Crown Copyright
Seminar Report - 9 June 1999
Professor Charles Oppenheim and Carol Tullo
Following extensive consultation the government produced its White Paper on this topic, which has engendered some lively debate over the years. In this Report, Carol Tullo Controller of HMSO outlined current government policy, and Professor Charles Oppenheim of Loughborough University critically evaluated these, and looked at the attitude of the European Commission's Legal Advisory Board.

Security Interests in Intellectual Property
Seminar Report - 22 May 1997
Mark Bezant and David Townend
There is increasing interest among the accounting profession and others in the possibility of using intellectual property as security for raising finance. In this Report, Mark Bezant of Arthur Andersen examined the feasibility of this strategy from an accountancy viewpoint, and David Townend of the University of Sheffield the technical legal aspects which need to be attended to if intellectual property rights are to be successfully securitised.

The Designs Directive
Seminar Report - 15 April 1999
Clive Thorne
After a very long period of gestation, the Commission finally managed to get through its proposed designs directive, albeit in a somewhat truncated form. There are many problems with the Directive in its present form, and there will be a number of difficult questions which will need to be addressed by UK legislators implementing it. These problems are examined by Clive Thorne of Denton Hall in this Report.

Trade Mark Attorneys - Beware the Big Bad Woolf
Tony Martino and Stephen J M Kinsey
Trade mark attorneys be warned: the Trade Marks Registry has announced its intention to scrutinise so-called `kitchen sink' pleadings and take action through striking out and awards of costs outwith the scale. This practical work, complete with drafting precedents, guides you through the minefield of pleadings and shows you how to gain the upper hand and leverage your opponents in the brave new world of Woolf.

Patent Suits: Do They Distort Research Incentives?
Seminar Report - 21 January 1999
Dr Mark Schankerman
In this seminar report, we show that the process of enforcing patent rights distorts the R&D incentives provided by the patent system. We provide the first large-sample evidence on the frequency and patterns of patent suits. Using a large sample of patents taken out in the United States during the period 1975-91, we compare the characteristics of patents involved in suits to a random control group. Overall, there are about 11 suits per 1000 patents. We show that the litigation rate depends heavily on the technology area, the characteristics of the patent (the number of claims, citations, and other features), and the characteristics of patent owners (foreign or domestic, individual or corporate). The methodology we develop can be used to predict the probability of being involved in a suit, given the profile of the patent. This approach could be useful in determining damages for infringement and for transactions in patent portfolios.

An Analysis of the Pharmaceutical-Related Provisions of the WTO TRIPs (Intellectual Property) Agreement.
Dr Jacques Gorlin
This monograph provides a brief negotiating history of the agreement that revolutionised the worldwide protection of trade-related intellectual property. The analysis focuses on provisions related to the research-based pharmaceutical industry, which is among the industries that are most dependent on strong intellectual property protection and was closely involved in the TRIPs negotiations. With the world's economies on the brink of a possible Millennium Round of trade negotiations, this new monograph, which provides a detailed negotiating history of the pharmaceutical-related provisions of the TRIPs (Trade-Related Intellectual Property) Agreement, will be an essential resource for any future talks on IP. The monograph's relevance goes beyond the pharmaceutical industry and is a must-have reference for those in both western and developing nations who follow: a) the current effort to implement existing TRIPs obligations by the year 2000; b) World Trade Organization (WTO) consultations and dispute settlement cases on IP; and c) possible future IP negotiations in the WTO. The negotiating history reflects voluminous documentation collected during and after the negotiations; interviews with some of the principal negotiators and members of the GATT (WTO) Secretariat and contemporaneous accounts of the negotiations. This analysis will provide an important historical perspective for any future trade-based intellectual property negotiations as well as for WTO consultation and dispute settlement cases on the provisions reviewed in the text.

Survey Evidence Back to the Future
Seminar Report - 18 February 1999
Gary Lea
The fashion for survey evidence came and went in the 1980s. Many would say that its lack of popularity in recent times was a good thing too! One consequence of the Canon case in the ECJ could be to revive this institution as a way of showing a mark's reputation. But are the Registry and the Court likely to be any more ready to countenance this sort of evidence than they were a decade ago? This paper will examine the various reasons for rejecting survey evidence. It will make suggestions as to `best practice' and future developments.

