Alternatives to Patenting

UK Patent Office at Newport

Crown Copyright   Licence  Open Government Licence

Jane Lambert

A patent offers the most comprehensive protection of new technology.  It confers a monopoly that can last for up to 20 years of the manufacture, disposal, marketing, use, importation or keeping of a new product or the use of a new process including a monopoly of the disposal, marketing, use, importation or keeping of any product obtained directly from the process.

However, such monopolies are not granted lightly.  Every invention is examined for novelty, inventiveness, utility and compliance with the relevant legislation.  That is a lengthy and complex process for which an applicant will almost certainly require the assistance of a patent attorney and, in some cases, patent counsel.  According to the guidance Patenting Your Invention only 1 in 20 applicants gets a patent without professional help.   Such help does not come cheap.   The same guidance note states that an application for a patent for the UK alone typically costs £4,000.  If the application is granted there are renewal fees which in many countries rise throughout the term of the patent.  If the validity of the patent is challenged or the patent is infringed the cost of invalidity or infringement proceedings can run into many hundreds of thousands or even millions of pounds

A condition of the grant of a patent is that the specification must disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art.  Should the application be refused or should a granted patent be revoked, anyone in the world may make, market, distribute or use the invention. Indeed, anyone in a country in which patent protection has not been obtained may freely work that invention.

Not every invention can be patented.   S.1 (2) of the Patents Act 1977 excludes from patentability:

"(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information."

That exclusion covers great swathes of innovation in our increasingly services orientated internet-based economy.    Happily, there are other ways of protecting a new technology.   

If the invention cannot easily be reverse engineered it may be better to keep it secret.   The law of confidence bolstered recently by the Trade Secrets Directive prevents unauthorized use or disclosure of secret technical or commercial information.   A restriction on unauthorized use or disclosure lasts until the information is in the public domain.    In some cases, that can be a very long time.   The recipe for Coca Cola has been kept secret for more than a century and the recipe for Chartreuse for very much longer. The information has to be secret, it must have some inherent value and it must be imparted in circumstances giving rise to an obligation of confidence. Usually, that means a confidentiality agreement but there are other circumstances where an obligation of confidence will be implied.  For instance, a patent attorney is bound by such an obligation when he or she advises an inventor on the patentability of a new invention.  The information technology industry, in particular, relies heavily on trade secrecy law to protect algorithms, source codes and other unpublished information. 

Many innovative new products, particularly in the consumer electronics, fashion and beauty, toys and novelty industries, have a very short shelf life.   For them, short term protection from copying is enough. The UK is one of a very small number of countries that protects "the design of the shape or configuration (whether internal or external) of the whole or part of an article" from unlicensed reproduction.   Such protection, known as "unregistered design right" subsists automatically in original designs.  There is no need for examination, registration or professional help.   Design right protection can last up to 15 years if the design is not exploited by the marketing of articles made to the design or 10 years where it has.    However, in the last 5 years of the design right term, anyone in the world can apply to the design right owner for a licence to use the design as of right.  Any dispute over the terms of the licence can be settled by the Intellectual Property Office.

The design of semiconductor chips is protected in the UK by a modified form of design right under The Design Right (Semiconductor Topographies) Regulations 1989 as amended by The Design Right (Semiconductor Topographies) (Amendment) (EU Exit) Regulations 2018.   The main differences lie in the qualifying countries, the term of design right and the exclusion of the licence of right provisions.

Although computer programs as such cannot be patented, computer programs, preparatory design material for computer programs and databases are specifically included in the definition of "literary work".  Copyright subsists automatically in original literary works and lasts for the life of the author plus 70 years.   There is no need for registration in the UK or most other countries.    It is however important to note that copyright provides protection against copying.  It does not prevent the making of a similar or even identical work provided that there has been no copying of or reference to the copyright work.   IT and many other industries that supply goods and services over the internet rely heavily on copyright.

