Ws3 - Design Rights & Patents & Confidentiality Consolidated

WS 3 – DESIGN RIGHTS / PATENTS / CONFIDENTIALITY Design Rights - Protect the outward appearance of all or part of a product. Two types, registered and unregistered.

Differences: Unregistered design rights

Registered Design Rights: governed by the Registered Designs Act 1949 and Registered Designs Regulations 2001

were created in the Copyright, Designs and Patents Act 1988

arise on registration

arise automatically

lasts for 25 years from creation

generally lasts 10 years if starts to sell

give the owner a monopoly right

give the owner a right to prevent copying

can only protect aspects on view surface ornamentation patterns colour

cannot protect 2-Dimensional objects cannot protect surface decoration can protect parts of a machine not on display all about shape allows people to make spares but not the whole product

NB - They can both arise in the same item

RDR

UDR

Statute

RDA 1949 as amended by Registered Designs Regulations 2001

CDPA 1988

Definition

Appearance of whole or part of a product resulting from features of, in particular:

Any aspect of: (a) shape,or (b) configuration of the whole or part of an article

(a) lines (b) contours (c) colours (d) shape (e) texture or materials (f) ornamentation ‘Product’ includes packaging, get up, graphic symbols, typographic typefaces and visible parts Originality

New: no identical design/design differing in only immaterial details has previously been made available to public, and Individual character: overall impression to informed user differs from that of any other design that has been made available to public, and The design has not been made available to public: ie not published, exhibited or used in the trade

NB no right subsists unless the design is recorded in a document or an article has been made to the design

Must be original, ie must be: (a) the result of independent effort ie not copied, and (b) not commonplace in design field in question

NB 12 months grace period Exclusions

(a) features solely dictated by technical function (b) interface (mechanical fittings only) (but modular designs are registrable)

(a) methods of construction (b) must fit (c) must match (d) surface decoration

Ownership

Commissioner; the employer; the designer, in that order

Commissioner; the employer; the designer, in that order

Duration

25 years in total (maximum)

The shorter of: (a) 15 years from the end of the year of creation/recording; or (b) 10 years from the end of the year of first sale/hire

Infringement

Making, offering, putting on market, importing or exporting any product incorporating the design or any design which does not produce a different overall impression.

Primary: making articles to the design/ making document for purposes of making articles. Need to prove copying: substantial similarity is enough.

No need to prove copying

Secondary: import, sell, hire, offer, possess with knowledge/reason to believe is an infringing article.

NB private non-commercial acts are excluded

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REGISTERED DESIGN RIGHTS (RDR) 16.1.1

Checklist Structure

1. What is protected? 2. Is design registrable? S.1 RDA 3. Requirements for protection:

Subsistence

New – S.1B(2) Individual Character – S.1B(3)

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4. Do any exceptions apply? – S.1(C)(1) / (2) OR ----- IF ALRIEADY REGISTERED AND CLIENT COMES TO SEE YOU ABOUT INFRINGE: 5. Registered? – S.7(1) 6. Who owns it? (s.2) and duration? (s.8)

Infringement:

7. Has right been infringed? S.7A

If this in exam start at step 5

8. Do any Defences or Exceptions apply? – S.1(c) 9. if None – Remedies –S.24 1. What is protected?

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Could be whole or part of item

They can be used to protect a ‘design’ under section 1(1) RDA 1949. Analyse the item and fit into either 1. Section 1(2) A ‘design’ means ‘the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.’ 2. Section 1(3)

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“complex product” means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product; and

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“product” means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic typefaces and parts intended to be assembled into a complex product.

NB – DOES NOT PROTECT INVISIBLE BITS 2. Is design registrable? S.1 RDA

The requirements for protection are found in S.1(B), the design must be: 1. Section 1B(1) requires that the design be ‘new.’ 1B(2) says a design is new if ‘no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.’ 2. Section 1B(1) requires that the design have ‘individual character.’ 1B(3) says a design has individual character if ‘the overall impression it produces on the informed user differs from the overall produced on such a user by any design which has been made available to the public before the relevant date.’

