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Overview of Intellectual Property

Leanne Wiseman

Senior Lecturer

Faculty of Law

QUT

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What is Intellectual Property?

• Copyright

• Patents

• Trade Marks

• Designs

• Breach of Confidence/Trade Secrets

• Passing Off/S 52 Trade Practices Act

• Sui Generis regimes eg Circuit Layouts Act

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Copyright

• A right to prevent copying

• Protects the expression not the underlying idea

• Provides protection to the author for life plus 50 years (in EU and US life + 70 years)

• No registration system

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Copyright

• Protects ‘works’ eg literary work (includes computer program, tables and compilations) artistic, dramatic and musical works

• ‘Computer program means a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result’

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Copyright

• Protects ‘subject matter other than works’ eg films, broadcasts, sound recordings

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Copyright

• To gain copyright protection, the work:– Needs to be original– In a material form – Needs to have a connection to Australia

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Rights of Copyright Owners

• Right to reproduce, to make adaptations, translate as well as the right to control the commercial rental of a computer program, etc

• ‘adaptation ‘ is defined in relation to computer programs as being ‘ a version of the work (whether or not in the language,code or notation in which the work was originally expressed), not being a reproduction of the program

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Rights of Copyright Owners

• New provision that makes it clear that a computer program is deemed to be reproduced when the source code is compiled into object code or when the object code is decompiled into source code

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Rights of Copyright users

• Fair dealing defences:– For research or study

– For criticism or review

– For reporting of the news

– For provision of legal services

• There are limits on the amount that may be copied • Rights under licence agreements or with

permission

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Rights of Copyright users – computer programs

• Specific defences for certain uses of computer programs eg– While running a copy of the program in a

computer for the purposes for which the program was designed

– while running a copy of the program in order to study the ideas behind it and the way it functions (eg black box reverse engineering)

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Rights of Copyright users – computer programs

– To make a backup copy of the program if original is lost or becomes unsuitable

– As part of the normal backup copying of data for security purposes

Also excludes from infringement:– Obtaining information necessary to

independently create another program or a device to interoperate with the original program or any other program

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Rights of Copyright users – computer programs

– Correcting an error…provided a correctly functioning copy is not available within a reasonable time at an ordinary commercial price

– Testing in good faith the security of the original program

– NB: Any attempt to contract out of the new exceptions will be void

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Patents

• Patents are a monopoly right

• Patents need to be registered

• Term of protection : 20 years

• Two types: Standard Patents and Petty Patents (Innovation Patent)

• Disclosure of invention may defeat the claim

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Patents

• To be registered, you need to have:– ‘Invention’– Novel– Inventive/non-obvious

• Human beings, and their biological processes for their generation are not patentable processes

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Patents

• Other requirements for validity:– Utility– Sufficiency of specification

• Scope of monopoly determined by the claims

– Ambiguity and fair basing

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Patent Protection

• ‘Invention’ means any manner of new manufacture..

• Was difficult to patent computer programs as they often involved mathematical algorithms and therefore were not a manner of manufacture

• Patents for software were also rejected as being ‘mischievous to the state and generally inconvenient

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Patents

• Since 1991, patents can be granted for inventions involving computer software

• Patent Office Guidelines: – A process…must be one that offers some

advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art…that its value is in the field of economic endeavour

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Patents

– In relation to computer software: ‘whether there is a mode or manner of achieving an end result which is an artificially created state of affairs of utility in the field of economic endeavour?’

– Such a ‘mode or manner will usually include:• Source code irrespective of the form in which it is

presented; an executable code …which is in a machine readable form; and a computer, when programmed to achieve any result which has utility in the field of academic endeavour

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Patents

• Novelty – reverse infringement test– worldwide test of novelty against the prior art

• Inventiveness– Assessed against what is common general

knowledge to a skilled person working in the art (in Australia)

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Rights of Patent Holder

• Patentee has the right to ‘exploit’ the invention– Make– Vend – Sell– Hire– import

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Patents

• Terms of protection: 20 years

• Pharmaceuticals: 5 year extension possible

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Patents

• Exemptions from Infringement:– Use on board a foreign vessel…that comes

temporarily into Australia– Where the invention is already in use

immediately before the priority date of a claim– Non-infringement declaration

– Groundless threats to sue

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Trade Marks

• Trade Marks are a monopoly right

• Has a registration system

• Term of protection: can be perpetual (if fees are paid)

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Trade Marks

• To be registered:– A trade mark is a ‘sign’ used or intended to be

used, to distinguish goods or services… – ‘sign’= words, logos, devices, sounds, shapes

scents, smells…

• Term: 10 years renewable

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Designs

• Designs are a monopoly right

• Often used in conjunction with copyright and/or patents

• Term of protection: 16 years

• Likely to be reform of Designs Law in the near future

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Designs

• To be registered, a design must have– features of shape, configuration, pattern or

ornamentation– Visual to the eye– Applied to an article– Cannot be a method or principal of construction– Must be novel or original

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Breach of confidence

• To whom does the information belong?1. Information must have the necessary

quality of confidence about it2. Information must be imparted in

circumstances importing an obligation of confidence

3. Must be an unauthorised use to the detriment of the party communicating it

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Passing Off/s 52 TPA

• Passing Off1. Reputation/Goodwill

2. Deceptive conduct on the part of the defendant

3. Existence or threat of damage as a result of the deception

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s 52 Trade Practice Act

• A corporation shall not, in trade of commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.– Similar provision in Fair Trading Act but

relates to conduct of persons

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Sui Generis Regimes

• Circuit Layouts Act 1989 (Cth)

‘Circuit layout’ is a ‘representation, fixed in any material form, of the three-dimensional section of the active and passive elements and interconnections making up an integrated circuit’