The breeding of new varieties of seeds and plants is an increasingly important technology in view of climate change.  In the USA and some other countries, it is possible to obtain plant patents (see General Information About 35 U.S.C. 161 Plant Patents on the US Patents and Trademark Office website).  In the UK plant breeders' rights are protected by registration with the Plant Variety Rights Office under the Plant Varieties Act 1997 (see Plant Breeders' Rights).  

It is important to bear in mind that consumers are often drawn to a new product by its shape or reputation rather than the technology under the hood.   Designs of new products with individual character can be registered under the Registered Designs Act 1949 for up to 25 years.  They are also protected by unregistered design rights and a new supplementary unregistered design right.   The surface decoration of a fabric, wall covering or other product can usually be protected from copying by copyright.  Occasionally, the article itself qualifies for protection as a work of artistic craftsmanship.    The reputation of a product or service is its brand.  Brands are protected in the UK by the registration of their name, logo or other indicia as a trade mark and by the common law of passing off.

 Anyone requiring additional information on any of those matters should fill in the following form.

                            

Responding to COVID-19. What Makers Need to Know about IP. Webinar 15 April at 17:30

© 2018 Jane Lambert: All eights reserved

Jane Lambert

All over the United Kingdom, makers have responded magnificently to appeals for personal protection equipment and other devices by hospitals, care homes, general medical practitioners and essential workers in their localities and beyond.

A typical example is the efforts by businesses and individuals on Anglesey organized by M-SParc (the Menai Science Park) to make and distribute masks and shields to local health and social care workers (see PPE Masks/Shields on GoFundMe). Yesterday, I learned of a nationwide campaign called Shield to coordinate such efforts.

I also learned of a government-backed initiative for InnovateUK to invest £20 million in innovative responses to the COVID-19 pandemic and its aftermath (see InnovateUK to fund Innovative Responses to the COVID-19 Pandemic 12 April 2020 NIPC Inventors Club).

Investment on that kind of scale needs legal protection. While the priority must be to save lives and minimize infection, it is in the interests of care providers and patients that the rights of solution providers are recognized and respected.   As I said in IP Services During the Emergency 23 March 2020 NIPC Inventors Club, the laws that protect those rights known collectively as "intellectual property" have never been more important than they are now.

So.  What are those rights?

Well, they include monopolies of the manufacture, importation, holding, marketing or distribution of products that are new, inventive and useful that do not fall within a number of statutory exclusions. These are known as patents and they can last up to 20 years.  They cost several thousand pounds to obtain and even more to maintain and enforce.

A right that arises automatically in the UK is the right to prevent others from reproducing an original product design.  That is called unregistered design right which essentially protects the shape or configuration of an article. It can last up to 10 years from the end of the year it is made available to the public though in the last 5 years anybody including an infringer can apply for a licence to make and distribute it as of right. 

Unregistered design right is not to be confused with registered designs or unregistered Community designs which protect the appearance of products.   Designs that are new and have individual character can be registered at the Intellectual Property Office for five renewable terms of 5 years each. Registration confers a monopoly of the manufacture, importation, stocking, marketing or sale of products that incorporate the design.  Designs that could have been registered with the Intellectual Property Office as registered designs are protected from copying for up to 3 years throughout the EU and the UK for the transitional period as unregistered Community designs.

Software which could include programs for 3D printers and other digital fabrication technologies are literary works which may be protected from copying by copyright in the UK and most other countries for the life of the author plus 70 years.  The right arises automatically as soon as the work is written down or otherwise recorded.   Copyright cannot subsist in ideas as such.  Only in the expression of ideas.

If anybody wants to learn more, I shall discuss these topics in a free webinar for makers on Wednesday 15 April 2020 at 17:30.  If you want to sign up, please register here.

