Information technology lecturesIP_Rights.pdf

Information technology law-IP rights

1. INTELLECTUAL PROPERTY RIGHTS
THOMAS HENAKU
IT LAW
Ghana Technology University College

2. Outline
Copyright
Patent
Trademarks
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3. Basic principles of copyright
Copyright is declared to subsist (that is, ‘exist’) in the following
works by virtue of the Copyright, Designs and Patents Act:
a)original literary, dramatic, musical or artistic works;
b)sound recordings, films or broadcasts; and
c)the typographical arrangement of published editions;
provided that the requirements for qualification are met:
for example, that the author of an original literary work is a
citizen or has certain other nationality or residential
qualifications, or that the work was first published in the
country the author resides.
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4. Basic principles of copyright
Literary works include computer programs, preparatory
design material for computer programs and databases.
The first category of works is expressed as being ‘original’.
This does not mean that the work must be unique or special in
any way. It is sufficient that the work is the result of the skill or
judgment on the part of the creator of the work and that it has not
been copied from another work.
In other words, it has originated from its creator. For one of
these original works, the test is qualified and for copyright
databases, they are required to be the author’s own
intellectual creation
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5. Basic principles of copyright
Databases may also be protected by a right known as the database
right which can be described as a right related to copyright. The
database right was introduced as a means of protecting databases
that are the result of a substantial investment even though they
might not otherwise meet the requirements for copyright protection.
Nevertheless, the two rights are not mutually exclusive and, in some
cases, databases will be protected by both copyright and the
database right.
This can be useful as the scope and protection afforded by both
rights is different. The database right is the result of the Directive on
the legal protection of databases, where it was described as a sui
generis right, meaning it is a right of its own kind or unique.
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6. Example
Which one of the following statements is
CORRECT?
a.A computer program is a sui generis work and is
protected by copyright only if it is the result of a
substantial investment
b.Preparatory material for a computer program is
protected as an artistic work, especially if it includes
diagrams.
c.Computer programs can only be protected by copyright
as computer-generated literary works.
d.A computer program is a literary work and is required to
be original, meaning it is the result of the author’s own
intellectual creation.
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7. Basic principles of copyright
Owners and authors
The owner of the copyright in a work is given the exclusive right to do
certain specified restricted acts in relation to the work.
The basic rule is that the first owner of a copyright is the author of the
work (the person creating it).
Where the work is made by an employee, the employer will be the first
owner of the copyright, unless otherwise agreed.
The Copyright, Designs and Patents Act usually refers to the creator of a
work as the ‘author’ of the work, thus a person writing a piece of music is
the author of the music and a photographer is the author of his
photographs.
For sound recordings and computer-generated works, the author is the
person who makes the arrangements necessary for the making or
creation of the work, so the author of a report produced automatically by
a computer will normally be the person who loads and operates the
software in order to create the work.
In many cases, ownership, as distinct from authorship, will reside initially
with an employer.
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8. Example
Who is the AUTHOR of a computer-generated work?
a.The person who owns the computer used to generate
the work
b.The person who made the arrangements necessary
for its creation.
c.The person who is entitled to use the software used
to generate the work.
d.No one as a computer-generated work cannot, by
definition, have a human author.
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9. Example
Which one of the following statements is CORRECT in relation to a
computer program created by an employee?
a.In the absence of any valid assignment of the copyright in the computer
program, the employee will be the first owner of the copyright.
b.If the computer program was created in the course of the employee’s
employment, the employer will be the first owner of the copyright, subject to any
agreement to the contrary
c.Technically, the employee will be the first owner of the copyright at law but the
employer will be the beneficial owner of the copyright.
d.The employee and the employer will be joint first owners of the copyright unless
there is a term in the contract of employment stating that the employer will
automatically own all the intellectual property rights in anything created by the
employee in the course of his employment.
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10. Example
Abdul is a self-employed computer programmer. He was engaged to write
a computer program for Excel Logistics Ltd (‘Excel’) and was paid a large
fee for this work. The contract between Abdul and Excel made no mention
of who would own the copyright in the program. In relation to the copyright
subsisting in the computer program, which one of the following statements
is CORRECT?
a.Abdul and Excel are joint owners of the copyright.
b.Excel is the sole owner of the copyright at law as Excel paid Abdul to write the
program.
c.Abdul is the owner of the copyright at law but the courts may be prepared to
grant beneficial ownership or an implied license to allow Excel to use the
program.
d.Excel will not be able to use the program until after it has a written assignment
of copyright from Abdul for which Excel will have to pay the market value of the
program
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11. Example
Which one of the following is NOT protected by
copyright?
a.literary works (including computer programs,
preparatory design material for computer programs
and databases).
b.dramatic, musical and artistic works.
c.Titles, names, short phrases, and slogans
d.typographical arrangements of published editions.
