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Law Notes Intellectual Property Law Notes

Patent Registration And Subject Matter Notes

Updated Patent Registration And Subject Matter Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 1014 pages

IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).

These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...

The following is a more accessible plain text extract of the PDF sample above, taken from our Intellectual Property Law Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Overview

Development

1624 Statute of Monopolies

  • Allowed monopoly rights over “manner of new manufactures” for 14 years

  • Codification of past practice in allowing for monopolies

Patents, Designs and Trade Marks Act 1883

  • Gave effect to Paris Convention 1883

Patents Act 1977

  • After much piecemeal reform, this Act implemented the European Patent Convention 1973

Current situation

Patent is a time-limited (usually 20 years) exclusive right to restrict the trade and use of ideas and information, incorporated in a qualifying product or process

  • Initially lasts for 4 years but can be extended up to 20

  • Can be enforced against ALL who use the invention

    • Much stronger than copyright: works against independent creators and not just copiers

National route

  • UK national patent can be granted by UK IPO on application

  • Based on the criteria in PA 1977

    • PA 1977 s130(7): Certain provisions are framed “as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention”

    • Lord Neuberger in HGS v Eli Lilly (2011): Both the EPO and national courts are applying the same principles from the EPC

      • If the EPO decides that a patent is invalid: “that is the end of the issue”

      • If the EPO decides that a patent is valid, the national court can still hold it invalid within its jurisdiction

      • The conclusions of the EPO and national courts need not be the same because of different evidence or arguments or evaluations

      • EPO decisions are not effectively binding on national courts, but should be applied where consistent

  • Appeals go to the Commissioner for Patents then the Courts

European route

  • EPO can grant a bundle of national patents

    • Based on the criteria under the EPC 1973

      • The Convention is an intergovernmental treaty, NOT part of the EC/EU

      • Centralised opposition proceedings can be brought for 9 months

      • EPC was revised in 2000

    • Appeals go to the relevant Board of Appeal

    • National courts can revoke the national patent granted

  • NOTE: There is NO community patent yet (unlike with trade marks)

    • Community Patent Convention was signed in 1975 but never came into force

    • Using the enhanced cooperation procedure, 2 regulations were adopted in 2012

      • Creating a European patent with unitary effect

      • Establishing a language regime applicable to the unitary patent

    • There was also an international agreement in 2013 regarding the setting up of a Unified Patent Court

      • Not yet ratified (and not signed by Spain and Italy)

    • ISSUES

      • Unclear how this relates to the CJEU

      • 3 official languages so there is still translation cost

        • Still need to translate further in infringement proeedings

      • Results in 3 systems: national patents, bundle of patents (European patents), unitary patent (for signatories)

      • Davies/Aplin: The system is not “coherent and efficient”

  • Supplementary Protection Certification Regulation (SPC Regulation 1992)

    • Allows for patented medicinal products which have regulatory approval to be protected for a maximum of 5 years after the 20 year patent expires

    • Used where marketing has been delayed by the need to obtain regulatory approval

  • Biotechnology Directive

    • Very controversial directive, finally adopted in 1998

    • Netherlands brought annulment action but this was rejected in 2001

    • Implemented in 21 Member States by 2005

    • Harmonises the rules on patents for biotechnological inventions

      • E.g. requirements and exclusions

      • Compulsory licensing procedures

Justifications

Natural rights

  • Lockean view: a person should own what is produced by his own labour

    • Provided that there is enough that is good left for others (equality), and that one does not take more than one can use (no wastage)

  • ISSUE (Chevalier): An idea can belong to an unlimited number of persons

    • Unlike literary or artistic works which have “decided character of individuality”, inventions can be made by multiple people without taking it away from the inventor

  • ISSUE (Macfie): Any natural right would be the right to use one’s own invention

    • But patents might actually prevent this since someone else could obtain a patent on something which one invents

  • ISSUES (Liddell)

    • Lacks explanatory power

      • Patent law doesn’t recognise the efforts of all labourers, but only that of the first inventor (even if a 2nd inventor spends effort developing independently)

      • Patent law only recognises inventive labour

      • Patent law doesn’t prevent wastage since there is no revocation for non-use

      • Does not leave enough for others if basic ideas can be totally monopolised

    • Lacks normative power

      • Unclear why it labour should naturally give rise to property

      • Unclear how conflicting rights can be balanced (e.g. right to property vs right to health)

  • NOTE: Many international conventions place IP within the right to property

Just reward for inventors

  • Based on the moral rights of inventors to receive reward for their labour

  • ISSUE (Machlup and Penrose): Even if this isn’t denied, that doesn’t mean that the reward has to come in the form of a patent

    • The time interval between his use of the invention and imitation by competitors might accrue enough financial reward?

    • Cash prizes or bonuses might be paid out instead of creating monopolies that prevent others from building on the inventions

      • BUT a bonus system might be susceptible to corruption and arbitrariness due to the exercise of discretion involved

Utilitarianism

  • Based on the assumptions that industrial progress or inventive activity is desirable and that the patent system is capable of incentivising such activity

  • Incentive to create or invest in R&D

    • The argument is that there is high cost in creation but ease of copying, so there must be an incentive to create rather than copy

  • Incentive to develop or commercialise the invention

    • Huge amounts of investment are required to transform he initial idea into a marketable product which would benefit consumers

    • The assumption is that inventors wouldn’t want to make this investment if they couldn...

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