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Protection of Knowledge in the Shipbuilding IndustryWorkshop on Intellectual Property Rights
26 March 2010
General Aspects of IP in the Shipbuilding Industry
Dr. Wiebke Baars, LL.M., Taylor Wessing Hamburg
Fachanwältin für gewerblichen Rechtsschutz
I. Overview
IPR
Registered Rights Unregistered Rights
Patents
Utility Model
Design(registered)
Trademarks
Copyright
Unregistered Design Rights
Know-How
Unfair Competition
II. Registered Rights
Patents
Inventions = solution of a technical problem Of products or methods New (=not state of the art) Inventive step Capable of industrial application
Most patents in shipbuilding industry are related to Propulsion Power generation Loading and unloading systems
II. Registered Rights
Patents
Exclusive right Territorial right Application requires disclosure and publication of invention Application process monitored by public (competitors) Granted after examination by Patent Office
National PTOs European PTO
One application Conversion into national patents
No Community Patent
II. Registered Rights
Patents Proprietor has the right to stop others from
Making, offering, putting a product on the market, Using, importing, stocking a product Using a method subject to the patent
Lifetime: 20 years from filing Can be attacked during lifetime
II. Registered Rights
Utility Model, „little Patent“ Not available in all countries (e.g. not UK, Sweden, Luxemburg) Invention of a product, in some countries also for methods Novelty Inventive step (less strict than patent)
Exclusive right Territorial right Application requires disclosure and publication of invention Granted by Patent Office, no examination
II. Registered Rights
Utility Model, „little Patent“
Proprietor has the right to stop others from Making, offering, putting a product on the market, Using, importing, stocking a product
Lifetime: between 7 and 10 years Can be attacked during lifetime
II. Registered Rights
Trademarks Words, designs, numerals, three dimensional configurations incl.
shape or packaging of a product, colours Purpose of indicating the origin of goods and services Allowing the consumer to distinguish the products and services of one
company from that of another No protection if lack of distinctive character No protection if descriptive No protection if shape results from nature of goods No protection if shape is necessary to obtain technical result
II. Registered Rights
Trademarks Exclusive right Territorial right Granted after examination by Patent Office
National PTOs OHIM: Community Trademark WIPO: International Registration (Madrid Agreement and Protocol)
II. Registered Rights
Trademarks Proprietor has the right to stop others from
Affixing the sign to goods or packaging Offering goods with the sign, putting goods on the market, Importing or exporting goods with the sign
Scope of protection: identical and confusingly similar signs
Lifetime: 10 years, can be renewed for further 10 years without limitation
Can be attacked during lifetime
II. Registered Rights
Registered Design Appearance of the whole or a part of a product Resulting from the features of the lines, contours, colours, shape,
texture and/or materials of the product itself and/or its ornamentation Novelty Individual character
No protection for technical aspects of design No protection for component parts not visible once incorporated into
complex products Exemptions for spare parts
II. Registered Rights
Registered Design Exclusive right Territorial right Granted by Patent Office without detailed examination
National PTOs Office of Harmonisation in the Internal Market: Community Design WIPO: International Registration (Hague Agreement)
Design can be related to e.g. Hull shape, shape of devices
II. Registered Rights
Registered Design Proprietor has the right to stop others from
Making, offering, putting a product using the design on the market, using, importing, exporting a product
Scope of protection: similar overall impression
Lifetime: 25 years Can be attacked during lifetime
III. Unregistered Rights
Copyright Personal intellectual creations Protected literary, scientific and artistic works:
works of language, such as writings, computer programs works of fine art, including works of architecture and of applied art and
plans for such works illustrations of a scientific or technical nature, such as drawings, plans,
maps, sketches, tables and three-dimensional representations
III. Unregistered Rights
Copyright Exclusive Right
Reproduction; Distribution Making available to the public
Moral Rights Right to object against
Distortion Mutilation Modification
III. Unregistered Rights
Copyright: Illustrations of a scientific or technical nature drawings, construction plans, maps, sketches, tables and three-
dimensional representations Protection only covers the presentation as such Not the scientific or technical content Therefore building s.th. based on drawings or construction plans is no
