INTRODUCTION INTRODUCTION TO TO

INTELLECTUAL INTELLECTUAL PROPERTYPROPERTY

BY Ronald De FourBY Ronald De FourThe University of the West Indies St. AugustineThe University of the West Indies St. Augustine

The material presented in this document was sourced from the The material presented in this document was sourced from the WIPO Web SiteWIPO Web Site

ContentsContents Property TypesProperty Types Divisions of IPDivisions of IP Copyright Related RightsCopyright Related Rights IP ConventionsIP Conventions Most Used IP ConventionsMost Used IP Conventions Paris Convention (1883)Paris Convention (1883)

National TreatmentNational TreatmentRights of PriorityRights of PriorityCommon Rules (Patents)Common Rules (Patents)Common Rules (Marks)Common Rules (Marks)Common Rules (Other)Common Rules (Other)

ContentsContents Berne Convention (1886)Berne Convention (1886)

Three Basic PrinciplesThree Basic PrinciplesMinimum Standards for ProtectionMinimum Standards for ProtectionRights to be ProtectedRights to be ProtectedDuration of ProtectionDuration of Protection

WIPO Convention (1970)WIPO Convention (1970) Patent Cooperation Treaty (PCT) (1970)Patent Cooperation Treaty (PCT) (1970)

Advantages of the PCTAdvantages of the PCT Example of Search ReportExample of Search Report Example of Written OpinionExample of Written Opinion Example of Published ApplicationExample of Published Application

ContentsContents

IP Treaties Supported by UWI Campus IP Treaties Supported by UWI Campus Countries:Countries:

(a) Trinidad & Tobago(a) Trinidad & Tobago

(b) Jamaica(b) Jamaica

(c)(c) BarbadosBarbados

Property TypesProperty Types

Traditional Property Traditional Property

e.g. Land, building, natural resources etc.e.g. Land, building, natural resources etc.

Intellectual Property – creations of the Intellectual Property – creations of the mindmind

e.g. Inventions, literary and artistic e.g. Inventions, literary and artistic works, symbols and design used in works, symbols and design used in commercecommerce

Divisions of IPDivisions of IP

IntellectualProperty

CopyrightIndustrialProperty

inventions

trademarks

industrial designs

graphic indicatorsof source

literary works

artistic works

(novels, poems,plays, films,

musical works)

(drawings,paintings,

photographs,sculptures,

architecturaldesigns)

Copyright Related RightsCopyright Related Rights

Performing artists in their Performing artists in their performancesperformances

Producers of phonograms in their Producers of phonograms in their recordingsrecordings

Those of broadcasters in their radio Those of broadcasters in their radio and television programsand television programs

IP ConventionsIP Conventions Berne Convention (1886):-Berne Convention (1886):-Literary & Artistic WorksLiterary & Artistic Works Brussels Convention (1974):-Brussels Convention (1974):-Distribution of Programme-Distribution of Programme-

carrying carrying

signals distributed by satellite)signals distributed by satellite)

Film Register Treaty (1989):- Film Register Treaty (1989):- Int. registration of Int. registration of audiovisual worksaudiovisual works

Madrid Agreement(1891):- Madrid Agreement(1891):- Repression of false or deceptive Repression of false or deceptive

indications of source on goodsindications of source on goods

Nairobi Treaty (1981):- Nairobi Treaty (1981):- Protection of Olympic symbolProtection of Olympic symbol

Paris Convention (1883):- Paris Convention (1883):- Protection of Industrial propertyProtection of Industrial property

