Outline

Preliminary remarks Introduction to intellectual

property (IP) Then a discussion of treaties

relevant to IP at global level Notes on special IP regimes

developing in Europe

Preliminary

First thing is …

IPRs in a global perspective is not just the WTO, so other legal instruments will be relevant

But first …

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What is intellectual property?

Why does it exist?

What about distinctive signs?

Categories of IP

1. Industrial property

2. Copyright and related rights

Starting with industrial property, what is it?

1. Industrial property

Patents (non-obvious, inventiveness, usefulness) Products

Like a new medicine, new chemical, etc…

ProcessesLike new way to make glass smooth

What if I discover a new mathematical idea?

Industrial property

Industrial designs A design can be two-dimensional or three-dimensional

It’s a shape, configuration or pattern or color, or combination of patterns and colors, that has both utility and aesthetic value

Example: the design of a Volkwagen car

Or a Les Paul guitar

Industrial property

A trademark can be protected if it is distinctive So a generic mark may not qualify Es. Not good to open a shop called ‘Music Store Music’ if shop really sells music products

But if it is a café or a tanning salon, that would be distinctive

Another example: Apple Normally also a requirement that the trademark

actually be used (lose protection for non-use)

Industrial property

Trade secrets Must be secret!

And reasonable efforts Generally must be useful in some way

Often technical in nature Advantage: if it stays secret – perpetual protection!

Famous example?

2. Copyright

Copyright: protection for the expression of an idea or fact

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But not for the idea or for the fact!

How much novelty, creativity? Are formalities required?

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Examples: ?

IPRs at global levelThe relevant treaties (Not exhaustive)

IPRs at global level: 5 treaties

How are these treaties relevant to the main forms of IP?1. Patents2. Trademarks3. Copyright

1. Patents (Paris / TRIPS)

Paris Convention on Industrial Property

N.T. (Ad es. if pharma protected for nationals ...)

Right of priority (date of first filing, good for 1 year – will be recognized in other signatory States )

What Paris did not have: minimum rules on degree of patent protection Or minimum rules on what must be protected

TRIPS: patents must be available for inventions (and processes) in all technical fields if: (i) New (‘prior art’) and (ii) Capable of industrial application But: may be excluded for health reasons

(Art 30)

Duration: min. 20 years from date of filing Enforcement: sufficiently deterrent, effective

remedies Tradeoff: Patentee must disclose details of

the invention so that (post-expiry) others can exploit it

Also: TRIPS adds MFN (Art 4 – generally applicable)

Patents: compulsory licenses

In the past, some countries compelled patentees to grant licenses for reasons of public interest

Art. 31 TRIPS seeks to: protect patent holders from expropriation; and

limit the situations in which compulsory licensing is possible

Patents: compulsory licenses

Generally, the license must be: Non-exclusive and non-assignable (to preserve holder’s rights as much as possible)

Terminable if circumstances change Compensated by adequate remuneration (e.g., an adequate royalty)

Ad es., Comp. Licensing allowed in cases of: anticompetitive conduct and blocking patents

Compulsory licensing

Conclusion on compulsory licensing

What kind of political economy is being reflected here?

2. Trademarks and other types of (non-patent) industrial property, including, e.g., utility models, industrial designs and mask works (chip designs)(Paris / Madrid / TRIPS)

Trademarks: Paris Convention

National treatment Right of priority (for TMs, grace up to 6

mesi) And unfair competition:

Parties must provide sanctions for acts that could confuse or mislead consumers (‘consumer confusion’), or that could discredit the products of a competitor (‘tarnishment’)

Ad es.: ‘Uncle Mel’s WINDOWS Software’

Trademarks: TRIPS Members must provide that:

If a mark is similar to the protected mark, there is an infringement if the right holder shows a likelihood of customer confusion (like Paris)

If identical marks are used on identical goods, likelihood of confusion must be presumed

Protection for at least 7 years, and must be renewable indefinitely (provided mark remains distinctive)

3. Copyright (Berne, TRIPS, WIPO Copyright Treaty)

Berne Convention. Different from Paris:

Imposes significant requirements on Members to protect right holders

Automatic protection (no formalities) Members must establish moral rights:

Right to object to any distortion of a work that would be prejudicial to honor or reputation

Without prejudice to constitutional law Mary Potter versus Hairy Rotter

Copyright

TRIPS: incorporates Berne, but does not require moral rights So WTO DSM cannot be used

Adds protection for computer programs

Prohibits Members from granting protection to ideas Only expression of ideas can be copyrighted

Es. a map

WIPO Copyright Treaty (WCT), 1996

Relates to digital works: computer programs and databases

Members “provide adequate protection and effective remedies against circumvention of technological protective measures”

Cioè: anti-hacking laws required. This helps right holders to maintain effective digital rights management techniques (encryption)

Main types: patents, trademark and copyright

TRIPS also covers (inter alia): New varieties of plants, industrial designs, circuit designs

Trade secrets & other secret technical know-how

Geographical indications (champagne, Parma ham, etc.) TRIPS does not require adoption of a GI regime

But must prevent use or registration of TMs if misleading as to place of origin

Brief report on Europe3 notes

1. In principle, IP is a shared competence

Means that MS free to legislate on IP to the extent that the EU has not legislated

On the other hand, if the EU occupies the field, MS lose their competence, unless the EU legislation provides otherwise

So far, EU has not pre-empted national IP laws – they still apply

But the EU has introduced a unified regime in the field of …

2. EU Trademark

Council Reg. 207/2009: the EU Trademark

‘Unitary title’ = valid everywhere in the EU

‘One stop shop’ Single application Single language to process application Single office (Off. for Harm. in the Internal Mkt,

Alicante)

Renewable every 10 years (ad infinitum) Requirements …

Reg. 207/2009: 900 euros ‘Use it or lose it’. Genuine use in the

EU within 5 years. Unjustified non-use > revocation

Advantage in litigation: Infringement proceedings may be brought before any ‘EU TM Court’National courts designated by the MSCourt decisions are recognized and enforced throughout the EU. No need for parallel litigation

So: a truly transnational IP law

3. Patents in Europe

1. European Patent Convention (38 countries) Centralizes patent examination (Munich)

2. Unified Patent (EU 2013): a unified protection for 25 MS (not Sp., Italy, Croatia)Only 3 languages (D, FR, ENG) to cut costsSingle ‘Unified patent court’ (Ct. of First Instance; Ct. of Appeal) for infringement actions and challenges Seats for the CFI in all MS // C.A. in Lux