INTELLECTUAL PROPERTY LAW - WORLDWIDE

INTELLECTUAL PROPERTY LAW - WORLDWIDE

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  • Jane Lambert
    Jane Lambert    Group moderator
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    UK Law: Introduction
    I thought I would start the ball rolling with a brief introduction to UK intellectual property law.

    The first thing I should say is that there is no such thing as UK law. The UK was created by the union of the kingdoms of Great Britain and Ireland in 1801. Great Britain was itself a union of the kingdoms of England and Wales and Scotland in 1707. Most of Ireland seceded from the UK in 1920 but the heavy industrial area around Belfast remained to form the province of Northern Ireland. Consequently, we now have three systems of law that of England and wales, that of Scotland and that of Northern Ireland.

    Each of those countries had developed its own legal system and these were preserved after the union. The legal systems of England and Wales and Ireland are very similar but that of Scotland is quite different. Scots law was influenced by Roman law as practised on the Continent and in particular the Netherlands to a much greater extent than English and Irish law. Legal terms like "delict" for the law or tort and "interdict" for injunction attest to that influence.

    The hallmark of all three legal systems of the UK is that the basic principles of English and Welsh, Scots and Northern Irish law have been distilled from the reasoning of the judges in deciding cases and not from codifications of civil, commercial and criminal law and civil and criminal procedure. Legislation tends to be specific and it is construed grammatically in England rather than teleologically.

    Turning to the institutions, we have one national legislature which consists of the Queen in Parliament. Parliament consists of an elected lower house to which the executive is answerable and a nowadays largely appointed upper house which has the power to revise, delay and amend but not defeat government proposals for legislation.

    A slightly anomalous feature of our constitution is that Parliament was a court as well as a legislature for much of its history and the upper house (or rather a committee of the senior judges appointed to it sit in it known as "the law lords") constitute the final court of appeal of each of the three legal systems of the UK. That jurisdiction is about to be abolished and the law lords will shortly sit as the first judges of a new Supreme Court for the United Kingdom just as soon as accommodation for that new court can be refurbished.

    Turning now to intellectual property, we cannot claim the first patent which was Venetian but we may be able to claim the first patent legislation, namely the Statute of Monopolies 1623. Actually that was more an antitrust statute which abolished the power of the king to grant monopolies which was we nowadays call a "stealth tax". One of the exceptions was the power under s.6 which permitted:
    " letters patents and grants of privilege for the term of fourteen years or under, hereafter to be made, of the sole working or making of any manner of new manufactures within this realm (c ) to the true and first inventor (d ) and inventors of such manufactures, which others at the time of making such letters patents and grants shall not use (e ), so as also they be not contrary to the law nor mischievous to the state by raising prices of commodities at home, or hurt of trade, or generally inconvenient (f ): the same fourteen years to be acccounted from the date of the first letters patents or grant of such privilege hereafter to be made, but that the same shall be of such force as they should be if this act had never been made, and of none other" (see http://ipmall.info/hosted_resources/lipa/patents/English_Sta...). Patents were very expensive and difficult to get as is exemplified by Charles Dickens's satire "A Poor Man's Tale of A Patent" (see http://etext.library.adelaide.edu.au/d/dickens/charles/d54rp...) until the establishment of the Patent Office in 1852. We also believe that we had the first copyright legislation, namely the Statute of Anne (http://www.copyrighthistory.com/anne.html). Our Trade Marks Registry was established in 1875 with the red triangle of the Bass brewery being the first registered trade mark. The Registry merged with the Patent Office the following year. Textile designs had been protected by registration since 1787 and a design registry was established in 1839. That also merged with the Patent Office in 1875. The Patent Office changed its name to the UK-Intellectual Property Office after being known as the Patent Office for 155 years on 2 April of this year.

    In summary, we protect

    - brands through trade mark and design registration and a judge made system of law called passing off which is not dissimilar to the Continental concept of "unfair competition";
    - original functional designs by an almost unique intellectual property right called "unregistered design right" about which I wrote an article in the IP Patent and TM Group yesterday;
    - new product designs having individual character by design registration;
    - inventions by patents;
    - original artistic, dramatic, literary and musical works, broadcasts, films and sound recordings and published editions by copyright
    - live performances by actors, ballet dancers, musicians, singers and other performers by rights in performances,
    - undisclosed information by the law of confidence which s another judge made set of rules; and
    - new plant and seed varieties by plant breeders rights.

    Unlike most countries in Europe, we do not register utility models though we had a system of functional design registration which was very similar for all intents and purposes until the 1930s. Nor do we have any catchall concept of unfair competition.

    Our government is party to the Paris, Bern and Rome Conventions and the Washington Treaty on Semiconductor Topographies as well as to the European Patent Convention, the WTO Agreement, the Patent Co-operation Treaty and the Madrid Protocol. We are, of course, also a member of the European Union and are actually quite good Europeans when it comes to implementing directives and enforcing Community designs and trade marks.

    We have a specialist Patents Court in England and Wales for patents, registered designs and chip topography cases and a specialist Intellectual Property list in the High Court for all other IP cases. Scotland also has a specialist patents judge though he handles only a fraction of the work of the English judges. No special arrangements for IP work appear to exist in Northern Ireland. Disputes between examiners and applicants for patents and trade marks are referred to tribunals appointed by the Comptroller or Chief Executive of the UK-IPO. These tribunals also have power to determine patent revocation, amendment and theoretically infringement disputes, trade mark oppositions and applications for invalidity or revocation of registered marks and invalidity of designs.

    The one drawback of our system is that infringement litigation is horrendously expensive compared to the rest of Europe. IPAC (the government's high level advisory committee on intellectual property) reported that an average patent case cost about £1 million in the High Court compared to around €50,000 in France, Germany and the Netherlands (page 50 of "The Enforcement of Patent Rights" at http://www.mandyhaberman.com/media/IPAC-18-11.pdf). This is probably because our system of truth finding (known as a "trial") allows the parties to choose the issues to fight and the evidence to call whereas in civil law countries that is a matter for the court. I think that the high cost of enforcement has something to do with the fact that the UK lies behind Germany, France and even Switzerland and the Netherlands (with 1/8th and 1/3rd of our population respectively) in the number of applications for European patents but the grandees in London tell me that a Northern practitioner really doesn't understand these things. Hmmm.......

    For those who want to learn more about our system I have a load of articles, case notes and presentations on my information website at http://www.ipit-update.com and when I get round to it I keep a blog at http://www.nipclaw.blogspot.com. Now will someone write about French, Spanish, Dutch, German, Italian and other countries' laws please.
    • 14 Jul 2007, 9:07 pm