1 TRIPS AGREEMENT 2 Introductory Remarks TRIPS TRIPS

1 TRIPS AGREEMENT

2 Introductory Remarks - TRIPS • TRIPS: The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the World Trade Organization. It sets down minimum standards for the regulation by national governments of many forms of intellectual property (IP) as applied to nationals of other WTO member nations.

3 Introductory Remarks - TRIPS • IP – Refers to the legal rights that result from the intellectual activity in the artistic, literary, scientific or industrial fields. • Ideas and knowledge are an increasingly important part of trade, if not protected adequately this may lead to the disruption of international trade.

4 Class Activity Why we have protection of IP rights? to reward and stimulate creative activities

5 TRIPS Agreement (I) Basic principles of the TRIPS Agreement - nondiscrimination in the form of: The National Treatment Principle (Art. 3. 1) treating one’s own nationals [legal and physical persons] and foreigners equally with respect to IP protection. The Most-favoured-nation Treatment Principle (Art. 4) - equal treatment for nationals of all trading partners in the WTO Minimum Level of Protection: Members are free to implement more extensive protection but need to provide a protection that is required by TRIPS Agreement

6 TRIPS Agreement (II) Substantive obligations are based on various international agreements • Paris Convention: for the Protection of Industrial Property of 1883 (patents, industrial designs, etc. ) • Berne Convention: Berne Convention for the Protection of Literary and Artistic Works of 1886 (copyright) • Rome Convention: International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations of 1961 • IP Treaty: Treaty on Intellectual Property in respect to Integrated Circuits of 1989

7 TRIPS Agreement (V) • Functions and scope: *** Ensuring that adequate standards of protection exist in all WTO Members but also to balance between rights and obligations of rights holders and users *** Rights covered: 1. copyrights, 2. trademarks, 3. geographical indications, 4. industrial designs, 5. patents, 6. integrated circuits layout designs, 7. undisclosed information and trade secrets

8 1. Copy rights and related rights TRIPS Agreement incorporates relevant provisions of the Berne Convention: copyright: Every production in the literary, scientific and artistic domain (+ computer programs and compilations of data as provided by the TRIPS) but protection of some categories is optional (e. g. oral works) *** Each country can determine the level of originality or artistic creativity required for the protection. *** Authors have exclusive rights to distribute their work, to make and authorize translation and reproduction, to make a public performance of their work, to make alternation to their works.

9 Copy rights and related rights *** minimum period of protection – in principle 50 years, but photographic works and applied arts – 25 years *** exceptions (e. g. ): quotations and the use of works for teaching purposes; *** reproducing in newspaper for reporting current events;

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11 2. Trademarks (I) Trademark goods or information considerable reputation – a sign that aim to distinguish services by communicating about their source, they have value as they are based on Top 100 global brands, 2018 https: //ig. ft. com/top-100 -global-brands/2018/

12 TM vs. R vs. C TM: TM is used to signify common-law rights in a trademark pursuant to the Lanham Act. Thus, those who have not yet registered their brand name. R: The R symbol denotes a trademark which has been registered. C: The “C” with a circle around the letter, or the use of the word “copyright, ” gives notice to the public that the work is copyrighted. However, the C symbol is no longer required to protect your work as it’s automatically protected when the work is created. For further: differences/ https: //www. lawtrades. com/blog/answers/intellectual-property-

13 Class Activity What are the functions of trademark?

14 Functions of Trademark 1. The Origin Function: if the source had a good reputation, or if consumers had experienced goods from that source before and wanted to make repeat purchases. 2. The Quality Guarantee Function: The quality guarantee function assumes that consumers will use trade marks to identify goods which they known from experience to be satisfactory. Consumers who have had positive experiences with goods will note the trade mark that they bear and will look for that mark again when making future purchases of those goods.

Cont. 15 Functions of Trademark Note: There is an expectation of consistency, there is no legal mechanism to guarantee that the proprietor of the mark will only use his mark on goods of uniform quality. If a mark-owner does use the mark on lower quality goods, he may lose customers, but he faces no sanction under trade mark law. 3. The Advertising Function: There is no consensus on what the advertising function actually is, but the best explanation is that, where marks are used in advertising, an image can be built up around them, separate from the physical nature of the goods themselves, which will be evoked whenever consumers are subsequently exposed to the mark.

