Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0018
Stavroula Karapapa, Luke McDonagh
This chapter explores the infringement of patents. In the United Kingdom, s. 60 of the Patents Act is the key provision on direct patent infringement. The patentee will have to show two things: first, that one or more infringing acts have been committed within the United Kingdom, and second, that the defendant's conduct falls within the scope of protection afforded to the patent, i.e. within the literal or purposive meaning of the claims. By way of response, the defendant to a patent infringement action can raise a number of different arguments. It can deny that the claimant has established the elements of the infringement action by showing that no infringing conduct has been committed, or even if it has, that the defendant's product or process is not within the meaning of the claims. The Patents Act defines infringing conduct in s. 60. One critical aspect is that it must involve some sort of commercial activity.
{"title":"18. Infringement of patents","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0018","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0018","url":null,"abstract":"This chapter explores the infringement of patents. In the United Kingdom, s. 60 of the Patents Act is the key provision on direct patent infringement. The patentee will have to show two things: first, that one or more infringing acts have been committed within the United Kingdom, and second, that the defendant's conduct falls within the scope of protection afforded to the patent, i.e. within the literal or purposive meaning of the claims. By way of response, the defendant to a patent infringement action can raise a number of different arguments. It can deny that the claimant has established the elements of the infringement action by showing that no infringing conduct has been committed, or even if it has, that the defendant's product or process is not within the meaning of the claims. The Patents Act defines infringing conduct in s. 60. One critical aspect is that it must involve some sort of commercial activity.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"8 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"90349685","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0022
Stavroula Karapapa, Luke McDonagh
This concluding chapter explores the means available to the owner of an intellectual property (IP) right — whether a patent, trade mark, design, or copyright — to obtain redress for infringement. The law's exclusionary effect typically occurs by means of the claimant IP owner obtaining one or more remedies from a court against the defendant(s). Common remedies include injunctions and monetary compensation in the form of damages/accounts of profit. It is crucial to comprehend that the court, when granting remedies, attempts to strike a balance between the IP holder's rights and the principles of free competition. The chapter then considers the contexts in which IP rights are enforced and what remedies are available to a claimant before the full trial occurs, and what remedies are available to a successful claimant after there has been a substantive court ruling on infringement. It also looks at the problem of counterfeiting.
{"title":"22. Civil and criminal remedies","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0022","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0022","url":null,"abstract":"This concluding chapter explores the means available to the owner of an intellectual property (IP) right — whether a patent, trade mark, design, or copyright — to obtain redress for infringement. The law's exclusionary effect typically occurs by means of the claimant IP owner obtaining one or more remedies from a court against the defendant(s). Common remedies include injunctions and monetary compensation in the form of damages/accounts of profit. It is crucial to comprehend that the court, when granting remedies, attempts to strike a balance between the IP holder's rights and the principles of free competition. The chapter then considers the contexts in which IP rights are enforced and what remedies are available to a claimant before the full trial occurs, and what remedies are available to a successful claimant after there has been a substantive court ruling on infringement. It also looks at the problem of counterfeiting.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"51 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"85124251","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0009
Stavroula Karapapa, Luke McDonagh
This chapter studies trade marks, considering the historical uses of trade marks and the development of UK trade mark law. The way in which trade marks are used has, in some ways, changed little, even though trading conditions today are far removed from those of previous times. Although medieval use was primarily to guarantee quality, use since the Industrial Revolution has been to tell the consumer about the origin of the goods. Meanwhile, the legal history of trade marks shows that the principles articulated in the early cases continue to influence today's law. There is the perennial concern that trade marks create unfair monopolies. The chapter then looks at the commercial functions fulfilled by trade marks in the age of the consumer, with the objective of showing the dilemma inherent in trade mark law. It also examines how EU reforms have impacted on domestic trade mark law.
