Intellectual Property Law

Sven Jacobs
Associate
Norton Rose Fulbright (Germany) LLP
8. – 9.12.2016

Introduction

IP: CHARACTER AND
PURPOSE
3

” Kamil Idris WIPO Director General .” “An effective intellectual property (IP) system embedded within a national strategy which anchors IP considerations firmly within the policy-making process will help a nation to promote and protect its intellectual assets.“In the age of the knowledge economy. wealth creation and improved social welfare. the efficient and creative use of knowledge is a key determinant of international competitiveness. thereby driving economic growth and wealth creation.

Intellectual Property • Intellectual property means the legal rights which result from intellectual activity in the industrial. • Intellectual property law aims at safeguarding creators and other producers of intellectual goods and services by granting them certain time-limited rights to control the use made of those productions. scientific. literary and artistic fields. .

the resulting immaterial goods can be classified as intellectual creations (text. literary and artistic fields. scientific. but the object which embodies the intellectual creation may not be confused with the intellectual creation itself. • Depending on the field in which this creative activity is undertaken. . technical inventions and signs used in commerce.Intellectual Property • Immaterial goods are the product of a creative mental human activity in the industrial. music. image). • These intellectual creations are in most cases fixed in some tangible form.

innovation and GDP • Copyright in the information society Micro-level • IP-rights as source of corporate income • IP-rights and income of the inventor / creator .The Economic Importance of IPRs Macro-level: • Patents.

The Rationale for IP Protection
Utilitarian – communitarian:



Incentive to create
Protection of the investment made
IP-monopolies a furtherance of competition
Problem: overprotection („tragedy of the anti-commons“)

Natural rights – individualistic:
• Securing inventor‘s and authors income
• Works as the author‘s „children“ (part of his or her personality)

8

Economic importance
• Value of the underlying IP
– an invention may have value without IPRs
– e.g. “protection” by being first to market

• Value of the IPR to the company
– value of the IPR is the difference in value of the IP with and without IPR
protection
– the value of IP would be severely eroded in the absence of IPRs
– incentive to invent or maintain quality would be severely undermined

9

IP: SIMILARITIES AND
DIFFERENCES
10

Similarities of IPRs • Conditions for protection • Ownership of rights • Rights granted • Limitations to the rights granted • (Duration) • Remedies 11 .

Designs (most) • Non-registration rights: Copyright incl. copyright • (Potentially) unlimited: trademarks 12 .Differences of IPRs Object of protection • Technical inventions: patent law • Signs in commerce: trademark law • Creative works: copyright law Obtaining protection / origination: • Registration rights: Patents. trademarks (most). neighboring rights Duration of protection: • Limited in time: patents.

IP Registration • Rules how to apply and register • In international relations. (b) create an international classification system. an additional set of rules is needed in order to (a) set up a procedure which enables applicants to obtain registration rights in more than one country with only one central registration. and (c) to clarify the relationship between foreign and national applications. 13 .

/. inventor etc. commissioning party need rights assigned or transferred from initial owner • Similarly: rightholder grants use rights to producers and/or distributors • Licensing modes: exclusive . participation 14 . restricted uses • Payment models: lump sum ./. • Employer. non-exclusive • Scope of rights transferred: all rights .IP Licensing • Starting point: initial ownership of the IP right with author./.

IP: INFRINGEMENT AND REMEDIES 15 .

Infringement & Remedies If a third party is interfering with intellectual property the most important actions a proprietor is entitled to are: • Cease and desist (including preliminary relief) • Recall / destruction of infringing goods 16 .

in the case of negligent or intentional infringement (comprising either of actual damages. e.Infringement & Remedies • Information / disclosure • Damages.) or the Act against Unfair Competition (UWG) 17 . adequate license fees or turnover of profits) • Claims may also be based on the German Civil Code (BGB. section 823 et seq.g.

in addition there can be criminal penalties stipulated • Typically a proprietor will seek monetary compensation for past infringement.Infringement & Remedies Judicial proceedings • IP claims are enforced through civil lawsuits. and an injunction prohibiting the infringer from engaging in future acts of infringement 18 .

also recommending to close the US Patent Office 19 . DUELL. S.Misjudgments of Innovations 1878 (telephone): „What use could this company make of an electrical toy?“ Western Union president WILLIAM ORTON.000 Dollar 1899 (inventions): “Everything that can be invented has been invented.” CHARLES H. commissioner of patents. U. rejecting Alexander Graham Bell’s offer to sell his struggling telephone company to Western Union for 100.