International Exhaustion of Right: Review of the Economic Issues
Stefan Szymanski
This topic has become a subject of widespread public debate since the European Court of Justice decided in the Silhouette case that a proprietor of a registered trade mark could use it to prevent the importation of `grey' goods bearing the same mark applied by the proprietor. In this country it has also come to the fore with the well-publicised decision of some large supermarkets to sell jeans imported from Eastern Europe. The whole question is now being considered both by the European Commission and at a national level, in this country by the House of Commons Trade and Industry Committee. The issues are not easy to resolve, and require rigorous economic analysis of the costs and benefits of international exhaustion of rights. This important report by Stefan Szymanski provides such an analysis.

Signatures and Portraits and Trade Marks
Seminar Report - 18 November 1998
Justin Watts
There has been much publicity recently about attempts to register portraits of famous people or images (e.g. Princess Diana, the Scottish Widow) or the names and signatures of famous people (e.g. Elvis Presley). In this seminar, Justin Watts examines the registrability of these as trade marks, and the strength of the protection they might confer of the proprietor if they were to be registered.

Plant Variety Rights: an Outmoded Impediment
Seminar Report - 19 February 1998
Dr Margaret Llewelyn and Trevor Cook
Under Article 27 of TRIPs, where plant varieties are excluded from patent protection, member states must provide and effective sui generis form of protection. Since 1964, the UK has had a sui generis form of protection for plant varieties in the form of plant breeders' rights. In this lively seminar, Dr Margaret Llewelyn argued that the plant breeders' rights system still fulfils a useful purpose, whilst Mr Trevor Cook argued that in failing to respond to the challenges of biotechnology, the patent system had been hampered, not by any intrinsic problems of its own, but by some of the consequences of the plant breeders rights system.

Holding the Ring: the Copyright Tribunal, Past, Present and Future
Seminar Report - 23 October 1997
Jack Black and Michael Freegard
The Transformation of the Performing Right Tribunal into the Copyright Tribunal was effected by the Copyright Designs and Patents Act 1988. Since then, the workload of the Tribunal has expanded considerably (an indication of the growing importance of copyright). In this seminar, which was scheduled to coincide with the launch of their analysis of the decisions of both Tribunals `The Decisions of the UK Performing Right and Copyright Tribunal' (Butterworths 1997) the authors Mr Michael Freegard and Mr Jack Black explored some of the themes they had been able to develop from their work.

Can This Be the Way to Run a Railroad? The European Copyright Directives and How They have been Implemented in the UK (or not, as the Case may be)
Seminar Report - 22 April 1998
Jack Black and Michael Freegard
In this seminar, Mr Peter Prescott QC offered a trenchant criticism of the implementation of various copyright Directives in the UK. He argued that the problem was not the civil servants who have to draft the Regulations, who are competent and conscientious, the real problem is the lack of transparent legislative process.
Peter Prescott QC

A Critical Analysis of the European Commission's Proposal for a Directive Harmonising Droit de Suite
Seminar Report - 18 June 1998
David Booton
Mr David Booton argued that if royalty payments to artists could be shown to fulfil a reward function such that they would act as a stimulus for artistic production, then the right could be justified. However, the empirical data supporting harmonisation in this area is at best inconclusive, and the rational underlying it academically weak. The Commission should reject it as a poorly thought out piece of legislation.

Enforcement of IPRS in the EEA: are Transnational Injunctions a Legitimate Exercise of Article 24 Jurisdiction
Seminar Report - 18 March 1998
Hamish Porter
Mr Hamish Porter having analysed the key cases, argued that that there is an overriding need for the application of the Brussels Convention in relation to jurisdictional issues in respect of pan-European infringements of IP rights to be clarified so that the approach of the European courts can be harmonised. He hoped that the ECJ will affirm the power of national courts to issue cross-border interim measures under Article 24.

European Commission: Survey of Current Work in Industrial Property
Seminar Report - 26 June 1997
Daniele Franzone

From Research Co-Operation to Patents: Regulatory and Practical Obstacles
Professor John N Adams
This study by Professor John N Adams was commissioned by the OECD. It focuses in particular on the legal obstacles to co-operative ventures, and identifies areas for further research. As an Appendix, it also includes a paper by Mr Julian Hickey on `Co-operative Research and Development Arrangements under UK Tax Law'.

