The Issues in Intellectual Property Law - Assignment Example

Section The factual scenario raises various issues in intellectual property law and I shall address the following in turn Patent protection and patentability of the Exit Poll machine at national and European community level; 2) Whether the Exit poll machine can be protected as a registered design right, unregistered design and/or copyright; 3) Issues regarding ownership of Exit poll and use of brand name; 4) Potential copyright infringement claim against John and Barak; 1. Patent Protection, Application Process and European Patents If Barak and John intend to launch the Exit poll as a commercial product, any advertising and promotional activities will be governed by the British Code of Advertising and Sales Promotion (“the Code”), which is enforced by the Advertising Standards Authority. Most importantly, Rule 3.1 of the Code provides that advertisers must hold documentary evidence to prove all claims made, whether direct or implied. Additionally, Rule 7.1 of the Code provides that no advertisement should mislead by inaccuracy, ambiguity, exaggeration, omission or otherwise. As such, intellectual property protection is vital to protecting the brand and a patent would further bolster Barak and John’s credibility regarding the Exit poll machine. The overriding purpose of patent protection is to promote innovation while striking a balance with free competition (Davis, 2007). The grant of a patent gives the owner of the patent a monopoly for an invention for a period not exceeding 20 years, however the monopoly is not absolute (Bainbridge, 2007). Article 52(1) of the European Patent Convention states that “European patents shall be granted for any new inventions which are susceptible of industrial application, which are new and which involve inventive step”(www.epo.org). Furthermore, Section 1(1) of the Patents Act 1977 (PA) requires the following conditions to be satisfied for a patent to be granted for an invention, which the Exit Poll machine must satisfy: 1) the invention is new; 2) it involves inventive step; 3) it is capable of industrial application; and 4) the grant of a patent for it is not excluded (By virtue of sections 1(2) and 1(3) of the PA). With regard to the novelty requirement, the invention must not be public or part of the state of the art (Section 2(2) PA). As such, the invention must not be anticipated by an existing patent (Jaffe & Lerner, 2004). With regard to inventive step, section 3 of the PA requires provides that an invention will have “inventive step” when it is not obvious to a person skilled in the art. As demonstrated by the case of General Tire & Rubber Company v Firestone Tyre and Rubber Co Limited ([1972] RPC 547), in considering the state of the art the judicial approach is to apply the skilled worker test and consider whether the invention would be obvious to such persons. Moreover, in the case of Intalite International NV v Cellular Ceilings Limited ([1987] RPC 537) it was held that if the invention is not obvious on the skilled worker test, the invention will automatically satisfy the inventive step test and that it is necessary to evaluate the invention as a whole. The test for determining inventive step was set out in the famous case of Windsurfing International Inc v Tabor Marine ([1985] R. P. C. 59): 1) Evaluate the inventive step claim; 2) Consider the mantle of normally skilled individual in the state of art at the priority date; 3) Identify what differences exist between the matter cited as being known and used and the alleged invention; and 4) Consider whether differences are obvious to skilled man Additionally, the invention must be capable of industrial application. Exclusions from patentability are included in sections 1(2) and 1(3) of the PA, which in general excluded scientific discoveries and mathematical methods and computer programs unless they can be establish to produce a novel technical effect. An application may be made for the UK patent, for a European Patent designating a number of member states of the European Patent Convention (EPC) or under the Patent Co-Operation Treaty designating some of or all of the contracting states (www.patent.gov.uk) In all cases applications can be handled by the Patent Office in London, however European applications can instead be filed direct with the European Patent Office, in which case permission must first be obtained from the UK patent office to ensure that the application does not compromises national security as required under the section 23 of the Patents Act 1977 (PA 1977). The filing date and priority date are important in the application process as this is the date the application is received by the Patent Office and the state of the art at the priority date that is considered when judging a patent for novelty (Macqueen, Waelde, & Laurie, 2007). Moreover, the specification is vital as this contains the description and the claims and should be such that a skilled person can make it and use it (Bainbridge, 2007). The patent application will also include a statement of claims defining the invention for which protection is required. Moreover, section 125(1) of the 1977 Act stipulates that the invention shall be taken to be that specified in claim as interpreted by the description and any drawings contained in the specification. Therefore the extent of patent protection is determined accordingly. 