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CIPIL Spring Conference: Intellectual Property: Use It or Lose it?

Saturday 7th March 2015

This one day conference explored the apparently increased place of the obligation of use within intellectual property law. We began with a review of recent developments in case-law and legislation across the three fields (trade marks, patents, copyright). We concluded by reflecting on the relationship between obligations to use and property rights, the harms caused by those holding but not using IPRs, and various ways in which use might be incentivised (including pricing mechanisms imposing penalties for non-use), and issues of territoriality. Different fields of intellectual property law operate with different expectations as to whether an intellectual property right owner will exploit their intellectual property, and how the law should respond if the rightholder decides not to do so.

Trade mark protection was (in Britain, at least), for some time, premised on the idea that the trade mark owner was using the mark, and, even when registration came to be permitted prior to use, provisions were introduced limiting the effects of marks that had not been used and making possible their revocation. In passing off, if a trader who has built up goodwill ceases to trade (or ceases simply to use the sign with which the goodwill has become associated), the goodwill is presumed gradually to dissipate. Patent law, likewise, was premised on an expectation that a patentee would exploit the invention, and this was in many legal systems given effect to by providing that unworked patents might be revoked or subject to compulsory licences. That said, these provisions have tended to be subjected to increasing numbers of conditions or limitations. Meanwhile, recent years have seen a rise in concern over so-called ‘non-practising entities’ (NPES, aka ‘trolls’, with varied judicial responses to such claimants.

In copyright law, the expectations of use have played a lesser role, though legal systems have frequently provided legal mechanisms for regulating decisions by copyright owners in works of deceased authors; while contractual regulation (particularly in civil law systems), has frequently protected authors from decisions of transferees of copyright not to exploit works. Latterly, however, the idea that a rightholder must ‘use it or lose it’, has underpinned rules relating to term extension for sound recordings and, more generally, orphan works.

Chair: Mr Richard Arnold

The programme was as follows and discussions took place at the end of each session:

Morning Sessions

Non-Use of Trade Marks

Hazel Carty (University of Manchester) Passing Off and the Dissipation of Goodwill

Emma Himsworth QC (1 Essex Court) Genuine Use: Would you Know it if You Saw it?

Patent Law Working Requirements and the Problem of Non-Practised Patents

Robert Burrell (University of Sheffield) Justified Non-Use

Sam Ricketson (University of Melbourne) Penalties for Non-Working on Patents: the Evolution of the Rules in the Paris Convention and the Constraints of TRIPs

Ansgar Ohly (University of Munich) Non-Practised Patents: Menacing Troll Weapons or Nothing to Worry About


Afternoon Sessions

Copyright and the Obligation of Use

Tom Frederikse (Clintons Solicitors) Term Extension: Sound Recordings and Performers Rights

Stef van Gompel (IViR, University of Amsterdam) ‘Lose it to Use it’: Freeing Orphan Works from Proprietary Shackles

Georg von Graevenitz (Queen Mary) Clutters & Thickets: Is There a Cost and Could it be Reduced? 

An Emerging Principle of Use?

Emily Hudson (King’s College London ) Use it or Lose It, or Use it and Gain it? Perspectives From Chattel Property Law 

Robert Bone (University of Texas) Harm from Non-Use: What Exactly is Wrong with not Using Intellectual Property?