B24 IPL Past Paper PDF

B24 IPL Leaning competencies 1\. Distinguish trade marks, patents and copyright from each other 2\. Advise on the protection criteria for trade marks, patents, copyright and confidential information; and on practical steps relating to these 3\. Advise on ownership rules pertaining to patents and...

B24 IPL Leaning competencies 1\. Distinguish trade marks, patents and copyright from each other 2\. Advise on the protection criteria for trade marks, patents, copyright and confidential information; and on practical steps relating to these 3\. Advise on ownership rules pertaining to patents and copyright 4\. Identify subject-matter that is copyright-protectable 5\. Identify the scope of trade mark, patent and copyright protection (civil infringement) and their remedies 6\. Identify ways in which trade mark registrations and patent grants may be challenged; and strategies in infringement suits 7\. Identify strengths and weaknesses of a company's IP position; as well as opportunities and threats (SWOT analysis) 8\. Explain ways to extract value from intellectual property 9\. Identify relevant issues in IP deals and due diligence Trademarks TM Basics Trade Mark Basics Symbols what is a trademark? Benefits of registration **[Practical considerations pre-registration]** Registration process **[Opposition process]** Criteria: **[Absolute Grounds]** for Refusal s7(1)(b) devoid of distinctive character s7(1)(c) designate objection 1. 2. 3. 4. Han's (F & B) Pte Ltd v Gusttimo World Pte Ltd \[2015\] 2 SLR 825 ("Hans") Love & Co Pte Ltd v The Carat Club Pte Ltd \[2009\] 1 SLR(R) 561 ("Love") In the Matter of a Trade Mark Application by Marvelous AQL Inc \[2017\] SGIPOS 3 ("Marvelous") s7(2) Acquired distinctive character as a result of use Criteria: **[Relative Grounds]** for Refusal ▪ Relative grounds vs absolute grounds ▪ What is an earlier trade mark ▪ Section 2(1) - earlier trademark by priority by date of registration ▪ Section 8 ▪ Section 8(2) ▪ Section 8(2)(b) (most common objection) Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal \[2014\] 1 SLR 911 ("Staywell") - three-stage test Stage 1 mark-for-mark comparison. **[Are the marks more similar than dissimilar?]** If the marks are not similar, then there is no need to evaluate steps 2 and 3 As a **[whole]**, but with varying **[threshold]** for technical distinctiveness Whose perspective? - **[impression]** of the **[avg consumer]** Visual similarity - 4 points Oral similarity - 2 approaches Conceptual similarity Stage 2 : Compare the goods and services British Sugar factors Stage 3: Assess the likelihood of confusion - impermissible/ permissible factors permissible factors impermissible factors non-exhaustive factors Registration and Renewal of Trade Marks Registration Renewal **[Exclusive rights]** **[s26 TMA]** - Exclusive Rights Subject to disclaimer / limitation **[s30(2) TMA]** s36 - Registered TM is personal property s38 - Right to assign s42 - Right to grant license **[Advantages]** of TM registration Post-registration Challenges **[s23 read with s7 and s8 TMA - Invalidation]** **[s22(1)(b) - Revocation]** **[ Trade Mark Infringement]** s27 TMA read with s8 TMA Staywell 3 stage Defences s28(1) TMA - Honest use s28(2) TMA - unregistered mark s28(3) TMA - Same/similar mark but different goods /services s28(4) TMA - non-commercial use **[Copyright]** s8 CA - Subject matter protected by Copyright excluded subject matter **[Criteria for protection]** Fixation Requirements: (1) fixation, (2) original; and (3) human author, (4) connecting factor 1\. Originality 2\. Authorship 3\. Reduction to Material Form (Fixation) - s16 and s20 CA **[Ownership of Copyright]** bundle of rights s133(1)(a) CA - First ownership rule s133(3) CA - First ownership rule can be varied by contract s140 CA - Assignment of future copyright s134(3) CA - **[Employer owns]** copyright, if employed (as opposed to contracted) s135 CA - Author (the commissioned party) is the first owner by default for works commissioned on or after 21 Nov 2021 s138, 139 CA - Assignment s142 CA - License Successors in title Nature of the copyright Exclusive Rights s108 CA - Negate right to exclude others s41 to s50 CA - Right of **[Reproduction]** and the \'Substantiality rule\' s53 CA - published if made public s55 CA - Publishing of a sound recording s56 CA - what constitutes