Background Intellectual property (IP) and Intellectual Property Rights (IPRs)

IPL Notes 2023/2024 Semester I Campbell-Andries

“Ideas have become the goods of today and are crucial for the initiation of industry
innovation and sometimes entire economies.”

Aim (a): To understand the jurisprudential bases for IPL and for the various IPRS
-Origin of intellectual property law

Intellectual property originates in different places and at different times due to the divergent
subject areas. It is an umbrella term responding to different rights under IPL. Intellectual
property law has been around since the development of civilization. The earliest records relating
to Intellectual Property date back to the 6th century BCE, from Sybaris in Ancient Greece. It
supposedly granted a yearlong exclusivity for bakers to make their culinary invention. However,
during the Roman Empire era rights to individualistic creations paused while religion decided the
ins and outs of society. After this period as society transitioned from the middle ages to
modernity, our appreciation of scientific and technological developments overtook the prevailing
dogma. With the influx of revolutionary models of thinking came radical advancements in the
field of engineering. Free thinking gave our society the agency to return ownership of inventions
to inventors.
Previous beliefs invalidate ownership by virtue of religious faith, newer ideologies either:
call to consign the rights to the general public, thereby removing profit from the inventor; or
advocate for private ownership of an invention. These polarized approaches to Intellectual
Property became the pillars of modern debates. The latter eventually evolved into legislation,
while the former defined alternative social ideation. More so, Intellectual Property grew in
importance in trade due to Globalization- which removed economic boundaries/restrictions,
quotas, high duties among other things, Liberalisation began intensifying the attention to IP and
Digitization- allowed information to be reduced to 0s and 1s and transmitted over the internet.
Offices stemming from the conventions later merged into a central governing body, the United
International Bureaux for the Protection of Intellectual Property. This then became a United
Nation office we now know as the World Intellectual Property Organization. WIPO is the
specialized agency in the UN system that manages the international framework on Intellectual
Property. Its main focus is International norm setting on multilateral stage, training and assisting
with formulating IP laws and policies. WIPO is regarded as soft law-there is no sanctions for
non-compliance and no dispute settlement.
Travel through IP History:
• 1421- There was a more significant premium placed on innovations with industrial
applications. This is evidenced by the first patent with legal protection granted in 1421 to
an Italian inventor. Equal recognition towards works of art would receive legal protection
much later during the European Reformation. While publishing guilds were already
present before the Reformation, licensing of the written word was an often-lopsided
agreement.
 • 1623- In 1623, the Statute of Monopolies emboldened select groups of individuals to
control their industry. Thus, publishers owned most of the rights associated with authored
works. And with the author assuming the losing position, amendments were placed to
arrive at the modern version of written word license: the copyright.
• 1709- While copyright, or the "right of copy", had been in the process of development
since the introduction of the printing press into England in 1476, it was not until 1709
that Parliament enacted the first copyright statute, the Statute of Anne 8 Anne, The
Statute of Anne empowered writers with renewable 14-year protection for their original
works.
• 1769- [Millar v Taylor] 1769 4 Burr 2303, 98 Er 202, the Court of King's Bench
considered the nature and purpose of copyright for the first time. The case arose in the
course of the "literary property debate", a commercial struggle between rival booksellers
for predominance in the emerging book trade. Millar v. Taylor to address two questions:
(1) in what sense did copyright constitute a "new property" in the common law, and how
did it contribute to a conceptual change in property rights; (2) how did English courts
conceive of "authorship" during the evolution of copyright, and how, in turn, did
copyright as it emerged from the literary property debate alter the role of the author ? An
author sought to extend copyright to common law. Three judges dissenting justification
were:
J1: The author should control the destiny of his work since it is a product of his labour.
J2: Extending the CR would encourage creativity by making the work the creator’s property.
J3: It is the authors natural right as the work would not exist if not for the mental labor of the
author
• 1800- The early 1800s, the idea of global protection of Intellectual Property rights floated
among legislative bodies.
• 1883- The Paris Convention brought clarity and cooperation among international
jurisdictions
• 1886- Berne Convention extended the same protection to written expressions.
• 1891-Trademarks were also granted international protection through the Madrid
Protocol- is the primary international system for facilitating the registration of trademarks
globally.
• 1986-94- Uruguay Round (8) Led to inclusion of IP in trade (WTO). Standardization of
IP norms commenced. The goal was to instill clarity in global understanding of IP rules
across jurisdictions and to be able to resolve disputes in a predictable and amicable
manner. The Marrakesh Agreement establishing World Trade Organisation.

