Working with technology : law and practice

목차 (Table of Contents)

• CONTENTS
• Acknowledgements = ⅴ
• Preface = ⅶ
• Table of Contents = ⅸ
• Table of Cases = xxxix
• Table of Statutes = lvi
• Table of Statutory Instruments = lxiii
• Table of European Legislation = lxv
• Table of International Legislation = lxviii
• Table of International Treaties and Conventions = lxix
• Chapter 1 Introduction to Commercial and Funding Chapters
• General = 1-01
• Funding
• Obtaining funding = 1-02
• Funding systems and terms = 1-03
• Insufficient debt finance = 1-04
• Other sources of funding = 1-05
• Collaboration
• Collaboration generally = 1-06
• Different viewpoints = 1-07
• Shifting sands = 1-08
• Chapter 2 Public Sector Funding in the United Kingdom
• Introduction = 2-01
• Historical background = 2-02
• First world war = 2-03
• Second world war = 2-04
• 1960s and 1970s = 2-05
• The 1980s = 2-06
• The 1990s = 2-07
• Realising our potential = 2-08
• Reorganisation of the research councils = 2-09
• 1995 Competitiveness White Paper = 2-10
• Recent developments and current policy = 2-11
• Funding of R&D = 2-13
• Government departments = 2-18
• DTI programmes and schemes = 2-19
• LINK = 2-21
• Teaching Company Scheme(now TCS) = 2-23
• College-Business Partnerships and Postgraduate Training Partnerships(PTP) = 2-24
• Faraday Partnerships = 2-24a
• Shell Technology Enterprise Programme = 2-25
• SMART = 2-26
• Information Society Initiative = 2-27
• Funding for specific industry sectors Energy = 2-28
• Aeronautics and space = 2-29
• Biotechnology = 2-30
• European and international activities = 2-31
• Office of Science and Technology = 2-33
• OST initiatives
• ROPA = 2-35
• Foresight LINK = 2-36
• University Challenge Scheme = 2-37
• Infrastructure = 2-39
• HERO-BC and Science Enterprise Challenge = 2-40
• The research councils = 2-41
• Biotechnology and Biological Sciences Research Council(BBSRC) = 2-43
• Economic and Social Research Council(ESRC) = 2-45
• Engineering and physical sciences research council(EPSRC) = 2-46
• Medical Research Council(MRC) = 2-48
• Natural Environment Research Council(NERC) = 2-50
• Particle Physics and Astronomy Research Council(PPARC) = 2-51
• Council for the Central Laboratory of the Research Councils(CCLRC) = 2-52
• Research council schemes = 2-53
• Innovative Manufacturing Initiative(IMI) = 2-54
• Industry fellowships = 2-55
• Interdisciplinary Research Centres(IRCs) = 2-56
• Co-operative Awards in Science and Engineering(CASE) = 2-57
• Other government departments
• Department of the Environment, Transport and the Regions(DETR) = 2-58
• Ministry of Agriculture, Fisheries and Food(MAFF) = 2-59
• Department of Health(DoH) = 2-60
• Department for Education and Employment(DfEE) = 2-61
• Ministry of Defence(MoD) = 2-62
• Chapter 3 Venture Capital
• The need for venture capital = 3-01
• Sources of venture capital in the United Kingdom = 3-03
• Early stage investments = 3-05
• Investors = 3-07
• Types of venture capital = 3-09
• Valuing the company = 3-11
• Debt finance = 3-12
• Disadvantages of debt finance = 3-13
• Approaching the venture capitalist : the business plan = 3-14
• The business plan = 3-15
• Dealing with the venture capitalist = 3-16
• The investment process = 3-17
• Due diligence = 3-18
• Legal negotiations = 3-19
• Common objectives : capital gain and exit = 3-20
• Characteristics of the attractive investee company = 3-22
• The management team = 3-24
• High technology products = 3-25
• Timing, if not everything, is important = 3-26
• Chapter 4 European Commission Funding
• Historical context = 4-01
• Objectives = 4-02
• The programmes = 4-03
• Framework programmes = 4-04
• Specific programmes = 4-05
• Rules for participation = 4-06
• Defining the contents of framework programmes and specific programmes = 4-07
• Adopting European Community R&D programmes = 4-09
• Current E. U. R&D policy
• The old r$$e'$$gime = 4-11
• The new approach = 4-12
• The current R&D programmes = 4-13
• Thematic programme 1 - Quality of life and management of living resources = 4-14
• Thematic programme 2 - User-friendly information society = 4-15
• Thematic programme 3 - Competitive and sustainable growth = 4-16
• Thematic programme 4 - Energy, environment and sustainable development = 4-17
• Horizontal programme 1 - Confirming the international role of community research = 4-18
• Horizontal programme 2 - Promotion of innovation and participation of SMEs = 4-19
• Horizontal programme 3 - Improving human research potential and the socio-economic knowledge base = 4-20
• Other E. U. research activities = 4-21
• Administering E. U. R&D programmes = 4-22
• Types of contract = 4-23
• Management of programmes = 4-24
• Contracts = 4-25
• Contract participants = 4-28
• Rights and obligations of participants = 4-30
• Chapter 5 The University Perspective
• Introduction = 5-01
• Key statistics of the HEI sector = 5-02
• Size of the sector = 5-03
• Quality of outputs = 5-04
• Focus on research
• Types of research activity = 5-06
• Sponsored research
• Sources of income = 5-07
• Staffing = 5-09
• Cost considerations = 5-10
• Matchmaking = 5-11
• Nature of sponsored research = 5-12
• Industry supported work = 5-13
• Speculative research and scholarly work = 5-14
• Postgraduate research = 5-15
• HEI perspective on selected research support schemes
• Industrially oriented PhDs = 5-16
• LINK projects = 5-17
• Teaching Company Scheme(TCS) = 5-18
• Consultant support = 5-19
• Training at all levels = 5-20
• Dual supervision of research associates = 5-21
• European Union support schemes = 5-22
• Cost recovery on E. U. projects = 5-23
• Non-financial benefits of participating in European Union contracts = 5-24
• E. U. CRAFT program = 5-25
• British Telecom funding = 5-26
• Practical arrangements
• Basic terms and conditions in research agreements = 5-27
• IPR arising from externally sponsored research = 5-28
• First time contractors = 5-29
• Company schemes = 5-30
• Problem areas
• Competition for funds and the cost of aborted proposals = 5-31
• Focus on technology transfer = 5-32
• Types of technology transfers from HEIs = 5-33
• Start-up companies
• Intellectual property assets = 5-34
• Access to HEI resources = 5-35
• Licences back = 5-36
• Return on investment = 5-37
• Support scheme = 5-38
• Recent funding schemes in technology transfer = 5-39
• University challenge = 5-40
• Science enterprise challenge = 5-41
• The reach-out fund = 5-42
• Difficulties with technology transfer
• "Not-invented-here" syndrome = 5-43
• Better practice－more proactivity = 5-44
• New incentives－new hope = 5-45
• Costs of early stage protection of IPR = 5-46
• The future environment for funding schemes
• Factors influencing change = 5-47
• Recent trends in research funding = 5-48
• The size and nature of the "funding gap" = 5-50
• Effect on pricing of HEI research
• Determination of true costs = 5-51
• The future of pricing = 5-52
• Cost-sharing = 5-53
• Value = 5-54
• Chapter 6 The Industry Perspective
• Why does industry collaborate?
