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INTELLECTUAL PROPERTY RIGHTS
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• The most rapidly growing method of doing business abroad is to transfer IPR to a foreign business in exchange for a fee or other form of remuneration . IPR are rights to technological knowhow or artistic work .
• IPR transfers need not involve any capital investment abroad .
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• Owner’s of IPRs transfer them for a variety of reasons .
• The US firm might , for a fee – sometimes called a royalty – grant a license to a foreign company . A license is a limited permission to use the US firm’s trademarks , copyrights , or knowhow in making products for sale in the vicinity of the foreign company’s country .
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• Alternatively , the US company might provide the IPR and physical components to a foreign manufacturing plant that will fabricate the product for re export back to the US concern.
• In addition , a US firm can use a transfer of technology as its contribution to a joint venture . The joint venture would use the technology to manufacture and , perhaps , market the product .
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• If labor is substantially cheaper in a foreign country , it may entice an IPR owner to shift production offshore .
• In short there are many reasons for an IPR owner to transfer its IP. Regardless of the motivation for the transfer , the risk is the same – loosing control of one’s IPRs and help to establish a competitor .
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IPR Transfer Arrangements
• Right to Use and Conditions of Use The licensor often agrees to provide services to facilitate the anticipated activities such as assistance in setting up an assembly line or other training and technical support . The licensor generally seeks to restrict the licensee’s use of the transferred IPR . One common type of restriction is geographical limitations .
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• Field of use limitations restrict the applications for which the licensee may employ the IPR , for Eg . The licensor of a laser technology might permit one licensee to use the technology only in connection with medical applications , while retaining for itself the right to use the technology for communication applications and other uses .
• Other potential restrictions include output or customer restrictions , especially if the licensor plans to use the licensee as a source of products for the licensor’s own distribution requirements
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Confidentiality and Improvements
• Another key license provision is the clause that sets forth the licensee’s obligation to keep the licensed technology confidential so that third parties cannot exploit the technology .
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• Thus ,the licensor will try to be sure that the licensee agrees not to use the IPR in competition with the licensor or to disclose it to a potential competitor . The licensee , on the other hand , will try to keep royalties low and minimize or abbreviate the duration of noncompetition or nondisclosure provisions .
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International Protection For Patents Trademarks and Other IP
• Depending upon national policy , governments will be more or less protective of IP . As one might expect , nations that generate IP favor strong protection and those that do not create such property do not . This conflict has been played out in international treaty negotiations where these nations work out common interests .
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• These treaties streamline and standardize procedures , expand the geographic scope of protection and create a much stronger international IPR enforcement network .
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PARIS CONVENTION
• The first international property treaty was the International convention for the protection of industrial property , better known as PARIS CONVENTION . The PARIS CONVENTION , originally prepared in 1883 and since revised many times , guarantees that in each signatory country , foreign trademark and patent applications from other signatory countries will receive the same treatment and priority as those from domestic applicants .
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• The Paris Convention targeted discrimination against foreigner’s in obtaining patents .
• The Paris Convention also gives a trademark holder in any signatory country a’’ right of priority .’’
• There are two main problems with the Paris Convention scheme . First , the Convention does not require any minimum substantive standard of patent protection . Thus , if a nation has no pharmaceutical R&D capability , it can decide that it is “ immoral “ to permit
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• The Paris Convention targeted discrimination against foreigner’s in obtaining patents .
• The Paris Convention also gives a trademark holder in any signatory country a’’ right of priority .’’
• There are two main problems with the Paris Convention scheme . First , the Convention does not require any minimum substantive standard of patent protection . Thus , if a nation has no pharmaceutical R&D capability , it can decide that it is “ immoral “ to permit
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• Pharmaceutical patents and deny patents protection to pharmaceuticals . Although as a practical matter such a law is aimed at foreigner’s – because no locals have pharmaceuticals patents – it is in compliance with the Paris Convention .
• A further drawback of the Convention is its lack of an enforcement mechanism . Disputes under the treaty are to be resolved by the International Court of Justice , but most signatory countries either do not recognize the court’s jurisdiction or ignore rulings with which it does not agree .
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• Consequently , there is no real procedure for enforcing verdicts other than voluntary compliance . In the 1990’s , the developed nations determined to resolve these two defects of the Paris Convention . The result was the TRIPS Agreement .
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PATENTS
• In 1970 , the Patent Cooperation treaty ( PCT ) supplemented the Paris Convention by establishing a centralized utility patent application process. The PCT has been signed by 137 states . A PCT application is filed on a standard form with the (WIPO ) World intellectual property Organization .
• The (WIPO ), UN agency headquartered in Geneva , Switzerland processes the common application and forwards it to the countries designated by the applicant .
