PROTECTING AND REGISTERING YOUR INTELLECTUAL PROPERTY (MANAGING YOUR IP IN THE RESEARCH PROCESS)

BY SARAH NORKOR ANKU (MRS) LEGAL PRACTITIONER REGISTRAR GENERAL’S DEPARTMENT

• • • • •

PROTECTING AND REGISTERING YOUR INTELLECTUAL PROPERTY

Two main areas of IP Industrial Property and Copyrights & Related Rights Main difference between the two areas of IP: registration Industrial Property Laws are administered by the Registrar General’s Department Copyright and related rights are administered by the Copyright Office

• • • •

IP AND THE RESEARCHER (THE STORY OF TSRUKPE TOTA)

People in Tsrukpe Tota use certain herbs to instantly cure malaria Researcher seeks to find a solution to malaria problem With prior informed consent and a benefit sharing agreement with the Tsrukpe Tota community the researcher receives information and samples of the miracle plant Researcher isolates active ingredient or develops a method of extracting the active ingredients: Confidentiality / trade secret and Patent

STORY CONT’

• • • • • Researcher writes a paper or publishes a book on his findings: copyright Researcher sets up a spin-off company to produce the drug and names the drug: trademark Commissions an artist to design a container for the drug: industrial design Commissions an artist to design labels and leaflets for the drug: copyright and trademarks Researcher decides to license or assign his rights: IP Commercialization

STORY CONT’

• • Researcher conducts further research to develop high yielding and pest resistant variety of the miracle plant: plant variety protection If the plant is trans-boundary but the plants grown in Tsrukpe Tota have certain unique characteristics: Geographical Indications as a marketing tool

BEGINNING RESEARCH

• • • • • Identify a problem in any field of technology and propose a solution Seek funding (what are the IP conditions attached to the funding) Who will participate in finding the solution to the problem and what are their IP rights?

Collaboration; student/lecturer; lecturer/lecturer researcher/industry KNUST IP Policy: who owns the IP Rights and how are benefits shared?

Beginning Research Cont’

• • • • Conduct searches using free patent search engines Google patent search Espacenet Patentscope

PROTECTION – THREE STAGES

• • • • • • • • Beginning: define boundaries / ownership Beginning throughout process: confidentiality / trade secret Throughout process to end: choosing other IP tools Patents / Utility Model Certificate Trade marks / Service marks / Collective marks Industrial Designs Copyright Geographical Indications

PATENTS

• • • • • • • • Titles granted by Governments/States for the protection of inventions An invention is a solution to a problem in any field of technology Five criteria for protection: New (not anticipated by prior art) Inventive Step (non-obvious to a person skilled in the art) Industrially applicable (useful) Disclosure Not excluded from patentability

PATENT PROSECTION

• • • • • • • Patent drafting: Background; description; claims; drawings (where applicable); abstract Claims: defines the scope of protection Remember a patent document is a legal document not a scientific paper Three routes of protection 1. National route 2. Regional route (ARIPO) 3. International route (PCT / Paris Convention)

NATIONAL ROUTE

• • • • • • Fill and submit patent request form (Form No.2) together with patent application documents at the Registrar General’s Department Registrar of patents conducts formality and substantive examinations NB: In Ghana substantive examinations are outsourced Successful applications are published and granted Duration of protection is 20years from date of application Annuities must be paid yearly to maintain application and grant

REGIONAL ROUTE (ARIPO)

• • • • • Begin with National application and request for an ARIPO Patent, designating ARIPO Member States Apply directly to ARIPO ARIPO conducts both formality and substantive examinations Designated States conducts further substantive examinations to ensure conformity with national laws ARIPO publishes and grants patents for and on behalf of designated Member States

International Route

• • Paris Convention: Applicants can apply directly to Member States of the Paris Convention within one year after first application (requires legal representation in all the States; fees paid in local currencies; patent documents in foreign language).