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Does not add much to requirement of novelty. 3. The design must not be made available to the public per above sections. Is design made available to the public? if, per section 1B(5)(a), ‘it has been published, exhibited, used in trade or otherwise disclosed before.’ Yet; a design shall not be deemed to be made available to the public if the design is disclosed in the period of 12 months immediately preceding the ‘relevant date’ by the designer or any successor in title per section 1B(6)(c). The relevant date? Means the date on which the application for registration is made or is treated by the Act as being made per section 1B(7). 3. Do any exceptions apply?

Designs that cannot be protected include:

1. A component part of a complex product (per 1[3] a product composed of at least two component parts) shall not be new and with individual character unless: section 1B(8) a) once incorporated into the complex product it remains visible during normal use, and b) to the extent that it is visible, the visible features have new and individual character. • •

Design registration cannot be used against someone supplying a spare part for repair of a complex product Can be used to stop another manufacturer from using the design

2. Designs dictated solely by their technical function, e.g a nail. section 1C(1) 3. Interfaces: 1C(2) prohibits RDR from subsisting in a product, which must be, that shape so as to be ‘mechanically connected to, or placed in, around or against, another product so that either product may perform its function.’ Ie –must fit – prevents monopoly in replacement goods. Excludes only mechanical fittings. AT this point the design can be registered or not…. That is the end of the SUBSISTENCE QUESTION.. IF INFRINGEMENT BASED THEN QUESTION STARTS FROM HERE ONWARDS…. 5. What rights does registration give?

Section 7(1) says that the proprietor has the ‘exclusive right to use the design and any design which does not produce on the informed user a different overall impression.’ S.7(2) explains use of the design. 7(2)(a) includes selling on a market.

6. Who owns the design right and for how long?

OWNERSHIP: Section 2(1) says that the author of the design shall be treated as the original proprietor of the design. Section 1(3) says that the ‘author’ is the person creating it. Commissioning Where a design is created as a result of a commissioning then the commissioner is the original proprietor of the design per section 2(2).

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Employment If created by employee in ordinary course of employment, then employer is the original proprietor per section 2(3). Design made by computer If so and there is no human author, ‘the person by whom the arrangements necessary for the creation of the design are made’ is the author per section 2(4). DURATION: 8(1) says that the right lasts for an initial term of 5 years. 8(2) allows renewal on a 5 yearly term up to 25 years. If one’s right lapses by a failure to extend, one can apply for restoration of the right in the ‘prescribed period.’ ???? N.B. Designs which are registered are automatically protected from copying within the EU for 3 years from first publication – Unregistered Community Design Right. 7. INFRINGEMENT 16.2.10

Section 7(1) registration gives the registered proprietor the exclusive right to use the design and ‘and any design which does not produce on the informed user a different overall impression’. Section 7(2) using is defined and includes ‘ the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied’ Section 7A says that RDR is infringed by any person who, without consent, does anything which is the exclusive right of the proprietor by virtue of section 7.

Defences / Exceptions:

a. Person had consent. b. Infringing act was done privately for purposes which are not commercial – section 7A(2)(a) c. Infringing act was done for experimental purposes – section 7A(2)(b) d. An act of reproduction for teaching purposes – section 7A(2)(c) which complies with section 7A(3), which requires the act of reproduction ‘is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design,’ and ‘mention is made of the source.’ Section 7A(2) lists the exceptions to infringement; (a) non commercial private acts (b) experimental purposes (c) reproduced for teaching (d) foreign ships and aircraft Section 7(A)(5) says RDR is not infringed by someone repairing a complex product

NB – if any of the exclusions apply the infringer goes to the registrar to get the register rectified s.20. ALSO CONSIDER THE EXCEPTIONS THAT ARE CONTAINED IN STEP 3 - ABOVE Remedies:

a. b. c. d.

e.

