Patents

A patent is a legal certificate that gives an inventor exclusive right to prevent others from producing, using, selling, or importing an invention for a fixed period (usually 20 years). Legal action can be taken against those who infringe the patent by copying the invention or selling it without permission from the patent owner. Patents can be bought, sold, hired, or licensed. A patent application must satisfy the patent examiners that the invention is:

• useful (i.e., have industrial application): ideas, theories, and scientific formulas are not sufficiently useful or industrially applicable to be patentable;
  
  
• novel: the invention should be recent and original, but perhaps most importantly it should not already be known (in the public domain). In most countries (except the USA) the patent is awarded to the first person to apply, regardless of whether this person was the first to invent;
  
  
• non-obvious or must involve an inventive step: not obvious to a person skilled in the technology and more inventive than mere discovery of what already exists in nature (such as a gene with no known function). The invention must be disclosed to the patent examiners in a detailed way that would enable a skilled technician to make and use it. In the case of an invented process, the patent can cover a non-obvious way of making something already known (i.e., previously invented or discovered). In the case of an invented product, the non-obvious/inventive step requirement does not require it to be made by a novel method.

In order to clarify the legal scope of the patent, the inventor provides a list of claims, which the examiner will accept, modify or reject as invalid. These claims may cover any of the following:

• A product: such a claim will cover any use of the product including those as yet undiscovered. For example, a new drug patented as a cure for cancer may later be found to cure heart disease; the patent will cover this new use.
  
  
• A use: such a claim will cover a specific use only. Thus, it would cover the above drug only as a cure for cancer and not for any uses that are found later. In some countries new uses of existing inventions are patentable. If the patent on the existing invention is still valid, the owner of the newer patent will have to acquire a license from the owner of the earlier patent in order to exploit his or her invention.
  
  
• A process: such a claim will protect the process when used with any product, but would not protect a product that could be manufactured by that process but was not.
  
  
• A product-by-a-process: such a claim would cover only those products made by the process described in the application. Therefore, it would cover the drug, but only when made by a specified process.

It should be noted that a patent may include claims of two or more of these categories. But whether the patent covers a product, a process, a use or all of these, the invention normally must have a physical embodiment or its application must be capable of leading to one.

Not all inventions that meet the above conditions can be protected by patent. In many countries, computer programs and business methods cannot be patented at all. And in some countries certain inventions may be unpatentable because they are deemed to be immoral or contrary to the public interest. In part the differences in national patent laws are due to the fact that each country prefers to define what inventions may be patented in accordance with its perceived national interest. But there is a trend towards standardization of national patents laws, and many common exceptions to patentability are likely to disappear in the next few years.

It can easily take over 2 years to obtain a patent from the day that an application is filed at the national patent office (the priority date), and it sometimes takes much longer. The patent office carries out a search to ensure that the invention really is new and non-obvious. When it is satisfied that this is so, the application is published - in those countries where publication is done before issuing the patent - and an in-depth examination follows. In the case of an invention derived from a natural product, the examination might include the obligation to deposit a specimen. There is no such thing as a world patent so it is usually necessary to file a different application in each country. However, a number of international agreements (such as the Patent Cooperation Treaty) simplify this process by requiring a single application to be prepared. In the case of the PCT, this application is then submitted to a receiving office from where it is distributed to national patent offices designated by the applicant. In Europe, an institution known as the European Patent Office carries out the examination on behalf of countries that are signatories to the European Patent Convention.

Many countries also allow for another kind of patent called a utility model or petty patent. These differ from conventional patents in several ways:

• the inventive step requirement is far less stringent and may even be discarded;
  
  
• the period of protection is shorter;
  
  
• the patent examination is either deferred or replaced by a registration system.

Utility models vary more than other IPR types because there are no international agreements or conventions to standardize them.

Copyright and related rights
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Copyright gives authors legal protection for the following types of work:

• literary works (e.g., books, film scripts, and even private correspondence);
  
  
• dramatic and musical works (e.g., plays and music compositions recorded in the form of musical notation);
  
  
• artistic works and works of applied art (e.g., paintings, ceramics, carvings);
  
  
• maps and technical drawings;
  
  
• photographic works;
  
  
• motion pictures and sound recordings (e.g., movies, documentaries, and interviews);
  
  
• computer programs and databases.

