FORMS OF INTELLECTUAL PROPERTY

FORMS OF INTELLECTUAL PROPERTY

1. Intellectual property rights (IPRs) are rights governed by statute that provide individuals with a right to prevent others from exploiting or abusing their intellectual creations.

   • PATENTS
     • A patent is a legal title granted to an applicant for protection of an invention. It is a registerable form of IP. It must be applied for at a patent office by submission of a ‘patent specification’ disclosing how the invention works.
       • Conventions and treaties
         • Every country’s legislation includes laws for the protection of IP, in which there is a provision for patent laws to govern the protection of inventions in that country. These laws establish the country’s national patent and trade mark office, which then administers the country’s patent and trade mark systems
       • Patent Cooperation Treaty
         • The PCT was established in 1970 and currently has a membership of 144 contracting states. This greatly simplifies protection in many foreign territories simultaneously, which otherwise would require individual applications at each national patent office where the applicant requires patent protection.
       • European Patent Convention
         • The convention, through the institution of the European Patent Office (EPO), introduced an autonomous legal framework for the provision of patent protection in its member states. This treaty is separate from the EU and includes states that are not members of the EU.
         • Refinements of the European Patent System
           • There have been discussions at the EPO and EU Council for many years now on the introduction of new features to the European patent system, which would improve the overall cost and efficiency of filing and enforcing patents in EU Member States. The proposal was to reduce the costs involved in validating the granted European patent in each of the EPC countries designated by the applicant, by limiting the need to translate the patent specification into the languages of each of the national offices.
             • Group 1: Those states having an official language in common with the three official languages of the EPO (English, French and German);
             • Group 2: Those states whose official language is none of the three EPO languages.
       • Requirements for a Patent
         • Patent law requires that certain conditions are met in order for an invention to be patentable. Specifically, the following criteria must be fulfilled: The invention must be novel (new); It must involve an inventive step (not obvious); It must be capable of industrial application; and It must not fall into the ‘excluded’ category for non-patentable matter. Additionally, the applicant is required to disclose sufficient information in the patent application to show how the invention works.
     • International Patent Protection
       • To obtain worldwide exclusivity for an invention, a patent application first must be filed in a country that is a member of the Paris Convention mentioned above. The date on which it is filed establishes a worldwide ‘priority date’ for the invention. This means that the applicant’s priority on the invention over anyone else filing an application for the same invention after this date will be recognised by all countries that are party to the convention.
   • COPYRIGHT
     • Copyright is a form of IP designed to protect the rights of a creator of literary and artistic works, computer programs and databases. It does not provide protection for the ideas, concepts or inventions in these works per se. Rather, it protects the author’s or creator’s ‘expression’ of the ideas and concepts and determines the rights of ownership and use of works falling within the copyright.
       • Granting of Copyright
         • Whereas patent protection for an invention must be applied for and granted by a patent office, copyright does not require any formal application or registration for protection of a creative work. Copyright comes into operation automatically the moment a work is completed – that is, it subsists in that work for the creator.
       • Works Protected by Copyright
         • Typical works covered by copyright are: original literary, dramatic, musical and artistic works, published editions of works, sound recordings, films, videos, broadcasts and cable programmes, computer programs and databases.
       • International Protection
         • While there is no all-governing ‘international copyright’ to protect a creator’s work worldwide, there are international treaties that deal with copyright and to which most countries have signed up, notably the Berne Convention for the protection of literary and artistic works, and the Universal Copyright Convention (UCC).
       • Registration of Copyright
         • As mentioned already, there is no requirement to register a work in order to obtain copyright protection. However, the laws of some countries do require registration in order to have a formal record of the work that is protected by copyright.
       • Ownership of Copyright
         • The rights covered by copyright can be divided into economic rights and moral rights. Economic rights are those rights dealing with the ownership, use and exploitation of the work covered by the copyright. Moral rights are the rights of the author of the work to be identified as the author, as well as to object to any derogatory treatment of the work, even if the author is not ultimately the owner of the work.
       • Duration of Copyright
         • International treaties have done much to harmonise copyright law across territories, particularly with respect to the duration of copyright, which in the past varied greatly between countries depending on the particular form of copyright. Within the EU and in most of the European region, as well as in the US, generally the duration of copyright today for literary, dramatic, musical and artistic works, computer programs and databases, begins with the date of creation by the author and expires 70 years after his death.
   • TRADE MARKS
     • A trade mark is the symbol by which the goods of a particular manufacturer or trader can be identified and distinguished from the goods of others. Trade marks and service marks provide protection for the goodwill and reputation of a company in its products and services, as opposed to protection of the products per se.
       • Registration of a Trade Mark
         • It may be possible in certain countries for a company to assert ‘unregistered rights’ over a mark if it has been used by the company in the marketplace for some time and has become synonymous with the company and its goods (without infringing the registered mark of another business). However, in today’s competitive climate of a global economy, a trade mark is an integral part of a company’s marketing strategy, so rather than rely on an unregistered trade mark that may be contested and lost, it makes good business sense to choose a trade mark
       • International Registration
         • There are two main international agreements on trade mark protection – the Community Trade Mark (CTM) and the Madrid Protocol.
       • Duration of a Trade Mark
         • The term of a trade mark in most countries is for 10 years, which may be renewed indefinitely for subsequent 10-year terms. The term and maintenance of a trade mark, however, is conditional upon the owner demonstrating use of the mark. Under the CTM system, it is necessary to prove use within five years of registration.
       • Trade Mark Use
         • It is important to understand the grammatical nature and use of a trade mark. A trade mark is an adjective and not a noun or a verb, which are ‘generic terms’. Generic terms are words that have everyday use and, therefore, are not permitted as trade marks. By using the mark as a noun or verb, the word becomes genericised – that is, used as the name of the product (descriptive), instead of qualifying the product by indicating the source of it (distinctive). The form of use therefore, is the ‘mark’ (adjective) followed by the ‘noun’ (a generic word)

2. DESIGN RIGHTS

   • While each country has its own IP laws that include protection for designs, there are two important international systems in operation for the protection of industrial designs: the Community Design system and the Hague Agreement.
     • The Community Design
       • In October 1998, the EU introduced Directive 98/71/EC, which harmonised the national systems for protection of designs across the member states.
     • Requirements of a Design
       • For a design to be recognised as qualifying for protection under the Community Design Regulation, it must comply with the following three requirements:
         • It must fall within the definition of a ‘design
         • It must be novel (absolute worldwide novelty, similar to patent law)
         • It must have ‘individual character’
     • Registered Community Design
       • Application for a Community Design is filed at the same office as that for registering trade marks – OHIM in Alicante, Spain. An application is examined for conformance to the definition of a ‘design’ in accordance with the Community Design Regulation and also to decide whether it is contrary to morality or public policy
     • Unregistered Community Design
       • This right is more akin to copyright protection of a design – that is, the owner can prevent others from copying the design, but does not have a monopoly on the design, which is the important difference between this right and that for a registered design.

3. Presented by: Alvaro Javier Salcedo Group: 119 Date: September 23, 2019