitutes a ‘reasonable effort’ to safeguard a trade secret may differ. It is recommended that firms develop an effective trade secret strategy.

Landmark judgments 

Diamond v. Chakrabarty (1980)

This was a United States Supreme Court case that concerned whether or not genetically modified organisms can be patented. Ananda Mohan Chakrabarty worked at General Electric as a genetic engineer. He had developed a bacterium from the Pseudomonas genus, which is today known as Pseudomonas putida. A patent application for the bacteria was later submitted with the USPTO, with Chakrabarty listed as the inventor, however, the application was refused by a patent examiner. It was then pointed out by the court that Congress had intended for the patent laws to be given broad reach by using terms like “manufacture” and “composition of substance” which was modified by the inclusive term “any”. The judge, therefore, finished after discovering that Congress had intended patentable subject matter to include everything made by man under the sun and so the respondent’s microorganism meets the standards for patentable subject matter when viewed under this light. 

Bilski v. Kappos (2010)

In this case, it was held that the machine-or-transformation test is not the only test for establishing whether a process is patent-eligible, but it is a valuable and crucial clue, an investigative tool, for assessing whether some claimed inventions are processes under the law of the land. While doing so, the Supreme Court upheld the denial of a patent application for a method of hedging losses in one area of the energy industry by investing in other segments of the industry, because the application’s abstract investment strategy was not patentable subject matter.

O’Reilly v. Morse (1854)

The Telegraph Patent case, commonly known as O’Reilly v. Morse, is based on a decision made by the United States Supreme Court in 1854. The judgment has had a considerable impact on the evolution of patent eligibility law in the field of computer-software-related art, particularly regarding claimed inventions. It asserts, in particular, that an abstract notion is not patentable unless it is realised. While the case was connected to several other issues, including whether Morse was the first to invent the telegraph, the Court explained that Morse’s eighth claim, which was channelled to a method of communicating intelligible information to any distance by utilising the electromagnetic force, was the issue of lasting significance.

Mayo v. Prometheus (2012)

This was a case decided by the United States Supreme Court that unanimously held that claims directed to a method of giving a drug to a patient, measuring metabolites of that drug, and deciding whether to amplify or reduce the drug’s dosage with a recognised threshold for efficacy in mind were not patent-eligible subject matter. It was a contentious ruling, with supporters stating that it allows clinical pathologists to perform their medical discipline more freely, and critics claiming that it violates patent law and will stifle investment in personalised medicine, preventing new products and services from emerging.

eBay Inc. v. MercExchange (2006)

This is a case in which the United States Supreme Court unanimously decided that an injunction should not be issued automatically just because a patent infringement has been found and that an injunction should not be denied simply because the plaintiff does not carry out the patented invention. Instead, a federal court must apply the four-factor approach commonly used to assess whether an order should be obeyed, according to the Court.

The comparing factors between the IP regimes of the UK and USA

Copyright

Patent

Trademark

Conclusion 

Intellectual property rights have become the most important thing in the world today because of the new things invented every day. The UK and USA which are the forerunners in the race of intellectual property rights have somewhat similar intellectual property regimes. Though sometimes one is a party to a treaty, the other is not. Both countries are well aware and committed to protecting the intellectual property rights in and of their countries. Also, both of them have well-established procedures for filing and taking action against any and every intellectual property theft.

References


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