{"title":"9. Trade marks","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0009","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0009","url":null,"abstract":"This chapter studies trade marks, considering the historical uses of trade marks and the development of UK trade mark law. The way in which trade marks are used has, in some ways, changed little, even though trading conditions today are far removed from those of previous times. Although medieval use was primarily to guarantee quality, use since the Industrial Revolution has been to tell the consumer about the origin of the goods. Meanwhile, the legal history of trade marks shows that the principles articulated in the early cases continue to influence today's law. There is the perennial concern that trade marks create unfair monopolies. The chapter then looks at the commercial functions fulfilled by trade marks in the age of the consumer, with the objective of showing the dilemma inherent in trade mark law. It also examines how EU reforms have impacted on domestic trade mark law.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"1 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"89565738","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0004
Stavroula Karapapa, Luke McDonagh
This chapter focuses on the two types of copyright infringement within the CDPA 1988: primary infringement and secondary infringement. In primary infringement, the defendants are directly involved in copying, performing, and issuing to the public the copyright work, whereas secondary infringement involves people who deal with infringing copies, or facilitate such copying or other activities that are restricted by copyright. Besides this difference that has to do with the scope of rights, there is also difference on the mental element. Unlike primary infringement that does not require knowledge or intention to infringe on the part of the alleged infringer and is hence subject to strict liability, secondary infringement occurs where the defendant knew or had reason to believe that activities in question are wrongful. This is assessed on the basis of an objective test, namely what matters is what a reasonable person would have thought in the relevant circumstances.
{"title":"4. Infringement of copyright","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0004","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0004","url":null,"abstract":"This chapter focuses on the two types of copyright infringement within the CDPA 1988: primary infringement and secondary infringement. In primary infringement, the defendants are directly involved in copying, performing, and issuing to the public the copyright work, whereas secondary infringement involves people who deal with infringing copies, or facilitate such copying or other activities that are restricted by copyright. Besides this difference that has to do with the scope of rights, there is also difference on the mental element. Unlike primary infringement that does not require knowledge or intention to infringe on the part of the alleged infringer and is hence subject to strict liability, secondary infringement occurs where the defendant knew or had reason to believe that activities in question are wrongful. This is assessed on the basis of an objective test, namely what matters is what a reasonable person would have thought in the relevant circumstances.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"13 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"87257789","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0010
Stavroula Karapapa, Luke McDonagh
This chapter discusses the registration of trade marks. Unlike passing off protection that is not subject to formalities, trade marks ought to be registered in order to receive legal protection. Whether a trade mark is capable of registration depends on three requirements. First, whether the subject matter of the application satisfies the definition of ‘trade mark’ in s. 1 of the Trade Marks Act 1994; second, whether there are any objections to the application under the absolute grounds for refusal in s. 3; and third, whether there are any prior rights which could prevent registration under the relative grounds for refusal in s. 5. The chapter then presents an outline of the registration procedure. In essence, the procedure can be broken down into six steps: application and filing of Form TM3; examination; search and notification of prior rights; publication and notification to owner(s) of prior rights; opposition; and registration.
{"title":"10. Registration of a ‘sign’","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0010","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0010","url":null,"abstract":"This chapter discusses the registration of trade marks. Unlike passing off protection that is not subject to formalities, trade marks ought to be registered in order to receive legal protection. Whether a trade mark is capable of registration depends on three requirements. First, whether the subject matter of the application satisfies the definition of ‘trade mark’ in s. 1 of the Trade Marks Act 1994; second, whether there are any objections to the application under the absolute grounds for refusal in s. 3; and third, whether there are any prior rights which could prevent registration under the relative grounds for refusal in s. 5. The chapter then presents an outline of the registration procedure. In essence, the procedure can be broken down into six steps: application and filing of Form TM3; examination; search and notification of prior rights; publication and notification to owner(s) of prior rights; opposition; and registration.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"24 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"82818769","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0021
Stavroula Karapapa, Luke McDonagh
This chapter examines dealings in intellectual property (IP) rights. Given the economic importance of IP rights, it is necessary to understand how IP dealings — or transactions — work. The starting point for considering IP transactions is a simple principle — there is a distinction between being the author/creator of the underlying work, invention, mark, or design and being the owner of the right. For this reason, being the author/creator does not necessarily mean that one will always have the ability to enter into transactions with others concerning the work, design, invention, or mark. Generally, it is owners, or their agents/trustees, who will have the power to engage in IP transactions. There are two basic forms of IP dealings: assignment, and licensing. An assignment involves the outright transfer of ownership from the current owner to the new owner. By contrast, a licence is a mere permission to use the IP right.