WARNER. Warner Brothers 1946 (television): “People will soon get tired of staring at a plywood box every night. ZANUCK. 20 . president of Digital Equipment Corp. head of 20th Century-Fox 1977 (PC): “There is no reason for any individual to have a computer in their home.” KENNETH OLSEN.” DARRYL F.Misjudgments of Innovations 1927 (film): “Who the hell wants to hear actors talk?” HARRY M.

INDIVIDUAL IP-RIGHTS 21 .

This will motivate others to work hard and compete in such inventions.The early account of an “IP-system” In the ancient Greek city of Sybaris (destroyed in 510 BC)." 22 . no other cook is to be permitted to prepare that dish for one year. only the inventor shall reap the commercial profits from his dish. leaders decreed: "If a cook invents a delicious new dish. During this time.

IPRs: Overview • Patents • Trademarks • Copyrights and Neighbouring Rights • Other IP-rights • Unfair Competition 23 .

PATENTS 24 .

20.2008 25 . 1899 Benutzeridentifikation bei Autos EP990757A3. 2.7.Examples BabyBuggy. GB 1154362.2003 Karl Benz. 6. 19.1965 Jack Kilby.1886 Bürostuhl mit Lumbalstütze EP1872689A1.Patents . 29.11.1. Deutsches Reichspatent 37435: „Fahrzeug mit Gasmotorbetrieb“ . TI. Microchip.1959 Acetylsalicylsäure (Aspirin).1.2. GB 945734.

26 . in Germany by the Patent Act The Patents Act grants protection to technical inventions based on inventive activities that can be commercially applied. Duration of protection for a patent is 20 years from the date the patent is applied for.Patents – The law Patents are governed (Patentgesetz).

Patents – The law • Subject matter: Inventions „in all fields of technology“ • Conditions: – Novelty – non-obviousness („inventive step“) – industrial application • Registration required • Exclusive use rights • Few exceptions 27 .

TRADEMARKS 28 .

Trademarks .examples 29 .

Trademarks – The law Signs are governed in Germany by the Trademark Act (Markengesetz). commercial designations and indications of geographical origin. 30 . The Trademark Act incorporates the protection of registered and unregistered trademarks. Registered trademarks are protected 10 years from the application date. Registration may be renewed for further periods of 10 years. Trademarks are protected from the moment of registration (or in case of unregistered trademarks as soon as relevant preconditions are met).

Trademarks – The law • Object of protection: Signs individualising and distinguishing goods/services from a particular source • Condition: distinctiveness of the sign • Types of marks – Trademarks (for goods) – Service marks (for services) – Collective marks • Registration (or use + secondary meaning) in classes • Rights granted – Identical signs for identical goods/services – Identical/similar signs for identical/similar gods/services – Broad protection for famous marks 31 .

COPYRIGHT 32 .

BGH GRUR 1987. 903 Kinderquatsch mit Michael BGH GRUR 2003. 876 Topografische Landeskarten BGH GRUR 1987. Sessel LC 2. 360 33 .Copyright .examples Swarovski Kristallfiguren BGH GRUR 1988. 690 Le Corbusier.

Copyright – The law Copyrights are governed in Germany by the Copyright Act (Urheberrechtsgesetz). photographs.g. The Copyright Act incorporates the protection of personal. 34 . music). articles. intellectual creations (e. Protection originates from creation itself and lasts for up to seventy years after the creator has deceased. books.

not content (idea) • Broad exclusive rights • Several limitations 35 . scientific and artistic domain” and “related rights” (neighbouring rights. databases) • Condition: „originality“ (personal creation) • No registration required • Protects form (expression).Copyright – The law • Object of protection: “Works in the literary. software.

