Intellectual Property Law in the UK - Case Study Example

INTELLECTUAL PROPERTY Table of Contents Problem Question 3 Case Overview 3 Advice to Margaret 4 Protecting the Invention of Leo 4 Prospects Are For Valid Patents to Be Granted In the UK and Europe 6 Essay Question 7 Introduction 7 Discussion 7 Law of Trade Secret and its Effectiveness 7 Recommendations and Conclusion 10 References 12 Problem Question Case Overview Margaret is currently negotiating with Leo (a Canadian inventor) to move into a partnership contract between them. It has been noted that Leo has emerged with a new idea which later led to the development of a waterproofing compound that can protect fabrics and tents. The compound developed by Leo also has the ability to protect fabrics from sunlight. Leo gets this particular idea from his grandfather who also mentioned this particular technique in his autobiography named ‘Cold Prospector’ which was published by the Manitou Press of Saskatchewan in the year 1932. The compound that has been developed by Leo has a particular chemical substance that is primarily obtained from the sweat gland of Caribou (It is mammal that lives in arctic region). However, this particular chemical can also be easily synthesized through scientific technique in the absence of the chemical that is present in secretions from the sweat glands of the Caribou. . While being in the Canadian Institute of Arctic Biology as research scientists, he discovered about how Caribinin (chemical secreted from the sweat glands of the Caribou) makes the fur of the mammal waterproof which further give rise to his invention. However, the findings of the research were later on published in the Canadian Nature Journal. He later on gave up his job as research biologist with Canadian Institute of Arctic Biology and engaged in further investigation with the assistance of Canadian Mounted Police. While conducting further tests, new facts were discovered regarding the properties of Caribinin. In the later scenario, Leo applied for patenting his invention in the Canadian Patent Office. Advice to Margaret Observably, Margaret is in negotiation with Leo to develop an agreement of partnership between the two with regard to the invention of a specific compound by Leo. Since, this invention of Leo is quite beneficial and a major source of conducting profitable business, there is always a danger of the idea to be stolen by others who can use it for their benefit. Contextually, Margaret needs to consider certain aspect with regard to protect the invention after she acquires it from Leo through the agreement. Protecting the Invention of Leo In order to protect the invention of Leo throughout the world, Margaret needs to be acquainted with certain legal obligations associated with it. Firstly, she would need Disclosure Document Program which is particular approach of law where documents associated with the invention that will serve as an evidence of the invention and will facilitate in preserving the invention for two years. The owner of the inventor will need to patent his/her design, idea or the innovation within this particular two years that are being provided by law. The disclosure document needs to be signed by both Margaret and Leo in the presence of an attorney. The legal authorities will retain the documents for two years and will provide a two year time frame for both Margaret and Leo until which they would need to patent their invention1. This particular approach will be crucial in this particular case as Leo got the foundational idea of his invention from his grandfather who again had published the same in his autobiography. So it will be crucial that Leo and Margaret should keep the evidence of the invention safe [Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376]2. A non-disclosure agreement will also need to be signed amid Margaret and Leo in their partnership agreement owing to which both the parties will not be legally liable to convey any of the information about the invention to any third party. Infringement in this context will result in legal consequences for both the parties involved3. Notably, an agreement of negotiation amid Leo and Margaret will act as evidence that will bind both the parties under the contractual obligation. However, as per the facts of the case, Leo has already applied for patenting the invention in his ownership. In this context, Margaret will need to assure that the ownership of patent is equal for both Leo and her. Different countries have different legal procedure in this regard. Taking in consideration the US law of patenting, it can be depicted that Leo will need to transfer the ownership of the patent of his invention from him to both Margate and him with the help of a legal assignment4. All these aspects will ensure that the invention is protected and its ownership will remain intact with the both the parties. Prospects Are For Valid Patents to Be Granted In the UK and Europe Patent law differs from nations to nations. However, the European patent law i.e. European Patent Convention (EPC) is quite similar to that of the law in United Kingdom owing to the agreement amid the nations in the Diplomatic Conference held in the year 20005. Notably, the patent law in the UK will require Margaret and Leo to deal with several legal steps before acquiring the patent rights for the invention. In this regard, legal authorities associated with patenting will publish the allocation of Leo’s invention as soon as they file for the patent. In the subsequent stages, the application will analyse and examined. This is more of a complicated process where each and every aspect of the application is analysed and examined with regard to its adherence of the various legal sections of the Patent Act 1977. Margaret might find difficult in this context as identical idea of invention has also been published in the Canadian Nature Journal while Leo was associated with them in a particular research project. Subsequently, the comptroller accept the application and grant patents provided that the patent being opted for registration meets certain criterion specified under the Patents Act 1977 of UK. 6. According to the Patent Act of UK 1977, an invention should be new and it must have industrial application in order to be granted. The invention must also adhere to section 2 and 3 of the Act in order to grant it with prior approval. This aspect will also be similar in the European patent law. Essay Question Introduction With the changing nature as well as approach of conducting business, several implications have been emerged that further pose certain challenges to the proper and smooth operation of the business. In this regard, the aspect of confidently of business secrets will be vital point to be discussed. Apparently, different companies form different types of strategies and tactics for themselves which further provide competitive edge to one company over that of the others. However, if in any case these confidential strategies are conveyed or revealed to the competitors, the business is deemed to get affected. In the contemporary scenario, it has been seen that employees who leave a particular organization and join the business of competitors