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• The (WIPO ), UN agency headquartered in Geneva , Switzerland processes the common application and forwards it to the countries designated by the applicant . If at least one of the applicants named in the PCT application is national or resident of PCT signatory , the PCT gives the application a Priority Claim on that invention in all signatory states .
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• The only region with a consolidated multinational patent application is the EU . Since 1978 , one has been able to obtain protection in all EU countries by filing a single application under the European Patent Convention . The convention is now in force in 32 countries . This system was enhanced in December 1989 when the member states signed the agreement relating to Community patents ,
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• which created a unitary system for the application and grant of European patents and a uniform system for the resolution of litigation concerning patent infringement .
• The PCT system applies to “utility “ patents . There is a similar treaty system for design patents . The Hague System for the International Registration of industrial Designs
(better known as Geneva Act ),which• establishes a single standard application and
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• single design patent filing process . The Geneva Act entered into force in December of 2003 . The US is one of 29 countries to sign this act , but has not yet ratified it . To date , the Act has been ratified or acceded to by 22 countries .
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Trademarks
• Registered trademarks are assured national treatment by the Paris Convention . The Paris Convention also confers a “ right of priority “to a trademark holder if the foreign registrations are made within 6 months after the original registration . Trademark prosecution , however , is usually based on the law of the country where registration is sought .
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• One exception to this nation – by – nation process is EU ‘s single multinational trademark registration system . Since 1996 , the Community Trademark Regulation , administered by the Office for Harmonization in the internal market (OHIM ) , has allowed a single trademark registration enforceable throughout the EU . The Trademark Regulation also provides a unified enforcement authority , the Office for Harmonization in the internal market (OHIM ) infringement in any member state can be persecuted through this office .
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• The other exception is the new system established in the 1989 protocol to the Madrid Agreement Concerning the International Registration of Marks of 1891 (Madrid Protocol ) . Like the PCT , Madrid Protocol provides a centralized filing system on a standard form and a designation of the countries in which trademark registration is sought .
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• The WIPO also administers the prosecution and notifies designated countries Although 73 ,countries have ratified the Protocol , the United States and many other important nations have not.
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Domain Names
• It is not clear how trademark law protects Internet domain names . After much international negotiation in August 1999 , Internet Corporation for Assigned Names and Numbers ( ICANN ) adopted the uniform Domain Name Dispute resolution policy (UDRP) . The UDRP set forth general “ first to file “ rules for domain names , but expected bad faith filings .
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• Over time the desire to stop “ cyber squatting” led to an expansion of bad faith means in the UDRP context . At common law , bad faith meant intentional wrongful behavior , but in the UDRP , it now includes some negligence without a finding of intent . For eg. A negligent failure to conduct prior checks for third party rights has been held to constitute bad faith .
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• The UDRP also created an innovative dispute resolution process that submits complaints and replies electronically over the Internet to a WIPO Arbitration and Mediation Center .
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Copyrights
• The Berne Convention for the Protection of literary and Artistic Works , better known as the Berne Convention , deals with the granting of copyrights among signatory nations . Like the Paris Convention , Berne Convention is based on a national treatment all 163 signatory nations to enact certain minimum substantive laws .
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• These include prohibitions against copying literary and artistic works and granting authors exclusive rights to adaptation and broadcasts of works . In contrast to the fragmented patent and trademark system , there is no filing requirement . All an author needs to do is affix the symbol C and the year of authorship to provide copyright protection throughout the world .
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• The Berne Convention signatories agree to grant national treatment to copyright holders from other signatories automatically from the moment of creation rather than the time of filing .
• The computer revolution and the growth of the internet have brought software copyright issues to the forefront . First , there was a significant dispute as to whether computer programs were copyrightable subject matter . This was resolved in late December 1996 , when WIPO approved the Draft Treaty on
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• Certain Questions concerning the Protection of Literary and Artistic Works , providing that “ computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention . Such protection applies to the expression of a computer program in any form .“ this treaty also known as the WIPO Copyright Treaty or the Protocol to the Berne Convention , entered into force in 2002 , and 64 countries are signatories . It expands the scope of broadcasts that an author must
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• Permit to include “ any communication to the public of their , by wire or wireless means , including the making available to the public of their works in such a way that members of the public may access these works from a place and a time individually chosen by them .“
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• Like the Paris Convention , it has been very difficult to enforce the Berne Convention effectively . This enforcement problem was one of the principal forces that drove negotiations on the TRIPS Agreement .
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TRIPS
• As IP became increasingly valuable , the developed world – which created virtually all such property - increased pressure to cure the defects of the Paris and Berne Convention systems . These efforts bore fruit in the GATT Agreement on Trade Related Aspects of IPR , which became effective in most nations on January 1, 2000 . TRIPS requires its signatories to enact minimum substantive standards of
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• Protection and create a viable enforcement mechanism . In effect , TRIPS has caused developing countries to adopt IP laws that approximate those of Europe and North America and has created a system to enforce them .