• Aims of industry = 6-02
• Variations within industry = 6-03
• Different philosophies = 6-04
• Virtual companies = 6-05
• Benefits of collaboration = 6-06
• Enhanced credibility = 6-07
• Types of collaboration used by the industry = 6-08
• Research collaborations = 6-09
• Strategic alliances = 6-10
• Contract research = 6-11
• Consortia = 6-12
• Joint ventures = 6-13
• Other collaborations = 6-14
• Out-sourcing = 6-15
• Licensing = 6-16
• Mergers and acquisitions = 6-17
• Which type of collaboration does industry prefer? = 6-18
• Reassert collaborations
• Postgraduate studentships = 6-19
• Research fellowships = 6-20
• Joint funding of research collaborations = 6-21
• Strategic alliances with academic centres of excellence = 6-22
• Collaborations between companies = 6-23
• Academia or industry as collaboration partner? = 6-24
• Cost = 6-25
• Other factors = 6-26
• Quality = 6-27
• How does the industry assign its collaborations budget? = 6-28
• What are the major considerations of industry at the various stages of the collaboration process? = 6-30
• Identification = 6-31
• Implementation
• The contract = 6-32
• Intellectual property = 6-33
• Cost = 6-34
• Publication = 6-35
• Operation = 6-36
• Termination = 6-37
• Normal completion = 6-38
• Premature termination = 6-39
• Post-termination = 6-40
• Conclusions = 6-41
• Chapter 7 Introduction to Intellectual Property
• Introduction = 7-01
• The rights = 7-02
• The status of confidential information = 7-03
• Foreign intellectual property rights = 7-04
• Registered／ Unregistered rights = 7-05
• Distinguishing rights = 7-06
• Patents = 7-07
• Registered designs = 7-08
• Design right = 7-09
• Copyright = 7-10
• Registered trade marks = 7-11
• Unregistered marks／passing off = 7-12
• Confidential information = 7-13
• The international position = 7-14
• The future = 7-16
• Chapter 8 The Law of Patents
• Introduction = 8-01
• Patent theory = 8-02
• National and international dimensions to patents = 8-04
• The structure of a patent = 8-05
• Title page = 8-06
• Description = 8-07
• The drawings = 8-09
• The claims = 8-10
• Construction of claims = 8-14
• General principles = 8-15
• The overriding principle = 8-16
• Common issues in construction
• Acknowledgements of prior art = 8-17
• "For" = 8-18
• Assertions during prosecution = 8-19
• Dependent claims = 8-20
• Expert evidence = 8-21
• Subjective intention of the patentee = 8-22
• Variants, mechanical equivalents and "pith and marrow" = 8-23
• The protocol = 8-24
• United Kingdom approach to the Protocol : "Catnic" = 8-25
• How to interpret the Catnic Guidelines = 8-27
• Recent developments = 8-28
• Priority
• What is meant by "priority"? = 8-30
• How to claim priority = 8-31
• Which applications can support a claim to priority? = 8-32
• Multiple claims and priority = 8-33
• The practical effect of claims to priority = 8-34
• Validity of patents = 8-35
• Challenges to validity = 8-36
• Pre-grant = 8-37
• Opposition proceedings = 8-38
• Applications to revoke in the Patent Office = 8-39
• Applications to revoke in the United Kingdom Courts = 8-40
• Patentability = 8-41
• The excluded matter
• Discovery, scientific theory or mathematical method "as such"(section 1(2)(a)) = 8-42
• Literary, dramatic, musical or artistic works or any other aesthetic creation "as such"(section 1(2)(b)) = 8-43
• Scheme, rule or method for performing a mental act, playing a game, or doing business or a program for a computer "as such" = 8-44
• Presentation of information "as such" = 8-45
• Offensive, immoral or anti-social behaviour = 8-46
• Animals, plants, etc. = 8-47
• Capable of industrial application = 8-48
• Novelty = 8-49
• Definition of novelty = 8-50
• "State of the art" = 8-51
• "Made available to the public" = 8-52
• Enabling disclosure = 8-53
• "Black box" disclosures = 8-54
• Foreign disclosures = 8-55
• Extent of disclosure = 8-56
• Circumstances of disclosure = 8-57
• Unlawful disclosure = 8-58
• Selection patents = 8-59
• New use for old product = 8-60
• Section 2(3) = 8-61
• Obviousness = 8-62
• Inventive concept = 8-63
• The skilled man = 8-64
• Common general knowledge = 8-65
• Identifying the differences between the prior art and the invention = 8-66
• Inventive step = 8-67
• "Degree of invention" = 8-68
• Hindsight = 8-69
• "Would" or "could"? = 8-70
• Obscure prior art = 8-71
• Age of prior art = 8-72
• Commercial successful and long felt want = 8-73
• "Problem and solution" approach = 8-74
• Sufficiency of disclosure = 8-75
• Inadequate description
• Lack of detail or clarity = 8-76
• Research and experiment = 8-77
• Errors in the specification = 8-78
• Breadth of claims = 8-79
• Added matter = 8-80
• The test under section 72(1)(d) = 8-81
• Trivial or inconsequential matter = 8-82
• Discursive material = 8-83
• Amendments to the claims = 8-84
• Amendment = 8-85
• Duty of full and frank disclosure = 8-86
• Misconduct by patentee = 8-87
• Deletion of claims = 8-88
• Amendment leaving patent invalid = 8-89
• Infringement = 8-90
• Product claims = 8-91