Patent Law Treaty (2000):- Patent Law Treaty (2000):- Streamlining of patent Streamlining of patent application application

proceduresprocedures

IP Conventions IP Conventions Phonograms Convention (1971):-Phonograms Convention (1971):- Protection Protection

of of phonograms against unauthorized phonograms against unauthorized

duplicationduplication Rome Convention (1961):- Rome Convention (1961):- Protection of Protection of

performers, performers, producers of phonograms and broadcast producers of phonograms and broadcast

organizationsorganizations Singapore Treaty (2006 Singapore Treaty (2006 not in forcenot in force):- ):- law of law of

trademarkstrademarks Trademark Law Treaty(1994):- Trademark Law Treaty(1994):- To streamline To streamline

trademark trademark registration registration proceduresprocedures

Washington Treaty (1989):- Washington Treaty (1989):- IP treaty w.r.t IP treaty w.r.t Integrated CircuitsIntegrated Circuits

WCT (1996):- WCT (1996):- Adds copyrighting of computer Adds copyrighting of computer programs & programs & databasesdatabases

WPPT (1996):- WPPT (1996):- WIPO Performances and phonograms WIPO Performances and phonograms treatytreaty

Main Patent & Copyright Main Patent & Copyright ConventionsConventions

The following four conventions are The following four conventions are frequently used with patents and copyrightfrequently used with patents and copyright

Paris Convention (1883) –Industrial Paris Convention (1883) –Industrial PropertyProperty

Berne Convention(1886)-Literary & ArtisticBerne Convention(1886)-Literary & Artistic WIPO Convention(1970)-Merger of Paris & WIPO Convention(1970)-Merger of Paris &

BerneBerne PCT Convention(1970)-Simultaneous PCT Convention(1970)-Simultaneous

ProtectionProtection

Paris Convention (1883)Paris Convention (1883) This convention applies to industrial This convention applies to industrial

property and includes: property and includes: -patents, marks, industrial designs, -patents, marks, industrial designs,

utility models, trade names, geographic utility models, trade names, geographic indicators and repression of unfair indicators and repression of unfair competition.competition.

The provisions of the convention fall into The provisions of the convention fall into three categories:- (a) national treatmentthree categories:- (a) national treatment

(b) right of priority(b) right of priority (c) common rules.(c) common rules.

National TreatmentNational Treatment

Equality of protection to nationals and Equality of protection to nationals and members of contracting state, andmembers of contracting state, and

National protection treatment to:National protection treatment to:

(a) domiciled non-contracting states(a) domiciled non-contracting states

(b) non-contracting states having a real (b) non-contracting states having a real and and

effective industrial or commercial effective industrial or commercial establishment in a contracting stateestablishment in a contracting state

Right of PriorityRight of Priority

Upholds 1Upholds 1stst application date for application date for duration of duration of 12 months12 months (patents) & (patents) & 6 months6 months (industrial designs & (industrial designs & marks) with other contracting statemarks) with other contracting state

Common Rules (Patents)Common Rules (Patents) Patents granted in different contracting for the Patents granted in different contracting for the

same invention are independent of each other.same invention are independent of each other. The inventor has the right to be named in the The inventor has the right to be named in the

patent.patent. The grant of a patent may not be refused if the The grant of a patent may not be refused if the

sale of the patented produce is restricted by law.sale of the patented produce is restricted by law. The limitations imposed on contracting states The limitations imposed on contracting states

w.r.t. compulsory licenses to prevent abuse are:w.r.t. compulsory licenses to prevent abuse are:

(a) grant is only after 3 to 4 yrs of failure to work(a) grant is only after 3 to 4 yrs of failure to work

(b) refused if inaction is justified by legitimate (b) refused if inaction is justified by legitimate reasonsreasons

(c) forfeiture only occur on compulsory license (c) forfeiture only occur on compulsory license failurefailure

Common Rules (Marks)Common Rules (Marks) Conditions for filing and registration of marks are Conditions for filing and registration of marks are

regulated by domestic law and not this convention.regulated by domestic law and not this convention. Hence, no application for the registration of a Hence, no application for the registration of a

mark may be refused, nor can a registration be mark may be refused, nor can a registration be invalidated due to country of origin issue.invalidated due to country of origin issue.

Registration in contracting states are independent Registration in contracting states are independent to each other.to each other.

The acceptance of a mark in the country of origin The acceptance of a mark in the country of origin ensures its acceptance in other contracting states.ensures its acceptance in other contracting states.