-Intellectual Property Law and Rights jurisprudential bases

Intellectual property (IP) refers to creations of the mind – everything from works of art to
inventions, computer programs to trademarks and other commercial signs. These
inventions, literary works, artistic works, designs and trademarks formed the subject
matter and jurisprudential bases of early intellectual property law. As a result, Intellectual
property rights were created to provide certain exclusive rights to the inventors or
creators of that property, in order to enable them to reap commercial benefits from their
creative efforts or reputation. There are four key elements of IPRs: copyrights,
trademarks, patents, design and a fifth trade secrets/ confidential information. IPRs is the
 prerequisite for better identification, planning, commercialization, rendering, and thereby
protection of invention or creativity. Thus, industries have begun evolving their own IPR
policies, management style, strategies, and so on depending on the area of specialty.
Intellectual property rights (IPRs) are territorial in nature (base on the domestic laws of a
country), it is only through agreements between and among states that a person who is
accorded IP protection in their country receives protection in another country. Thus, there
is no automatic protection in country A for works or inventions originating in country B.
Nonetheless, there are some TRIPs exceptions/ principles that can be applied National
Treatment which states: Each member shall accord to the nationals of other members
treatment no less favourable than that is accorded to its own nationals with regards to the
protection of IP. There is also, Most Favoured Nation Treatment (MFN)-Any advantage,
favour, privilege, immunity given by a member to the nationals of any other country shall
be accorded immediately and unconditionally to the nationals of all members.
(art.3)TRIPS,(art.17) GATT, art 5.
IP enhances technology advancement by providing a mechanism of handling infringement,
piracy, and unauthorized use, it provides a pool of information to the general public since all
forms of IP are published except in case of trade secrets. Pertinent IPRS Treaties to be
considered:

• Trademarks: Madrid Agreement and Protocol

• Copyright: Berne Convention
• Designs: Hague Agreement
• Patents: Patent Cooperation Treaty (PCT)

Nb. There exist a plethora of bilateral trade Agreements with chapters on the protection of IPRs.
In the Caribbean in addition to TRIPs you have the

• CARICOM Single Market & Economy

• CARIFORUM- Eastern Caribbean Economic Partnership Agreement (CARICOM
states+ Dominican Republic + EU)
• CARICOM/ Canada Trade and Development Agreement (on hold)

