Mt5001 - International Ip Agreements And Ip Laws

National University of Singapore

MT 5001 IP Management Term Paper: International IP Agreements and IP Laws

Submitted by:

Lim Ching Wu Leslie HT063039Y

Centre of Management of Science & Technology MT5001 Intellectual Property Management

Content Content.......................................................................................................................................1 Introduction................................................................................................................................2 Types of Intellectual Property....................................................................................................3 Trademarks and Service Marks .........................................................................................3 Copyrights..........................................................................................................................3 Patents ................................................................................................................................3 Trade Secrets......................................................................................................................3 Layout-design of Integrated Circuits (IC)..........................................................................4 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs)........................5 Standards............................................................................................................................5 Enforcement.......................................................................................................................6 Dispute Settlement .............................................................................................................6 Copyright ...........................................................................................................................6 Trademarks ........................................................................................................................7 Geographical Indications ...................................................................................................7 Patent..................................................................................................................................7 Layout-designs of integrated circuits.................................................................................7 Intellectual Property Laws of USA and EU...............................................................................9 Patent......................................................................................................................................9 USA IP Law.......................................................................................................................9 EU IP Law..........................................................................................................................9 Copyright .............................................................................................................................10 USA IP Law.....................................................................................................................10 EU IP Law........................................................................................................................10 Trademark ............................................................................................................................11 USA IP Law.....................................................................................................................11 EU IP Law........................................................................................................................11 Trade Secret .........................................................................................................................12 USA IP Law.....................................................................................................................12 EU IP Law........................................................................................................................13 Semiconductor Chip (or Integrated Circuit Layout/Topography) .......................................13 USA IP Law.....................................................................................................................13 EU IP Law........................................................................................................................14 Antitrust Laws......................................................................................................................14 Conclusion ...............................................................................................................................15 Reference .................................................................................................................................16

Centre of Management of Science & Technology MT5001 Intellectual Property Management

Introduction According to the definition given by World Intellectual Property Organization (WIPO) [1], Intellectual Property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. IP is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. In general, countries have laws to protect IP for two main reasons [2]. The first reason is to give statutory expression to the moral and economic rights of creators in their creations and the rights of the public in access to those creations. The second reason is to promote, as a deliberate act of Government policy, creativity and the dissemination and application of its results and to encourage fair trading which would contribute to economic and social development. In short, IP laws safeguard the rights of creators and producers of intellectual goods and services by granting them time-limited rights to control the use of their productions. For over 200 years, organizations such as United States Patent and Trademark Office (USPTO), and in recent years, European Patent Office (EPO), had been administering IP laws in United States (US) and Europe respectively. In the aspect of international trade, World Trade Organization (WTO) had introduced intellectual property rules into the multilateral trading system. This set of agreement negotiated by WTO is known as “Agreement on Trade-Related Aspects of Intellectual Property Rights” (TRIPs). The next few sections of this paper will describe the overview of the TRIPs agreement and delineate the IP laws of the US and European Union nations, with respect to their requirements of IP rights, durations of the statutory rights, appropriations and assignments of the rights/beneficiaries between employers and employees, and the remedies for IP infringements.

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Types of Intellectual Property Before the detailed discussion on the TRIPs agreement and IP law, this section elaborates on the different types of IP and defines what constitutes to each type of IP.

Trademarks and Service Marks A trademark is defined as a protection which companies can obtain for their “mark” on products to show that the products are uniquely theirs. With protection, the products can develop a reputation for high quality, low cost, special taste, performance, or some traits that can be associated with the companies that product them and their products. While trademarks are commonly associated with goods, service marks are associated with service.

Copyrights A copyright is defined as the exclusive rights regulating the use of expressive works that have been authored, such as literature, drama, music, computer software. Copyrights protect the expression of ideas by preventing strict copying of the expressive work.

Patents A patent is defined as a set of exclusive rights granted to exclude others from making, using, selling, offering sale, or importing a patented invention, in exchange for public disclosure of details of the invention. These details include that of the device, method, process, and composition of matter which is new, non-obvious extension or technical advance over previous inventions, and have industrial or real-world utility.

Trade Secrets Trade secrets are defined as details of production, such as the formula, process, design, instrument, pattern, or compilation of information used by the business that provide competitive advantages. These are confidential information which companies protect through non-compete non-disclosure contracts with their employees.

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Layout-design of Integrated Circuits (IC) Layout-design of IC is defined as the original layout designs for integrated circuits and computer chips. The integrated circuits are also commonly called “semiconductor” and “silicon chip”. The protection prevents the copying and commercial exploitation of an original layout-design of an IC.