2) Design Right and Copyright Protection If the exit poll machine is not patentable, the alternative option is to protect the machine’s design through design right and/or copyright protection. Design right law in the UK is covered by the Copyright, Designs and Patents Act 1988 (CDPA), Design Right (Proceedings) Rules 1989, Design Rights Amendment Rules 1992 and the Registered Designs Act 1949 (RDA) as amended by the Registered Designs Regulations 2003. With regard to registered designs, under the RDA is the design itself which may be registered, not the features of a design as applied to an article and there is no requirement for a design to be applied to an article by an industrial process and the protection extends to any product in which the design is incorporated. As such, provided the design is novel, has individual character and is not dictated by technical function, Barak and John will be able to apply for a registered design right for the design (which will apply to the product under the RDA). However, if the design is too similar to the other manufacturer’s design, it may fail the novelty test. Alternatively, under section 213(1) of the CDPA, a design right is a property right which subsists in the original design as any aspect of the shape or configuration whether the whole or part of the whole article. The CDPA design right operates like copyright in that it is unregistered and arises automatically. However, the design must be original. Additionally, the design right may satisfy the requirement of being an “artistic” work for the purpose of copyright protection under the CDPA. In cases of an overlap between unregistered design rights copyright, section 236 and 51 of the CDPA provides that the design right is suppressed in favour of copyright. 3) Issues regarding patent ownership and use of brand name Barak and John’s employers are claiming ownership of Exit poll. The general rule is that a patent will be granted to an inventor. As John and Barak are joint owners, then this is equivalent to owning the patent as tenants in common and each are entitled to an undivided share of the patent under section 39 of the PA. However, if the patent is made by an employee, then it will be owned by the employer under section 39 of the PA unless John and Barak can demonstrate under section 39(1) of the PA that the patent was created outside the course of normal duties undertaken as employee and outside employee hours. If the patent is successful and found to be owned by their employer, they will nevertheless have the right to be mentioned under section 30 of the PA. With regard to whether or not their employees can prevent their use of the “brand name”, there are two potential course of action that John and Barak should be aware of. Firstly, if their employers have registered the brand name as a trade mark, then trademark infringement is covered by Section 10 of the Trade Marks Act 1994 (TMA), which provides that a party will be infringe someone’s trademark if they use “in the course of trade, a sign which is identical to the trademark in relation to goods or services which are identical with those for which it is registered”. Alternatively, if the name is not registered as a trademark, then the only other way their employer could prevent use of the brand name is through the common law action of passing off (Bainbridge, 2007). The basic requirements for an action in passing off as determined in the case of Perry v Truefit (1842) 49 ER 749) is that there must be a misrepresentation by John and Barak made in the courts of trade to customers, which is calculated to damage the goodwill or business of their employer and that this misrepresentation causes their employers actual damage (Spalding & Brothers v A W Gamage Limited (1915) 84 LJ Ch 449). Moreover, John and Barak’s employers would have to establish actual goodwill in the name and that it was associated with them along with loss in order to prevent use of the name. 4) Copyright Issues With regard to the song that is being recorded, section 1(1)(a) of CDPA provides for copyright in musical works provided it is original. If this requirement is satisfied, then the song will copyright protected automatically with no requirement for registration. However, if created during the course of employment, the copyright will vest in the employer unless John and Barak can establish that the songs were not created during