Case of Intellectual Property Law - Essay Example

?Intellectual Property Law Part A Facts of the Case This case is concerning applying for a patent, and there are 2 issues involved in this particularcase. Firstly, the issue is who has the right to file the application and claim inventor-ship for this particular invention. Secondly, is the issue regarding the patentability of the invention (as the Senior Professor from the University of Westshire has said that the drug may have not passed the non-obviousness test). These are 2 separate issues and need to be handled separately so that the rights of the patent holder can be enforced and that a worthy invention does not lose out on a status that would ensure protection and profits for the owner. With regards to a brief of this situation, it can be said that Trevor who was working as a laboratory assistant in the University of East shire’s Chemistry Department and his work involves assisting the PhD students in their experiments and also running the laboratory. Officially no project has been assigned to him, but the Head of the Department of Chemistry has permitted him to do research tasks if he intends to provided that they do not interfere with his routine tasks and responsibilities at the Department. An important fact of this case was that Trevor worked over the weekend beyond office hours with a PhD student into developing a cure for common cold. Since the student developed common cold, Trevor considers developing a cure for her problem. The student is working on a particular compound and Trevor decides to add the compound Millenniumium (Mil) to that compound. Mil is usually used to treat tropical diseases and in the past according to the author, the use of it for treating common cold has not been obvious to any body reasonably skilled in the art. Trevor immediately tests out the drug on his friend, and to his surprise the drug cures the common cold. Trevor immediately reports the invention to his boss the Head of the Department, who applies for a patent but does not put Trevor’s name in the application form. The head of the department does not offer credit Trevor. The facts of the other issues are that a professor from another rival university claims that Trevor’s invention may be obvious to a person skilled in the art and would not pass the non-obviousness test. The professor from the other university suggests that Trevor’s invention may have been found out by another person at some time as a lot of random testing had been going on with drugs. Trevor’s rights over the invention It may be difficult to ascertain the rights that Trevor would be having, but important facts of the case are that:- Trevor was the actual inventor of the drug combination containing Mil Trevor was using the resources of the university to test out the drug and develop the same Trevor was given permission by his HOD to carry out a research project he wanted provided that it did not interfere with his work in the organisation Trevor conducted the work beyond his work timings and hence it was not interfering with his work There were no efforts put by his HOD in developing the proposed combination of drugs that could be considered for the patent. Under Section 10(1), 10(2), 10(3) and 10(4) of the Patent Rules 2007, the Mention of the Inventor has been included. Under section 10(1), if the inventor has not been mentioned in the patent application, he/she has to be mentioned in the appendix or erratum. Under Section 10(2), if the inventor has not been mentioned, he can apply before the comptroller of Patents. Under Section 7(1) of the Patent Act 1997, there is a mention that any person can apply for a patent either alone or jointly. Under 7(2) it has been mentioned that person would include not only individuals but also corporate bodies including universities. The patent may be granted either to the inventor, joint inventor or to the successor/s of the inventor or inventors. Under section 7.06, the inventor has primarily the right to grant the invention to any person but this law may be overridden by legally enforceable agreements. Under section 39 of the Patent Act 1977, any invention that is made during the course of the normal duties of the employees or may be reasonably involving carrying out one’s duties, or has a special obligation to further the interests of the employer, then such an invention would belong to the employer. Any other invention arising from any other circumstance would belong to the employer (IPO 2011). In this circumstance, it can be seen that Trevor was working on a matter that was out of the scope of his work. Although he had to help PhD students with their experiments, he was doing so on a weekend, out of his normal working hours. Secondly, the part of mixing Mil with the student’s drug was not his duty, and the mere intention was to help another student who was suffering from common cold at that time. Trevor had not done this invention during the course of his employment and was working outside his normal work hours and the directions of his employees. This was also not a research program that was carried out by the institute, and though he used the substance that the student was working on for his invention, it can be said that since his invention was not concerning the student’s PhD thesis Trevor can apply for a patent and file for the patent with his name as the inventor. There seems to be closely the fact that he was not working or acting during the course of his employment and hence, he could claim ownership for the IP. However, his HOD cannot claim ownership as he has no hand in the invention and has not made any suggestions towards the same. The HOD cannot even claim co-ownership in the invention (IPO 2011). However, a concern would be wither he has been using the resources of the organisation. In case he was significantly using the resources of the organisation, then the university may have a claim over his patent, and can even look at becoming joint owners of the inventions under section 7(2) (b). There may be legally enforceable agreements at the organisational level which sets out the IP sharing especially in a situation where an employee has worked beyond his normal working hours and has created an IP but has anyway used the resources of the organisation. In such a circumstance, a percentage sharing of the resources would be ensured. Under the Patents Act 1977, an invention is given a patent if it meets 3 criteria. Firstly, it should be novel and not form a part of the current state of art. Secondly, the invention should have an inventive step or fulfil the non-obviousness criteria, wherein a person skilled in the art should find the invention not obvious. Thirdly