PROTECTING AND REGISTERING YOUR INTELLECTUAL PROPERTY

(MANAGING YOUR IP IN THE RESEARCH PROCESS)

BYSARAH NORKOR ANKU (MRS)

LEGAL PRACTITIONERREGISTRAR GENERAL’S DEPARTMENT

PROTECTING AND REGISTERING YOUR INTELLECTUAL PROPERTY

• Two main areas of IP• Industrial Property and Copyrights & Related

Rights• Main difference between the two areas of IP:

registration• Industrial Property Laws are administered by

the Registrar General’s Department• Copyright and related rights are administered

by the Copyright Office

IP AND THE RESEARCHER(THE STORY OF TSRUKPE TOTA)

• People in Tsrukpe Tota use certain herbs to instantly cure malaria

• Researcher seeks to find a solution to malaria problem• With prior informed consent and a benefit sharing

agreement with the Tsrukpe Tota community the researcher receives information and samples of the miracle plant

• Researcher isolates active ingredient or develops a method of extracting the active ingredients: Confidentiality / trade secret and Patent

STORY CONT’

• Researcher writes a paper or publishes a book on his findings: copyright

• Researcher sets up a spin-off company to produce the drug and names the drug: trademark

• Commissions an artist to design a container for the drug: industrial design

• Commissions an artist to design labels and leaflets for the drug: copyright and trademarks

• Researcher decides to license or assign his rights: IP Commercialization

STORY CONT’

• Researcher conducts further research to develop high yielding and pest resistant variety of the miracle plant: plant variety protection

• If the plant is trans-boundary but the plants grown in Tsrukpe Tota have certain unique characteristics: Geographical Indications as a marketing tool

BEGINNING RESEARCH

• Identify a problem in any field of technology and propose a solution

• Seek funding (what are the IP conditions attached to the funding)

• Who will participate in finding the solution to the problem and what are their IP rights?

• Collaboration; student/lecturer; lecturer/lecturer researcher/industry

• KNUST IP Policy: who owns the IP Rights and how are benefits shared?

Beginning Research Cont’

• Conduct searches using free patent search engines

• Google patent search• Espacenet• Patentscope

PROTECTION – THREE STAGES

• Beginning: define boundaries / ownership• Beginning throughout process: confidentiality /

trade secret• Throughout process to end: choosing other IP tools • Patents / Utility Model Certificate• Trade marks / Service marks / Collective marks• Industrial Designs• Copyright• Geographical Indications

PATENTS

• Titles granted by Governments/States for the protection of inventions

• An invention is a solution to a problem in any field of technology

• Five criteria for protection:• New (not anticipated by prior art)• Inventive Step (non-obvious to a person skilled in the art)• Industrially applicable (useful)• Disclosure• Not excluded from patentability

PATENT PROSECTION

• Patent drafting: Background; description; claims; drawings (where applicable); abstract

• Claims: defines the scope of protection• Remember a patent document is a legal

document not a scientific paper• Three routes of protection• 1. National route • 2. Regional route (ARIPO)• 3. International route (PCT / Paris Convention)

NATIONAL ROUTE

• Fill and submit patent request form (Form No.2) together with patent application documents at the Registrar General’s Department

• Registrar of patents conducts formality and substantive examinations

• NB: In Ghana substantive examinations are outsourced• Successful applications are published and granted• Duration of protection is 20years from date of application• Annuities must be paid yearly to maintain application and

grant

REGIONAL ROUTE (ARIPO)

• Begin with National application and request for an ARIPO Patent, designating ARIPO Member States

• Apply directly to ARIPO• ARIPO conducts both formality and substantive

examinations• Designated States conducts further substantive

examinations to ensure conformity with national laws

• ARIPO publishes and grants patents for and on behalf of designated Member States

International Route

• Paris Convention:• Applicants can apply directly to Member

States of the Paris Convention within one year after first application (requires legal representation in all the States; fees paid in local currencies; patent documents in foreign language).