Compulsory marks are canceled after a reasonable Compulsory marks are canceled after a reasonable period or if inaction is unjustifiable by owner.period or if inaction is unjustifiable by owner.

Marks are prohibited if they imitate other Marks are prohibited if they imitate other registered marks or contain state emblems and registered marks or contain state emblems and official signs.official signs.

Common Rules (Other)Common Rules (Other)

Industrial designs must be protected in Industrial designs must be protected in each state.each state.

Trade name protection must be Trade name protection must be granted without filing or registration.granted without filing or registration.

False indications of source of goods False indications of source of goods either directly or indirectly is either directly or indirectly is prohibited.prohibited.

Effective protection against unfair Effective protection against unfair competition must be provided.competition must be provided.

Berne Convention (1886)Berne Convention (1886)

This convention applies to the This convention applies to the protection of literary and artistic protection of literary and artistic works.works.

The convention rests on:The convention rests on:

(a) three basic principles(a) three basic principles

(b) the minimum standards of (b) the minimum standards of protection..protection..

Three Basic PrinciplesThree Basic Principles

Principle of national treatment:- Principle of national treatment:- works works originating in one contracting state must be originating in one contracting state must be given the same protection in other statesgiven the same protection in other states..

Principle of automatic protection:- Principle of automatic protection:- such such protection must not be in compliance with protection must not be in compliance with any formality.any formality.

Principle of independence of protection:- Principle of independence of protection:- such protection is independent of the such protection is independent of the existence of protection in the country of existence of protection in the country of origin of the workorigin of the work..

Minimum Standards of Minimum Standards of ProtectionProtection

Minimum protection standards depend Minimum protection standards depend on:on:

(a) the work to be protected,(a) the work to be protected,

(b) the rights to be protected and(b) the rights to be protected and

(c) the duration of protection.(c) the duration of protection. Concerning the workConcerning the work, protection must , protection must

include every production in the literary, include every production in the literary, scientific and artistic domain, whatever scientific and artistic domain, whatever may be the mode or form of expression.may be the mode or form of expression.

Rights to be ProtectedRights to be Protected Exclusive rights of authorization:Exclusive rights of authorization:

(a) the right to translate,(a) the right to translate,(b) the right to make adaptations and arrangements of the (b) the right to make adaptations and arrangements of the

work,work,(c) the right to perform in public dramatic, dramatico-(c) the right to perform in public dramatic, dramatico-musical musical

and musical works,and musical works,(d) the right to recite in public literary works,(d) the right to recite in public literary works,(e) the right to communicate to the public the performance (e) the right to communicate to the public the performance of of

such works,such works,(f) the right to broadcast with the possibility of receiving a (f) the right to broadcast with the possibility of receiving a

right of equitable remuneration instead of a right of right of equitable remuneration instead of a right of authorization,authorization,

(g) the right to make reproductions in any manner of form,(g) the right to make reproductions in any manner of form,(h) the right to use the work as a basis for an audiovisual (h) the right to use the work as a basis for an audiovisual work and to reproduce, distribute, perform the work in work and to reproduce, distribute, perform the work in public.public.

Rights to be ProtectedRights to be Protected

Moral RightMoral Right is another exclusive right is another exclusive right and entails:and entails:

(a) the right to claim authorship of work(a) the right to claim authorship of work

(b) the right to object to any mutilation, (b) the right to object to any mutilation,

deformation, modification or deformation, modification or derogatory derogatory

action in relation to the work.action in relation to the work.

Duration of ProtectionDuration of Protection

The general rule is that protection The general rule is that protection must be granted until the expiration must be granted until the expiration of the 50of the 50thth year after the author’s year after the author’s death.death.

Exception to above are anonymous Exception to above are anonymous and pseudonymous works, where the and pseudonymous works, where the term of protection expires 50 years term of protection expires 50 years after lawful public release.after lawful public release.