• TRIPS requires every member of the WTO to abide by the Paris and Berne Conventions – including the recent protocols to those treaties – and apply the treaties National treatment requirements so that all foreign
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• IPR owners receive the protection as local nationals . It establishes 50 year copyright protection pursuant to the Berne Convention . All WTO members must recognize the patent holders right to assign or license their patents and the term of patent protection must be at least 20 years .
• Further , patent protection is now to be available for any new inventions , whether products or processes , in all fields of technology , provided that they are new ,
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• Involve an inventive step and are capable of industrial application . TRIPS even established minimum standards for trade secret protection after the model of uniform trade secret statutes in the US .
• TRIPS seeks to remedy some of the acknowledged problems of the Paris and Berne Conventions . First , unlike the Paris Convention , TRIPS sets minimum standards of IP protection . A nation can no longer comply with IP law if its law provide no effective
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• Protection . Second , TRIPS requires signatory countries to ensure that enforcement procedures as specified in the part , under the laws so as to permit effective action against any act of
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• The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property.
• The areas of intellectual property that it covers are: copyright and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting organizations);
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• Trademarks including service marks; geographical indications including appellations of origin; industrial designs; patents including the protection of new varieties of plants; the layout-designs of integrated circuits; and undisclosed information including trade secrets and test data.
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• The three main features of the Agreement are:
• Standards.• Enforcement• Dispute settlement
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Standards• In respect of each of the main areas of
intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. Each of the main elements of protection is defined, namely the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection.
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• The Agreement sets these standards by requiring, first, that the substantive obligations of the main conventions of the WIPO, the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) in their most recent versions, must be complied with
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• With the exception of the provisions of the Berne Convention on moral rights, all the main substantive provisions of these conventions are incorporated by reference and thus become obligations under the TRIPS Agreement between TRIPS Member countries. The relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement, which relate, respectively, to the Paris Convention and to the Berne Convention.
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• Secondly, the TRIPS Agreement adds a substantial number of additional obligations on matters where the pre-existing conventions are silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to as a Berne and Paris-plus agreement.
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Enforcement
• The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement procedures. In addition, it contains provisions on civil and administrative procedures and remedies, provisional measures, special
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• requirements related to border measures and criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that must be available so that right holders can effectively enforce their rights.
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Dispute settlement
• . The Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.
• In addition the Agreement provides for certain basic principles, such as national and most-favoured-nation treatment, and some general rules to ensure that procedural difficulties in acquiring or maintaining IPRs do not nullify the substantive benefits that should flow from the Agreement.
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• The obligations under the Agreement will apply equally to all Member countries, but developing countries will have a longer period to phase them in. Special transition arrangements operate in the situation where a developing country does not presently provide product patent protection in the area of pharmaceuticals.
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• The TRIPS Agreement is a minimum standards agreement, which allows Members to provide more extensive protection of intellectual property if they so wish. Members are left free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice.
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Certain general provisions
• As in the main pre-existing intellectual property conventions, the basic obligation on each Member country is to accord the treatment in regard to the protection of intellectual property provided for under the Agreement to the persons of other Members.
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• The criteria for determining which persons must thus benefit from the treatment provided for under the Agreement are those laid down for this purpose in the main pre-existing intellectual property conventions of WIPO, applied of course with respect to all WTO Members whether or not they are party to those conventions.
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• These conventions are the Paris Convention, the Berne Convention, International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention), and the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty).
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• Articles 3, 4 and 5 include the fundamental rules on national and most-favoured-nation treatment of foreign nationals, which are common to all categories of intellectual property covered by the Agreement
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Substantive standards of protection
Copyright• Article 9.2 confirms that copyright protection
shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.
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• Article 10.1 provides that computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention (1971). This provision confirms that computer programs must be protected under copyright and that those provisions of the Berne Convention that apply to literary works shall be applied also to them
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• It confirms further, that the form in which a program is, whether in source or object code, does not affect the protection. The obligation to protect computer programs as literary works means e.g. that only those limitations that are applicable to literary works may be applied to computer programs. It also confirms that the general term of protection of 50 years applies to computer programs. Possible shorter terms applicable to photographic works and works of applied art may not be applied.
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• Article 11 provides that authors shall have in respect of at least computer programs and, in certain circumstances, of cinematographic works the right to authorize or to prohibit the commercial rental to the public of originals or copies of their copyright works. With respect to cinematographic works, the exclusive rental right is subject to the so-called impairment test:
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• A Member is excepted from the obligation unless such rental has led to widespread copying of such works which is materially impairing the exclusive right of reproduction conferred in that Member on authors and their successors in title. In respect of computer programs, the obligation does not apply to rentals where the program itself is not the essential object of the rental.