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Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) The WTO is an international organization incepted in 1995 that establishes rules for international trade through consensus among its member states. It also resolves disputes between the members, which are all signatories to its set of trade agreements. The organization's headquarters are located in Geneva, Switzerland. There are 150 member states in the organization, the latest to join being Vietnam on January 11, 2007. Pascal Lamy is the current Director-General of the World Trade Organization. The TRIPs was first negotiated in 1986-94 Uruguay round by WTO and came into effect on 1 January 1995 [3]. The Intellectual Property Rights (IPR) covered by this agreement include copyright and related rights, trademarks and service marks, geographical indications, industrial designs, patents, layout-designs of integrated circuits, and undisclosed information. The TRIPS Agreement is a minimum standards agreement. Members are allowed to grant more extensive IP protection and are to determine the suitable manner of implementing the specifications of the Agreement within their own legal system and practice. As described in Annex 1C of the TRIPs Agreement, there are three main features: Standards concerning the availability, scope and use of IP rights; Enforcement of Intellectual Property Rights; Dispute Prevention and Settlement.

Standards The TRIPs Agreement sets out the minimum standards of protection to be provided by each Member, defining the main elements of protection [4]. These include the subject-matter to be protected, the rights to be awarded, the allowable exceptions to these rights, and the minimum term of protection. A two step approach was used to set these standards. The first step was by acquiring substantive requirements from the most recent versions of the main conventions, namely the WIPO, the Paris Convention for the Protection of Industrial Property, and the Berne Convention for the Protection of Literary and Artistic Works. The provisions of the Berne Convention on moral rights were omitted. The second step was by adding additional requirements which were seen as silent or insufficient in the pre-existing conventions.

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Enforcement The second set of specifications in the TRIPs agreement state the general principles applicable to all IPR enforcement procedures. It covers the general obligations, civil and administrative procedures and remedies, provisional measures, special requirements related to border measures, and criminal procedures.

Dispute Settlement This part of the TRIPs Agreement states the procedures for transparency in the laws and regulations, final judicial decisions, and administrative rulings of general application, made effective by WTO members. Disputes between members about the respect of the TRIPS obligations are subjected to the WTO's dispute settlement procedures.

Besides the three main features, the TRIPs Agreement provides for basic principles and some general rules to ensure that procedural difficulties in acquiring or maintaining IPRs do not nullify the substantive benefits from the Agreement. All members are equally committed to apply the Agreement, with exceptions to developing countries which are given longer period to implement. Developing countries without product patent protection for pharmaceuticals products are given special transition arrangements operate.

Below are some examples of the standard protection in the Agreement extended from the preexisting conventions:

Copyright Article 9.2 confirms that copyright protection shall extend to expressions and not to ideas, procedures, and methods of operation or mathematical concepts as such.

Article 10.1 provides that computer programs, 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 confirms that the general term of protection of 50 years applies to computer programs.

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Article 10.2 clarifies that databases and other compilations of data or other material shall be protected as such under copyright even where the databases include data that as such are not protected under copyright.

Trademarks Article 16.2 and 3 provide that it is required that knowledge in the relevant sector of the public acquired not only as a result of the use of the mark but also by other means, including as a result of its promotion, be taken into account for trademarks protection.

Article 20 states 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.

Geographical Indications Article 22.1 defines Geographical indications 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. 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.

Patent Article 31 states that compulsory licensing and government use without the authorization of the right holder are allowed, but are made subject to conditions aimed at protecting the legitimate interests of the right holder.

Layout-designs of integrated circuits The TRIPs Agreement requires Member countries to protect the layout-designs of integrated circuits in accordance with the provisions of the IPIC Treaty, and clarifies and/or builds on four points. These points relate to the term of protection (ten years instead of eight, Article 38), the applicability of the protection to articles containing infringing integrated circuits (last sub clause of Article 36) and the treatment of innocent infringers (Article 37.1). The conditions in Article 31 of the TRIPS Agreement apply mutatis mutandis to compulsory or non-voluntary licensing of a layout-design or to its use by or for the government without the

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authorization of the right holder, instead of the provisions of the IPIC Treaty on compulsory licensing (Article 37.2).

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Intellectual Property Laws of USA and EU This section elaborates the requirements of IP rights, durations of the statutory rights, appropriations and assignments of the rights/beneficiaries between employers and employees, and the remedies for IP infringements, for USA and EU IP laws.

