IP Panorama 2.0 Study Book

IP Panorama 2.
0
Study Book
Supplementary Material
for the IP Panorama 2.0 Multimedia Toolkit
IP Panorama 2.0
Study Book
Supplementary Material
for the IP Panorama 2.0 Multimedia Toolkit
What is IP Panorama 2.0?
IP Panorama 2.0 is an e-learning program which teaches you how to utilise and
manage intellectual property (IP) for business success. Developed by the Korean
Intellectual Property Office (KIPO), the World Intellectual Property Organization
(WIPO), and the Korea Invention Promotion Association (KIPA), IP Panorama 2.0 is an
updated version of the original IP Panorama program, which was released in 2007.
At a Glance Key Improvements

Development period 2019-2021 Modernised Design
No. of modules 8
Updated Case Studies
Duration 20 hours
Language English
Microlearning Approach
Cost Free Wider Target Audience
DEVELOPERS
The World Intellectual Property Organization (WIPO) is the UN agency
for IP services, policy, information and cooperation. WIPO’s mission is
to lead the development of a balanced and effective international IP
system that enables innovation and creativity for the benefit of all.
The Korean Intellectual Property Office (KIPO) is the body responsible for
IP rights in South Korea. It aims to strengthen national competitiveness
and job creation by establishing new markets and leading the growth of
corporations with intellectual property.
The Korea Invention Promotion Association (KIPA) is a public non-profit

organization which aims to promote IP and expand patent management
support in South Korea and abroad.KIPA works closely with KIPO
to provide a one-stop service for IP, including IP consulting, training,
valuation, and transaction services, as well as financial support.
Where to Study IP Panorama 2.0
AICC
Since 2010, WIPO, KIPO, KIPA and KAIST Three-Stage Course

have run the Advanced International 1 Online IP Panorama 2.0 & DL-450 courses
Certificate Course (AICC) on IP Asset
2 IP Essay
Management for Business Success. The
3 Final Seminar
AICC is a free, blended training program
that provides a path for even beginners to The AICC has grown over the years, with
become IP experts. IP Panorama 2.0 is the more than 13,000 participants from 179
first step of AICC, which comprises three countries having signed up for the course
steps in total. since its launch.
KIPO Academy
KIPO Academy is an educational platform run by KIPO’s
International Intellectual Property Training Institute and
KIPA, which hosts a variety of IP educational contents
SCAN ME
and programs for users of all ages. Visitors to the site can www.kipoacademy.kr
access tailored IP training programs for IP professionals,

e-learning contents such as IP Panorama 2.0, and animations
for young learners.
WIPO Academy
WIPO Academy is the center of excellence for IP education
for WIPO member states. The Academy works to help
build human capacity in IP through its various training
SCAN ME
programs. IP Panorama 2.0 will be among the courses on www.wipo.int/academy
offer on the WIPO Academy site.

IP Panorama 2.0
Study Book
CONTENTS
Module 1 The Role of IP 8
Module 2 Utilisation of IP and IPR 18
Module 3 Different Forms of IP and IPR 32
Module 4 ‌How to Ensure Your Business

is E-Savvy132
Module 5 The IP Strategy 146
Module 6 IP Audit 168
Module 7 IP Infringement 184
Module 8 IP Utilisation 204

TABLE OF CONTENTS
IP Panorama 2.0 Modules (8) Submodules (37) Time
1-1 What is IP? 9 min

M1 The Role of IP
1-2 Why is IP Important? 11 min
Utilisation of 2-1 How Can We Utilise IP & IPR? 10 min

M2
IP and IPR 2-2 Threshold Points in the Journey to the User 23 min
3-1 General Introduction 14 min
3-2-1 Works, and Copyright and Related Rights (1) 41 min
3-2-2 Works, and Copyright and Related Rights (2) 5 min
3-3-1 Inventions and Patents (1) 27 min
3-3-2 Inventions and Patents (2) 23 min
3-4-1 Designs and Industrial Design Rights (1) 21 min
3-4-2 Designs and Industrial Design Rights (2) 13 min
3-5-1 Trade Secrets (1) 8 min
3-5-2 Trade Secrets (2) 9 min
3-6-1 Marks and Trademarks (1) 19 min

Different Forms of
M3
IP and IPR 3-6-2 Marks and Trademarks (2) 19 min
3-7-1 Marks of Origin and Indications of Source (1) 13 min
3-7-2 Marks of Origin and Indications of Source (2) 12 min
3-8-1 Plant Varieties and Plant Breeders’ Rights (1) 9 min
3-8-2 Plant Varieties and Plant Breeders’ Rights (2) 5 min
Traditional Knowledge, Traditional Cultural

3-9-1 Expressions and Genetic Resources and 15 min
Associated IPRs (1)
Traditional Knowledge, Traditional Cultural

3-9-2 Expressions and Genetic Resources and 11 min
Associated IPRs (2)
IP Panorama 2.0
Study Book
IP Panorama 2.0 Modules (8) Submodules (37) Time
How to Use Existing Forms of IP Rights in

4-1 12 min
How to Ensure Your Establishing a Web Presence for Your Business
M4
Business is E-Savvy Do’s and Don’ts in Establishing your Web
4-2 30 min
Presence
5-1-1 Business and the IP System 15 min
Steps to Consider before Formulating an IP

5-1-2 13 min
M5 The IP Strategy Strategy
5-2-1 Formulating Your IP Strategy (1) 6 min
5-2-2 Formulating Your IP Strategy (2) 11 min
6-1 What Is an Intellectual Property Audit? 13 min

M6 IP Audit
6-1 Steps to Take When Conducting an IP Audit 25 min
7-1-1 What Is Infringement of an IPR? 7 min
7-2-1 Infringement and Copyright 20 min

M7 IP Infringement
7-2-2 Infringement and Trademarks 17 min
7-2-3 Infringement and Patents 23 min
8-1-1 Different Forms of IP Utilisation 10 min
8-1-2 Licensing and Franchising, Telling the Difference 12 min
Licensing in More Detail, How to Conclude a

M8 IP Utilisation 8-1-3 31 min
Licence Agreement
Growing and Scaling My Business through On-

8-1-4 3 min
going IP Management and Utilisation
Total Time Approx. 10 hours 565 min

IP Panorama 2.0
Study Book
1
Module
The Role of IP
1-1 What is IP?12

1-2 Why is IP Important?14
Module 1 The Role of IP
1-1 What is IP?

Submodule
1-2 Why is IP Important?
IP Panorama 2.0 M 1-1 / M 1-2
Overview
This chapter shows you how IP has been changing the world and why it is

important in the business field.
Learning Points
IP, Innovation, and Economic Growth
IP vs. IPR
IP is All Around Us
The Relevance of IP/IPR to a Business
IP/IPR Strategy & Business Strategy
Learning Outcomes
Identify five different types of IP that may be part of a business
Clearly differentiate between IP and IPR
Articulate why IP is important to a business
Understand the need for alignment between the business and IP strategy
Learning Points by Module and Location
Learning Point Module Location
<What is IP?> 1-1
0. Intro 1-1 0 min 15 sec
1. IP, Innovation, and Economic Growth 1-1 1 min 13 sec
2. IP vs. IPR 1-1 3 min 21 sec
3. IP is All Around Us 1-1 6 min 32 sec
- Key Takeaways for Module 1-1 1-1 8 min 58 sec
10 IP Panorama 2.0 Study Book

What is IP? Module 1-1
<Why is IP Important?> 1-2
1. The Relevance of IP/IPR to a Business 1-2 1 min 0 sec
2. IP/IPR Strategy & Business Strategy 1-2 3 min 58 sec
· Key Takeaways for Module 1-2 1-2 10 min 40 sec
Memo
11
15 sec
Module
0. Intro
1-1
C onversion of intellectual property into innovation continues to result in

economic growth.
Protecting intellectual property has become an important strategy in business.
CASE Did you know?
From the Telephone to the Smartphone M1-1, 7 min 7 sec
From Meucci’s 1871 voice apparatus to Bell’s 1876 telephone, phone evolution
underscores technological progress.
User demand fuels innovation and competitiveness via intellectual property
rights. As such, IP is reflected in every product around us and is closely related
to our daily lives.
1 min 13 sec
Module
1. IP, Innovation and Economic Growth
1-1
Innovation and new knowledge contribute between 50% and 80% of a country’s
economic growth potential, with any effort to achieve a robust society comprising
of a combination of economic and social prosperity.
This is also clear from United Nations

Sustainable Development Goal 9, which
states that “without technology and “without technology and innovation, industrializatin will not happen,
and without industrialization, development will not happen.”
innovation, industrialization will not United Nations Sustainable Development Goal 9
happen, and without industrialization,

development will not happen.”
Intellectual property has the power to distinguish one business from another and,
most importantly, from its competitors, as well as improve a business’ efficiency
and effectiveness to generate revenue and job creation.

What is IP? Module 1-1
3 min 21 sec
Module
2. IP vs. IPR
1-1
Intellectual property refers to creations of the human mind such as new

inventions, symbols, logos, names, computer programs, databases, literary and
artistic works, plant varieties, and designs.
If certain statutory requirements are met, then the IP may find protection as an
IPR in the form of a patent, trademark, copyright, plant varieties right, and design
patent, for example.
The choice remains whether or not one should seek formal protection for this
intellectual property. What are the costs and benefits? What are the best practices
and best solutions for you or your business, knowing that what works best for one
business may not work for another?
6 min 32 sec
Module
3. IP is All Around Us
1-1
IP is all around us and has become an integral part of our daily lives.
CASE Did you know?
Google M1-1, 8 min 25 sec
Despite “Google” being a common search term, Google’s brand

value exceeded USD 323 billion in June 2020, with its portfolio
including YouTube, G-mail, and Android. from a company name to Google it!
13
1 min 0 sec
Module
1. The Relevance of IP/IPR to a Business
1-2
It should be clear, regardless of what product or process a business makes or uses,
or what service it provides, that it is regularly using and creating a great deal of
intellectual property.
A business should consider how best to use the IP system to its own benefit,
remembering that intellectual property may assist it in almost every aspect of its
business development and competitive strategy.
It thus becomes important for a business to identify all the IP it owns or has access
to. It should ensure that the IP is protected, managed and enforced.
There are at least four reasons that any business should have an understanding
about intellectual property and the functioning of the intellectual property system.
1 IP provides you with a recognized business advantage over your competitors.
2 It is important to know which IP you own and which IP you need to access.

3 It is vital that you are aware which intellectual property belongs to someone else and which
rights you could infringe upon.

4 IP is an intangible asset and may be reflected as such on your business’ balance sheet,
thereby increasing your business’ value and attractiveness for an investment, sale, or
merger.
4 reasons that you should understand IP and the IP System
1 IP provides you with a recognized business advantage over your competitors
2 It is important to know which IP you own and which IP you need to access
3 It is vital that you are aware which IP belongs to someone else and which rights you
could infringe upon
IP is an intangible asset and may be reflected as such on your business’ balance sheet,
4 thereby increasing your business’ value and attractiveness for an investment, sale, or
merger

Why is IP Important? Module 1-2
3 min 58 sec
Module
2. IP/IPR Strategy & Business Strategy
1-2
A patent strategy is but one aspect of an IP strategy. Patents are not relevant for
all businesses. As a result, not all businesses follow the patent route to secure
IP rights. However, this does not mean that a business that precludes its patent
strategy should exclude all forms of IP.
You must ensure that you are able to have an exclusionary monopoly in the areas
where you plan to carry out business, either yourself or through a licensee.
In the case of the fuel cell technology, it is possible that the fuel cell technology
will find protection via a patent and/or a trade secret, the trade name of the fuel
cells will be protected via a trademark, the instructions for use/assembly and any
computer programs via copyright, and the design of the fuel cells may be eligible
for industrial design protection.
Your businesses can utilise your intangible assets, IP, and IPR to carve out an
exclusionary right, and in this way, you can develop an effective business strategy
for a defined period.
IP and business strategy are integral to each other, with changes in one affecting
the other!
Memo
15
Quiz Module 1
Quiz 1
‌According to United Nations Sustainable Development Goal (SDG) 9, “without

and innovation, industrialization will not happen, and without industrialization, development will
not happen.”
‌Intellectual Property (IP) refers to creations of the human mind such as new inventions,
symbols, logos, names, etc. If certain statutory requirements are met, then the IP may find
protection as an Intellectual Property Right (IPR). For example, an invention may be protected
by a , a symbol or a logo or a name by a trademark.
‌A business strategy and an IP strategy are kind of analogous to the “chicken and egg” scenario.
An effective IP strategy should enable your strategy; in other words, you must
ensure that you have an exclusionary monopoly in areas where you plan to carry out business.
Memo

Module 1. Other Cases in the Module
Other Cases in the Module
Fuel Cell Case A Fuel Cell Start-up Company M1-2, 5 min 30 sec
The IP strategy must enable the business strategy. It means you must
ensure that you possess an exclusionary monopoly in the areas where
you plan to carry out business, either yourself or through a licensee.
Fuel Cell Case Patent Strategy M1-2, 7 min 3 sec
The patent strategy must be well thought out to cover the jurisdictions
where the technology will be marketed.
Fuel Cell Case Trade Secrets Strategy M1-2, 7 min 48 sec
The IP strategy needs to focus on maintaining the confidentiality of

trade secrets, especially when they will be licensed to licensees.
Fuel Cell Case Trade Name Strategy M1-2, 8 min 14 sec
This may require that the trademark is registered in every country where
the fuel cells will be made, used, sold, and/or exported to. It is thus likely
that the countries in which the trademark is registered will be greater
than the number of countries in which the patent will be filed.
Fuel Cell Case Copyright Strategy M1-2, 8 min 33 sec
The rights exist automatically when they are reduced to material form.
However, it is worth checking whether some countries also provide
patent protection for a computer program and its application, in which
case this can also be protected by a patent.
Fuel Cell Case Design Strategy M1-2, 9 min 8 sec
The design protection strategy will typically follow the patent protection
strategy, as design is an integral part of the functionality of the
technology.
17
IP Panorama 2.0
Study Book
2
Module
Utilisation of IP & IPR
2-1 How Can We Utilise IP & IPR?22

2-2 T
hreshold Points in the Journey
to the User24
Module 2 Utilisation of IP & IPR
2-1 How Can We Utilise IP & IPR?

Submodule
2-2 Threshold Points in the Journey to the User
Overview
Submodule 2-1
In this submodule, you will learn about the characteristics of IPR and how to use

them for commercialisation.
Submodule 2-2
In this submodule, you will learn about threshold points in the process of

creating IPR, target markets and competitors, and the process of protecting
businesses with IPR.
Learning Points
IP and IP Rights as tools in utilisation
The Journey to the End User, “from Ideation to Market”
Threshold points in the journey to the user
Learning Outcomes
Differentiate between an exclusive right and an exclusionary right
Understand the difference between utilisation and commercialisation
List the various routes to the end user
Understand the categories of threshold points that should be taken into account

before undertaking the journey of converting an IP creation into a product, process
or service for use by an end user
Apply the threshold points to each step in the journey to the user to determine

whether it could be a feasible innovation

How Can We Utilise IP & IPR? Module 2-1
<How Can We Utilise IP & IPR?> 2-1
1. IP & IPR as Tools in Utilisation 2-1 1 min 5 sec
- The Characteristics of IP and IPR 2-1 1 min 5 sec
2. The Journey to the End User, “from Ideation to Market” 2-1 5 min 45 sec
- Fuel Cell Case 2-1 5 min 55 sec
<Threshold Points in the Journey to the User> 2-2
1. Key Threshold Points 2-2 4 min 0 sec
- IP Creation 2-2 4 min 20 sec
- The Market and Competitors 2-2 6 min 45 sec
- IP Protection 2-2 9 min 28 sec
2. Application in Fuel Cell Case 2-2 14 min 45 sec
- IP Creation 2-2 15 min 0 sec
- The Market and Competitors 2-2 16 min 21 sec
- IP Protection 2-2 18 min 0 sec
Memo
21
1 min 5 sec
Module
1. IP & IPR as Tools in Utilisation
2-1
The Characteristics of IP and IPR

IP arises from human creativity, which can be inspired by various stimuli, including
both pure creativity and more practical industrial or commercial applications.
These creations, stemming from human ingenuity in solving problems, can
potentially have global applications.
IP can be developed and protected to prevent competitors from creating a

rival market, known as a “defensive IP strategy,” or to establish an exclusionary
monopoly for a business or potential licensees.
During the pending stage of an IP right, such as a patent or design application, it

cannot be enforced. Only after approval does it become enforceable, granting the
holder exclusionary rights rather than positive rights.
This means the holder can prevent others from using the creation but doesn’t
necessarily have the exclusive right to use it themselves, especially if it builds upon
someone else’s existing rights. There’s an important difference in that you’re not
entitled to do something exclusively for yourself, but entitled to exclude others.
This distinction is crucial in understanding IP rights. For instance, adding a fourth

leg to a patented three-legged table creates a new invention, but it also infringes
upon the original patent. Hence, while the innovator can prevent others from
making a four-legged table, they can’t make it themselves without rights to the
original three-legged design.
IP rights, which sometimes grant exclusive rights but more often establish an
exclusionary monopoly for a set period, are tools, not ends in themselves. The
ultimate goal is to apply the
solution embodied in the IP to
real-world problems. Despite
having exclusive or exclusionary
rights, the path from IP creation to
end-user is long and challenging,
with success not guaranteed.

How Can We Utilise IP & IPR? Module 2-1
5 min 45 sec
Module 2. The Journey to the End User,

2-1 “from Ideation to Market”
Fuel Cell Case

Revisiting the example from Module 1, your Chile-based start-up in the renewable
energy sector has improved fuel cell manufacturing, outpacing competitors in
Canada and South Africa.
You aim to serve Chilean and South American markets, eyeing licensees in various
international locations for manufacturing needs beyond South America. In this
scenario, three primary routes to reach the end user are identified:
1 Developing and selling the fuel cells directly to end users by building manufacturing
capabilities within your start-up.
2 Licensing rights to a third party for manufacturing and selling the fuel cells, while retaining
the IP ownership. This licensing agreement permits another party to use your IP rights
under stipulated terms, including receiving royalties from them. (See Module 7 for the
different license types)
3 Selling your IP rights through an assignment, transferring all ownership and control to a
third party who can then utilize or license the IP as they wish.
It’s emphasized that end users might seek either commercial gains or social
benefits, and innovations can offer non-monetary returns as well.
CASE Did you know?
What is a fuel cell? M2-1, 5 min 55 sec
A fuel cell is effectively an alternative to a battery - it is an

electrochemical cell that converts chemical energy (often
hydrogen) and an oxidising agent (often oxygen) into electricity.
Fuel cells were invented in 1838 and find application in electric
vehicles (including boats, cars, airplanes, forklifts, and bicycles),
as a back-up power source, and portable power systems.
23
4 min 0 sec
Module
1. Key Threshold Points
2-2
IP’s journey to the user or the market involves navigating various “threshold
points” which fall into three categories: IP creation, market and competitors,
and IP protection. These points, critical in determining the path of an IP, are
interconnected and can influence each other; for instance, market problems can
spur new IP creations, and vice versa.
Though seemingly more pertinent to technological IPs, these threshold points are
applicable to all IPs. Occasionally, IPs bring revolutionary changes to the market,
like smartphones and big data innovations. More often, IPs evolve through efforts
to enhance existing products or services.
Understanding and analyzing these threshold points is the first essential step in
the IP’s journey to the end user. It aids in making informed decisions regarding
the viability of progressing with the IP, such as in the case of deciding on
manufacturing fuel cells in the previous example.
IP Creation
To create viable IP, it is important to address several questions:
What problem does the solution address, and is there a market for it? For instance,
a quicker-drying nail varnish addresses the issue of smudging due to impatience.
Is the solution scientifically

New cancer drug
and technologically sound, in clinical trails
and can the results be

reproduced consistently? Did it prove
Did it its anticancer effect
For example: verifying a new reproduce from an in vitro
its anticancer test to a clinical
cancer drug’s effectivineness effect? trial?
through repeated successful
trials.
Are there any inherent or unintended risks involved with the IP creation, such as
publicizing a community’s traditional knowledge through a recipe book?

Threshold Points in the Journey to the User Module 2-2
Is creating the IP techno-economically feasible without incurring unrecoverable

costs? For example, assessing if a new drug encapsulation method is financially
viable for manufacturers considering the high setup costs.
The Market and Competitors

Identifying whether the IP creation satisfies a major or a minor need helps in
foreseeing the potential market size. For instance, a COVID-19 diagnostic kit in
2020 would have a large market compared to a kit for a rare disease.
Understanding the unique benefits and competitive advantages of the new IP

creation is crucial. For example, genetically modified passion fruits with fewer
seeds cater proficiently to the juicing industry.
Determining if the market is pre-established or requires development is essential.

Products like the Segway entered a yet-to-be-established market, implying a need
to build a customer base from scratch.
Is this a market experiencing growth with room for additional competitors?
This question helps to gauge the potential lifespan of the market and the level of
investment that might be justified for a product that may not have a long-term
presence. For instance, while the smartphone sector is expanding, phones that are
not compatible with social media apps are part of a declining market.
Where are the major markets located? This question is crucial for strategizing,
especially when a local market is nonexistent, directing focus towards exploring
export options and the viability of entering international markets. Take, for
example, the case of surfboard and snowboard wax; if your country is landlocked
and experiences warm weather, the local market is not your target.
There is
no local demand
for my wax.
I have to
find customers
abroad!
25
IP Protection
What type of Intellectual Property Rights (IPR) is suitable and effective for the IP
created? This is vital as a single product or service might necessitate various IP
protections. For instance, Coca-Cola leveraged trade secrets to shield its formula,
in addition to utilizing trademarks, copyrights, and designs for brand protection.
Is there existing prior art/right hindering the legal safeguard of the IP? This
question aims to determine whether or not one may obtain an exclusionary right.
Consider the example of clothing incorporating insecticides. Although it may be
new for the clothing industry, materials which incorporate insecticides are already
available.
Can the IPR give you strong protection? This question aims to assess if it is
possible for a competitor to tweak your product, process and service so easily that
your IP right will no longer grant you an exclusionary right. In this case, seeking
formal IP protection or the cost associated with it may not be the appropriate
path.
Is it possible to detect and prove infringement of IPR? It’s essential to have the
capacity to affirm and enforce the rights protected by IPR. For instance, with
computer programs, including “junk code” can help in identifying infringement by
spotting unauthorized copies containing this unnecessary code.
Do you have freedom to operate? Understanding this is vital, especially when your
creation expands on existing IP. Like the scenario involving a patented four-legged
table, one cannot proceed with production without a justifiable right for the
three-legged table.
Is the IP creation too immature, risking IPR expiration before market entry?
Ensuring that IPR remains valid when the product reaches the market is crucial.
Sometimes, like in the pharmaceutical industry, the extensive regulatory processes
can outlast the original patent term, necessitating extensions where possible.
In which jurisdictions should the IP be protected? This question is important

in order to ensure that the business strategy and the IP strategy are aligned. In
general, one always wants to get protection in countries where the product will be
regularly used or most likely manufactured.

Improved method for

File for protection
gold mining
In countries In any possible

with gold mines countries
In countries In countries with

producing mining tools not many users
Is the field moving so quickly that IPRs are irrelevant? Sometimes, fast-evolving
sectors like the mobile app industry render IPRs, such as patents, less useful
because technology outpaces the patent approval process, bringing forth newer
versions before patent acquisition.
3 min 58 sec
Module
2. Application in Fuel Cell Case
2-2
IP Creation
Problem Solving: Fuel cells are more reliable compared to batteries and are
environmentally friendly, emitting water instead of carbon dioxide as a by-
product.
Scientific/Technological Feasibility: It is necessary to verify that

the research conducted at the
university is thorough and that the
prototype is scientifically feasible,
which must be confirmed during Verification prototype Pilot and
by research development commercial
pilot and commercial phases. phase check
Risks: There is a risk of combustion if the hydrogen source is unstable.
Manufacturing costs Sales returns

Techno-Economic Feasibility: An analysis
must be carried out to determine the
manufacturing cost of a single fuel cell
and the potential revenue from sales.
27
The Market and Competitors

Market Need: The high demand in the electric vehicle industry means the fuel cell
meets a significant need.
Competitive Advantages: Offers a faster, more reliable manufacturing method for

fuel cells with enhanced energy storage capacity and a reduced carbon footprint.
Market Establishment: The market for fuel cells is already established.
Market Growth and Competition: It

is a growing market with room for
more players, with major competitors
in only two countries, one in Africa
and one in North America.
Major Market Locations: United

States, China, Germany, Korea, Japan,
and Australia.
IP Protection
Relevant IP Rights: A patent for the fuel cell manufacturing process and/or the
specific arrangement of the fuel cells, trade secrets for the specific manufacturing
process, trademarks for the business and the fuel cells, copyrights for the
computer program, instructions for use/assembly, and designs for the fuel cell
arrangement.
Fuel Cell Case
Prior Art/Rights: A search for existing technology and rights is necessary to

understand the scope of protection for the fuel cells.
Strength of IP Protection: Depends on how the new fuel cell differs from that of its
competitors and the complexity of its manufacture.