Domain Name Issues on the Internet
Seminar Report - 28 November 1996
Dinah Nissen
The problem of `name grabbing' is exercising many companies at the present time. In this seminar, Dinah Nissen examines the problem exhaustively, and suggests some possible solutions.

Parallel Imports in the European Community
Guy Tritton
Parallel importing brings sharply into focus the tension between the existence of national intellectual properties, and the attempts of the Commission to create a single market. The Commission and the Court have had to try to resolve the tensions between these two imperatives, and there is now a considerable body of jurisprudence offering guidance on when right may properly be exercised to prevent parallel importing. In this paper, Guy Tritton, the author of Intellectual Property in Europe gives a clear exposition of this jurisprudence, and provides an excellent summary of the present position.

Green Paper on Vertical Restraints: Franchising
Professor John N Adams
This paper attacks the view expressed in the Green Paper that the franchising block exemption has not hindered innovation in the field. It argues that the franchising market is changing, and that the growth sector is, and is likely to be, in the area known as `big league' franchising. It is in this area that the block exemption is most problematic, because it is focused on more traditional forms of franchising. Major reform is necessary to take account of this.

TRIPs and Enforcement
Dr Frank Wooldridge
The TRIPS Agreement is intended to strengthen and harmonise the protection of intellectual property on a global scale. Part III of the Agreement is concerned with enforcement of intellectual property rights. This Report is concerned with the extent to which the laws of various states comply with the requirements of this Part. A particular focus of this study is Germany, not because Germany is a `problem' state in the sense in which some countries are regarded as problematic in the present context, but because it is a state with a written constitution which guarantees certain rights and liberties, which could conflict with the requirements of the TRIPs Agreement. This problem is likely to be quite widespread, and the areas of difficulty which are the subject of this study, are likely to crop up in other contexts. Dr Wooldridge's study sheds valuable light on an, as yet, little studied area, but one which is likely to be of increasing importance. Dr Wooldridge, is a distinguished comparative lawyer, and he has produced a thorough and excellent examination of this difficult area.

The New Copyright Treaties
Seminar Report - 17 April 1997
Michael Flint
The WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty were concluded in December 1996, and represented the culmination of several years of work. In this paper, Mr Michael Flint, who was present at the Diplomatic Conference, outlines what the Treaties do, and the ways in which UK law will need to be changed to comply with them.

Has a Mens Rea Element been Introduced into Patent Infringement?
Seminar Report - 19 December 1996
Justin Watts
The decisions of the EPO to grant a patent in Mobil raised the question as to whether it is the intention of the prior user against that of the later user which is relevant. In this Report, this question is examined in the light of the decision of the House of Lords in Merrell Dow, and some of the difficulties remaining after that case.

Broad Patent Claims: How to Prevent Unjust Enrichment
Seminar Report - 7 February 1997
Tim Roberts
The problem of over-broad claims being allowed is a major problem in the rapidly developing field of biotechnology. In this seminar, Mr Roberts, a patent attorney who is well-known as an expert in this field, analyses the nature of the problem, and offers some possible solutions to it.

Well-Known Trade Marks
Seminar Report - 2 January 1997
David Tatham OBE
The subject of well-known trade marks is currently high on the agenda for intellectual property experts. In this seminar, Mr David Tatham, who is one of the best known UK experts on trade marks, and the author of a study of `well-known' marks for WIPO, considers what amounts to a `well-known' mark, and the current thinking of the Committee of Experts who are looking at a possible revision of the Paris Convention Article 6bis to clarify what amounts to a `well-known' mark.

The Use of Intellectual Property as Security for Debt Finance
David Tatham OBE
Mark Bezant and Richard Punt, Arthur Andersen
A business's intellectual property may be its most valuable asset. Despite this, intellectual property is seldom used as security for debt finance. This study explores the financial and economic issues underpinning the use of intellectual property as security. The study considers the financing requirements of intellectual property-based businesses, the nature of security and the suitability of intellectual property, and methodologies for the valuation of intellectual property.

The New Draft Designs Directive
Seminar Report - 30 May 1996
Alison Firth and Uma Suthersanen

Industrial Designs: the Latest Proposals
Seminar Report - 13 December 1995
Alison Firth and Jim Lahore
Discusses recent EC developments, and the relevant official publications and statements, and other literature. Comparisons are drawn with Australian experience and research in this area.

