Transcript INTRODUCTION TO INTELLECTUAL PROPERTY

INTRODUCTION
TO
INTELLECTUAL
PROPERTY
BY Ronald De Four
The University of the West Indies St. Augustine
The material presented in this document was sourced from the WIPO Web Site
Contents
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Property Types
Divisions of IP
Copyright Related Rights
IP Conventions
Most Used IP Conventions
Paris Convention (1883)
National Treatment
Rights of Priority
Common Rules (Patents)
Common Rules (Marks)
Common Rules (Other)
Contents
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Berne Convention (1886)
Three Basic Principles
Minimum Standards for Protection
Rights to be Protected
Duration of Protection
WIPO Convention (1970)
Patent Cooperation Treaty (PCT) (1970)
Advantages of the PCT
Example of Search Report
Example of Written Opinion
Example of Published Application
Contents
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IP Treaties Supported by UWI Campus Countries:
(a) Trinidad & Tobago
(b) Jamaica
(c) Barbados
Property Types
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Traditional Property
e.g. Land, building, natural resources etc.
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Intellectual Property – creations of the mind
e.g. Inventions, literary and artistic works,
symbols and design used in commerce
Divisions of IP
Intellectual
Property
Industrial
Property
Copyright
inventions
trademarks
industrial designs
graphic indicators
of source
literary works
(novels, poems,
plays, films,
musical works)
artistic works
(drawings,
paintings,
photographs,
sculptures,
architectural
designs)
Copyright Related Rights
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Performing artists in their performances
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Producers of phonograms in their recordings
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Those of broadcasters in their radio and
television programs
IP Conventions
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Berne Convention (1886):-Literary & Artistic Works
Brussels Convention (1974):-Distribution of Programme-carrying
signals distributed by satellite)
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Film Register Treaty (1989):- Int. registration of audiovisual works
Madrid Agreement(1891):- Repression of false or deceptive
indications of source on goods
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Nairobi Treaty (1981):- Protection of Olympic symbol
Paris Convention (1883):- Protection of Industrial property
Patent Law Treaty (2000):- Streamlining of patent application
procedures
IP Conventions
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Phonograms Convention (1971):- Protection of
phonograms against unauthorized duplication
Rome Convention (1961):- Protection of performers,
producers of phonograms and broadcast organizations
Singapore Treaty (2006 not in force):- law of trademarks
Trademark Law Treaty(1994):- To streamline trademark
registration procedures
Washington Treaty (1989):- IP treaty w.r.t Integrated Circuits
WCT (1996):- Adds copyrighting of computer programs &
databases
WPPT (1996):- WIPO Performances and phonograms treaty
Main Patent & Copyright
Conventions
The following four conventions are frequently
used with patents and copyright
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Paris Convention (1883) –Industrial Property
Berne Convention(1886)-Literary & Artistic
WIPO Convention(1970)-Merger of Paris &
Berne
PCT Convention(1970)-Simultaneous Protection
Paris Convention (1883)
This convention applies to industrial property
and includes:
-patents, marks, industrial designs, utility models,
trade names, geographic indicators and
repression of unfair competition.
 The provisions of the convention fall into three
categories:- (a) national treatment
(b) right of priority
(c) common rules.
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National Treatment
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Equality of protection to nationals and
members of contracting state, and
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National protection treatment to:
(a) domiciled non-contracting states
(b) non-contracting states having a real and
effective industrial or commercial
establishment in a contracting state
Right of Priority
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Upholds 1st application date for duration of 12
months (patents) & 6 months (industrial
designs & marks) with other contracting state
Common Rules (Patents)
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Patents granted in different contracting for the same
invention are independent of each other.
The inventor has the right to be named in the patent.
The grant of a patent may not be refused if the sale of
the patented produce is restricted by law.
The limitations imposed on contracting states w.r.t.
compulsory licenses to prevent abuse are:
(a) grant is only after 3 to 4 yrs of failure to work
(b) refused if inaction is justified by legitimate reasons
(c) forfeiture only occur on compulsory license failure
Common Rules (Marks)
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Conditions for filing and registration of marks are
regulated by domestic law and not this convention.
Hence, no application for the registration of a mark
may be refused, nor can a registration be invalidated
due to country of origin issue.
Registration in contracting states are independent to
each other.
The acceptance of a mark in the country of origin
ensures its acceptance in other contracting states.
Compulsory marks are canceled after a reasonable
period or if inaction is unjustifiable by owner.
Marks are prohibited if they imitate other registered
marks or contain state emblems and official signs.
Common Rules (Other)
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Industrial designs must be protected in each
state.
Trade name protection must be granted without
filing or registration.
False indications of source of goods either
directly or indirectly is prohibited.
Effective protection against unfair competition
must be provided.
Berne Convention (1886)
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This convention applies to the protection of
literary and artistic works.
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The convention rests on:
(a) three basic principles
(b) the minimum standards of protection..
Three Basic Principles
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Principle of national treatment:- works originating
in one contracting state must be given the same protection
in other states.
Principle of automatic protection:- such protection
must not be in compliance with any formality.
Principle of independence of protection:- such
protection is independent of the existence of protection in
the country of origin of the work.
Minimum Standards of Protection
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Minimum protection standards depend on:
(a) the work to be protected,
(b) the rights to be protected and
(c) the duration of protection.
