Intellectual Property Matters – Legal Clinic on Intellectual Property

The following is an excerpt of the content discussed during a legal clinic organized by The Hub Singapore on 16 October 2014.

At this legal clinic, Koh C-u Pinn from Arielle Law Corporation explained the basics of intellectual property law to the participants, who came from a variety of industries. A lively discussion took place at the end. A few practical pointers from the clinic:

Overview

Generally, intellectual property rights do not protect ideas alone. There must be some identifiable embodiment of the idea. Copyright protects the expression of an idea, while a patent protects an invention.

Trademarks

  • Your business’ name or logo distinguishes your product or service from those of another business. By registering for a trademark, you prevent your competitors from using names or logos that are confusingly similar to yours. If they do so, you can apply to court for an injunction that stops them from infringing on your trademark.
  • Generally, registration for trademarks works on a first-come-first-serve basis. Thus, if someone has registered a confusingly similar name or logo before you, your application for a trademark will be rejected.
  • The name or logo submitted for trademark registration should not be a generic word that is used in everyday language. It also should not be purely descriptive.
  • After trademark registration, you may use ® with your trademark, which indicates that it has been registered.
  • IPOS charges $341 for registering a trademark for each class of products or services. Usually, trademark agents, or lawyers like C-u Pinn are engaged to deal with the entire process. Fees for trademark registration are PIC-claimable.

Passing off

  • Where a name or logo is not a registered trademark, it may still enjoy protection under the common law tort of passing off. Enforcement is more complicated than for a infringement of a registered trademark as three points have to proven: that there has been misrepresentation, that there is goodwill associated with the mark, and that there is damage caused by the use of the mark.

Copyright

  • A work has to be an original composition in order to enjoy copyright. No registration is required for copyright protection to arise. Even the © sign is not a must.
  • To bring a successful claim for copyright infringement, copying must be proven. This is one reason copyright claims are generally expensive. Where the infringer has plagiarized but has subsequently changed the phrasing of a work to mask his copying, it is not easy to trace back.
  • Copyright protection includes derivative works. For example, if you have written an original curriculum, it cannot be translated into another language without the permission of the copyright owner.
  • One way to make it easy to prove original authorship in court is to mail your hard-copy works to yourself. The post office provides a time stamp that can show when the work was created. Just don’t unseal the envelope after it has been mailed to you. For soft-copy works, ensure you can access the time-stamps created by the software used.

Patents

  • Patents protect inventions.
  • There are three requirements to qualify an invention for a valid patent. The invention must be new globally, it must have an inventive step, and it must have industrial application.
  • Because the invention must be new globally before the patent is approved, confidentiality agreements are very important when discussing your invention with other parties. If you disclose your invention to other parties without an obligation of confidentiality, an argument can be made that the invention has been made available to the world at large and it is no longer new, thus disqualifying it from patent protection.
  • Theoretically, a verbal confidentiality agreement works but its existence is always easier to prove if it has been written down.
  • Upon approval, patents are disclosed to the world. Some manufacturers do not want the risk of someone reverse-engineering their products based on their patents, so patent protection may be unsuitable in such cases.
  • The cost for patent protection is higher than that for other forms of intellectual property. Drafting of the specifications for a patent can cost a few thousand dollars, while filing fees can go into the seven figures, as most inventors would want to apply for patent protection in more than one country. Like trademark registration, costs for patent application are PIC-claimable.

Registered Designs

  • Registered design protects the look of an item. The design must be industrially applicable. It also has to be new globally. It needs to have aesthetic appeal and not be purely functional.

Trade Secrets

  • Trade secrets are secrets that confer a commercial advantage to the business.
  • Trade secrets do not require registration. The confidential information is enforced by contracts in the form of confidentiality agreements with employees and other parties who have access to that information.
  • Measures should also be taken to restrict access to the trade secret. This can take the form of having a few subcontractors to manufacture the different parts of your product instead of using one.
  • Practically, you should also limit access to trade secrets by having written confidentiality agreements with parties that you discuss it with. At the very least, drop an email before the meeting to say that confidential information will be discussed at the meeting. The other party may decline the meeting or ask not to be told any confidential information.
  • The confidentiality agreement should state that the parties are entering into discussion of confidential information, and the duration of the confidentiality period, for example two years. It should be signed by an authorized person, for example a director, if the other party is a company.
  • Where there has been unauthorized use of a trade secret, the common remedy is to obtain an injunction from the court to stop its use.

For more information, please contact Koh C-u Pinn, director of Arielle Law Corporation.

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