Infringement Detection and Proof: The specific arrangement of the fuel cells
makes any infringing product on the market identifiable, and distinctive trade
names also facilitate infringement detection.
Freedom to Operate: If the start-up’s fuel cells are an improvement over those
made by companies in South Africa or Canada, then rights will need to be secured
through a license or assignment.
Timing of IP Protection: IP protection should be sought at an early stage to

ensure the novelty of the improved or adapted product, with anticipation that the
commercial production process will not be so prolonged that the patent expires
before the product reaches the market.
Jurisdictions for IP Protection: Patent and design protection should be sought in

the United States, China, Germany, Korea, Japan, and Australia, as well as South
Africa, Canada, and all South American countries. Trademark protection should
be obtained in all countries where the fuel cells will be produced, used, sold, or
exported to.
Memo
29
Quiz Module 2
Quiz 1
‌In most cases, existing inventions are built upon and therefore the IP right is not a positive
right. In other words, it does not give the rights holder the right to exclusively make the product,
perform the process or provide the service described in the specification. Instead, it gives the
rights holder the right to stop anyone else from doing that which is described in the specification
of the granted right, which is called an .
‌There are at least three available routes to the end user. The first route is to develop the
of the fuel cells yourself, as the start-up company. The second route
is to the rights to a third party to manufacture and sell the fuel cells on your behalf.
A third possible route to the end user is to your IP right to a third party, also known as an
.
Memo

Module 2. Memo
Memo
31
IP Panorama 2.0
Study Book
3
Module
Different Forms of
IP and IPR
3-1 General Introduction34

3-2 W
orks, and Copyright and
Related Rights40
3-3 Inventions and Patents52
3-4 D
esigns and Industrial Design
Rights 68
3-5 Trade Secrets 80
3-6 Marks and Trademarks 88
3-7 M
arks of Origin and Indications
of Source 100
3-8 P
lant Varieties and Plant
Breeders’ Rights110
3-9 T
raditional Knowledge,
Traditional Cultural Expressions
and Genetic Resources
and Associated IPR120
Module 3 Different Forms of IP and IPR
Submodule
General Introduction
3-1
IP Panorama 2.0 M 3-1
Overview
To effectively identify, manage and use your own IP, it is essential to have a clear
understanding of the different forms of IP and protection options available via
IPR. This submodule is about global minimum standards and forms of IP and IPR.
Learning Points
Global Minimum Standards
Forms of IP and IPR
Learning Outcomes
Understand that there are many treaties, agreements and conventions for IPR (s),
but IPR (s) are rights determined by each jurisdiction
Identify the forms of IP and the corresponding IPR (s)
<General Introduction> 3-1
1. Global Minimum Standards 3-1 5 min 52 sec
- Birth of Protection for the Results of Human Intellect 3-1 6 min 1 sec
- The Modern Concept of IP 3-1 6 min 30 sec
2. Forms of IP and IPR 3-1 11 min 32 sec
- Two Big Categories of IPRs 3-1 11 min 42 sec

General Introduction Module 3-1
0 min 0 sec
Module
0. Intro
3-1
In order for us to be able to effectively identify, manage and use our IP, we need
to have a clear understanding and appreciation of the different forms of IP and
how these different forms can be protected by IPR.
IP is governed by a number of global “rules for the game”, however, in general and
although IP is global, an IPR is a territorial right. Each country has its own IP laws,
and protection in one country does not automatically mean protection in another.
With the exception of copyright, you have to choose the countries in which you
would like to obtain an IPR.
A single product, process or service may have more than one form of IP which
may find protection through more than one form of IPR.
CASE Did you know?

Coca-Cola M3-1, 2 min 6 sec
Coca-Cola is a consumer product exemplifying the effective use of IP

and IPR, including copyrights (Design of bottles, Design of logos), patents
(Method of making a barrier coated plastic bottle), designs (Design of
the bottle), trademarks (Logo, Script design), and trade secrets (Formula
for making). Its successful monopoly has relied upon well-developed IP
strategies and careful management. The real value of Coca-cola lies in its
instantly recognizable brand.
Smartphones M3-1, 4 min 57 sec
The smartphone can be protected by various forms of IP including

copyrights (design of the phone, Logotype on the phone, Apps, Business
plan for the phone), patents (Manufacturing methods, Camera, Systems
for receiving and sending information), designs (Design of the phone,
Graphic profile), trademarks (Name of the phone, Name of the company
who makes the phone), and trade secrets (New areas of use, Concept
for selling the phone). This means that to properly protect any product
or service, it should be safeguarded not just by one type of IPR, but by a
combination of different IPRs.
35
5 min 52 sec
Module
1. Global Minimum Standards
3-1
Birth of Protection for the Results of Human Intellect

The origin of protecting intellectual achievements can be traced back to 500 BC in
a Greek colony in Italy, where a “one year patent for any new refinement of luxury”
was granted.
The Modern Concept of IP

The modern IP concept began in the UK with the 1623 Statute of Monopolies for
patents and the 1710 Statute of Anne for copyrights.
The Paris Convention for the Protection of Industrial Property was the first major
step taken to offer the same protection to natives and foreigners and to provide a
framework for minimum guidelines on international IP protection.
The Berne Convention for the Protection of Literary and Artistic Works set out the
minimum requirements for protection in the area of copyright and related rights.
There exists a considerable number of multilateral instruments that set minimum

standards for IPR, such as the Patent Cooperation Treaty and Patent Law Treaty
for patents, the Hague Agreement and Locarno Agreement for industrial designs,
the Madrid Agreement, Vienna Agreement, and Singapore Treaty for trademarks
and related rights, the Rome Convention and the WIPO Copyright Treaty for
copyrights, along with others like the International Convention for the Protection
of New Varieties of Plant, Budapest Treaty, and Nairobi Treaty.
International
Treaties for
Industrial
Property

General Introduction Module 3-1
International
Treaties for
Copyright
Article 27 of the Universal Declaration of Human Rights (UDHR), proclaimed by

the United Nations General Assembly in 1948, states “Everyone has the right to
the protection of the moral and material interests resulting from any scientific,
literary or artistic production of which he is the author.”
Article 27 of the Universal Declaration of Human Rights (UDHR, 1948)

by the united nations general assembly in paris
The TRIPS Agreement, effective from 1994 and binding for WTO member nations,
is a comprehensive multilateral treaty linking IP with trade. It encompasses
all IPR forms, including copyright and related rights, geographical indications,
industrial designs, integrated circuit layout-designs, patents, new plant varieties,
trademarks, trade names and undisclosed or confidential information.
The Agreement
on Trade-Related
Aspects of
Intellectual Property
Rights (TRIPS)
37
11 min 32 sec
Module
2. Forms of IP and IPR
3-1
Two Big Categories of IPRs
Industrial
Property
Copyright
Historically, influenced by the Paris and Berne Conventions, IPRs can be broadly
classified into two categories: industrial property, encompassing patents, designs,
trade secrets, trademarks, geographical indications, and plant breeders’ rights;
and copyright and related rights.
Deciding whether to first establish a business or develop new products, processes,

and services is not straightforward and varies depending on the situation, with no
set order for developing different forms of IP in a business’s creation, growth, and
market maintenance.
The question of whether to develop a strong brand first and then tailor products
accordingly ties back to Module 1’s (The Role of IP) concept of developing IP and
business strategies together discussed in Module 1 (The Role of IP).
Each business has its unique strategy and IP journey, without a fixed hierarchical
order of IP development stages. Typically, IP starts as copyright-protected works
and can evolve into patents,
industrial designs, or trademarks
as the business develops, like
a written invention in a notebook
that later becomes patented.

Module 3-1. Quiz
Quiz Module 3-1
Quiz 1
‌The modern concept of IP in the UK was initiated with the 1623 Statute of for
patents and the 1710 Statute of for copyrights.
‌The Convention for the Protection of Industrial Property was the first major step
in offering equal protection to both natives and foreigners in the field of IP.
‌The Agreement and the Agreement are crucial multilateral

instruments that set minimum standards for industrial designs in the realm of IPR.
‌Under the TRIPS Agreement, which became effective in 1994, WTO member nations are bound
to a comprehensive treaty that links IP with , encompassing all forms of IPR
including patents, trademarks, and copyrights.
Quiz 2
Article 2(1) of the Paris Convention reads as follows:
“Nationals of any country of the Union shall, as regards the protection of industrial property,
enjoy in all the other countries of the Union the advantages that their respective laws now
grant, or may hereafter grant, to nationals; all without prejudice to the rights specially
provided for by this Convention. Consequently, they shall have the same protection as the
latter, and the same legal remedy against any infringement of their rights, provided that the
conditions and formalities imposed upon nationals are complied with.”
Within the context of this Article, provide, in your opinion, the importance of global minimum
standards which allow nationals of one country the same protection as nationals of another
country? Your answer should not exceed 150 words. [5 marks]
Answer for the Quiz
39
3-2-1 Works, and Copyright and Related

Submodule Rights ( 1 )
3-2-2 Works, and Copyright and Related
Rights (2)
IP Panorama 2.0 M 3-2
Overview
There are many international conventions, agreements and treaties that provide
guidance around minimum requirements for copyright. This submodule is about
the different types of works, the requirements for copyright protection, and the
six aspects to copyright.
Learning Points
Works and Copyright – The different types and requirements for protection
Works and Related Rights – The different types and requirements for protection
Learning Outcomes
Describe the different types of works and requirements for copyright protection
Describe the different works and the requirements for protection as related rights
<Works, and Copyright and Related Rights (1)> 3-2-1
0. Works, and Copyright:

3-2-1 0 min 55 sec
The different types and requirements for protection
- What are Works? 3-2-1 1 min 15 sec
- General Requirement for Copyright Protection 3-2-1 2 min 10 sec
1. What Does Copyright Protect? 3-2-1 5 min 45 sec
- 9 Types of Works 3-2-1 5 min 55 sec

Works, and Copyright and Related Rights Module 3-2
2. What Does Copyright NOT Protect? 3-2-1 13 min 0 sec
3. How Do I Protect My Copyright? 3-2-1 18 min 25 sec
4. How Do I Know If a Work is Copyright Protected? 3-2-1 22 min 45 sec
- 3 Elements of Copyright Notice 3-2-1 23 min 53 sec
- Public Domain 3-2-1 25 min 15 sec
5. What Rights Does Copyright Give? 3-2-1 28 min 18 sec
- Economic Rights 3-2-1 28 min 58 sec
- Moral Rights 3-2-1 34 min 21 sec
6. How Long Does Protection Last? 3-2-1 36 min 8 sec
· Key Takeaways for Module 3-2-1 3-2-1 40 min 40 sec
1. Works and Related Rights:

3-2-2 0 min 21 sec
The different types and requirements for protection
- 3 Kinds of Related/Neighboring Rights 3-2-2 2 min 17 sec
- Related Rights Protection 3-2-2 4 min 18 sec
Memo
41
0 min 55 sec
Module 0. Works
‌ and Copyright: The different types
3-2-1 and requirements for protection
International frameworks guiding minimum requirements for copyright protection

are the Berne Convention (1886), Geneva Convention (1971), Brussels Convention
(1974), WIPO Copyright Treaty (1996), WIPO Performances and Phonograms Treaty
(1996), Beijing Treaty (2012), and Marrakesh Treaty (2013), all administered by
WIPO, and TRIPS (1995), administered by the World Trade Organization (WTO).
What are Works?

Copyright provides legal protection to
a wide variety of creative, intellectual,
or artistic forms, collectively referred
to as “works.” These include books for
authors, paintings for artists, songs
for musicians, opinion pieces for
journalists, movies for actors, photos
for photographers, sculptures for
sculptors, buildings for architects,
plays for playwrights, and software or websites for computer programmers or web
developers.
General Requirements for Copyright Protection

Works that are independently created and not copied from others generally meet
the originality requirement for copyright protection, though the specific degree of
originality needed can vary by jurisdiction.
In some jurisdictions, an additional requirement for copyright protection is that

the work must be reduced to a material form, known as fixation.
Copyright protection is not subject to a work’s aesthetic value or perceived

quality; it applies equally to all works, whether they are considered beautiful or
unattractive, and does not require them to possess any literary or artistic merit to
qualify.

5 min 45 sec
Module
1. What Does Copyright Protect?
3-2-1
W hile there are various copyrightable works and no exhaustive list exists for
types or categories of works, identifying the 9 most commonly classified types or
categories is important for determining the extent of protection, duration, and
matters related to authorship and ownership of the copyrightable work.
9 Types of Works
1 Literary works: Novel, story, poetic work and dramatic work, etc.
2 Musical works: The actual music or melody, etc.
3 Artistic works: Drawing, architecture, and any other crafted work, etc.
4 Cinematograph films: Movies and television programs, etc.
5 Sound recordings: a storage of sounds or data or signal representing sounds, etc.
6 Broadcasts: signals carrying visual and/or audio content, etc.
7 Programme-carrying signals: signal embodying a program which is emitted and passes

through a satellite, etc.
8 Computer programs: a set of instructions which directs the operation of a computer, etc.
CASE Did you know?
Tattoo as an Artistic Work M3-2-1, 10 min 20 sec
Courts in both Australia and the United Kingdom held that a tattoo
could be regarded as an artwork and tattooing that image onto your
body is copyright infringement. The Copyright Agency in Australia
issued a licence for the use of an indigenous work as a tattoo.
43
13 min 0 sec
Module
2. What Does Copyright NOT Protect?
3-2-1
Copyright law does not protect an ‘Idea’, a ‘Method’, or a ‘System’ themselves, but
rather the specific way in which these are expressed in a creation.
Copyright law does not protect ‘Facts’ whether they are scientific, historical,
biographical, or news. Instead, it only protects the way these facts are expressed,
selected, or arranged.
‘Names, Titles, Slogans, and other Short Phrases’ are not eligible for copyright
protection. Single words, names, titles, slogans, and headlines are typically not
eligible for copyright protection, though some countries may offer protection if
they are highly creative.
‘Commonly Known Information’, ‘Official Government Works’ cannot be protected

by copyright in some jurisdictions.
‘Useful articles’ with a utilitarian function are not eligible for copyright protection.
However, features of these articles that can be identified separately and exist
independently of their utilitarian function may be eligible for copyright protection.
CASE Did you know?
RTSC vs. Feist Publications, Inc. M3-2-1, 14 min 28 sec
The court ruled that while RTSC held copyright for the telephone directory’s arrangement, this did not
extend to the factual details such as the names, addresses, and phone numbers within. Since Feist
used these facts and rearranged them in a new, originally expressed format in their directory, their work
qualified for copyright protection.
Rural Telephone Service Company, Inc. Feist Publications, Inc.

(RTSC) A rival directory
Kansas, USA Northwest area-wide telephone directory

18 min 25 sec
Module
3. How Do I Protect My Copyright?
3-2-1
Formal registration of a work is not necessary for it to have copyright protection.

As long as a work is independently created and not copied (with some minimal
degree of creativity required in some jurisdictions), it meets the originality
requirement and automatically receives copyright protection.
Most countries are members of international treaties and conventions ensuring

that a copyrighted work created in one country is automatically protected in all
member countries.
C opyright protection is territorial or jurisdictional in nature. Although the

international treaties and conventions set minimum requirements, they allow
member states discretion regarding certain requirements, such as the fixation to
material form, or variations in the protection duration for different types of works.
Although registration is not required for protection, some countries offer a

registration process for copyright, which is particularly useful for proving
infringement. Copyright infringement proceedings for works created in the United
States can be initiated only after receiving registration or a refusal of registration.
Memo
45
22 min 45 sec
Module 4. ‌How Do I Know If a Work is Copyright

3-2-1 Protected?
Although a copyright notice is not required for protection and its absence does
not mean the work is in the public domain, it is still strongly advisable to use one,
as it reminds others of the work’s protection and identifies the copyright owner.
3 Elements of Copyright Notice

A typical copyright notice should contain three key elements:
1 the word “copyright,” its abbreviation “copr.,” the symbol “©,” or simply “(c)”
2 the publication year of the work
3 the name of the copyright owner, who may be different from the author
Additionally, while not essential, the phrase “All Rights Reserved” or its variations
like “Some Rights Reserved” or “No Rights Reserved” can be added to indicate
the extent of copyright claims, especially when the work has been significantly
modified.
Works in the public domain are those without copyright and can be freely used by
anyone for any purpose. This includes:
1 works whose copyright protection period has expired
2 works that are not eligible for copyright protection
3 works where the copyright owner has explicitly abandoned their rights, for example, by
putting a public domain notice on the work “No rights reserved”
CASE Did you know?
Non-human Taking a Photograph M3-2-1, 25 min 37 sec
The US Copyright Office concluded that the picture was not copyrightable,
stating that only human-created works are eligible, excluding those made by
animals or machines without human involvement.
The UK IPO affirmed that non-humans can’t own copyright and stated
that whether a photographer owns copyright depends on their creative
contribution, a matter for the courts to decide.

28 min 18 sec
Module
5. What Rights Does Copyright Give?
3-2-1
The author gains both economic rights and moral rights for the copyrightable
work. The author may transfer ownership of the economic rights but not the
moral rights.
Economic Rights
The author’s economic rights protect the economic interests of the copyright and
allow for the owner to receive financial compensation for their creation.
Economic rights grant the copyright owner exclusive rights to authorize or

prohibit certain uses of a work. Generally, these economic rights include the
exclusive/exclusionary rights to restrict others from:
1 making reproductions or copies of the work in various forms
2 distributing the work to the public
3 renting or lending copies of the work
4 making translations or adaptations of the work (called a derivative work)
5 communicating the work to the public; and performing, displaying, or playing the work in
public
CASE Did you know?
Unauthorised Use M3-2-1, 31 min 16 sec
Daniel Morel, a photographer in Haiti, took photos of the 2010 earthquake aftermath. Agence France
Presse (AFP) and Getty Images distributed these without his permission after obtaining them from a
Twitter feed.
Morel sued for copyright infringement and won, receiving at least $1.2 million in damages.
47
Moral Rights
Moral rights safeguard an author’s creative integrity and reputation. These rights,
widely recognized but varying in scope by country (e.g., in the US, they apply
mainly to fine arts like paintings and sculptures).
Moral rights include the right to be named as the author of the work and the right
to protect the integrity of the work.
Unlike economic rights, moral rights cannot be transferred to a transferee,

because they are personal to the author. In some countries, an author may waive
his moral rights by a written agreement.
36 min 8 sec
Module
6. How Long Does Protection Last?
3-2-1
Copyright has a relatively long protection term, typically 50 to 70 years, varying by

jurisdiction and work type. After the copyright term expires, the work enters the
public domain, and the enforcement of its economic and moral rights becomes no
longer applicable.
The calculation of when the term of the copyright starts depends on what
the work is and may differ depending on whether the work was created by an
individual author or a corporate author.
1 Literary, musical, and artistic works (excluding photographs): Copyright protection is

always for the lifetime of the author plus a determined number of years.
for for 28 years for 56 years… the lifetime of the the lifetimes of the
14 years with a 28-year 28 years renewable author plus 50 years, author plus 70years,
renewal for a further or 75 years for or 95 years for
28-years corporate rights corporate rights
1928 1984 2003 2023
Original law Amendment Amendment Amendment

in 1909 in 1979 in 1998

CASE Did you know?
Mickey Mouse Rule M3-2-1, 37 min 58 sec
U.S. copyright law initially provided 14 years of protection, which was extended
to 56 years by 1909. Mickey Mouse, created in 1928, was initially protected until
1984. However, reforms in 1976 and 1998 extended corporate copyright to 95
years, meaning Mickey Mouse’s copyright will now expire in 2023.
2 Cinematograph films, photographs and computer programs: Copyright protection typically

lasts 50 to 70 years from the end of the year in which the work was either made public with
the owner’s consent or first published, whichever duration is longer.
3 Sound recordings: Copyright protection is generally 50 to 70 years from the end of the year
in which the recording was first published.
4 Broadcasts: Copyright protection is generally 50 to 70 years from the end of the year in
which the broadcast first took place.
5 Programme-carrying signals: Copyright protection is generally 50 to 70 years from the end

of the year in which the signals are emitted to a satellite.
6 Published editions: Copyright protection is generally 50 to 70 years from the end of the
year in which the edition is first published.
The duration of protection for moral rights varies by jurisdiction; in some

countries, these rights are perpetual, while in others, they expire alongside the
economic rights.
0 min 21 sec
Module 1. ‌Works and Related Rights: The different

3-2-2 types and requirements for protection
Related rights are granted to individuals or organizations that perform literary

or musical works and record sound, and to broadcasting organizations that
broadcast or transmit signals, enabling them to prevent unauthorized use of the
performances, productions, or broadcasts and to stop piracy.
49
3 Kinds or Related/Neighboring Rights

R ights of performers in their performances typically require obtaining the
performer’s consent before recording, broadcasting, or delivering a live
performance via cable, as well as before reproducing recordings of their
performances, and in certain countries include a rental right for phonograms and
audiovisual works.
Rights of producers of sound recording (phonograms) enable them to take legal

action against unauthorized copying, use, or distribution (piracy), control the
reproduction of their recordings, receive fair remuneration when these are
broadcast or communicated to the public, and with many countries, prohibit the
importation and distribution of their phonograms.
Rights of broadcasting organizations allow them to control the rebroadcasting,

fixation (recording), and reproduction of their broadcasts, and in certain countries,
include authorizing or prohibiting cable transmission. The protection offered by
related rights does not detract from any copyright protection of the works being
performed, recorded, or broadcast.
Related Rights Protection

M any countries protect the related rights of performers, producers, and
broadcasters for 50 to 70 years after the performance, fixation, or broadcast.
In some countries, the related rights of performers or phonogram producers are
protected for a period of 20 years after the performance occurs or the fixation is
made, and the related rights of broadcasting organizations are protected for 20
years after the broadcast.

