UNIT-V

NEW DEVELOPMENTS OF INTELLECTUAL PROPERTY

NEW DEVELOPMENT IN TRADE MARKS LAW:

The Internet:
Trademark owners throughout the world are struggling with new issues presented by
increased electronic communication, primarily that occurring through the Internet. The
Internet derives from a network set up in the 1970s by the Department of Defense to
connect military and research sites that could continue to communicate even in the event of
nuclear attract.
In the 1980s, the National Science Foundation expanded on the system, and its first
significant users were government agencies and universities.
 In the early1990s, however, it became apparent that the system could provide a
global communication network, allowing people from all over the world to talk with
each other; send written messages, pictures, and text to each other; and establish web
pages to advertise their ware and provide information to their customers.
Assignment of Domain Names:
➢ A company’s presence on the internet begins with its address or domain name
not only serves as a locator for a company but also functions as a designation of
origin and a symbol of goodwill---a trademark.
➢ There are two portions to a domain name: the generic top-level domain, which
is the portion of the name to the right of a period (such as .gov or .com) and the
secondary level domain, which is the portion of the name to the left of a period
(such as “kraft” in Kraft.com”).
➢ Disputes frequently arise between owners of registered mark and owners of
domain names whose domain names similar or identical to the registered marks.
Internet Corporation for Assigned Names and Numbers [ICANN]:
▪To help resolve the problems in the domain names registration and use process
▪The government created the ICANN
▪It is a nonprofit corporation
▪It is governed by a board of directors elected in part by various members of the Internet
Community.
▪ICANN are authorized to register domain names ending with .com, .org and .net
▪Registrations usually last one year, at which time they can be removed or will expire.
▪Registration requires a representation that the person seeing to register the name is not doing
so far an unlawful purpose and does not know of any infringement
▪ICANN recently added seven new top-level domains, including .biz and .info
NEW DEVELOPMENT IN COPYRIGHT LAW:
While acknowledging that clothing is a useful article and thus not subject to
copyright protection, a New York Federal court ruled that lace design, copyrighted as
writing and incorporated into wedding dresses, were protectable and enjoined another
maker of wedding dresses from making or marketing copies. Similarly, detailed
embroiders or some other two dimensional drawing or graphic work affixed to a portion
of a garment may be copyrightable.
A federal court in California recently held that while type fonts themselves are not
protectable under copyright law, a software program that generated and created the
typefaces was protectable.
As soon as Stephen King sold his book riding the Bullet exclusively in an Internet
format, an individual cracked the copyright protection software and posted free copies of
the book on the Internet. The publishers responded by adopting stronger encryption
technology. Similarly, in 2000, Mr. King suspended online publication of a serial novel
because too many individuals were downloading the work without paying it.
NEW DEVELOPMENT IN PATENT LAW:

The patent Act has proven remarkably flexible in accommodating changes and
development in technology. Thus advisement in technology generally has not necessitated
changes in the stately governing patent protection.
Business method and software patent: Many of the cutting-edge issues in patent law
related to patents for computer software. For several years, the conventional wisdom has
been that unless a computer program had significant commercial value and application patent
protection was often counterproductive or ineffective in that the PTO often took two years to
issue a patent, roughly the same time it took for the software program to become absolute.
Biotechnology patent: Medicines, Science, agricultural and pharmacology present the other
cutting-edge issues in patent law. Research into genes may hold the key to curing disease
throughout the world. Agricultural research may hold the key to providing sufficient food for
the world’s ever- increasing population.
American Investors Protection Act of 1999 [AIPA]:The AIPA was signed into law in
1999 and represents the most significant changes to patent law in twenty years. Although
some of the provisions of AIPA have been discussed earlier, its key subtitles are as
follows:

➢ Inventors’ Right Act of 1999

➢The First Inventor Defense Act of 1999
➢The patent term guarantee act of 1999
➢The domestic publication of Foreign filed patent application act of 1999
➢The optional Inter parts reexamination procedure Act of 1999
INTELLECTUAL PROPERTY AUDITS:
Many companies believe that copyright extends only to important literary works and
therefore fail to secure protection for their marketing brochures or other written materials.
Similarly, companies often fail to implement measures to ensure valuable trade secrets
maintain their protectability. Because clients are often unaware of the great potential and
value of this property, law firms often offer their clients an intellectual property audit to
uncover a company’s protectable intellectual property. The IP audit is analogous to the
accounting audit most companies conduct on an annual basis to review their financial status.
Another type of IP investigation is usually conducts when a company acquires another
entity. At that time, a thorough investigation should be conducted of the intellectual property
of the target company to ensure the acquiring company will obtain the benefits of what it is
paying for and will not inherit infringement suits and other problems stemming from the
targets’ failure to protect its IP. This type of IP investigation is generally called a due
diligence review inasmuch as the acquiring company and its counsel have an obligation to
duly and diligently investigate the target’s assets.
Conducting the Audit:
The first step in the audit should be a face-to-face meeting of the legal team and company
managers.
The legal team should make a brief presentation on what Intellectual Property is, why it is
important to the company, and why and how the audit will be conducted.
Managers will be more likely to cooperate if they fully understand the importance of the
audit.
Obtaining this kind of “buyin” from the clints managers and employees will speed the audit
and reduce costs.
Moreover, education about the importance of intellectual property helps ensure that
managers consider ways to further protect a company’s valuable assets and remain alert to
possible infringements of the company’s Intellectual capital or infringements by the
computer of other’s right.
Finally, having, outside counsel involved in the process will ensure that communications
related to the audit are protected by the attorney-client privilege.
▪ International patent law
▪ International copyright law
▪ International trademark law
International intellectual property law is a patchwork area of intersecting multilateral
and bilateral agreements and their resulting harmonization of national law. It has become
an increasingly important and frequently litigated areas particularly in patent, copyright
and trademark arenas.

In addition, in the past few decades, there have been louder calls for the protection of
domain names, databases, software, and traditional knowledge. Many of these cutting
edge intellectual property issues are addressed on an international level through the World
Intellectual Property
Organization (WIPO).
International patent law
• WIPO is a United Nations agency "dedicated to developing a balanced and
accessible international intellectual property (IP) system, which rewards
creativity, stimulates innovation and contributes to economic development while
safeguarding the public interest." WIPO's PatentScopedatabase allows you to "do
full-text search/es in over 1.7 million published international patent applications
from the first publication in 1978."
Treaties regarding patent law

Specific treaties that impact patent law:

▪ Paris convection for the protection of ip
▪ Berne convection for the protection of literary and artistic works
▪ Patent cooperation treaty
▪ Patent law treaty
PCT – The International Patent System

The Patent Cooperation Treaty (PCT) assists applicants in seeking patent

protection internationally for their inventions, helps patent Offices with their
patent granting decisions, and facilitates public access to a wealth of technical
information relating to those inventions. By filing
one international patent application under the PCT, applicants can simultaneously
seek protection for an invention in 148 countries throughout the world.
In general terms, your international patent application, provided that it complies with the
minimum requirements for obtaining an international filing date, has the effect of a national
patent application in or for all PCT Contracting States. Moreover, if you comply with certain
formal requirements set out in the Treaty and Regulations, which are binding on all of the
PCT Contracting States, subsequent adaptation to varying national formal requirements will
not be necessary.
Patent-Scope

• The PATENTSCOPE database provides access to international Patent Cooperation

Treaty (PCT) applications in full text format on the day of publication, as well as
to patent documents of participating national and regional patent offices. The
information may be searched by entering keywords, names of applicants,
international patent classification and many other search criteria in multiple
languages.
This is an example of search
in the database of the
world’s total patents.

There are even several

options in the search
details.
The PCT Applicant’s Guide is updated almost every week with information
received by the International Bureau. Users of the Guide who wish to see when
any individual page of the Guide was last updated, can check the date printed at
the foot of that page.