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Related rights • The provisions on protection of performers,
producers of phonograms and broadcasting organizations are included in Article 14. According to Article 14.1, performers shall have the possibility of preventing the unauthorized fixation of their performance on a phonogram (e.g. the recording of a live musical performance).
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• The fixation right covers only aural, not audiovisual fixations. Performers must also be in position to prevent the reproduction of such fixations. They shall also have the possibility of preventing the unauthorized broadcasting by wireless means and the communication to the public of their live performance.
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• Broadcasting organizations shall have, in accordance with Article 14.3, the right to prohibit the unauthorized fixation, the reproduction of fixations, and the rebroadcasting by wireless means of broadcasts, as well as the communication to the public of their television broadcasts. However, it is not necessary to grant such rights to broadcasting organizations, if owners of copyright in the subject-matter of broadcasts are provided with the possibility of preventing these acts, subject to the provisions of the Berne Convention.
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Trademarks • The basic rule contained in Article 15 is that any
sign, or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings, must be eligible for registration as a trademark, provided that it is visually perceptible. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, must be eligible for registration as trademarks.
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• Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years. The registration of a trademark shall be renewable indefinitely (Article 18).
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• It is further required that use of the trademark in the course of trade shall not be unjustifiably encumbered by special requirements, such as use with another trademark, use in a special form, or use in a manner detrimental to its capability to distinguish the goods or services (Article 20).
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Geographical indications
• Geographical indications are defined, for the purposes of the Agreement, as indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin (Article 22.1).
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• Thus, this definition specifies that the quality, reputation or other characteristics of a good can each be a sufficient basis for eligibility as a geographical indication, where they are essentially attributable to the geographical origin of the good.
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• In respect of all geographical indications, interested parties must have legal means to prevent use of indications which mislead the public as to the geographical origin of the good, and use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (Article 22.2).
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Industrial designs • Article 25.1 of the TRIPS Agreement obliges
Members to provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations.
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Patents• The TRIPS Agreement requires Member
countries to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial applicability. It is also required that patents be available and patent rights enjoyable without discrimination as to the place of invention and whether products are imported or locally produced (Article 27.1).
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• The exclusive rights that must be conferred by a product patent are the ones of making, using, offering for sale, selling, and importing for these purposes. Process patent protection must give rights not only over use of the process but also over products obtained directly by the process. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts (Article 28).
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Layout-designs of integrated circuits • Article 35 of the TRIPS Agreement requires Member
countries to protect the layout-designs of integrated circuits in accordance with the provisions of the IPIC Treaty (the Treaty on Intellectual Property in Respect of Integrated Circuits), negotiated under the auspices of WIPO in 1989. These provisions deal with, inter alia, the definitions of “integrated circuit” and “layout-design (topography)”, requirements for protection, exclusive rights, and limitations, as well as exploitation, registration and disclosure.
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• An “integrated circuit” means a product, in its final form or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in and/or on a piece of material and which is intended to perform an electronic function.
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• A “layout-design (topography)” is defined as the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture.
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• The obligation to protect layout-designs applies to such layout-designs that are original in the sense that they are the result of their creators' own intellectual effort and are not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of their creation. The exclusive rights include the right of reproduction and the right of importation, sale and other distribution for commercial purposes. Certain limitations to these rights are provided for.
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Protection of undisclosed information
• The TRIPS Agreement requires undisclosed information -- trade secrets or know-how -- to benefit from protection. According to Article 39.2, the protection must apply to information that is secret, that has commercial value because it is secret and that has been subject to reasonable steps to keep it secret.
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• The Agreement does not require undisclosed information to be treated as a form of property, but it does require that a person lawfully in control of such information must have the possibility of preventing it from being disclosed to, acquired by, or used by others without his or her consent in a manner contrary to honest commercial practices.
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• “Manner contrary to honest commercial practices” includes breach of contract, breach of confidence and inducement to breach, as well as the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition.
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Control of anti-competitive practices in contractual licences
• Article 40 of the TRIPS Agreement recognizes that some licensing practices or conditions pertaining to intellectual property rights which restrain competition may have adverse effects on trade and may impede the transfer and dissemination of technology (paragraph 1).
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• Member countries may adopt, consistently with the other provisions of the Agreement, appropriate measures to prevent or control practices in the licensing of intellectual property rights which are abusive and anti-competitive (paragraph 2).
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• The Agreement provides for a mechanism whereby a country seeking to take action against such practices involving the companies of another Member country can enter into consultations with that other Member and exchange publicly available non-confidential information of relevance to the matter in question and of other information available to that Member, subject to domestic law and to the conclusion of mutually satisfactory agreements concerning the safeguarding of its confidentiality by the requesting Member (paragraph 3). Similarly, a country whose companies are subject to such action in another Member can enter into consultations with that Member (paragraph 4).
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• Similarly, a country whose companies are subject to such action in another Member can enter into consultations with that Member (paragraph 4).