WIPO Convention (1970)WIPO Convention (1970)

WIPO convention was signed in 1967 and WIPO convention was signed in 1967 and enforced in 1970.enforced in 1970.

In 1974 WIPO became a UN agency.In 1974 WIPO became a UN agency. WIPO was born from the merging of the Paris WIPO was born from the merging of the Paris

& Berne Conventions.& Berne Conventions. Two main objectives of WIPO:Two main objectives of WIPO:

(a) Promote IP protection worldwide.(a) Promote IP protection worldwide.

(b) To ensure administrative cooperation (b) To ensure administrative cooperation among IP among IP

unions established by WIPO unions established by WIPO administered treatiesadministered treaties

WIPO Convention (1970)WIPO Convention (1970) The objectives of WIPO are achieved by:The objectives of WIPO are achieved by:

(a) (a) normative activitiesnormative activities:- involves setting norms :- involves setting norms and and std for protection & enforcement of IP rights,std for protection & enforcement of IP rights,(b) (b) program activitiesprogram activities:- involving legal technical :- involving legal technical assistance to IP involved statesassistance to IP involved states(c)(c) int. classification & standardization int. classification & standardization activitiesactivities:- :- involves cooperation among IP involves cooperation among IP offices wrt patents, offices wrt patents, trademarks and ID trademarks and ID documentationdocumentation(d) (d) registration activitiesregistration activities:- involves services :- involves services related to related to int. applications for patents, marks int. applications for patents, marks and IDand ID

WIPO headquarters is located in Geneva WIPO headquarters is located in Geneva SwitzerlandSwitzerland

Patent Cooperation Treaty Patent Cooperation Treaty (PCT) 1970(PCT) 1970

Allows for simultaneous patent protection in all Allows for simultaneous patent protection in all PCT contracting states.PCT contracting states.

The PCT regulates requirements of application.The PCT regulates requirements of application. PCT response to application consists of:PCT response to application consists of:

(a) (a) international search reportinternational search report listing citations listing citations of of

published documents that might affect published documents that might affect patentability patentability

of inventionof invention(b) (b) written opinionwritten opinion stating whether patentability stating whether patentability

criteria are addressed in light of search criteria are addressed in light of search report report

resultsresults The combination of search report and written The combination of search report and written

opinion are called the opinion are called the IPERIPER and it determines the and it determines the outcome of the application.outcome of the application.

Patent Cooperation Treaty Patent Cooperation Treaty (PCT) 1970(PCT) 1970

Publication of application and search Publication of application and search report on WIPO’s web site occurs as the report on WIPO’s web site occurs as the next stage.next stage.

National patent applicationsNational patent applications are are made by supplying a made by supplying a translation of the translation of the applicationapplication and the and the national feesnational fees to to the national office through a the national office through a local local AgentAgent on or before on or before 18 months18 months after the after the priority date.priority date.

Advantages of the PCTAdvantages of the PCT Applicants have 18 months to reflect on desirability Applicants have 18 months to reflect on desirability

of foreign country protection & preparation.of foreign country protection & preparation. Applications prepared using PCT guidelines are Applications prepared using PCT guidelines are

accepted on formal grounds by PCT contracting accepted on formal grounds by PCT contracting states in the national phase.states in the national phase.

The IPER provides a reasonable probability of The IPER provides a reasonable probability of invention patentability.invention patentability.

Applications can be amended during the int. prelim. Applications can be amended during the int. prelim. exam stage before it reaches the national stage.exam stage before it reaches the national stage.

Reduction or elimination of search and examination Reduction or elimination of search and examination work at the national stage.work at the national stage.

Well-founded 3Well-founded 3rdrd party opinion obtainable due to party opinion obtainable due to publication of application and search report.publication of application and search report.

Applications are advertised to the world.Applications are advertised to the world.