Patent USA IP Law According to 35 U.S.C. 101, whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Patents are granted by the USPTO for three categories: Utility, Design, and Plant [5]. Utility patents expire 20 years from the date of filing with the USPTO, if maintenance fees are paid. Plant and design patents do not require maintenance fees. Design patents expire 14 years from grant. A patent cannot be renewed. After a patent expires, anyone may use the invention without the inventor's permission. Generally, an employee must assign an invention to an employer if the employee has a specific contractual obligation to assign or if the employee was hired to invent or is directed by the employer to solve a particular problem [6]. Remedy for infringement of patent by civil action can be in the form of injunction. Court can award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. U.S.C. 289 states the additional remedy for design patent whereby infringer is liable to the owner to the extent of his total profit, but not less than $250.

EU IP Law According to Article 52 of European Patent Convention, European patents are granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step [7]. Invention excludes discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information. The term of the European patent shall be 20 years as from the date of filing of the application. Article 60 states that the right to a European patent belongs to the inventor or his successor. If the inventor is an employee the right to the European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State

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in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has his place of business to which the employee is attached. For remedies, the European Patent Court may order a party infringing or threatening to infringe a European patent to cease and desist from any act infringing the patent under Articles 33 or 34. The court may order that goods found to be infringing be destroyed or otherwise disposed of, without compensation of any sort, outside the commercial channels and in such a manner as to prevent any harm to the injured party. Finally, the court may also order the party who knowingly, or with reasonable grounds to know, infringes the European patent, to pay the injured party damages adequate to compensate for the injury suffered.

Copyright USA IP Law According to the June 2003 edition of Circular 92, the Copyright Law of the United States, in general, original works fixed in any tangible medium of expression are entitled to copyright protection. Duration of protection is stated for three categories: “Works Created on or after 1 January 1978”, “Works created but not published or copyrighted before 1 January 1978”, and “Existing copyrights on 1 January 1978”. In general, the duration is during the lifetime of the author and 70 years after the author’s death. Terms of copyright run to the end of the calendar year in which they would otherwise expire. If a work is “made for hire,” the employer, and not the employee, is considered the author [8]. The employer may be a firm, an organization, or an individual. Under civil offense, there are four remedies for infringement, injunction, impounding and disposition of infringing articles, awarding of damages and profit, and recovery of cost and attorney’s fee. In the cases of criminal offenses, remedies include the forfeiture and destruction or other disposition of all infringing copies or phonorecords and all implements, devices, or equipment used in the manufacture of such infringing copies or phonorecords, and fine of not more than $2,500 for placing fraudulent copyright notice, fraudulent removal of copyright notice, and false representation material fact in the registration of copyright.

EU IP Law According to Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006, Article 2 and 3 state that the Berne Convention for the protection of

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literary and artistic works and the International Convention for the protection of performers, producers of phonograms and broadcasting organisations (Rome Convention) lay down only minimum terms of protection of the rights [9]. The different national laws governing the terms of protection of copyright and related rights are liable to impede the free movement of goods and freedom to provide services and to distort competition in the common market. Article 1.1 states that the rights of an author of a literary or artistic work within the meaning of Article 2 of the Berne Convention shall run for the life of the author and for 70 years after his death, irrespective of the date when the work is lawfully made available to the public. Article 8 states that member states are to provide appropriate sanctions and remedies in respect of infringements of the rights. It can be an action for damages and/or apply for an injunction and, where appropriate, for the seizure of infringing material as well as of devices, products or components

Trademark USA IP Law According to U.S. Trademark Law [10], a trade or service mark can be registered with the submission of the drawing of the mark and the listing of goods or services. Each registration remains in force for 10 years. Each registration may be renewed for periods of 10 years at the end of each successive 10-year period. The registration is assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark. Remedies against further infringing or diluting use of the trademark includes injunction, monetary relief in terms of: (1) defendant's profits, (2) damages sustained by the plaintiff, and (3) the costs of the action, and destruction of infringing articles. Damages may be trebled upon showing of bad faith. In trademark dilution suits, however, damages are available only if the defendant willfully traded on the plaintiff's goodwill in using the mark. Otherwise, plaintiffs in a dilution action are limited to injunctive relief.

EU IP Law The Community trade mark gives its proprietor a uniform right applicable in all Member States of the European Union on the strength of a single procedure which simplifies trade mark policies at European level [11]. The Community trade mark may be used as a manufacturer's mark, a mark for goods of a trading company, or service mark. It may also

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take the form of a collective trade mark: properly applied, the regulation governing the use of the collective trade mark guarantees the origin, the nature and the quality of goods and services by making them distinguishable, which is beneficial to members of the association or body owning the trade mark. It is valid for a period of 10 years and may be renewed indefinitely. Trade Mark Act 1994 states that the court may make an order that require infringing signs to be erased, removed or obliterated from any infringing goods, material or articles [12].