• Process claims = 8-92
• Secondary and contributory infringement = 8-93
• Defences to infringement
• Exclusions from infringement = 8-94
• Consent of the proprietor = 8-95
• Repair = 8-96
• Right to continue use commenced before priority date = 8-97
• Where the defence applies = 8-98
• The nature of the "act" which may be continued = 8-99
• Serious and effective preparations = 8-100
• Rights of co-owners = 8-101
• Compulsory licences = 8-102
• Threats = 8-103
• What is a "threat"? = 8-104
• Making and importing = 8-105
• Justification = 8-106
• "Without prejudice" threats = 8-107
• Available relief = 8-108
• Crown use
• Entitlement to use inventions = 8-109
• Compensation = 8-110
• Exceptions to entitlement to compensation = 8-111
• Rewards for employees
• Circumstance in which rewards may be applied for = 8-112
• "Outstanding benefit" = 8-113
• Scale of reward = 8-114
• Fair share = 8-115
• Collective agreements = 8-116
• Supplementary protection certificates
• Introduction = 8-117
• Products for which SPCs are granted = 8-118
• How to apply = 8-119
• Effect of SPC = 8-120
• Length of protection = 8-121
• Lapse or revocation of SPC = 8-122
• Litigation = 8-123
• Infringement proceedings = 8-124
• Revocation proceedings = 8-125
• Declarations of non-infringement = 8-126
• Chapter 9 Patenting Procedure and Practice
• Introduction = 9-01
• Professional advice and costs = 9-02
• International agreements = 9-03
• The International Convention = 9-04
• The Patent Co-operation Treaty(PCT) = 9-05
• Regional patent systems = 9-06
• Community Patent Convention = 9-07
• Fundamentals of patent procedure = 9-08
• Main steps in prosecuting a patent application = 9-09
• The application = 9-10
• Filing = 9-11
• The search = 9-12
• Examination = 9-13
• Grant = 9-14
• Time taken to reach grant = 9-15
• Withdrawal of an application = 9-16
• Opposition = 9-17
• Application after publication or disclosure = 9-18
• United Kingdom patent procedure = 9-19
• The application = 9-20
• Filing = 9-21
• The preliminary examination and search = 9-22
• Publication of the application = 9-23
• Substantive examination = 9-24
• Grant = 9-25
• European patent convention procedure = 9-26
• The application = 9-27
• Filing = 9-28
• The search and search report
• Publication by the EPO = 9-30
• Substantive examination at the EPO = 9-31
• Grant of European patent = 9-33
• Transfer of the National patent systems = 9-34
• Opposition = 9-35
• Timing and procedures for oppositions = 9-36
• EPO hearings = 9-37
• Patent Co-operation Treaty patent application procedure = 9-38
• The international phase = 9-39
• Chapter Ⅰ
• The application = 9-40
• Filing = 9-41
• The International Searching Authority search = 9-42
• The International Bureau = 9-43
• Chapter Ⅱ = 9-44
• Chapter Ⅱ or national phase - time for action = 9-45
• Chapter Ⅱ preliminary examination = 9-46
• Chapter Ⅱ procedure
• The Demand = 9-47
• The International Preliminary Examination = 9-48
• The International Preliminary Examination Report = 9-49
• The National／Regional Phase = 9-51
• United States patent procedure = 9-52
• The United States application = 9-53
• Patent Office procedure after filing = 9-54
• Patent Office = 9-55
• Grant of United States patent = 9-56
• Objections to applications and patents in United States procedure = 9-57
• Interference = 9-58
• Re-examination = 9-59
• Reissue = 9-60
• Dedicated to the public = 9-61
• Changes in United States procedure = 9-62
• Japanese patent procedure = 9-63
• General observations on issues relating to patenting procedure
• Laboratory notebooks = 9-64
• Searching = 9-65
• Why are searches made? = 9-66
• Where are searches made? = 9-67
• Who does the search? = 9-68
• Who assesses the results? = 9-69
• Registration Patents(Patents of Importation) = 9-70
• Accelerated Prosecution = 9-71
• Summary flow charts = 9-72
• Chapter 10 The Law of Confidence
• Introduction = 10-01
• Legal basis of an action for breach of confidence = 10-03
• Protectable information = 10-04
• Publicly available information = 10-05
• The "public domain" = 10-06
• Disclosures to third parties = 10-07
• Constructive disclosures = 10-08
• Selections from publicly available information = 10-10
• Trivial information = 10-11
• The special position of the employee = 10-12
• Ease of separation of information from general mass = 10-16
• Extent to which employer has asserted secrecy = 10-18
• Position of employee = 10-19
• "Springboard information" = 10-20
• Circumstances in which an obligation of confidence may arise = 10-22
• Commercial dealings = 10-23
• Pre-contract negotiations = 10-24
• Unsolicited information = 10-25
• Information obtained by a third party in breach of confidence = 10-26
• Accidentally acquired information = 10-28
• Information stolen or obtained by underhand means = 10-29
• To whom is the obligation of confidence owed? = 10-30
• Partnerships = 10-31
• Joint ventures = 10-32
• Consultancy = 10-33
• Misuse of confidential information = 10-34
• Use = 10-35
• Disclosure = 10-36