Module 3-2. Quiz
Quiz Module 3-2
Quiz 1
‌In some jurisdictions, an additional requirement for copyright protection is that the work must
be reduced to a material form, which is known as .
‌Copyright law does not protect “ ,” whether they are scientific, historical,
biographical, or from the news.
‌A typical copyright notice should contain three key elements: the word “copyright,” its
abbreviation “copr.,” the symbol “ⓒ,” or simply “(c)”; the of the
work; and the name of the copyright owner.
Quiz 2
You are a singer who performs your own original songs for distribution through an online streaming
site. You collaborate with a talented guitarist in order to compose the melody for the lyrics that
you have written. Firstly, set out the requirements for copyright and then indicate which types of
works you and the guitarist will create and what copyright you will individually or collectively be
eligible for. Your answer should not exceed 150 words. [9 marks]
Answer for the Quiz
51
3-3-1 Inventions and Patents ( 1 )

Submodule
3-3-2 Inventions and Patents (2)
IP Panorama 2.0 M 3-3-1 / M 3-3-2
Overview
Submodule 3-3-1
Since the First Industrial Revolution (1765) to the Fourth Industrial Revolution
that we are living in now, many patents have been filed, from the steam train and
light bulb to the airplane and Internet of Things (IoT). This submodule is about
how to protect technological inventions and the requirements for patentability.
Submodule 3-3-2
Unlike copyright, trademarks, and industrial designs, patents must go through
a formal and substantive examination process before being registered.
Furthermore, patents are territorial in nature and patents in one country are
not recognized in others, and separate patent protection must be sought. There
are various options for filing patent applications including using international
registration systems, regional registration systems, filing directly into specific
jurisdictions, or via what is called a patent prosecution highway.
Learning Points
Subject Matter of Patent (eligibility)
Requirements for Patentability
Patent Protection – in One Jurisdiction
Patent Protection – in More than One Jurisdiction
Utility Model Protection
Learning Outcomes
Understand the requirements for patenting an invention
Describe the steps to obtain formal protection for your invention
Understand the questions for patenting an invention
Describe the steps to obtain formal protection for your invention

Inventions and Patents Module 3-3
<Inventions and Patents (1)> 3-3-1
0. Inventions and Patents:

3-3-1 1 min 3 sec
How patents protect technological inventions
1. Subject Matter of Patent (Eligibility) 3-3-1 5 min 16 sec
- Definition for Inventions 3-3-1 5 min 45 sec
- Exclusions 3-3-1 7 min 13 sec
2. Requirements for Patentability 3-3-1 21 min 5 sec
<Inventions and Patents (2)> 3-3-2
0. Formal Protection for Your Invention 3-3-2 0 min 20 sec
1. Patent Protection – in one Jurisdiction 3-3-2 2 min 0 sec
- Complete an Application 3-3-2 2 min 40 sec
- Formal Examination 3-3-2 7 min 46 sec
- Substantive Examination 3-3-2 8 min 15 sec
- Publication and Opposition 3-3-2 12 min 55 sec
- Grant and Registration 3-3-2 13 min 32 sec
- Maintaining Your Right 3-3-2 14 min 31 sec
2. Patent protection - in more than one Jurisdiction 3-3-2 14 min 50 sec
- The Priority Application Under the Paris Convention 3-3-2 15 min 25 sec
- The PCT Application 3-3-2 17 min 30 sec
(1) Complete an Application 3-3-2 18 min 33 sec
(2) International PCT Phase 3-3-2 19 min 19 sec
(3) National Phase 3-3-2 20 min 30 sec
3. Utility Model Protection 3-3-2 21 min 40 sec
53
1 min 3 sec
Module 0. ‌Inventions and Patents: How patents

3-3-1 protect technological inventions
When one reflects over the last 260 years or so, four somewhat distinct catalytic
areas of technological growth can be identified, each categorized as an industrial
revolution.
From the First Industrial Revolution to the Third Industrial Revolution, we saw the
invention of the steam engine, electricity, the light bulb, airplanes, nuclear power,
advanced computers, and biotechnology.
Finally, the Fourth Industrial Revolution brought the dawn of the internet, which is
fast advancing into the Internet of Things (IoT), with the potential of artificial
intelligence yet untapped. Throughout this journey, many patents have been filed
for various inventions, from the steam train and light bulb to the airplane and IoT.
It is thus clear that patents

are a tool in the advancement
of technology and can be
defined as “the application
of scientific knowledge for
practical purposes, especially
in industry.”
CASE Did you know?
Velcro Developed by an Individual Inventor

Ⓡ
M3-3-1, 3 min 20 sec
After walking his dog in the mountains in 1941, Swiss

inventor George de Mestral noticed that burrs were
stuck to this clothing. He recognised the potential
for a new fastener based on the natural hook-like
shapes on the surface of the burrs and filed a patent
application calling his new creation Velcro .
Ⓡ

5 min 16 sec
Module
1. Subject Matter of Patent (Eligibility)
3-3-1
Definition for Inventions

There is general agreement in all international and national legal frameworks on
the requirements for patentability; however, there is generally no consensus as to
how an invention should be defined.
Whereas in many jurisdictions an invention is defined negatively, in other words,

“by what it is not” and hence a list of exclusions are provided such that if an IP
creation falls within this category, it will not be regarded as an invention. This list
of exclusions is often used because the specific exclusions are more appropriately
protected by another form of IPR.
Thus, although these exclusions can differ among jurisdictions, there is typically
agreement across almost all of them that the following subject matter would not
be regarded as an invention.
Exclusions
1 Natural phenomena or a discovery of natural phenomena
2 Scientific theories
3 Mathematical Methods
4 Literary, dramatic, musical, and/or artistic works
5 Presentation of information
6 Schemes, rules, methods of performing mental acts, or playing games
7 Methods of doing business, or computer programs, or mobile applications
8 Varieties of plants or animals or biological methods for their production
9 Medical methods of treatment
10 Anything contrary to public order or morality
11 Admixtures
55
CASE Did you know?
Patent case on playing chess M3-3-1, 13 min 30 sec
Although the game of chess has been around for years, it is possible
to come up with a similar game that is different. For instance, Chess
Game, patented under US6446966B1, introduces a new piece called
a “Lord.” Patent registration is not possible for chess game rules, but
inventions on new chess boards and chess pieces can be patented.
New “Lord” piece
21 min 5 sec
Module
2. Requirements for Patentability
3-3-1
The subject matter of the invention must meet the eligibility requirement
The subject matter of the invention must not be excluded as per below (eligibility).
The invention must be new

New or novelty generally means absolute novelty. Novelty is judged from the date
that the patent application is filed (see Learning Point 2 below) and refers to all
prior art that was in the public domain immediately before the application was
filed.
Prior art refers to all “matter” made available to the public anywhere in the world
in written or oral form, through use or in any other way.
Any posts on social media (including websites, blogs, and YouTube), an email, a
conference, publication in a journal or newspaper, etc., would all constitute a
disclosure of the invention.
The invention must involve inventiveness

If the invention is regarded as being novel, then consideration is given to
inventiveness (also referred to as “non-obviousness” or “inventive step”).

This means that the invention must not be obvious to a person skilled in the art
having considered all information available in the public domain (the prior arts)
from the priority date.
Although novelty is an objective test, inventiveness is a subjective test, as the

examiner must place himself/herself in the position of a person skilled in the art
and assess whether or not that person would have easily arrived at the invention.
In determining whether the invention is inventive, the following matters are often
taken into consideration:
1 Would a person skilled in the art have easily tried the resultant inventive solution?
2 Did the invention have an unexpected result (such as significant effects)?
3 Did the invention provide a long-term solution to a recognised problem?
4 Was the invention a technical achievement which overcomes perceptions?
5 Was the invention a commercial realisation that meets a public need?
If the answer to anyone of these questions is “yes,” then the subjective test of
being inventive would likely have been met.
The invention must be capable of industrial application

This requirement means that the invention must be capable of being used, or
applied in trade or industry or agriculture. In general, inventions will always meet
this requirement.
Memo
57
Quiz Module 3-3-1
Quiz 1
‌The invention must be and . These are generally regarded as absolute

novelty, which is judged from the date that the patent application is filed.
‌The invention must involve , which is also referred to as “non-obviousness” or

“inventive step.”
‌The invention must be capable of , which means it can be used or

applied in trade or industry or agriculture.
Memo

Invention to Stop Cereal from Becoming Soggy M3-3-1, 4 min 43 sec
The invention is patented to keep your cereal crispy.

Fresh cereal in the upper bowl is portioned out at intervals into the lower, milk-filed bowl, thus
preventing the cereal from becoming soggy.
Attempting to Patent Naturally Occurring Genes M3-3-1, 7 min 42 sec
Myriad Genetics, Inc. filed patent applications from their findings

on the isolated DNA sequences for diagnosing a propensity to
cancer and identifying drugs.
Many parties challenged the validity of the scope of the claims in
these patents, and the Court held that the isolated DNA sequences are not patentable.
Is Cell-Free Fetal DNA a Natural Phenomenon? M3-3-1, 9 min 26 sec
Genomics company Illumina, Inc. filed an infringement suit against

Ariosa Diagnostics, Inc. for the use of its method without any
permission.
Ariosa claimed that the invention was related to a natural
phenomenon and hence was not eligible for patent protection.
The Court turned down Ariosa’s claim for the following reason: the
patent identifies a natural phenomenon, but the claims are for a
patent-eligible method of separating such DNA.
Application for a Patent Including Both Computer Programs and Business Methods
M3-3-1, 14 min 56 sec
Lenovo invented a way for automatically splitting payments

between multiple accounts and filed for a combination software–
and–business-methods patent.
The Comptroller of the Intellectual Property Office of Singapore Lenovo (Singapore) Pty Ltd
rejected the patent application. Lenovo thus appealed the decision,
and the judge later decided that the idea was patentable.
59
A Business Method Was Granted to Amazon M3-3-1, 16 min 42 sec
Amazon invented the one-click purchasing button and filed for

a business method patent.
After the patent was granted in 1999, anyone who wished to
use a one-click purchase button had to obtain a licence from
Amazon until the patent expired.
Wheeled Suitcase 1 M3-3-1, 25 min 42 sec
Mr. Bernard Sadow saw a wheeled skid steer loader in the

airport and came up with this idea: the travel suitcase on
wheels.
The casters had never been attached on a travel suitcase
before his invention. For this invention, he received United
States patent No.3,653,474, titled “Rolling Luggage.”
Wheeled Suitcase 2 M3-3-1, 25 min 42 sec
The wheel and suitcase existed before the patent was granted. So,
how did he get his patent for rolling luggage?
It is likely that the invention provided a solution for people who were
struggling with carrying heavy suitcases for significant distances
around an airport. The patent thus satisfied the requirements for
patentability: novel and inventive.
Memo

0 min 20 sec
Module
0. Formal Protection for Your Invention
3-3-2
Patents must go through a formal and, generally always, substantive examination

process before being registered.
Patents are territorial in nature and are valid only in the territory of the country
or region where they have been granted. Consequently, patents in one country are
not recognized in others, and separate patent protection must be sought.
Options for filing patent applications
1 International registration systems
2 Regional registration systems
3 Direct filing into specific jurisdictions
4 Patent prosecution highway
2 min 0 sec
Module
1. Patent Protection – in one Jurisdiction
3-3-2
The general procedure to obtain patent protection in one jurisdiction, for example,
the United Kingdom, is as follows:
Complete an Application
A patent application must be completed and submitted to the local IP office in
hard copy or via the online platform, along with the required documents (such as
a power of attorney (POA), a statement of inventorship, and the patent
specification and fee.
T he patent specification has a few sections

to it such as a title, bibliographic information,
drawings, a detailed description of the invention,
claims, and an abstract. The two most important
parts of a patent specification are the “detailed
description of the invention” and “the claims.”
61
“The detailed description of the invention” discloses the invention in clear and
precise terms. It is necessary to illustrate the new ideas or concepts by examples
to explain how to work or carry out the invention in practice so as to enable
a person skilled in the relevant field of technology to understand the claimed
invention and use the technical information contained in the patent specification.
The “quid pro quo” of patents means that if the invention is patentable and a
patent right is granted in exchange for the exclusionary monopoly given, the
patentee is obligated to teach the rest of the world how to perform the invention.
Sufficiency of
disclosure
For patents relating to microorganisms, all states party to the Budapest Treaty are
obliged to recognize microorganisms deposited as a part of the patent procedure.
This deposit forms part of the full disclosure of the invention.
The patent claims is a single sentence to define the invention with a list of
elements (or a list of steps in a method or process claim) and explains how they
cooperate/combine.
The claims define the scope of legal protection.
1 A broad claim will normally have few parts; and the parts that are listed are defined broadly.
2 A narrow claim will have more parts, or parts that are defined in a more restricted way.
3 A broad claim is more likely to be infringed than a narrow claim. However, a narrow claim is
more likely to be held valid by a court.
“Claims”
An example
claim for
an automobile

Formal Examination
The IP office then examines the application to make sure that it complies with
the administrative requirements or formalities (payment of fee, supporting
documents, and application form).
Substantive Examination
Some local IP offices, for example, South Africa, have a depository system where
documentary requirements alone need to be satisfied and hence do not perform
a substantive examination. If all the formal requirements are met, the patent will
proceed to be granted.
Substantive search and examination for patentability are performed with reference
to the relevant national patent law. A patent examiner will issue an opinion report
(referred to as an office action or an examination report) for consideration and
response.
Novelty is an objective test, and the examiner will search all relevant prior art and
determine whether the claims are novel.
Claims 3, 6, and 8 are found

to be novel, while claims 1,
2, 4, 5, and 9 lack novelty.
To overcome the novelty
objection, any one or more
limitations that serve novelty in one of claims 3, 6, and 8 will be incorporated
into claims 1, 2, 4, 5, and/or 9 such that the claims are narrower in scope. If this
limitation still embodies your commercial embodiment, it is acceptable to make
this amendment. If not, you should consider abandoning the application or
deleting the rejected claims.
Inventive step is a subjective test and hence should the examiner issue a report
stating that the claims were found to lack inventiveness, the “arguments” or
“responses to office action” (ROA) should be presented in writing to the examiner
explaining how the invention was arrived at and why it should be regarded
as inventive and amendments can be made to the claims to support your
arguments.
63
Publication and Opposition

Patent application may be published in an official gazette or journal so that any
third party may oppose its registration within a specified period of time in many
countries.
Grant and Registration

If there are no grounds for refusal, the patent is granted and should be registered
for formal legal protection in most jurisdictions. A registration certificate is issued
that is generally valid for 20 years from the date of the application, provided
renewal fees are paid.
Maintaining your Right

A registered patent may be renewed up until the maximum time period as
determined by the applicable national law by paying the required renewal fees.
14 min 50 sec
Module 2. ‌Patent protection - in more than one

3-3-2 Jurisdiction
If you want protection in more than one country, then basically you must follow
the procedure for filing a separate application in each country in which you would
like protection.
The Priority Application under the Paris Convention

If one decided after filing the UK application to also file in other jurisdictions
when claiming a priority right, the date of filing in the UK will serve as a priority
date for subsequent applications. This priority date gives the applicant 12 months
to file further applications in other countries which are members of the Paris
Convention and in which they may wish to obtain patent protection for the same
invention.

The Patent Cooperation Treaty (PCT) Application

A combination of the Patent Law Treaty (PLT) and the Patent Cooperation Treaty
(PCT) provide a comprehensive international registration system, which is
comprised of the international PCT phase and national phase.
1 Complete an Application
≐≐ An application for a patent must be completed using a request form, and submitted to an
office which is recognized as a Receiving Office (this could be your IP Office, an IP Office
of another jurisdiction, or a regional office) or to WIPO directly. The PCT application then
designates all Contracting States, which allows you to choose countries where the patent
is to be filed.
A Patent application
2 International PCT Phase

≐≐ After an international application is filed at the Receiving Office, WIPO publishes the
application on the PatentScope database. At the same time, an International Searching
Authority will perform a search and publish an international search report (ISR) as well as a
written opinion on this search as to the patentability.
≐≐ The applicant has time to make an even
more informed decision as to the potential
patentability of the invention and then in
what jurisdictions they would like to file
national phase patent applications. There
is also an opportunity in this phase of the
application to amend the scope of the
claims based on the written opinion.
3 National Phase
≐≐ After filing the provisional patent application (or the priority application), the deadlines for
entering the national phase are generally 30 or 31 months, but they can be shorter or longer
depending on jurisdictions. The combination of the PCT and PLT ensure that the maximum
formality requirements have been met and so for all countries which are members of both,
the formal phase of the national phase application is much easier.
65
≐≐ Once the local office of a designated Contracting State has received a patent application
from the International Bureau, it will proceed to examine the patent application with
reference to its own national law.
21 min 40 sec
Module
3. Utility Model Protection
3-3-2
Utility patents are often called “short-term patents (6~15 years of protection),”
“utility innovations,” or “innovation patents.” Utility models are suited for
protecting inventions that make small improvements to, and adaptations of,
existing products or that have a short commercial life and are often only offered in
certain fields of technology, such as mechanical devices and apparatus, and only
for products but not for processes.
Not all countries provide for a utility model and you should check the list of
available countries and the filing requirements on the WIPO website.
Memo

Module 3-3-2. Quiz
Quiz Module 3-3-2
Quiz 1
‌In a patent specification, the patent is a single sentence to define the invention
with a list of elements (or a list of steps in a method or process claim) and explains how they
cooperate/combine.
‌The priority date gives the applicant to file further applications in other countries
which are members of the Paris Convention and in which they may wish to obtain patent
protection for the same invention.
‌At the national phase of the PCT application, after filing the provisional patent application (or the
priority application), the deadlines for entering the national phase are generally ,
but they can be shorter or longer depending on jurisdictions.
Choose the appropriate word from the two words in brackets in the sentences given below.
A ( broad / narrow ) claim will normally have few parts and the parts that are listed are
defined broadly. A ( broad / narrow ) claim will have more parts, or parts that are defined
in a more restricted way. A ( broad / narrow ) claim is more likely to be infringed than a
( broad / narrow ) claim. However, a ( broad / narrow ) claim is more likely to be held
valid by a court.
Sufficiency of Disclosure M3-3-2, 5 min 3 sec
This requirement for sufficiency of disclosure was eloquently expressed in a judgment handed down
by a German Court in 2019, which reads as follows, “sufficient disclosure is given if the skilled person
is, without having to be inventive and without undue burden, capable to carry out the teaching of the
claim based on the complete disclosure of the patent including the description and the drawings, in
combination with the general technical knowledge at the application or priority date, in a manner such
that the success aimed for is achieved.”
67
3-4-1 Designs and Industrial Design Rights ( 1 )

Submodule
3-4-2 Designs and Industrial Design Rights (2)
IP Panorama 2.0 M 3-4-1 / M 3-4-2
Overview
This submodule provides an in-depth overview of designs and industrial design
rights, elucidates the difference between an unregistered and registered
industrial design right, and explores what advantage a registered right provides,
aiming to furnish readers with a comprehensive understanding of the subject.
Learning Points
Design as Applied to an “Article”
The Article as an “Article of Manufacture”
The Design as Applied to an Article Must Be Novel and/or Original
Unregistered Industrial Design Protection
Registered Industrial Design Protection – in One Jurisdiction
Registered Industrial Design Protection – in more than One Jurisdiction
Learning Outcomes
Describe how industrial design rights can carve out a unique look and feel for
your products
Describe the difference between an unregistered and registered industrial
design right and what advantage a registered right provides
<Designs and Industrial Design Rights (1)> 3-4-1
0. Designs and Industrial Design Rights:

3-4-1 1 min 0 sec
How they differentiate your product
- 3 Requirements to Obtain Protection for a Design 3-4-1 5 min 41 sec

Designs and Industrial Design Rights Module 3-4
1. The Design as Applied to an “Article” 3-4-1 6 min 13 sec
2. The Article as an “Article of Manufacture” 3-4-1 12 min 10 sec
3. ‌The Design as Applied to an Article Must Be Novel

3-4-1 14 min 33 sec
and/or Original
0. Unregistered and Registered Design Rights 3-4-2 0 min 25 sec
1. Unregistered Industrial Design Protection 3-4-2 0 min 50 sec
2. Registered Industrial Design Protection

3-4-2 3 min 30 sec
– in one jurisdiction
3. Registered Industrial Design Protection

3-4-2 8 min 16 sec
– in more than one jurisdiction
Memo
69
1 min 0 sec
Module 0. ‌Designs and Industrial Design Rights:

3-4-1 How they differentiate your product
The use of shape or aesthetic appearance to differentiate one product from

another is used in many industries and products, from smartphones and vacuum
cleaners to the soles of shoes or the shape of furniture, and from technical and
medical instruments to watches, jewelry, and other luxury items.
In this age of information technology, electronic desktop icons generated

by computer code, typefaces, the graphic display on computer monitors,
smartphones, and the like are increasingly used to differentiate one product from
another.
A design thus has the capability to create significant value for a business on its
own and its products, clearly differentiating your products from your competitors’.
There are many advantages to obtaining protection for the aesthetic design
features of your product. These include:
1 A greater ability to prevent it from being copied and imitated by competitors
2 Exclusivity allowing you to carve out a section of the market for financial return
3 Registration of industrial designs encourages fair competition and honest trade practices
3 Requirements to Obtain Protection for a Design

1 Design as applied to an “Article”
2 The article as an “Article of Manufacture”
3 The design as applied to an article must be novel and/or original
CASE Did you know?
Samsung M3-4-1, 3 min 49 sec
Samsung, a Korean company, has grown into one of the world's

leading brands thanks to its focus on design. Great design was
able to elevate Samsung to the top ranks of global brands.
Samsung's “Design Thinking” went beyond the company's internal
design team and became part of its corporate values.

6 min 13 sec
Module
1. The Design as Applied to an “Article”
3-4-1
Industrial design protection is included in the Paris Convention, which provides

a minimum standard that “industrial designs shall be protected in all countries of
the European Union” without mentioning the legal form to be adopted.
A general broad definition of a “design” means at least “the appearance of the

whole or a part of a product resulting from the features of, in particular, the lines,
contours, colours, shape, texture and/or materials of the product itself and/
or its ornamentation” (as per Article 3(a) of the European Council Regulation on
Community Designs).
Industrial design protection provides protection for aesthetic features as applied

to an article. The aesthetic features are essentially one or more of: Shape, Pattern,
Configuration, and Ornamentation.
Memo
71
Design Patent US D623,714, Sport Dimension, Inc. v. The Coleman Company

M3-4-1, 8 min 35 sec
The Coleman Company holds design patent US FIG. 8 FIG. 1

D623,714 for “Decorated Design for Personal
Flotation Device.” The U.S. Court of Appeals for
the Federal Circuit ruled that the design patent
protected the overall ornamentation of the design,
not the purely functional part of the design.
US D623,714
South Korean design application KR3020180055571 M3-4-1, 10 min 45 sec
The Korean design application KR3020180055571 claims the

shape applied to the chair excluding the part painted in red.
The applicant has used colour to show visually exactly what
is not being claimed such that everything that is not red forms
part of the claimed design.
New Zealand design application 424316 M3-4-1, 11 min 26 sec
The New Zealand design application 424316 claims the shape applied to
the chair regardless of what pattern and/or ornamentation that may be
applied to the chair.
Memo

12 min 10 sec
Module
2. The Article as an “Article of Manufacture”
3-4-1
Not only must the design be applied to an article but it must also be “capable of
being used in industry,” which effectively means that the article must be capable of
industrial manufacture.
CASE Did you know?
Curver Luxembourg. Sarl, US D677,946 for a Y pattern

with the title of “Furniture (part of)” M3-4-1, 12 min 38 sec
Curver Luxembourg, Sarl was the owner of the design patent US D677,946
for the Y pattern entitled "Furniture (part of)." The scope of the design
patent was registered to be limited to a single manufactured product,
namely a chair. The design patent could not be exercised over the basket,
and Home Expressions was free to continue producing the basket.
14 min 33 sec
Module 3. ‌The Design as Applied to an Article Must

3-4-1 Be Novel and/or Original
We mean absolute novelty or universal novelty, which is generally interpreted to

mean “the design for which registration is sought must be new when compared to
all other designs produced in all other parts of the world at any previous time and
disclosed by any tangible or oral means.”
As it is common practice for designs to be exhibited at tradeshows before their

release as part of the testing phase, and design protects the appearance of an
article which has become inevitably known to public, provision has been made in
most design laws to allow for a grace period, calculated from what is referred to as
a release date.
If the application is filed within the grace period, the prior disclosure is not
considered “prior art” to the application and novelty is maintained. If a grace period
is provided, it is generally between 6 and 12 months depending on the jurisdiction.
73
CASE Did you know?
Crocs M3-4-1, 17 min 46 sec
The registered community design (RCD) granted by the European Union (EU)
for Crocs was invalid as it lacked novelty in comparison to designs previously
made available to the public. The designs alleged to have been previously
made available to the public were all Crocs’ own disclosures of the shoes prior to filing the RCD.
Depending on a so-called “ordinary user” in some jurisdictions or an “informed

user” in other jurisdictions, originality can be interpreted in one of three ways:
1 the same way as patent law and equating to non-obviousness
2 the same way as trademark law and equating to distinctiveness
3 the same way as copyright law and equating to an independent work
CASE Did you know?
Dyson, UK No. 2,043,779 v. Vax Mach Zen

M3-4-1, 19 min 58 sec
Dyson had registered the design for its cylinder vacuum cleaner in the UK
(No. 2,043,779). Vax had started to produce a similar-looking vacuum cleaner
called the March Zen, and Dyson sued Vax for registered design infringement.
However, Dyson lost in the UK High Court because Vax's design provides a
different overall impression on the informed user compared with the design as
depicted in Dyson’s RCD.
Memo

0 min 55 sec
Module
1. Unregistered Industrial Design Protection
3-4-2
Some jurisdictions provide for unregistered industrial design protection, and

detailed regulations of enforcing unregistered industrial design protection are
quite different depending on the jurisdictions.
If one can get a design right in some jurisdictions without needing to follow a
formal route for protection, what is the value of obtaining a registered design
right? The fact that a formal registered right undergoes formal and substantive
examination means that a granted design right generally comes with:
1 an assumption of bona fide ownership
2 a confirmation that the right has met the requirements for protection
3 publication of that right as well as the ability to include the granted industrial registration
number on the product itself, such that if
there is a claim of infringement, then the
infringing party would not be able to
claim that they had no knowledge that
the design on the article was protected
via design law
Memo
75
3 min 30 sec
Module 2. ‌Registered Industrial Design Protection

3-4-2 – in one Jurisdiction
If you decide that you only want protection for the industrial design in one
jurisdiction, for example Australia, the following application procedure is relevant:
1 Complete an application
≐≐ An application for a design must be completed and submitted to your local IP office in hard
copy or via an online platform, along with the required documents and fee.
An example of a design application in Australia
2 Formality Examination
≐≐ The IP office examines the application to make sure that it complies with the administrative
requirements or formalities.
3 Substantive Examination
≐≐ Where IP offices do perform substantive searches and examinations for novelty and/or
originality, they are done so with reference to its own national design law, but some local IP
offices do not perform substantive examinations.