Trade Secret USA IP Law Six factors are generally used to determine whether material is a trade secret [13]: •

The extent to which the information is known outside the claimant's business.

•

The extent to which the information is known by the claimant's employees.

•

The extent of measures taken by the claimant to guard the secrecy of the information.

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The value of the information to the claimant and the claimant's competitors.

•

The amount of effort or money expended by the claimant in developing the information.

•

The ease with which the information could be acquired by others.

Information has value if it gives rise to actual or potential commercial advantage for the owner of the information. Although a trade secret need not be unique in the patent law sense, information that is generally known is not protected under trade secrets law. Trade secret protection endures so long as the requirements for protection - generally, value to the owner and secrecy - continue to be met. The protection is lost if the owner fails to take reasonable steps to keep the information secret. Under the Uniform Trade Secret Act (UTSA), the definition of misappropriation includes simple acquisition of a trade secret by a person who knows or has reason to know that the trade secret was acquired by improper means no subsequent or impending use of the trade secret is required. Once it has been established that a trade secret has been misappropriated, injunctions to enjoin further use of a trade secret will generally be issued by the courts. Damages of the actual loss caused by the misappropriation

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may be awarded. However, the UTSA specifies that an action for misappropriation must be brought within three years after the misappropriation is discovered or reasonably should have been discovered.

EU IP Law European Community law does not specifically protect trade secrets or undisclosed information, although the UK, France, and Germany (among others) do have such laws [14]. The UK protects trade secrets using the Law of Confidentiality; consequently, a company must explicitly contractually bind in confidence anyone to whom trade secrets might be disclosed. The information must be information the release of which the owner reasonably believes would be injurious to him or of advantage to his rivals and others [15]. The information should not already be in the public domain and must be judged in the light of the usage and practices of the particular industry concerned. The principle remedy for breach of confidence is an injunction restraining the confidant from disclosing or using the confidential information. Damages, assessed on the basis of the equal market value of the confidential information wrongly acquired or disclosed, are also available. In appropriate circumstances, orders to account of profits and delivery up may also be granted.

Semiconductor Chip (or Integrated Circuit Layout/Topography) USA IP Law In 1984, the Semiconductor Chip Protection Act amended title 17 of the United States Code to add a new chapter 9 entitled "Protection of Semiconductor Chip Products." Pub. L. No. 98620, 98 Stat. 3347 [16]. However, it was rendered largely unnecessary upon the entry into force on January 1, 1995, of the TRIPs. According to Part II, section 6 of TRIPs, if registration is required, the term of protection of layout-designs is for 10 years counted from the date of filing an application for registration or from the first commercial exploitation. If no registration is required, the term of protection will be no less than 10 years from the date of the first commercial exploitation. TRIPs member may also provide term of protection that lapse 15 years after the creation of the layout-design. A person found to unlawfully reproducing the layout-design will be liable to pay to the right holder a sum equivalent to a reasonable royalty such as would be payable under a freely negotiated license in respect of such a layout-design.

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EU IP Law Article 2.2 of Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products states that the topography of a semiconductor product shall be protected in so far as it satisfies the conditions that it is the result of its creator's own intellectual effort and is not commonplace in the semiconductor industry [17]. The topography of a semiconductor product consists of elements that are commonplace in the semiconductor industry, it shall be protected only to the extent that the combination of such elements, taken as a whole, fulfils the abovementioned conditions. Topography created in the course of the creator's employment, the right to protection shall apply in favour of the creator's employer unless the terms of employment provide to the contrary. Article 7.3 states that the duration of protection is for 10 years. Any exclusive rights of a topography, that has not been commercially exploited anywhere in the world within a period of 15 years from its first fixation or encoding, will come to an end and no new exclusive rights will come into existence unless an application for registration has been filed within that period. A person infringing this directive will not be prevented from commercially exploiting that product. However, on the demand of the rightholder, a tribunal may require, in accordance with the provisions of the national law applicable, the payment of adequate remuneration.

Antitrust Laws The US antitrust laws prohibit a variety of practices that restrain trade, such as price-fixing conspiracies, corporate mergers likely to reduce the competitive vigor of particular markets, and predatory acts designed to achieve or maintain monopoly power [18]. Serious and willful violations of the antitrust laws result in criminal suits that can lead to large fines and jail sentences. Civil actions include court order to forbid future violations and remedy the anticompetitive effects of past violations. Antitrust immunities are provided for the following industries: Agricultural, export trade, insurance, labour, fishing, defense preparation, newspaper, sports, small business, and local government.