Copyright law is intended to protect authors by granting them exclusive rights to sell copies of their work in whatever tangible form (printed publication, sound recording, film, broadcast, etc.) is being used to convey their creative expressions to the public. Although registration is not usually necessary, it is advisable for authors to place their name on the work. However, legal protection covers the “expression” of the ideas contained, not the ideas themselves, which are not actually required to be novel at all. Copyright gives owners exclusive rights, usually for the life of the author plus at least 50 years. In the case of sound recordings, copyright is usually conferred for 50 years and is available to the person or company responsible for making the recording. Copyright owners have the legal right to stop others from:

• copying or reproducing the work;
  
  
• performing the work in public;
  
  
• making a sound recording or motion picture of the work; and
  
  
• broadcasting, translating, or adapting the work.

Others who wish to exploit copyright material in these ways must usually seek the permission of the copyright owner or an organization that represents copyright owners in a particular industry. Permission is likely to require payment of royalties. In some countries, copyright owners may have the legal rights to be identified on their work and to object to distortions of the work. These are known as moral rights and remain with the author even if the author transfers the copyright to somebody else, although in some jurisdictions these rights may be waived by agreement of the author.

The concept of neighbouring rights arose in response to technological developments which allowed a much broader dissemination of artistic works, and made manifest the failure of copyright law to protect the rights of performers, recorders, and other disseminators. These groups were responsible for the enormous increase in public exposure, but only the copyright owners of the works were able to benefit from this.

There are three kinds of “neighbouring right”.  These are:

• the rights of performing artists in their performances;
  
  
• the rights of producers of phonograms in their phonograms; and
  
  
• the rights of broadcasting organizations in their radio and television programmes.

In 1961, the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (the Rome Convention) provided so-called neighbouring rights protection from the following acts carried out without the performer’s prior consent:

• broadcasting or communication to the public of a “live” performance;
  
  
• recording an unfixed performance;
  
  
• reproducing a fixation of the performance, provided that the original fixation was made without the consent of the performer or the reproduction is made for purposes not permitted by the convention or the performer.

If a phonogram is made for commercial purposes and communicated publicly, the user must pay an “equitable remuneration” to the performers or to the producer of the phonogram, or to both. The minimum term of protection is 20 years from the performance, fixation, or broadcast.

The 1996 WIPO Performances and Phonograms Treaty. Article 2 defines “performers” as

actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore.

The Treaty provides two main categories of right: moral rights and economic rights.  The moral rights of performers regarding his or her live aural performances or performances recorded in phonograms persist after the transfer of the economic rights, and include: 

• the right to claim to be identified as the performer of his performances, except where omission is dictated by the manner of the use of the performance, and
  
  
• to object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation.

The economic rights of performers in their unfixed performances consist of the exclusive right to authorise:

• the broadcasting and communication to the public of their unfixed performances except where the performance is already a broadcast performance;  and
  
  
• the fixation of their unfixed performances.
  
  
• the direct or indirect reproduction of their performances fixed in phonograms, in any manner or form.
  
  
• the making available to the public of the original and copies of their performances fixed in phonograms through sale or other transfer of ownership.
  
  
• the commercial rental to the public of the original and copies of their performances fixed in phonograms
  
  
• the making available to the public of their performances fixed in phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.

Trademarks
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A trademark is a marketing tool used to support a company’s claim that its products or services are authentic or distinctive compared with similar products or services from competitors. TRIPS defines a trademark as “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings”. It usually consists of a distinctive design, word, or series of words placed on the product label and perhaps displayed in advertisements. For example, Coca Cola is a trademark that can only be used on goods manufactured by the Coca Cola Company. Registered trademarks are usually renewable indefinitely, though in most jurisdictions this is subject to continued use. The trademark owner has the exclusive right to prevent third parties from using identical or similar marks in the sale of identical or similar goods or services where doing so is likely to cause confusion.

Industrial designs
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Industrial designs are defined by the Paris Convention for the Protection of Industrial Property as “the ornamental or aesthetic aspect of a useful article”. They may consist of the shape, pattern, or colour of the article. For example, the pattern on an article of clothing or pottery could be protected. The designs must be original and reproducible by industrial means. The period of protection is not indefinite, but may be for 5, 10, or 15 years up to a maximum of 25 years. Like trademarks, registering a design is cheaper and less time-consuming than applying for a patent. It also gives owners the right to take legal action against infringers. TRIPS requires designs to be new or original, which may be construed as not significantly different from “known designs or combinations of known designs” rather than of recent creation. Designs whose features are dictated by functional or technical considerations may not be protected.  Procedures for protecting textile designs must not unreasonably impair the opportunity to seek and obtain such protection, which may be through industrial design law or copyright. The period of protection permitted under TRIPS is at least 10 years and allows owners to prevent others from making, selling or importing articles bearing their designs for commercial purposes.