Injunction s.24A Damages s.24A, yet not against an innocent infringer per section 24B(1). Account of profits s.24A Order for delivery up of offending items s.24C Order for destruction of offending items s.24D

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N.B. Section 26 provides a remedy for groundless threats of infringement because the threat of infringement proceedings is a serious threat to business [16.2.8] UNREGISTERED DESIGN RIGHTS (UDR) 16.3

Checklist

1. Is there a registerable design? (in whole or part of item) (s.213(2)) 2. Is it original? S.213(1) a. Not copied (s.213(1) b. Not commonplace (s.213(4) 3. Any exclusions? S.213(3) 4. Ownership (s.215) and for how long (s.216) 5. An Infringing Act? a. Presumption b. Primary c. Secondary 6. Remedies

1. Is there a registrable design?

UDR/Design Right is used to protect an ‘original design’ under section 213(1) CDPA 1988. ‘Design’ means ‘the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.’ section 213(2). The right automatically arises. Can only protect 3 Dimensional objects from copying. NOT 2D Can protect parts of a machine which are never in public view. Ie INSIDE MACHINE

2. Is it original?

1. S.213(1) requires the design be ‘original.’ Requires:

1. Not to be copied (s.213(1) AND 2. Not commonplace (s.213(4) LOOK out for wording like “new” and “striking” and “unique” not to be ‘commonplace in the design field in question at the time of its creation.’ Commonplace? - Distinguishable from most products in the market place. Ocular Sciences v Aspect Vision. Yes, if ‘trite, common or hackneyed’. Many features of contact lens are commonplace. Farmers Build Ltd [1999] Putting a number of commonplace features together in a new way can lead to a design that is not commonplace. Lambretta Clothing Co Ltd (a) Outline shape of Claimants track top was itself not original as it had been copied (b) Lambretta logos were surface decorations so excluded from UDR (c) Mere juxtaposition of patches of colour on the garment did not fall within the meaning

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of ‘configuration’ in s213(2) so no UDR (d) 2 dimensional colour applied to the garment did not generate an original 3 dimensional design 2.

3. Any exclusions?

The design must be recorded in a design document or an article has been made to the design as required in section 213(6). IE you must do a drawing of the design or actually make article

Specifically in existence to allow other people to make spare parts The following cannot be protected by UDR : 1. Objects which ‘must-fit’ another article (windscreen) – HOW ITEMS FIT TOGETHER Prohibited by 213(3)(b)(i). “features of shape or configuration of an article which enable the article to be connected to, or placed in, around or against another article so that either article may perform its function” Only the must fit bit that is excluded, rest can survive. EG – prongs on an electric plug are especially made to fit into the socket. Prongs cannot be protected by an UDR. 2. Objects which ‘must-match’ another article (car door). HOW ITEMS LOOK TOGETHER Aim is to prevent monopoly rights on replacement goods. Prohibited by 213(3)(b)(ii). “features of shape or configuration of an article which are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part” THINK – Is shape dependent on ‘whole’ look of bigger item which smaller part is part of. Therefore, appearance is dependant on a larger article of which object is to form a part. EG – designers cannot prevent other people making replacement parts that match the original products. Must fit and Must match can be overlapped 3. Methods/Principles of construction per section 213(3)(a). Should be protected by a patent. Method of construction = ‘a process or operation by which a shape is produced, as opposed to the shape itself’ per Kestos v Kempat. 4. An article which is ‘surface decoration.’ For example, a logo on a shirt as in the Lambretta Case. Prohibited in 213(3)(c).

4. Ownership (s.215) and for how long (s.216)

Ownership: s.215(1) says that the designer is the first owner of any design right. Designer means the person who created in s.214(1) or in the case of a computer-generated design, the ‘person by whom the arrangements necessary for the creation of the design are undertaken ( s.214(2)).’

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PTO Commissioning: s.215(2) says the person commissioning is the first owner Employment: s.215(3) says that if the design is created by an employee in the course of his employment the employer is the first owner. The same applies regarding directors = Ultraframe Case and Fulton v Barnett. Duration:

5. An Infringing Act?

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s.216 says that UDR expires either 15 years from end of year in which design was first recorded or,

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if articles are made to the design for sale/hire within 5 years of that calendar year, then 10 years from the end of calendar year in which design was first recorded.