4 Publication and Opposition

≐≐ After examination, a design which has met the examination requirements may be published
in an official gazette or journal so that any third party may oppose its registration within a
specified period of time.
5 Grant and Registration

≐≐ Once it has been decided that there are no grounds for refusal, the design is granted and
should be registered and have formal legal protection in most jurisdictions.
6 Maintaining your right

≐≐ A registered design may be renewed up until the maximum time period as determined by
the applicable national law by paying the required renewal fees.
8 min 16 sec
Module 3. ‌Registered Industrial Design Protection

3-4-2 – in more than one Jurisdiction
Since design registrations are territorial in nature and are valid only in the
territory of the country or region where they have been granted, design
registrations in one country are not recognised in others, and separate design
protection must be sought.
If one decided after filing in one jurisdiction, for example Australia, that they
wanted to file this application in other jurisdictions, the date of filing of the
Australian application will serve as a priority date for subsequent applications. This
priority date, which is granted in terms of the Paris Convention, gives the applicant
6 months to file further applications in other countries which are members of the
Paris Convention and any members to the World Trade Organization.
If you have decided you want protection in more than one country, then
1 you can follow the procedure for filing a separate application in each country in which
you would like protection by claiming a priority right (see the example of the Australian
application where no more than six months later applications are filed in other Paris
Convention countries),
2 or you can file a single international application (as provided for in the Hague Agreement),
which designates every country which is signatory to this Agreement. It is also possible to
file a Hague application as the priority application.
77
Conventional Application Process International Hague Application Process
Memo

Module 3-4. Quiz
Quiz Module 3-4
Quiz 1
‌Industrial design protection provides protection for aesthetic features as applied to

. The aesthetic features are essentially one or more of: ,
Pattern, Confirguration, and Ornamentation.
‌We mean absolute or universal , which is generally interpreted

to mean “the design for which registration is sought must be new when compared to all other
designs produced in all other parts of the world at any previous time and disclosed by any
tangible or oral means.”
‌If the application is filed within , the prior disclosure is not

considered “prior art” to the application and novelty is maintained. If a grace period is provided,
it is generally between depending on the jurisdiction.
Memo
79
3-5-1 Trade Secrets ( 1 )

Submodule
3-5-2 Trade Secrets (2)
IP Panorama 2.0 M 3-5-1 / M 3-5-2
Overview
Submodule 3-5-1
Coca-Cola’s recipe is a famous trade secret, but trade secrets encompass any
technical, scientific, or financial information that provides a business with a
competitive edge, e.g., economic benefits. Trade secrets have advantages and
disadvantages. This submodule is about the definition of a trade secret and
associated legal provisions available for protecting a trade secret.
Submodule 3-5-2
To protect trade secrets, create an internal management plan with these
best practices, as seen in the Coca-Cola example. This submodule is about 10
management practices to protect your trade secrets.
Learning Points
The Fundamentals of Trade Secrets and Associated Legal Provisions
Protecting Your Trade Secrets
Learning Outcomes
Define what a trade secret is and understand the legal framework for trade
secrets
Understand the management practices to protect your
trade secrets

Trade Secrets Module 3-5
<Trade Secrets (1)> 3-5-1
0. ‌The Fundamentals of Trade Secrets and Associated Legal

3-5-1 0 min 6 sec
Provisions
1. Definitions of Trade Secrets 3-5-1 4 min 16 sec
2. The Legal Framework for Trade Secrets 3-5-1 5 min 50 sec
<Trade Secrets (2)> 3-5-2
0. Protecting Your Trade Secrets 3-5-2 0 min 23 sec
- Retaining Your Trade Secret 3-5-2 0 min 29 sec
1. 10 Steps for Protecting Trade Secrets 3-5-2 1 min 47 sec
Memo
81
0 min 36 sec
Module 0. ‌The Fundamentals of Trade Secrets and

3-5-1 Associated Legal Provisions
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is

the only international agreement for trade secrets.
The Coca-Cola recipe is considered the world’s best-kept trade secret due to its
exceptional confidentiality.
Not all confidential information or “know-how” qualifies as a trade secret.
Trade secrets are not limited to formulae or recipes and include technical,
scientific, or financial information that provides a business with a competitive
edge or economic benefits, such as business plans, business processes, a list of key
customers, a list of reliable or special suppliers, product specifications, product
characteristics, purchase prices of key raw materials, test data, technical drawings
or sketches, and engineering specifications.
Information retained as a Trade Secret is:
1 Information not falling within the scope of protection by traditional IPRs
2 Information that is inappropriate as published works in the public domain
Trade secrets offer advantages such as no registration costs,

indefinite protection as long as kept confidential, and immediate
effectiveness, but they can lose their monopoly if disclosed or
competitors secure the same trade secrets through their own efforts.
4 min 16 sec
Module
1. Definitions of Trade Secrets
3-5-1
A trade secret may generally be defined as any confidential information that
1 is not generally known to the public,
2 confers an economic benefit, and
3 is carefully managed to ensure that it remains a secret.

CASE Did you know?
TLS Mgmt. & Mktg. Services., LLC v. Rodriguez-Toledo

M3-5-1, 4 min 41 sec
TLS Mgmt & Mktg Services accused a former employee, Ricky

Rodriguez, of misusing its trade secrets, which included strategy
documents. However, the court ruled that these alleged trade secrets
did not qualify as such because they largely comprised publicly available
Tax firm TLS Management &
information Marketing Services (TLS)
5 min 50 sec
Module
2. The Legal Framework for Trade Secrets
3-5-1
T rade secrets are a form of intellectual property but do not have a legal
framework.
Under the only international agreement for trade secrets, TRIPS, owners of
trade secrets have the right to prevent their confidential information from being
disclosed, acquired, or used by others without their consent if they meet the
defined requirements. The owner’s responsibility is to maintain the secrecy of the
trade secret, and legal frameworks in some jurisdictions offer remedies for the
owner if there’s an unauthorized disclosure.
Different jurisdictions have varying legal provisions for protecting trade secrets,
and they often resort to laws related to unlawful competition for enforcement.
However, the US stands out with multiple pieces of legislation, including The
Uniform Trade Secrets Act, The Economic Espionage Act, and The Defend Trade
Secrets Act.
In Europe, the EU Directive 2016/943 addresses “the protection of undisclosed

know-how and trade secrets against unlawful acquisition” with Finland
implementing it through the Finnish Trade Secrets Act.
83
0 min 23 sec
Module
0. Protecting Your Trade Secrets
3-5-2
Retaining Your Trade Secret

Trade secrets are not subject to any formal registration procedure.
It is essential to establish an internal management plan to ensure trade secrets are
retained and maintained to keep the trade secret confidential.
CASE Did you know?
Coca-Cola M3-5-2, 0 min 41 sec
The protection measures for the Coca-Cola formula (referred

to as "Merchandise 7X") involve keeping a written version in a
secure vault at Trust Company Bank in Atlanta, accessible only
with approval from the company's Board of Directors. Only two
employees are allowed to know the formula at any one time, and
their identity is not disclosed. Additionally, they are not allowed to
fly on the same airplane. Similar precautions apply to the secret
formulas of other cola drinks like Diet Coke, caffeine-free Diet Coke,
Tab, and caffeine-free Coca-Cola.
Memo

1 min 47 sec
Module
1. 10 Steps for Protecting Trade Secrets
3-5-2
There are 10 basic steps for protecting trade secrets as good practice, but the
specific steps to be taken should be dictated or tailored by the nature of the secrets.
1 Make a written list of information.
2 Develop an information security policy.
3 Educate all employees on issues related to information security.
4 Exercise care in hiring an employee of a competitor.
5 Mark documents with words such as “Mark No Copies,” “Third Party Confidential,” or
“Distribution Limited to.”
6 Restrict access to records.
7 General office management and maintenance of confidentiality practices
8 Maintain computer secrecy.
9 Access control and security labels.
10 Safeguard trade secrets that are shared in partnerships.
The 10 steps are not sequential and each company should assess which steps
should be adopted for managing and maintaining relevant trade secrets.
CASE Did you know?
IBM v. Mark Papermaster M3-5-2, 3 min 15 sec
Mark Papermaster was a former IBM executive with access to trade

secrets, who later joined Apple. IBM filed an injunction to prevent him
from working at Apple due to concerns about the potential disclosure
of their trade secrets.
The court determined that Papermaster was indeed knowledgeable
about IBM's sensitive trade secrets and had worked closely with their
technology.
After the injunction succeeded, IBM and Apple settled and Papermaster accepted appointment at Apple
subject to certain conditions being met.
85
Quiz Module 3-5
Quiz 1
All confidential information or “know-how” which provides a business with a competitive

edge , not all confidential information or “know-how” as a
trade secret. A trade secret may generally be defined as confidential information:
‌that is in the same industry group or to the public;
‌ to the owner of the trade secret by virtue of the fact that it is not known (i.e., the
information must have commercial value because it is kept secret); and
‌that is carefully managed by the owner to (i.e., effective management practices

are in place to make sure all relevant parties are aware that this is confidential information and
to retain it as such).
Related to document control and managing previous employees

M3-5-2, 6 min 24 sec
Anthony Levandowski, a former Google engineer, stole 14,000

confidential Google files and used them to start his own self-driving
trucking company, Otto. He then sold Otto to Uber, giving Uber access
to Google's trade secrets. Google sued Uber for trade secret theft, and
the lawsuit was settled with Uber giving Google 0.34% of its equity.
Levandowski pleaded guilty to trade secret theft and received an
18-month prison sentence as well as a USD 179 million compensation
order.

Module 3. Memo
Memo
87
3-6-1 Marks and Trademarks ( 1 )

Submodule
3-6-2 Marks and Trademarks (2)
IP Panorama 2.0 M 3-6-1 / M 3-6-2
Overview
In this submodule, you will learn about the factors that should be kept in mind
when selecting a mark, the differences between registered and unregistered
trademarks, and the advantages of registered trademarks.
Learning Points
Marks and Trademarks and Your Business
Selecting a Mark - Important Factors to Bear in Mind
Unregistered and Registered Trademarks
Learning Outcomes
List the strengths of marks and trademarks for a business
Name the factors that should be kept in mind when selecting a mark
Describe the difference between a registered and an unregistered trademark
and the advantages of registering a mark
<Marks and Trademarks (1)> 3-6-1
0. Intro 3-6-1 0 min 0 sec
1. Marks and Trademarks and Your Business 3-6-1 1 min 5 sec
2. Selecting a Mark:
3-6-1 6 min 32 sec
Important Factors to Bear in Mind

Marks and Trademarks Module 3-6
<Marks and Trademarks (2)> 3-6-2
0. Unregistered and Registered Trademarks 3-6-2 0 min 0 sec
1. Filing for Trademark Protection in One Jurisdiction 3-6-2 1 min 44 sec
- Complete an Application 3-6-2
- Formality Examination 3-6-2
- Substantive Examination 3-6-2
- Publication and Opposition 3-6-2
- Grant and Registration 3-6-2
- Maintaining Your right 3-6-2
2. ‌Filing for Trademark Protection in More Than One

3-6-2 14 min 20 sec
Jurisdiction
Memo
89
0 min 0 sec
Module
0. Intro
3-6-1
T here are many international conventions, agreements, and treaties that

provide guidance around minimum requirements for trademark protection. Key
frameworks include the Paris Convention, Madrid Agreement, Nice Agreement,
Protocol relating to the Madrid Agreement, Trademark Law Treaty, Vienna
Agreement, and the Singapore Treaty on Trademarks. Additionally, the TRIPS
Agreement, managed by the WTO, is pertinent to trademarks in trade.
1 min 5 sec
Module
1. Marks and Trademarks and Your Business
3-6-1
International marks like Nike’s “swoosh” or Apple’s “apple” logo are instantly
recognizable, distinguishing their products from competitors. This recognition
factor influences consumers’ purchasing decisions, which can be based on overall
impression, “look and feel,” design, reputation, previous experiences, or even
celebrity endorsements.
A “mark” can be defined as “a sign capable of distinguishing the goods or

services produced or provided by one business or enterprise from those of other
businesses or enterprises.” Marks don’t just help distinguish a good or service: they
build brand value, which is pivotal in marketing strategies. For instance, Adidas’
brand was valued at around USD 50 billion in 2020.
Beyond trademarks, “certification marks” like the asthma & allergy friendly®
Certification Program ensure product standards and characteristics such as
origin, material, quality, accuracy, etc.
Another variant, a “collective mark”, which indicates that its user is a member of an
association, distinguishes goods based on shared features like geographical origin,
material, or any other common characteristics of the goods or service.

The Strength of Marks and Associated Business
1 Distinguishes your business and associated products or sevices from your competitors
2 Marks and trademarks are visual communication tools which are independent of location
and language.
3 Trademarks are easy to obtain if they are distinctive.
4 A mark builds an exclusive brand, as the holder of a

trademark has the exclusive right to use the mark,
provided the mark meets the filing requirements.
5 A positive image or reputation of a business creates a

relationship of trust.
6 Satisfied customers may develop an emotional attachment

to a mark.
6 min 32 sec
Module 2. ‌Selecting a Mark:

3-6-1 Important Factors to Bear in Mind
We have highlighted the critical value a mark brings to a business. A successful
mark often fuses imagery, graphics, and typography, with 13 possible styles
available. These styles are:
Selecting a
Distinctive
Mark for Your
Business
1 Word mark: Using the business’s name with different

typography. Well-known examples can be seen with Google
and KODAK. The chosen word may be a coined word,
which is an invented word with no meaning, an arbitrary
word which does not describe or hint at any attribute of the
product in question, or a suggestive word that hints at some attribute (s) of the product.
91
2 Letter mark: a text acronym of the business, like JVC for Japan’s Victor Company
3 Brand mark: symbol-based, like the companies APPLE and

Twitter as examples
4 Combination mark: combination of symbol and text, e.g., Lacoste and Puma
5 Emblem mark: incorporates text within a symbol, like Harley-Davidson
For nations under the Singapore Law Treaty, protection expands to:
KR 400425187 KR 400425189 US 1439426 US 3196951
1 Single color mark: quite difficult to register due to distinctiveness requirements, with
Milka’s lilac shade being a case in point
2 3D mark: while the golden wrapping of Ferrero Rocher® is recognized,

design protection is often more suitable than trademark protection.
3 Audible sign (sound) mark: such as the Samsung ringtone
4 Olfactory sign (scent or smell) mark: for instance,

Grendene’s bubble gum-scented sandals
5 Moving image mark: illustrated by Sony Mobile’s logo animation
6 Hologram mark
7 Taste mark: rare and tricky, like the orange flavor for pills
8 Texture of a product: design protection might be more

appropriate for product textures (a wine bottle with a velvet texture as an example).
When selecting a mark, adhere to best practices ensuring it’s:
1 Distinctive and distinguishable:

≐≐ A common name and a commonly used mark are generally not allowed
to be registered (e.g., APPLE for tech vs. a fruit)
≐≐ Ensure that the mark you plan to use can distinguish your business from
another
2 Simple: like Microsoft’s evolving but simplified logo

3 Memorable: Volkswagen’s consistent logo is an example.
4 Timeless: such as the evolving Instagram New trends brought out by Apple
less 3D
icon more aesthetic
5 Versatile: embodies values and adaptable

Represents the wings of the Greek
across mediums, seen in Nike’s “swoosh” goddess Nike
‌Business’values of speed, victory
6 Appropriate: caters to its audience without and grace
offending, like Toys “R” Us
Additionally, external factors to consider include:
1 Legal Requirements
2 Language Requirements
3 Trademark Search
At least three
different
proposed
marks
4 Connotation
5 Domain name
In conclusion, selecting a mark requires thorough analysis to encapsulate a

business’s essence, highlighting its significance in business branding. The next
step is understanding how to secure a trademark for the chosen mark(s).
0 min 0 sec
Module
0. Unregistered and Registered Trademarks
3-6-2
A fter designing a mark, one can either seek formal protection or rely on
“protection through use.” Formal protection allows the use of ®, signifying a
registered trademark. Without formal registration, “TM” can be used, indicating
an unregistered trademark. Registered marks offer stronger protection, especially
during infringements. Two main routes exist for obtaining a registered trademark:
93
1 min 5 sec
Module 1. ‌Filing for Trademark Protection in One

3-6-2 Jurisdiction
Complete an Application
Submit a trademark application to the local IP office, providing a description of the
mark, indicating its class (as provided for in the Nice Agreement) and including a
representation of the mark. Each class protects the mark within specific product/
service categories.
Formality Examination
The IP office checks for administrative compliance, including application fee
payment and form completion. Signatories to the Trademark Law Treaty have
defined formalities, encompassing details about the applicant, the mark, and the
intended goods/services.
Substantive Examination
Local IP offices review applications based on their national laws, though some
global standards apply. A mark must be distinctive, either inherently (like KODAK)
or through marketplace use (like MINI for a car type). Some jurisdictions allow
mark registration after it has been used over time and gained distinctiveness.
Evidence of use might be required.
A mark must pass the

distinctiveness test and
the relative test. The
relative test examines
if the mark can be
graphically represented,
whether it will be/is
being used, and if it is
capable of distinguishing
goods/services from
similar ones. Marks failing any criteria will be denied registration.

CASE Did you know?
Adidas’s Three Stripes M3-6-2, 6 min 9 sec
German sports company Adidas had trademark protection

for its three-stripe logo since the early 1990s. They aimed
to widen this protection to include “three parallel equidistant
stripes of equal width applied in any direction.” Although
initially granted in 2014, a challenge by Shoe Branding Europe
BAVA in the European Union General Court invalidated the
broader protection, citing Adidas's failure to prove the mark's
distinctive character throughout the EU. Furthermore, Adidas's
presented evidence varied from the registered mark, causing
their argument for extended protection to be rejected.
Ralf Sieckmann M3-6-2, 8 min 10 sec
Ralf Sieckmann's case involves his trademark application for an olfactory mark related to methyl
cinnamate. The application was initially refused because the trademark office doubted its ability to
distinguish relevant goods or services and questioned its graphical representation. The Court of Justice
of the European Union determined that a chemical formula, used to represent the odor, was not clear or
precise enough to meet the requirements for trademark registration.
Publication and Opposition

After clearing examination, marks get published in an official journal, allowing
third parties to oppose registration within a set timeframe. If unopposed or if
oppositions fail, the mark gets registered.
Grant and Registration

If no grounds for refusal exist, the trademark is granted and registered. Typically,
the certificate is valid for 10 years from the application date.
Maintaining your right

Beyond renewal fees, a mark’s maintenance involves
ensuring it is used in trade, preventing misuse or
preventing it from becoming generic. For instance,
South African law can cancel trademarks with no
genuine use over five years. Brands like Cellophane and
95
Sellotape became generic terms. Generic terms refer to the phenomenon where
a specific trademark becomes so widely recognized and commonly used that it
transforms into a general term for an entire class of products or services. Google,
a dominant search brand, risks its name becoming synonymous with “search,”
potentially weakening its trademark protection.
Trademark maintenance also includes protecting against unauthorized use or

“passing off,” where a competitor’s mark closely resembles yours.
Memo

14 min 20 sec
Module 2. ‌Filing for Trademark Protection in more

3-6-2 than one Jurisdiction
Trademarks are territorial, valid only where granted. To protect a mark in multiple
countries, two methods exist:
Two Ways
of Obtaining
Trademark
Protection
1 File individual applications in each desired country (e.g., using the Paris Convention within
six months of a primary application).
2 P referably, after a basic home

application, file a single international
application under the Madrid
Agreement, naming the desired
countries.
(ⅰ) C omplete an application:
Use Form MM2 and submit
it to the home office with
required documents and fee.
(ⅱ) ‌Formality examination: WIPO’s International Bureau checks the application against the
Madrid Protocol. If regular, the mark is recorded, published in the WIPO Gazette, and
each named country is notified.
(ⅲ) Substantive Examination: Each named country reviews the application using its own
trademark laws.
From this point on, the procedure to follow is as described above.
97
Quiz Module 3-6
Quiz 1
Some of the strengths of marks and associated trademarks for a business include:
‌ your business and associated products or services from your competitors.
‌Marks and trademarks are tools which are independent of location

and language.
‌Trademarks are easy to obtain as long as from others and the right never expires
provided that are paid.
‌A positive image or reputation of a business creates a relationship of .
‌Satisfied consumers/customers may develop an to a mark. It is

possible that consumers/customers may regard a particular business and its products bearing
the mark as sharing a brand identity or image which reflects a set of desired attributes, benefits,
or values.
Memo

Module 3. Memo
Memo
99
3-7-1 Marks of Origin and Indications of

Submodule Source ( 1 )
3-7-2 Marks of Origin and Indications of
Source (2)
IP Panorama 2.0 M 3-7-1 / M 3-7-2
Overview
T his submodule provides an in-depth overview of Marks of Origin and
Indications of Source, elucidates the protective measures for these marks,
and explores their interconnection with other forms of IPR, aiming to furnish
readers with a comprehensive understanding of the subject.
Learning Points
Overview of Marks of Origin and Indications of Source as a Broad Category
Protecting Marks of Origin as an Indication of Source, a Geographical Indication,
or an Appellation of Origin
Interplay between Marks of Origin and Other Forms of IPR
Learning Outcomes
Define a mark of origin and indications of source
Understand the various options for protection for marks of origin
Explain the interplay between marks of origin and other forms of IPR
<Marks of Origin and Indications of Source (1)> 3-7-1
0. Intro 3-7-1 0 min 0 sec
1. Overview of Marks of Origin and Indications of Source 3-7-1 0 min 50 sec
- Marks of Origin 3-7-1 0 min 59 sec
- Indications of Source 3-7-1 5 min 37 sec

Marks of Origin and Indications of Source Module 3-7
- Advantages of Indications of Source 3-7-1 10 min 13 sec
1. ‌Protecting Marks of Origin as an Indication of Source,

3-7-2 0 min 0 sec
a Geographical Indication, or an Appellation of Origin
- Sui Generis System 3-7-2 3 min 19 sec
- Trademark Law 3-7-2 5 min 5 sec
- Protection in Multiple Jurisdictions 3-7-2 8 min 43 sec
2. ‌Interplay between Marks of Origin and Other Forms of

3-7-2 9 min 45 sec
IPR
- Marks of Origin and Trademarks 3-7-2 10 min 50 sec
- ‌Marks of Origin and Traditional Knowledge, Traditional

3-7-2 11 min 59 sec
Cultural Expressions, and Genetic Resources
Memo
101
0 min 50 sec
Module 1. Overview
‌ of Marks of Origin and Indications
3-7-1 of Source
Marks of Origin
W hen you savor a dish with Kagoshima Wagyu beef, a salad doused in Aceto
Balsamico Di Modena, garnished with feta, and paired with champagne, you
experience flavors from Japan, Italy, Greece, and France.
CASE Did you know?
Kagoshima Wagyu Beef M3-7-1, 1 min 27 sec
Kagoshima Wagyu Beef: This beef comes from the Japanese black cattle breed,
primarily raised in the Kagoshima region. Its unique flavor and texture arise from
the intricate marbling of fat. Beef from outside this region cannot bear the name
“Kagoshima Wagyu.”
Kagoshima Kuroushi
Kagoshima Wagyu Beef
Champagne M3-7-1, 2 min 33 sec
Champagne: Originally made in Champagne, France, this drink came about

due to the region’s unique climatic conditions, with fermentation halting during
cold seasons and resuming with warmth. Dom Perignon played a key role in its
popularization and development, introducing stronger bottles to withstand the
Dom Périfnon
drink’s pressure. Only wines from this region can be termed “champagne.”
These marks of origin of a product are marks of a product which are conferred by
the region in which the product originated. These marks aren’t limited to foods
and can extend to other products like handicrafts and industrial items.
CASE Did you know?
“Swiss” Watches M3-7-1, 5 min 5 sec
Consider the example of “Swiss” watches. Switzerland has a strong

reputation for the reliability and precision of its craftsmanship.
Although the term “Swiss Made” can be used for all kinds of
products produced in Switzerland, a number of businesses use
the Swiss brand to boost the market value of their products and
services, including watches. Also, Switzerland has enacted a
separate law to maintain the reputation of "Swiss Made.”

