International Intellectual Property LawControlling the use of products and processes6

LA Ch 6-*What is Intellectual Property?According to the UN agency WIPO (World Intellectual Property Organization):Intellectual property refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images and designs used in commerce.

LA Ch 6-*Categories of IP

Intellectual property categoriesIndustrial propertyInvention patents, trademarks, industrial designs and geographical indicationsCopyrightLiterary and artistic works

LA Ch 6-*Types of Intellectual Property

LA Ch 6-*International Agreements on IP RightsImpact of IP on SMEs:IP has a significant impact on business and the economyLicenses for software programs, platforms and communication innovations enables more effective and efficient communication, information management and data processingLicensing a trade secret to a foreign company can save substantial amounts (significant reduction of infrastructure, labour and distribution costs)Sharing proprietary technology or innovations with a partner abroad is an effective market entry strategy

LA Ch 6-*International IP AgreementsWho are the players?WIPO (World Intellectual Property Organization)WTO (World Trade Organization)The WTO efforts enable governments, industries, businesses and creators to optimize the potential of their own and other sources of IP

LA Ch 6-*International & National IP Agreements & LegislationWIPO:Trademark Law Treaty, Film Registry Treaty, Patent Law Treaty, Berne ConventionInternational Treaty on Plant Genetic Resources for Food and AgricultureUniversal Copyright ConventionEuropean Patent ConventionBuenos Aries ConventionBangui Agreement

LA Ch 6-*World Intellectual Property Organization (WIPO)Core tasks:Assist governments and organizations to develop policies and skills to harness economic IP potentialDevelop harmonized international IP law with member statesAdminister global registration systems for trademarks, patents and industrial designs Implement treaties and provide expertiseProvide a balanced forum for international IP legislationProvide dispute resolution services

LA Ch 6-*Trade Related Aspects of Intellectual Property (TRIPS)Result of multilateral negotiations (Uruguay Round)This agreement balances creative rights, permissions, and compensation for their use with the benefits of IP

LA Ch 6-*WTO and TRIPS AgreementsWTO helps governments work toward protecting businesses proprietary creations, innovations and inventions Paves the way for entrepreneurs to use other efficiency enhancing technologies, software and trade secrets for a reasonable cost, exchange or licensing agreement

LA Ch 6-*TRIPS Agreement

LA Ch 6-*Additional Areas Covered by TRIPS

CopyrightsTrademarksGeographical indicationsIndustrial designPatentsIntegrated circuit designUndisclosed information and trade secretsAnti-competitive licensing contracts EnforcementTechnology transferTransition arrangements: 1, 5, 10 years or more

LA Ch 6-*Regional Agreements: NAFTANAFTA was the first international trade agreement to include provisions on IP (Chapter 17)It includes provisions on:Minimum IP protection and enforcement standardsCustom agency authorization to enforce protective provisions at member borders, and to prevent counterfeit or unauthorized imports from undermining competitionDispute settlement process

LA Ch 6-*NAFTA Chapter 17 IP ProvisionsNote the similarities to WIPO

CopyrightTrademarkPatentsEnforcementBordersDispute Settlement

LA Ch 6-*National Organizations for the Protection of IP RightsOrganizations:Canadian Intellectual Property Office (CIPO)United States Patent and Trademark Office (USPTO)European Patent Office (EPO)Patent Office of the Cooperation Council for the Arab States of the GulfThe Eurasian Patent OrganizationAfrican Intellectual Property Organization

LA Ch 6-*International Protection of IP RightsThere is no single source of international IP protectionThere are a number of international treaties and organizations that work together to establish minimum standardsTRIPS builds on the existing conventions of WTO and augments the standards of international IP protectionBusiness leaders are advised to consult an expert in the area of international IP rights to fully understand the protections offered in foreign markets

LA Ch 6-*Intellectual Protection on CopyrightsCopyrights protect original creations in the following categories:Literary worksDramatic worksMusical worksArtistic works:Includes books, writings, music, sculpture, painting, photographs, motion pictures, dictionaries, mechanical contrivances and computer programs

LA Ch 6-*Berne Convention - CopyrightThe Berne Convention for the Protection for Literary and Artistic Works (1887):Established a union of more than 80 membersProtects the rights of authors based on these principles:National treatmentAutomatic protectionProtection is not dependant on authors country of origin

LA Ch 6-*Universal Copyright Convention (UCC)Recent revisions of this convention were completed in 1971This is a multilateral protection agreement negotiated as an alternative to the Berne Convention, which had yet gained universal acceptanceUnder the UCC, members can establish their own requirements and exceptions as long as artists rights are ultimately protected