Aim (b): To review IPL in a wider commercial context (WTO & TRIPS)
-IPL as a part of (WTO & TRIPS)
Intellectual property (IP) is an asset to any business old or new, small or large. In a commercial
context intellectual property law and rights has its roots within the WTO- TRIPS Agreement-
(Agreement on Trade-Related Aspects of Intellectual Property Rights. The TRIPS Agreement is
Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in
Marrakesh, Morocco on 15 April 1994) and enlarged the traditional categories of IPRs. Since the
WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into
force in 1995, digital technology has fundamentally changed the scale, diversity and nature of
cross-border commercial transactions involving the transfer of knowledge. It has transformed
how intellectual property is licensed, managed and traded. The WTO’s Intellectual Property
Agreement contains rules for trade in ideas and creativity. The rules state how copyrights,
patents, trademarks, geographical names used to identify products, industrial designs and
undisclosed information such as trade secrets – “intellectual property” – should be protected
when trade is involved. In addition, it addresses the interface between digital technology, trade
and intellectual property in several ways, with a new platform on 'Trade in Knowledge' which
supports dialogue and new approaches to understanding the latest developments.
Moreover, corporate and commercial law are equally important in the context of IP
protection. Corporate law governs the creation and management of companies, while commercial
law regulates business transactions and commercial relationships. Together, these areas of law
provide a framework for businesses to protect their IP and enforce their rights in such IP.
TRIPS mark a coming together of three trends in international IPR law:
• The widening of the scope of subject matter that can be protected and the reduction and
elimination of exceptions for example computer programs have been given by extension
copyright protection and are now treated as literary works.
• The addition of new types of rights to the global IPR to the global IPR regime example
plant breeders’ rights and layout-designs of integrated circuits.
• The international standardization of the basic features of IPRs for example patent
regulations increasingly provide protection for a period of 20 years from the date of
application. Until recently there was a wide variation in timescale between countries.
However, issues in TRIPS did arise. The multi-lateralisation of IPRs as an aspect of trade policy
was driven by developed countries to combat what was said to be a widespread unauthourised
use of products containing the IPRs of their nationals, and the global trade in counterfeit goods.
Therefore, developed countries lead the movement towards strengthening IPRS in the laws of
developing countries, under the view that it would generate additional profits leading to more
research and development, necessary to fuel economic growth. This raised criticism as:
• Developing countries noted that the TRIPS Agreement of 1995 is unbalanced, favoured
developed countries and transnational corporations and at the same time is unhelpful or
even harmful to their own interest.
• It meant that Developing countries (DCs) and Least Developed Countries (LDCs) would
have to accept higher standards of IP protection than required by WTO before
determining the best ways to implement TRIPS that supported economic development
and poverty alleviation.
• Non-governmental organizations also stated that various costs will be imposed on the
Developing Countries for example; more expensive drugs, agricultural inputs and
foreign-owned technologies without producing enough long-term gains in areas like trade
and investment.
Nevertheless, Developed Countries (D) holds that strong IPR will attract investment to DCs,
stimulate local innovation and creativity, as a result poorer country have nothing to fear. (Art
7.) TRIPS.
Methods/ways of IP commercialization:
 1. Licensing
2. Franchising
3. Mergers and Acquisition
4. Joint Ventures
5. Commercialization by business partnership

Nb. WTO preamble (before art 1.)- says why TRIPS was necessary. There were rounds of
multilateral negotiations (Uruguay) that led to aspects of IP being included in WTO. The WTO
has 3 pillars (Goods- GATT (The General Agreement on Tariffs and Trade), Trade in services
and TRIPS).
Aim (c) To review IPL in light of emerging technologies which impact IPRS recognition
One striking feature of intellectual property is that the scope of its subject matter continues to
expand. The twentieth century has seen new or existing subject matter added to present
intellectual property systems and new systems created to protect existing or new subject matter.
In some instances, the emergence of new media necessitates a response from IP laws to ascertain
which existing rules remain relevant and ensure that current assets continue to receive effective
protection. In other cases, the evolving ways assets are utilised demonstrate that some IP
regulations are no longer appropriate, indicating a need for reform.
List of some emerging technologies:
▪ Computer software protection-under copyright
▪ 3D Printing
▪ Artificial Intelligence
▪ Blockchain
▪ New Plant Varieties protection- soya plant have exclusive right (gmo) issue of who
controls what plant can be grown and can it be weaponised
▪ Pharmaceutical Drugs
▪ Micro-organisms- part of patent law

3D Printing
Three-dimensional objects can be produced from Digital Design through 3D Printing,
which is also popularly known as Additive Manufacturing. The creation of 3-D printing
has sparked a new generation of decentralized manufacturing, allowing individuals to
create bodily items from digital designs. Traditional production and distribution models
have the potential to be disrupted by this technology. This makes it possible for
individuals to create replicas of existing patented goods, raising the issue of infringement
and counterfeiting.

Blockchain Technology.
Blockchain is a form of data storage technology that protects stored data from hacking,
being exploited, hacked, or other forms of abuse. A blockchain is a distributed ledger
system, which allows transactions to be transferred and replicated between the computers
in the network.

Blockchain technology, which is renowned for being decentralized and transparent, has
significant implications for intellectual property rights. Blockchain may be used to
provide unchangeable ownership records, making the management of IP assets safer and
more effective. Blockchain-based smart contracts can automatically enforce IP rights,
allowing artists to secure their work and get royalties without the interference of any
middlemen.