Indications of Source
TRIPS, the Paris Convention, and the Lisbon Agreement outline the protection
of marks of origin. The Paris Convention introduces “indication of source,”
which identifies the product’s geographical origin, like “Swiss made” or “Made in
Germany.”
TRIPS describes “geographical indications” as goods linked to their region due

to distinct qualities or characteristics; examples include Champagne or Longjing
Tea. Meanwhile, the Lisbon Agreement defines “appellations of origin” as products
from a specific area, shaped by both natural and human factors.
Prosciutto di Parma and Tequila from Mexico are such examples. While both
geographical indications and appellations of origin denote the product’s
geographical origin and its quality or characteristics, an appellation of origin is
more stringent, demanding a closer connection between the product and its
geography, encompassing natural conditions and human craftsmanship.
CASE Did you know?
Longjing Tea M3-7-1, 6 min 55 sec
This is a Chinese green tea grown in the West Lake, Qiantang and Yuezhou
regions of Hangzhou City and Shaoxing City in Zhejiang Province, China. It is
produced mostly by hand and is renowned for its high quality, earning it its
fame. The warm and humid rainy weather of the region is ideal for the growth
of the tea trees.
Kashmir Saffron M3-7-1, 7 min 22 sec
Kashmir is a region in India dubbed “Paradise on Earth” and is celebrated for

its scenery and wildlife. But the region is also famous for its saffron spice,
which is known to possess rejuvenation properties. Kashmir saffron is grown
in the fields of Pampore near Srinagar at an altitude of 1600 to 1800 meters
above mean sea level. The ideal environment for cultivation of saffron is
Kashmir Saffron
a cool, dry climate and one that has rich soil with excellent drainage and
organic content. Kashmir is an area that is famous for all these qualities.
103
CASE Did you know?
Prosciutto di Parma M3-7-1, 8 min 33 sec
For ham to receive the “Parma” name, it must be produced in the province of
Parma, which is in the Emilia-Romagna region of north-central Italy, and it must
be made only from pigs in this area. The Istituto Parma Qualit (IPQ, Parma Quality
Institute) closely regulates each step in the process, including how the pigs are
bred and their diet. The institute will allow the final product to carry the Parma
symbol if it believes it meets the Parma standards.
Tequila M3-7-1, 9 min 7 sec
The production of Tequila from the agave plant is regulated through legislation in
Mexico. These regulations outline where the plants can be grown, where tequila
can be made, where it can be bottled, and what percentage of agave plant sugar
Tequila from Mexico
must be used to arrive at the final alcohol content.
Advantages of Indications of Source

Protecting a product as an indication of source, especially as a geographical
indication or an appellation of origin, offers several advantages:
It enables product differentiation, assuring consumers of specific quality or

characteristics associated with a certain source or region.
P roducers within the protected area gain a form of monopoly, enhancing

economic security, as their product cannot be traded under the same name
elsewhere. For instance, only sparkling wine from the Champagne region, made
using “methode champenoise,” can be called champagne, while others must be
called “sparkling wine” and use “Methode Cap Classiques” (MCC’s).
T his monopoly can foster economic and social prosperity in rural areas,
preserving traditional knowledge and cultural expressions, and potentially boost
exports, as the specific product can exclusively originate from that region under
that indication of source, geographical indication, or appellation of origin.
Indication of source Geographical indication Appellation of origin

0 min 0 sec
Module 1. ‌Protecting Marks of Origin as an Indication

3-7-2 of Source, a Geographical Indication, or an
Appellation of Origin
Nations and regions can create their own legislative frameworks to protect marks
of origin based on international guidelines. The relationship between indications
of source, geographical indications, and appellations of origin is hierarchical, with
appellations of origin being the most stringent and a subcategory of geographical
indications. Appellations of origin refer to direct place names, while geographical
indications can include symbols or emblems.
Protection can be achieved in different ways and registration methods can be

based on regional or national decisions. Additionally, bilateral agreements between
countries can recognize specific indications of source, such as the negotiations
regarding champagne between the USA and European Union.
CASE Did you know?
In the Treaty of Versailles, France secured the protection of the name “champagne” due to a dispute
with Germany. Although the US signed the treaty, it was not ratified by Congress. In 2005, the US and
the EU signed a trade agreement protecting geographical indications, including champagne. However,
American producers previously using the name were allowed to continue using it. Around 80 million
bottles of sparkling wine are given the label “champagne” in the US annually.
105
Sui Generis System

A unique system where some regions require registration for protection, while
others offer automatic protection. For instance, the European Union mandates
registration with the European Commission by providing specific product
details, while places like Singapore offer automatic protection under the 1998
Geographical Indications Act.
CASE Did you know?
Singapore M3-7-1, 4 min 28 sec
In Singapore, the 1998 Geographical Indications Act provides automatic

protection for geographical indications. However, any interested party may bring
an action before the court against misleading indications. A similar approach is
taken in India (Geographical Indications of Goods Act, 1999) and in Latvia (Law on
Trademarks and GIs), both which have GI registration systems that provide for automatic protection of GIs.
Trademark Law
In some jurisdictions, the requirements for “an indication of source” my be set
out in the trademark law. Protection can also be attained as a collective mark
or a certification mark. Collective marks and certification marks differ primarily
in purpose and use. A collective mark identifies goods or services as belonging
to members of a specific organization, indicating shared characteristics or
geographical origin.
A certification mark, however, certifies that the goods or services meet certain
standards, such as quality or origin.
Requirements vary across jurisdictions; for example, Korea has specific conditions
for geographical indication-based collective marks.
CASE Did you know?
Wool M3-7-2, 6 min 10 sec
The Woolmark certified logo is a trademark owned by Australian Wool

Innovation Limited (AWI). This company licenses rights across the globe to
any company whose products have been tested and are considered to be
made of 100% pure new wool. Woolmark Certified Logo

CASE Did you know?
Tequila M3-7-2, 6 min 30 sec
Tequila is an example of a geographical indication protected in Australia by registration as a certification

trademark (No. 1377413). Certification trademarks are the standard way of protecting geographical
indications in Australia. Also, tequila is a registered certification trademark in the US and Mexico.
Protection in Multiple Jurisdiction

International frameworks exist for multi-jurisdictional protection, like the Lisbon
system for appellations of origin and geographical indications. The Geneva Act
extends this protection. Procedures for certification and collective marks fall
under the Madrid system, as discussed in Module 3-6-2.
9 min 45 sec
Module 2. ‌Interplay between Marks of Origin and

3-7-2 Other Forms of IPR
M arks of origin can be associated with products having various types of

protection such as patents, design, trade secrets, copyright, or plant breeders’
rights. However, this submodule primarily focuses on the relationship between
marks of origin and trademark protection, along with the influence of traditional
knowledge, cultural expressions, and genetic resources on the product.
A mark of
origin for a
protected
product, for
example wine
Method of Aesthetic shape of Specific method of
manufacturing the bottle in the bottle in which harvesting the grapes
which the wine is sold the wine is sold used to make the wine
Photographs of the wine taken for Plant variety that produces the
advertising purposes grapes used to make the wine
107
Marks of Origin and Trademarks

Marks of origin, which protect goods from a specific geographical region, can be
secured through the trademark system but should not be confused with the brand
mark, which identifies goods from a specific company. An illustrative example
is Champagne, which is a geographical indication for sparkling wine from the
Champagne region. Various producers, like Moet & Chandon or Veuve Clicquot
Ponsardin, make champagne under their distinctive brands.
CASE Did you know?
Champagne is the geographical indication for sparkling wine made

using the “methode champenoise,” such that any wine producer in the
Champagne region that makes sparkling wine with the method can
call their product “champagne.” However, there are many different wine
producers that make champagne all under their own distinctive brand, such
as Moët & Chandon or Veuve Clicquot Ponsardin.
Marks of Origin and Traditional Knowledge, Traditional Cultural Expressions,

and Genetic Resources
Products protected by geographical indications or appellations often result from
traditional knowledge and processes, cultural expressions, and the use of local
genetic resources. For example, Longjing Tea, native to Longjing village in China,
reflects a 1,200-year tradition spanning five dynasties, and is known for its healing
properties and unique characteristics derived from the local environment and
local knowledge. This product showcases how such factors contribute to creating
a unique mark of origin.
CASE Did you know?
Longjing Tea M3-7-2, 12 min 51 sec
Longjing tea, also called Xihu Longjing tea, is native to a village in China called Longjing located in
Hangzhou city of Zhejiang Province. China has a long tradition of tea drinking, from tea making to the
ceremony of drinking the tea. Longjing tea has a history that spans 1,200 years and five dynasties. This
tea has been used for generations for its healing properties, including its ability to act as an antibacterial
and an anti-aging agent, as well as for treating night blindness amongst other ailments.

Module 3-7. Quiz
Quiz Module 3-7
Quiz 1
‌The Paris Convention provides for an “ ”, which is the broadest form of

protection and only identifies the geographical area from which the product originates.
‌A geographical indication relates to goods “originating in a territory of a member country,

or a region or locality in that territory, where a given , , or other
characteristic of the goods is essentiality attributed to this geographical origin.”
‌An “ ” is “the geographical name of a country, region, or

locality, which serves to designate a product originating therein, the quality and characteristics
of which are due exclusively or essentially to the geographical environment, including natural
and human factors.
Memo
109
3-8-1 Plant Varieties and Plant Breeders’

Submodule Rights ( 1 )
3-8-2 Plant Varieties and Plant Breeders’
Rights (2)
IP Panorama 2.0 M 3-8-1 / M 3-8-2
Overview
There are very few international conventions and agreements to protect a new
plant variety. This submodule is about how to protect technological inventions
and the requirements for patentability.
Learning Points
How Plant Breeders’ Rights Protect New Plant Varieties
Formal Protection for Your Plant Variety
Learning Outcomes
Understand what the requirements are for a plant variety to be protected via a
plant breeders’ right
Describe the steps to obtain protection for your plant variety
<Plant Varieties and Plant Breeders’ Rights (1)> 3-8-1
0. Plant Varieties and Plant Breeders’ Rights:

3-8-1 1 min 4 sec
How plant breeders’ rights protect new plant varieties
1. Plant Variety 3-8-1 2 min 16 sec
2. Requirements for Protection 3-8-1 3 min 20 sec
3. Value in Protecting Your New Variety 3-8-1 8 min 25 sec

Plant Varieties and Plant Breeders’ Rights Module 3-8
<Plant Varieties and Plant Breeders’ Rights (2)> 3-8-2
1. Formal Protection for Your Plant Variety 3-8-2 1 min 17 sec
- The UPOV Convention 3-8-2 0 min 40 sec
- The Application Procedure 3-8-2 1 min 17 sec
Memo
111
1 min 4 sec
Module 0. ‌Plant Varieties and Plant Breeders’ Rights:

3-8-1 ‌How plant breeders’ rights protect new
plant varieties
The International Convention for the Protection of New Varieties of Plants (UPOV
Convention) and the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS), administered by the WTO, provide guidance around the minimum
requirements that must be met in order to obtain formal protection for a new
plant variety.
The breeding of plants for the development

of new plant varieties has been a practice
believed to date back to the beginnings
of agriculture and associated with the
so-called domestication of cereal grains.
Plant breeding techniques originated
from adjusting the hereditary make-up of plants by selecting for dominant traits
over the course of a breeding cycle.
2 min 16 sec
Module
1. Plant Variety
3-8-1
Plants have been divided into a number of taxonomic groupings: kingdom, division,
class, order, family, genus, and finally the species. Most plant breeding takes place
on the species level resulting in different cultivar, or varieties, of a particular species.

3 min 20 sec
Module
2. Requirements for Protection
3-8-1
Protection of New Varieties of Plants (UPOV Convention), which contains a set

of minimum requirements for protecting new plant varieties by a “plant breeder
who has bred, or discovered and developed, a variety of plant that is new, distinct,
uniform and stable.”
1 Bred, or Discovered and Developed

≐≐ There are two ways to define a new plant variety. Either the breeder was responsible
for breeding the new plant variety through a breeding program following selection and
crossing of variants or through genetic engineering, or alternatively, the breeder could have
“discovered” the plant in a forest and then subsequently further “developed” the variety
through selection in order to ensure that the discovered variety is both stable and uniform.
2 New or Novel
≐≐ For the new or novelty requirements for plant varieties to be met, the propagating material
(this includes seeds, roots, cuttings, and all parts of the plant from which a new plant
can grow) and harvested material must not have been sold for more than one year in the
country where one wants protection. There are some exceptions to this requirement for the
sale period in other UPOV countries, which can be between four and six years.
≐≐ The last three requirements are often referred to as the “DUS requirements” (Distinct,
Uniform, and Stable). These requirements are generally consistently applied in the national
law across jurisdictions for all countries that are signatories to UPOV.
3 Distinct
≐≐ “Distinct” means that one variety differs from all others by one or more visible botanical
(or phenotypical) characteristics, such as the shape of the leaf, the shape and color of
the fruit, the height of the tree, the color of the flower, or the length of the stem. Genetic
characteristics have been recognized as conferring distinctiveness to a plant with DNA
fingerprinting used as evidence.
113
Shape of the Shape and color of the Height of the Colour of the Length of the
leaf fruit tree flower stem
4 Uniform
≐≐ “Uniform” means that the plant characteristics must be uniform from one plant to the next
generation. UPOV uses the term “sufficiently uniform” for this requirement.
5 Stable
≐≐ “Stable” means that the plant characteristics which distinguish one variety from the next
must be “genetically fixed” or “genetically stable” and thus the characteristics remain the
same from one generation to the next.
8 min 25 sec
Module
3. Value in Protecting Your New Variety
3-8-1
The breeder has an exclusionary right to the propagating material. If your new
plant breeder’s right is an outcome of crossing using any one else’s individual
protected varieties, then a license to use the protected variety will need to be
obtained before your new variety can be sold, etc.
By the very nature of the many ways in which a plant can be propagated, a plant
breeder’s right provides protection for all propagated material such that a third
party cannot take your variety that has been bought from a nursery and propagate
it himself for sale.

1 min 17 sec
Module
1. Formal Protection for Your Plant Variety
3-8-2
The UPOV Convention

The UPOV Convention provides
the framework for plant variety
protection with each country
establishing its own national law to
give effect to its obligations in terms
of this convention. In this course, we call this right “plant breeders’ rights” (PBRs), but
some countries call them “plant variety rights” and others call them “plant patents.”
The Application Procedure

Using Canada as an example, the following application procedure is relevant:
1 Complete an application
≐≐ An application for a PBR must be completed and submitted to the appropriate national
authority, which in Canada is the Plant Breeders’ Rights Office. The application can be
submitted in hard copy or via the online platform, along with the minimum documents (POA,
Test Guide, and propagating material) and the required fee. The application must also
include a denomination (name of the new plant variety) and this must be different from the
trademark that the new variety is sold under.
≐≐ If you want to apply for protection in another country that is a UPOV member, you can do
so for up to 12 months after you file your application in Canada.
2 Evaluation
≐≐ The Plant Breeders’ Rights Office will independently, or via a subcontractor, grow the plant
and evaluate the application against grown plants to assess whether the plant complies
with the information in the Test Guide.
≐≐ The evaluation of the plant may correspond to the examination process of a patent
application, but the examination of the plant includes actually growing the plant.
Key Difference
115
3 Publication and opposition

≐≐ When the Plant Breeders’ Rights Office has accepted the denomination, the application
is published in the Plant Variety Journal, along with the denomination. An opportunity is
presented for any person to object to the application or the proposed denomination.
4 Grant and registration

≐≐ If the examiner decides that the new plant variety meets the requirements, the application
is granted and should be registered for formal legal protection. Typically, the duration for
protection is 25 years from the registration date for a variety of tree or wines and 20 years
from the registration date for all other varieties. In countries that grant both patents and
PBR protection for some new plant varieties, a PBR may substantially extend the protection
period because the period for patent protection starts from the application date.
Duration for
Protection
5 Maintaining your right

≐≐ A registered PBR can be renewed annually for a fee for up to the maximum period set by
applicable national law.
Memo

Module 3-8. Quiz
Quiz Module 3-8
Quiz 1
‌Protection of New Varieties of Plants (UPOV Convention), which contains a set of minimum
requirements for protecting new plant varieties by a “plant breeder who has bred, or
and , a variety of plant that is new, distinct, uniform and stable.”
‌“Uniform” means that the plant characteristics must be uniform from one plant to the next
generation. UPOV uses the term for this requirement.
‌When filing an application for a new variety with UPOV, you must include the , the
name of the new variety, and this must be different from the trademark that the new variety is
sold under.
‌The of the plant may correspond to the examination process of a patent

application, but the examination of the plant includes actually the plant.
Memo
117
OtherDid
CASE youin
Cases know?
the Module
Fuel Developed
The Cell Case A
Methodologies
Fuel Cell Start-up
of Agriculture
Company M3-8-1,
M1-2, 51 min 55
30 sec
The
In the picture on the left, the leaves are from
different varieties of the mustard leaf, bred for
shape and flavor. In the picture on the right, the
“picotee” on the right has been bred to have
sturdy petals and aesthetically distinct buds.
The Scientific Classification of an Avocado

M3-8-1, 2 min 53 sec
The avocado has the species name Persian Americana, but

within this species, at least fifteen varieties of avocados
can be identified, each bred for specific characteristics,
including shape, ease of peeling, and taste.
The New Variety of Canna Phasion M3-8-1, 4 min 30 sec
Keith Kirsten claimed that he had discovered and bred a new variety
of canna parthenocarpa, which he trademarked as Tropicana. Kirsten
was granted his plant breeder's rights (PBR) in several jurisdictions,
including the European Union and South Africa. During litigation with a
competitor, it was revealed that he had seen the new variety in another
nurseryman's garden, so Kirsten did not meet the discovery requirement
and his PBR was revoked.
A Hybrid Apple M3-8-2, 2 min 37 sec
The apple is made by crossing a Lady Williams

and a Golden Delicious to arrive at a new variety/
cultivar with the denomination “Cripps Pink” and
sold under the trademark Pink LadyÒ.

Module 3. Memo
Memo
119
3-9-1 Traditional Knowledge, Traditional

Submodule Cultural Expressions and Genetic
Resources and Associated IPRs ( 1 )
3-9-2 Traditional Knowledge, Traditional
Cultural Expressions and Genetic
Resources and Associated IPRs (2)
IP Panorama 2.0 M 3-9-1 / M 3-9-2
Overview
In this submodule, you will learn about the characteristics and definitions
of Traditional Knowledge (TK), Traditional Cultural Expressions (TCEs), and
Genetic Resources (GRs), and how they are protected systematically.
Learning Points
TK, TCEs and GRs - Defining Characteristics
Protecting and Preserving TK, TCEs and GRs
Learning Outcomes
Identify the defining characteristics of TK, TCEs and GRs
Define the existing legal frameworks/systems available for the protection and
preservation of TK, TCEs and GRs
<Traditional Knowledge, Traditional Cultural Expressions and

3-9-1
Genetic Resources and Associated IPRs (1)>
0. ‌TK, TCEs, and GRs:

3-9-1 1 min 25 sec
Defining Characteristics
1. Characteristics of TK 3-9-1 4 min 5 sec

Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources and Associated IPRs Module 3-9

3-9-1
2. ‌Defining Characteristics of TCEs 3-9-1 6 min 26 sec
3. Defining GRs 3-9-1 9 min 0 sec
4. The Interface between TK, TCEs and GRs 3-9-1 12 min 7 sec

3-9-2
0. Protecting and Preserving TK, TCEs and GRs 3-9-2 0 min 21 sec
1. ‌Protection of TK, TCEs and GRs through Existing

3-9-2 1 min 3 sec
Conventional IP Systems
2. ‌Protection of TK, TCEs and GRs through Sui

3-9-2 10 min 26 sec
Generis Systems
Memo
121
1 min 25 sec
Module
0. ‌TK, TCEs and GRs: Defining Characteristics
3-9-1
There are limited international conventions, agreements, and treaties that provide
guidance around traditional knowledge, traditional cultural expressions, and
genetic resources in so far as they relate to the conventional IP system, such as
patents, industrial designs, and trademarks. These include the Berne Convention,
which protects unpublished and anonymous works, and the WIPO Performances
and Phonograms Treaty (WPPT) that safeguards the rights of performers expressing
folklore.
Additionally, forums like the WIPO Intergovernmental Committee on Intellectual

Property and Genetic Resources, Traditional Knowledge, and Folklore (IGC) aim to
establish a framework to formally secure genetic resources, traditional knowledge,
and folklore and defend them against unauthorized use.
For centuries, various

cultures have utilized
traditional knowledge
(TK) or traditional
cultural expressions
(TCEs), which include
medical remedies
using native plants,
specific body markings
to indicate social status,
artisan methods to create high-quality products, and special clothing for ceremonial dances
among other things, transferred through oral or written means. This collective knowledge
holds substantial social, cultural, and economic value and is tied to the earth’s biological
resources, which are critical for human development.

Recognizing the importance of biological diversity, the Convention on Biological

Diversity (CBD) was established in 1993 with the goals to conserve biological
diversity, sustainably use its components, and share the benefits derived from
genetic resources fairly and equitably.
Three Pillars of
the Convention
on Biological
Diversity (CBD)
1993
To give greater effect to the third pillar of the CBD, the Nagoya Protocol on Access
to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from
their Utilization was adopted in 2010.
4 min 5 sec
Module
1. Characteristics of TK
3-9-1
Traditional Knowledge, a dynamic entity, is essentially know-how, skills, and

practices handed down through generations within communities, making it
hard to have a fixed definition. It resides substantially in indigenous and local
communities who are its custodians or guardians, embodying their traditional
lifestyle.
There is not a globally acknowledged definition of “traditional knowledge,” but it

finds mention in several international instruments including:
1 T he Convention on Biological
Diversity (CBD) - emphasizes the
relevance of TK in conserving
and sustainably utilizing biological
diversity
2 The Nagoya Protocol - associates TK

with genetic resources
123
TK encompasses various activities such as:

1 Applying plao-noi in Thailand for ulcer treatments
2 Leveraging Hoodia cactus in Africa from Kung Bushmen to mitigate hunger
3 The medicinal use of turmeric in India for healing wounds
4 Utilizing ayahuasca in the Amazon basin for spiritual and healing rituals
5 Adopting j’oublie in Cameroon and Gabon as a sweetener
The Defining Characteristics of TK:

1 Generated, preserved, and transmitted in a traditional and intergenerational context
2 Distinctly associated with an indigenous or local community which preserves and transmits
it between generations
3 Integral to the cultural identity of an indigenous or local community which is recognised as

holding the knowledge through a form of custodianship, guardianship, collective ownership,
or cultural responsibility
6 min 26 sec
Module
2. ‌Defining Characteristics of TCEs
3-9-1
Traditional Cultural Expressions, alternatively termed “folklore,” “expressions of

folklore,” or “indigenous and cultural intellectual property,” do not have a globally
established definition, yet are recognized in various national, regional, and
international platforms. Generally, TCEs may be described as the: “creative form,
or the “expression”, in which traditional culture and knowledge is embodied or
expressed.”
These expressions can be tangible, intangible, or a blend of both, manifesting in music,

art, performances, handicrafts, architectural designs, and even names and words.
Music Stories Art Handicrafts Musical instruments
Words Names Performances Textiles Carpet and jewelry designs Forms of architecture

The Defining Characteristics of TCEs:

1 Products of creative intellectual activity
2 Handed down from one generation to another, either orally or by imitation
3 Reflecting a community’s cultural and social identity
4 Consisting of characteristic elements of a community’s heritage
5 Made by “authors unknown” or by individuals communally recognised as having the right,

responsibility, or permission to do so
6 Often primarily created for spiritual and religious purposes
7 Usually make use of natural resources in their creation and reproduction
8 Constantly evolving, developing, and being recreated within a community
9 min 0 sec
Module
3. Defining GRs
3-9-1
Contrary to TK and TCEs, defining genetic resources (GRs) is more straightforward.

The Convention on Biological Diversity defines “genetic resources” as “genetic
material of actual or potential value,” where “genetic material” means any material
of a plant, animal, microbial, or other origin containing functional units of heredity.
The Nagoya
Protocol
CASE Did you know?
Maxey Cosmetics M3-9-1, 10 min 20 sec
This case illustrates how the firm acquired unique permission to use
corals from the Cayman Islands' waters, adhering to guidelines to ensure
environmental protection and agreeing to a benefit-sharing arrangement
with the Cayman government. This arrangement abides by the principles
delineated in the CBD and Nagoya Protocol, highlighting the requisite for
lawful agreements in exploiting TK, TCEs, and GRs.
125
12 min 7 sec
Module
4. The Interface between TK, TCEs and GRs
3-9-1
TK, TCEs, and GRs, having existed for many years and often in the public domain,
generally lack the originality or novelty to be protected by the standard IP system.
However, they can be found utilized in the creation of marks, inventions, or
aesthetic features in designs within the IP system.
It is important to note that you cannot just use TK, TCEs, and GRs as subject
matter in the development of your own IP without the necessary authorised
permission. Although such information and resources on TK, TCEs, and GRs
appear to be freely available in the public domain, there are proprietary rights that
exist and unauthorised use leads to biopiracy.
0 min 21 sec
Module
0. Protecting and Preserving TK, TCEs and GRs
3-9-2
TK, TCEs, and GRs can be a source of information and inspiration for IP, but they
lack a unique legal framework. They might find protection under conventional
IP systems or through sui generis protection. Here, various cases illustrate the
interaction between these elements and conventional IP systems.

