Understanding Industrial Property By Ronald De Four The University of the West Indies St. Augustine The material presented in this document was sourced from the document: Understanding Industrial Property on WIPO’s Web Site

Contents Intellectual Property Overview Intellectual Property Overview IP Branches IP Branches Copyright Copyright Industrial Property Industrial Property Inventions & Patents Inventions & Patents Patents Patents Conditions of Patentability Patent Types Patent Rights Patent Exploration Patent License Utility Models Utility Models Utility Model Requirements Differences Between UM & Patents

Contents Industrial Designs Industrial Designs Trademarks Trademarks Other Marks Trademark Functions Trademark Rights Trademark Protection Term Trade Names Trade Names Geographical Indications Geographical Indications Protection Against Unfair Competition Protection Against Unfair Competition Role of WIPO Role of WIPO WIPO-Administered Systems Classification Systems Classification Systems IP Protection: Instruments & Agreements

Intellectual Property Overview IP refers to creations of the human mind. IP refers to creations of the human mind. IP rights protect interest of creators. IP rights protect interest of creators. WIPO Protected Subject Matters: WIPO Protected Subject Matters: (a) literary, artistic & scientific works (b) performances of performing artists, phonograms, & broadcasts (c) inventions in all fields of human endeavor, (d) scientific discoveries, (e) industrial designs, (f) trademarks, service marks, commercial names & designations, (g) protection against unfair competition.

Intellectual Property Overview IP relates to items of information or knowledge which can be incorporated in tangible objects at the same time in an unlimited number of copies at different locations in the world. IP relates to items of information or knowledge which can be incorporated in tangible objects at the same time in an unlimited number of copies at different locations in the world. The property is not in those copies but in the information of knowledge reflected in them.

Intellectual Property Overview Reasons for IP Law: Reasons for IP Law: (a) to give statutory expression to the moral and economic rights of creators in their creations and to the right to the public in accessing those creations, and (b) to promote creativity and the dissemination and application of its results, and to encourage fair trade, which would contribute to economic and social development.

IP Branches IP is divided into two branches: IP is divided into two branches: (a) copyright and (b) industrial property.

Copyright Copyright refers to artistic creations: poems, novels, music, paintings and cinematographic works. Copyright refers to artistic creations: poems, novels, music, paintings and cinematographic works. In most European non English speaking countries, copyright is known as author’s rights. In most European non English speaking countries, copyright is known as author’s rights. The expression copyright refers to:- the making of copies of the literary or artistic work may be made by the author or by his authorization. The expression copyright refers to:- the making of copies of the literary or artistic work may be made by the author or by his authorization. The expression author’s rights refers to:- the person who is the creator of the work and underlining the fact that the author has specific rights in his creation, such as the right to prevent a distorted reproduction. Other rights such as the right to,make copies can be exercised by other persons on a license from the author. The expression author’s rights refers to:- the person who is the creator of the work and underlining the fact that the author has specific rights in his creation, such as the right to prevent a distorted reproduction. Other rights such as the right to,make copies can be exercised by other persons on a license from the author.

Industrial Property Industrial property relates to property in the industrial, commercial, agricultural and extractive industries and to all manufactured and natural products Industrial property relates to property in the industrial, commercial, agricultural and extractive industries and to all manufactured and natural products Industrial property covers a range of subject areas:- Industrial property covers a range of subject areas:- (a) inventions (b) industrial designs (c) trademarks and service marks (d) layout-designs of integrated circuits (e) commercial names and designations (f) geographical indicators (g) protection against unfair competition

Inventions & Patents Inventions are new solutions to technical problems. Inventions are new solutions to technical problems. Protection of invention under patent law does not require that the invention by represented in a physical embodiment. Protection of invention under patent law does not require that the invention by represented in a physical embodiment. Patents or letters patent are the most widespread means of protecting the rights of inventors. Patents or letters patent are the most widespread means of protecting the rights of inventors. Life of patent is 20 years. Life of patent is 20 years.