office hours and not part of their employment role. Additionally, there will be a separate copyright in the sound recording itself as a derivative work under section 5A(2) of the CDPA. Section 2 Negligence The facts of this scenario raise issues as to possible claims under the tort of negligence and product liability under the Consumer Protection Act 1987. I shall deal with each in turn The individuals (plaintiffs) suffering from burnt hands could potentially bring a claim against Barakhon (B) in negligence and would have to establish that B owed them a duty of care, B breached this duty of care and the breach caused the plaintiffs actionable damage, which is not too remote. DUTY OF CARE The first hurdle for P is to establish that B owed P a duty of care. The test for whether or not there is a legal duty of care was established in the case of Donoghue v Stevenson (1932] AC 562). In this case the plaintiff had suffered damage as a result of finding a snail in her ginger beer bottle and she bought a claim against the manufacturers for damages. It was held in this case that even though the plaintiff had not bought the ginger beer and therefore had no rights under the law of contract, she could successfully pursue a claim against the manufacturer in the law of tort. Lord Atkin asserted that a manufacturer owed a legal duty of care to the ultimate consumer of his product. In discussing duty of care as a legal concept, Lord Atkin established the “neighbour” principle: “You must take reasonable care to avoid acts or omissions which you cannot reasonably foresee would be likely to injure your neighbour”. Lord Atkins continued to define the term “neighbour” in the legal sense as being “persons who are so closely and directly affected by my act that I ought to reasonably to have them in contemplation as being so affected when I am directing my mind to the acts or omissions which are called into question.” The test for establishing a legal duty of care in tort has developed over the years in order to clarify its parameters and provide guidance on when it will arise. In the leading case of Caparo v Dickman (1990]1 ALL ER 568), the House of Lords confirmed the following three stage test to determine whether a duty of care exists: 1) Whether the consequence of the defendant’s actions were reasonably foreseeable; 2) Whether there was sufficient proximity to impose a duty of care; and 3) Whether it is fair, just and reasonable to impose a duty of care. The latter stage of the test is only applicable when the issue of whether a duty of care exists has to be determined by the courts (Hodgson & Lewthwaite, 2007). Accordingly, for the present purposes the first two questions of the test are relevant in determining whether B owed the Plaintiffs a duty of care. In applying the test to P’s position, it must firstly be established that it would be reasonable for B to have foreseen that the damage was foreseeable and that B should have taken precautions against this. If we consider by analogy the decision in Donoghue v Stevenson, which was addressing manufacturer liability, the reasonable foreseeability test is satisfied and the next question is whether or not there was sufficient proximity for B to owe a legal duty of care. The case of Anns v Merton London Borough ([1978] A.C. 728) asserted that the proximity test relies on a consideration of the nature of the relationship between the parties. The courts will consider whether P was a member of a group to which a duty of care was owed. Again, if we consider the position of the plaintiffs in context of the “neighbour” principle set down in the Donoghue case, along with the fact that they are purchasing directly from the warehouse, there is clearly sufficient proximity for a legal duty of care. If the Plaintiffs can establish sufficient proximity, the next step will be to prove that B breached its duty. The standard of care imposed by law in order to determine a breach of duty is objective and that of “the reasonable and prudent man” (Donoghue v Stevenson). The degree of care to be expected is founded on considering what a reasonable man, careful for the safety of his neighbour would do and requires a consideration of the degree of the likelihood of harm occurring, the cost and practicability of measures needed to avoid it and the seriousness of the consequences. In Nettleship v Weston (1971] 2 QB 691) it was asserted that “A man need not possess the highest expert skill…. It is well established that it is sufficient if he exercises the skill of an ordinary competent man exercising that art”. If negligence in the manufacturing process can be established by the Plaintiffs then CAUSATION As a result of B’s breach, P must then prove that on the balance of probabilities the damage was caused in fact and in law by the negligence. The preliminary test for determining causation is the “but-for” test and whether P would not have suffered