Presumption of infringement, Raise the presumption first. 1. Are the works similar? 2. Has there been an opportunity to copy? Eg access to the product The presumption is rebutted with evidence that the product has not been copied and is original. Simple comparison of two products is required. Then Two types: primary and secondary. Primary Infringement: - Knowledge of infringement exists s.226(1) says that the owner of design right has the exclusive right to reproduce the design for commercial purposes – (a) by making articles to that design, or (b) by making a design document recording the design for the purposes of enabling such articles to be made. s.226(3) says that UDR is infringed by anyone who, without licence, does or authorises another to do an act which is the exclusive right of the owner of the UDR. Secondary Infringement: - No knowledge of infringement exists s.227 says UDR is infringed by someone who: (1)(a) imports for commercial purposes (1)(b) possesses for commercial purposes (1)(c) sells, lets for hire, offers or exposes for sale in course of a business an article which is, and which he knows/has reason to believe is an infringing article

6. Remedies

Damages s.229(2) additional damages available under s.229(3) depending on (a) flagrancy of the infringement, and (b) any benefit accruing to the defendant Injunctions s.229(2) Account of profits s.229(2) Delivery up of infringing articles per section 230 Disposal of infringing articles per section 231

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N.B. Damages are not available against an innocent infringer per section 233. Overlap with copyright: 16.3.6

N.B. 253 provides remedies for groundless threats of infringement proceedings 3D article cannot be protected by copyright unless it is an artistic object. Intention is to stop industrial objects that are not protected by copyright from being protected by copyright and restrict the protection of 3D objects that are not artistic to UDR only. If an article is copyright and has UDR then it is not an infringement of UDR to do anything, which infringes copyright. S236 – UDR that subsists in an object that is protected by copyright will be ignored and copyright prevails. S51 – RDR that can co-exist with copyright S52 If copyright does apply to article then protection is reduced to 25 years. The UDR is suppressed, only the infringement of copyright is considered.

Licences of Right

Section 237 in last 5 years of UDR protection, anyone can apply for a licence to use the unregistered design. If the parties cannot agree the terms, then Designs Registry settles the terms

Patents Chapter 17

Introduction

Patents are monopoly rights granted by the Government to protect new inventions. The relevant act is the Patents Act 1977. N.B. Patent system is ‘first to file’ and not ‘first to invent.’ What is protected? Benefit How is it obtained

How long does it last 1. Patentability S.1(1)

New invention Monopoly right Registration - by applying to UK Patent Office - applying to Euro Patent Office under Euro Patent Convention - international application under Patent Co-operation Treaty 20 years from application

a. New S.2 b. Inventive step S.3

Subsistence

c. Industrial application S.4 d. Not excluded under PA77 s1(2) + (3) OR ----- IF ALRIEADY REGISTERED AND CLIENT COMES TO SEE YOU ABOUT INFRINGE: 2. Registered?

3. Who owns it? (s.7 / 39) and duration? (s.25)

Infringement:

4. Has there been infringing act (s.60)

If this in exam start at step 2

5. Do any Defences apply? 8

6. if None – Remedies

1. Patentability S.1(1)

Requirements for patentability: Introduction - 1(1)(a) requires the invention to be ‘new.’

a. New S.2

1. Section 2(1) says an invention will be new if ‘it does not form part of the state of the art.’ 2. ‘State of the art’ = s.2(2), is ‘all matter which has at any time before the priority date of that invention been made available to the public by written or oral description, use or in any other way.’ This reflects the position under article 54(2) European Patent Convention