AIs:
Whenever AI generates any kind of work, then there arise questions like- who owns the
IP rights when AI systems produce original works? Or should the AI system itself be
considered the creator? Or should the human programmer or the organization that owns
the AI system be granted the rights? Clarifying these concerns will be crucial in
determining the future of AI-generated works and ensuring fair compensation for
creators.

https://www.abounaja.com/blogs/history-of-intellectual-property

https://euipo.europa.eu/ohimportal/en/madrid-protocol

https://www.wipo.int/edocs/mdocs/tk/en/wipo_unhchr_ip_pnl_98/wipo_unhchr_ip_pnl_98_1.pdf

https://www.ncbi.nlm.nih.gov/pmc/articles/PMC3217699/#:~:text=IPR%20provide%20certain%
20exclusive%20rights,%2C%20copyright%2C%20trademark%2C%20etc.

https://www.wipo.int/edocs/mdocs/tk/en/wipo_unhchr_ip_pnl_98/wipo_unhchr_ip_pnl_98_1.pdf

https://www.businesscompanion.info/en/quick-guides/miscellaneous/intellectual-
property#:~:text=IP%20consists%20of%20four%20key,an%20automatic%2C%20or%20unregist
ered%20right.

https://www.legalserviceindia.com/legal/article-8844-commercialisation-and-intellectual-
property-rights-in-
india.html#:~:text=In%20this%20type%20of%20Commercialization%2C%20the%20IPR%20ow
ner%20enters%20into,into%20marketable%20products%20or%20services.

https://www.wto.org/english/tratop_e/dtt_e/dtt-
ip_e.htm#:~:text=The%20WTO%20addresses%20the%20interface,to%20understanding%20the
%20latest%20developments.

https://www.lexology.com/library/detail.aspx?g=602e8d72-8b03-4b8b-bd55-ad2bebabbfec
 https://techgraph.co/opinions/emerging-technologies-and-their-implications-for-intellectual-
property-
rights/#:~:text=Blockchain%20technology%2C%20which%20is%20renowned,assets%20safer%
20and%20more%20effective.

TRIPS:
https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm#:~:text=The%20TRIPS%20Agreemen
t%20requires%20Member,novelty%2C%20inventiveness%20and%20industrial%20applicability.
https://www.wto.org/english/docs_e/legal_e/27-
trips_01_e.htm#:~:text=Agreement%20on%20Trade%2DRelated%20Aspects,Morocco%20on%2
015%20April%201994.

6. Apart from licensing, there are various other methods of IP Commercialization with the
intervention of third-party business transactions:

a. Franchising
The concept of franchising is wide, it basically encompasses the concept of
licensing. In franchising, the owner not just allows the other entity to use the
intellectual assets, but also allows them to use the entire business ecosystem of the
owner.

Some of the advantages of franchising are, that it allows the owner to acquire
fresh capital, without incurring any loss of their own and it helps the business to
expand its footprint across new market segments.

Amongst the other things, it has some disadvantages also, like it has reputational
risk, miss-use of trade and it is more complex than licensing.

b. Mergers and acquisitions

A merger is basically a legal merger of two commercial entities into one and
whereas an acquisition occurs when an entity acquires another property. Both
transactions result in the consolidation of assets and liabilities in a single entity.

Mergers and acquisitions is an even broader concept than franchising, in which

the intellectual property owner is actually either getting merged into a bigger
organisation, or getting acquired by another organisation. In this process, not just
the intellectual assets of the owner are consumed by the acquiring organisation,
but the entire business framework is merged into the latter.

c. Joint ventures
The joint venture is similar to a merger, but the only difference is that the
ownership of the intellectual property remains with the owner.
 It is an agreement between two or more entities to cooperate on a similar point of
interest for a specific period of time and later both the entitles will part the
different ways after the purpose of the agreement has been served.

7. Commercialization by business partnerships

The last way to commercialize IP is through building a business collaboration. In this
type of Commercialization, the IPR owner enters into a business agreement with a third
party who plays the role of an investor and helps in converting IP into marketable
products or services.