• Derivation = 10-37
• Extent of use = 10-38
• Damage = 10-39
• The public interest defence = 10-40
• Remedies = 10-43
• Injunctions
• Life-span = 10-44
• Damages in lieu of an injunction = 10-45
• Where the information is in the public domain = 10-46
• Where it would otherwise be disproportionate or oppressive to order an injunction = 10-47
• Delivery up or destruction on oath = 10-48
• Assessment of damages = 10-49
• Account of profits
• Availability = 10-50
• Assessment = 10-51
• Restrictive covenants = 10-52
• Restraints on competitive trade = 10-53
• Non-solicitation clauses = 10-56
• Drafting and construction of restrictive covenants = 10-57
• Chapter 11 The Law of Copyright
• Introduction = 11-01
• "European copyright" law
• Author's rights = 11-02
• Legislation = 11-03
• General copyright principles = 11-04
• Conditions of protection = 11-05
• Originality = 11-06
• Substantiality = 11-07
• European standard of "originality" = 11-08
• Protection of ideas and concepts = 11-09
• Formalities = 11-11
• Fixation = 11-12
• Types of works = 11-13
• Literary works = 11-14
• Databases and compilations = 11-15
• Dramatic and musical works = 11-16
• Artistic works = 11-17
• Design for industrial products = 11-18
• Functional drawings = 11-19
• Computer-generated works = 11-22
• Other types of works = 11-24
• Sound recordings = 11-25
• Films = 11-26
• Broadcast = 11-27
• Cable programmes = 11-28
• Published edition = 11-29
• Foreign authors or works = 11-30
• Nationality criterion = 11-31
• Publication criterion = 11-32
• Duration of protection = 11-33
• Ownership = 11-34
• Joint authorship and ownership = 11-35
• Infringement of copyright = 11-36
• Primary and secondary infringement = 11-37
• Copying the work = 11-38
• Copying in any medium = 11-39
• Substantial copying = 11-40
• Free riding = 11-41
• Historical or factual works = 11-42
• Design documentation = 11-43
• Secondary infringement : importing, commercial dealing, etc. = 11-44
• Right to issue copies to the public = 11-45
• Rental and lending rights = 11-46
• Performance, showing or playing／Broadcasting or include it in a cable programme = 11-47
• Secondary infringement : provision of apparatus and premises = 11-48
• Adaptation = 11-49
• Authorising an infringing act = 11-50
• Permitted acts = 11-51
• Fair dealing = 11-52
• Research and private study = 11-53
• Criticism and review = 11-54
• Reporting current events = 11-55
• Incidental inclusion of work = 11-56
• Miscellaneous statutory defences = 11-57
• Defence of "public interest" = 11-58
• Design documentation = 11-59
• Computer programmes = 11-60
• Moral Rights = 11-61
• Type of Moral Rights = 11-62
• Right of paternity = 11-63
• Right of integrity = 11-64
• Right against false attribution = 11-65
• Right of privacy in certain photographs and films = 11-66
• Nature of Moral Rights = 11-67
• Remedies = 11-68
• Civil remedies = 11-69
• Criminal offences = 11-70
• Copyright and modern technologies = 11-71
• Computer programmes = 11-72
• Conditions for protections = 11-73
• Idea／expression merger = 11-74
• Restricted acts = 11-75
• Reproduction of a computer programme = 11-76
• Adaptation = 11-77
• Permitted acts = 11-78
• Decompilation of programmes = 11-79
• Databases = 11-80
• Legal definition of database = 11-81
• Copyright protection = 11-82
• Database right
• Criterion of protection = 11-83
• Owner = 11-84
• Duration of protection = 11-85
• Infringement = 11-86
• Copyright and genes = 11-87
• International copyright = 11-88
• Berne Convention for the Protection of Literary and Artistic Works 1886 = 11-89
• Trade related aspects of intellectual property rights(TRIPS) = 11-90
• Conclusion = 11-91
• Chapter 12 The Law of Designs
• Introduction = 12-01
• Legislation = 12-02
• Protectable designs = 12-03
• Registered design law = 12-04
• Eye-appealing designs = 12-05
• Aesthetic designs = 12-06
• Designs applied to an article = 12-07
• Excluded designs = 12-08
• Unregistered design right
• Definition of design = 12-10
• Excluded designs = 12-11
• Conditions of protection = 12-12
• Registered design
• Registration = 12-13
• Novelty = 12-14
• Prior art = 12-15
• Excluded from prior art = 12-16
• Objective test = 12-23
• The date of application = 12-24
• Unregistered design right
• Originality = 12-25
• Fixation = 12-27
• Qualification = 12-28
• Ownership
• Registered design = 12-29
• Unregistered design right = 12-30
• Infringement
• Registered design = 12-31
• Kits = 12-32
• Act of infringement = 12-33
• Infringing Article = 12-34
• Scope of protection = 12-35
• Permitted acts = 12-36
• Unregistered design right = 12-37
• Reproduction = 12-38
• Secondary infringement = 12-39
• Permitted acts = 12-40
• Licence of right = 12-41
• Duration of protection
• Registered design = 12-42
• Unregistered design right = 12-43
• Remedies
• Registered design right = 12-44
• Threats = 12-45
• Unregistered design right = 12-47
• Semiconductor topographies = 12-48
• Definition = 12-49
• Ownership = 12-50
• Qualification = 12-51