Fighting Fakes in China: the Legal Protection of Trade Marks and Brands in the People's Republic of China
Connie Carter
This study discusses the origins and development of trade marks in China, and compares Chinese and Western attitudes to their protection. The current Trademark Law is fully analysed (the full English text is appended) and methods and problems of enforcement are described. Originally a dissertation for the LL.B. at SOAS, this is the first study to take account of the cultural dimensions of the problem and place them in their historic context.

The New UK Statutory Instruments on Copyright and Related Rights
Joint Seminar with BLACA

Using Intellectual Property as Security
David Townend
This study is perhaps the first comprehensive attempt in this country to examine the problems of using intellectual property as security. We believe that it will be of considerable value to bankers and to companies seeking to raise money on the strength of the rights they own. As yet, this type of financing is undeveloped in the UK, outside the context of film production. The study describes the nature and complex inter-relationship of intellectual property, property, company, and commercial law and considers also the work of the Diamond Report and the relevant provisions of the US Uniform Commercial Code. We feel that it deals with these complexities with commendable lucidity.

Privacy and Publicity: Society, Doctrine and the Development of Law
Oliver R Goodenough
This report examines the development of these concepts in the United States, in theory and in case law, and attempts to re-theorise the subject, providing at the end a complete `Restatement of the Right of Identity'. The relevant US legal materials are appended, and there is also an interesting section on the UK situation.

Human Genome Patents: an Analysis of Ownership
Sandra M Thomas and Julian F Burke
Comments on the results of a comprehensive analysis of patented human DNA sequences, focusing in particular on the activity of the EPO, the USPO and the Japanese Patent Office. The report finds, amongst other things, that the USA and Japan have acquired a larger share of EPO patents in this field than has Europe itself. The report is based on an article which first appeared in 'Nature'.

The EC Data Protection Directive 95/46/EC and its Consequences for Higher Education
Michael Edenborough
This is the official response of the Institute to the Consultation Paper published by the Home Office on the EC Directive, and its implementation in the UK. It focuses particularly on issues of confidential information in higher educational institutions. The text of the Directive is appended.

Audiovisual Authors - the Lost Tribe?
Seminar Report - 4 July 1996
Walter Dillenz
Films are the product of many contributors, and this fact gives rise to many problems which are solved, around the world, in different ways. The speaker examines the relevant provisions of the Berne Convention (through its various Revisions) then various national systems of film copyright, including those of Slovenia, the Russian Federation, Belgium and Switzerland, the USA and the UK. Relevant EU provisions are also noted.

Second Tier Protection: the European Commission Green Paper on the Protection of Utility Models in the Single Market
Seminar Report - 25 January 1996
Margaret Llewelyn
Sets out in detail the arguments for and against the introduction of utility models in the UK, in the light of the EC Green Paper advocating their use, and the German IFO Institute survey upon which this is based.

Unjust Enrichment, the New Paradigm for Unfair Competition Law?
A.W.J. Kamperman Sanders Ph.D.(Lond.)
There has long been argument as to whether or not the UK is fulfilling its obligation under Article 10bis of the Paris Convention to assure to nationals of Union countries effective protection against unfair competition. Part of the problem which proponents of a new tort of unfair competition have encountered, is that of arriving at a precise definition of the conduct on the part of the defendant which would constitute the tort. This paper offers an alternative approach, translating a principle of market failure into a doctrine of unjust enrichment, thereby avoiding the problems inherent in a tortious doctrine.

Unfair Competition - a New Approach
Seminar Report - 18 April 1996
A.W.J. Kamperman Sanders Ph.D.(Lond.)
The doctrine of unfair competition has not hitherto found much favour in UK law. The speaker examines alternative approaches in the United States and elsewhere, and concludes that the concept of unjust enrichment may provide a better solution to some of the difficulties in this area.

Moral Rights and Adaptation Rights in Phonograms
Simon T. McB. Newman
Describes the history and current practice of moral rights and adaptation rights in Europe (particularly the UK, France and Germany), contrasting civil and common law approaches and discussing the possible influence of EC harmonisation measures on future developments. The growth of new technologies affecting, in particular, the publishing and entertainment industries, and the increased ease of adaptation, is also noted: the importance of freedom of contract in this area is very firmly underlined. There is an extensive bibliography.