publication of a film s58 CA - Matters to be considered or ignored for publication s60 CA - Matters not constituting publication Right of **[publication]** is not be confused with communication s61 CA - Right to **[communicate]** to public by **[electronic means]** s67 CA - Right to **[perform in public]** Right of **[Adaptation]** s17 CA - adaptation of literary work s18 CA - Adaptation of a musical work s19 CA - adaptation of literary, dramatic or musical work s112(1)(f) CA - Exclusive rights to adaptation of work s114 CA - **[Duration]** of copyright = lifetime +70 years **[ Infringement and Exceptions]** Global Yellow Pages v Promedia Directories Pte Ltd \[2017\] SGCA 28 1\. Does copyright subsist? Breaking it down by category of works 2\. Has copyright prima facie been infringed? Identify the type of infringement: **[Is there a casual link between the plaintiff\'s work and the allegedly infringing work?]** s146 CA - **[Infringement by doing act]** comprised in copyright (I.e. primary infringement) RecordTV Pte Ltd v MediaCorp TV Singapore Pte Ltd and Ors \[2011\] 1 SLR 830 (CA) at \[50\] s 73 Infringement by **[\"commercial dealing]**\" s147 CA - Infringement by **[importation]** for commercial dealing, etc. s148 CA - Infringement by commercial dealing, etc. 3\. Do any defences or exceptions apply? Exceptions s183 CA - Permitted use ▪ Specific categories that cannot be excluded by contract: s 187 ▪ Must fulfil conditions: s 186(2), (3) s190 CA - **[Fair use]** s191(a) to (d) CA - non-exhaustive factors Acts done for purposes of examination: s 202 Acts done for judicial proceedings: s 290 Acts done for seeking or giving legal advice: s 291 s154 CA - Limitation period after 6 years **[Patents]** Subtopic **[ What is a Patent]** **[ Criteria for obtaining a patent]** **[ Section 13(1) Patents Act]** \[1\] New (s 14) s14(10) PA - State of the Art Person skilled in the Art Lee Tat Cheng v Maka GPS Technologies \[2017\] SGHC 48 at \[36\]-\[39\] First Choice Currency Pte Ltd \[2008\] 1 SLR(R) 335 at \[28\] Ng Kok Cheng v Chua Say Tiong \[2001\] 2 SLR(R) 326 at \[21\] Anticipate s14(2) PA - Priority Date s17(1), (3), (9) and (10) PA Key Concepts "Made available to the public" Rule against mosaicking Genelabs Diagnostics \[2000\] 3 SLR(R) 530 at \[26\]-\[28\] Enabling disclosure Muhlbauer AG v Manufacturing Integration Technology Ltd \[2010\] 2 SLR 724 at \[17\] Assessment for \'New\' - 3 steps Main-Line Corporate Holdings Ltd v United Overseas Bank \[2007\] 1 SLR(R) 1021 at \[54\]-\[55\] Main-Line Corporate Holdings Ltd v United Overseas Bank Ltd \[2007\] 1 SLR(R) 1021 at \[63\] Exceptions s14(4) PA - \'grace period\' 12 months before date of application filing s14(4)(a) and (b) PA - disclosure was unlawful / breach of confidence s14(4)(c), (d) or (e) PA - disclosure at exhibition / publication \[2\] Involves an inventive step (s 15) s15 PA - three requirements Key Concepts **[structured]** approach of the Windsurfing test is a **[guide only]** - Windsurfing v Tabur Marine \[1985\] RPC 5 \[3\] Capable of industrial application (s 16) s16(1) PA - capable of industrial application Exclusions s16(2) PA - method of treatment of human not capable of industrial application Public policy: not in the interest of the public to have methods of treatment and diagnosis subject to such a strong monopoly. s16(3) PA - product can be capable of industrial application \[4\] Section 25(4) Patents Act s25(4) PA - Sufficiency of disclosure Public Policy: the Public must have the benefit of the invention after the term **[Two-Step Test]** - First Currency Choice Pte Ltd \[2008\] 1 SLR(R) 335 at \[60\]-\[61\] **[BAR:]** s13(2) and (3) PA - Invention cannot be offensive, immoral or anti-social behavior Grant process **[ Practical Considerations]** s26 PA - Date of filing application = priority date s27 PA read with 29 (1) PR: 18 months publication from date of filing s36(1) PA - term of the patent = 20 years 51(1) PR - Renewal Pre-filing considerations Disclosure of Invention Filing Strategy Ownership IP Due Diligence Subtopic **[ Infringement]** s66(1)(a) PA s66(1)(b), (c) PA What is the extent of the protection conferred by a patent grant? **[Or how should claims be construed in infringement? (s113 PA)]** **[Three]** approaches to Claim construction Lee Tat Cheng v Maka GPS Technologies Pte Ltd \[2018\] 1 SLR 856 ("Maka") **[affirmed the purposeful approach]** **[ Remedies, Defence and Counterclaim]** s66(1) PA - No infringement due to unfulfillment of patentability criteria s66(2) PA - Non-commercial use s69(1) PA - Defendant had no knowledge of patent s69(2) PA - Use of the word \"patent\" does not put Defendant on notice **[ Revocation - two ways]** \[1\] s80(1) PA - Not a patentable invention s81 PA- The patent owner must be afforded the opportunity to amend the offending specification s82(1)(d) PA read with Rule 80 - Revocation Process s80(5)(a) and (b) PA - Effect of Revocation **[ Remedies, Defence and Counterclaim]** **[ Statutory Damages]** Patents Act (PA): sections 67, 75, 76 s67 PA - proceedings for infringement of patent s75 PA - Effect of non-registration on infringement s76 PA - Infringement of rights conferred by publication of application Copyright Act (CA): section 305 Section 308 CA - Statutory damages capped Statutory v Additional damages (punitive): section 307 CA PH Hydraulics & Engineering Pte Ltd v Intrepid Offshore Construction Pte Ltd and another \[2012\] SGHC 133 Trade Marks Act (TMA): section 31 Section 31(5)-(6) TMA Factors are not the same under each Act **[Account of Profits]** derived from the infringing act - **[prevent double recovery - account of profits are mutual exclusive]** s305(1)(c) CA s305(2) CA - mutually exclusive s305(3) CA s31(2)(c) TMA s31(4) TMA - mutually exclusive s31(3) TMA s67(1)(d) PA s67(2) PA Main-Line Corporate Holdings Ltd v UOB and Anor (First Currency Choice, Third Party) \[2009\] SGHC 232 Bosch Corp v Wiedson International (S) Pte Ltd \[2015\] SGHC 105 Additional Damages Election of Remedies Defendant should file defence and counterclaim on the basis of invalidty Revocation of TM Registration: section 22 TMA Invalidation of TM Registration: section 23 TMA Revocation of a Patent: section 80 PA Confidential Information ▪ Protection Breach of confidence under common law (Megarry J, Coco v Clark, p 47 - 48) \(a) Information confidential in nature \(b) Information imparted in circumstances importing an obligation of confidence \(c) Unauthorised use or disclosure Basis of damages Wrotham Park (as an alternative to injunction) ▪ Breach and remedies I-Admin \[43\] to \[66\] on breach Plaintiff established: 1. Importance of protecting both the **[wrongful gain interest]** (preventing unauthorized profit from confidential information); AND 2. The **[wrongful loss interest]** (preventing any improper threat to the confidentiality of information). 3. breached their obligation of confidence by acquiring, circulating, and referencing the appellant\'s confidential materials **[without permission]** 1+ 2+ 3 = **[presumption]** that Defendant\'s conscience has been impinged Defendant establishes: 4. That his **[conscience]** has not been affected? If **[no]**, then **[there has been a breach of confidence;]** \[67\] to \[79\] on remedies Injunctions: These are often considered vital in confidence cases as they help contain the damage from the loss of confidentiality.. Order for Delivery Up: This remedy involves the surrender of unauthorized copies of the appellant\'s materials.. Account of Profits: This remedy requires the defendant to disgorge any profits made from the breach.. Equitable Compensation: This remedy aims to restore the plaintiff to the position they would have been in if the breach had not occurred. Equitable Damages: courts can award damages in addition to or in substitution for an injunction. IP in business SOWT analysis SO Strategies: Use your strengths to take advantage of opportunities. This can involve leveraging your strengths to enter new markets or launching new products. ST Strategies: Use your strengths to mitigate threats. For instance, if you have strong customer loyalty, use it to fend off competitors. WO Strategies: Address weaknesses to exploit opportunities. If you lack a certain capability but see an opportunity, invest in training or resources to fill the gap. WT Strategies: Minimize weaknesses to avoid threats. If you\'re facing a potential threat and have a weakness that could exacerbate it, take immediate steps to strengthen that area. Extracting value from IP ▪ Working the IP ▪ Licensing Franchising Crosss-licensing ▪ Collaboration / Joint Venture ▪ Sale ▪ Collateralisation / Securitisation Due diligence Company innovation cycle