IPR University Center

INTELLECTUAL PROPERTY RIGHTS

Development and Conventions- Foundation of IP Protection

31.05.10 3

Pre-modern IPR law

– Dates roughly from 1600-1890– Main problems:

intangible property as a legal categorycategories and structures of IP unknown or emerging

– Main categories:manual labour - mental labour

– Action form: specific and reactivenot abstract and general as the modern law

31.05.10 4

The emerging of modern IP-law

– Background: French revolution and “droit d'auteur” as a fundamental right (1793)

– No cross border protection → piracy of British and French literature overseas

– Bilateral treaties in the 1840s and 1850sConceptual harmonisation and division

copyright protects art and literature; trade and commerce protected by patents, trade marks and design rights

31.05.10 5

Modern IP-law

– The bilateral Conventions were replaced by the “First Generation” Conventions

1. The Paris Convention (1883) for patents, utility models, industrial designs, trade marks, trade names, indications of source or appellations of origin and the repression of unfair competition

2. The Berne Convention (1886) for copyright

31.05.10 6

Central Principles of “First Generation” Conventions

– National (regional) protection– The principle of national treatment– Priority date of applications for registration

made within a certain time limit from the first application (6-12 months)

– The principle of minimum protection for right owners

31.05.10 7

”First + Generation” Conventions

Neighbouring rightsRome Convention 1961

• performers, producers of phonograms and broadcasting organisations

Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms 1971 Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite 1974

31.05.10 8

Other Conventions

– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957)

– Madrid Agreement Concerning the International Registration of Marks (1891)

– Madrid Protocol (1989)– Patent Cooperation Treaty (PCT) (1970)

31.05.10 9

TRIPS

– Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)

– Background: Globalisation– New relationship between trade and IPR– Focus on enforcement

31.05.10 10

TRIPS

– Minimum requirements (Bern, Paris, etc.)– Most Favoured Nation-principle (MFN)

“...with regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the national of all other Members.”

31.05.10 11

Development in the EU

From National to Regional Protection– Creating an Internal Market and promoting

harmonization of IPR-systems in the Member States

– Creating Community-Wide IP RightsTrademark, Design and Plant Variety Right

– Creating common rules on procedures, enforcement and sanctions

Directive on the enforcement of intellectual property rights 2004/48/EC

31.05.10 12

Current IPR-trends

– Broader protection– Stronger protection– Longer protection

But...– A possible turning point at hand: Critical

voices in the academia

Intellectual Property Rights- Means of protection

Intellectual Property Rights

– Patent– Utility model– Design– Copyright – Trademark– Firm name– Unfair competition

– Trade secrets– Geographical

indications– Layout-designs

(topographies) of integrated circuits

– Plant variety rights

31.05.10 14

Common features

– Right of refusalNot a right to utilise, but a right to refuse others to utilise

– National / regional No international legislation

– Exhaustion Once products have been circulated, those products are permanently on the move

31.05.10 15

Common features

– International conventionsIndustrial propertyCopyrightProcedures

– EU legislationFree movement of goods, free competitionHarmonisationCommunity protection systems

31.05.10 16

Common features

– The original right holder is always a personEmployees

– Companies only have rights which have been transferred to them

Agreement!

31.05.10 17

Patent

– Protection for inventions (20 years)– Invention

Solution to technical problemNo definition in the Patent Act

– Patentable invention Novelty, inventive step, capable of industrial application

– Alternative for patenting Trade secret, publication

31.05.10 18

Design

– Design the appearance of the whole or part of a productalso graphical symbol (a logo)

– Requirements for protectionNew and individual

– Valid 5 + 5 + 5 + 5 + 5

31.05.10 19

Design

– National registration An individual registration in all countries where protection is needed

– Registered Community DesignCovers the whole EUOne registration (OHIM, Alicante)

– Unregistered Community Design (EU)No registration Valid for 3 years

31.05.10 20

31.05.10 21

Copyright

– Protects creative works– Is granted automatically

no form or registration is required– Protects expression, not ideas – Includes economic rights and moral rights