The Madrid Protocol
Seminar Report - 22 February 1996
David Tatham

The Economic Importance of Patents
Dr Christopher P. Raymond
This is a follow-up to the much cited report of the same name by Professor Aubrey Silberston which the Institute published in 1987. The year studied by Professor Silberston was 1985. That used in the present study is 1992. It paints a very different picture of the importance of patents to the UK economy from the earlier study. The share of GDP produced by the ten most patent intensive industries increased from 5.22% to 7.81% in this period. As a percentage of industrial output the contribution of these ten rose from 14% to 37%. The implications of these and other changes tracked by Dr Raymond in this report are of considerable importance both to industry and to policy makers.

The Economic Importance of Trade Marks in the UK (1973-1992): a Preliminary Investigation
Dr D.M. Higgins and Dr T.J. James
In spite of their importance in the modern commercial world, there has been little systematic consideration of the economic importance of trade marks. The object of this pioneering work is to attempt to fill this gap, paralleling as far as possible the Institute's studies of the Economic Importance of Patents and the Economic Importance of Copyright. It covers a twenty year period, making available in accessible form for the first time detailed statistics on the use made of the trade mark registration system. Although only a preliminary study, it points to the increasing importance of trade marks in the UK economy, and to this extent it tracks the findings in the Institute's Patent and Copyright studies. This report will be of interest and value to industry, policy makers and to empirical economists.

Should Importation be Considered as Working? A Study of Article 27 of the GATT TRIPs Agreement
Dr Peter L. Kolker
A wide-ranging discussion, which concludes that there should be no discrimination between imported and locally-produced goods; that importation is now becoming universally recognised as working; and that every country should bring its patent legislation to the TRIPs standard. The work of WIPO, and the provisions of the Paris Convention are considered, and the Canadian experience, with particular references to pharmaceutical products, is described in detail.

Utility Models/Second Tier Protection: A Report on the Proposals of the European Commission
Margaret Llewelyn
A highly critical analysis of the proposals, with especial reference to their application in the UK. Part 1: The EC's Green Paper on the Protection of Utility Models in the Single Market; Part 2: A Determination of the Function and Rationale for Second Tier/Short-Term Patent Protection; Part 3: The AIPPI, Max Planck Institute and CIPA Proposals and Possible Use of Copyright/Design Right; Part 4: Second Tier/Short-Term Patent Protection and Genetic Material (an analysis of the possible effects of the introduction of utility models in the biotechnology industry).

Mice, Morality and Patents
Dr Deryck Beyleveld and Professor Roger Brownsword
This Report critically evaluates the interpretation placed by the European Patent Office on the relevant articles of the European Patent Convention, and provides the most penetrating analysis to date of the `green' and animal rights issues.

The Economic Importance of Copyright
see also 3
Tristan Price

A Classification Scheme for Intellectual Property Holdings
Frances Thimann

EC's "Rental" Directive
Seminar Report - 13 October 1993
Nicholas Garnett

The EC Commission's Copy-right Harmonisation Programme: an Overview Seminar Report - 16 September 1993
J A Sterling

John Richardson Computers Ltd v Flanders and Chemtec Ltd
Seminar Report - 22 July 1993

Character Merchandising
Report covering Australia, Canada and the USA prepared for WIPO

Annex to above

The Future of the Anton Piller Procedure
Seminar Report - 19 April 1993
William Flenley and Roger Wyand

Harmonisation of US and European Patent Law
Seminar Report - 9 December 1992
Professor William Keating

National Consumer Council Working Paper on Intellectual Property
Seminar Report - 3 June 1992
Jill Johnstone and Alan White

Feist/Magill and the Draft Data Base Directive
Seminar Report - 12 March 1992
Hamish Sandison and Brenda Sufrin

The EC Green Paper on the Legal Protection of Industrial Designs
Seminar Report - 7 November 1991
Alison Firth and Christine Fellner

Supplementary Protection Certificates
Report on EC's proposal

Patent Protection for Inventions relating to Medical Treatment of Humans and Animals
A Study on behalf of the European Patent Office
R Smither BSc

Character Merchandising
A Study on behalf of the European Patent Office
C Morcom

Analysis of Proposal of 30 August 1990 for a Council Regulation (EEC) on Community Plant Variety Rights
Dr N J Byrne

Analysis of Basic Proposal for a New Act of the International Convention for the Protection of New Varieties of Plants
Dr N J Byrne