IP and Dance

Standard YouTube Licence

Jane Lambert

I once heard Cerys Matthews describe Ballet Cymru as "the pride of Newport and the pride of Wales". I would not dissent except to add that that it is also the pride of the whole UK.  The reason I mention the company today is that it is about to perform Romeo a Juliet at the Riverfront Theatre in Newport. It will then visit Bangor, Brecon, Porthcawl and Milford Haven as well as venues in England.  The company will visit the Pontio Centre at Bangor on the 4 June.  I was at the Pontio the last time Ballet Cymru visited that venue and was almost as impressed by the centre as I was by the entertainment. Northwest Wales is beautiful and the M-SParc (the Menai Science Park) has created an environment for knowledge-based businesses to flourish but enterprising, innovative and creative people also need the arts. The Pontio delivers the best on stage and screen.

Ballet Cymru's production is a great show.  One of the best interpretations of Shakespeare's tragedy that I have seen.  It stands comparison with Birmingham Royal Ballet's, English National Ballet's, the Mariinsky's. Northern Ballet's, Scottish Ballet's and even the Royal Ballet's, all of which I know. I have seen and reviewed Ballet Cymru's Romeo a Juliet twice (see A Romeo and Juliet for Our Times 7 Nov 2016 and They're not from Chigwell - they're from a small Welsh Town called Newport 14 May 2013 Terpsichore).

Ballet Cymru is based in Rogerstone which is a township just outside Newport. It would be wrong to call it a suburb of Newport even though it is within that local authority's boundaries because the folk who live in that part of Wales have a strong sense of local identity. Caerleon is also within the city limits but it has existed since Roman times. One of Ballet Cymru's neighbours is the Intellectual Property Office  which describes itself as "the official UK government body responsible for intellectual property (IP) rights including patents, designs, trade marks and copyright."

Copyright protects the work of artists, broadcasters, composers, dramatists, filmmakers, publishers, recording studios other creative persons from unlicensed plagiarism and other exploitation.  Unlike patents, trade marks and registered designs, it does not have to be registered in the UK. The right comes into being automatically so long as the conditions for the subsistence of copyright are net. These are originality in the case of artistic, dramatic, literary and musical works and fixation and qualification in the case of all works. "Originality" used to mean independent skill and labour but is now intellectual creation.  "Fixation" means writing the work down or otherwise recording it. "Qualification" means the nationality or residence of the author or his employer or the place of publication. Basically, that includes a British national or resident or the national or resident of another country that provides reciprocal protection to the works of British authors under the Berne Convention or otherwise. 

Copyright is not necessarily infringed by making a similar work (see Davies v Wolverhampton Wanderers Football Club (1986) Ltd [2019] EWHC 1252 (Ch) (15 May 2019) which I discussed in Copyright: Davies v Wolverhampton Wanderers Football Club 25 May 2019 NIPC Law). It is infringed by copying or by doing in relation to the work one the other restrictive acts mentioned in s.16 of the Copyright, Designs and Patents Act 1988.  Similarity between two works and may suggest that there has been copying particularly when the author of the later work had the opportunity to see the earlier one but there may be many other reasons for such similarity such as functional exigency or sometimes mere coincidence.

A ballet is likely to consist of lots of copyright works.  There is the score for a start and then possibly the libretto.  Copyright can also subsist in choreography as a dramatic work so long as it is recorded in Benesch or some other notation (see my article Cracking Nuts - Copyright in Choreography 24 Nov 2011 IP Northwest).  The backdrop of the set and the designs of the fabric may well be original artistic works. There is also likely to be design right in the designs of the costumes and perhaps the props and sets. Finally, each and every one of the dancers and musicians has the right not to be filmed, taped or broadcast without consent under Part II of the 1988 Act (see Rights in Performances).

Actors tell each other to "break a leg" when they go on stage.  That is not really appropriate for dancers because they sometimes do.  They wish each other "toi, toi, toi", "chookas" or sometimes even "merde" instead.   Let's wish Ballet Cymru toi, toi, toi at the Riverfront tonight.   Do try to catch them on their tour of Wales if you possibly can.  If you want to discuss this article or copyright in general, call me on 020 7404 5252 during office hours or send me a message through my contact form.