Example of Search Example of Search ReportReport

Example of Search Example of Search ReportReport

Example of Search Example of Search ReportReport

Example of Search Example of Search ReportReport

Example of Search Example of Search ReportReport

Example of Written Example of Written OpinionOpinion

Example of Written OpinionExample of Written Opinion

Example of Written Example of Written OpinionOpinion

Example of Published Example of Published ApplicationApplication

IP Treaties Supported by IP Treaties Supported by UWI Campus CountriesUWI Campus Countries

Trinidad & TobagoTrinidad & Tobago  

TREATYTREATY STATUSSTATUS ENTRYINTOFORCENTRYINTOFORCEE

Berne Convention Berne Convention In ForceIn Force August 16, 1988 August 16, 1988

Brussels Convention Brussels Convention In ForceIn Force November 1, 1996 November 1, 1996

Budapest Treaty Budapest Treaty In ForceIn Force March 10, 1994 March 10, 1994

Locarno Agreement Locarno Agreement In ForceIn Force March 20, 1996 March 20, 1996

Nairobi Treaty Nairobi Treaty SignatureSignature

Nice Agreement Nice Agreement In ForceIn Force March 20, 1996 March 20, 1996

Paris Convention Paris Convention In ForceIn Force August 1, 1964 August 1, 1964

PCT PCT In ForceIn Force March 10, 1994 March 10, 1994

Phonograms Phonograms Convention Convention

In ForceIn Force October 1, 1988 October 1, 1988

Strasbourg Strasbourg Agreement Agreement

In ForceIn Force December 20, 1996 December 20, 1996

TLTTLT In ForceIn Force April 16, 1998 April 16, 1998

UPOV Convention UPOV Convention In ForceIn Force January 30, 1998 January 30, 1998

Vienna Agreement Vienna Agreement In ForceIn Force March 20, 1996 March 20, 1996

WIPO Convention WIPO Convention In ForceIn Force August 16, 1988 August 16, 1988

JamaicaJamaica  

TREATYTREATY STATUSSTATUS ENTRYINTOFORCENTRYINTOFORCEE

Berne Convention Berne Convention In ForceIn Force January 1, 1994 January 1, 1994

Brussels Convention Brussels Convention In ForceIn Force January 12, 2000 January 12, 2000

Nairobi Treaty Nairobi Treaty In ForceIn Force March 17, 1984 March 17, 1984

Nice Agreement Nice Agreement In ForceIn Force February 7, 2006 February 7, 2006

Paris Convention Paris Convention In ForceIn Force December 24, December 24, 1999 1999

Phonograms Phonograms Convention Convention

In ForceIn Force January 11, 1994 January 11, 1994

Rome Convention Rome Convention In ForceIn Force January 27, 1994 January 27, 1994

Vienna Agreement Vienna Agreement In ForceIn Force February 7, 2006 February 7, 2006

WCTWCT In ForceIn Force June 12, 2002 June 12, 2002

WIPO Convention WIPO Convention In ForceIn Force August 16, 1988 August 16, 1988

WPPTWPPT In ForceIn Force June 12, 2002 June 12, 2002

IP Treaties Supported by IP Treaties Supported by UWI Campus CountriesUWI Campus Countries

TREATYTREATY STATUSSTATUS ENTRYINTOFORCEENTRYINTOFORCE

Berne Convention Berne Convention In ForceIn Force July 30, 1983 July 30, 1983

Nairobi Treaty Nairobi Treaty In ForceIn Force February 28, 1986 February 28, 1986

Nice Agreement Nice Agreement In ForceIn Force March 12, 1985 March 12, 1985

Paris Convention Paris Convention In ForceIn Force March 12, 1985 March 12, 1985

PCT PCT In ForceIn Force March 12, 1985 March 12, 1985

Phonograms Phonograms Convention Convention

In ForceIn Force July 29, 1983 July 29, 1983

Rome Agreement Rome Agreement In ForceIn Force September 18, 1983 September 18, 1983

WIPO Convention WIPO Convention In ForceIn Force October 5, 1979 October 5, 1979

BarbadosBarbados  

IP Treaties Supported by IP Treaties Supported by UWI Campus CountriesUWI Campus Countries

The EndThe End