The details regarding the treaty, regulations, administrative instructions,

time limit calculator, the forms such as PCT/RO/101(request form),
PCT/1PEA/401(demand form), fees, FAQ’s and all the latest updates are
avilable in the WIPO website i.e

www.wipo.int/PCT
International trademark law
About int.trademark
➢ Registration of trademarks in multiple jurisdictions around the world is
governed by two independent treaties – the Madrid Agreement(the
Agreement) and the Madrid Protocol(the Protocol).
➢ Despite its name, the Protocol is a separate treaty and not a “protocol” to the
Agreement. Together, the Agreement and the Protocol are known as the Madrid
System for the International Registration of Marks .
➢ States party to the Agreement and/or the Protocol and organizations party to the
Protocol are referred to collectively as Contracting Parties. Together, they
constitute the Madrid Union, which is a Special Union under Article 19 of the
Paris Convention.
➢ The Madrid System is a centrally administered system (WIPO) for obtaining
a bundle of trademark registrations in separate jurisdictions, creating in effect
a basis for an "international registration" of marks.
Madrid – The International Trademark System

The Madrid System is a one stop solution for registering and

managing marks worldwide.File one application, in one language,
and pay one set of fees to protect your mark in the territories of up
to 96members. Manage your portfolio of marks through one
centralized system.
Benefits of madrid system
• Convenient: The Madrid System is a centralized filing and management procedure.
Through the Madrid System you can file one international application, in one
language (English,French) and pay one set of fees in Swiss francs to obtain
international registration in multiple territories.
• Cost effective: Filing an international application is the equivalent of filing a
bundle of national applications, effectively saving you time and money.
• Broad geographic coverage
Support to trademark law
• International Center for Trade and Sustainable Development (ICTSD) and United
Nations Conference on Trade and Development (UNCTAD), IPRsonline.org,
General Resources on IPRs (http://www.iprsonline.org/resources/iprs.htm)
includes online reports, articles, and web sites from 1989. It also subject
indexing to limit searches to narrower topics, including traditional knowledge,
biodiversity, and human rights.
Global Brand Database
✓ The Global Brand Database makes it easier to search over 19,530,000 records
relating to internationally protected trademarks, appellations of origin and
armorial bearings, flags and other state emblems as well as the names,
abbreviations and emblems of intergovernmental organizations.

✓ The Global Brand database allows free of charge, simultaneous, brand-related

searches across multiple collections.
For new users
WIPO helps in the following way
• How to search before filing
• How to file an application
• How to manage a registration

• The fees, fee calculator, time calculator are provided by the

WIPO
Contacts
• Opening hours: 9:00 a.m. to 6:00 p.m. Geneva time. Monday to
Friday.
• Madrid Customer Service
E-mail: intreg.mail@wipo.int

www.wipo.int/madrid
International copyright law

Copyright is a legal right created by the law of a

country that grants the creator of an original work
exclusive rights for its use and distribution.
This is usually only for a limited time. The exclusive
rights are not absolute but limited by limitations and
exceptions to copyright law, including fair use.
International copyright treaties
While no creative work is automatically protected worldwide, there are
international treaties which provide protection automatically for all creative
works as soon as they are fixed in a medium. There are two primary international
copyright agreements
➢ Buenos aires convention

➢ Berne convention for the artistic and literary works

Several other treaties that support this international copyright law
UCC(universal copyright convention) GENEVA
UCC(universal copyright convention) PARIS
TRIPS(agreement on trade related aspects of intellectual property rights)
And the final one which is the updated one that is WIPO copyright treaty.

Almost all the countries of the world has signed the treaties which include
austria, algeria, bangladesh, bangladesh, bhutan and India joined in the
international organization and several treaties.
International trade-secret law
Most simply, a trade secret is information that you do not want the
competition to know about. The law generally protects not just secret
formulas and designs, but even simple facts, such as the features that
might be introduced in the next iPhone, or which country a business
intends to go into next.
Trade secret law, like other forms of IP, is governed by national legal
systems. However, international standards for protecting secrets (called
“undisclosed information”) were established as part of the TRIPS
Agreement in 1995.
 Article 39 of the agreement provides that member states shall protect “undisclosed
information” against unauthorized use “in a manner contrary to honest commercial
practices”. The information must not be generally known or readily accessible, must have
value because it is secret, and must be the subject of “reasonable steps” to keep it secret.
This general formula for trade secret laws has been adopted by well over 100 of the 159
members of the World Trade Organization.
Articles 42 to 49 of the TRIPS Agreement cover enforcement, requiring that civil
judicial proceedings be available to enforce all IP rights and that “confidential information”
be protected from disclosure.
And for all the intellectual property protection internationally or individually
the world intellectual property organization(WIPO) is responsible
.
www.wipo/int
Thanking You