Transcript E WIPO/IP/CAI/04/3 ORIGINAL: English DATE: August 2004 ARAB REPUBLIC OF EGYPT WORLD INTELLECTUAL PROPERTY ORGANIZATION WIPO INTRODUCTORY WORKSHOP ON INTELLECTUAL PROPERTY organized by the World Intellectual Property Organization (WIPO) in cooperation.

E
WIPO/IP/CAI/04/3
ORIGINAL: English
DATE: August 2004
ARAB REPUBLIC OF EGYPT
WORLD INTELLECTUAL
PROPERTY ORGANIZATION
WIPO INTRODUCTORY WORKSHOP
ON INTELLECTUAL PROPERTY
organized by
the World Intellectual Property Organization (WIPO)
in cooperation with
the Ministry of Foreign Trade and Industry
Cairo, October 10, 2004
INTRODUCTION TO INDUSTRIAL PROPERTY RIGHTS
Mr. Karim El-Helaly
Head
Intellectual Property Department
Zaki Hashem Law Firm
Cairo
What Is Industrial Property?
• Distinctive Aspects of
Industrial Property
– The fact that more than one
person can possess or use
the same intangible subject
matter, without depriving
any other possessor of
similar use or enjoyment,
makes Industrial property an
inexhaustible resource, or
in economic terms, a “free
good”
– Industrial property
protection provides fuel
for the engine of
innovation
• Emergence of Industrial
Property as a Single Field of
Law
– Until the 1970’s,
practitioners of what later
came to be known as IP
law, labored in their
separate fields, unconscious
of each other’s work
– Recent development in IP
law have begun to “knit this
patchwork of separate legal
regimes into a “singlecoherent fabric”
Subfields of Industrial Property
Patents
PVR’s
Trade
secrets
GI
Semiconductor
Chip
Trademarks
Copyrights
Comparing the Forms of Industrial
Property
• Each area of IP law has its own set of complex
rules and statutes
• As a result, Industrial property law is a “complex
mélange of legal detail that can take the better
part of a lifetime to master fully”
Protected Subject Matter
Patents- products, processes, compositions of matter and improvements thereof
Trade secrets- Very broad: virtually any information or expression, whether or
not recorded, qualifies for trade secret protection if its limited availability gives it
economic value and is reasonably guarded (includes a drawing, cost data, customer
list, formula, pattern, compilation, program, device, method, technique, or process
Semiconductor Chip Protection- The intangible information content in a
three-dimensional “blueprint” for a semiconductor chip, i.e. a “mask work”
Trademarks -verbal symbols, designs, distinctive features of products, sounds, and
even fragrances, also trade dress, i.e. the design, packaging, and manner of sale of
products and services
Copyrights - original works of authorship fixed in any tangible medium of
expression (however, not ideas, principles, themes, or facts)
Exploiting the Overlap
• The five areas of Industrial property protection
mentioned above overlap
• Although several distinct types of Industrial property
protection may protect a single product or service,
there is usually a center of gravity
•
A positive synergy can be achieved by combining
different types of Industrial property protection
• Using various forms of protection may be helpful in
that if one form is invalidated or expires, another may
act as a fall-back form of protection
• Practitioners should avoid narrow specialization
Strength of Protection
* Patents:
• strongest protection of
the various forms
• - right to exclude all
others from: making,
using, and selling (and
for processes, importing,
using, or selling products
of that process)
Strength of Protection
* Copyrights
- exclusive right to
reproduce, distribute,
publish, display, perform
publicly, and to prepare
“derivative works”
Strength of Protection
* Semiconductor Chip Protection
exclusive right to reproduce the
mask work (in chips or
otherwise), and to import and
distribute semiconductor chips
embodying the mask work (in
products or otherwise)
Strength of Protection
* Trade Secrets
- right to prohibit acquisition of
the protected secret by
“improper means,” such as
industrial espionage, breach
of confidence, bribery or
subversion of employees, or
breach of contract
Strength of Protection
* Trademarks
- the right to prevent uses
of similar marks or
features which are likely
to confuse the relevant
public or which dilute
the distinctive quality of
the mark
Duration of Protection
Duration from shortest to longest
(1) mask work = 10 years if its owner timely applies for
registration; otherwise, for 2 years
(2) utility and plant patents = 20 years from filing
(3) design patents = 14 years from issue
(4) copyrights = life of the authors plus 50 years after the death
of the last surviving author
(5) trademark = as long as the mark is used in commerce
(although federal registration must be renewed every 10 years)
(6) trade secret = as long as the secret is not in the public
domain, has competitive value by virtue of its limited availability,
and is guarded with reasonable effort
Requirements for Protection
*Patents
- to qualify for a utility patent an invention must be:
(1) novel; (2) useful*; and (3) industrial
appilicability/nonobvious, at the time it was made, to
those of ordinary skill in the relevant art:
*for design patents the utility requirement is replaced
with a requirement that the design be ornamental
*for plant patents the utility requirement is replaced with
a requirement that the plant be a distinct new variety
that is capable of being asexually reproduced
Requirements for Protection
* Copyrights
- to qualify for legal protection a recorded expression
need only be:
(1) original; and
(2) fixed in a tangible medium of expression - in other
words, original expression is protected automatically
from the moment it is first fixed in a tangible medium
- copyright is the best bargain in all Industrialproperty law
Requirements for Protection
*Semiconductor Chip Protection
- to qualify for legal protection a mask work must:
(1) be original; and
(2) fixed in a semiconductor chip product
(3) registered within two years of its first commercial
exploitation
Requirements for Protection
*Trade Secrets
- to qualify for legal protection a secret must:
(1) not be known or readily ascertainable by all of those
who could profit from it;
(2) have economic value by virtue of its limited
availability; and
(3) its owner must have taken reasonable effort to guard
the secret and to protect it form unauthorized use or
disclosure
Requirements for Protection
*Trademarks and Related Property
- to qualify for legal protection a mark, trade dress,
or other symbol must be:
(1) distinctive;
(2) nonfunctional; and
(3) used in commerce
Requirements for Protection
* Trademarks and Related Property
- in determining if a mark is distinctive, a court generally places
it into one of four categories:
(1) generic (no legal protection)
(2) descriptive (may be protected upon showing of “secondary
meaning”)
(3) suggestive (protectible even without showing “secondary
meaning”)
(4) arbitrary or fanciful (protectible even without showing
“secondary meaning”)
the above categories, or “distinctiveness spectrum,” was
developed for verbal marks and may not apply in the same
way to designs and trade dress (e.g. some courts require a
demonstration of secondary meaning for all nonverbal marks;
others require nonverbal marks to be “inherently distinctive”)
Contemplation
Is it possible that IPR’s:
(1)do have a great impact on research by disseminating
info on advances in technology
(2)do promote the innovation process
(3)do encourage high risk investments which lead to
industrialization
(4)do facilitate licensing and technology transfer
(5)do have a significant influence on economic progress.
& will provide the greatest incentive for Research and
development with the aim to achieve useful
innovations, and productive investments.
Thank you