International Business Law: Intellectual Property (copy)

What is intellectual property?

An ownership interest in useful information or knowledge.

What do national and international law have to do with intellectual property?

–National law:

• Creates intellectual property rights.

• Establishes rules for transferring intellectual property rights.

–International law:

• Establishes guidelines for the uniform definition and protection of intellectual property.

• Makes it easier for owners to acquire rights in different countries.

What is TRIPS?

• World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights.

• State parties: all WTO member states.

• Purpose: to create a multilateral and comprehensive set of rights and obligations governing the international trade in intellectual property.

• TRIPS creates basic minimum standards for the protection of IP which must be followed by WTO Member States

What is the World Intellectual Property Organization (WIPO)?

• Administers the Madrid Protocol (for Trademarks), Hague Agreement (for industrial designs), and Patent Cooperation Treaty

• Sponsors and hosts conferences for the development of new intellectual property rights agreements.

• Promotes the modernization of national intellectual property laws.

What is copyright?

The right in an original intellectual creation in the fields of art, literature, music or science that have been fixed in a tangible medium for the purpose of communication. Copyrights protect literary and artistic works (Broadly defined to include the literary, scientific, and artistic field and Software)

What must you proof when you want copyright?

You must have proof that you’re the one who created it

Are there formalities that are required when establishing a copyright?

No formalities are required to establish a copyright

• No requirement to use © or the word copyright

• No requirement to disclose the copyright owner

• No requirement to state the date when the work was first published

• No requirement to register

Can you registrate copyright?

No

What are pecuniary rights for copyright?

Pecuniary Rights (i.e., to exploit a work for economic gain → the right to make money):

–Right to reproduce.

–Right to distribute:

• Exhaustion of Rights: once a work has been distributed to the public, the right to control its distribution comes to an end.

–Right of performance.

How long does a copyright last?

A copyright lasts forever (moral right) and variable years (50 years after the death of the author is the minimum standard under WTO, but it is 70 years after under new EU regulations.)

What is the scope of the copyright rights?

Copyright holder may only restrict the use of the work itself. May not prevent others from using the idea or the knowledge contained in the copyrighted work.

What are the moral rights with copyright?

i.e., to be recognized as an author):

• Right to be cited.

• Right to restrict access.

What are some exceptions that allow you to use copyrighted stuff for free?

•Private USE.

•FAIR USE:

• Parody;

• Commentary and criticism (journalism)

• Private copy

• Not for profit educational use

What is utility patent?

Rights in new, non-obvious (an inventive step), and useful (industrial application) machines, articles of manufacture, compositions of matter, or processes.

What are the requirements for obtaining a utility patent?

An inventor must show that the invention is:

–New: that no other inventor can have obtained a patent for the same invention.

–Non-obvious: AKA the inventive step.  The subject matter of an invention was not obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

–Useful: AKA an industrial application.  that the machine, product, or process is one that can be used in industry or commerce.

What are some inventions excluded from patent protection according to WTO’s agreement on TRIPS?

–Inventions that harm the ordre public or morality. (e.g. when you invent something around euthanasia in a country where it is illegal)

–Inventions involving diagnostic, therapeutic, and surgical methods for the treatment of humans or animals.

–New plants and animals other than microorganisms (Caveat: states must provide protection for plant varieties.)

–Inventions that involve essentially biological processes for the production of plants or animals.

How long do patents last?

requires that term of a patent be no less than 20 years

Where are patents valid?

A patent is only valid within the territory of the state granting it.

–States cannot prevent the use of patented technology outside their territory.

–States will stop the importation of goods from third countries that infringe a patent.

What does the Patent Cooperation Treaty do? What is it similar to?

If you get a patent in the France, it automatically counts for the EU. But if you want to go outside of that, applying for a patent in the blue areas you can do it through France (the more countries you apply to the more expensive ofocurse), in the grey areas you’ll have to go there, get a lawyer,…

EU Patent Protection (EUIPO)

What are industrial designs/design patents?

An industrial design constitutes the ornamental or aesthetic aspect of an article.

–Three dimensional features, such as the shape of an article

–Two dimensional features, such as patterns, lines or color.

–Also referred to as a Design Patent

–Not always helpful, as for example fashion industry

Which convention provides for international filing? What does it allow?

The Hague Convention, You apply for a design patent in one of the member countries and you get it for all the member countries

How long do patents last?

Terms vary greatly from country to country – TRIPS (10 years), but EU (up to 25 years divided in 5 years periods)

What are some requirements for applying for a patent?

Novelty, Individuality, independence from technical/functional consdierations

What is a trademark?

any word, name, symbol, or device (sound, video, gif, 3D elements) that merchants and others use to identify themselves and their products.

How can you acquire trademarks?

–By registration

–By use (This is only possible in certain countries (e.g., USA).)

What are some grounds for refusal for trademarks?

Usage by another, deceitful, morality, too generic, too detailed.

In some countries the requirement for mandatory usage exists

How long do trademarks last?

The WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights sets the minimum term at 7 years.

–In practice many countries grant longer periods (e.g., 10 years)

–Registration may be renewed indefinitely, but with the requirement of actual use.

What is the union that unites countries for trademarks?

The Madrid Union

What is know-how?

the practical expertise acquired from study, training and experience

Are there laws protecting know-how?

•No specific statutory intellectual property protections like for patents, trademarks, etc.

•General basis of protection:

• Contract

• Tort/Trade secrecy laws

• May apply if the know-how is kept secret

What are the consequences of inadequate protection of IP?

•The failure to protect intellectual property rights adequately in the world marketplace can lead to the legal loss of rights in potentially profitable markets.

•There have been many cases where companies have legally lost the rights to trademarks and have had engage in litigation and/or buy back these rights or pay royalties for their use. E.g., Famous story of McDonald’s trademark in Japan

•Many businesses fail to take proper steps to legally protect their intellectual property.

What are some ways to allow others to use IP rights internationally?

–Owner outright transfers (sells or gives) rights to another.

–Owner licenses another to work rights.

What is a license?

A non-exclusive revocable privilege that allows a licensee to use a licensor's property.

How are licenses created?

Created by contract.

•Typically, standard contractual rules are used to interpret licenses.

•Countries may nonetheless have specific rules for creating a valid i.p. license (e.g., registration in France)

What are some examples of conditions of Transfer/Licensing  Arrangements?

–Right to Use and Conditions of Use.

• Geographical restriction: within a nation is common.

• Field of Use restriction: limits use and applications.

• Output Restrictions.

–Exclusivity

• Based on competitive circumstances the Licensee may demand exclusive rights in exchange for investment.

–Confidentiality and Improvements.

What does licensing allow?

Allow others to use your product/service overseas for a fee.

What are the advantages of licensing?

-Very little exposure to overseas laws;

-Very little liability and work load on Licensor.

What are the disadvantages of licensing?

-Risk of theft of intellectual property rights or trade secrets;

-“Gray market goods” (goods that are produced overseas by the licensing agreement and sold overseas but then make their way back to your market);

-Collecting fees for licensing;

-Possibility of “diluting” product reputation if done incorrectly by the licensee. 

How can you manage the risk related to licensing?

–Strong contractual provisions

–Confidentiality clauses

–Non-Competition clauses

–Product standards enforced regularly