understanding industrial property by ronald de four the university of the west indies st. augustine...

Understanding Understanding Industrial Industrial 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 document: Understanding Industrial Property on WIPO’s Web document: Understanding Industrial Property on WIPO’s Web

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ContentsContents Intellectual Property OverviewIntellectual Property Overview IP BranchesIP Branches CopyrightCopyright Industrial PropertyIndustrial Property Inventions & PatentsInventions & Patents PatentsPatents

Conditions of PatentabilityConditions of PatentabilityPatent TypesPatent TypesPatent RightsPatent RightsPatent ExplorationPatent ExplorationPatent LicensePatent License

Utility ModelsUtility ModelsUtility Model RequirementsUtility Model RequirementsDifferences Between UM & PatentsDifferences Between UM & Patents

ContentsContents Industrial DesignsIndustrial Designs TrademarksTrademarks

Other MarksOther MarksTrademark FunctionsTrademark FunctionsTrademark RightsTrademark RightsTrademark Protection TermTrademark Protection Term

Trade NamesTrade Names Geographical IndicationsGeographical Indications Protection Against Unfair CompetitionProtection Against Unfair Competition Role of WIPORole of WIPO WIPO-Administered Systems Classification SystemsClassification Systems IP Protection: Instruments & Agreements

Intellectual Property Intellectual Property OverviewOverview

IP refers to creations of the human mind.IP refers to creations of the human mind. IP rights protect interest of creators.IP rights protect interest of creators. WIPO Protected Subject Matters:WIPO Protected Subject Matters:

(a) literary, artistic & scientific works(a) literary, artistic & scientific works(b) performances of performing artists, (b) performances of performing artists,

phonograms, & broadcastsphonograms, & broadcasts(c) inventions in all fields of human (c) inventions in all fields of human endeavor,endeavor,(d) scientific discoveries,(d) scientific discoveries,(e) industrial designs,(e) industrial designs,(f) trademarks, service marks, commercial (f) trademarks, service marks, commercial

names & designations,names & designations,(g) protection against unfair competition.(g) protection against unfair competition.


IP relates to items of information or IP relates to items of information or knowledge which can be incorporated knowledge which can be incorporated in tangible objects at the same time in in tangible objects at the same time in an unlimited number of copies at an unlimited number of copies at different locations in the world.different locations in the world.

The property is not in those copies but The property is not in those copies but in the information of knowledge in the information of knowledge reflected in them.reflected in them.


Reasons for IP Law:Reasons for IP Law:

(a) to give statutory expression to the (a) to give statutory expression to the moral and moral and economic rights of economic rights of creators in their creations creators in their creations and to and to the right to the public in accessing the right to the public in accessing

those creations, andthose creations, and

(b) to promote creativity and the (b) to promote creativity and the dissemination dissemination and application of and application of its results, and to its results, and to encourage fair encourage fair trade, which would contribute trade, which would contribute to to economic and social development.economic and social development.

IP BranchesIP Branches

IP is divided into two branches:IP is divided into two branches:

(a) copyright and(a) copyright and

(b) industrial property.(b) industrial property.

CopyrightCopyright Copyright refers to artistic creations: poems, Copyright refers to artistic creations: poems,

novels, music, paintings and cinematographic novels, music, paintings and cinematographic works.works.

In most European non English speaking In most European non English speaking countries, copyright is known as author’s rights.countries, copyright is known as author’s rights.

The expression copyright refers to:- the making The expression copyright refers to:- the making of copies of the literary or artistic work may be of copies of the literary or artistic work may be made by the author or by his authorization.made by the author or by his authorization.

The expression author’s rights refers to:- the The expression author’s rights refers to:- the person who is the creator of the work and person who is the creator of the work and underlining the fact that the author has specific underlining the fact that the author has specific rights in his creation, such as the right to rights in his creation, such as the right to prevent a distorted reproduction. Other rights prevent a distorted reproduction. Other rights such as the right to ,make copies can be such as the right to ,make copies can be exercised by other persons on a license from the exercised by other persons on a license from the author.author.