• Rights conferred = 12-52
• Permitted acts = 12-53
• Duration = 12-54
• E. C design directive = 12-55
• Non-Harmonisation in Europe = 12-56
• Definition = 12-57
• Excluded subject matter = 12-58
• Conditions of protection = 12-59
• Novelty = 12-60
• Individual character = 12-61
• Prior art = 12-62
• Visibility = 12-63
• Rights conferred
• Rights = 12-64
• Duration = 12-65
• Spare parts = 12-66
• Relationship with copyright = 12-67
• Comparison of protection
• Type of product = 12-68
• Nature of protection = 12-69
• Can all three rights subsist together? = 12-70
• Copyright = 12-71
• Unregistered design right = 12-72
• Conclusion = 12-73
• Chapter 13 The Law of Trade Marks and Passing Off
• Introduction = 13-01
• Registered trade marks
• System of registration = 13-02
• Length of protection = 13-03
• Registrability = 13-04
• Definition of a trade mark = 13-05
• Capable of distinguishing = 13-06
• Grounds for refusal of an application to register = 13-07
• Absolute grounds
• Devoid of any distinctive character = 13-08
• Descriptive, laudatory and geographical marks = 13-09
• Customary in the trade = 13-10
• The "shape exclusions" = 13-11
• "Shape marks" generally = 13-12
• Public policy = 13-14
• Deceptive marks and bad faith = 13-15
• Relative grounds = 13-16
• Earlier trade mark = 13-17
• "Well known marks" under the Paris Convention = 13-18
• Grounds for refusal based on earlier marks
• Identical goods／services and identical marks = 13-19
• Similar goods／services and similar marks = 13-20
• Similar marks, dissimilar goods／services = 13-21
• Other earlier rights = 13-22
• Consent = 13-23
• Infringement = 13-24
• Infringing use = 13-25
• Comparative advertising = 13-26
• Defences = 13-27
• Use of another registered mark = 13-28
• Use of a mark other than as a trade mark = 13-29
• Exhaustion of rights = 13-30
• Invalidity and revocation = 13-31
• Declarations of invalidity = 13-32
• Revocation = 13-33
• Non-use = 13-34
• Common name = 13-35
• Liable to mislead the public = 13-36
• Acquiescence = 13-37
• Remedies = 13-38
• Passing off = 13-39
• Goodwill = 13-40
• Misrepresentation = 13-41
• Damage = 13-42
• Ownership of goodwill = 13-43
• Chapter 14 Ownership of Intellectual Property
• Introduction = 14-01
• The basic rules = 14-02
• Patents
• Introduction = 14-03
• Inventorship
• The invention = 14-04
• Who made the invention? = 14-05
• Joint inventorship = 14-06
• Employment = 14-07
• Directors = 14-07
• Independent contractors = 14-09
• The general rule = 14-10
• Normal or specifically assigned duties of the employee = 14-11
• Special obligations = 14-12
• Contracting out = 14-13
• Disputes about ownership = 14-14
• Powers of the patent office = 14-15
• Registered designs = 14-16
• Authorship = 14-17
• Amanuensis = 14-18
• Disputed ownership = 14-19
• Employment = 14-20
• Course of employment = 14-21
• Work done outside working hours = 14-22
• Commissioned works = 14-23
• Commission = 14-24
• Money or money's worth = 14-25
• Works generated by computer = 14-26
• Unregistered design right = 14-27
• First marketing = 14-28
• Joint designs = 14-29
• Prospective ownership = 14-30
• Copyright = 14-31
• Authorship = 14-32
• Degree of involvement required to be an author = 14-33
• Special rules as to authorship = 14-34
• Computer generated works = 14-35
• Joint authorship = 14-36
• Employment = 14-37
• Commissioned works = 14-38
• Prospective ownership = 14-39
• Database right = 14-40
• Topography rights = 14-41
• Ownership in equity = 14-42
• Fiduciary relationship between parties = 14-43
• Directorship = 14-44
• Partnership = 14-45
• Intention of the parties = 14-46
• Commissioned works and works created by independent contractors = 14-47
• When an agreement to assign will be implied = 14-48
• An alternative : the implied licence = 14-49
• Effect of equitable assignment = 14-50
• Chapter 15 Introduction to Competition Law
• E. C. competition law = 15-01
• United Kingdom competition law = 15-08
• United States antitrust law = 15-09
• Chapter 16 E. C. Competition Law and Intellectual Property
• Section 1 : Competition Law
• Introduction = 16-01
• A. Article 81 and IP agreements
• Prohibited agreements
• Prohibition = 16-02
• Extra-territorial effect = 16-03
• Agreements between undertakings
• Agreements = 16-04
• Concerted practice = 16-05
• Undertaking = 16-06
• Economic unit = 16-07
• Effect on Inter-state trade
• Effect on pattern of trade = 16-08
• National agreements = 16-09
• Effects on the agreement as a whole = 16-10
• Networks of agreements = 16-11
• Distortion of competition : relevant considerations = 16-12
• Does the restriction form part of the exercise of the intellectual property right?
• Existence versus excercise = 16-13
• Does the restriction have as its object or effect the prevention, restriction or distortion of competition?
• Relevant market = 16-14
• Product market = 16-15
• Geographic market = 16-16
• Object = 16-17
• Effect = 16-18
• Appreciability = 16-19
• Does the restriction constitute an ancillary restraint?