1 min 3 sec
Module 1. Protection
‌ of TK, TCEs and GRs through
3-9-2 Existing Conventional IP Systems
TK, TCEs, and GRs may find protection, depending on the specific jurisdiction,
through copyright and related rights as a work, patents as a source of knowledge
for an invention, designs as a form of patterning on an article, trademarks when
incorporated in a mark, geographical indications to protect the origin where the
goods originate, or combinations of these.
The protection of TCEs through trademarks: Canada’s Trade Marks Act enabled
the First Nations people to register various names, signs, and symbols as “official
marks” to prevent unauthorized commercial use, safeguarding indigenous
heritage.
Protection of craft products through geographical indications: The Unión de

Artesanos Olinca in Mexico secured registration for the “Olinalá” appellation of
origin, protecting the unique craftsmanship and heritage of products made in the
Olinalá region.
Moreover, nations like China, Brazil, and India mandate the disclosure of GRs
and associated TK sources during patent applications to protect their own GRs
and TK. This process, guided by respective national laws and agreements such as
the Nagoya Protocol, is crucial in safeguarding rights and ensuring compliance
with provider country specifications. It involves adhering to stipulations such
as revealing the origin details, and potential consequences for non-compliance
include patent rejection and fines.
CASE Did you know?
Milpurrurru v. Indofurn ([1994] FCA 975)

M3-9-2, 1 min 53 sec
Aboriginal artists won a copyright infringement case where their

works, including those with sacred knowledge, were used without
permission on carpets manufactured in Vietnam and sold in Australia.
127
CASE Did you know?
Eragrostis tef (Teff) Protection through Patents

M3-9-2, 3 min 42 sec
Teff, an Ethiopian grain, became embroiled in legal disputes involving patents

obtained by Dutch company HPFI and the Ethiopian government regarding the
use and profit-sharing of teff. The patents were declared null in 2014 by a Dutch
court due to lack of inventiveness in the processing method.
Protecting Pelargonium Species through Patents M3-9-2, 5 min 55 sec
A German company’s patent regarding extracts from Pelargonium plants was revoked
following opposition from the Alice Community and other groups in South Africa,
asserting the lack of novelty and the exploitation of South African GRs and TK.
Protection of TCEs through Trademarks

M3-9-2, 6 min 55 sec
The Canadian Trademarks Act allows for “official marks” to protect public
symbols. First Nations in Canada have successfully registered names, signs, Douglas Samahquam
First Nation Nation
symbols, and petroglyphs (ancient rock painting images) as official marks,
preventing unauthorized reproduction and commercialization on
merchandise. For example, the Snuneymuxw First Nation registered ancient
rock painting images to control their use on products like T-shirts and jewelry.
Skatin First Nation
Protection of TCEs through Trademarks

M3-9-2, 7 min 38 sec
A further example is the registration of petroglyphs by the Snuneymuxw

0910392 0909991
First Nation to protect these images from unauthorised reproduction
and commercialization on merchandise, such as T-shirts, jewellery, and
postcards. Upon registration as official marks, the Snuneymuxw were
able to request local shops to cease selling items that reproduced the
registered images without permission. 0910398 0910396
Protection of Craft Products through Geographical Indications M3-9-2, 8 min 5 sec
In Mexico, the Union de Artesanos Olinca registered the appellation of origin

“Olinala” for handcrafted wood objects, which are recognized internationally.
Olinala, in Guerrero, Mexico, is known for its intricately made maque goods,
including lacquered wood products. The geographical indication pertains to
products made by Olinala residents using special techniques and materials,
including wood from the Aloe tree and lacquering processes involving insect fats and mineral powders.

10 min 26 sec
Module 2. ‌Protection of TK, TCEs and GRs through

3-9-2 Sui Generis Systems
Several jurisdictions have established sui generis systems, meaning “of its own
kind,” to protect TK, TCEs, and GRs. Examples include Chinese regulations
safeguarding traditional arts and medicines, South Africa’s 2019 Indigenous
Knowledge Act, and Panama’s system defending the intellectual property and
cultural identity of indigenous peoples.
Memo
129
Quiz Module 3-9
Quiz 1
‌By their very nature, TK, TCEs, and GRs typically fall short of the requirements for
protection in the conventional IP arena. This is because at least one requirement is always
, and TK, TCEs, and GRs generally, by themselves, fall short of these
requirements, as they have been around for many years, often in the public domain.
‌Although TK, TCEs, and GRs are not often protected by the conventional IP system, what we do
find at the interface between TK, TCEs, and GRs and the conventional IP system is the use of
TK, TCEs, and GRs as in the creation of a mark, in an invention, in the
aesthetic features of a design, etc.
Memo

Module 3. Memo
Memo
131
IP Panorama 2.0
Study Book
4
Module
How to Ensure
Your Business is E-savvy
4-1 H
ow to Use Existing Forms of
IP Rights in Establishing a Web
Presence for Your Business136
4-2 D
o’s and Don’ts in Establishing
Your Web Presence139
Module 4 How to Ensure Your Business is E-savvy
4-1 How to Use Existing Forms of IP Rights

Submodule in Establishing a Web-Presence for
Your Business
4-2 Do’s and Don’ts in Establishing
Your Web-Presence
Overview
Submodule 4-1
In the digital economy era that has revolutionized the way we purchase goods
and services through online transactions, intellectual property rights play a
crucial role in protecting businesses and ensuring the secure management of
digital assets. This submodule is about how to use existing forms of intellectual
property rights in establishing a web-presence for your business.
Submodule 4-2
Two aspects of intellectual property rights, namely copyrights and trademarks,
should be considered when establishing and growing your web presence, along
with some potential do’s and don’ts. This submodule is about the do’s and don’ts
in establishing your web-presence.
Learning Points
How to Use Existing Forms of Intellectual Property Rights in Establishing a Web-
Presence for Your Business in the Digital Economy
Do’s and Don’ts in Establishing Your Web-Presence
Learning Outcomes
U nderstand how to use existing forms of intellectual property rights in
establishing a web-presence for your business
Understand the do’s and don’ts in establishing
your web-presence

How to Use Existing Forms of IP Rights in Establishing a Web-Presence for Your Business Module 4-1
<How to Use Existing Forms of IP Rights in Establishing a

4-1
Web-Presence for Your Business>
0. ‌How to Use Existing Forms of IP Rights in Establishing a

4-1 0 min 12 sec
Web-Presence for Your Business
1. What is the Digital Economy? 4-1 0 min 28 sec
2. Origins of the Internet and the Emergence of the Digital Economy 4-1 3 min 25 sec
3. Forms of IP Rights Associated with the Digital Economy 4-1 5 min 59 sec
- Emergence of Digital Economy Underpinned by IP/IPR 4-1
4. ‌The Role of a Website and Social Media in Establishing a

4-1 8 min 20 sec
Web-Presence for Your Business
· Key Takeaways for Module 4-4-1 4-1 11 min 58 sec
<Do’s and Don’ts in Establishing Your Web-Presence> 4-2
0. Do’s and Don’ts in Establishing Your Web-Presence 4-2 0 min 12 sec
1. Copyright in the Digital Environment:

4-2 0 min 43 sec
Developing Your Website
- The Process of Developing a Website 4-2
- Three Aspects of a Web Development Agreement 4-2
- Dos or Don’ts of Linking, Framing, and Spidering 4-2
2. Trademarks in the Digital Environment 4-2 12 min 9 sec
- Domain Names 4-2
- Domain Names vs. Trademarks 4-2
- Meta Tags 4-2
- Keyword Advertising 4-2
- Secondary Markets 4-2
- Social Networks 4-2
135
0 min 28 sec
Module
1. What is the Digital Economy?
4-1
The advent of the digital economy has revolutionized the way goods and services
are purchased, shifting it from traditional in-person shopping to online searches
and transactions, driven by the internet’s widespread connectivity and access to a
vast array of products and information.
Previously,
if you need
a new pair
of shoes?
Go to the nearest Walk around from one store Try them on and do a cost
shopping centre to the next looking at various shoes comparison between shops
Head back home Select a pair of shoes and pay

for them with cash
3 min 25 sec
Module 2. ‌Origins of the Internet and the Emergence

4-1 of the Digital Economy
The internet’s origins trace back to the 1960s, initiated by ARPAnet, a project
carried out by the Advanced Research Project Agency. This “Net” network
connected computers used by the U.S. military, defense contractors, and research
universities.
Intangible intellectual property assets were traditionally traded through physical

means, but in the digital economy, transactions occur online without physical
means; for instance, music is streamed live and a novel can be downloaded to your
own device. Technological advancements have given rise to new businesses and
models for doing business.

How to Use Existing Forms of IP Rights in Establishing a Web-Presence for Your Business Module 4-1
Intellectual property and its corresponding rights, which originated in the 1800s,
including copyrights, patents, designs, and trademarks, were also utilized in
the advent of the digital economy in the late 1900s with the rapidly growing
e-commerce industry.
5 min 59 sec
Module 3. ‌Forms of IP Rights Associated with the

4-1 Digital Economy
If your business has already been established with existing IPRs in the form of
copyright, trademarks or patents, as a business owner, you should be asking
yourself at least two questions:
1 What protection do these existing forms of IPRs provide for my e-commerce business?
2 How do I ensure that my core business assets, which are necessary to partake in the digital
economy, such as websites, content and know-how, are adequately protected?
Emergence of Digital Economy Underpinned by IP/IPR

The emergence of the internet, the Internet of Things, and the digital economy
are all underpinned by intangible assets, e.g., IP/IPR.
1 Patents and utility models protect e-commerce systems or online business methods
related to online transactions, as well as the chips, routers, and switches related to internet
functionality.
2 Copyrights protect the source code and text-based HTML code used in websites, including
all the text, images, graphics, audio, videos, and databases.
3 Trademarks protect the names, logos, and symbols on websites.
4 Industrial designs protect the screen displays, user interfaces, web pages, and any
computer-generated graphic symbols.
5 Trade secrets protect the hidden aspects of a website, such as algorithms, object code,
data flow charts, or object flow charts.
The key lies in using different forms of intellectual property rights to develop
websites or social media platforms and e-commerce trading tools.
137
Existing Forms of IP Rights The Digital Economy
8 min 20 sec
Module 4. ‌The Role of a Website and Social Media

3 4-1 in Establishing a Web-Presence for Your
Business
In the digital economy, traditional advertising media have been replaced by
online media such as websites and social media platforms which seamlessly
extend the reach of companies all over the world by allowing them to effectively
communicate their brand with their trademark.
Two traditional rules that apply for e-commerce:
1 Register trademark and use the trademark symbols ™ or ®.
2 Include the copyright logo (©) to signify that digitally stored copyrighted works are subject
to copyright protection.
Four new rules that apply to e-commerce:
1 Register your domain name for your website and set up your social media user name and
account name.
2 Include copyright notices and statements on your webpage to alert a user that the content
is protected.
3 Use watermarks on the digital content.
4 Use control mechanisms that limit access to the content on website, such as online
agreements or encryption.

Do’s and Don’ts in Establishing Your Web-Presence Module 4-2
0 min 43 sec
Module 1. ‌Copyright in the Digital Environment:

4-2 Developing Your Website
The Process of Developing a Website

The development of a website typically combines various intellectual property
rights owned by different entities. A business owner secures the rights to use all
the intellectual property on his/her website.
Three Aspects of a Web Development Agreement

An outsourced web development agreement ensures clarity on task allocation,
intellectual property ownership, and the extent of warranties and indemnities.
CASE Did you know?
Live Face on Wen v. Bilio Holdings LLC M4-1-2, 2 min 15 sec
Live Face sued Biblio alleging that Biblio’s website

included a link to an infringing version of Live Face's
software. Biblio claimed that it hired a web developer
who had exclusive rights to its software. The court found
that Biblio had a duty to take reasonable steps to prevent
the infringement, even if it relied on the web developer's
representation. Live Face on Wen Bilio Holdings LLC
Do’s and Don’ts of Linking, Framing, and Spidering

1 Linking
≐≐ Hyperlinks on websites, which can lead to other
pages or documents, might make users unaware
of any privacy policies or terms of use. Although
hyperlinking does not constitute copyright
infringement per se, there are some special cases.
≐≐ In Case 1, GS Media’s awareness of not having permission to include the photos for
financial gain resulted in their use of the hyperlink being considered copyright infringement.
≐≐ In Case 2, Cooper was found liable for authorizing copyright infringement, as he controlled
the addition and removal of links and financially benefited from site traffic and advertising.
139
2 Framing
≐≐ Some websites use content from another page using framing, presenting it as their own.
This might cause copyright infringement and confusion for the user who mistakes the
“framed” material as coming from the present site.
3 Spidering
≐≐ It would constitute copyright infringement for a spider, often referred to as a search engine
crawler, to identify and copy or scrape pertinent information or text, depending on whether
the retrieved content qualifies for copyright protection.
≐≐ In Case 1, the court determined that copyright claims could not be applied to spidering
activities, and that issues of unauthorized data usage from Ryanair’s website should be
addressed as contract breaches, not copyright infringements.
≐≐ In Case 2, Meltwater News faced copyright infringement charges in the US for scraping
headlines from the Associated Press website, but no infringement was found in the UK,
showcasing different legal interpretations across jurisdictions.
12 min 9 sec
Module
2. Trademarks in the Digital Environment
4-2
In the digital economy, there are six key considerations related to trademarks:
1 Domain names 2 Domain Names vs. Trademarks
3 Metatags 4 Keyword Advertising
5 Secondary Markets 6 Social Networks
Domain Names

Do’s and Don’ts in Establishing Your Web-Presence Module 4-2
A domain name is a unique address that identifies a computer on the internet. It is

made up of two parts: a top-level domain (TLD) and a second-level domain (SLD).
TLDs are the most general part of the domain name, such as .com, .org, or .net.
SLDs are the more specific part, such as the name of a business or product.
When selecting a second-level domain, there are do’s and don’ts to keep in mind:
1 Choose a name that is relevant to your business or product.
2 Don’t choose a name that is the trademark of another company.
3 Avoid using controversial words or phrases.
4 Shorter domain names are generally easier to remember and type.
Domain names can be registered easily. Even if you have a registered trademark,
you cannot automatically claim the corresponding domain name. Domain names
are issued on a first-come-first-serve basis. Promptly secure domain names when
developing new trademarks for your business.
W hile there is some protection from cybersquatting, where a third party

maliciously registers a domain name identical to a registered trademark and
demands funds from the rightful trademark owner, it is necessary to “act fast”
and secure the domain name first when a new trademark is developed for your
business.
CASE Did you know?
Real Madrid Club de Futbol v. Jose Delfim Mendosa de

Vasconelos M4-1-2, 17 min 15 sec
Mr. Jose from Brazil registered the domain www.realmadrid.com.br, which

contained information and news about Real Madrid, and ad space. Real Madrid
filed a complaint, claiming it held trademark registrations in many countries,
including Brazil. The panel determined the domain name was similar to Real
Madrid's trademark and ordered its transfer to the club.
Domain Names vs. Trademarks

Domain names are limited to words and cannot represent logos, smells, sounds, or
other types of trademarks.
Trademarks identify businesses providing goods and/or services, while a domain

name is a communication tool directing consumers to a certain website.
141
A domain name registration gives one global rights compared to a trademark,

which is limited to a specific territory.
Metatags
Metatags embedded in HTML describe websites using search terms that search
engine users use to find businesses or products. Website owners often use
competitors’ trademarks in metatags to attract customers or boost search
rankings.
Courts in several countries have had to give consideration as to whether the use
of metatags amounts to trademark infringement.
Keyword Advertising
Consumers utilize search engines like Bing and Google to access information and
websites. Each engine uses a unique algorithm to show results based on searched
keywords. Advertisers can place ads on search engines triggered by specific
keywords. Various jurisdictions have thus concluded that the use of AdWords
does not constitute trademark infringement. While using a competitors’ mark to
optimize search results for your own business is considered a common advertising
strategy, care should be taken to ensure that such use is descriptive.
Secondary Markets
Caution is needed when allowing a secondary market to sell your goods, as
predator brands may use your registered trademark to sell counterfeit products,
diluting and confusing your brand for customers.
Social Networks
Social networks like Facebook, Twitter, and
LinkedIn offer personalized URLs based
on usernames or account names, which
are given on a first-come-first-serve basis. It is essential to secure word marks as
social network usernames early.

Module 4. Quiz
Quiz Module 4
Quiz 1
You own a famous sunglass brand called “CocoSavannah” and until recently have been doing all
your trading through malls across Europe, America, and Asia. You have not had a web presence
before but have now decided that it is time to take your brand online.
You have contacted a web developer to create a website for you. As part of the web development
agreement, the developer has asked you to set out for him your current IP assets.
Set out at least two forms of IPR that you may currently already be using to protect your brand
(make them up based on your knowledge of what may be important to protect a sunglasses
brand) and which are also relevant for the digital economy and then identify four additional forms
of IP which you will need to develop for your online business and name with the associated
IPR as you move your business into the digital economy and partake as an active transactor in
e-commerce. [12marks]
Answer for the Quiz
143
Red Label Vacations Inc. v. 411 Travel Buys Limited M4-1-2, 20 min 50 sec
The 411 Travel Buys website used metatags with trademarks from Red Label Vacations Inc.
The court stated that the use of metatags does not, by itself, constitute a basis for a likelihood of
confusion and trademark infringement, because consumers are still free to choose goods or services
from the website for which they initially searched. However, inserting a registered trademark in a
metatag could, in some situations, constitute trademark infringement.
Road Tech Computer Systems Limited v. Mandata Limited M4-1-2, 21 min 50 sec
Mandata used metatags with Road Tech's trademarks on its website. The court ruled this as an
infringement and misrepresentation because it directed users searching for Road Tech to Mandata's
website.
Organization Veraz v. Open Discovery SA (2018) M4-1-2, 23 min 24 sec
The Argentinean court reviewed Open Discovery's use of the trademark "veraz" as a keyword for online
ads targeting its searchers and ruled the word’s use constituted a trademark infringement and unfair
competition.
M/S Matrimony.com Limited v. Kalyan Jewellers India Limited

M4-1-2, 23 min 58 sec
M/S Matrimony is the owner of the BHARAT MATRIMONY trademarks and other marks containing the
word "matrimony" alongside local Indian names. The court ruled that Kalyan Jewellers, a company that
provides similar services, could not be restrained from using the word “matrimony,” as it would grant
M/S Matrimony a monopoly over a common English word.
Ortlieb v. Amazon (2019) M4-1-2, 25 min 26 sec
Ortlieb, a German manufacturer with registered trademarks,

does not supply directly to Amazon, but its products are
available via third parties. When consumers searched for
"Ortlieb bicycle bag" on Google, they would find Ortlieb's product on Amazon’s website as the top result
and a competitor's site as the second result.
The court ruled that, while a retailer can offer competing product advertising with the mark of just one
particular manufacturer, it must ensure that consumers can easily find what they specifically searched
for to avoid confusion. Thus, clear distinction between search query results and advertisements on
search engines is essential.

Module 4. Memo
Memo
145
IP Panorama 2.0
Study Book
5
Module
The Intellectual
Property Strategy
5-1-1 Business & the IP System150

5-1-2 S
teps to Consider before
Formulating an IP Strategy154
5-2 Formulating Your IP Strategy160
Module 5 The Intellectual Property Strategy
5-1-1 Business & the IP System

Submodule
5-1-2 Steps to Consider before Formulating
an IP Strategy
IP Panorama 2.0 M 5-1-1 /M 5-1-2
Overview
W hether your business uses a traditional trading model or is active in the
e-commerce space, there are some common considerations and steps needed
to develop an IP strategy that is aligned with your business strategy. This
module is about understanding IP systems from a business perspective and how
to develop an IP strategy.
Learning Points
Choosing the Appropriate IP Rights for Your Business
Steps to Consider before Formulating an IP Strategy
Learning Outcomes
Understand how to develop an IP strategy for your organization
Understand what to consider when formulating an IP strategy
<Business & the IP System> 5-1-1
0. Business and the IP System 5-1-1 0 min 20 sec
1. ‌Choosing the Appropriate Intellectual Property Rights

5-1-1 0 min 27 sec
for Your Business
- The Relevance of IP and IP Rights to Your Business 5-1-1 0 min 35 sec
- The IP Strategy Adopted by Ethiopia for Coffee 5-1-1 02 min 5 sec
2. How Does Your Business View the IP System? 5-1-1 08 min 42 sec
- Many Approaches to the Development of an IP Strategy 5-1-1 08 min 50 sec

Business & the IP System Module 5-1-1
<Business & the IP System> 5-1-1
- ‌The Way to Develop an IP Strategy for Your Business:

5-1-1 12 min 23 sec
5 Approaches
<Steps to Consider before Formulating an IP Strategy> 5-1-2
1. Steps to Consider before Formulating an IP Strategy 5-1-2 0 min 0 sec
- ‌Ten Steps that Should be Considered When

5-1-2
Formulating an IP Strategy
Memo
149
0 min 20 sec
Module
0. Business and the IP System
5-1-1
Whether your company conducts business using a traditional model or is active

in the e-commerce space, there are some common considerations and steps you
need to take to develop an IP strategy that is aligned with your business strategy.
0 min 27 sec
Module 1. ‌Choosing the Appropriate Intellectual

5-1-1 Property Rights for Your Business
The Relevance of IP and IP Rights to Your Business

As the global economy moves from the digital economy to e-commerce, the world
of business has changed. In a global economy where the entire world’s population
can be a market, businesses in many countries do not manufacture and sell
directly or provide all services on their own, making partnerships critical.
The role of research and development and the growing importance of marketing
and sales contribute significantly to competitive advantage, and technology,
design, and brands are assets that companies can secure exclusitivity for.
Therefore, choosing the right IP or rights for your business model becomes
important depending on the type of business you have and whether you want to “do
it all yourself” or outsource some roles to others.
The IP Strategy Adopted by Ethiopia for Coffee

Coffee alone generates about 33 percent
of Ethiopia’s total export earnings. Some
of the world’s finest coffees, such as
Harrar®, Sidamo®, and Yirgacheffee®
coffees originate in Ethiopia. However,
these heritage coffees command very
high retail prices on the international market with comparatively low returns for
producers.

In 2004, the Ethiopian government launched the Ethiopian Coffee Trademarking
and Licensing Initiative, which is organized and run by the Ethiopian Fine Coffee
Stakeholder Committee, a consortium comprising cooperatives, private exporters,
and the Ethiopian IP Office and other concerned government bodies. The key
strategy was how best to use IP rights to obtain exclusive ownership of Ethiopian
coffee names, achieve wider international recognition, and maximize returns.
A strategy for registration of geographical indication appeared to be the best

course of action. However, the nature of coffee production in Ethiopia, including
a number of special circumstances, distribution issues, etc., made registration of
geographical indications impractical.
So, their strategy focused on trademark registration instead, which secures the
legal right to use, license, and exploit the trademarked name in the Ethiopian
government. As part of its IP strategy, the Ethiopian IP Office began filing
applications to register the names Harrar/Harar, Sidamo, and Yirgacheffe as
trademarks in key markets.
The U.S. Patent and Trademark Office granted Yirgacheffe’s application to register
the trademark, but the National Coffee Association objected to the application on
the grounds that “Harrar” and “Sidamo” were too generic as descriptions of coffee
to be registered under U.S. trademark law. The U.S. Patent and Trademark Office
rejected the applications for “Harrar” in 2005 and “Sidamo” in 2006.
In 2006, the Ethiopian government and Starbucks, the company that had
previously opposed the application with the U.S. National Coffee Association,
reached a mutually satisfactory agreement on the distribution, marketing, and
licensing of Ethiopian specialty coffees. “Harrar” and “Sidamo” were subsequently
registered as trademarks by the U.S. Patent and Trademark Office.
After obtaining trademark rights, Ethiopia initiated a royalty-free licensing

scheme in order to increase the export premium of Ethiopian specialty coffee.
The Ethiopian government allowed the licensee to use the registered trademark
royalty-free on all products consisting solely of Ethiopian specialty coffee but
required the licensee to market the specialty coffee and promote Ethiopian fine
coffee through customer education.
151
The licensing strategy, as part of the IP strategy, was aimed to boost consumer
recognition of Ethiopian coffee trademarks and facilitate
the growth of the demand for Ethiopian fine coffees.
This strategy aimed to ensure that Ethiopian farmers
and small businessmen secured a reasonable return
from the sale of their coffees.
8 min 42 sec
Module 2. ‌How Does Your Business View the IP

5-1-1 System?
Many Approaches to the Development of an IP Strategy

An IP strategy includes, but is not limited to, the IP filing strategy a business takes,
the thresholds it considers when deciding whether to bring a product to market,
and so on. The approach chosen can be based on the entire IP portfolio or on a
case-by-case or product-by-product or even service-type approach.
An IP strategy will set out how IP and IP rights will be acquired, protected, utilized, and
maintained and should be strongly influenced by your business strategy. An IP strategy
has an internal and external focus and should be operationalized through an IP policy.
When Alexander Fleming and Howard Florey’s team discovered Penicillin in 1929,
there was no protection available for product patents in the United Kingdom and
it was thought the antibiotic should not be the subject of patent protection.
In the 1940s, U.S. companies developed a method to produce penicillin on a large
commercial scale. A couple of years later, the Cephalosporin group of antibiotics
were discovered, developed, and a patent was filed. The inventors, Guy Newton
and Edward Abraham, established two charitable trusts to support researchers in
the fields of medicine, biology, and chemistry.
This case shows that if you do not control your IP, you risk losing control of your
inventions. And because IP control can also be used for charitable purposes, this
case shows that IP can be viewed as a means of control, not just as a barrier to
competitors’ entry.

