Guidebook to Intellectual Property

Citation

Jacob, R., Fisher, M., & Chave, L. (2022). Guidebook to Intellectual Property (7th ed.). Hart Publishing.

Chapter Summary

The seventh edition runs to about 290 pages in twenty-eight short chapters, grouped in five parts. The publisher presents it as a book for newcomers, law students and others such as business people, that outlines the basic legal principles of intellectual property and also shows how the system works in practice, comparing the subject to chess, where knowing the rules is not the same as knowing how the game is played. The authors avoid technicalities and use no footnotes; cases are referred to but explained briefly. Sir Robin Jacob and Matthew Fisher teach intellectual property law at University College London, and Lynne Chave is a researcher at UCL's Institute of Brand and Innovation Law who previously practised as a patent and trade mark attorney.

Part I, Chapters 1–3: Imitation, Monopoly and Control; Courts, Remedies and Legal Actions; Patent, Copyright or Design?

The introductory part sets out the general frame before any single right is studied: why the law sometimes allows control over copying and imitation, how intellectual property disputes reach the courts and what remedies are available, and how to choose between the main forms of protection for a product.

Part II, Chapters 4–7: Patents and How to Get Them; Important Inventions; More about Patents; Industrial Designs

"Protecting the Product" covers patents in three chapters, starting with how a patent is obtained, and then turns to the protection of industrial designs.

Part III, Chapters 8–16: Trade Marks and Passing Off to Malicious Falsehood and Other Actions

The longest part deals with trade marks, passing off and unfair competition. After an opening chapter that sets trade marks beside passing off, it follows a registered mark through its life: registration (Chapter 9), infringement (10), the exceptions to infringement (11) and removal from the register by revocation and invalidity (12). Chapter 13 covers EU trade marks, "international" registration and well-known marks, and Chapter 14 collective marks, certification marks and geographical indications. The part ends with passing off (15) and malicious falsehood and other actions (16).

Part IV, Chapters 17–23: Introduction to Copyright to Moral and Other Related Rights

The copyright part moves from an introduction, through the works that copyright protects (18) and authorship, ownership and term (19), to the paired chapters "What Is Infringement of Copyright?" and "What Is Not Infringement?" (20–21). It closes with dealings in copyright (22) and moral and other related rights (23).

Part V, Chapters 24–28: Miscellaneous Matters

The last part gathers subjects that cut across the individual rights or sit beside them: the criminal law and customs seizure (24), confidence and privacy (25), database right (26), the reselling of protected goods under the heading of licence or exhaustion of rights (27), and some international aspects and competition law (28). The publisher describes the treatment of breach of confidence, databases and plant varieties as briefer than that of the four major rights.

Key Concepts

Part I: Introduction

• Imitation, monopoly and control: the three ideas the opening chapter uses to frame what intellectual property rights do.
• Remedies and legal actions: what a rights holder can obtain from a court, treated before the individual rights.
• Choosing a form of protection: whether a product is better protected by patent, copyright or design right.

Part II: Protecting the Product

• Patent: a registered right in an invention, obtained through an application process.
• Industrial design: protection for the appearance of products.

Part III: Trade Marks, Passing Off and Unfair Competition

• Registration, infringement and revocation: the life cycle of a registered trade mark.
• Passing off: the unregistered action against misrepresenting one's goods or business as another's.
• Collective and certification marks and geographical indications: marks that signal membership, certified standards or origin rather than a single trader.

Part IV: Copyright and Related Rights

• Works: the categories of subject matter that copyright protects.
• Infringement and permitted acts: what copying is forbidden and what is not.
• Moral rights: rights of authors that are distinct from the economic rights of copyright.

Part V: Miscellaneous Matters

• Confidence and privacy: protection for information outside the registered and copyright systems.
• Database right: a separate right in the contents of databases.
• Exhaustion of rights: the limits on controlling the resale of goods once they have been marketed.

Critical Analysis

Strengths

• Practice as well as rules. The stated aim is to give readers a feeling for how intellectual property works, not only an outline of the law. Opening with courts, remedies and the choice between patents, copyright and designs supports that aim: readers meet the practical questions before the doctrine.
• Unusually readable format. No footnotes, few technicalities and short, plainly titled chapters make the book easy to read straight through. Entertainment Law Review, quoted by the publisher, called it a classic whose style and content remain invaluable.
• Coverage of all major rights. Patents, designs, trade marks and passing off, and copyright each have their own part, and the miscellaneous part reaches topics that a short course can easily skip, such as criminal enforcement and customs seizure, database right and exhaustion.
• Experienced authors. The team combines teaching at UCL with practice, Chave having worked as a patent and trade mark attorney, which suits a book that promises insight into how the system operates.

Limitations

• Not a full textbook. By design the book gives the shape of the law rather than its detail. With no footnotes and only brief explanations of cases, it cannot support essays or problem answers alone; the publisher presents it as a way for students to put their more detailed study into perspective.
• Uneven depth. Trade marks take nine of the twenty-eight chapters, while designs have one, and confidence, databases and plant varieties are explicitly treated more briefly. Courses that weight these topics more heavily will need fuller sources.
• A UK-centred account. The book describes the system in the United Kingdom, with EU and international material in specific chapters (13 and 28). Readers in other jurisdictions should use it for the general concepts only.
• Edition date. The seventh edition appeared in 2022; later case law and legislation will need to be checked in a current textbook.

Where It Fits in the Course

In this course the guidebook is the short orientation text on the intellectual property side. Bently and colleagues' Intellectual Property Law is the full textbook, with the case law and critical analysis that the guidebook deliberately leaves out; the natural sequence is to read the relevant part of the guidebook first, for the overall picture of a right, and then the corresponding chapters of the full text. James Boyle's The Public Domain is a different kind of book, a critical argument about how far intellectual property should reach; it is easier to follow once the basic rights described here are familiar.

On the information technology side, Ian Lloyd's Information Technology Law is an undergraduate introduction covering privacy, data protection, cybercrime, e-commerce and intellectual property in the digital setting, and Andrew Murray's Information Technology Law: The Law and Society relates the rules for the internet, digital content and personal data to wider debates about technology and society. The guidebook's chapters on copyright, database right, and confidence and privacy are useful background for both.

How to Use This Book

The book suits law students starting an intellectual property module or choosing options, and students of business, science, engineering or the creative industries who need a working picture of how inventions, brands and creative works are protected. No legal background is assumed.

A practical plan:

• Before the course: read Part I in full. It is short and gives the vocabulary of rights, remedies and choice of protection that the rest of the book uses.
• Alongside lectures: read the part that matches each block of the course a few days before the lecture: Part II for patents and designs, Part III for trade marks and passing off, Part IV for copyright. Then move to a full textbook for the cases and statutory detail.
• Selective reading: Part V can be read chapter by chapter as topics come up, for example Chapter 25 alongside data protection and privacy in an IT law course, or Chapter 27 when exhaustion is taught.
• For revision: rereading a whole part in one sitting is a quick way to recover the structure of a right, such as the trade mark sequence from registration to revocation, before turning to detailed notes.

Because the book has no footnotes, keep a note of the cases it mentions and look them up in a casebook or database when a point matters for an assessment. Check any point of law against a current source, since the edition dates from 2022.