3. If there has been an ‘enabling disclosure’ the invention is part of the state of the art and not new…. Has there been an enabling disclosure: 1. This is a disclosure that would enable someone else to make the product or work the process. 2. The Patent Office asks whether, at the priority date, ‘a skilled worker could by observation or analysis reproduce the applicant’s invention from the disclosure in question.’ 3. ‘Priority date’ = date of filing patent application. 4. When is there such a disclosure: exhibition, article in paper, product is already on market, photograph? Demonstration only is not likely to be enough. 5. If end product does not disclose the process, then unlikely to be an enabling disclosure. APPLY TO THE FACTS:

4. Do a comparison of the products: Analyse the similarities and differences… then decide is product sufficiently novel???..... often cant say either way….

b. Inventive step S.3 Section 3(2) says there is such a step if the invention ‘is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art.’ If invention is obvious to the ‘uninventive technician’ then there is no inventive step.’ (Someone knowledgeable but lacking inventive spark). Question is a question of fact. Test from Windsurfing International v Tabur is that

1. one must first identify what the invention adds to the state of the art 2. if this new bit is not obvious to the uninventive technician than you have an inventive step. Biogen v Medeva says that the inventive step need not be significant. N.B. Commercial success/Plugging a hole in the market is generally indicative of an inventive step.

c. Industrial application S.4 The invention must be able to be put into practice. Section 4(1) says this is met if the invention ‘can be made or used in any kind of industry, including agriculture.’ N.B. 4(2) says that methods of surgery are not capable of industrial application.

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d. Not excluded under PA77 s1(2) + (3) The exclusions are listed in s 1(2) and (3) of the 1977 Act: The following are not inventions; s 1(2) ()a a discovery, scientific theory or mathematical method (discoveries of natural phenomena) ()b a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; (creations protected by copyright) ()c a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (mental acts) ()d the presentation of information; which cannot be an ‘invention’ A patent shall not be granted; s 1(3)

(a) for an invention the publication or exploitation of which would be generally expected to encourage offensive, immoral or anti-social behaviour;

(b) for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process. N.B. Computer programs are in theory excluded yet can be patented if it has a ‘technical effect.’ See 17.3.4 AT this point the design can be registered or not…. That is the end of the SUBSISTENCE QUESTION.. IF INFRINGEMENT BASED THEN QUESTION STARTS FROM HERE ONWARDS…. 5. What rights does registration give?

Once the patent is registered the owner has a monopoly right over the invention. (AUTHORITY)

6. Who owns the design right and for how long?

OWNERSHIP: Generally the inventor is the first person entitled to the patent. Section 7(3) says that the ‘inventor’ is the ‘actual deviser,’ the person who devised the invention. Multiple inventors From Henry Bros Ltd v MoD it seems that the court will regard the person who had contributed to the main concept of the invention as the person entitled. Position will change under Patents Act 2004. Employees Section 39 provides that if the employee makes an invention then right to the patent will belong to the employer if • •

the invention is made in the course of the employee’s normal duties and, those duties might reasonably be expected to lead to inventions.

Section 42 says that one cannot contract out of section 39. An attempt to do so is void. Special duty to employer Then employer owns right. E.g. director to company.

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Compensation Section 40 entitles the employee to compensation if • •

the patent is of outstanding benefit to the employer, and it is just that compensation be awarded.

Is the benefit of the patent: Garrison’s Patent involved a patent which provided 2-3% of a small company’s turnover and this was not an outstanding benefit. See section 41 factors re amount of compensation [17.5.2] Position will be easier for employee under Patents Act 2004 [17.10]. DURATION: If above are met can apply for a patent. Lasts 20 years from application 7. INFRINGEMENT 17.6

Section 60 deals with infringement. If patent is a product: Section 60(1)(a) if third party ‘makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise’ without the consent of the proprietor of the patent. If patent is a process: Section 60(1) says it is infringed if the third party, without consent, either; (b) ‘uses the process or he offers it for use in the UK when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement,’ or (c) ‘disposes of , offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.’ For product and process: Section 60(2) says you also infringe the patent if you, without consent, supply or offer to supply ‘any means...for putting the invention into effect,’ to someone unentitled. For infringement the offending product or process must come within one of the ‘claims’ in the patent specification. Infringement occurs even if only one patent claim is infringed. Interpreting claims: Improver Corporation v Remington test: a) Does the variant have a material effect upon the way the invention works? If yes, the invention is outside the claim. b) Would fact that variant had no material effect been obvious at the date of publication of the patent to a reader skilled in the art? If no, variant is outside the claim. c) If obvious, would a reader skilled in the art have understood from the language of the claim that patentee intended strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim. If outside the claim, no infringement?