the damage “but-for” B’s negligence (Cork v Kirby MacLean [1952] 2 ALL ER 402). On the basis of the facts, it is evident that damage to the printers and loss of business was a direct result of B’s negligence and therefore the causation requirement has been satisfied. DAMAGES The main issue now is whether or not P can claim for losses suffered as a result of B’s negligence. It is a general principle of law that a tortfeasor is only liable for damage that is of a kind that is the natural and probable consequence of his wrongful act. It has been asserted “the principle of law is that compensation should as nearly as possible put the party who has suffered in the same position as he would have been if he had not sustained the wrong” (Hodgson & Lewthwaite, 2007). The traditional objective of negligence is to protect and compensate for physical damage caused by negligence and the onus would be on the P to establish that there was negligence in the manufacturing process that caused the damage in order to claim in negligence. Product Liability Claim Alternatively, the Barak and John’s company may be strictly liable under section 2(1) of the Consumer Protection Act 1987 (the Act), which provides that manufacturers are strictly liable for damage caused by defective products. The objective of the Act is to safeguard consumer from products, which fail to meet a reasonable level of safety. The Act reverses the position in tort as there is no need to prove negligence and section 2 of the Act imposes liability on producers, which will include Barak and John’s company as manufacturers of the product. Under section 1(2), a product is any goods or electricity and section 5 includes personal injury as an actionable damage for a product liability claim under the Act. Liability under the Act is imposed for a defective product and section 3 defines a defect as when “the safety of the product is not such as persons generally are entitled to expect”. Moreover, section applies the safety requirements to products that are component parts or raw materials in other products. Section 3(2) sets out the criteria regarding the standard of safety that “persons are generally entitled to expect”, which includes the following: the manner and purpose for which the product is being marketed; the get up; the use of any mark in relation to the product; any instructions for or warnings regarding the product; reasonable use of the product; the time of supply. If we apply this to the facts then it would appear that the burns caused by the products clearly fall below the standard of safety a reasonable person can expect and therefore prima facie there is a case for strict liability under the Act. The only way in which the company can negate a claim is if they can come within the six permissible defences under section 4 of the Act. The defences likely to be applicable would be the section 4(1) development risks defence that the “state of scientific and technical knowledge at the time he supplied the product was not such that a producer of products of the same description as the product in question might be expected to have discovered the defect”. The limitation for any potential claims under the Act is 3 years. BIBLIOGRAPHY Adelamn, Rader, Thomas & Wegner (2003). Cases and Materials on Patent Law, 2nd Edition West Group Bainbridge (2007). Intellectual Property. Longman Blackstones (2007). Statutes on Intellectual Property Law. 9th Edition Oxford University Press. Cornish and Llewellyn (2003). Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights. 5th edition Oxford University Press. Jennifer Davis (2007). Intellectual Property Law. 3rd Edition 2007 Oxford University Press. John Hodgson & John Lewthwaite, “Tort Law” (2007). 2nd Edition, Oxford University Press Hollyoak and Torremans (2005). Intellectual Property Law. 4th Edition Oxford University Press. Jaffe & Lerner (2004). Innovation and its Discontents. Princeton University Press. Kitchin, Llewelyn, Mellor, Meade, Moody-Stuart, Keeling & Jacob., (2005). Kerly’s Law of Trademarks. 14th Revised Edition Sweet & Maxwell. Kitchin, Llewelyn, Mellor, Meade, Moody-Stuart, Keeling & Jacob., (2005). Kerly’s Law of Trademarks. 14th Revised Edition Sweet & Maxwell. Ian Muir, Matthias Brandi- Dohrn and Stephan Gruber, “European Patent Law: Law and Procedure under the EPC and PCT” Oxford University Press (2006) Mark Lunney & Ken Oliphant., (2007). Tort Law: Text and Materials. 3rd Edition Oxford University Press. Jenny Steele., (2007) Tort Law: Text, Cases and Materials. Oxford University Press. Turner, C & Hodge, S. (2006) Unlocking Torts. Hodder and Stoughton Vaver & Bentley (2004). Intellectual Property in the New Millennium. Cambridge University Press. Legislation Patents Act 1977 Copyright Designs and Patents Act 1988 Registered Design Rights Regulations 2003 Consumer Protection Act 1987 Trade Marks Act 1994 www.patent.gov.uk www.opso.gov.uk Read More