• The concept of ancillary restraints = 16-20
• The test = 16-21
• Examples = 16-22
• Distortion of competition : examples
• Exclusivity／territorial restrictions = 16-23
• Open exclusivity for new technology = 16-24
• Open exclusivity where the technology is not new = 16-25
• Absolute territorial protection = 16-26
• Monopoly leveraging = 16-27
• Ties = 16-28
• Royalties = 16-29
• Assignment of improvements = 16-30
• Customer／field of use restrictions = 16-31
• Non-competitive obligations = 16-32
• Sub-contracting = 16-33
• Patent pools and joint licensing = 16-34
• Contents of pool = 16-35
• Clauses = 16-36
• Other restrictions = 16-37
• Exemptions
• Article 81(3) exemption = 16-38
• Block exemptions = 16-39
• Technology transfer block exemption
• Format of the exemption = 16-40
• Scope of the exemption = 16-41
• Basic exemption = 16-42
• Duration = 16-43
• White, black and grey lists = 16-44
• Restrictive covenants = 16-45
• Grant-back = 16-46
• Extending the licence to cover improvements = 16-47
• Tie-ins = 16-48
• Field of use restrictions and market sharing = 16-49
• Incentives of the licensee = 16-50
• Restrictions on the licensee's production = 16-51
• Royalty scheduling = 16-52
• No challenge clauses = 16-53
• Blocking parallel trade = 16-54
• Price fixing = 16-55
• R & D block exemptions
• Basic exemption = 16-56
• Agreements exempted = 16-57
• Condition = 16-58
• Market shares & duration = 16-59
• Restrictions of competition = 16-60
• White list = 16-61
• Black list = 16-62
• Opposition procedure = 16-63
• Vertical agreements block exemption
• Basic exemption = 16-64
• Non-serverable black list = 16-65
• Severable black list = 16-66
• B. Mergers and joint ventures
• Joint ventures = 16-67
• Co-operative joint ventures
• Examination of co-operation joint ventures = 16-68
• Competition between parent companies = 16-69
• Competition between the parent companies and the joint venture = 16-70
• Effects on the position of third parties = 16-71
• Joint ventures which do not usually fall within Article 81(1) = 16-72
• Joint ventures likely to fall under Article 81(1) = 16-73
• Ancillary restraints = 16-74
• Exemption = 16-75
• Full-function joint ventures
• Definition = 16-76
• Turnover thresholds = 16-77
• Test for prohibition = 16-78
• C. Abuse of dominant position
• Prohibition = 16-79
• Dominance
• Definition = 16-80
• Relevant market
• Product market = 16-81
• Geographic market = 16-82
• Market power = 16-83
• Abuse
• Examples of abuse = 16-84
• Refusal to license = 16-85
• D. Practice and procedure
• Civil proceedings in national courts
• Nullity under Article 81(2) = 16-86
• Severance = 16-87
• Damages／injunction = 16-88
• Breach of Article 82 = 16-89
• Powers of the commission = 16-90
• Notification
• Purpose of notification = 16-91
• Benefits of notification
• Consequences = 16-92
• Drawbacks of notification = 16-93
• Non-notifiable agreements = 16-94
• Investigations and decisions
• Provision of information = 16-95
• Dawn raids = 16-96
• Legal professional privilege = 16-97
• Statement of objections and hearing = 16-98
• Adoption of decision = 16-99
• Sanctions
• Interim measures = 16-100
• Termination = 16-101
• Fines = 16-102
• Section 2 : Free Movement of Goods
• Introduction
• The Treaty provisions = 16-103
• Specific subject matter = 16-104
• A. Harmonisation
• Protection under National law = 16-105
• No discrimination = 16-106
• Harmonisation of National laws = 16-107
• B. Exhaustion of rights = 16-108
• C. Patents
• Essential function = 16-109
• Consent = 16-110
• Disguised restriction on trade = 16-111
• D. Trademarks
• Essential function = 16-112
• Consent = 16-113
• Disguised restriction on trade = 16-114
• (ⅰ) Artificial partitioning of the market between Member States = 16-115
• (ⅱ) Repackaging does not adversely affect the condition of the product = 16-116
• (ⅲ) No damage to the reputation of the trade mark = 16-117
• (ⅳ) The owner of the mark receives a sample of the repackaging = 16-118
• International exhaustion of trade mark rights = 16-119
• E. Copyright
• Specific subject matter = 16-120
• International exhaustion = 16-121
• F. Design rights = 16-122
• G. Passing off = 16-123
• Chapter 17 Competition Law in the United Kingdom
• A. Relevant legislation
• The old rules－the RTPA = 17-01
• The new rules－the CA = 17-02
• Relevance of E. C. competition law = 17-03
• B. Restrictive agreements
• The Chapter Ⅰ Prohibition
• Transitional arrangements = 17-04
• The basic prohibition = 17-05
• Extra-territorial effect = 17-06
• Voidness = 17-07
• Appreciability = 17-08
• Exclusions = 17-09
• Intellectual property licences = 17-10
• Exemptions
• Individual exemptions = 17-11
• Block exemption = 17-12
• Parallel exemptions = 17-13
• Notification to DGFT = 17-14
• Guidance = 17-15
• Notification = 17-16
• C. Abuse of dominant position
• Chapter Ⅱ Prohibition = 17-17
• Dominance = 17-18
• Abuse and effect on trade = 17-19
• No exemption = 17-20
• No transitional period = 17-21
• D. Competition procedure
• Power to investigate = 17-22
• Production of information = 17-23
• Entry of premises without warrant = 17-24
• Entry of premises with warrant = 17-25
• Privilege = 17-26
• Enforcement = 17-27
• Directions to terminate = 17-28
• Interim measures = 17-29
• Fines = 17-30
• Chapter 18 United States Antitrust Law
• Introduction = 18-01
• A. When does United States antitrust law apply?