Patent Patents give exclusive rights to inventors. Patents give exclusive rights to inventors. In return, the inventor must disclose the patented document to the public so that others can gain the new knowledge and further develop the technology. In return, the inventor must disclose the patented document to the public so that others can gain the new knowledge and further develop the technology. To obtain a patent, the inventor must submit an application to the national or regional IP Office. To obtain a patent, the inventor must submit an application to the national or regional IP Office. The requirements of the application are: The requirements of the application are: (a) invention must be described in detail (b) invention must be compared with existing technology to demonstrate its newness (c) a set of claims must be drafted for the invention.

Patent: Conditions of Patentability Novelty:- it must show some new characteristic that is not known in the prior art in its technical field. Novelty:- it must show some new characteristic that is not known in the prior art in its technical field. Inventive Step (non-obviousness):- it must show an inventive step that could not be deduced by a person with average knowledge of the technical field. Inventive Step (non-obviousness):- it must show an inventive step that could not be deduced by a person with average knowledge of the technical field. Industrial Applicability (utility):- the invention must be of practical use or capable of some kind of industrial application. Industrial Applicability (utility):- the invention must be of practical use or capable of some kind of industrial application. Patentable Subject Matter:- cannot be scientific theories, mathematical methods, plant or animal varieties, discovery of natural substances, methods for medical treatment, and must not threaten public order, good morals or public health. Patentable Subject Matter:- cannot be scientific theories, mathematical methods, plant or animal varieties, discovery of natural substances, methods for medical treatment, and must not threaten public order, good morals or public health.

Patent Types Inventions can be divided into two categories: Inventions can be divided into two categories: (a) product patent and (b) process patent. Patentee:- person to whom a patent is granted. Also called patent owner or patent holder. Patentee:- person to whom a patent is granted. Also called patent owner or patent holder. Patent life is 20 years. Patent life is 20 years.

Patent Rights Patent owner exclusive rights consists of: Patent owner exclusive rights consists of: (a) in the case of a product patent, the right to prevent third parties without ownership consent from making, using, offering for sale, selling or importing for these purposes the product (b) in the case of process patent, the right to prevent third parties from using, offering for sale, selling or importing for these purposes the products which were obtained directly by that process.

Patent Exploration The following must be noted concerning exploitation: The following must be noted concerning exploitation: (a) the patentee is not given the statutory right to exploit his own invention, invention, (b) the patentee is given the statutory right to prevent others from commercially exploiting his invention, from commercially exploiting his invention, (c) the patentee may grant a license to other parties to use the invention on mutually agreed terms, invention on mutually agreed terms, (d) the patentee may sell his rights to the invention to someone else who will become the new owner else who will become the new owner (e) a patented product may be exploited without the patentee’s authorization if it is for the public interest and it may be done authorization if it is for the public interest and it may be done on behalf of the government or by a compulsory license. on behalf of the government or by a compulsory license.

Patent License Compulsory License:- An authorization given by government to exploit an invention. Compulsory License:- An authorization given by government to exploit an invention.

Utility Models Also used to protect inventions. Also used to protect inventions. Other similar protection mechanisms are innovative patents and utility innovations. Other similar protection mechanisms are innovative patents and utility innovations. Utility models are applied for technically less complex inventions or for inventions that have a short commercial life. Utility models are applied for technically less complex inventions or for inventions that have a short commercial life. Procedure for obtaining protection is shorter and simpler than that for a patent. Procedure for obtaining protection is shorter and simpler than that for a patent.

Utility Model: Requirements Requirements:- Requirements:- (a) Less stringent that those for patents. (b) novelty must be met (c) inventive step may be much less or absent (d) UM sought for innovations of an incremental nature which may not meet the patentability criteria.

Differences Between UM & Patents Term of Protection: Term of Protection: (a) usually shorter than that of a patent (b) usually between 7 and 10 years. Fees: Fees: - generally lower than those for patents.