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12. Basic principles of copyright
Duration of copyright
Regardless of who the present owner of a copyright is, the
identity of the author is important because the duration of
copyright in original literary, dramatic, musical or artistic works
(not being computer-generated) is determined by the life of the
author, irrespective of ownership.
The copyright in such works lasts for 70 years from the end of the
calendar year during which the author dies.
If the work in question is one of joint authorship (a collaborative
work in which the contribution of each author is not distinct from
that of the other authors), as many computer programs and other
computer works are, the 70-year period starts to run from the end
of the calendar year during which the last surviving author dies.
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13. Example
The duration for database right is
a.70 years.
b.15 years
c.20 years.
d.50 years.
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14. Basic principles of copyright
Restricted acts
Copyright functions by granting specific rights to the owner of the
work: only the copyright owner is allowed to perform, or authorize
others to perform, certain types of activity in relation to the
copyright work. These activities are referred to as the acts
restricted by copyright.
a)to copy the work;
b)to issue copies of the work to the public;
c)to rent or lend the work to the public;
d)to perform, show or play the work in public;
e)to communicate the work to the public;
f)to make an adaptation of the work or do any of the above in relation
to an adaptation.
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15. Basic principles of copyright
Infringement
Apersoninfringesthecopyrightinaworkifhedoesoneoftheserestrictedacts,
orauthorizesanothertodooneoftheacts,inrelationtoasubstantialpartofthe
workwithoutthepermissionofthecopyrightownerandsuchapersonmaybe
suedbythecopyrightowner(oranexclusivelicenseeoftheownerorevena
non-exclusivelicenseewhohasbeengrantedarightofactionbytheowner)for
theinfringement.
Theindependentcreationofaworkwhichhappenstobesimilartoanexisting
workdoesnotinfringethecopyrightinthatexistingwork.Whetherthepart
takenissubstantialisaquestionoffactbutonceitisacceptedthatthe
defendant’sworkwascopiedfromthatoftheclaimant,itisnolongerrelevantto
considerthedifferencesbetweenthetwoworks(todosowouldbetorevisitthe
questionofwhethercopyinghadtakenplace).
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16. Basic principles of copyright
To prove copyright infringement by copying, all the
following four questions must be answered in the
affirmative:
Is the claimant’s work protected by copyright?
Has the claimant the entitlement to sue, for example, as
the owner of the copyright or a licensee with entitlement
to sue?
If so, has the defendant copied from the claimant’s work?
If so, does that part of the claimant’s work copied
represent a substantial part of the claimant’s work?
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17. Patent
Patents are granted for new, non-obvious inventions that have
an industrial application.
A patent is a very desirable form of intellectual property
because it gives to the owner a monopoly in his invention,
enabling him to exploit the invention for a number of years to
the exclusion of all others (subject to provisions designed to
prevent abuse of the monopoly granted)
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18. Patent
The availability of patents for software inventions has
been, and continues to be, a subject of some
controversy. A particular problem is that under the
European Patent Convention (‘EPC’), computer
programs, as such, are excluded from the meaning of
‘invention’.
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19. Patent
Basic considerations
There are two types of patentable invention
a product invention and a process invention
A patentable invention could relate to a new piece of
computer hardware such as a new and inventive storage
medium or a new process for making integrated circuits
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20. Patent
Procedure
the procedure for obtaining a patent is as follows:
1.The application is filed together with a specification
describing the invention, an abstract (the title for the
invention and concise summary) and the claims
(defining the scope of the monopoly claimed). Drawings
will usually be included in the specification.
2.The Patent Office will carry out a search for patents and
other documents which may be relevant to the
invention. Typically, this will find previous patents in the
same field which might have a bearing on the
patentability of the invention. It is common for the
application to be amended following the search.
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21. Patent
3.Eighteen months following the first filing of the patent it is
published. This is referred to as ‘A’ publication.
4.The Patent Office examiners then carry out an extensive
examination of the patent application to check for conformity
with the requirements of the Patents Act. Again, some
amendments may be necessary at this stage, though it
should be noted that the monopoly claimed cannot be
widened.
5.Finally, the patent will be granted (all being well) and it will
be published again –‘B’ publication.
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22. Patent
Basic requirements
Not all inventions are capable of supporting a patent
The basic requirements for the grant of a patent are stated in the
Patents Act as follows:
A patent may be granted only for an invention in
respect of which the following conditions are satisfied,
that is to say:
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by
subsections (2) and (3) below . . .
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23. Patent
Section 1(2), referred to in (d) above, declares that
certain things are not inventions if the application
relates to that thing as such.
Section 1(3) excludes from patentability inventions
where the commercial exploitation of them would be
contrary to public policy or morality.
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24. Patent
Invention
The word ‘invention’ is not defined in the Act but its
meaning is really a matter of common sense and it can
be used in a fairly wide sense.
