INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL PROPERTY RIGHTS

Riccardo Piselli

Instructional goals

The course introduces students to intellectual property rights. The main goal is to provide students with a solid understanding of intellectual property and its functioning in both common law and civil law jurisdictions. More specifically, the course will provide an analysis of copyright and patent law, trademarks, trade secrets and industrial design. For many of the topics covered, the course will focus on both EU and US law.

Intended learning outcomes

By the end of the course, students should be able to: - understand the theoretical foundations of intellectual property rights. - understand basic principles of patent law, copyright law, trademarks, trade secrets, design, and intellectual property in general. - navigate the complex legal landscape of intellectual property in the EU and US. - understand the critical role of intellectual property as an intangible asset for entrepreneurs and businesses. - understand how to manage IP risks and elaborate the overall IP strategy of a company. - navigate the challenges and opportunities of IP in the digital environment. - critically assess the impact of emerging technologies on the foundations of intellectual property.

Course Contents

The course starts with an analysis of the competing policies underlying the intellectual property laws and regulations. It covers the basics of copyright, patents, trademarks, trade-secrets, design, and other IP-related areas of law (such as competition law). It analyses some of the salient controversies in intellectual property law, including the protection for software, datasets and business methods. It investigates the challenges and difficulties of protecting trademarks on the Internet.

Reference Books

Reference Books (only the parts that will be assigned by the instructor): Annette Kur, Thomas Dreier and Stefan Luginbuehl, European Intellectual Property Law. Text, Cases and Materials (2nd edn, Edward Elgar 2019) Slides, materials, research papers, and case studies may be listed and made available on the e-learning platform and assigned to students on a weekly basis. Updated versions of relevant laws, as from time to time provided or indicated to the students, shall always be consulted.

Teaching Methods

Classes will be based on both frontal instruction and interactive teaching (e.g., active participation and discussion). For most of the classes, students will be required to discuss a specific topic or case study. During each class, randomly selected students will be asked questions about the lesson’s topic and will be required to take a position on the most controversial issues in the assigned readings. This will prompt discussion among groups of students, with the goal of stimulating critical thinking. Students’ participation will be part of the final assessment. Therefore, for each class, students will be expected to have already studied the assigned materials.

Assessment Method

The final assessment will be based on 3 elements: (i) students’ attendance rate and participation in the class discussions, which will account for 35% of the final evaluation; (ii) midterm exam, which will account for 35% of the final evaluation; and (iii) final oral exam, which will account for 30% of the final evaluation. All students are automatically enrolled as attending students. Students wishing to be non-attending ("non-attending students") are required to apply for a non-attending status. To do so, they shall send a written request to the instructor at the outset of the course. Non-attending students will have to take the final exam during the one examination date and/or retake sessions available. The assessment will account for 100% of the overall final grade and will be more extensive than the one for attending students. To successfully complete the exam, non-attending students are required to study all the materials and readings assigned to attending students plus all the additional materials that will be indicated by the instructor.

Thesis assignment criteria

Successful completion of the three-pronged assessment and a keen interest in the subject.

Week 1

• The nature of IPRs: concept and rationale. Introduction to different types IPRs. The regulation of IP at the international and supranational level: some introductory remarks. The administrative structures and bodies in charge of the enforcement of IP law. • A brief history of copyright law and regulation: from the Berne Convention to the European Union legislation. The harmonization strategy at the EU level.

Week 2

• The current state of European copyright law. Subject matter protected. Conditions of protection. Ownership of rights. Exclusive rights. Exceptions. Term of protection. • Related rights. Contracts. Technological protection measures. Territoriality.

Week 3

• Software and database protection. • Copyright in the digital realm: from the information society to the digital single market. Information and data governance.

Week 4

• Harmonisation by interpretation and filling the gaps: the role of the CJEU. Case on communication right (Fredrik Neij and Peter Sunde Kolmisoppi (The Pirate Bay) v. Sweden, no 40397/12 [2013]. • Trade secrets. Structure and contents of the Trade Secrets Directive (TSD). Subject matter and scope. Acquisition, use and disclosure of trade secrets. Measures, procedures and remedies.

Week 5

• Industrial Designs: background and main features of industrial design. Protection of product appearances on other legal grounds. Acquisition of protection and procedural issues. Subject matter of protection. Substantive requirements for protection. • Seminar on Platforms and influencers from a copyright and digital perspective.

Week 6

• Interim assessment on Copyright, Trade secrets, and design. • Introduction to patents: their nature, terms and objective. The international cooperation in the field of patents. The European Patent Convention (EPC) and the European Patent Office (EPO).

Week 7

• Substantive patent law, patentable subject matter and exceptions to patentability, various forms of patentable inventions, and patentability requirements. • Structure and functions of the European Patent Organisation. The patent granting procedure before the EPO.

Week 8

• Patents and biotechnology inventions. • Patents and competition law. Standard essential patents.

Week 9

• Case studies: two real cases will be discussed to apply in practice the foundational principles of patent law. • Introduction to the European trademarks law. The Trade Mark Directive (TMD) and the European Union Trade Mark Regulation.

Week 10

• The EU Intellectual Property Office’s mission, its structure and main functions. The proceedings leading to registration, refusal or cancellation of trademarks. • Protectable subject matter and requirements for protection, as elaborated in the CJUE case law. An introduction to trademarks as objects of property and licenses. Absolute grounds for refusal, and particular forms of signs.

Week 11

• Article 7 EUTMR and Article 4 TMD on signs that are excluded from protection, and the ways trademarks can overcome grounds for refusal by acquiring distinctiveness, including an overview of the most relevant CJUE case law. • Contents of protection and scope of rights conferred by a trademark: from conflicts and infringement to limitations of protection. An overview of collective marks and certification marks. The loss of rights: revocation and invalidation of trademarks.

Week 12

• Case studies: three ECJ cases will be discussed. • Final workshop.