INTELELCTUAL PROPERTY

What constitutes intellectual property?

Patents

Trademarks

Trade names

Copyrights

Industrial and art designs

All of the above have legal protection and are “territorial” in nature, i.e. you

have to apply for these through a Patents Office in each region that you like

to seek protection of your IP.

Invention

Patentable subject matter – eligible for patent protection and

must have technical character

Be novel – at least some part or some aspect of it must be new

Be non-obvious (US Patent Law) and must have an inventive

step (European Patent Law)

Be useful (US Patent Law) or have industrial application

Patent

Is an official approval of the invention by the patent office and the grant

of right of “property” to the owner

Provides right to exclude others from the use of the invention

The rights are only territorial – corresponding to patent in each country

– no worldwide patent

Patentee is responsible for enforcing the patent once it is granted

Registered trademarks® or Trademark™ (pending)

Trademarks are distinctive signs used to differentiate between

identical or similar goods and services offered by different producers

or service providers. Trademarks are a type of industrial property,

protected by intellectual property rights (WIPO).

Signs may use words, letters, numerals, pictures, shapes and colours,
as well as any combination of the above.

Three-dimensional signs (like the Coca-Cola bottle or Toblerone

chocolate bar).

Audible signs or olfactory signs?

Trademarks perform four main functions:

Distinguish the products or services of one enterprise from those of

other enterprises. Examples: Coca-Cola vs Pepsi.

Refer to a particular enterprise, not necessarily known to the

consumer, which offers the product or services on the market.

Refer to a particular quality of the product or service for which it is

used, so that consumers can rely on the consistent quality of the

goods offered under a mark. Examples: ISO9000, GMP Certified.

Promote the marketing and sale products, and the marketing and

rendering of services. Example: Xerox, Kleenex

Trade names
A commercial or trade name is the name or designation that

identifies an enterprise. Example: Oxonica, Exxon.

Trade names may be registered with a government authority.

However, under Article 8 of the Paris Convention for the Protection

of Industrial Property a trade name must be protected without the

obligation of filing or registration, whether or not it forms part of a

trademark.

Protection generally means that the trade name of one enterprise

may not be used by another enterprise either as a trade name, or as

a trade or service mark

Trademarks perform four main functions

Distinguish the products or services of one enterprise from those of

other enterprises. Examples: Coca-Cola vs Pepsi.

Refer to a particular enterprise, not necessarily known to the

consumer, which offers the product or services on the market.

Refer to a particular quality of the product or service for which it is

used, so that consumers can rely on the consistent quality of the

goods offered under a mark. Examples: ISO9000, GMP Certified.

Promote the marketing and sale products, and the marketing and

rendering of services. Example: Xerox, Kleenex

© Copyrights

Refers to journal articles, papers, books, painting, sculptures, films and

technology based works such as computer programs and electronic data

bases

Copyright owner can prohibit or authorise:

Reproduction in various forms such as print or recording

Distribution of copies

Its public performance

Broadcasting or other communication to the public

Its translation into other languages

Its adaptation into another form of work – such as novel into a

screenplay

Industrial and art designs

Ornamental or aesthetic aspect of a useful article

Shape, pattern or colour of the article

Visual appeal and perform its intended function efficiently

Must be able to be reproduced by industrial means

Trade secrets and confidential information

Technological know-how (trade secrets) is not considered IP but has

legal liabilities through criminal laws against disclosure of trade secrets

and confidential information.

Trade secrets

Formula, method, practice, process, design, instrument, pattern, business

practice.

not generally known to the public

confers some sort of economic benefit on its holder (where this

benefit must derive specifically from its not being generally known,

not just from the value of the information itself)

is the subject of reasonable efforts to maintain its secrecy

Examples of trade secrets

Manufacturing and preparation methods, business models and contacts,

certain performance characteristics of devices and systems, chemical

compositions, ingredients, etc

Publications vs. Patents

Are publications and patents conflicting concepts?

NO. Studies suggest that:

Research results are both patented and published

Strong correlation between research and commercialisation activity

Faculty can do both basic and applied research

Studies show that financial incentives have increased the probability

of inventions 10-fold, keeping research productivity roughly the same

Inventor’s academic publication record is highly correlated with the

chances of his/her invention to be of interest for commercialisation

However:

Publications are more recognised among peers

Author’s name counts in publications

Citation index looks at author’s names

University promotion policies encourage publications more than

patents

Publications bring in fame and recognition

Inventor is not as much recognised as the invention itself

Inventors bring in money

But:

Things are changing in the universities and scientific institutions

More emphasis and encouragement for inventions and

commercialisation