copyright infringement
III. Unregistered Rights
Copyright: Works of Architecture and plans for such works E.g. buildings, bridges, accessible parts of ships (e.g. bridge, mess,
cabins, passenger‘s areas) Plans for architectural works include protection of the work itself Creating a building or a ship based on the plans would be an
infringement But: creation must be artistical, not just mere building standard
Unlikely for fright ships, container ships More likely for individually designed yachts, cruise ships
III. Unregistered Rights
Copyright Exclusive right Territorial right International Conventions (e.g. Berne Convention, TRIPS) grant
protection almost wordwide, but no identical standards)
Lifetime 70 years after death of author
III. Unregistered Rights
Unregistered Design Appearance of the whole or a part of a product Resulting from the features of the lines, contours, colours, shape,
texture and/or materials Novelty Individual character Made available to the public in the EU Protected agains direct copying Protected for three years after publication
III. Unregistered Rights
Know How (Protection of Trade Secrets)
package of non-patented practical information, resulting from experience and testing, secret (not generally know or easily accessible), substantial (significant and useful for the production of the contract
products) identified
III. Unregistered Rights
Know-How Examples: construction plans, technical drawings, organisation charts,
calculations, marketing plans, customer data, recipes, reseach results
Statutory provisions (Germany) Betrayal of trade or industrial secrets, sec. 17 German Act against
Unfair Competition (UWG), Betrayal of documents or instructions of a technical nature, sec. 18
German Act against Unfair Competition (UWG) Criminal offence Civil law sanctions
III. Unregistered Rights
Know How
Contractual Protection E.g. with employees, customers, designers, business partners… Confidentiality obligations Valid only between parties Penalty clauses
III. Unregistered Rights
Unfair Competition Available in many countries to different extent Act of competition contrary to honest industrial or commercial
chartacter Exploitation or misrepresentation of a competitor‘s work or reputation Misleading consumers about origin of a product
IV. Layers of Protection
IPR
Registered Rights Unregistered Rights
Patents
Utility Model
Design(registered)
Trademarks
Copyright
Unregistered Design Rights
Know-How
Unfair Competition
IV. Layers of protection
Example: Functional features of new steering mechnism ->
patent protection, utility model Brand name of new product ->
trademark protection Method of manufacture->
trade secret, contractual protection Shape of new device->
design protection
V. Threats to IPR
Counterfeiting / Piracy Leakage of secret Know How
Suppliers Yards Customers/Owners Reserach Centers Employees
VI. Advantages of IPR
Patents, Utility Models, Designs, Trademarks and Copyrights are EXCLUSIVE rights:
Exclusive right to stop third parties from using the rights Inventive advantage Economic exploitation: licenses
VI. Advantages of IPR
Patents, Utility Models, Designs, Trademarks and Copyrights are EXCLUSIVE rights
Remedies have been harmonised by European Enforcement Directive: Right to apply for evidence regarding an infringement that lies in the hands
of the other party to be presented Requirement: “reasonably available evidence sufficient to support its claim” Provisional and precautional measures Right to obtain information on suppliers and customers Right to claim damages Right to reasonable compensation of legal costs
VII. Difficulties
Spotting infringement
Territorial rights High costs of international protection, especially for patents High administrative effort Patents require publication of invention High costs of international litigation
Investigation, collection of evidence, lawyers
Burden of proof
VII. Difficulties
Article 5ter Paris Convention
„Patents: Patented Devices forming part of Vessels, Aircrafts or Land Vehicles
In any country of the Union the following shall not be considered as infringement of the rights of a patentee:
The use on board of vessels of other countries of the union of devices forming the subject of his patent in the body of the vessel, in the machinerey, tackle, gear and other accesories, when such vessels temporarily or accidentally enter the waters of the said country, provided that such devices are used there exclusively for the needs of the vessel“
VII. Difficulties
Article 5ter Paris Convention
Limits the right of patent owners in the event that a ship enters a country temporarily under the flag of a foreign nation
Stena vs Irish Ferries Reason: free trade
VII. Difficulties
Specific burdens in the Far East Especially China, Korea Low commitment of enforcing and respecting IP laws Lack of technical training and experience Lack of enforcement tools High litigation costs Low amount of damages and fines Outlook: Awareness is rising!