It is, in effect, circumscribed by the other requirements
and exclusions for patentability.
Industrial application suggests that an invention is
something that can be put to practical use, for example. It
has to be more than a mere idea.
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25. Patent
The following (amongst other things) are not inventions for the purposes of
the Act:
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 any mental act, playing a
game or doing business, or a program for a computer;
d.the presentation of information;
but the foregoing provision shall prevent anything from being treated as
an invention for the purposes of this Act only to the extent that a patent or
application for a patent relates to that thing as such [emphasis added].
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26. Patent
The exclusions in (a) would prevent Einstein patenting his law of
relativity, E = mc
2
and Newton his law of gravity. In any case these
would not be patentable because any claim to them, as such, would
be too vague.
Patents are directed to industrial or commercial activity and laws and
theories on their own do not relate to such activities.
Note that the above exclusions apply only to the extent that a
patent or application for a patent relates to that thing as such.
This means that the presence of these particular things is not
necessarily fatal to a patent application.
For example, a new and inventive computer-controlled industrial
process being a means of operating a production line used in a
manufacturing process should be patentable providing the claims
are not directed to the computer programs as such.
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27. Patent
Novelty
A patent should not be granted for anything which is not new,
something which is already in the public domain, otherwise the
grant of the patent could make illegal an act which was
previously legal.
For example, if a company has been making integrated
circuits by a special process for several years but failed to
apply for a patent, a second company which uses the
same process, perhaps coincidentally, and applies for a
patent for the process will be refused a patent on the
grounds that the invention is not new unless the first
company’s use of the process was not such as to make it
available to the public.
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28. Patent
Inventive step
By the Patents Act, an invention involves an inventive
step if it is not obvious to a person skilled in the art.
This test, known as the ‘notional skilled worker test’, takes
account of the complexity of technology, hence the
reference to a skilled person rather than the ubiquitous
reasonable person, so often used as a benchmark by
judges.
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29. Patent
Industrial application
Another requirement for the grant of a patent is that the
invention must have an industrial application but this is
widely defined by the Patents Act which states that the
invention must be capable of being made or used in any
kind of industry, including agriculture.
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30. Patent
Infringement
A patent is infringed if a person does one of certain things in relation to
the invention without the permission of the proprietor (owner) of the
patent.
The nature of the infringement depends on whether the invention is a
product (for example, a new type of computer printer) or a process (for
example, a new method of making integrated circuits).
If the invention is a product, the patent is infringed by making, disposing
of or offering to dispose of, using, importing or keeping the product.
Similar provisions apply to a process: for example, using the process
infringes but, additionally, the patented process may be infringed by
using or disposing of, etc. any product obtained directly from that
process.
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31. Patent
Another difference between products and processes relates to the
knowledge of the infringer. For a process, knowledge that a patent is
being infringed is required.
However, ‘knowledge’ is used in a special way and a person can still be
deemed to have the requisite knowledge if it would be obvious to a
reasonable person that a patent was being infringed.
There is no requirement for knowledge as regards a product and,
therefore, in the absence of a defence, liability for infringement is strict.
A patent is also infringed if a person supplies or offers to supply some
other person with any of the means, relating to an essential element of
the invention, for putting the invention into effect.
Knowledge is required in that the person supplying knows, or it is obvious
to a reasonable person, that those means are suitable for putting the
invention into effect and that person so intends.
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32. Patent
Certain matter is excluded from patentability if the
patent or the application for a patent relates to that
thing as such. Which one of the following statements
is CORRECT regarding that exclusion?
a.The matter is not an invention
b.The matter is deemed not to involve an inventive
step.
c.The matter is not patentable on the basis that it is
contrary to public policy.
d.The matter is not capable of industrial application.
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33. Example
An inventor A has invented a new type of computer chip,
which works in a different and inventive way compared with
prior art chips, and A has also invented a new process which
will be used for making those chips. He has taken out patents
for the process and for the chips. B finds out about the
process and decides to build a similar process for making
these computer chips. B asks C to supply equipment which is
essential to the process. B then makes some computer chips
and sells them to D, a trade supplier. Discuss the position of
infringement relative to patentability of the computer
chips.
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34. Patent
The position is:
B, if he knows, or it would be obvious to a reasonable man, that the
process was patented, has infringed the patent for the process.
Even if B had no actual knowledge it would be most likely that he
would be fixed with knowledge on the basis of the reasonable
person test. (Patent specifications are available for public
inspection –would a reasonable person check first?)
B has infringed the patent for the computer chips even if he did not
know or could not be expected to know of the patent. C has
infringed the patent for the process if he knows, or it would be
obvious to a reasonable person, that the equipment he supplied
was suitable for putting the process into effect and the equipment
was intended to do so.
D infringes the patent for the computer chips, regardless of
knowledge.