Trade secrets
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Know-how is practical information that may give a person or company a competitive advantage. As long as it is known only to a few people, such information can be legally recognized and protected as a trade secret even though it fails to fulfill the criteria of patentability. A claim for protection of know-how as a trade secret requires that efforts be made to prevent disclosure. Law makes the taking without permission of a trade secret an illegal act, but not the discovery by proper means, i.e., by independent discovery, accidental or actual disclosure, or by reverse engineering.

Plant Breeders’ Rights
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The International Convention for the Protection of New Varieties of Plants (the ‘UPOV Convention’) was signed in Paris in 1961 and entered into force in 1968. It was revised in Geneva in 1972, 1978 and 1991. The 1978 Act entered into force in 1981, and the 1991 Act entered into force in April 1998. The Convention established the International Union for the Protection of New Varieties of Plants, which is based in Geneva.

UPOV provides a framework for intellectual property protection of plant varieties. These rights are most often referred to as plant variety rights or plant breeders’ rights (PBRs). To be eligible for protection, the plant variety must be:

• distinct (the most important requirement), i.e., distinguishable by one or more characteristics from any other variety whose existence is a matter of common knowledge;
  
  
• stable, i.e., remain true to its description after repeated reproduction or propagation;
  
  
• uniform, i.e., homogeneous with regard to the particular feature of its sexual reproduction or vegetative propagation;
  
  
• novel, i.e., not have been offered for sale or marketed, with the agreement of the breeder or his successor in title, in the source country, or for longer than 4 years in any other country.

An application for plant variety protection requires the completion of an application form, a description of the variety, and the deposit of propagating material. This material may be used by a government institution to conclusively demonstrate stability and homogeneity through propagation trials.

The 1991 version extends the scope of the breeders’ rights in three ways. First it increases the number of acts for which prior authorisation of the breeder is required so that these include production or reproduction; conditioning for the purpose of propagation; offering for sale; selling or other marketing; exporting; importing; and stocking for the above purposes.

Second, such acts are not just in respect of the reproductive or vegetative propagating material as with the earlier 1978 version, but also encompass harvested material obtained through the use of propagating material, and so-called “essentially derived” varieties.

Third, protection is extended from at least 15 years to a minimum of 20 years.

However, the right of other breeders both to use protected varieties as an initial source of variation for the creation of new varieties and to market these varieties without authorisation from the original breeder (the ‘breeders’ exemption’) is upheld in both versions. One difference though is that the 1991 version states that if a new variety is deemed to be essentially derived from a protected variety, the owner of the protected variety enjoys the same rights over the essentially derived variety as if the two varieties are identical.

It is sometimes assumed that the 1978 version allows a farmer to re-sow seed harvested from protected varieties for his or her own use, the later version does not. In fact, such a ‘farmers’ privilege’ is not referred to at all. The Convention establishes minimum standards such that the breeder’s prior authorisation is required for at least the three acts mentioned above. Although the farmers’ privilege is not compulsory, most countries that are members of the 1978 Convention do indeed uphold it.

The 1991 version is more specific about this matter. Whereas the scope of the breeder’s right includes production or reproduction and conditioning for the purpose of propagation, governments can use their discretion in deciding whether or not to uphold the farmers’ privilege.  According to Article 15 the breeder’s right in relation to a variety may be restricted “in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting … the protected variety….”

As yet the overwhelming majority of UPOV members are in Europe, North America, Latin America and Australasia. However, the interest of developing countries in joining UPOV is increasing and one can expect that many more of them will become members in the next few years.

Geographical indications and appellations of origin
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According to TRIPS, geographical indications (GIs) “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”. Geographical indications are similar in function to trademarks, the difference being that the former identifies a product with a particular territory, whereas the latter identifies a product with a company or brand.

TRIPS requires WTO members to permit legal action enabling traders to prevent: (a) the designation or presentation of a good (such as a trademark) that suggests, in a manner that misleads the public, that the good in question originates in a geographical area other than the true place of origin; and (b) any use which constitutes unfair competition.

One well-known type of GI is the appellation of origin. Appellation of origin was originally a French geographic indication applying to products considered to be distinctive due to a combination of traditional know-how and highly localized natural conditions. In France, a government agency validates Appellation d’Origine Contrôlée (registered designations of origin), so that producers of wines, cheeses, and other foodstuffs, whose goods are renowned for their distinctive qualities and geographic origins are protected from those who would undermine their good reputation by making similar, but false, claims. For example, wines from the Champagne region of France are protected this way; local producers acting collectively have prevented the use of the word “Champagne” on English wine, and even bottles of perfume and shampoo.