Intellectual Property Law

Sven Jacobs
Associate
Norton Rose Fulbright (Germany) LLP
8. 9.12.2016

Introduction

IP: CHARACTER AND

PURPOSE
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In the age of the knowledge economy, the efficient and

creative use of knowledge is a key determinant of
international competitiveness, wealth creation and
improved social welfare.
An effective intellectual property (IP) system embedded
within a national strategy which anchors IP considerations
firmly within the policy-making process will help a nation to
promote and protect its intellectual assets, thereby driving
economic growth and wealth creation.

Kamil Idris
WIPO Director General

Intellectual Property
Intellectual property means the legal rights which result from
intellectual activity in the industrial, scientific, literary and artistic
fields.
Intellectual property law aims at safeguarding creators and other
producers of intellectual goods and services by granting them
certain time-limited rights to control the use made of those
productions.

Intellectual Property
Immaterial goods are the product of a creative mental human
activity in the industrial, scientific, literary and artistic fields.
Depending on the field in which this creative activity is undertaken,
the resulting immaterial goods can be classified as intellectual
creations (text, music, image), technical inventions and signs used
in commerce.
These intellectual creations are in most cases fixed in some
tangible form, but the object which embodies the intellectual
creation may not be confused with the intellectual creation itself.

The Economic Importance of IPRs

Macro-level:
Patents, innovation and GDP
Copyright in the information society
Micro-level
IP-rights as source of corporate income
IP-rights and income of the inventor / creator

The Rationale for IP Protection

Utilitarian communitarian:

Incentive to create
Protection of the investment made
IP-monopolies a furtherance of competition
Problem: overprotection (tragedy of the anti-commons)

Natural rights individualistic:

Securing inventors and authors income
Works as the authors children (part of his or her personality)

Economic importance
Value of the underlying IP
an invention may have value without IPRs
e.g. protection by being first to market

Value of the IPR to the company

value of the IPR is the difference in value of the IP with and without IPR
protection
the value of IP would be severely eroded in the absence of IPRs
incentive to invent or maintain quality would be severely undermined

IP: SIMILARITIES AND

DIFFERENCES
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Similarities of IPRs
Conditions for protection
Ownership of rights
Rights granted
Limitations to the rights granted
(Duration)

Remedies

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Differences of IPRs
Object of protection
Technical inventions: patent law
Signs in commerce: trademark law
Creative works: copyright law
Obtaining protection / origination:

Registration rights: Patents, trademarks (most), Designs (most)

Non-registration rights: Copyright incl. neighboring rights
Duration of protection:
Limited in time: patents, copyright
(Potentially) unlimited: trademarks
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IP Registration
Rules how to apply and register
In international relations, an additional set of rules is
needed in order to (a) set up a procedure which enables
applicants to obtain registration rights in more than one
country with only one central registration, (b) create an
international classification system, and (c) to clarify the
relationship between foreign and national applications.

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IP Licensing
Starting point: initial ownership of the IP right with author,
inventor etc.
Employer, commissioning party need rights assigned or
transferred from initial owner
Similarly: rightholder grants use rights to producers and/or
distributors
Licensing modes: exclusive ./. non-exclusive
Scope of rights transferred: all rights ./. restricted uses
Payment models: lump sum ./. participation

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IP: INFRINGEMENT AND

REMEDIES
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Infringement & Remedies

If a third party is interfering with intellectual property the most
important actions a proprietor is entitled to are:
Cease and desist (including preliminary relief)

Recall / destruction of infringing goods

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Infringement & Remedies

Information / disclosure

Damages, in the case of negligent or intentional infringement

(comprising either of actual damages, adequate license fees or
turnover of profits)
Claims may also be based on the German Civil Code (BGB, e.g.
section 823 et seq.) or the Act against Unfair Competition (UWG)

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Infringement & Remedies

Judicial proceedings
IP claims are enforced through civil lawsuits; in addition there
can be criminal penalties stipulated
Typically a proprietor will seek monetary compensation for past
infringement, and an injunction prohibiting the infringer from
engaging in future acts of infringement

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Misjudgments of Innovations
1878 (telephone):
What use could this company make of an electrical toy?
Western Union president WILLIAM ORTON, rejecting Alexander
Graham Bells offer to sell his struggling telephone company
to Western Union for 100.000 Dollar
1899 (inventions):
Everything that can be invented has been invented.
CHARLES H. DUELL, U. S. commissioner of patents, also
recommending to close the US Patent Office

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Misjudgments of Innovations
1927 (film):
Who the hell wants to hear actors talk?
HARRY M. WARNER, Warner Brothers
1946 (television):
People will soon get tired of staring at a plywood box every
night.
DARRYL F. ZANUCK, head of 20th Century-Fox
1977 (PC):
There is no reason for any individual to have a computer in
their home.
KENNETH OLSEN, president of Digital Equipment Corp.
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INDIVIDUAL IP-RIGHTS

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The early account of an IP-system

In the ancient Greek city of Sybaris (destroyed in 510 BC), leaders
decreed:

"If a cook invents a delicious new dish, no other cook is to be

permitted to prepare that dish for one year.
During this time, only the inventor shall reap the commercial profits
from his dish. This will motivate others to work hard and compete
in such inventions."

