Transcript Overview of Intellectual Property Leanne Wiseman Senior Lecturer Faculty of Law QUT What is Intellectual Property? • • • • • • • Copyright Patents Trade Marks Designs Breach of Confidence/Trade Secrets Passing Off/S 52 Trade Practices.

Overview of Intellectual Property
Leanne Wiseman
Senior Lecturer
Faculty of Law
QUT
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What is Intellectual Property?
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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:
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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
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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
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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 it
2. 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
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Passing Off
1. 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’
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