Procurement manual: guide to procurement within BERR. Annex 4: intellectual property terminology
URN No: 08/1509/A14
Department for Business, Enterprise and Regulatory Reform procurement manual annex 4: intellectual property terminology
ANNEX 4 - INTELLECTUAL PROPERTY TERMINOLOGY
This Annex contains definitions for intellectual property rights terminology as used in Procurement Manual section D.3 - INTELLECTUAL PROPERTY RIGHTS, OWNERSHIP OF RESULTS AND CONFIDENTIALITY. In particular it covers items discussed in sub-section D.3.2 - General.
Contents
Patents
Copyright
Registered Designs
Design Rights
Semiconductor Topographies
Rights in Performances
Trade Marks
Confidential Information
Patents
Patents relate to the protection of ideas. A patent must be applied for and, if granted, may last for 20 years (subject to renewal every four years); it is granted to an inventor or his/her employer for a product or process which must be new, inventive and capable of industrial application, for example a machine part or manufacturing process. A patent gives the patentee (holder of the patent) the right to prevent anyone else from making, using, selling or importing any goods or processes, which include the patented invention. A patentee may grant licences to make, use or sell goods or processes including the patented invention. The ownership of a patent may also be transferred in which case the new owner acquires the full rights as above. Licensees usually agree to pay a royalty or royalties for the commercial use of the patented invention.
Copyright
Copyright relates to the protection of works. It exists automatically when the work to which it relates is created, usually without any requirement for registration, in any literary, musical, dramatic or artistic work (including compilations, databases, machine drawings and computer programs) created by their "author". The owner of the copyright, who is in the first instance normally the author, (except where the author of a work is an employee who creates the work in the course of his employment - then the employer is the first owner) has the right to prevent anyone else from copying the work but cannot prevent anyone from creating a similar or identical work without copying. "Copying" includes photocopying and other forms of reproduction, whether in hard copy or electronic form. It is normal practice to include a copyright notice. The ownership of copyright can be transferred and licences can be granted to use or copy copyright materials (e.g. program licences). Copyright generally expires 70 years after the death of the author but duration can differ depending upon the nature of the work (e.g. sound recordings) and whether the author is known or where the work is Crown or Parliamentary copyright.
Registered Designs
Registered designs aim to protect the appearance of articles made to the design and where those designs have a novel aesthetic element (e.g. the appearance of a piece of equipment), which is not dictated by the function of the article. Registration must be applied for and it provides protection for up to 25 years (renewable every five years). The holder of the registration has the right to prevent anyone else from making, using or selling any goods, which include the registered design, and he may grant licences to make, use or sell goods including the registered design. The ownership of a registration may also be transferred giving the new owner the full rights as above. Royalties are also usually payable by licensees.
Design Rights
Design rights are rights similar to copyrights in that they arise automatically without any requirement for registration and are similar to (but not the same as) registered designs, in that they protect the design of an article provided that it is not a feature which enables the article to fit with or match with or form an integral part of another article. The design must be recorded in a design document and must be original. The protection lasts for (a) 15 years from the end of the year in which the design was first recorded or an article was made to the design, which ever happened first, or (b) if articles made to the design are sold or hired out within five years of the end of the year in (a), then at the end of 10 years from the end of the year in which the first sale or hire took place.
Semiconductor Topographies
The Semiconductor Regulations are grafted onto the design right provisions and protect the design of the layout or pattern of the material layout of a semiconductor product. The protection lasts for the same periods of time as design rights subject to the same conditions.
Rights in Performances
Performers have rights in their performances. They can prevent their live performances from being recorded or broadcast or included in a cable programme service. They have rights in respect of copies of recordings made without their consent.
Trade Marks
Trade marks are visual symbols, such as brand names or logos, used to distinguish the goods or services to which they relate from those of other businesses. Marks must be distinctive and unlikely to give rise to deception or confusion amongst the general public. They can be registered or unregistered. Protection of a registered trade mark is maintained provided that the mark is in use and the registration is renewed by payment of renewal fees in the case of some old marks, after 7 years, and in the case of newly registered marks, every 10 years. The holder of the registration has the right to prevent anyone else from using the registered trade mark in association with their goods but can license the use of the trade mark. The ownership of a registered trade mark can also be transferred. Ownership of rights in an unregistered mark may also be transferred but this usually only occurs with a transfer of business goodwill. Rights in the unregistered trade mark are protected by way of an action for passing-off. This requires a person to show that another person is using the mark in relation to similar goods or services so as to pass off his goods or services as those of the owner of the unregistered mark. It is sometimes necessary to indicate that a trade mark is registered whenever it is used.
Confidential Information
Confidentiality allows valuable information to be protected from unauthorised disclosure or use. Any person can classify certain types of information as confidential. The information must not have become publicly available before it is classified. Confidential information can be disclosed to another person under a confidential relationship, which is either established by a written agreement or created verbally or by circumstances. If a person knowingly receives confidential information from another he must not disclose that information to any third person nor use it without the consent of the provider of the information, except as allowed for under the terms of the confidential relationship established. The original possessor of confidential information has the right to take action against misuse of the confidential information.