• The Sherman Act = 18-02
• Antitrust Enforcement Guidelines for International Operations = 18-03
• B. The legal framework for United States antitrust law = 18-04
• Sherman Act section 1 : per se violations = 18-05
• Sherman Act section 1 : rule of reason = 18-06
• Penalties for violations = 18-07
• Sherman Act section 2 : unilateral conduct = 18-08
• C. The intellectual property guidelines = 18-09
• Analysing licensing arrangements = 18-10
• Cross-licensing and pooling arrangements = 18-11
• Grantbacks = 18-12
• Safety zones = 18-13
• D. Antitrust exemptions : U. S. versus E. U. = 18-14
• E. When do intellectual property rights lose their antitrust immunity? = 18-15
• F. Other applicable federal and state laws
• Filing notification under the Hart-Scott-Rodino Act = 18-16
• Conclusion = 18-17
• Chapter 19 Introduction to Chapters on Agreements
• The remit of this section = 19-01
• Variations between sectors and jurisdictions = 19-02
• General matters relating to contracts = 19-03
• Taxation = 19-04
• Funding agreements = 19-05
• Chapter 20 Research and Development Agreements
• Introduction = 20-01
• Types of agreement = 20-02
• Preparation
• Confidentiality = 20-03
• Description of the project = 20-04
• Existing rights = 20-05
• Arrangements regarding background and other rights = 20-06
• Competition law = 20-07
• Regulatory matters = 20-09
• Separate vehicle = 20-10
• The agreement
• Matters relating to the research project = 20-11
• Project description = 20-12
• Project management = 20-13
• Researchers = 20-14
• Facilities and equipment = 20-15
• Administration of the project
• Reports = 20-16
• Confidentiality = 20-17
• Laboratory notebooks = 20-18
• Sub-contractors = 20-19
• Employment matters = 20-20
• Intellectual property
• Background and other pre-existing rights
• Acquiring and taking licences of rights = 20-21
• Reducing the cost = 20-22
• Rights created in the course of the project
• Ownership of intellectual property = 20-23
• Rights created by consultants = 20-24
• Rights created by employees = 20-25
• Alternative arrangements regarding ownership = 20-26
• Co-ownership = 20-27
• Applications for registered rights = 20-28
• Potential time and expense of managing registered rights = 20-29
• Management of unregistrable intellectual property rights = 20-30
• Property which falls outside the scope of the project = 20-31
• Licences
• Drawbacks of licences = 20-32
• Exploitation by licensing = 20-33
• Patent pools and cross licensing = 20-34
• Other terms of the research and development agreements
• Project funds = 20-36
• Valuing participants' contributions = 20-37
• Restrictive covenants = 20-38
• Nature of liability = 20-40
• Managing liability = 20-41
• Partial termination
• General = 20-43
• Access to intellectual property = 20-44
• Full termination and its effects = 20-45
• Assignment and sub-contracting = 20-46
• Dispute resolution = 20-47
• Choice of law = 20-48
• Funding agreements = 20-49
• Chapter 21 Companies and other Business Structures
• Introduction
• Company and other structures for R&D and commercialisation = 21-01
• Why are business structures needed? = 21-02
• What types of business structure are there? = 21-03
• Corporate vehicles = 21-04
• Formation of a limited company = 21-05
• Main features of limited liability companies
• Advantages of limited liability companies = 21-06
• Separate legal personality = 21-07
• Limitation of liability
• General principles = 21-08
• Lifting the corporate veil = 21-09
• Separation of ownership and management = 21-10
• Ability to create a floating charge = 21-11
• Private and public companies = 21-12
• Controlling the vehicle company
• The rights of shareholders = 21-13
• Memorandum and articles
• Memorandum = 21-14
• Articles = 21-15
• Shareholder and board meetings = 21-16
• Voting rights and voting power = 21-18
• Shareholders' agreements = 21-19
• Control through other agreements = 21-20
• Constraints of company law
• Flexibility, but with limits = 21-21
• Rules applying to the issue of shares = 21-22
• Rules applying to distributions and dividends = 21-23
• Rules applying to the redemption and purchase of own shares = 21-24
• Prohibition on financial assistance = 21-25
• Continuing requirements = 21-26
• Annual shareholders' meeting = 21-27
• Annual return = 21-28
• Filing of accounts = 21-29
• Elective resolutions = 21-30
• Records required by the Companies Act 1985 = 21-31
• Responsibilities of directors
• Duty of good faith = 21-32
• Duty of skill and care = 21-33
• Liability of directors and protections = 21-34
• Statutory duties = 21-35
• Duties on insolvency = 21-36
• Attracting investment
• Securities legislation = 21-37
• Is a prospectus needed? = 21-38
• Responsibility for the prospectus = 21-39
• Investment advertisements = 21-40
• Unsolicited calls = 21-41
• Proposed changes to the law = 21-42
• Liability for misleading investors = 21-43
• Considerations for a typical IP based joint venture = 21-44
• Financing and share capital = 21-45
• Control = 21-46
• Board of directors = 21-47
• Competition of partners with the joint venture = 21-48
• Exit provisions and share transfers = 21-49
• Typical terms of venture capital backing = 21-50
• Conditions of subscription = 21-51
• Representations and warranties = 21-52
• Investment in the company = 21-53
• Ratchet mechanisms = 21-54
• Financial assistance = 21-55
• Investor protection clauses = 21-56
• Transfer of shares = 21-57
• Service agreements = 21-58
• Exit = 21-59
• Stock exchange listing = 21-60
• The markets = 21-61
• Formal requirements = 21-62
• Preparation for listing = 21-63
• Documentation for listing = 21-64
• Partnership = 21-65
• Limited partnership = 21-66
• Limited liability partnerships = 21-67
• Chapter 22 Assignments
• The assignment process = 22-01
• Present and future assignments = 22-02
• Individual rights
• Patents and patent applications = 22-03
• Copyright = 22-06
• Design right = 22-09
• Registered designs = 22-10
• Trade marks = 22-13
• Confidential information(or know-how) and passing off = 22-16
• Further assurance = 22-17
• Embodiments, other necessary property and licences = 22-18
• Consideration and the form of the document = 22-19
• Warranties and liability = 22-20
• Stamp duty = 22-21
• Governing law and dispute resolution = 22-22
• Chapter 23 Licensing
• About this Chapter = 23-01
• The decision to licence
• Licensing is not necessarily the best option = 23-02
• Commercial considerations－licensor = 23-03
• Commercial considerations－licensee = 23-04
• Preparation－and further factors influencing the decision to licence = 23-05
• Licensor
• The rights to be licensed
• Are the rights strong enough? = 23-06
• Exclusive licensees have a different perspective = 23-07