INTERNATIONAL ROUTE CONT’

• • • • • • Patent Cooperation Treaty (PCT): National application followed by PCT application within one year Apply directly to International Bureau of WIPO Thirty (30) months period to apply to all designated states of interest One application; one PCT recognized language; search and preliminary examination report and written opinion Patents are granted by individual designated Member States

UTILITY MODEL CERTIFICATE

• • • UM prosecution is similar to patent prosecution Criteria for protection is less stringent, involving two main steps, namely; novelty and industrial applicability Duration of protection in Ghana is 7years

COPYRIGHT

• • • • • Automatic protection so long as it is original Registration provides prima facie evidence of ownership To register at the copyright office, submit a filled application form, three copies of the work and pay prescribed registration fee Duration of protection: life time of the author plus seventy (70) years after his death Author can assign economic rights not moral rights

TRADEMARKS

• • • • • • Trademarks distinguishes the goods or services of one enterprise from the goods and services of other enterprises Interactive mark; logotype; combination of interactive mark and logotype Three routes of protection: National (Registrar General’s Department) Regional (ARIPO through the Banjul Protocol, however, this route is currently not available to Ghanaians) International (International Bureau of WIPO through the Madrid System)

TRADEMARKS REGISTRATION National Route

• • • • • • • Ensure mark conforms with section 5 of the Trademarks Act (Act 664) Conduct a search at the trademark registry: US$60 Submit application form together with 2 copies of trademarks: US$150 Application processing may take a year Publication and Opposition period Certificate: US$100 Protection is in perpetuity subject to renewal every 10years

TRADEMARK REGISTRATION International Route

• • • National application followed by Madrid application within 6 months Direct application to International Bureau designating Member States of Interest Member States approves and registers trademarks

INDUSTRIAL DESIGNS REGISTRATION

• • • • • Three routes of protection: National (Registrar General’s Department) Regional (ARIPO) International (International Bureau of WIPO) Currently the only route available to Ghanaians is the Regional route

• • • • •

INDUSTRIAL DESIGN REGISTRATION CONT’

Application may be submitted to the Registrar General’s Department or directly to ARIPO Fill ARIPO Form 28, attach four copies of designs (with description where necessary), a statement of authorship, application fee of US$50 and US$10 for each Designated State You must designate at least 1 Member State Application process may take a year Duration of protection in Ghana is 5years, renewable two consecutive five years period

IP Management Services

• • • • • Value assessment / IP audit Cost management Priority rights Exhibitions Protection routes

Value assessment / IP audit Why IPR Audit

• • The due diligence process associated with mergers & acquisitions, joint ventures, portfolio assessments, spin-offs and strategic alliances now include an increased level of scrutiny of IPR portfolio.

(value of IPR)

Identifying the origins and value of intellectual property and assuring compliance with obligations relating to licensed assets has become a due diligence checklist item.

(Chain of ownership of patents, trademarks, copyrights)

Value assessment / IP audit Why IPR Audit Cont’

• • IP audit is a systematic review of the IP owned, used or acquired by a business/institution so as to assess and manage risk, remedy problems and implement best practices in IP asset management.

It involves undertaking a comprehensive review of an institution’s IP assets, related agreements, relevant policies and compliance procedures

Value assessment / IP audit Why IPR Audit Cont’

How the IP assets are being used or not used.

Whether the IP assets used by it are owned by the institution or by others. Whether these IP assets are infringing the rights of others or others are infringing on these rights, and determine, in the light of all this information. What actions are required to be taken with respect to each IP asset, or a portfolio of such assets, to serve the relevant business goals of the institution/company.

Cost management

• • • • • Cost of maintenance, enforcement, exploitation of IP Rights; namely Patents Trademarks Copyright Industrial Designs

Priority rights & Exhibitions

• • • Patents: 1year Trademarks: 6months Industrial Designs: 6months

COMMERCIALIZATION

• • • • • • Donation Licensing Assignment All licenses and assignments must be registered at the Registrar General’s Department (notice to third parties) Spin-Off companies Role of Technology Transfer Units