ACC Europe 2007 Annual Conference: The Growing Role of In-house Counsel:

Lawyers as Business Partners3-5 June 2007 Bayerischer Hof Hotel,

Munich, Germany

903 Recent Developmentsin IPR Law

Therese Catanzariti, Senior Legal Counsel

GE Healthcare, Finland

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

you can see and touch a factory

you can see and touch a computer

IPR is intangible

open your eyes – its all around you

but don’t look in balance sheet / corporate records

its not nicely wrapped up in a licence agreement

YOU have to identify and document IPR

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Marimekko

t-shirts

caller ID on

Nokia phone

Kone method for

installing an

elevator

IPR

Elektrobit tool to

test radio

frequency devices

Alvar

Aalto

vaseF-Secure virus

protection

software

UPM paper

mill quality

control

systemsFinlandia Vodka

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

how does the business use the IP

Does the business manufacture / buy / sell

products / services incorporating the IP?

Does the business use the IP to manufacture / buy /sell other products / services

Does the business manufacture / buy / sell productsand services by associating the IP with products /

services

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Does the business manufacture / buy / sell

products / services incorporating the IP?

is the IP the actual product / service”

does the product / service include the IP’s actualexpression – copy the actual words and pictures

OR

does the product / service include the IP’sunderlying ideas

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Actual expression

COPYRIGHT

books

artwork / plans / logos

software

training videos

DESIGN

PATENT

Ideas / functions

drugs

cosmetics

machines

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

has the

exclusive

right to

the

COPYRIGHT

OWNER

reproduce

prepare derivatives

assignee

employer

authorliterary

COPYRIGHT

WORKS

commission

“work for hire”

RIGHTS

display publicly

distribute

perform publicly

musical

dramatic

choreagraph

pictorial /

graphic

motion

picture

sound recording

architectural

USA

COPYRIGHT

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

has the

exclusive

right to

theCOPYRIGHT

OWNER

copy

moral rights (authors)

assignee

employer

authorliterary

COPYRIGHT

WORKSRIGHTS

communicate to

public

distribute / issue copies

perform / show / play publicly

musical

dramatic

broadcasts

artistic

films

sound recording

EUROPE

COPYRIGHT

make adaptations

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

has the

right to

stop

others

theREGISTERED

PATENT

OWNER

making

offering for sale

assignee

employer

inventor

process

INVENTIONRIGHTS

importing

using

selling

machine

manufacture

composition

of matter

PATENT

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Marimekko

t-shirts

COPYRIGHT

caller ID on Nokia

phone

PATENT

US # 6,233,450

Kone method for

installing an

elevator

IPR

Elektrobit tool to

test radio frequency

devices

Alvar

Aalto

vase

DESIGN

F-Secure virus

protection

software

COPYRIGHT

UPM paper mill

quality control

systemsFinlandia Vodka

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Does the business use the IP to manufacture /

buy / sell other products / services

does the business use the IP as a tool?

does the business use the IP process?

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

TRADE SECRETS

Know how

Marketing Data

Business methods

Industrial processes

Computer manuals

Work manuals

Customer lists

PATENTS

Industrial processes

Machinery

Methods

Design tools

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

has the

right to

stop

others

theREGISTERED

PATENT

OWNER

making

offering for sale

assignee

employer

inventor

process

INVENTIONRIGHTS

importing

using

selling

machine

manufacture

composition

of matter

PATENT

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

has the

right to

enjoin /

seek

damages

for

ofOWNER OF

TRADE

SECRET

assignee

creatornon-technical data

TRADE

SECRETS

MISAPPROPRIATON

using without consent

if acquired / should

know acquired

through improper

means formula

compilation

technique

disclosing without

consent if acquired /

should know acquired

improper means

pattern

technical data

program device

method

drawing

process

financial data

customer lists

acquiring when know / should

know acquired by improper

means

USA

TRADE

SECRETS

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

cannot

use

forOBLIGATION OF

CONFIDENCE

person know or

ought to know

confidential

government

CONFIDENTIAL

INFORMATION

person

with

UNAUTHORISED

PURPOSE

commercial

(including trade

secrets)

personal

relationship of

confidence

trespasser

ENGLAND

BREACH OF

CONFIDENCE

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Marimekko

t-shirts

caller ID on

Nokia phone

Kone method for

installing an

elevator

PATENTUS App # 20050150728

IPR

Elektrobit tool

to test radio

frequency

devices

PATENTUS App # 20050282502

Alvar

Aalto

vaseF-Secure virus

protection

software

UPM paper mill

quality control

TRADE

SECRET

Finlandia

Vodka

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

difference using and incorporating / including IPR

owning copyright in a manual / book gives the owner theexclusive right to copy or distribute the manual / book

NOT the exclusive right to use the facts / ideas in themanual / book

the information in the manual / book is ideas

Can only protect ideas through trade secrets

NOT copyright

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Does the business manufacture / buy / sell

products and services by associating IP with

other products / services

brands

image

personal endorsement

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

TRADE MARK

words

logo

colour

shape

sound

scent

UNFAIR COMPETITION/ PASSING OFF

unregistered words

unregistered logo

image

get-up

gestalt / identity

PERSONALITY RIGHTS

name (inc nicknames)

image (photo, drawing)

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

in

connection

with

which

causeTRADEMARK

wordconfusionadvertising

distribution

sale/ offering for sale

mistake

deceptionregistered

owner can

prevent use

in commercedilution of distinctive

quality

(only famous marks)any commercial use

(only famous marks)

phraselogo

colour

scent

shape

sound

USA

TRADEMARK

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

TRADEMARK

word

SAME mark

on same

registered

goods /

services

trade

symbol

USED AS A

TRADEMARK

registered

owner can

prevent

used to

distinguish

goods and

services from

other goods

and services

phrase

logo

colour

scent

shape

sound

EUROPE

TRADEMARK

which

is

SIMILAR mark on

goods /services

similar to registered

goods / services

WELL-KNOWN

mark on any

goods / services

owner’s interests

damaged /

detrimental to

mark’s

distinctive

character

likelihood

of

confusion

ACC Europe 2007 Annual Conference: The Growing Role of In-house

Counsel: Lawyers as Business Partners

3-5 June 2007 Bayerischer Hof Hotel

Munich, Germany

Marimekko

t-shirts

caller ID on

Nokia phone

Kone method for

installing an

elevatorIPR

Finlandia Vodka

Alvar Aalto

vase

F-Secure virus

protection

software

UPM paper

mill quality

control

Elektrobit tool to

test radio

frequency

devices