16 Article 15: Protectable Subject Matter – trademark 1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

17 Article 16: Rights Conferred - Trademarks (II) 1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

18 For further details click the following link: http: //www. worldtradelaw. net/uragreements/tripsagreement. pdf. downloa d

19 3. Geographical indications (I) Definition: A geographical indication is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. Moreover, in order to work as a GI, a sign must identify a product as originating in a given place. In addition, the qualities or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a link between the product and its original place of production.

20 Class activity what is relationship between products and place of origin? what is the importance of GI?

21 Can geographical indications only be used for agricultural products? Agricultural products typically have qualities that derive from their place of production and are influenced by specific local, geographical factors such as climate and soil. Therefore a majority of GIs throughout the world are applied to agricultural products, foodstuffs, and drinks. However, the use of GIs is not limited to agricultural products. A GI may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions , for instance, handicrafts.

22 Geographical indications (II) 1. 2. GIs vs. trademarks A trademark belongs to a particular company; it distinguishes that company’s products; GIs are shared by all producers in the region identified by the GI GIs attach to a location; trademarks don’t Why GIs are valuable? important marketing tool (reputation for quality associated with place name used on labels, advertising) GI-identified products are believed to command higher prices

23 Geographical indications (III) TRIPS Agreement Art. 22 Protection of Geographical Indications Members are obligated to prevent use of GIs by nonoriginal producers so as to mislead as to product origin, or constitute unfair competition

24 4. industrial design What is an industrial design ? industrial design means the appearance of the whole or a part of a product, resulting particularly from the features of the lines, colours, shapes, textures and/or materials of the product itself and/or its decoration. Why should you register your industrial design ? the protection acquired brings its owners advantages this advantage consists of the exclusive right to use the registered industrial design, to prevent use by a third party without approval, to provide licenses for other individuals to use the registered design or to transfer the design rights.

25 4. industrial design Article 25: Requirements for Protection 1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations. Article 26: Protection: Art. 26. 3: The duration of protection available shall amount to at least 10 years.

26 For further reading: https: //www. wipo. int/edocs/lexdocs/laws/en/cz/cz 060 en. pdf

27 5. Patents – introductory remarks Definition: 1. A patent is a document, issued, upon application, by a government office (or a regional office acting for several countries), which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the owner of the patent. Note: “Invention” means a solution to a specific problem in the field of technology. 2. A patent for an invention is granted by government (and then WIPO) to the Patentee, normally an inventor. A patent gives the Patentee the right, for a limited period, to stop others from making, using or selling the invention without the permission of the Patentee.

28 Article 33: Term of Protection The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date. Note: It is understood that those Members which do not have a system of original grant may provide that the term of protection shall be computed from the filing date in the system of original grant.

29 Conditions of Patentability An invention must meet several criteria if it is to be eligible for patent protection. These include: 1. Patentable Subject Matter: Patentable subject matter is established by statute, and is usually defined in terms of the exceptions to patentability, the general rule being that patent protection shall be available for inventions in all fields of technology. Examples of fields of technology which may be excluded from the scope of patentable subject matter includes the following: discoveries of materials or substances already existing in nature; scientific theories or mathematical methods; schemes, rules or methods, such as those for doing business, methods of treatment for humans or animals, or diagnostic methods practiced on humans or animals.

30 Conditions of Patentability 2. Industrial Applicability (Utility): An invention, in order to be patentable, must be of a kind which can be applied for practical purposes, not be purely theoretical. If the invention is intended to be a product or part of a product, it should be possible to make that product. And if the invention is intended to be a process or part of a process, it should be possible to carry that process out or “use” it (the general term) in practice. “Applicability” and “industrial applicability” are expressions reflecting, respectively, the possibility of making and manufacturing in practice, and that of carrying out or using in practice.