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IPRs: Overview

Patents

Trademarks
Copyrights and Neighbouring Rights
Other IP-rights
Unfair Competition

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PATENTS

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Patents - Examples
BabyBuggy, GB
1154362,
20.7.1965

Jack Kilby, TI,

Microchip, GB 945734,
6.2.1959

Acetylsalicylsure
(Aspirin), 1899

Benutzeridentifikation bei
Autos
EP990757A3, 19.11.2003

Karl Benz,
Deutsches
Reichspatent
37435: Fahrzeug
mit
Gasmotorbetrieb
, 29.1.1886
Brostuhl mit
Lumbalsttze
EP1872689A1, 2.1.2008

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Patents The law

Patents are governed
(Patentgesetz).

in

Germany

by

the

Patent

Act

The Patents Act grants protection to technical inventions based on

inventive activities that can be commercially applied.

Duration of protection for a patent is 20 years from the date the

patent is applied for.

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Patents The law

Subject matter: Inventions in all fields of technology
Conditions:
Novelty
non-obviousness (inventive step)
industrial application

Registration required
Exclusive use rights
Few exceptions

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TRADEMARKS

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Trademarks - examples

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Trademarks The law

Signs are governed in Germany by the Trademark Act
(Markengesetz).
The Trademark Act incorporates the protection of registered and
unregistered trademarks, commercial designations and indications
of geographical origin.
Trademarks are protected from the moment of registration (or in
case of unregistered trademarks as soon as relevant preconditions are met).
Registered trademarks are protected 10 years from the application
date. Registration may be renewed for further periods of 10 years.

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Trademarks The law

Object of protection: Signs individualising and distinguishing
goods/services from a particular source
Condition: distinctiveness of the sign
Types of marks
Trademarks (for goods)
Service marks (for services)
Collective marks

Registration (or use + secondary meaning) in classes

Rights granted
Identical signs for identical goods/services
Identical/similar signs for identical/similar gods/services
Broad protection for famous marks

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COPYRIGHT

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Copyright - examples

Swarovski Kristallfiguren
BGH GRUR 1988, 690

Le Corbusier, Sessel LC 2,
BGH GRUR 1987, 903

Kinderquatsch
mit Michael
BGH GRUR 2003, 876

Topografische Landeskarten
BGH GRUR 1987, 360
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Copyright The law

Copyrights are governed in Germany by the Copyright Act

(Urheberrechtsgesetz).
The Copyright Act incorporates the protection of personal,
intellectual creations (e.g. photographs, articles, books, music).
Protection originates from creation itself and lasts for up to
seventy years after the creator has deceased.

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Copyright The law

Object of protection: Works in the literary, scientific and artistic
domain and related rights (neighbouring rights, software,
databases)
Condition: originality (personal creation)
No registration required
Protects form (expression), not content (idea)
Broad exclusive rights
Several limitations
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OTHER IP-LAW

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Other IP-Laws
Utility Patents
Design Patents

Plant Varieties
Semiconductors

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Other IP-Laws Utility Patent

The Utility Patent Act (Gebrauchsmustergesetz) governs the
protection of technical based on an inventive step that can be
commercially applied from the date the utility patent is applied for.
Protection can last up to 20 years in total.
The difference to a patent mainly lies in the claim assessment.
Before a patent is granted, the inventive edge is evaluated by the
Patent Office. In contrary, the assessment of a utility patent is a
mere formal procedure.
Hence a utility patent offers less protection and the inventive edge
may be challenged at a later stage, yet it is quicker to obtain than
a patent.

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Other IP-Laws Utility Patent

The Design Patent Act (Geschmacksmustergesetz) grants
protection of novel ornamental designs and models. After
registration duration of protection is 20 years.

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Other IP-Laws Utility Patent

The Plant Variety Protection Act (Sortenschutzgesetz) grants
protection for novel, distinguishable, consistent and homogenous
plants after registration.
The duration of protection is between 25 and 30 years.

The Semiconductor Protection Act (Halbleiterschutzgesetz)

grants protection of the topography of a semiconductor if it is
characteristic and registered within 2 years from its first
commercial exploitation.
The duration of protection is 10 years.

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UNFAIR COMPETITION

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Unfair Competition
Purpose: prevent acts contrary to honest business practices in
order to
Maintain fair competition
Protect consumers / competitors

National implementation:
special legislation and/or tort law

No exclusive right

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Overview of intellectual property

Legal right

What for?