the invention should be having an industrial application and should be capable for being used or manufactured by the industry. The invention step is mentioned under section 3 of the Patent Ac 1977 (UK Intellectual Right Property Office 2008). One of the cases concerning the problem of prior disclosure of the subject matter of the patent is with the case General Tire & Rubber Company v Firestone Tyre & Rubber Company Limited, [1972] RPC 457. Here an invention that has a patent can that may be in a direction of a prior patent cannot be disapproved on the basis that it was in a certain direction as another patent. Here there is anticipation mainly through prior publications or patents that an invention in a particular direction or subject matter may be developed. Hence, if it has to be seen whether an invention infringes on any prier patent it must violate the claims mentioned in the previous patent (Cameron 2004). The previous patent holder must plant a signpost upon the road showing his area and not claim owernership over an entire road. The precise destination of the prior patent has to be planted. Such an invention may not fulfll the non-obviousness concept, but would meet wtih the novelty concept. Hence, according to the University of Westshire Professor claim that Trevor was working on an area where an invention was anticipated may not hold good, as it can be seen tht developing a cure for common cold was a direction or a road by itself, and to infringe on any prior patent it should violate the area clearly marked out by a signpost placed on the road (Cameron 2004). Further Trevor’s invention should fulfil the non-obivousness criteria which mean that a person skilled in the art should not find the invention obvious. To determine non-obviousness in this case the test being used in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59 can be utilised such that a step-by-step process can be used to determine non-obviousness (Withers & Rogers 2007). The steps involve:- Identification of the inventive concept Asking a person skilled in the art of the current knowledge in place Identification the differences between the current state of art and the inventive concept Looking at whether those differences are obvious to a person skilled in the art If those differences were not obvious to a person skilled in the art, then it fulfils the inventive concept. The professor from the Westshire University is suggesting that the invention made by Trevor does not possess an inventive step as people would have tried any possible compounds. However, the professor is making a criticism based on anticipation and is not looking at the pure credentials of the invention. A more comprehensive approach used by the US Courts has hence been suggested used in the case Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966), and which is commonly known as the Graham factors. The court has suggested looking at the obviousness at an objective rather than a subjective level. The objective level of non-obviousness includes commercial success, long-felt unsolved needs and failure of other previous inventions. Here the invention made by Trevor is resolving a long-felt unsolved need as many people are affected by common cold and Trevor is solving a problem of billions. Further, past solutions have failed, and hence an objective evaluation of Trevor’s invention has to be done. The professor from Westshire University is merely making a subjective evaluation which is wrong in these circumstances (Withers & Rogers 2007). References Cameron, D. M., & Renault, O. 2004. The General Tire & Rubber Company v. The Firestone Type and Rubber Company Limited and Others. [online], Available: http://www.jurisdiction.com/gentire.htm Find law 2011. GRAHAM v. JOHN DEERE CO., 383 U.S. 1 (1966). [online], Available: http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=us&vol=383&invol=1 Intellectual Property Office 2011. Section 2: Nvoelty. [online], Available: http://www.ipo.gov.uk/practice-sec-002.pdf Patent Lens 2011. "I am an author on the paper... ... why am I not an inventor?" , [online], Available: http://www.bios.net/daisy/patentlens/g4/tutorials/205.html UK Intellectual Right Property Office 2008. RIGHT TO APPLY FOR AND OBTAIN A PATENT AND BE MENTIONED AS INVENTOR. [online], Available: http://www.ipo.gov.uk/practice-sec-007.pdf University of York 2011. Regulation 12: Intellectual property, [online], Available: http://www.york.ac.uk/about/organisation/governance/corporate-publications/ordinances-and-regulations/regulation-12/. Withers & Rogers 2007. Inventive Step is Put to the Test. [online], Available: http://www.withersrogers.com/pictures/content108/ip_review_summer07.pdf Part B Discuss the UK system of copyright exceptions and their effectiveness in allowing uses by educational establishments and the public which would otherwise be infringements. Introduction In general, there are 2 exceptions in which copyrighted material can be used. Firstly, it can be used when the copyright-holder itself gives permission to utilise the particular material either through a license or through some other means including authorisation. The second situation is a situation in which the law would provide support which is very limited to do activities with regards to a certain copyrighted material to a certain extent and to a very limited period for certain purposes only. These activates if not used for the mentioned purposes may be conspired an infringement. Some of the examples of copyright exceptions include fair use and compulsory licensing (Hargeaves 2011). Body Often questions are being asked for the basis or justification of such copyright exceptions. Often it can be noted that the transaction costs with a particular copyright are too high and often difficult because there may be too many copyright holders, too many copyright users or both. An example of this is when there are too many songs to be used by too many users across the globe making it difficult to keep several transactions running. Hence, in case if it is difficult to keep a watch on so many transactions it would be ideal to leave a narrow exception. An important factor to be taken into account is that the exception should be outside the normal market of the material, and ensuring that the copyright holder can still use the market. Take for example, the case of parodies. There are actually a very few people who may be interested in doing parody, and usually the number of parodies that may be present for a particular work are reasonably low. However, if a particular artist is interested in doing a parody, there are chances that the copyright holder may not allow him to do the parody with relation to his/her