The European Commission (EC) Treaty sets out two rules that cover the area of Antitrust [19]: •

Article 81 of the Treaty states that the agreements between two or more firms which restrict competition are prohibited, subject to some limited exceptions. This provision

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covers a wide variety of behaviours. The most obvious example of illegal conduct infringing Article 81 is a cartel between competitors. •

Article 82 of the Treaty states that firms in a dominant position may not abuse that position, such as predatory pricing aiming at eliminating competitors from the market.

EC may impose fines on undertakings that violate EU antitrust rules. In 2005, EC began reviewing the policy underlying Article 82 and the way in which it should enforce that policy. The review aims to set out in a clear and consistent manner theories of harm underlying the application of Article 82 based on sound economic assessment and to develop practical and workable rules, which take into account the reality on the market.

Conclusion Innovation is important to the success of business. Innovation can be transformed into protected and monetizable business assets. In order to do so, intellectual assets should be identified, developed, protected and utilized. IP laws provide the protection to safeguard these business assets. This paper introduced the types of IP and briefly described the overview of the TRIPs agreement, as well as the US and EU IP laws with respect to their requirements of IP rights, durations of the statutory rights, appropriations and assignments of the rights/beneficiaries between employers and employees, and the remedies for IP infringements.

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References [1] What is Intellectual Property, WIPO. http://www.wipo.int/about-ip/en/ Retrieved on 23 Feb 2007.

[2] WIPO Intellectual Property Handbook: Policy, Law and Use, WIPO. http://www.wipo.int/about-ip/en/iprm/index.html Retrieved on 23 Feb 2007.

[3] Understanding the WTO: The Agreements, WTO. http://www.wto.org/english/thewto_e/whatis_e/tif_e/agrm7_e.htm Retrieved on 23 Feb 2007.

[4] A More Detailed Overview of the TRIPs Agreement, WTO. http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm Retrieved on 23 Feb 2007.

[5] Patent Basics, Clemson University. http://www.clemson.edu/research/ottSite/ottStart_IntelectPatents.htm Retrieved on 24 Feb 2007.

[6] H. M. Eisenberg, Patent Law You Can Use, Yale University. http://www.yale.edu/ocr/invent_guidelines/docs/inventor_owner.pdf Retrieved on 24 Feb 2007.

[7] European Patent Convention: Article 52, EPO. http://www.european-patent-office.org/legal/epc/e/ar52.html#A52 Retrieved on 3 Mar 2007.

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[8] Circular 9: Works Made for Hire under the 1976 Copyright Act, US Copyright Office. http://www.copyright.gov/circs/circ9.html Retrieved on 4 Mar 2007.

[9] Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights, EUR-Lex. http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32006L0116:EN:HTML Retrieved on 10 Mar 2007.

[10] Trademark Law: Rules of Practice and Federal Statutes, USPTO. http://www.uspto.gov/web/offices/tac/tmlaw2.html Retrieved on 10 Mar 2007.

[11] The Advantages of Community Trade Mark, EUR-Lex. http://oami.europa.eu/en/mark/role/brochure/br1en10.htm Retrieved on 10 Mar 2007.

[12] Trade Marks Act 1994, Office of Public Sector Information. http://www.opsi.gov.uk/acts/acts1994/Ukpga_19940026_en_2.htm#mdiv14 Retrieved on 10 Mar 2007.

[13] United States Trade Secret Law, Seattle Patent Law. http://www.seattlepatentlaw.com/articles/USTradeSecretLaw.pdf Retrieved on 20 Mar 2007.

[14] IP Rights SIG/Trade Secret, IGDA. http://www.igda.org/wiki/index.php/IP_Rights_SIG/Trade_Secrets Retrieved on 20 Mar 2007.

[15] An Overview of the Law of Confidentiality & Trade Secrets, Kaltons Technology Solicitors. http://www.kaltons.co.uk/articles/193.cfm Retrieved on 20 Mar 2007.

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[16] Chapter 9: Protection of Semiconductor Chip Products, US Copyright Office. http://www.copyright.gov/title17/92chap9.html Retrieved on 25 Mar 2007.

[17] Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products, Eur-Lex. http://eurlex.europa.eu/smartapi/cgi/sga_doc?smartapi!celexapi!prod!CELEXnumdoc&lg=en &numdoc=31987L0054&model=guichett Retrieved on 25 Mar 2007.

[18] Overview of Antitrust, Department of Justice. http://www.usdoj.gov/atr/overview.html Retrieved on 2 Apr 2007.

[19] Overview of Antitrust, Europa. http://ec.europa.eu/comm/competition/antitrust/overview_en.html Retrieved on 2 Apr 2007.

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