Intellectual Property What is IP?

: Industrial Property: Inventions: - new idea that solves technical problem and can be practically used or manufactured Marks: - any word, name, symbol, colour, or combination used by firm to identify its goods or services Industrial Designs: - original 2 or 3 dimensional lines, designs colours or shapes Appelations of Origin: - geographic names designating agricultural products e.g. champagne Trade Secrets/Know-how: - any unpatented formula, device, expertise (proprietary technology) used by a firm

Literary and Artistic Works: - any words, music, pictures or combination - new technologies e.g. software How is IP Protected? 1/ National Systems: - each country has IP laws, with patent, trademark and copyright protection systems; - developed countries - stronger protection - developing countries - weaker protection - patents give inventor exclusive right to use, sell or license a patented product and prevents use by any others for specified time in country granted - trademarks, service marks give owner exclusive right to use, sell or license a symbol and prevents anyone from use of identical or similar mark for specified period in country granted - industrial design patents prevent unauthorized copy, imitation or sale

- trade secrets/know-how are not patentable and covered by national trade secrecy or contract laws i.e.- protection against disclosure by employees or licensees based on contracts. No international treaties - copyrights - use of artistic work, computer program i.e. copy, distribute, perform, broadcast, lawful only with permission of author/owner of copyright - neighbouring rights - similar to copyrights that protect new technologies e.g. integrated circuits 2/ International Organizations: World Intellectual Property Organization (WIPO): - UN agency, formed 1967, in Geneva, with 177 members, administers 21 IP treaties - legal and policy advisor to WTO on TRIPS related issues and dispute settlement - WIPO Arbitration Centre: - resolves private IP commercial disputes - offers mediation and arbitration WTO:

- Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) - overcame problems of existing treaties: - established minimum standards - extended IP coverage worldwide of major existing IP treaties - dispute settlement system A Closer Look at Patents, Trademarks and Copyrights A/ Patents: International Patent Treaties: 1/ Paris Convention for Protection of Industrial Property, 1883 - 100+ members - must file in each member country but right of priority - national treatment - common rules - minimum standards 2/ Patent Cooperation Treaty (PCT), 1970

- can file for “international patent” simultaneously in many countries - 4 step process 1/ file in member country (Canada - PCT Office, Hull, PQ) 2/ international search re problems (Canada - European Patent Office) 3/ international search report 4/ application process - 20 months 3/ TRIPS: - WTO members must comply with Paris Convention - minimum 20 year patent protection - almost all technology patentable with exceptions (security, morality, medical techniques, biological processes) - rules for compulsory licensing National Systems:

Canada - medium protection until recently (forced by WTO and PCT to comply re drugs and length of patent protection) - Canadian Patent Act, 1989 - “first to file” system but only inventor entitled to patent - “absolute novelty” required - annual maintenance fees - up to 7 year deferred examination - Canadian Patent Office, Ottawa/Hull U.S. - not PCT member - “first-to invent” system (litigious) - uses trade sanctions to force IP compliance e.g. China

E.U. - different national laws

- harmonization in progress through European Patent Convention and Community Patent Convention - 2 application options: - apply for national patents in individual countries (expensive, lengthy) - apply to European Patent Office, Munich B/ Trademarks: International Trademark Treaties: 1/ Paris Convention - 1883 2/ Madrid Agreement- 1891, 1989 - 37 members only - allows an applicant to make a single application with WIPO that is equivalent to filing in all member states 3/ TRIPS - defines eligible trademarks, minimum rights, duration, licensing rules National Systems:

- most countries, need to register mark in patent office - indefinite duration, renewals every 10-15 years - mark can be registered whether or not in commercial use ( except Canada) - famous trademarks (McDonalds, IBM) may not have to be registered in every country internationally recognized - trademark protection can lapse in some countries if not used within first few years registration - trademarks not allowed if: - confused with existing trademarks - represents deceptive promotion/labelling - primarily a surname - uses any national symbol (flag, crest) Canada - registration only if prior use

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- duration indefinite, 15 year renewals U.S. - registration based on intention to use mark and must be used within 6 months - abandoned if not used in first 2 years - duration indefinite, 10 year renewals E.U. - harmonized system - “community trademark” , Office for Harmonization C/ Copyrights: International Treaties: 1/ Berne Convention for the Protection of Literary and Artistic Works, 1887 - 80+ members ( Canada, US,) - national treatment - unconditional protection on completion - protection granted to any person - common rules - minimum standards 2/ Rome Convention, 1961:

- prohibits unauthorized: - recording of live performances - reproduction of recordings - rebroadcast of broadcasts - broadcasters must pay fees for records 3/ TRIPS: - WTO members must comply with Berne Convention - computer programs, databases covered as literary works - integrated circuits covered - updates Rome Convention National Systems: Canada: - Copyright Act - duration -50 years after author’s death