Industrial Designs An industrial design is the ornamental or aesthetic aspect of a useful article. An industrial design is the ornamental or aesthetic aspect of a useful article. Ornamental & aesthetic aspect may depend on shape, pattern or color of article. Ornamental & aesthetic aspect may depend on shape, pattern or color of article. The design must satisfy the following criteria: The design must satisfy the following criteria: (a) have visual appeal, (b) must perform its intended function, (c) must be able to be reproduced by industrial means. (d) must be new or original.

Industrial Designs Rights granted by industrial design refers to right to protect the original, ornamental and non-functional features of a product that result from design activity. Rights granted by industrial design refers to right to protect the original, ornamental and non-functional features of a product that result from design activity. ID protection serves as an incentive to invest resources in design activities. ID protection serves as an incentive to invest resources in design activities. ID protection stimulate the design element of production. ID protection stimulate the design element of production. The condition of utility is a notable difference between industrial design protection and copyright. The condition of utility is a notable difference between industrial design protection and copyright.

Industrial Designs Designs that are dictated solely by the article’s function arte excluded from protection. Designs that are dictated solely by the article’s function arte excluded from protection. Industrial Design rights:- exclusive right to make, import, sell, hire or offer for sale articles to which the design is applied. Industrial Design rights:- exclusive right to make, import, sell, hire or offer for sale articles to which the design is applied. Term of Protection:- maximum term 10 to 25 years often divided into renewable terms. Term of Protection:- maximum term 10 to 25 years often divided into renewable terms.

Trademarks A trademark is a sign or combination of signs which distinguishes the goods or services of one enterprise from those of another. A trademark is a sign or combination of signs which distinguishes the goods or services of one enterprise from those of another. Signs may use:- words, letters, numerals, pictures, shapes, colors or any combination of above. Signs may use:- words, letters, numerals, pictures, shapes, colors or any combination of above. Unconventional Signs:- three-dimensional signs, audible signs and olfactory signs are also registered. Unconventional Signs:- three-dimensional signs, audible signs and olfactory signs are also registered. Trademark use:- placed on goods, container or wrapper for goods or used in connection with the marketing of goods. Trademark use:- placed on goods, container or wrapper for goods or used in connection with the marketing of goods.

Trademarks:- Other Marks Collective Marks:- owned by an association and used by members to identify themselves. Collective Marks:- owned by an association and used by members to identify themselves. Certification Marks:- given for compliance with defined standards but not confined to any membership. Certification Marks:- given for compliance with defined standards but not confined to any membership. Service Marks:- used in connection with services. Service Marks:- used in connection with services.

Trademark Functions Functions of Trademarks:- Functions of Trademarks:- (1) distinguishing of marked goods and services, (2) reveal commercial origin of goods and services, (3) to refer to a particular quality of the product or service, and service, and (4) to promote the marketing and sale of products and the marketing and rendering of services – appeal the marketing and rendering of services – appeal function. function.

Trademark: Rights Exclusive right is granted to an owner of a registered trademark. It includes: Exclusive right is granted to an owner of a registered trademark. It includes: (1) right to use the mark, (2) right to prevent unauthorized third parties from using the mark, (3) the right to prevent unauthorized third parties from using a confusingly similar mark.

Trademark: Protection Term Term of protection:- indefinite, renewed on payment of fees. Term of protection:- indefinite, renewed on payment of fees.

Trade Names A commercial or trade name is the name or designation that identifies an enterprise. A commercial or trade name is the name or designation that identifies an enterprise. In most countries, trade names are registered with a government authority. In most countries, trade names are registered with a government authority. However, under Article 8 of Paris convention:- a trade name must be protected without the obligation of filing or registration. However, under Article 8 of Paris convention:- a trade name must be protected without the obligation of filing or registration.