31 Class activity Discuss some example of invention that is applicable and vis versa

32 Conditions of Patentability 3. Novelty: An invention is new if it is not anticipated by the prior art. “Prior art” is, in general, all the knowledge that existed prior to the relevant filing or priority date of a patent application, whether it existed by way of written or oral disclosure. The question of what should constitute “prior art” at a given time is one which has been the subject of some debate. One viewpoint is that the determination of prior art should be made against a background of what is known only in the protecting country. This would exclude knowledge from other countries, if it was not imported into the country before the making of the invention, even if that knowledge was available abroad before the date of the making of the invention

33 Cont. Another viewpoint is based on the differentiation between printed publications and other disclosures such as oral disclosures and prior use, and where such publications or disclosures occurred. The disclosure of an invention so that it becomes part of the prior art may take place in three ways, namely: Written: by a description of the invention in a published writing or publication in other form; Oral: by a description of the invention in spoken words uttered in public, such a disclosure being called an oral disclosure; Use: by the use of the invention in public, or by putting the public in a position that enables any member of the public to use it, such a disclosure being a “disclosure by use. ”

34 Conditions of Patentability 4. Inventive Step (Non-Obviousness): A claimed invention is considered to involve an inventive step if, having regard to the prior art, it is not obvious to a person skilled in the art. Who is “a person skilled in the art”? A hypothetical person having ordinary skill in the art, who is aware of common general knowledge in the art at the relevant date, and has access to everything in the prior art.

35 Inventive Step vs. novelty It should be noted that novelty and inventive step are different criteria. Novelty exists if there is any difference between the invention and the prior art. The question, “is there inventive step? ” only arises if there is novelty. The expression “inventive step” conveys the idea that it is not enough that the claimed invention is new, that is, different from what exists in the state of the art, but that this difference must have two characteristics. Firstly, it must be “inventive”, that is, the result of a creative idea, and it must be a step, that is, it must be noticeable. There must be a clearly identifiable difference between the state of the art and the claimed invention. This is why, in some jurisdictions, there is the concept of an “advance” or “progress” over the prior art. Secondly, it is required that this advance or progress be significant and essential to the invention.

36 Conditions of Patentability 5. Disclosure of the Invention: The application must disclose the invention in a manner sufficiently clear for the invention to be carried out by a person skilled in the art. The description should set out at least one mode for carrying out the invention claimed. This should be done in terms of examples, where appropriate, and with reference to the drawings, if any. In some countries, the description is required to disclose the best mode for carrying out the invention known to the applicant.

37 For further reading: https: //www. wipo. int/export/sites/www/about-ip/en/iprm/pdf/ch 2. pdf

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39 6. integrated circuits layout designs Introductory remarks • A layout-design of an integrated circuit refers essentially to the three-dimensional character of the elements and interconnections of an integrated circuit. • An integrated circuit (IC) is an electronic circuit in which the elements of the circuit are integrated into a medium, and which functions as a unit. Currently the medium used to create this unit is a solid semiconductor such as silicon. The circuit is integrated into the piece of silicon, commonly called a "chip" or a "silicon chip". The terms "integrated circuit", "semiconductor" and "silicon chip" are used synonymously as commercial ICs are usually fabricated from silicon semiconductors.

40 Article 38: Term of Protection In Members requiring registration as a condition of protection, the term of protection of layout-designs shall not end before the expiration of a period of 10 years counted from the date of filing an application for registration or from the first commercial exploitation wherever in the world it occurs.

41 7. Undisclosed information and trade secrets Video

42 7. undisclosed information and trade secrets Introductory remarks: Broadly speaking, any confidential business information which provides an enterprise a competitive edge may be considered a trade secret. Trade secrets encompass manufacturing or industrial secrets and commercial secrets. The unauthorized use of such information by persons other than the holder is regarded as an unfair practice and a violation of the trade secret. Depending on the legal system, the protection of trade secrets forms part of the general concept of protection against unfair competition or is based on specific provisions or case law on the protection of confidential information.

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44 Protection of trade secret • Unfair competition and unfair commercial use