VIII. Contractual Clauses: The Solution?
Advantage of contractual protection of Know How Can be obtained immediately Low costs Trade secrets have broader scope, all useful information covered, no
level of invention required Low litigation costs
VIII. Contractual Clauses: The Solution?
Disadvantage of contractual protection of Know How Valid only between parties of the contract No protection against third parties‘ independent discovery or legal
aquisition of information Often not enforced for fear of harming business relations
IX. What to do to get the most out of your IPR
Awareness of protectability Awareness of infringements Analysis: which IPR suits your company best? Definitions of key markets Consider layers of protection Choose your battles
General Aspects of IP in the Shipbuilding Industry
Dr. Wiebke Baars Taylor Wessing
Am Sandtorkai 4120457 Hamburg
Tel.: 040/36 80 3 0Fax : 040/36 80 3 280
Email: [email protected]
Berlin Brüssel Cambridge Dubai Düsseldorf
Ebertstraße 1510117 BerlinDeutschlandTel. +49 30 885636-0Fax +49 30 [email protected]
Trône House4 Rue du Trône1000 BrusselsBelgienTel. +32 2 28960-60Fax +32 2 [email protected]
24 Hills RoadCambridge CB2 1JWEnglandTel. +44 1223 4464-00Fax +44 1223 [email protected]
28th Floor, Al Moosa Tower IISheikh Zayed RoadP.O. Box 33675, DubaiVereinigte Arabische EmirateTel. +971 4 332-3324Fax +971 4 [email protected]
Benrather Str. 1540213 DüsseldorfDeutschlandTel. +49 211 8387-0Fax +49 211 [email protected]
Neuss Frankfurt am Main Hamburg London München
Am Krausenbaum 4241464 NeussDeutschland Tel. +49 2131 74030-0Fax +49 2131 [email protected]
Senckenberganlage 20-2260325 Frankfurt a. M.DeutschlandTel. +49 69 97130-0Fax +49 69 [email protected]
HTC – Am Sandtorkai 4120457 HamburgDeutschlandTel. +49 40 36803-0Fax +49 40 [email protected]
No. 5 New Square StreetLondon EC4A 3TWEnglandTel. +44 20 7300-7000Fax +44 20 [email protected]
Türkenstraße 1680333 MünchenDeutschlandTel. +49 89 21038-0Fax +49 89 [email protected]
Paris Alicante Beijing Shanghai Warszawa
42, Avenue Montaigne75008 ParisFrankreichTel. +33 1 727403-33Fax +33 1 [email protected]
Paseo Explanada de España No.103002 AlicanteSpanienTel. +34 965 142805Fax +34 965 [email protected]
Unit 1503, Tower 2, Prosper CenterNo. 5, Guanghua Road,Chaoyang DistrictBeijing 100020Volksrepublik ChinaTel +86 10 8587-5886Fax +86 10 [email protected]
Unit 1509United PlazaNo. 1468, Nanjing West RoadShanghai 200040Volksrepublik ChinaTel +86 21 624772-47Fax +86 21 [email protected]
BSJP in alliance with Taylor WessingFocus Office BuildingAl. Armii Ludowej 2600-609 WarszawaPolandTel +48 (0)22 5 79 89 00Fax +48 (0)22 5 79 89 [email protected]