work as he may feel that it would defame his or her work. However, parodies are also required in society in order to ensure that each individual has the freedom of speech and make comments that are subject to public debate, without actually defaming the work. Hence it is appropriate to permit parodies to avoid taking licenses from the copyright holder, without actually interfering with the marketing of the work (Hargeaves 2011). Another reason for providing exceptions would be for the dissemination of information within a reasonable extent such that it does not unduly interfere with the rights of the copyright holder. For example, libraries can disseminate information in the since that people can take photocopies of the book provided that they are using it for an academic cause and do not use it for public circulation. This is because libraries may be considered as storehouse and preservers of information and anybody who wants a particular material that may not be freely distributed in the market can visit a library, search for the book and take a copy of a few pages of the book. Here, the library would not be within the normal market exploitation of the work and hence this exception would be justified. Likewise would be the exception of news reporting and critics as the same is made exclusively for the purpose of public information and not for working the film in public or making profits of the same (Burrell 2005). In the US, the fair use clause does not mention the list of exceptions but considers the various factors that could form a part of determining the fair use criteria. These include:- The very purpose of the fair use Nature of the work that has a copyright The amount of the work being used The impact the use is going to have over the normal use of the copyrighted work by the legitimate holder (Stanford 2005). The fair use clauses of the US has been developed mainly based on case law, whereas in the UK both case laws and statutes have affected the creation of copyright exceptions. In the UK, the fair use criteria is not well-defined and is often made based on a case-to-case basis. The main intentions of having copyright exceptions if for research and educational purposes and to promote innovation in society. According Ian Hargreaves, the British law may permit the use of these exceptions although the international law may actually not permit. Even the European Union law actually classifies the exceptions into lists. With regard to each member nation of the EU, they would implement the exceptions to various degrees; however, they would not create additional exceptions. Even in the UK, the copyright exceptions are restrictive in nature compared to the US due to which parody and archiving may be difficult. Unlike in Australian law, parodies are considered an exception (Stanford 2005). The EU has tried to overcome any loopholes in copyright exceptions to prevent the use of technology. Further, the EU laws on copyright exception are not as flexible as the US laws, as they are subject to implementation by the national laws of each member state. Due to rigid applications of copyright laws, research may be hampered and innovation prevented from further developing. Also by having rigid laws, there is a disconnect between the development of technology and copyright exceptions. For example with technology, people are able to access copyrighted material from across the world. However, the EU has not changed the status of copyright exceptions due to which people are unable to understand the regulations in place and hence, such regulations become ineffective in preventing copying of protected content. The Google founders have said that the laws of Britain would have never permitted their company to kick start business had they chosen their base to the UK. The US laws allows certain amount of breathing space to companies and also offers certain trial and errors procedures along with stronger risk-taking. UK laws are becoming more and more outdated due to which taking backups and shifting formats has become illegal (Macmillan 2007). However, the UK companies are apprehensive of the American law in the UK mainly because it would promote unlicensed copying, increase litigation costs and create confusion amongst the sellers and buyers of the copyrighted material. Another issue noted that in spite of the UK laws not being very supportive of the fair use criteria, they are equally effectively applied by the British company that function in the UK or the US (Burrell 2005). Gower has put forth a few recommendations before the government to implement as copyright exceptions. However, the same is still not implemented after 5 years. Thus there is a failure on the part of the government on copyright framework. Hence, though the UK government has been able stand up to the challenges and prove to be effective to a good extent, there is a need to develop new laws and workflows for copyright exceptions (Burrell 2005). Conclusion Currently, the UK government is trying to over-regulate the activities that may be performed under the copyright exception. No doubt the UK copyright exceptions have not acted as a restrain, but in several instances, the UK law has not been flexible. There is no justified basis for applying the copyright exceptions, and the government is not considering becoming more flexible at implementing parody, non-commercial research, archiving and format shifting as copyright exceptions. Besides, though the UK laws appear to be stopping abuse of copyright, with a growth of technology, it would become more and more tempting for the users to g-ahead to do something illegal. This it can be seen that if reasonable fair use clauses are not implement, then it would be difficult for such laws to succeed. However, Hargreaves is against setting up and liberalising the fair use clause and in a legal environment like UK may be difficult to adopt (Neill 2011). References Burrell, R. & Coleman, A. 2005. Copyright Exceptions: The Digital Impact, Cambridge University Press, Cambridge. http://books.google.co.in/books?id=Vu5n-ARorC0C&dq=justification+of+copyright+exceptions&source=gbs_navlinks_s Hargeaves, I. 2011. Digital Opportunity A Review of Intellectual Property and Growth An. [online] Available at: http://www.ipo.gov.uk/ipreview-finalreport.pdf MacMillan F. 2007. New Directions in Copyright Law, Volume 6, Edward Elgar Publishing, London. http://books.google.co.in/books?id=F-T-MMoRpn4C&dq=justification+of+copyright+exceptions&source=gbs_navlinks_s Neill, G. 2011. Hargreaves Review says no to 'fair use' clause. [online] Available at: http://www.thebookseller.com/news/hargreaves-says-no-fair-use-clause-copyright-review.html Read More