CIPIL Annual Spring Conference 2015 – Intellectual Property: Use it or Lose it?

Abstract: This one day conference seeks to explore the apparently increased place of the obligation of use within intellectual property law. We begin with a review of recent developments in case-law and legislation across the three fields (trade marks, patents, copyright). We conclude 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: The Hon. Mr. Justice Arnold

Confirmed Speakers: Hazel Carty (University of Manchester) (dissipation of goodwill), Emma Himsworth QC (One Essex Court) (genuine use), Professor Robert Burrell (University of Sheffield) (proper reasons for non-use), Professor Sam Ricketson (University of Melbourne) (compulsory licensing for non-working), Professor Ansgar Ohly (University of Munich) (non-practising entities) , Dr Stef van Gompel (IViR, University of Amsterdam)(orphan works), Tom Frederikse (Clintons) (Term Amendment Directive), Professor Robert Bone (University of Texas) (what is wrong with not using IP?), Dr Emily Hudson (KCL) (requirements of use in property law), Henning Grosse-Ruse Khan (University of Cambridge) (the idea of use in the global marketplace), Professor Georg von Graevenitz (UEA London) (empirical evidence and incentives to use).

Location: Faculty of Law, University of Cambridge, LG17

To book a place via the electronic booking system:Booking System

For further information, please contact sebe2@cam.ac.uk