• Possible advantages of registered rights = 23-08
• Practical example = 23-09
• The route to market = 23-10
• Is the protection broad enough in practice? = 23-11
• Practical examples for paras 23-10 and 23-11 = 23-12
• Extent of territorial protection = 23-13
• Additional rights = 23-15
• Are the rights valid? = 23-16
• Are the rights enforceable in practice? = 23-18
• Does the licensor own the rights = 23-19
• Ways of dealing with problems = 23-20
• Other peoples' rights
• The risks = 23-21
• Searching for other peoples' registered rights = 23-22
• Legal restrictions on licensing
• Competition and similar laws = 23-23
• Contravention of competition and similar laws = 23-24
• Is the right owner obliged to grant licences under competition law? = 23-25
• Is the owner obliged to grant licences under patent law? = 23-26
• Dual use of technology = 23-27
• Impact of different national laws = 23-28
• Possibility of negotiating terms = 23-30
• Regulatory requirements = 23-31
• Liability = 23-32
• Confidentiality undertakings = 23-33
• Finding out about the licensee = 23-34
• Approaching the licensee = 23-35
• Licensee
• Investigating the licensor's rights
• General = 23-36
• Scope of investigation of registered rights = 23-37
• Investigation in practice = 23-38
• Inspecting the registers = 23-39
• What a licensee of registered rights looks for = 23-40
• "Freedom to use" searches = 23-41
• Problems with title－registered rights = 23-42
• Investigating unregistered rights = 23-43
• Problems with the licensor's title－unregistered rights = 23-44
• Typical problems with all rights = 23-45
• Warranties = 23-46
• Alternatives to taking a licence = 23-47
• Is it the right time to take a licence? = 23-48
• Assessing the licensor and the technology = 23-49
• Drawing up the licence
• Scope of the licence－the property to be licensed
• General licensor = 23-50
• Describing the property－licensor = 23-51
• Improvements－licensor = 23-53
• Describing the property－licensee = 23-54
• Physical property = 23-55
• Dividing the property－licensor
• Dividing the property－by prohibited acts = 23-56
• Dividing the property－licence wording = 23-57
• Dividing property－label licensing = 23-58
• Dividing property－field of use and territory = 23-59
• Tying = 23-60
• Quality control
• Quality control general = 23-61
• Quality control and trade marks = 23-62
• Confidentiality = 23-63
• Financial terms
• General = 23-64
• Fixed payments = 23-65
• Royalties = 23-66
• Deductions from royalties = 23-67
• Problems with royalties = 23-68
• Timing of payments = 23-69
• Competition law aspects of payment provisions = 23-70
• Administrative provisions relating to payments = 23-71
• Taxation = 23-72
• Other obligations of licensee
• Further incentives for licensees = 23-73
• Marking = 23-74
• Further obligations of licensor
• Most favoured licensee = 23-75
• Warranties = 23-76
• Warranties of validity = 23-77
• Warranties of subsistence = 23-79
• Warranties of ownership and freedom to use = 23-80
• Other provisions
• Invalidity = 23-81
• Infringement by others－licensor = 23-82
• Settlement licensor = 23-83
• Infringement by others－licensee = 23-84
• No challenge clauses = 23-85
• Liability－licensor = 23-86
• Insurance = 23-87
• Registration and government approvals = 23-88
• Term = 23-89
• Termination = 23-90
• Consequences of termination = 23-91
• Sub-licences = 23-92
• Assignment = 23-93
• Dispute resolution = 23-94
• Governing law = 23-95
• Chapter 24 Remedies and How to Get Them
• Introduction = 24-01
• A. Choosing Dispute Resolution Mechanisms
• Specifying these mechanisms in agreements = 24-02
• The options = 24-03
• Litigation = 24-04
• Arbitration = 24-05
• Arbitration clauses = 24-07
• Other mechanisms = 24-08
• Expert determination = 24-09
• ADR = 24-10
• Purpose of ADR = 24-11
• The neutral party = 24-12
• Future of ADR = 24-13
• Review = 24-14
• B. Strategy
• General = 24-15
• Commercial aims = 24-16
• Other questions to address = 24-17
• Cost questions = 24-18
• International disputes
• Choice of forum = 24-19
• Conclusion = 24-20
• C. Jurisdiction
• Introduction = 24-21
• The current position
• Basic rules－Brussels and Lugano Conventions = 24-22
• Validity of IP rights = 24-23
• Conflicts of jurisdiction = 24-24
• Patent disputes = 24-25
• Application of rules in recent patent cases = 24-26
• Position in Holland = 24-27
• The future = 24-28
• Conclusion = 24-29
• D. Procedure
• Introduction = 24-30
• Relevant tribunals
• Patents Court = 24-32
• Patents County Court = 24-33
• High Court procedures
• Overview = 24-34
• The effect of the new "CPR" = 24-35
• New rules on patent litigation = 24-36
• Commencing the action
• Letter of demand = 24-37
• Claim form = 24-38
• Particulars of claim = 24-39
• Acknowledgement = 24-40
• Alleging invalidity in patent action = 24-41
• Statement of truth = 24-42
• Summary judgment = 24-43
• Extensions of time = 24-44
• Case management = 24-45
• Admissions = 24-46
• Disclosure = 24-47
• Duty to disclose = 24-48
• Privilege = 24-49
• Method of disclosure = 24-50
• Implied undertaking = 24-51
• Disclosure in patent actions = 24-52
• Product or process descriptions in patent cases = 24-53
• Experts in patent cases = 24-54
• Finding an expert = 24-55
• Permission of court = 24-56
• Contents of report = 24-57
• Experts in non-patent cases = 24-58
• Experiments in patent actions = 24-59
• Further information = 24-60
• Further directions hearing = 24-61
• Preparation for trial = 24-62
• Trial = 24-63
• Appeals = 24-64
• Costs = 24-65
• Costs orders = 24-66
• Costs assessment = 24-67
• Security for costs = 24-68
• Procedure－Patents County Court
• Overview = 24-69
• Transfer to PCC = 24-70
• Statements of case = 24-71
• Subsequent procedure = 24-72
• Trial, judgment and appeals = 24-73
• Remedies and costs = 24-74
• E. Remedies = 24-75
• Injunctions = 24-76
• Available as of right? = 24-77
• Scope = 24-78
• Damages inquiries and accounts of profits = 24-79
• Amount of damages = 24-80
• Court's discretion = 24-81
• Accounts of profits = 24-82
• Assignees／exclusive licensees = 24-83
• Interlocutory or interim injunctions
• General principles = 24-84
• Procedure = 24-85
• Basis for granting interlocutory injunctions = 24-86
• Delay = 24-87
• Serious question to be tried = 24-88
• Damages an adequate remedy? = 24-89
• Balance of convenience = 24-90
• Merits = 24-91
• Exceptions = 24-92
• Effect of interlocutors injunction = 24-93
• Appeal = 24-94
• "Without notice" applications－injunctions = 24-95
• Search orders = 24-96
• Full and frank = 24-97
• Undertakings required = 24-98
• Form of order = 24-99
• Execution = 24-100
• Subsequent hearing = 24-101
• Freezing orders = 24-102
• Application for order = 24-103
• Conclusion = 24-104
• Index = 503