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Patent infringement hinges upon the precise wording of the claims The act must take place in the UK for infringement of a UK patent. 8. Defences to infringement: 17.8

1. Consent therefore requirements of infringement are not met. 2. Defendant is co-owner of the patent and as such is entitled to work the patent himself. S.36. 3. The patent is not valid and should not have been awarded patent in first place, or some of the claims are not and should be struck out. 4. Section 60(5)(a) infringing act is done privately and not for commercial purposes. 5. Section 60(5)(b) infringing act is done for experimental purposes. 6. Section 64; if defendant was using the relevant technology before the priority date.

Remedies: 17.9

Section 61 -

injunction order for delivery up of offending goods order for destruction of offending goods account of profits or damages declaration

N.B. No damages against an innocent infringer per section 62 Potential consequences: Section 61 remedies Section 72 revocation of patent Section 70 remedies for unjustified claims of infringement

Confidentiality - Confidence upholds a person’s obligation to keep a secret, and it is governed by case law. The Elements of Confidentiality: 18.2

CONFIDENCE STRUCTURE: 1. Any express agreement? Probably NO… so… 2. Implied : Did the information have the necessary quality of confidence about it? Test from Thomas Marshall v Guinle: in identifying confidential information or trade secrets which the court will protect in an industrial or trade setting; (ONLY BRIEFLY DEAL WITH STEPS 1 AND 2)

1. must be information the release of which the owner believes would be injurious to him or of advantage to his rivals or others.

2. the owner must believe that the information is confidential or secret, i.e., that it is not already in the public domain. as long as the owner believes it to be confidential I think he is entitled to try and protect it.

3. the owner's belief under the two previous heads must be reasonable. 4. the information must be judged in the light of the usage and practices of the particular industry or trade concerned. Think about it reasonably and from confider’s point of view, i.e. is it reasonable for the confider to want it kept quiet?

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3. Was the information imparted in circumstances importing an obligation of confidence? 1. Is there any relevant trade practice? 2. Anything in a contract? Probably not… and do not assume there is a contract! Then look at the relationship between parties:  Employer / Employee – implied duty to keep quiet  Whats the context – business meeting? / is the person working for the comp on special job  If a contract did exist would it be in the contract?  If is a trade secret, there is an implied obligation to keep quiet. 4. Was the unauthorised use detrimental to confider? – Question of fact. Relate to the facts… would it be detrimental to Owner if information used by third party?? If one can point to use in the future which would be unauthorised, then that is sufficient. No permission for future use to detriment of the claimant. The idea imparted and the subsequent use must be related, i.e. a degree of overlap (De Maudsley). N.B. Have an express confidentiality agreement, do not rely on the common law for protection. IF YES =>

Breach of confidence

5. Remedies:

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Before info released – advice client to get a confidentiality agreement with person threatening to release information. Have an express confidentiality agreement, do not rely on the common law for protection.

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ALSO.. link into other forms of copyright… eg if formula is written down then copyright may apply s.3(a)(1)

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Injunction to prevent disclosure of the information granted in regard to confidential information that is of commercial value where: (a) there are two rival businesses and not to grant would give the wrong-doer an advantage (eg, Speed Seal Products Ltd v Paddington); or (b) the ‘springboard’ doctrine applies, ie where one business would gain an unfair advantage over its rivals because of unauthorised disclosure to it of commercial information

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Compensatory damages are available for breach of confidence (Seager v Copydex Ltd)

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An account of the defendant’s profits is also possible (Peter Pan Manufacturing)

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An order for delivery up, or destruction under oath, of the offending document or articles.

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