INTERNATIONAL ROUTE CONT’

• Patent Cooperation Treaty (PCT):• National application followed by PCT application within

one year• Apply directly to International Bureau of WIPO• Thirty (30) months period to apply to all designated

states of interest• One application; one PCT recognized language; search

and preliminary examination report and written opinion • Patents are granted by individual designated Member

States

UTILITY MODEL CERTIFICATE

• UM prosecution is similar to patent prosecution

• Criteria for protection is less stringent, involving two main steps, namely; novelty and industrial applicability

• Duration of protection in Ghana is 7years

COPYRIGHT

• Automatic protection so long as it is original• Registration provides prima facie evidence of

ownership• To register at the copyright office, submit a filled

application form, three copies of the work and pay prescribed registration fee

• Duration of protection: life time of the author plus seventy (70) years after his death

• Author can assign economic rights not moral rights

TRADEMARKS

• Trademarks distinguishes the goods or services of one enterprise from the goods and services of other enterprises

• Interactive mark; logotype; combination of interactive mark and logotype

• Three routes of protection:• National (Registrar General’s Department)• Regional (ARIPO through the Banjul Protocol, however, this

route is currently not available to Ghanaians)• International (International Bureau of WIPO through the

Madrid System)

TRADEMARKS REGISTRATIONNational Route

• Ensure mark conforms with section 5 of the Trademarks Act (Act 664)

• Conduct a search at the trademark registry: US$60• Submit application form together with 2 copies of

trademarks: US$150• Application processing may take a year• Publication and Opposition period• Certificate: US$100• Protection is in perpetuity subject to renewal every

10years

TRADEMARK REGISTRATIONInternational Route

• National application followed by Madrid application within 6 months

• Direct application to International Bureau designating Member States of Interest

• Member States approves and registers trademarks

INDUSTRIAL DESIGNS REGISTRATION

• Three routes of protection:• National (Registrar General’s Department)• Regional (ARIPO)• International (International Bureau of WIPO)• Currently the only route available to

Ghanaians is the Regional route

INDUSTRIAL DESIGN REGISTRATION CONT’

• Application may be submitted to the Registrar General’s Department or directly to ARIPO

• Fill ARIPO Form 28, attach four copies of designs (with description where necessary), a statement of authorship, application fee of US$50 and US$10 for each Designated State

• You must designate at least 1 Member State• Application process may take a year• Duration of protection in Ghana is 5years,

renewable two consecutive five years period

IP Management Services

• Value assessment / IP audit• Cost management• Priority rights• Exhibitions• Protection routes

Value assessment / IP auditWhy IPR Audit

• The due diligence process associated with mergers & acquisitions, joint ventures, portfolio assessments, spin-offs and strategic alliances now include an increased level of scrutiny of IPR portfolio. (value of IPR)

• Identifying the origins and value of intellectual property and assuring compliance with obligations relating to licensed assets has become a due diligence checklist item. (Chain of ownership of patents, trademarks, copyrights)

Value assessment / IP auditWhy IPR Audit Cont’

• IP audit is a systematic review of the IP owned, used or acquired by a business/institution so as to assess and manage risk, remedy problems and implement best practices in IP asset management.

• It involves undertaking a comprehensive review of an institution’s IP assets, related agreements, relevant policies and compliance procedures

Value assessment / IP audit Why IPR Audit Cont’

How the IP assets are being used or not used. Whether the IP assets used by it are owned by the institution or by others.

Whether these IP assets are infringing the rights of others or others are infringing on these rights, and determine, in the light of all this information.

What actions are required to be taken with respect to each IP asset, or a portfolio of such assets, to serve the relevant business goals of the institution/company.

Cost management

• Cost of maintenance, enforcement, exploitation of IP Rights; namely

• Patents• Trademarks• Copyright• Industrial Designs

Priority rights & Exhibitions

• Patents: 1year• Trademarks: 6months• Industrial Designs: 6months

COMMERCIALIZATION

• Donation• Licensing• Assignment• All licenses and assignments must be

registered at the Registrar General’s Department (notice to third parties)

• Spin-Off companies• Role of Technology Transfer Units