Because IP is a set of business assets, it may have little or no value on its own, but
when combined with a company’s other assets, its value becomes enormous.
The Way to Develop an IP Strategy for Your Business: Five Approaches
1 Defensive Approach Level

≐≐ Companies use IP only defensively and aim
to protect their innovation and grow their IP
portfolio. These companies typically have very
high IP protection costs.
2 Cost Control Level

≐≐ C ompanies may still have a defensive
approach but focus on ways to protect their IP
and save on legal costs.
3 Profit Level
≐≐ Companies start to license out their IP thereby bringing in licensing revenue.
4 Integrated Level
≐≐ The use of IP has been integrated across a range of business roles and hence IP is seen to
be of value across the business.
5 Visionary Approach
≐≐ Business takes a long-term view of the business’s role in the industry and hence IP is used
as a tool to create more strategic value.
≐≐ There is no “best“ approach for every business. It is critical to determine what value the
executive management seeks to obtain from its IP, and hence how it wants to use the IP
system. Whether the IP system is purely to be used as part of a defensive strategy, or if it
is to be deployed as a visionary tool, will influence at which level on the pyramid one should
focus, and hence what approach one should adopt.
153
0 min 0 sec
Module 1. ‌Steps to Consider before Formulating an IP

5-1-2 Strategy
Ten Steps that Should be Considered when Formulating an IP Strategy

1 Analyze Your Business
≐≐ The type of IP strategy depends on
the type of business or organization.
For research-based organizations,
an IP strategy will often include a
stringent publication policy based on
the desire of researchers to publish.
The IP policy will also provide clarity
on IP ownership based on the fluid engagements between the research organization and
third-party collaborators, as well as include an IP training policy for researchers.
≐≐ For non-research-based organizations, different approaches will be adopted depending on
the size of the business. Small and medium-sized enterprises with rapid growth will need
an effective IP strategy with a clear and concise IP policy, whereas for larger organizations,
the IP strategy should spell out the obligations of management and establish a clear
communication strategy to ensure a consistent approach to IP issues across the business.
2 Assess the Culture of the Organization

≐≐ The culture of the organization should be considered when introducing new strategies and
systems. As an example, in an engineering business, introducing too much bureaucratic
paperwork will be poorly received and the strategy will likely not be implemented, while
in an academic organization with limited commercial focus, revenue models need to be
carefully crafted.
3 Conduct an IP Audit
≐≐ You can do this by doing an IP audit to determine and document all existing IP and IP
rights. The audit should include all registered forms of IP, such as patents, registered
designs, trademarks, and more, as well as all unregistered assets. An IP audit should also
cover all gaps in protection, associated risks, possible opportunities, and the effectiveness
of spending to maintain the IP.
4 Assign a Business Role to Your IP

≐≐ After you have conducted an IP audit and know what IP you have, a business role should be
assigned to your IP. There are at least three business objectives that should be considered:

Steps to Consider before Formulating an IP Strategy Module 5-1-2
(ⅰ) the creation of an exclusionary monopoly to avoid conflict with others; (ⅱ) a source of
financial income; and (ⅲ) strategic positioning.
(ⅰ) ‌If your business objective is to obtain an exclusionary monopoly to avoid conflict with
other potential competitors, a patent can give you exclusive rights and you can consider
cross-licensing your business needs from other parties who have improved your
technology. If your business has strong trademarks in place, customers will choose
your product above others.
(ⅱ) ‌If your business objective is to ensure financial income, you can capitalize on the
exclusive rights of patent rights, such as with the manufacture of a product or the
use of a process. You can also generate revenue by licensing trademark rights to
distributors.
(ⅲ) ‌If your business objective is to position your business strategically, the exclusivity of a
patent can prevent competitors from doing business with you. These rights are also
useful tools in the event that you infringe on someone else or if someone infringes on
you. These acquired rights can be used as a means to trade for rights and potentially
form a strategic alliance or a joint venture.
5 Assess Your Competitive Advantage or Your Barriers to Entry

≐≐ A competitive advantage can be created or barriers to entry can be relieved through having
key personnel involved or employed, operating within a niche market, having exclusive
supply of key ingredients, obtaining the necessary regulatory approval, being the first to
market, or taking advantage of disorganized competitors.
6 Protect Your IP
≐≐ A long with the IP property, the
methods for protecting it are
becoming increasingly sophisticated.
While exclusionary rights are very
important during the life cycle of a
product, it is not always possible or
desirable to protect every incremental improvement that is made during the life cycle of a product.
≐≐ In light of this, defensive publishing is becoming an increasingly important part of an
IP strategy. This means making your inventions available to the public so that they can
become part of the prior art. It also means protecting your business from the threat
of patent trolls, who use patents to collect licensing fees or damages and use “picket-
fence” strategies. A “picket-fence” strategy is where a competitor patents incremental
improvements around a core patent to erode its value, giving the competitor leverage to
license the core technology on preferential terms.
155
7 Interactions with Third Parties
Third
Parties
short-term collaboration
employees visitors consultants suppliers contractors distributors customers partners
≐≐ As IP or IP rights are often lost with interactions with third parties, it is important to define
clear parameters for these interactions. Third party interactions can be divided into internal
and external parties.
≐≐ To manage internal third parties through your IP policy, you need to define clear parameters
for interactions and ensure that you have clear systems in place, such as employment
contracts, key personnel insurance, succession planning, confidentiality agreements,
development agreements, documentation protocols, visitor protocols, award schemes for
employees, and licenses.
≐≐ However, external third parties cannot be managed through a policy. These external third
parties are all members of the crucial value chain in getting a product to market or providing
a service. The way in which one uses IP rights with these external parties is critical.
8 What are the Markets Doing?

≐≐ Markets inform your IP strategy, indicating where to file for protection as well as the scope
of the IP protection you should be seeking. As IP legislation differs in different jurisdictions,
the strategy needs to take this into account. You need to know where your competitors are
marketing, selling, and manufacturing as well as the location of your current and potential
future customers.
≐≐ Your competitors’ patent portfolios are also important for securing freedom to operate for
certain technologies in certain jurisdictions, so you should always conduct a freedom to
operate search at the beginning of a project before investing a lot of money.
9 It’s All about Timing

≐≐ The decision as to when to file for IP protection can have a significant effect on the success
of your product or service. If you file promptly, you may be able to secure exclusivity before
potential competitors, but on the other hand, you run the risk that the nature of the IP
protection may change significantly during development.
≐≐ Filing too early can also influence the revenue received by a business, given that most
revenues are generated at the end of the lifetime of a patent. Timing is therefore dependent
on how long it may take to complete the IP creation life cycle. Life science research
organizations, for example, have a longer IP creation time than electronics industries.

Steps to Consider before Formulating an IP Strategy Module 5-1-2
10 Resources
≐≐ Resources need to be identified. These include human resources and financial resources.
IP protection must be budgeted for and if there is no budget, then a trade secret approach
or first-to-market approach should be adopted.
Memo
157
Quiz Module 5-1
Quiz 1
‌When it comes to developing an IP strategy for your business, the way in which it is done may
depend on the way your business views the IP system. In this regard, there are five possibilities,
which can be arranged pyramidally. At the bottom of the pyramid on the first level is the
approach. These are companies who use IP solely for defensive purposes. The
goal is to protect the business’s innovation and grow its IP portfolio.
‌After you have conducted an IP audit and know what IP you have, a business role should be
assigned to your IP. There are at least three business objectives which should be considered.
to avoid conflict with others, a source of financial income, and
strategic positioning.
‌Defensive publications protect your business against threats from patent trolls and
strategies. strategies occur when competitors patent
incremental improvements around your core patent. This strategy erodes your core patent’s
value and gives your competitors leverage to licence your core technology from you on
preferential terms.
‌If you file , you may be able to secure exclusivity before potential competitors,
but on the other hand, you run the risk that the subject of IP protection may
significantly during development.
Memo

The IP Strategy Adopted by Ethiopia for Coffee M5-1-1, 2 min 5 sec
The Ethiopian government launched the Ethiopian Coffee Trademarking

and Licensing Initiative and registered the names Harrar/Harar, Sidamo
and Yirgacheffe as trademarks in key markets. The licensing strategy,
as part of the IP strategy, was aimed to boost consumer recognition of
Ethiopian coffee trademarks and facilitate the growth of the demand
for Ethiopian fine coffees.
The Case of Penicillin and Cephalosporin Antibiotics M5-1-1, 9 min 50 sec
When Alexander Fleming and Howard Florey’s team

discovered Penicillin in 1929, there was no protection
available for product patents in the United Kingdom,
and U.S. companies developed a method to produce
penicillin on a large commercial scale in the 1940s.
A couple of years later, two researchers received a
patent for the Cephalosporin group of antibiotics and
the inventors established two charitable trusts to support researchers in the fields of medicine, biology,
and chemistry.
Dell & IBM Cross-Licensing Strategy M5-1-2, 5 min 56 sec
In 1999, Dell used its patent portfolio as collateral in a USD

16 billion cross-licensing deal with IBM that provided Dell
with lower-cost computer components. This freed Dell from
having to pay IBM several millions of dollars in royalties and
further reduced Dell’s cost of doing business.
Seoul Semiconductor & Royal Philips Electronics Cross-Licensing Strategy

M5-1-2, 6 min 20 sec
In 2011, Seoul Semiconductor and Royal Philips Electronics

agreed to settle an LED patent dispute and enter into a
cross-licensing agreement covering patents relating to
specific LED technology areas, thereby using cross-licensing
to form a strategic alliance.
159
5-2-1 Formulating Your IP Strategy ( 1 )

Submodule
5-2-2 Formulating Your IP Strategy (2)
IP Panorama 2.0 M 5-2-1 / M 5-2-2
Overview
Intellectual property strategies may be quite different depending on whether
you are a public sector business, a large corporate, a spin-out company, or
a small or medium-sized enterprise. This module is about understanding IP
systems from a business perspective and how to develop an IP strategy.
Learning Points
Formulating Your IP Strategy – Key Factors in the External Strategy
Formulating Your IP Strategy – Key Factors in the Internal Strategy
Learning Outcomes
Understand key factors in external strategy for IP
Understand key factors in internal strategy for IP
<Formulating Your IP Strategy (1)> 5-2-1
0. Formulating Your IP Strategy:

5-2-1 0 min 19 sec
Key Factors in the External Strategy
1. 4 Basic IP Strategies 5-2-1 1 min 44 sec
- Path to Minimize Risk 5-2-1 1 min 50 sec
- Path to Cost Reduction 5-2-1 2 min 18 sec
- Path to Value 5-2-1 2 min 50 sec
- Path to Strategic Value 5-2-1 3 min 20 sec
2. The External Strategy 5-2-1 4 min 3 sec

Formulating Your IP Strategy Module 5-2
<Formulating Your IP Strategy (2)> 5-2-2
0. Formulating Your IP Strategy:

5-2-2 0 min 19 sec
Key Factors in the Internal Strategy
- IP Disclosure 5-2-2 1 min 26 sec
- IP Ownership 5-2-2 2 min 2 sec
- IP Protection and Maintenance 5-2-2 4 min 43 sec
- Allocation of Resources 5-2-2 6 min 59 sec
- Benefit-Sharing 5-2-2 7 min 18 sec
- Use of Information 5-2-2 7 min 45 sec
- Co-ordination is in Place 5-2-2 8 min 28 sec
- IP Wise 5-2-2 9 min 18 sec
- How IP is Valued 5-2-2 9 min 56 sec
- On-going Review 5-2-2 10 min 25 sec
Memo
161
0 min 19 sec
Module 0. ‌Formulating Your IP Strategy:

5-2-1 Key Factors in the External Strategy
Strategy is effectively “a determination of the long term goals and objectives of an

enterprise and the adoption of courses of action and the allocation of resources
necessary for carrying out the goals.” In some areas of the business, profit is
the key driver, while for others, utilization of IP where financial return is not
paramount is the key driver. The strategy should be able to accommodate these
different focus areas.
1 min 44 sec
Module
1. 4 Basic IP Strategies
5-2-1
IP strategies may be quite different depending on the nature of the organization.
There are four basic intellectual property strategies which a business can choose
from and then build upon:
Path to Minimize Risk

W here IP is regarded as a legal asset and the
legal department drives programs to minimize
risk by ensuring compliance, protecting and
building a portfolio, and avoiding litigation
through cross-licensing
Path to Cost Reduction

T h i s s t r a t e g y i nv o l v e s m a i n t a i n i n g t h e
effectiveness of the IP portfolio while cutting
costs by eliminating unnecessary patents,
creating a standard country filing list, tightening
internal review processes, and aligning
trademarks and brands with products.

Path to Value
IP is used as a tool to seek out business opportunities
and legal assets through licensing or joint
ventures. The business makes profit through the
IP itself and not just from the sale of products or
services.
Path to Strategic Value

These businesses see their IP as both a corporate and a business asset, capable of
value in terms of revenue and strategic value. These
businesses use their IP to control competition,
to file for IP protection strategically, to refocus
their research and development efforts when
needed, and to give careful consideration to
partnerships with suppliers, customers, or
distributors.
4 min 3 sec
Module
2. The External Strategy
5-2-1
The external strategy is really about how the

business utilises its intellectual property and
interfaces with the external third parties, and how
it positions itself with respect to competitors.
A business can utilize its intellectual property

to create an exclusionary monopoly and to
determine what the roles of licensing, assignment,
and joint ventures are.
IP plays a critical role in all aspects of business development, including product
development and design, service delivery, marketing, raising funds, and exporting
or expanding your business abroad through licensing or franchising.
163
D epending on the business’s position with respect to its competitors, the

business’s approach to litigation, such as proceeding with litigation or offering a
license, is very crucial.
0 min 19 sec
Module 0. ‌Formulating Your IP Strategy:

5-2-2 Key Factors in the Internal Strategy
The internal strategy is thus about

internalizing the external intellectual
property strategy, reducing it to
writing, and operationalizing it.
IP Disclosure
The processes that will be followed
by an employee when they create
new intellectual property should
be clear and easy to follow. The
evaluations for protection should be
clear and transparent. In addition,
researchers should be encouraged to do patent searches along with literature
searches to assess the novelty of their development.
IP Ownership
The general rule about ownership of IPR is that the creator of a new creation is
the first owner of that creation, but this rule is subject to change.
Ownership and creatorship are different and thus ownership may depend on your
country’s national legislation, your business’s stance on ownership (provided it
is not contrary to national legislation) or in the absence of legislation or a stance
established by your business, ownership may be determined on a case-by-case
basis according to how the company’s contracts, such as its employment contracts
or use of external contractors, are set up.

Ideally, an employment contract or external contractor agreement would be in

place that set out who owns the intellectual property and how it will be managed.
Whatever intellectual property ownership arrangement your business follows
should be set out in the intellectual property policy, and all agreements should be
aligned with this arrangement.
CASE Did you know?
Mr. Xie and Dafeng Company M5-2-2, 3 min 27 sec
As for the patent on the window opening mechanism that Mr. Xie applied for,
Dafeng Company claimed that he acquired knowledge of the invention while
working for the company. The court found that, as the patent application was filed
within one year of leaving Dafeng Company and that as his invention was related to
his duty at the company, the patent should be owned by Dafeng Company. Dafeng Company
IP Protection and Maintenance

This refers to what aspects will be protected by what type of intellectual property
right, and in which countries you will file for that specific protection.
For the patent strategy, it would be advisable to file for patent protection in each
of the countries where one would like to manufacture as well as in countries
where the closest competitors and users reside. While trade secrets do not
require any formal protection, the intellectual property strategy needs to focus on
maintaining the confidentiality of these trade secrets, especially when they will be
licensed to licensees.
For the trade name/trademark strategy of the fuel cells, this may require that it is
registered in every country where the fuel cells will be made, used, sold, and/or
exported to.
Copyrights for computer programs and assembly instructions, as well as design

protection for the specific design of the fuel cell and the arrangement of the fuel
cell plates, should also be checked.
Allocation of Resources
This is an internal management decision and after assessing what resources
are available, especially from a financial and human resource perspective, it is
important to allocate those resources accordingly.
165
Benefit-Sharing
This area should include incentives for employees to encourage IP creation and
benefit sharing when the IP is utilized and generates revenue for the business.
Use of Information
Use of information has both technical and strategic importance. This includes
the publication of research results and IP rights applied for. Doing this early
enough protects your business from potential conflict with competitors who
claim infringement and acts as a tool to inform the strategic direction of your own
organization.
Coordination is in Place
In order to strategically manage IP, the range of people, skills, and qualifications
required are diverse, so a coordinated approach is necessary. Communication
between, and effective coordination among, the key players is thus of paramount
importance.
IP Wise
A minimum level of IP awareness should be present among your business’s
employees. IP training can also ensure that research and development employees
are able to communicate better with patent attorneys, as they will understand the
patenting process.
How IP is Valued
Valuing IP goes beyond assigning an economic value to IP and can mean assessing
the organizational values and objectives and assigning a value to a particular
portfolio, elements of a portfolio, or indeed, individual cases.
On-going Review
W hen any gaps are identified, these should be remedied with the necessary
policies. A regular review process must then be put in place to ensure that all gaps
are closed and that the policy is effectively implemented.

Module 5-2. Quiz
Quiz Module 5-2
Quiz 1
‌IP strategies may be quite different depending on whether you are a public sector business,
a large corporate, a spin-out company, or a small to medium-sized enterprise. There are four
basic IP strategies that a business can choose from and then build upon. The fourth basic IP
strategy is . Businesses who operate at this level see their IP as
both a corporate and a business asset, capable of value in terms of revenue and strategic value.
‌The external strategy is about how the business , interfaces with the
external third parties, and positions itself with respect to competitors.
‌ has both technical and strategic importance. This includes

the publication of research results after relevant intellectual property has been identified and
intellectual property rights.
‌The general rule about ownership of IP is that the of the new creation is the first
owner of that creation, but this rule is handled on a case-by-case basis.
Memo
167
IP Panorama 2.0
Study Book
6
Module
IP Audit
6-1 What is an IP Audit?172

6-2 S
teps to Take When Conducting
an IP Audit176
Module 6 IP Audit
6-1 What is an IP Audit?

Submodule
6-2 Steps to Take When Conducting an IP Audit
Overview
A business cannot adequately protect and manage its IP unless it knows exactly
what it owns and understands the role of the identified IP for the business. This
module is about understanding IP audits and utilizing them to effectively manage IP.
Learning Points
What is an IP Audit?
Steps to Take When Conducting an IP audit
Learning Outcomes
Describe what an IP audit is
List the steps to take when conducting an IP audit
<What is an IP Audit?> 6-1
0. What is an IP Audit? 6-1 0 min 20 sec
1. An IP Audit Defined 6-1 1 min 17 sec
- An IP Audit 6-1 1 min 23 sec
- Four Reasons to Conduct an IP Audit 6-1 2 min 25 sec
2. Types of IP Audits 6-1 6 min 26 sec
- General Purpose IP Audit 6-1 6 min 38 sec
- Event-Driven IP Audit 6-1 7 min 19 sec
- Limited Purpose Focused Audits 6-1 10 min 40 sec

What is an IP Audit? Module 6-1
<Steps to Take When Conducting an IP Audit> 6-2
0. Steps to Take When Conducting an IP Audit 6-2 0 min 20 sec
1. Eight Steps to Take When Conducting an IP Audit 6-2 0 min 38 sec
- Establish the Purpose of the IP Audit 6-2
- Gather Information and Build the Context for the Audit 6-2
- Develop a Plan for the IP Audit 6-2
- Develop a Detailed Checklist 6-2
- Perform the Audit 6-2
- Assigning a Value to the IP 6-2
- Generate the IP Audit Report 6-2
- Interpret the IP Audit Outcomes 6-2
Memo
171
Module 6 IP Audit
0 min 20 sec
Module
0. What is an IP Audit?
6-1
An IP audit can help a business know exactly what it owns and understand the role
of the identified IP for the business. An IP audit is conducted as an evaluation of
the IP and the associated rights and is done to determine the role the IP plays or
could be playing in the business strategy.
1 min 17 sec
Module
1. An IP Audit Defined
6-1
An IP Audit
An IP audit can be defined as a “systematic review of the IP owned, used, or
acquired by a business so as to assess and manage risk, remedy any problems
which may be identified during the audit, and, in an informed manner, implement
best practices in the management of the identified IP.”
Because the assets that are “counted” in an IP audit are intangible assets such as
all registered and unregistered patents, trademarks, designs, all copyright, and any
trade secrets, conducting an IP audit allows a company to develop an inventory of
its IP assets.
Four Reasons to Conduct an IP Audit

1 To determine who owns the IP or intellectual property used by your business. Since the
development of IP is often outsourced, it is necessary to determine the ownership of IP
created during the outsourcing process.
≐≐ Examples include websites developed by an outsourced web developer and IP from a
research collaboration where the research is funded by a company. Another example would
be if a manufacturer was given a specific design for a machine part and was asked to tool
it. If the procurement agreement does not specify on improvements, the manufacturer may
own the IP for some significant changes.

2 To identify how the IP owned by the business is: a) being

used, b) not being used, or c) being underused. An IP
audit can reveal how the IP is used in your business,
such as use of the IP to manufacture a specific product
or use through a license.
3 To determine whether you are infringing on someone else’s rights or whether someone else
is infringing on your rights.
≐≐ An IP audit can help companies anticipate possible disputes
by identifying the need for a freedom to operate analysis
and by planning successful avoidance and resolution
strategies such as designing around, cross-licensing, and
anonymously challenging competitors’ rights.
4 An IP audit can inform the business on what strategic actions need to be taken to ensure
that the IP is able to deliver on the business strategy and enhance your business’
competitiveness.
≐≐ One example of a strategic action could be assigning a
monetary value to your IP. The combination of an IP audit,
which enables one to conduct an evaluation of the identified
IP, with a valuation of the IP, empowers shareholders to be
informed for any opportunities that may arise.
Memo
173
Module 6 IP Audit
6 min 26 sec
Module
2. Types of IP Audits
6-1
General Purpose IP Audit

This type of audit is a very comprehensive audit and may be performed for a
variety of reasons, such as for establishing a new business area, when a business
is considering implementing new policies, standards, or procedures related to IP,
and when a business undergoes organizational restructuring.
Event-Driven IP Audit
This type of audit is often referred to as an “IP due diligence” and generally is
much narrower in scope than a “general purpose” IP audit. This audit is most
commonly done in response to any one of the following six events:
1 Merger and Acquisition, or Joint Venture

≐≐ A n audit provides a basis for assessing the risk and value of the IP or IP rights in
negotiations for possible merger or acquisition, selling off subsidiary business interests or
investments, or a joint venture arrangement.
2 Financial Transaction
≐≐ It is important to do an IP audit before one or more of the following financial transactions
are concluded:
(ⅰ) an initial public offering
(ⅱ) a private placement of stock
(ⅲ) a significant stock purchase
(ⅳ) before taking a security interest in the IP
3 Buying or Selling of a Business Division or the Transfer of IP

≐≐ An IP audit will help a business determine a number of warranties as to the ownership,
non‐infringement, and marketability of the IP assets before buying or selling the business
division or product line.
4 Launching of a New Product or Service

≐≐ When you launch a new product or service, and an IP audit can assist with mitigating the
risk of infringement.