LA Ch 6-*International Protection of PatentsPatents protect inventions and processesPatent holder acquires the right to bar others for a set period of time (usually 20 years) from using, making or selling the invention claimed in the patentThe international patent system is not uniform

LA Ch 6-*International Protection of Patents and the Players

LA Ch 6-*Patent Infringement & ConsequencesAn infringement of a patented invention involves: any unauthorized manufactureusesaleimport or exportConsequences of infringement can be severe:A business can be temporarily or permanently prohibited from manufacturing or selling the infringing product or processCosts associated with law suits are high

LA Ch 6-*Patents and SMEs

LA Ch 6-*International Protection of TrademarksA trademark is:a wordlogosymbolcombination of numbersThe owner of a trademark right can bar others from using the same or similar marks on the same or related productsA trademark right does not grant the trademark holder absolute ownership of the word, symbol or logoIt grants the trademark holder the right to link its product or services to the trademark

LA Ch 6-*Trademark Conventionsand the Players

LA Ch 6-*Infringement of TrademarksHolders of an unregistered trademark may bring a common law action for passing offRemedies include:injunctionsurrenderingdestruction of offending materialaccounting of profits and damages

LA Ch 6-*International Protection of Industrial DesignIndustrial designs: Are those aspects of an invention, creation, or good that increase its marketability through aestheticsCan include:ShapeColour patternsDimensionsSurface Elements that can be captured on a blueprintNot all countries recognize industrial designs in the same mannerIndustrial design is sometimes covered in copyright or patent law

LA Ch 6-*The Hague AgreementThe Hague Agreement Concerning the International Registration of Industrial Designs:Unified registration systemTreaty member applicants only file once with WIPO or their national office

LA Ch 6-*Infringement of Industrial DesignAny action for infringement in Canada must be brought within three years of infringementThe Industrial Design Office must be searched thoroughly before introducing a productIt is also prudent to search the Patent and Trademark Office as well, because some industrial designs can be similar to trademarks

LA Ch 6-*Intellectual Protection of Trade SecretsA trade secret is anything that:Derives actual or potential economic value from not being generally known, and cannot readily and legally be ascertained by others who would profit from its disclosure or useIs the subject of reasonable efforts to maintain its secrecy

Differences between a trade secret and other IP rights:Trade secrets have no territorial limitsTrade secrets have no temporal limitsTrade secrets will be protected legally only while they are secret and their disclosure cannot be forced by lawAnyone who has a trade secret cannot bar others from developing it independently

LA Ch 6-*Protection of Trade SecretsNo international conventions protecting trade secretsProtection varies around the worldBest to assume that a trade secret can only be protected through a secrecy agreement between parties

LA Ch 6-*Infringement & ConsequencesWhen trade secrets are divulged without consent of the owner:The owner may sue for breach of contract (if the contract so provides)It is a breach of fiduciary dutyIt is a breach of confidenceIn some countries, there might be problems resolving a dispute in court, if all court proceedings are open (for example, Japan)

LA Ch 6-*International Protection of Circuit DesignIntegrated circuits (chips) design record the installation instructions for electronic processors: For example, RAM and ROMProtection is given to: the designsthe installation instructions

LA Ch 6-*National Protection of Circuit Designs

CanadaIntegrated Circuit Topography ActEuropean UnionEuropean Design DirectiveUnited KingdomRegistered Designs Acts, Registered Designs RulesUnited StatesSemiconductor Chip Protection Act of 1984

LA Ch 6-*International Protection of Domain NamesWebsites are used to facilitate quick and easy communication with businesses internationallyTo set up a website, entrepreneurs must secure a domain name:This will identify or sometimes trademark the types of products or services they offer

LA Ch 6-*Issues Related to Domain NamesCybersquattingTyposquattingReverse domain hijacking

LA Ch 6-*International Registration of Domain NamesConsiderations before registering a domain name internationally:Legal limitationsCostTranslation

LA Ch 6-*International Organizations & Domain Names

International organizations protecting domain namesWIPOInternet Cooperation for Assigned Names and Numbers (ICANN)Internet Assigned Numbers Authority (IANA)

LA Ch 6-*IP and Licensing AgreementsManaging licensing agreement risksCompetition lawsGovernment agencies

LA Ch 6-*Key Licensing Agreement Clauses

Common clauses in IP licensing rights contractsLicensed rightsConsiderationExchange controlReports and accountingQualityChange of lawsGrant-back licensesWarranties, disclaimer clausesInsuranceWithholding tax

LA Ch 6-*Emerging Issues in IPThe internet and the music industryBiotechnology (including genetic engineering)Agriculture and genetically modified productsPharmaceuticals and generic drugs

LA Ch 6-*Key Business Considerations & IP Rights

*This is a list presented in table format.*This is a list in table format.