Industrial PropertyIndustrial Property Industrial property relates to property in the Industrial property relates to property in the

industrial, commercial, agricultural and industrial, commercial, agricultural and extractive industries and to all manufactured and extractive industries and to all manufactured and natural products natural products

Industrial property covers a range of subject Industrial property covers a range of subject areas:-areas:-(a) inventions(a) inventions(b) industrial designs(b) industrial designs(c) trademarks and service marks(c) trademarks and service marks(d) layout-designs of integrated circuits(d) layout-designs of integrated circuits(e) commercial names and designations(e) commercial names and designations(f) geographical indicators(f) geographical indicators(g) protection against unfair competition(g) protection against unfair competition

Inventions & PatentsInventions & Patents

Inventions are new solutions to Inventions are new solutions to technical problems.technical problems.

Protection of invention under patent Protection of invention under patent law does not require that the law does not require that the invention by represented in a physical invention by represented in a physical embodiment.embodiment.

Patents or letters patent are the most Patents or letters patent are the most widespread means of protecting the widespread means of protecting the rights of inventors.rights of inventors.

Life of patent is Life of patent is 20 years.20 years.

PatentPatent Patents give exclusive rights to inventors.Patents give exclusive rights to inventors. In return, the inventor must disclose the In return, the inventor must disclose the

patented document to the public so that others patented document to the public so that others can gain the new knowledge and further can gain the new knowledge and further develop the technology.develop the technology.

To obtain a patent, the inventor must submit an To obtain a patent, the inventor must submit an application to the national or regional IP Office.application to the national or regional IP Office.

The requirements of the application are:The requirements of the application are:(a) invention must be described in detail(a) invention must be described in detail(b) invention must be compared with existing (b) invention must be compared with existing

technology to demonstrate its newnesstechnology to demonstrate its newness(c) a set of claims must be drafted for the (c) a set of claims must be drafted for the invention.invention.

Patent: Conditions of Patent: Conditions of PatentabilityPatentability

Novelty:-Novelty:- it must show some new characteristic that it must show some new characteristic that is not known in the prior art in its technical field.is not known in the prior art in its technical field.

Inventive Step (non-obviousness):-Inventive Step (non-obviousness):- it must show it must show an inventive step that could not be deduced by a an inventive step that could not be deduced by a person with average knowledge of the technical field.person with average knowledge of the technical field.

Industrial Applicability (utility):-Industrial Applicability (utility):- the invention the invention must be of practical use or capable of some kind of must be of practical use or capable of some kind of industrial application.industrial application.

Patentable Subject Matter:-Patentable Subject Matter:- cannot be scientific cannot be scientific theories, mathematical methods, plant or animal theories, mathematical methods, plant or animal varieties, discovery of natural substances, methods varieties, discovery of natural substances, methods for medical treatment, and must not threaten public for medical treatment, and must not threaten public order, good morals or public health. order, good morals or public health.

Patent TypesPatent Types

Inventions can be divided into two Inventions can be divided into two categories:categories:

(a) (a) product patentproduct patent and and

(b) (b) process patentprocess patent.. Patentee:-Patentee:- person to whom a patent person to whom a patent

is granted. Also called patent owner is granted. Also called patent owner or patent holder.or patent holder.

Patent life is Patent life is 20 years20 years..

Patent RightsPatent Rights Patent owner exclusive rights consists of:Patent owner exclusive rights consists of:

(a) (a) in the case of a product patent,in the case of a product patent, the the right to prevent third parties without right to prevent third parties without

ownership consent from making, ownership consent from making, using, using, offering for sale, selling or offering for sale, selling or importing for importing for these purposes the these purposes the productproduct(b) (b) in the case of process patent,in the case of process patent, the the right right to prevent third parties from to prevent third parties from using, offering using, offering for sale, selling or for sale, selling or importing for these importing for these purposes the purposes the products which were obtained products which were obtained directly by directly by that process.that process.