How?

Patents

New inventions

Application and
examination

Copyright

Original creative or
artistic forms

Exists
automatically

Trade marks

Distinctive identification
of products or services

Use and/or
registration

Registered
designs

External appearance

Registration

Trade secrets

Valuable information
not known to the public

Reasonable efforts
to keep secret

Case Study - iPhone

INTERNATIONAL IPPROTECTION
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International IP-law
The principle of territoriality
Reciprocity and minimum rights (national treatment)
International IP-conventions

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Territoriality Principle
Rights granted by individual States
No universal IP-rights, but limited in their effect to the territory
of the State under which laws they have been granted
IP-rights are governed by the laws of this State; foreigners are
not necessarily protected
Unique provisions in the EU (single market composed of
individual IP-territories)

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Principles of International IP Treaties

Member States have to protect foreigners who are nationals of
another contracting State in as much the same way as they
protect their own nationals (principle of national treatment)
Minimum rights
A treaty must define the individual beneficiaries of the protection
granted by the treaty

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Principles of International IP Treaties

Priority of a prior foreign application for purposes of the domestic
application
Centralized application procedure

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Intl instruments (1)

Substantive law Treaties
Industrial property (patents, trademarks, other IP rights and
unfair competition)
Paris Convention
TRIPS

Copyright:
Berne Convention (BC)
Rome Convention (RC)
WIPO Copyright Treaty (WCT); WIPO Performances & Phonogram
Producers Treaty (WPPT)

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Intl instruments (2)

Treaties facilitating international application
Patents:
Patent Cooperation Treaty (PCT)

Trademarks:
Madrid Agreement
Madrid Protocol

Designs:
Hague Agreement

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WIPO

Status: An international intergovernmental

organization
Member States: 183
Staff: 915 from 94 countries
Treaties Administered: 24

Milestones
2002
1989
1970

1967
1960
1925

1891
1886
1883

1893
BIRPI
Madrid Agreement

Berne Convention
Paris Convention

WIPO established
WIPO Convention

BIRPI moves to Geneva

Hague Agreement

Madrid Protocol
PCT

1970

Internet
Treaties

EU-Harmonization (1): Harmonizing Directives

Horizontal (all IP rights)
Enforcement Directive

Patents
Biotechnology Directive

Trademarks
Trademark Directive

Design
Design Directive

Unfair Competition
Various consumer protection Directives (e.g. misleading advertising; unfair
business practices)

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EU-Harmonization (2): Harmonizing Directives

Copyright:
Computer Programs
Databases
Information Society
Regulation of collecting societies

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Case Study Coca-Cola

Case Study

Case Study: The facts

X-Corporation, a U.S. company incorporated in Delaware, has
invented a vending-machine that is able to set the sales price
in function of outside parameters, such as temperature, days
of the week and peak times. At the core of the invention is a
computer program and a database. X uses its invention for the
manufacture of a soda vending-machine in a particular shape
which X markets under the trademark Sun-Box.
X also wants to market the Sun-Box in Europe and is looking
for a manufacturer in Eastern Europe (M) and a distributor (D)
in Western Europe. X finds a manufacturer in Eastern Europe
who is willing to produce Sun-Boxes, provided he obtains the
right to distribute them in Eastern Europe.
X does not want to get commercially engaged in Japan, but is
afraid that a Japanese competitor might market a rather similar
vending-machine both in Japan and for export to other Asian
countries and to Europe.
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Case Study: Development

Later,
X learns that the Japanese Patent Office (JPO) does not grant
patents to inventions such as the one underlying the SunBox.
Also, a producer from Malaysia imports a similar vending
machine into Europe where it is marketed under the name of
Moon-Box.
Finally, the Western European Distributor (D) tries to prevent
wholeseller (W) from importing Sun-Boxes which W has
bought from the Eastern European manufacturer (M), into
Western European States.

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Case Study: Questions

Question 1:

X wants to secure IP-rights for its invention and the

Sun-Box. What rights are available?

Question 2:

In which country or countries can X obtain IPprotection?

Question 3:

What actions are necessary on the part of X?

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Case Study: Questions

Question 4:

What means are available to X to obtain a Japanese

Patent?

Question 5:

Can X stop the Malaysian producer/importer from

importing a similar vending machine into Europe
and its marketing there under the name of MoonBox?

Question 6:

Can D stop W from marketing the Sun-Boxes in

Western Europe?

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Contact Information
Sven Jacobs | Associate
Rechtsanwalt
Norton Rose Fulbright LLP
Taunustor 1 (TaunusTurm), 60310 Frankfurt, Germany
Tel +49 69 505096 416 | Mob +49 173 3404587 | Fax +49 69
505096 100
sven.jacobs@nortonrosefulbright.com

NORTON ROSE FULBRIGHT

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