31.05.10 22

Economic rights

– Reproduction / copyingall formsalterations

– Making available to the publicCommunication to the public (by wire or wireless means; also on demand)Performance (audience present)Distribution (sale, rental, lending)Exhibition (no technical device)

31.05.10 23

Reproduction

– Exclusive right to authorise or prohibitDirect or indirectTemporary or permanentBy any meansIn any formIn whole or in part

31.05.10 24

Distribution

– Exclusive right to authorise or prohibit Any formBy sale or otherwise

– Exhaustion Concerns legally distributed copiesFirst sale or other transfer of ownership of a copy Transfer in the Community

31.05.10 25

Moral rights

– Paternityright to be named as author

– Honour and reputation the way and surroundings where works are delivered

31.05.10 26

Exceptions

– Exclusive rights– Civil law

exceptions written into law– Common law

fair use interpreted by courts

31.05.10 27

Quotation

– The right to quote– Work has been lawfully made available to

the public – Quotation is compatible with fair practice

Stating the source – Extent of a quotation does not exceed what

is justified by the purposeQuotation is meant to support author’s own work

31.05.10 28

Neigbouring rights

– Performers– Producers of phonograms– Producers of audiovisual works– Signal – Photograph– Catalogue– Database

31.05.10 29

Time of protection

– Works -> 70 years after the death of the author

– Neigbouring rights -> 50 years after publication (the starting point varies)

– Database -> 15 years of making or publication

31.05.10 30

Trademark

– Trademark = a name to distinguish one’s products and/or services from another’s products and/or services

– Any sign capable of being represented graphically

words, designs, letters, numerals, the shape of goods or packaging

– Everyone is entitled to use his/her own name as a trademark

31.05.10 31

Trademark

– Exclusive right to trademark – The trademark holder is entitled to prevent

any use, in the course of trade, which does not have the trademark holder's consent

Any identical sign in relation to goods or services identical to those for which the trademark is registered Any sign if a likelihood of association between the sign and the trademark is possible

31.05.10 32

Trademark

– Trademarks are registered For named goods and services In a certain class

– Identical trademarks are possible for different goods and services in different classes

Trademark

– Valid for 10 years, possibility of renewal – Registered or established – National registration

Valid in the country where registration is done – Community trademark

An EU wide registrationOne application (OHIM, Alicante)

31.05.10 33

31.05.10 34

Trademark

– Not registrable marks (not an exclusive list): Marks which are devoid of any distinctive characterMarks which describe the nature of the product or service Marks which consist of customary signs Marks which are contrary to public policy or to accepted principles of morality

Trade name / Firm name

– A name a trader carries on a business– (a trader = natural or legal person doing

commercial business on a professional basis)– Registration or establishment

Registration in connection to founding a company

– Distinguishing, not misleading

31.05.10 35

31.05.10 36

Unfair competition

– Any practice which is contrary to fair trading practice or otherwise unfair towards others is prohibited

– Similar laws or regulations in all EU member states

Finnish Unfair Trade Practices Act – Protection against imitation

Intellectual property rights Imitation is prohibited if there is a risk of confusion about the commercial origin of the goods or services

IPR Strategy

31.05.10 38

IPR Strategy

– Where the company needs IP rights?– Administration of the rights

Who’s responsible?Written manual?

– Transfer of the rightsEmploymentAgreements

IPR Strategy

Agressive strategy– Protection of

company’s own products is vital

– Activity to protect is high

– Enforcement is efficient– Quick reaction to

infringements

Passive strategy– Protection not

important– No active protection – No systematic

enforcement– Protective, not

aggressive

31.05.10 39

27.2.2007 40

Basic principle of protection

Daily consumer goods

All means of protection in use

Minimum protection

Core parts

Importance of protection Means of protection

Timeline for companies

– Trade nameDecision to start a company

– Patent / utility model / designBefore innovation goes to market

– TrademarkBefore product goes to market or when marketing begins

– CopyrightAll the time

31.05.10 41

31.05.10 42

Contact Information

IPR University CenterPO Box 4 (Yliopistonkatu 3)

FIN-00014 University of Helsinki

tel. +358 (0)9 191 22 766fax +358 (0)9 191 22 762

info@iprinfo.comwww.iprinfo.com