{"title":"21. Dealings in intellectual property rights","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0021","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0021","url":null,"abstract":"This chapter examines dealings in intellectual property (IP) rights. Given the economic importance of IP rights, it is necessary to understand how IP dealings — or transactions — work. The starting point for considering IP transactions is a simple principle — there is a distinction between being the author/creator of the underlying work, invention, mark, or design and being the owner of the right. For this reason, being the author/creator does not necessarily mean that one will always have the ability to enter into transactions with others concerning the work, design, invention, or mark. Generally, it is owners, or their agents/trustees, who will have the power to engage in IP transactions. There are two basic forms of IP dealings: assignment, and licensing. An assignment involves the outright transfer of ownership from the current owner to the new owner. By contrast, a licence is a mere permission to use the IP right.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"44 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"79956735","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/he/9780198747697.003.0017
Stavroula Karapapa, Luke McDonagh
This chapter addresses the criteria for patentability; in other words, the rules patent examiners and courts use to decide if a patent is valid or not. These criteria are also useful in the context of an infringement action, because a defendant may make a counter-claim to revoke the claimant's patent for invalidity on the basis of one of the criteria. The patentability of an invention is defined by Articles 52–57 of the European Patent Convention. The criteria comprise five core elements: three positive and two negative. In terms of the positive requirements, for an invention to be patentable, it must possess novelty; inventive step; sufficiency and support; and industrial applicability. Regarding the negative criteria, the invention must not consist of excluded subject matter, and it must not fall afoul of any of the exceptions to patentability.
{"title":"17. Patentability","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/he/9780198747697.003.0017","DOIUrl":"https://doi.org/10.1093/he/9780198747697.003.0017","url":null,"abstract":"This chapter addresses the criteria for patentability; in other words, the rules patent examiners and courts use to decide if a patent is valid or not. These criteria are also useful in the context of an infringement action, because a defendant may make a counter-claim to revoke the claimant's patent for invalidity on the basis of one of the criteria. The patentability of an invention is defined by Articles 52–57 of the European Patent Convention. The criteria comprise five core elements: three positive and two negative. In terms of the positive requirements, for an invention to be patentable, it must possess novelty; inventive step; sufficiency and support; and industrial applicability. Regarding the negative criteria, the invention must not consist of excluded subject matter, and it must not fall afoul of any of the exceptions to patentability.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"7 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"90917827","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0001
Stavroula Karapapa, Luke McDonagh
This introductory chapter provides an overview of copyright protection. It discusses how United Kingdom copyright law has developed from the mid-16th century onward. The purpose of giving this account is to highlight two recurring themes: firstly, the law's struggle to keep up with changing technology; and, secondly, the effect of external influences on domestic law. The chapter then looks at the theoretical justifications for copyright and the extent to which they accord with the current law, and the principal characteristics of copyright, including the crucial difference between protecting an idea and protecting the expression of that idea. There are a number of aspects of copyright that do not apply to other intellectual property rights like patents and trade marks. Understanding these differences will help one in distinguishing between the different types of intellectual property right.