might convey important and secret information of the business to the competitors. This shows that the law of trade secrets might not be alone adequate to deal with these business issues further depicting the need for more legal reforms in this particular aspect7. Discussion Law of Trade Secret and its Effectiveness Observably, any particular information that can provide a business with an upper edge over that of its competitors will be considered as a trade secret in legal terms. It includes the secrets of both the industrial as well as the commercial information of a business unit. The use of this information by any individual without the prior consent of the holder is seen as illegal and a potential violation of the trade secrets law8. Law of trade secrets differs from country to country and from region to region. As per the trade secret law of the UK, companies or an individual should intend to keep a particular aspect secret if it is not liable to be protected under the intellectual property law and if an individual seek extended protection beyond the term of a patent. The trade secret law of UK affirms the protection of this informations or secrets from moving in the unauthorized hands. However, the law in UK does not impede anybody to create or developed the same process or the same information independently. The law instructs that in order to keep trade information secrets individuals or business units will need to sign Non-Disclosure agreement (NDA) with any of the person to whom the information is conveyed. If that person violates the terms and condition of the agreement, legal actions can be taken9. However, it is often argued that the trade secret legislations of UK has not been much severe owing to the fact that it is not considered as a criminal offence in-spite of the fact that the misuse of trade secrets has major impacts on the operations of business. In this context, it can be depicted that many of the nations of the world including the US and some of the nations of European continent considers the misuse of organizational or business secrets as a major criminal offence and penalties are imposed accordingly. As per the present law of UK, the criminal jurisdiction in the country provides little protection with regard to trade secrets of business. Stealing of Trade secrets is not considered as a theft and hence it does fall under the Theft Act 1968. This can also be seen in the landmark case of Oxford v Moss. Notably, if a person acquire and store any information in his mind from a particular source as a paper or a computer hard disk, his/her approach will not be taken as a theft or any criminal offence. This particular aspect of the legislation of trade secrets further makes the trade secrets law inadequate for businesses towards protecting their confidential data10. Observably, in the present day scenario, it is quite evident that employees of any company move to other company when they get better opportunities for themselves. However, in the process of their movement from one company to another, they carry various secret and confidential information of their former employer which might be used by the present employer to get competitive edge in the market. For this particular purpose employees convey confidential information of their past employer to their present employer. In this regard, the loss of employee for an organization will directly mean the loss of certain confidential organizational data. Contextually, as previously mentioned the trade secrets law of UK only protects the information or the trade secrets that employers convey to their employees or other individual in the presence of a Non-Disclosure agreement (NDA). Furthermore, the law also protects the informations or the trade secrets that are patented and taken copyrights of as per the Copyright, Designs and Patents Act 1988 of UK. However, in scenarios when employers do not associate their informations with a Non-Disclosure agreement (NDA) or patent, trade secrets law provides little protection. Furthermore, when employees develop similar sort of idea or strategies independently with a new employer, the trade secret law will not provide any remedy for an employer. Additionally, since the trade secret law of UK does not consider acquiring of information as a steal or theft, no criminal offence is implied on employees who convey secrets of their former employer to their present employer11. Hence, it is apparent that the trade secret law has been quite ineffective in protecting trade secrets and confidential business information. Recommendations and Conclusion It is apparent that the trade secrets law is less effective with regard to the protection of confidential business data when an employee leaves a particular business and joins the business of the competitors. Contextually, it can be depicted that the employers need to protect any of their business secrets as per the law of intellectual property rights so that severe actions can be taken against employees who reveal secrets of a business to other employers or any unauthorized external members. Again, the ‘Doctrine of Work’ for hiring an employee which falls under the Copyright law of UK will also grants certain measures for companies towards protecting the secrets of their business. Contextually, as per the doctrine, employer will undergo an agreement with its employees owing to which the employer will be the owner of the copyrights of any of the work employees does for the organization. The employees will further be hindered to use or share of any of the idea that he has developed for former employers12. Hence, to conclude the discussion, it can be affirmed that business secrets are quite crucial for any company to attain a competitive edge over the competitors. However, with employee movement from one company to another, confidential corporate information comes under severe threat which is also not effectively protected under the trade secrets law of UK. References Attorney, Fred S. Steingold, Legal Forms for Starting & Running a Small Business. (Nolo, 2012). Harvard Business School, ‘Non-Disclosure Agreement’ [2014]. (Home) (accessed 07 March 2014). Intellectual Property Office, ‘The Patents Act 1977’ [No Date]. (Home) (accessed 07 March 2014). Intellectual Property Office, ‘Trade secrets’ [No Date]. (Home) (accessed 07 March 2014). Intellectual Property Office, ‘Patents Act 2004 - Guidance note No.9’ [No Date]. (Home) (accessed 07 March 2014). Law Commission, ‘The Present Law’ [No Date]. (Home) < (accessed 07 March 2014). Sandeen, Sharon K, Intellectual Property Deskbook for the Business Lawyer: A Transactions-based Guide to Intellectual Property Law. (American Bar Association, 2007). Severson, Mary L, ‘Hybritech, Inc. v. Monoclonal Antibodies, Inc.: Are Courts Promoting Progress in Rapidly Expanding Scientific Fields?’ [2012]. (George State University Law Review) (accessed 07 March 2014). USPTO, ‘Disclosure Document Program – Discontinued’ [2012]. (Home) (accessed 07 March 2014). USPTO, ‘Change Ownership’ [2012]. (Home) < http://www.uspto.gov/patents/process/changeownership.jsp> (accessed 07 March 2014). WIPO, ‘What is a Trade Secret?’ [No Date]. (Home) (accessed 07 March 2014). Read More