OTHER IP-LAW 36 .

Other IP-Laws • Utility Patents • Design Patents • Plant Varieties • Semiconductors 37 .

the inventive edge is evaluated by the Patent Office. yet it is quicker to obtain than a patent. Before a patent is granted. the assessment of a utility patent is a mere formal procedure. Hence a utility patent offers less protection and the inventive edge may be challenged at a later stage. In contrary. The difference to a patent mainly lies in the claim assessment. 38 . Protection can last up to 20 years in total.Other IP-Laws – Utility Patent The Utility Patent Act (Gebrauchsmustergesetz) governs the protection of technical based on an inventive step that can be commercially applied from the date the utility patent is applied for.

Other IP-Laws – Utility Patent The Design Patent Act (Geschmacksmustergesetz) grants protection of novel ornamental designs and models. After registration duration of protection is 20 years. 39 .

consistent and homogenous plants after registration. The Semiconductor Protection Act (Halbleiterschutzgesetz) grants protection of the topography of a semiconductor if it is characteristic and registered within 2 years from its first commercial exploitation. The duration of protection is between 25 and 30 years.Other IP-Laws – Utility Patent The Plant Variety Protection Act (Sortenschutzgesetz) grants protection for novel. distinguishable. The duration of protection is 10 years. 40 .

UNFAIR COMPETITION 41 .

Unfair Competition • Purpose: prevent acts contrary to honest business practices in order to – Maintain fair competition – Protect consumers / competitors • National implementation: – special legislation and/or tort law • No „exclusive“ right 42 .

Overview of intellectual property Legal right What for? How? Patents New inventions Application and examination Copyright Original creative or artistic forms Exists automatically Trade marks Distinctive identification of products or services Use and/or registration Registered designs External appearance Registration Trade secrets Valuable information not known to the public Reasonable efforts to keep secret .

Case Study .iPhone .

INTERNATIONAL IPPROTECTION 45 .

International IP-law • The principle of territoriality • Reciprocity and minimum rights (national treatment) • International IP-conventions 46 .

foreigners are not necessarily protected • Unique provisions in the EU (single market composed of individual IP-territories) 47 . but limited in their effect to the territory of the State under which laws they have been granted • IP-rights are governed by the laws of this State.Territoriality Principle • Rights granted by individual States • No „universal“ IP-rights.

Principles of International IP Treaties • Member States have to protect foreigners who are nationals of another contracting State in as much the same way as they protect their own nationals (principle of national treatment) • Minimum rights • A treaty must define the individual beneficiaries of the protection granted by the treaty 48 .

Principles of International IP Treaties • Priority of a prior foreign application for purposes of the domestic application • Centralized application procedure 49 .

Int‘l instruments (1) • Substantive law Treaties • Industrial property (patents. WIPO Performances & Phonogram Producers Treaty (WPPT) 50 . trademarks. other IP rights and unfair competition) – Paris Convention – TRIPS • Copyright: – Berne Convention (BC) – Rome Convention (RC) – WIPO Copyright Treaty (WCT).

Int‘l instruments (2) Treaties facilitating international application • Patents: – Patent Cooperation Treaty (PCT) • Trademarks: – Madrid Agreement – Madrid Protocol • Designs: – Hague Agreement 51 .

WIPO Status: An international intergovernmental organization Member States: 183 Staff: 915 from 94 countries Treaties Administered: 24 .

Milestones 2002 1989 1970 1967 1960 1925 1891 1886 1883 1893 BIRPI Madrid Agreement Berne Convention Paris Convention WIPO established WIPO Convention BIRPI moves to Geneva Hague Agreement Madrid Protocol PCT 1970 Internet Treaties .

g.EU-Harmonization (1): Harmonizing Directives • Horizontal (all IP rights) – Enforcement Directive • Patents – Biotechnology Directive • Trademarks – Trademark Directive • Design – Design Directive • Unfair Competition – Various consumer protection Directives (e. unfair business practices) 54 . misleading advertising.