{"title":"1. Introduction to copyright","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0001","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0001","url":null,"abstract":"This introductory chapter provides an overview of copyright protection. It discusses how United Kingdom copyright law has developed from the mid-16th century onward. The purpose of giving this account is to highlight two recurring themes: firstly, the law's struggle to keep up with changing technology; and, secondly, the effect of external influences on domestic law. The chapter then looks at the theoretical justifications for copyright and the extent to which they accord with the current law, and the principal characteristics of copyright, including the crucial difference between protecting an idea and protecting the expression of that idea. There are a number of aspects of copyright that do not apply to other intellectual property rights like patents and trade marks. Understanding these differences will help one in distinguishing between the different types of intellectual property right.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"5 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"79634562","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0008
Stavroula Karapapa, Luke McDonagh
This chapter explores the tort of passing off which protects the goodwill of a trader from misrepresentation. In the United Kingdom, there is no obligation to register a trade mark. Protection has always been available at common law for marks in use, by means of the action for passing off. There are three elements of passing off. First a trader must establish that the trader has a goodwill or reputation attached to the goods or services which the trader supplies. Second, the trader must demonstrate that the defendant has made a misrepresentation leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the claimant. Lastly, the trader must demonstrate that the trader has suffered or is likely to suffer damage by reason of the erroneous belief caused by the defendant's misrepresentation. These three elements are interdependent.
{"title":"8. Passing off","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0008","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0008","url":null,"abstract":"This chapter explores the tort of passing off which protects the goodwill of a trader from misrepresentation. In the United Kingdom, there is no obligation to register a trade mark. Protection has always been available at common law for marks in use, by means of the action for passing off. There are three elements of passing off. First a trader must establish that the trader has a goodwill or reputation attached to the goods or services which the trader supplies. Second, the trader must demonstrate that the defendant has made a misrepresentation leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the claimant. Lastly, the trader must demonstrate that the trader has suffered or is likely to suffer damage by reason of the erroneous belief caused by the defendant's misrepresentation. These three elements are interdependent.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"41 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"90583567","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
Pub Date : 2019-05-13DOI: 10.1093/HE/9780198747697.003.0013
Stavroula Karapapa, Luke McDonagh
This chapter focuses on trade mark infringement, setting out the rights of a trade mark owner to prevent others from making use of any sign which is the same as or similar to the registered mark in the course of trade. A claimant who brings a trade mark infringement action will have to show two things: that an act of infringement has been committed, and that such conduct falls within the scope of protection afforded to the registered mark. Once these two points have been established, the court will normally find in favour of the claimant unless one or more of the counter-arguments raised by the defendant succeeds. A defendant who is sued for trade mark infringement, besides denying that infringement has been made out or raising one of the statutory defences, will usually try to counterclaim that the mark should be revoked or declared invalid.
{"title":"13. Infringement and loss of registration of trade marks","authors":"Stavroula Karapapa, Luke McDonagh","doi":"10.1093/HE/9780198747697.003.0013","DOIUrl":"https://doi.org/10.1093/HE/9780198747697.003.0013","url":null,"abstract":"This chapter focuses on trade mark infringement, setting out the rights of a trade mark owner to prevent others from making use of any sign which is the same as or similar to the registered mark in the course of trade. A claimant who brings a trade mark infringement action will have to show two things: that an act of infringement has been committed, and that such conduct falls within the scope of protection afforded to the registered mark. Once these two points have been established, the court will normally find in favour of the claimant unless one or more of the counter-arguments raised by the defendant succeeds. A defendant who is sued for trade mark infringement, besides denying that infringement has been made out or raising one of the statutory defences, will usually try to counterclaim that the mark should be revoked or declared invalid.","PeriodicalId":88929,"journal":{"name":"Marquette intellectual property law review","volume":"15 1","pages":""},"PeriodicalIF":0.0,"publicationDate":"2019-05-13","publicationTypes":"Journal Article","fieldsOfStudy":null,"isOpenAccess":false,"openAccessPdf":"","citationCount":null,"resultStr":null,"platform":"Semanticscholar","paperid":"89922273","PeriodicalName":null,"FirstCategoryId":null,"ListUrlMain":null,"RegionNum":0,"RegionCategory":"","ArticlePicture":[],"TitleCN":null,"AbstractTextCN":null,"PMCID":"","EPubDate":null,"PubModel":null,"JCR":null,"JCRName":null,"Score":null,"Total":0}
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