Patent ExplorationPatent Exploration The following must be noted concerning The following must be noted concerning exploitation:exploitation:

(a) the patentee is not given the statutory right to exploit (a) the patentee is not given the statutory right to exploit his own his own

invention,invention,(b) the patentee is given the statutory right to prevent (b) the patentee is given the statutory right to prevent others others

from commercially exploiting his invention,from commercially exploiting his invention,(c) the patentee may grant a license to other parties to use (c) the patentee may grant a license to other parties to use the the

invention on mutually agreed terms,invention on mutually agreed terms,(d) the patentee may sell his rights to the invention to (d) the patentee may sell his rights to the invention to someone someone

else who will become the new owner else who will become the new owner (e) a patented product may be exploited without the (e) a patented product may be exploited without the patentee’s patentee’s

authorization if it is for the public interest and it may be authorization if it is for the public interest and it may be done done

on behalf of the government or by a compulsory license.on behalf of the government or by a compulsory license.

Patent LicensePatent License

Compulsory License:-Compulsory License:- An An authorization given by government authorization given by government to exploit an invention.to exploit an invention.

Utility ModelsUtility Models

Also used to protect inventions.Also used to protect inventions. Other similar protection mechanisms Other similar protection mechanisms

are are innovative patentsinnovative patents and and utility utility innovationsinnovations..

Utility models are applied for technically Utility models are applied for technically less complex inventions or for inventions less complex inventions or for inventions that have a short commercial life.that have a short commercial life.

Procedure for obtaining protection is Procedure for obtaining protection is shorter and simpler than that for a shorter and simpler than that for a patent.patent.

Utility Model: Utility Model: RequirementsRequirements

Requirements:- Requirements:-

(a) Less stringent that those for patents.(a) Less stringent that those for patents.

(b) novelty must be met(b) novelty must be met

(c) inventive step may be much less or (c) inventive step may be much less or absentabsent

(d) UM sought for innovations of an (d) UM sought for innovations of an incremental nature which may not meet incremental nature which may not meet the the patentability criteria.patentability criteria.

Differences Between UM & Differences Between UM & PatentsPatents

Term of ProtectionTerm of Protection::

(a) usually shorter than that of a (a) usually shorter than that of a patentpatent

(b) usually between 7 and 10 years.(b) usually between 7 and 10 years.

FeesFees::

- generally lower than those for - generally lower than those for patents.patents.

Industrial DesignsIndustrial Designs

An industrial design is the ornamental or An industrial design is the ornamental or aesthetic aspect of a useful article.aesthetic aspect of a useful article.

Ornamental & aesthetic aspect may depend Ornamental & aesthetic aspect may depend on shape, pattern or color of article.on shape, pattern or color of article.

The design must satisfy the following The design must satisfy the following criteria:criteria:(a) have visual appeal,(a) have visual appeal,(b) must perform its intended function,(b) must perform its intended function,(c) must be able to be reproduced by (c) must be able to be reproduced by industrial means.industrial means.(d) must be new or original.(d) must be new or original.


Rights granted by industrial design refers to Rights granted by industrial design refers to right to protect the original, ornamental and right to protect the original, ornamental and non-functional features of a product that non-functional features of a product that result from design activity. result from design activity.

ID protection serves as an incentive to invest ID protection serves as an incentive to invest resources in design activities.resources in design activities.

ID protection stimulate the design element of ID protection stimulate the design element of production.production.

The condition of utility is a notable difference The condition of utility is a notable difference between industrial design protection and between industrial design protection and copyright.copyright.


Designs that are dictated solely by the Designs that are dictated solely by the article’s function arte excluded from article’s function arte excluded from protection.protection.

Industrial Design rights:- exclusive right to Industrial Design rights:- exclusive right to make, import, sell, hire or offer for sale make, import, sell, hire or offer for sale articles to which the design is applied.articles to which the design is applied.