EU-Harmonization (2): Harmonizing Directives • Copyright: – Computer Programs – Databases – Information Society – Regulation of collecting societies 55 .

Case Study – Coca-Cola .

Case Study .

58 .Case Study: The facts • X-Corporation. X uses its invention for the manufacture of a soda vending-machine in a particular shape which X markets under the trademark „Sun-Box“. days of the week and peak times. • X does not want to get commercially engaged in Japan. but is afraid that a Japanese competitor might market a rather similar vending-machine both in Japan and for export to other Asian countries and to Europe. a U. X finds a manufacturer in Eastern Europe who is willing to produce „Sun-Boxes“.S. At the core of the invention is a computer program and a database. has invented a vending-machine that is able to set the sales price in function of outside parameters. company incorporated in Delaware. • X also wants to market the „Sun-Box“ in Europe and is looking for a manufacturer in Eastern Europe (M) and a distributor (D) in Western Europe. such as temperature. provided he obtains the right to distribute them in Eastern Europe.

• Also. a producer from Malaysia imports a similar vending machine into Europe where it is marketed under the name of „Moon-Box“. • X learns that the Japanese Patent Office (JPO) does not grant patents to inventions such as the one underlying the „SunBox“. into Western European States. the Western European Distributor (D) tries to prevent wholeseller (W) from importing „Sun-Boxes“ which W has bought from the Eastern European manufacturer (M).Case Study: Development Later. • Finally. 59 .

Case Study: Questions Question 1: X wants to secure IP-rights for its invention and the „Sun-Box“. What rights are available? Question 2: In which country or countries can X obtain IPprotection? Question 3: What actions are necessary on the part of X? 60 .

Case Study: Questions Question 4: What means are available to X to obtain a Japanese Patent? Question 5: Can X stop the Malaysian producer/importer from importing a similar vending machine into Europe and its marketing there under the name of „MoonBox“? Question 6: Can D stop W from marketing the „Sun-Boxes“ in Western Europe? 61 .

jacobs@nortonrosefulbright.com NORTON ROSE FULBRIGHT . Germany Tel +49 69 505096 416 | Mob +49 173 3404587 | Fax +49 69 505096 100 sven.Contact Information Sven Jacobs | Associate Rechtsanwalt Norton Rose Fulbright LLP Taunustor 1 (TaunusTurm). 60310 Frankfurt.

.

The purpose of this communication is to provide information as to developments in the law. employee or consultant of. Norton Rose Fulbright Canada LLP. References to ‘Norton Rose Fulbright’. Norton Rose Fulbright Verein helps coordinate the activities of the Norton Rose Fulbright members but does not itself provide legal services to clients. in or to any Norton Rose Fulbright entity (whether or not such individual is described as a ‘partner’) accepts or assumes responsibility. are members (‘the Norton Rose Fulbright members’) of Norton Rose Fulbright Verein. 64 . It does not contain a full analysis of the law nor does it constitute an opinion of any Norton Rose Fulbright entity on the points of law discussed. each of which is a separate legal entity. director. ‘the law firm’. and ‘legal practice’ are to one or more of the Norton Rose Fulbright members or to one of their respective affiliates (together ‘Norton Rose Fulbright entity/entities’). a Swiss Verein. employee or consultant with equivalent standing and qualifications of the relevant Norton Rose Fulbright entity. You must take specific legal advice on any particular matter which concerns you.Disclaimer Norton Rose Fulbright LLP. If you require any advice or further information. Any reference to a partner or director is to a member. shareholder. No individual who is a member. Norton Rose Fulbright Australia. partner. please speak to your usual contact at Norton Rose Fulbright. or has any liability. to any person in respect of this communication. Norton Rose Fulbright South Africa (incorporated as Deneys Reitz Inc) and Fulbright & Jaworski LLP.