Concerning the work, protection must include
every production in the literary, scientific and
artistic domain, whatever may be the mode or
form of expression.
Rights to be Protected
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Exclusive rights of authorization:
(a) the right to translate,
(b) the right to make adaptations and arrangements of the
work,
(c) the right to perform in public dramatic, dramatico-musical
and musical works,
(d) the right to recite in public literary works,
(e) the right to communicate to the public the performance of
such works,
(f) the right to broadcast with the possibility of receiving a
right of equitable remuneration instead of a right of
authorization,
(g) the right to make reproductions in any manner of form,
(h) the right to use the work as a basis for an audiovisual work
and to reproduce, distribute, perform the work in public.
Rights to be Protected
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Moral Right is another exclusive right and
entails:
(a) the right to claim authorship of work
(b) the right to object to any mutilation,
deformation, modification or derogatory
action in relation to the work.
Duration of Protection
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The general rule is that protection must be
granted until the expiration of the 50th year after
the author’s death.
Exception to above are anonymous and
pseudonymous works, where the term of
protection expires 50 years after lawful public
release.
WIPO Convention (1970)
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WIPO convention was signed in 1967 and enforced in
1970.
In 1974 WIPO became a UN agency.
WIPO was born from the merging of the Paris &
Berne Conventions.
Two main objectives of WIPO:
(a) Promote IP protection worldwide.
(b) To ensure administrative cooperation among IP
unions established by WIPO administered treaties
WIPO Convention (1970)
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The objectives of WIPO are achieved by:
(a) normative activities:- involves setting norms and
std for protection & enforcement of IP rights,
(b) program activities:- involving legal technical
assistance to IP involved states
(c) int. classification & standardization activities:involves cooperation among IP offices wrt patents,
trademarks and ID documentation
(d) registration activities:- involves services related to
int. applications for patents, marks and ID
WIPO headquarters is located in Geneva Switzerland
Patent Cooperation Treaty (PCT) 1970
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Allows for simultaneous patent protection in all PCT
contracting states.
The PCT regulates requirements of application.
PCT response to application consists of:
(a) international search report listing citations of
published documents that might affect patentability
of invention
(b) written opinion stating whether patentability
criteria are addressed in light of search report
results
The combination of search report and written opinion
are called the IPER and it determines the outcome of
the application.
Patent Cooperation Treaty (PCT) 1970
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Publication of application and search report on
WIPO’s web site occurs as the next stage.
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National patent applications are made by
supplying a translation of the application and
the national fees to the national office through
a local Agent on or before 18 months after the
priority date.
Advantages of the PCT
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Applicants have 18 months to reflect on desirability of foreign
country protection & preparation.
Applications prepared using PCT guidelines are accepted on
formal grounds by PCT contracting states in the national phase.
The IPER provides a reasonable probability of invention
patentability.
Applications can be amended during the int. prelim. exam stage
before it reaches the national stage.
Reduction or elimination of search and examination work at the
national stage.
Well-founded 3rd party opinion obtainable due to publication of
application and search report.
Applications are advertised to the world.
Example of Search Report
Example of Search Report
Example of Search Report
Example of Search Report
Example of Search Report
Example of Written Opinion
Example of Written Opinion
Example of Written Opinion
Example of Published Application
IP Treaties Supported by UWI
Campus Countries
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Trinidad & Tobago
TREATY
STATUS
ENTRYINTOFORCE
Berne Convention
In Force
August 16, 1988
Brussels Convention
In Force
November 1, 1996
Budapest Treaty
In Force
March 10, 1994
Locarno Agreement
In Force
March 20, 1996
Nairobi Treaty
Signature
Nice Agreement
In Force
March 20, 1996
Paris Convention
In Force
August 1, 1964
PCT
In Force
March 10, 1994
Phonograms Convention
In Force
October 1, 1988
Strasbourg Agreement
In Force
December 20, 1996
TLT
In Force
April 16, 1998
UPOV Convention
In Force
January 30, 1998
Vienna Agreement
In Force
March 20, 1996
WIPO Convention
In Force
August 16, 1988
IP Treaties Supported by UWI
Campus Countries
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Jamaica
TREATY
STATUS
ENTRYINTOFORCE
Berne Convention
In Force
January 1, 1994
Brussels Convention
In Force
January 12, 2000
Nairobi Treaty
In Force
March 17, 1984
Nice Agreement
In Force
February 7, 2006
Paris Convention
In Force
December 24, 1999
Phonograms Convention
In Force
January 11, 1994
Rome Convention
In Force
January 27, 1994
Vienna Agreement
In Force
February 7, 2006
WCT
In Force
June 12, 2002
WIPO Convention
In Force
August 16, 1988
WPPT
In Force
June 12, 2002
IP Treaties Supported by UWI
Campus Countries
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Barbados
TREATY
STATUS
ENTRYINTOFORCE
Berne Convention
In Force
July 30, 1983
Nairobi Treaty
In Force
February 28, 1986
Nice Agreement
In Force
March 12, 1985
Paris Convention
In Force
March 12, 1985
PCT
In Force
March 12, 1985
Phonograms Convention
In Force
July 29, 1983
Rome Agreement
In Force
September 18, 1983
WIPO Convention
In Force
October 5, 1979
The End