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35. Trade Marks
Marks have been used to identify the makers of
goods for thousands of years. Individual marks
become associated with a particular product and
with the quality of that product.
As regards the value of a trade mark to a trader
(for example, a manufacturer of goods or a
provider of services), two factors are important:
the buying public’s familiarity with the mark and
its experience of reasonable quality or value for
money in the past associated with the mark.
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36. Trade Marks
A trade mark which is used with a successful
product, is of tremendous value to the owner of the
mark and he will want to prevent others from using
the mark or a similar one to capture some of his
trade.
From the perspective of a consumer, the association
between a trader (referred to as an ‘undertaking’ in
the legislation) and his goods or services allows the
consumer to repeat a buying experience that has
proved positive or to avoid repeating one that has
proved unsatisfactory.
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37. Trade Marks
The primary function of a trade mark is to
distinguish the goods or services of one trader
from those of other traders, that is, to act as a
‘badge of origin’.
By fulfilling this function, trade mark law serves two
main purposes:
first it protects the goodwill and reputation which a
trader has built up around the mark involved and,
second, it prevents the public from being deceived as
to the origin of goods or services.
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38. Trade Marks
Trade mark law establishes a property right in the
mark in question and requires that the mark be used
(failure to use a mark for five or more years may
result in it being revoked).
Registered trade marks are a vital part of the
intellectual property rights of most commercial and
industrial undertakings.
Protection of a trade mark by registration can be
obtained by applying for a registered trade mark
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39. Trade Marks
Trade marks for computers and software may be
registered in Class 9 which includes data processing
equipment and computers.
A person providing services by designing and developing
computer hardware and software would register a mark in
Class 42 which includes installation, maintenance and
repair of computer software, computer consultancy
services, website design and keeping registers of domain
names.
Providing access to internet or portal services is covered
in Class 38 which applies to telecommunications.
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40. Trade Marks
If anyone else uses the mark, or one deceptively
similar, in the course of trade without the owner’s
permission, that person can be sued for infringement
of the trade mark. Depending on the circumstances,
a criminal offence may also be committed.
The remedies available to the owner of the trade
mark are as usual: injunctions, damages or an
account of profits as an alternative to damages, plus
removal of offending marks.
The infringing articles may be ordered to be
destroyed if the offending marks cannot be removed.
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41. Trade Marks
In the computer industry, the power of trade marks
can readily be seen as, in a relatively short space of
time, names such as ‘Apple’, ‘IBM’, ‘Oracle’, ‘Java’,
‘Windows’ and ‘Microsoft’ became very well-known
names.
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42. Trade Marks
Registration of a trade mark
Initial registration of a trade mark is for 10 years and
the renewal period is also 10 years.
There is no upper limit to the duration of a trade mark,
which can be renewed again and again providing it is
still used.
A trade mark that has not been used for a period of five
years is vulnerable to revocation.
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43. Trade Marks
What is a trade mark?
By the Trade Marks Act, a trade mark is:
. . . any sign capable of being represented graphically
which is capable of distinguishing goods or services of
one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words
(including personal names), designs, letters, numerals or
the shape of goods or their packaging.
It allows the registration of colours, sound and shape
marks, providing the basic requirements for registrability
are satisfied.
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44. Trade Marks
Unregistrabletrade marks
The fundamental purpose of a trade mark is to
distinguish goods or services of one undertaking from
those of other undertakings.
In other words the mark must serve as an indicator of
trade origin. If it does not do this, it is not registrable.
For example, ‘TARZAN’, ‘ELVIS’ and ‘ELVIS PRESLEY’
were held to be unregistrable.
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45. Trade Marks
Apart from the basic requirement that a trade mark
must serve as a badge of origin, by being capable of
being represented graphically and capable of
distinguishing the goods or services of one
undertaking from those of other undertakings, there
are two types of grounds for refusal of registration –
absolute grounds and relative grounds –the latter
being so called because refusal depends on the
mark’s similarity with other marks.
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46. Trade Marks
Rights and infringement
For the purposes of infringement, a person is taken to
use a sign in a number of situations including fixing it to
goods or their packaging, offering or supplying
services, offering or exposing goods for sale, importing
or exporting under the sign or using it on business
papers or in advertising.
Using a sign identical to a registered trade mark in
relation to identical goods or services infringes per se.
Where there is not complete identity of the sign and the
registered trade mark and the goods or services then
infringement depends on the existence of a likelihood
of confusion.
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47. Example
Which one of the following trademarks CANNOT be
registered as a trade mark?
A new and distinctive computer icon for computer
software.
‘MEDCORPS’ (a made up word) for a website carrying
health information.
The domain name ‘tesco.com’ for a variety of foodstuffs
and goods found in a typical supermarket.
The smell of mountain dew applied to a laptop computer
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48. END
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