Term of Protection:- maximum term Term of Protection:- maximum term 10 to 10 to 25 years25 years often divided into renewable often divided into renewable terms. terms.

TrademarksTrademarks A trademark is a sign or combination of signs A trademark is a sign or combination of signs

which distinguishes the goods or services of one which distinguishes the goods or services of one enterprise from those of another.enterprise from those of another.

Signs may use:- words, letters, numerals, Signs may use:- words, letters, numerals, pictures, shapes, colors or any combination of pictures, shapes, colors or any combination of above.above.

Unconventional Signs:- three-dimensional signs, Unconventional Signs:- three-dimensional signs, audible signs and olfactory signs are also audible signs and olfactory signs are also registered.registered.

Trademark use:- placed on goods, container or Trademark use:- placed on goods, container or wrapper for goods or used in connection with wrapper for goods or used in connection with the marketing of goods.the marketing of goods.

Trademarks:- Other Trademarks:- Other MarksMarks

Collective Marks:-Collective Marks:- owned by an owned by an association and used by members to association and used by members to identify themselves.identify themselves.

Certification Marks:-Certification Marks:- given for given for compliance with defined standards compliance with defined standards but not confined to any membership.but not confined to any membership.

Service Marks:-Service Marks:- used in connection used in connection with services.with services.

Trademark FunctionsTrademark Functions Functions of Trademarks:-Functions of Trademarks:-

(1) distinguishing of marked goods and services,(1) distinguishing of marked goods and services,

(2) reveal commercial origin of goods and (2) reveal commercial origin of goods and services,services,

(3) to refer to a particular quality of the product (3) to refer to a particular quality of the product or or

service, andservice, and

(4) to promote the marketing and sale of (4) to promote the marketing and sale of products and products and

the marketing and rendering of services – the marketing and rendering of services – appeal appeal

function.function.

Trademark: RightsTrademark: Rights

Exclusive right is granted to an owner Exclusive right is granted to an owner of a registered trademark. It includes:of a registered trademark. It includes:

(1) right to use the mark,(1) right to use the mark,

(2) right to prevent unauthorized (2) right to prevent unauthorized third parties third parties from using the mark,from using the mark,

(3) the right to prevent unauthorized (3) the right to prevent unauthorized third third parties from using a parties from using a confusingly similar confusingly similar mark.mark.

Trademark: Protection Trademark: Protection TermTerm

Term of protection:- Term of protection:- indefiniteindefinite, , renewed on payment of fees.renewed on payment of fees.

Trade NamesTrade Names A commercial or trade name is the name A commercial or trade name is the name

or designation that identifies an or designation that identifies an enterprise.enterprise.

In most countries, trade names are In most countries, trade names are registered with a government authority.registered with a government authority.

However, under Article 8 of Paris However, under Article 8 of Paris convention:- a trade name must be convention:- a trade name must be protected without the obligation of filing protected without the obligation of filing or registration.or registration.

Geographical IndicationsGeographical Indications A sign used on goods that have a specific A sign used on goods that have a specific

geographical origin and possess qualities or a geographical origin and possess qualities or a reputation that are due to that place of origin.reputation that are due to that place of origin.

Appellation of Origin:- special kind of Appellation of Origin:- special kind of geographical indication, used on products that geographical indication, used on products that have a specific quality that is exclusively or have a specific quality that is exclusively or essentially due to the geographical essentially due to the geographical environment in which the products are environment in which the products are produced.produced.

Appellations of origin are protected by the Appellations of origin are protected by the Lisbon Agreement.Lisbon Agreement.

Protection Against Unfair Protection Against Unfair CompetitionCompetition

This is directed against acts of competition that are This is directed against acts of competition that are contrary to honest practices in industry and commerce.contrary to honest practices in industry and commerce.