Geographical Indications A sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin. A sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin. Appellation of Origin:- special kind of geographical indication, used on products that have a specific quality that is exclusively or essentially due to the geographical environment in which the products are produced. Appellation of Origin:- special kind of geographical indication, used on products that have a specific quality that is exclusively or essentially due to the geographical environment in which the products are produced. Appellations of origin are protected by the Lisbon Agreement. Appellations of origin are protected by the Lisbon Agreement.

Protection Against Unfair Competition This is directed against acts of competition that are contrary to honest practices in industry and commerce. This is directed against acts of competition that are contrary to honest practices in industry and commerce. Acts of unfair competition (P.C.):- Acts of unfair competition (P.C.):- (1) acts creating confusion with the establishment, the goods or the industrial or commercial activities of a competitor, the industrial or commercial activities of a competitor, (2) false allegations during trading to discredit the establishment the goods or the industrial or commercial activities of a the goods or the industrial or commercial activities of a competitor, competitor, (3) indications and allegations which when used during trading are liable to mislead the public as to the characteristics of are liable to mislead the public as to the characteristics of certain goods. certain goods.

Role of WIPO WIPO is dedicated to ensuring: WIPO is dedicated to ensuring: (a) rights of creators and owners of IP are protected worldwide, protected worldwide, (b) inventors and authors are recognized and rewarded for their ingenuity, for their ingenuity, To accomplish the above, WIPO: To accomplish the above, WIPO: (a) create and harmonize rules and practices to protect IP rights, protect IP rights, (b) provides international registration systems for patents, trademarks, appellations of origin and patents, trademarks, appellations of origin and industrial designs. industrial designs.

WIPO-Administered Systems The WIPO-administered systems of international protection include four different mechanisms of protection for specific industrial property rights: (1) The Patent Cooperation Treaty (PCT) for filing patent applications in multiple countries. (2) The Madrid System for the International Registration of Marks for trade and service marks. (3) The Hague System for the International Deposit for Industrial Designs. (4) The Lisbon System for the International Registration of Appellations of Origin.

Classification Systems Four WIPO treaties have created classification systems, which organize information on different branches of industrial property into indexed, manageable structures for easy retrieval: (1) Strasbourg Agreement Concerning the International Patent Classification. (2) Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. (3) Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks. (4) Locarno Agreement Establishing an International Classification for Industrial Designs.

IP Protection: Instruments & Agreements Instruments of Protection What they Protect Relevant International Agreement Patents and utility modelsInventionsParis Convention - Industrial Property (1883) Patent Cooperation Treaty (1970) Budapest Treaty - Deposit of Microorganisms for the Purposes of Patent Procedure (1977) Strasbourg Agreement – International Patent Classification (1971) Patent Law Treaty (2000)

Instruments of Protection What they Protect Relevant International Agreement Industrial DesignIndependently created industrial designs that are new or original Hague Agreement - International Registration of Industrial Designs (1934) Locarno Agreement International Classification for Industrial Designs (1968) IP Protection: Instruments & Agreements

Instruments of Protection What they Protect Relevant International Agreement Trademarks, Certification Marks and Collective Marks Distinguishing signs and symbols Madrid Agreement - Int. Registration of Marks (1891) Protocol Relating to the Madrid Agreement - Int. Registration of Marks (1989) Nice Agreement - Int. Classification of Goods & Services for the Registration of Marks (1957)

IP Protection: Instruments & Agreements Instruments of Protection What they Protect Relevant International Agreement Trademarks, Certification Marks and Collective Marks Distinguishing signs and symbols Madrid Agreement – Repression of False or Deceptive Indications of Source on Goods (1891) Trademark Law Treaty (1994)

IP Protection: Instruments & Agreements Instruments of Protection What they Protect Relevant International Agreement Geographical indications and appellations of origin Integrated circuits Protection against unfair competition Geographical name of a country, region or locality Lay-out designs Honest practices Lisbon Agreement - Protection of Appellations of Origin and their Int. Registration (1958) Washington Treaty – IP in Respect of Integrated Circuits (1989) Paris Convention - Protection of Industrial Property (1883)

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