Acts of unfair competitionActs of unfair competition (P.C.):- (P.C.):-

(1) acts creating confusion with the establishment, the (1) acts creating confusion with the establishment, the goods or goods or

the industrial or commercial activities of a competitor,the industrial or commercial activities of a competitor,

(2) false allegations during trading to discredit the (2) false allegations during trading to discredit the establishment establishment

the goods or the industrial or commercial activities of a the goods or the industrial or commercial activities of a

competitor,competitor,

(3) indications and allegations which when used during (3) indications and allegations which when used during trading trading

are liable to mislead the public as to the characteristics are liable to mislead the public as to the characteristics of of

certain goods.certain goods.

Role of WIPORole of WIPO WIPO is dedicated to ensuring:WIPO is dedicated to ensuring:

(a) rights of creators and owners of IP are (a) rights of creators and owners of IP are protected worldwide,protected worldwide,

(b) inventors and authors are recognized and (b) inventors and authors are recognized and rewarded rewarded

for their ingenuity,for their ingenuity, To accomplish the above, WIPO:To accomplish the above, WIPO:

(a) create and harmonize rules and practices to (a) create and harmonize rules and practices to protect IP rights,protect IP rights,

(b) provides international registration systems (b) provides international registration systems for for

patents, trademarks, appellations of origin patents, trademarks, appellations of origin and and

industrial designs.industrial designs.

WIPO-Administered Systems

The WIPO-administered systems of international protection include four different mechanisms of protection for specific industrial property rights:(1) The Patent Cooperation Treaty (PCT) for filing

patent applications in multiple countries.(2) The Madrid System for the International

Registration of Marks for trade and service marks.(3) The Hague System for the International Deposit

for Industrial Designs.(4) The Lisbon System for the International

Registration of Appellations of Origin.

Classification SystemsClassification Systems Four WIPO treaties have created classification

systems, which organize information on different branches of industrial property into indexed, manageable structures for easy retrieval:(1) Strasbourg Agreement Concerning the International Patent

Classification.(2) Nice Agreement Concerning the International

Classification of Goods and Services for the Purposes of the

Registration of Marks.(3) Vienna Agreement Establishing an International

Classification of the Figurative Elements of Marks.(4) Locarno Agreement Establishing an International

Classification for Industrial Designs.

IP Protection: Instruments & Agreements

Instruments of Instruments of ProtectionProtection

What they ProtectWhat they Protect Relevant Relevant International International AgreementAgreement

Patents andutility models

InventionsInventions Paris Convention - Industrial Property (1883)Patent Cooperation Treaty (1970)Budapest Treaty - Deposit of Microorganisms for the Purposes of Patent Procedure (1977)Strasbourg Agreement – International Patent Classification (1971)Patent Law Treaty (2000)


What they What they ProtectProtect

Relevant Relevant International International AgreementAgreement

Industrial Design Independently created industrial designs that are new or original

Hague Agreement -International Registration of Industrial Designs (1934)

Locarno Agreement International Classification for Industrial Designs (1968)






Trademarks,CertificationMarks andCollective Marks

Distinguishingsigns and symbols

Madrid Agreement - Int. Registration of Marks (1891)Protocol Relating to the Madrid Agreement - Int. Registration of Marks (1989)Nice Agreement - Int. Classification of Goods & Services for the Registration of Marks (1957)



What they ProtectWhat they Protect Relevant Relevant International International AgreementAgreement

Trademarks,CertificationMarks andCollective Marks

Distinguishingsigns and symbols

Madrid Agreement – Repression of False or Deceptive Indications of Source on Goods (1891)Trademark Law Treaty (1994)





Geographical indications and appellations of origin

Integrated circuits

Protection against unfaircompetition

Geographical name of acountry, region or locality

Lay-out designs

Honest practices

Lisbon Agreement - Protection of Appellations of Origin and their Int. Registration (1958)

Washington Treaty – IP in Respect of Integrated Circuits (1989)

Paris Convention - Protection of Industrial Property (1883)

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understanding industrial property by ronald de four the university of the west indies st. augustine...

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