5 IP Licensing
≐≐ An IP audit will assist in determining whether licensors have the necessary rights and
whether there are no existing licensing commitments that will impede any new licenses
being granted.
6 Bankruptcy, Layoffs, or Similar Events

≐≐ An IP audit is also appropriate as a planning tool in advance of any filings for bankruptcy,
significant plans for employee layoffs, or business closure, as the IP can serve as an asset
for disposal.
Limited Purpose Focused Audits

Some IP audits are much narrower in scope than the two types of IP audits above
(general purpose and specific event) and often need to be performed in a very
short time frame.
These audits are typically used to justify a certain legal position such as those
related to personnel turnover, foreign IP filings, the use of the Internet for
Business Purposes, clean room procedures, which is an action that seeks to
avoid infringement by ensuring that there is no “access” to copyrighted material
of unrelated parties during a software development project, and litigation
preparation.
175
Module 6 IP Audit
0 min 38 sec
Module 1. ‌Eight Steps to Take When Conducting an IP

6-2 Audit
Example
Fuel cell
start-up
company
Establish the Purpose of the IP Audit

B efore undertaking an IP audit, it is necessary that everyone who may be
operationally and strategically involved in the audit has a clear understanding of
the “why” of conducting the IP audit. This is because it influences the nature and
scope and the amount of time and money allocated to the audit.
When applying this step to the Fuel1T example in Module 1, it is clear that this is
an event-driven audit which has been mandated by the potential investors so as to
enable them to make an informed financial decision after assessing the IP position
of the business.
Gather Information and Build the Context for the Audit

Once the purpose of the audit and the available resources are clear, a major
preparatory step for conducting the audit is to understand the following three
aspects:
1 What the business does
2 The nature of the business’s engagement, including who the business regularly interacts
with or intends to interact with including the business’s employees, vendors, customers,
consultants, independent contractors, joint venture partners, competitors, etc.
3 Where the business wants to grow

Steps to Take When Conducting an IP Audit Module 6-2
After applying this step to the Fuel1T example, it can be seen that the business
manufactures fuel cells used for energy storage and driverless electric vehicles,
primarily in the renewable energy sector. Currently, the business is still on an
active growth curve and therefore focuses on investing to increase production to
meet current demand rather than looking for new markets.
Example
Fuel1T
Develop a Plan for the IP Audit

A detailed plan should be put together for conducting the IP audit which will
set out, at a minimum, the purpose and scope as determined in Step 1, how
long it is expected to take, a detailed budget, and who will be responsible for
conducting specific aspects of the audit. The IP audit team may include company
management, legal counsel, sales and marketing, production, research and
development, and human resources.
An IP audit
team
After applying this step to the Fuel1T example, it can be seen that this audit
should be outsourced because the company is a small start-up that does not have
the resources to do this internally. Furthermore, the investor may request an
independent third party to conduct the audit.
177
Module 6 IP Audit
Develop a Detailed Checklist

A comprehensive checklist should be developed to ensure that no important areas
of the IP audit are omitted. This checklist should include all forms of registered
and unregistered IP and IP rights, ownership of all IP, and employee non-
disclosure agreements.
The IP audit should include a review of all IP-related information in all agreements
which have been signed, such as franchising agreements, licensing agreements, or
assignments.
When applying this step to the Fuel1T example, it is important that the checklist
cover all forms of IP and IP rights, including pending invention disclosures as well
as patents, designs, copyrights, trademarks, and any trade secrets. In addition, all
agreements must be reviewed to understand what rights have been granted to
whom and under what circumstances.
Perform the Audit

There are three key categories for the audit:
There are
three key
categories
1 Audit for different contracts

≐≐ This involves identifying and assessing the clauses in all agreements that are related to IP.
The following four types of agreements are arguably the most important:
(ⅰ) Licensing agreements: It is important to identify what rights have been granted to other
parties and where your company is licensed.

(ⅱ) Assignment agreements:
Example
All assignments are Fuel1T
reviewed to ensure that
the inventor or author
has clearly transferred
rights to the business. Furthermore, the scope of any assignment must be determined
and it must be confirmed that the correct transfer of rights had taken place.

(ⅲ) Joint ventures and collaboration agreements: The following four aspects must be kept
in mind.
1 ‌Owner of the background IP and the foreground IP created through the collaboration
2 ‌System for identifying protectable IP resulting from the cooperation must be set up
3 ‌Who pays for any application for registration of IP rights and any subsequent
defense of the IP rights

4 ‌When the joint venture or collaboration ends, what IP rights can be used and by
whom
(ⅳ) Research and development grant agreement: Government-funded R&D contracts
often provide for ownership of IP in favor of the government or a government agency,
so all such contracts should be closely scrutinized for such restrictions.
2 Audit IP assets
Two Stages
≐≐ After auditing all agreements, IP assets must be audited, which consists of two stages.
(ⅰ) Identify and record your registered and unregistered IP assets and provide a brief
description of them.
(ⅱ) Determine the ownership and legal status of the identified and described IP assets.
3 Employee Interview
≐≐ T hese interviews may reveal
potential IP deficiencies, such
as internal company practices
regarding invention disclosures
that are inadequately handled,
or subcontractor relationships
that are not properly formalized,
making IP ownership questionable.
179
Module 6 IP Audit
Assigning a Value to the IP

When valuing IP, it is generally said that “value is in the eye of the holder,” and that
value can be determined by how one uses the IP to achieve the business’s strategic
objective.
Three formal methodologies are discussed using patents as examples, but these
approaches can be applied to all forms of IP.
1 Cost Approach
≐≐ This approach looks at the direct relationship between the cost of developing a patentable
invention and its economic value, and is based on the economic principle of “substitution.”
There are three major variants of the cost approach:
(ⅰ) Measuring the costs incurred to develop IP as it is developed
(ⅱ) The “replacement cost method” calculates the value of a patent by determining the
amount of money that would be paid at the present time to recreate the functionality or
utility of the patent. The cost of failed and unsuccessful research is not included in this
method.
(ⅲ) The “cost of replication” method calculates the value of a patent by calculating the
amount of money that would be required to construct an exact replica of the patent
at the present time. All research and development costs must be included in this
calculation, including the costs of unsuccessful prototypes.
≐≐ In practice, the cost approach is rarely used because there is little correlation between the
cost of product development and the value of the IP’s underlying technology, and it has
several limitations such as:
(ⅰ) The most expensive inventions to develop are often not the most successful patents.
(ⅱ) The cost approach makes it difficult to calculate the actual cost of developing an IP
asset because it only considers one factor: cost.
(ⅲ) The approach is retrospective in nature and does not account for the risk of loss of IP
value as new technologies develop.
(ⅳ) T his approach may not properly value the time it may take to develop the new
substitute technology and the risk that a competing technology may not be developed.
2 Market Approach
≐≐ This approach assumes the efficiency of free markets of willing buyers and sellers in
determining the value of patents. Each IP asset is unique, so this approach establishes the
price by looking at the market price for similar IP assets. One should locate examples of
similar IP assets that are being traded and then, based on those values, estimate the value
of the IP.

≐≐ There are several limitations to using the market approach, including the following two
limitations: First, it is not as easy to collect trade data because the price information of
transactions of analogous assets is kept secret; and second, it may be difficult to find a
fair market price if the technology in question is fundamentally novel and no analogous
technology exists.
3 Income Approach
≐≐ This approach determines the value of a patent by discounting the future economic impact
at the appropriate discount rate over the life of the IP asset. There are many income-based
valuation methods, including the discounted cash flow approach and the relief from royalty
approach.
≐≐ The discounted cash flow approach attempts to determine the value of the patent by
calculating the present value of future cash flows from the patent over the term of the patent.
≐≐ The relief from royalty method measures the royalty that the company would have to pay
to license the IP being valued from a third party. To determine the relief from royalty rate,
one must calculate the expected royalties for each year of the economic life of the IP asset,
then deduct costs, if any, and apply the appropriate discount rate. Often, the best estimate
of the annual royalty rate is based on industry standards and prior transactions.
≐≐ There are several limitations to using the income approach, including the following four
limitations:
Four
Limitations
Using the
Income
Approach
(ⅰ) F
or a new technology that is not yet on the market, it is difficult to forecast sales and
therefore almost impossible to accurately forecast future revenues.
(ⅱ) It is expensive to acquire the data and perform these calculations because you need to
use large databases to make reliable future revenue projections.
(ⅲ) When the value of a product is made up of both proprietary and non-proprietary IP
assets, there is a need to know exactly which part of the product generates which
revenue.
181
Module 6 IP Audit
(ⅳ) This approach can be subjective depending on the underlying assumptions used in
the calculations. As a result, it is not as useful for financial transactions, especially for
valuing collateral. However, for equity investors interested in their future return, this
approach may provide sufficient predictive information.
Generate the IP Audit Report

After all IP has been identified and relevant information from agreements, business
policies, and employees have been collected, a report should be generated that
sets out the following five areas of basic information:
1 The owner of the IP and IP rights
2 The remaining life of the IP and IP rights
3 A description of whether and how the IP is being used, including any potential
infringements and misuses by the business and other third parties
4 A valuation of the IP in monetary terms
5 An evaluation of any defects identified during the audit process and recommended
remedial action
Interpret the IP Audit Outcomes

Once the IP audit has been conducted, it is important to evaluate the outcome and
analyze whether the purpose and scope of the audit were achieved.
At this stage, an assessment would be made to determine whether the IP assets
identified are serving the strategic objectives of the business and, if not, what
should be done to change that. This is the feedback loop.
An IP audit provides management with baseline information on whether its IP

assets are being used to achieve the business’s strategic objectives, and it allows
for an analysis of the alignment between IP and business strategy.
With a deep understanding of IP, a business can protect and leverage value,
identify new business opportunities and product line extensions, and avoid costly
litigation.

Module 6. Quiz
Quiz Module 6
Quiz 1
‌In the fourth step of conducting an IP audit, a comprehensive checklist should be developed
to guide the intellectual property audit, thereby ensuring that no important areas are omitted.
This checklist should include all forms of registered and unregistered intellectual property and
intellectual property rights, , and employee non-disclosure agreements.
‌The fifth step is the actual process of performing the audit. During the intellectual property
audit, there are three key parts. The first key part is reviewing all the ; the second
is reviewing the intellectual property portfolio itself; and the final key part is interviewing
employees.
‌For assigning a value to the IP, determines the value of a patent by discounting
the future economic impact at the appropriate discount rate over the life of the intellectual
property asset.
‌An Event Driven IP Audit, often referred to as “IP due diligence”, is narrower in scope compared
to a General Purpose IP Audit and is typically conducted in response to specific events. Which
of the following does NOT typically trigger an Event Driven IP Audit?
a Launching a new product or service
b Annual financial auditing

c Merger and Acquisition
d Bankruptcy or significant layoffs
Memo
183
IP Panorama 2.0
Study Book
7
Module
IP Infringement
7-1-1 What is Infringement of an IPR?186

7-2-1 Infringement and Copyright191
7-2-2 Infringement and Trademarks194
7-2-3 Infringement and Patents198
Module 7 IP Infringement
Submodule
What is Infringement of an IPR?
7-1-1
IP Panorama 2.0 M 7-1-1
Overview
Infringement of an intellectual property right means violating rights granted
to someone else without permission. This submodule is about the formal
examination for IPR registration and how to be proactive in managing and
enforcing IPR to avoid legal issues and financial loss.
Learning Point
What is Infringement of an Intellectual Property Right?
Learning Outcomes
Understand what infringement of an intellectual property right is
<What is Infringement of an IPR?> 7-1-1
1. What is Infringement of an IPR? 7-1-1 0 min 20 sec
Memo

What is Infringement of an IPR? Module 7-1-1
0 min 20 sec
Module
1. What is Infringement of an IPR?
7-1-1
An IPR is required to be registered by undergoing the application examination

process at a local IPR office. In the patent examination, an examiner searches prior
art for the invention and assesses whether the invention meets the requirements
of industrial applicability, novelty, and inventiveness. Similarly, in the examination
of designs, trademarks, or plant breeders’ rights, an examiner assesses whether
they meet the relevant formal requirements.
The prior art analysis informs a business about the patentability of its invention and also
indicates how close competitors are in terms of potentially infringing on the business’s
intellectual property rights and/or how close the business may be to infringing on theirs.
Your business needs to allocate time and resources to enforce and monitor its
intellectual property rights, which are critical parts of managing the business’s IP.
Not preparing to enforce your IP could result in wasted money and effort spent
securing these rights. Not preparing to avoid infringing on others’ rights could
lead to costly and time-consuming legal battles.
Infringement in intellectual property rights means that you are violating rights
that have been granted to someone else, without their permission.
IP law is jurisdictional in nature, varying by country and guided by international

treaties. Infringement cases are more complex and varied across countries than
intellectual property law itself. When dealing with infringement of copyright,
trademarks, or patents in this course, we will focus on general global minimum
standards and practices rather than the specific laws and regulations of each jurisdiction.
CASE Did you know?
Coca-Cola M7-1-1, 4 min 3 sec
If one uses Coca-Cola's patented method for making barrier-coated plastic bottles,
brands a product similarly to “Coca-Cola,“ or manufactures a bottle with the same design
as Coca-Cola's, he would be infringing on the company’s patent rights in jurisdictions
where its rights are granted by using its manufacturing method, its trademark rights by
using a similar brand name, and its design rights by copying its bottle design.
187
7-2-1 Infringement and Copyright

Submodule
7-2-2 Infringement and Trademarks
7-2-3 Infringement and Patents
IP Panorama 2.0 M 7-2-1/ M 7-2-2 / M 7-2-3
Overview
Submodule 7-2-1
C opyright infringement, whether it involves moral or economic rights,
consists of either direct or indirect violations, and avoidance necessitates prior
permission from the rights holder. This submodule is about the categories of
copyright, types of copyright infringement, and strategies to avoid infringement.
Submodule 7-2-2
Trademark rights include exclusive usage in specific classes, and trademark
infringement involves using identical or similar trademarks on identical or
similar goods or services. This submodule is about granted trademark rights,
types of infringement, and strategies to prevent infringement.
Submodule 7-2-3
The patent owner is granted rights, including the rights to make, use, sell, offer
for sale, and import, and is responsible for monitoring, identifying, and taking
action against infringers. This submodule is about granted patent rights, types
of infringement, and strategies to prevent infringement.
Learning Points
Infringement and Copyrights
Infringement and Trademarks
Infringement and Patents
Learning Outcomes
Understand what the infringement of copyrights entails and how to prevent
copyright infringements
Understand what the infringement of trademarks entails and how to prevent
trademark infringements

Infringement and Copyright Module 7-2-1
Understand what the infringement of patents entails and how to prevent patent
infringements
<Infringement and Copyright> 7-2-1
0. Infringement and Copyright 7-2-1 0 min 12 sec
- Rights Granted to a Copyright Holder 7-2-1 0 min 45 sec
2. Types of Copyright Infringement 7-2-1 1 min 54 sec
- Direct or Primary Infringement 7-2-1 2 min 15 sec
- Indirect or Secondary Infringement 7-2-1 3 min 50 sec
3. How to Avoid Copyright Infringement 7-2-1 6 min 15 sec
- ‌6 Steps to Assess Whether One Could Be Infringing

7-2-1 7 min 7 sec
Copyright
<Infringement and Trademarks> 7-2-2
0. Infringement and Trademarks 7-2-2 0 min 19 sec
1. Rights Granted to a Trademark Holder 7-2-2 0 min 47 sec
2. Types of Trademark Infringement 7-2-2 3 min 6 sec
- Infringement by Identical or Similar Goods or Services 7-2-2 3 min 35 sec
- Dilution of Your Brand 7-2-2 6 min 25 sec
- “Famous” or Well-Known Brands. 7-2-2 10 min 32 sec
3. How to Prevent Trademark Infringement 7-2-2 12 min 0 sec
- ‌Angle 1: Preventing Infringement of Someone Else’s Trademark 7-2-2 3 min 13 sec
- ‌Angle 2: Preventing Infringement of Your Trademark

7-2-2 15 min 59 sec
through On-going Active Monitoring
189
<Infringement and Patents> 7-2-3
0. Infringement and Patents 7-2-3 0 min 19 sec
1. Rights Granted to a Patent Holder 7-2-3 0 min 44 sec
2. Types of Patent Infringement 7-2-3 2 min 58 sec
- ‌Direct Infringement 7-2-3 3 min 21 sec
- ‌Indirect Infringement 7-2-3 8 min 23 sec
3. How to Prevent Patent Infringement 7-2-3 11 min 40 sec
Memo

0 min 45 sec
Module
1. Rights Granted to a Copyright Holder
7-2-1
Two
categories
of Rights for
Copyright
Moral rights are given to the author of the work and allow the author the right to
be named as the author of the work, and the right to preserve the integrity of the
work.
Economic rights may belong to the author or a party the author transferred the
rights to. The economic rights holder can make reproductions or copies of the
work; distribute the work to the public; rent or lend copies of the work; make
translations or adaptations of the work; communicate the work to the public; and
perform, show, or play the work in public.
1 min 54 sec
Module
2. Types of Copyright Infringement
7-2-1
Two types
of copyright
infringement
Direct or Primary Infringement

Direct or primary copyright infringement involves
infringing one or more economic rights by copying
either the whole work or a substantial, qualitatively
significant part directly from the original copyrighted
work.
191
CASE Did you know?
Queen and David Bowie v. Vanilla Ice M7-2-1, 3 min 4 sec
Queen and David Bowie collaborated on the single “Under Pressure.”

Years later, rapper Vanilla Ice released “Ice Ice Baby,” sampling
the same baseline. Vanilla Ice claimed his version was different
due to an added note. However, Queen and Bowie sued him for
copyright infringement. The case was settled out of court, with The single The single
“Under Pressure” “Ice Ice Baby”
Bowie and Queen receiving an undisclosed sum of money and being
A 1981 Released in
acknowledged as the work's authors. collaboration 1990
Indirect or Secondary Infringement

1 Example 1: Trade of infringing article
≐≐ A person or business, not involved in the production of articles such as copied books,
engages in transactions such as sales, importation, or distribution without permission from
the economic copyright holder.
2 Example 2: Actor or Musician

≐≐ An actor or musician performs a play or song without permission from the economic
copyright holder, and a theatre or restaurant allows the unpermitted performance on their
premises.
3 Example 3: Owners of a website

≐≐ Website owners permit infringing works to be advertised, sold, or streamed on their
website.
7 min 7 sec
Module
3. How to Avoid Copyright Infringement
7-2-1
Understand how to use works protected by copyright without infringing, generally

by obtaining prior permission (ideally through prior express written permission).
6 Steps to Assess Whether One Could be Infringing Copyright

1 Determine if the work is NOT eligible for copyright protection
≐≐ A “Fact,” “Idea,” “Method,” or “System” cannot be the subject of copyright protection.

2 Assess whether the work is original

≐≐ Consider whether the economic copyright holder who is claiming copyright has produced
an original work or not.
3 Determine if the eligible work is copyright protected

≐≐ Works published on websites are protected by copyright. If copyright information is not
provided, it is advisable to obtain permission before downloading or copying any content.
Work that has fallen into the public domain due to expired copyrights is not protected.
CASE Did you know?
Arthur Conan Doyle’s estate against Netflix and the producers

of the Netflix film, Enola Holmes M7-2-1, 9 min 45 sec
Enola Holmes, a book by Nancy Springer, did not likely face infringement issues
when adapted into a movie, since Sherlock Holmes' books had entered the
public domain. However, some Sherlock Holmes stories from 1923-1927 remain
protected due to 95-year post-publication copyrights in the US. Jurisdictional
differences can affect a work's copyright infringement.
4 Copying the whole work or a substantial part

≐≐ Copyright infringement is judged more on the quality of the work, meaning “a substantial
part,” than on the amount.
5 Assess whether copying the content could fall within the category of “fair use or fair
dealing”
≐≐ All national copyright laws include exceptions and limitations for free or compensated use
of copyrighted work under certain conditions, referred to as “fair use” or “fair dealing”
193
6 Seek permission to use the work

(ⅰ) Option 1: Copyright Notice
(ⅱ) Option 2: Collective Management Organization (CMO)
(ⅲ) Option 3: Copyright Register
(ⅳ) Option 4: Direct Contact
(ⅴ) Option 5: Orphan Works (protected by copyright, but the author cannot be identified or
found)
0 min 47 sec
Module
1. Rights Granted to a Trademark Holder
7-2-2
Trademarks can be either registered, marked with an “R” in a circle for formal
protection, or unregistered, marked with “TM” for protection through use.
Registered trademarks give the holder exclusive rights to use the mark in specific
classes of goods and services as defined by the Nice Classification. The trademark
“Fuel Cell Saxony” is registered in Germany under classes 11, 16, and 35, granting
the owner exclusive rights to use and prevent others from using the same or a
similar mark in these classes.
Example:
A trademark
filed to
protect fuel
cells
A trademark right is two-fold, encompassing both the right to prevent, forbid, or

authorize use by others, and the right to use the trademark oneself.

Infringement and Trademarks Module 7-2-2
3 min 6 sec
Module
2. Types of Trademark Infringement
7-2-2
Infringement by Identical or Similar Goods or Services

The unauthorized use in trade of an identical mark, or a mark very similar to the
registered mark for branding of the same goods and services, is likely to deceive
or cause confusion for the customer.
CASE Did you know?
“Mika米家” trademark M7-2-2, 3 min 57 sec
Hangzhou Lian’an Company, which registered the trademark

“Mika米家” in China, sued two Xiaomi companies. The China
Court ruled that Xiaomi's use of a similar mark on identical or
similar products caused confusion and violated trademark rights.

Consequently, Xiaomi was ordered to cease the infringement and Xiaomi companies
pay a fine. Xiaomi incorporated
Dilution of Your Brand

Dilution does not aim to “deceive or cause confusion for the customer” but
involves the use of a mark to gain an unfair advantage or harm the distinctive
character of the registered mark. This results in the dilution of your brand by an
identical or similar mark. Both registered and unregistered marks can be the cause
of brand dilution infringements.
“Famous” or Well-Known Brands

Well-known brands, even if they have not been registered or used in the
concerned country, can be infringed.
195
12 min 0 sec
Module
3. How to Prevent Trademark Infringement
7-2-2
To avoid trademark infringement, you should address two angles: first, ensure that
you are not infringing on someone else’s trademark, and second, make sure that
others are not infringing on your trademark.
Angle 1: Preventing Infringement of Someone Else’s Trademark

Check whether identical or similar logos, marks, company names, trade names, or
even domain names may already exist before applying for a trademark.
Angle 2: ‌Preventing Infringement of Your Trademark through On-going Active

Monitoring
Monitoring means asking yourself the question, “Does someone else infringe on
my rights?” If anything is found, a strategic decision needs to be made regarding
taking action against the company or individual who has filed the mark, knowing
that this will require time and financial resources.
Memo

Foreal and L’Oreal M7-2-2, 5 min 17 sec
Taiwanese company Liwei Nano Tech. Co. Ltd. applied for the
trademark "foreal" for germicide-related products. L’Oreal S.A., a
French company, opposed the granted mark on the grounds of phonetic and visual similarity to its own
mark, which could potentially confuse consumers. However, the Taiwan Court rejected L’Oreal's claims,
noting the low degree of similarity due to different prefixes and pronunciations, and distinct product
categories. Thus, the "foreal" trademark registration was upheld.
BMW v. DMW M7-2-2, 7 min 10 sec
In the trademark infringement case of BMW against DMW, the “DMW”

mark was used for E-Rickshaws, Electric Cargos, and Loaders. BMW
argued that DMW's use of a visually and phonetically similar three-letter
mark was an attempt to leverage BMW's established reputation and
brand, dating back to 1956 for the trademark and 1923 for manufacturing.
The court concluded that DMW intended to exploit BMW's brand goodwill,
thereby meeting the criteria for brand dilution.
Apple v. Prepear M7-2-2, 8 min 26 sec
Apple, a multinational technology company, opposed Super Healthy Kids

Incorporated’s trademark application for "Prepear," the name of an app for
discovering recipes, arranging grocery deliveries, and meal preparation.
Apple contended that Prepear's logo, a white pear on a green background,
was too similar to its "bitten apple" logo, potentially diluting its trademark distinctiveness. Apple argued
that because it was operating in computer software, healthcare, and nutrition sevices, the Prepear app
for meal preparation services fell within the scope of its trademark. The dispute was settled out of
court, with Prepear agreeing to modify the leaf shape in their logo to clearly differ from Apple's. During
these proceedings, IPWatchdog criticized Apple's aggressive protection tactics. Excessive trademark
protection can sometimes impact your reputation and brand image in a negative manner.
Tommy Hilfiger Brand in China M7-2-2, 10 min 55 sec
A Chinese company registered a black and white trademark for "clothes"

that resembled Tommy Hilfiger's "flag" logo. Although Tommy Hilfiger did
not register the flag logo for girdles (a type of women’s apparel) in China, it
successfully invalidated the Chinese company's trademark based on two
grounds: prior use and similarities with the well-known Tommy Hilfiger mark. The court also found that
the Chinese company's intentional filing in the apparel class while knowing that Tommy Hilfiger had
also filed in the apparel class showed bad faith.
197
0 min 44 sec
Module
1. Rights Granted to a Patent Holder
7-2-3
Five Exclusive Patent Rights to Exclude All Others in a Territory

1 Making: Unauthorized making or manufacturing of a patented invention constitutes
infringement, even if the patented product is not sold.
2 Using: Unauthorized use of a patented invention, such as implementing a patented industrial

process, constitutes infringement.
3 Selling: Unauthorized selling, involving exchanging the

invention for money or even giving it away for free, constitutes
infringement.
4 O ffering for Sale: Unauthorized offering of a patented

product for sale, which means putting the patented product
up for sale, constitutes infringement, even if no sale has
occurred.
5 Importing: Unauthorized importing of an article, which was

not manufactured by the patent holder, into a country where
that article is protected by patent rights, constitutes an
infringement.
2 min 58 sec
Module
2. Types of Patent Infringement
7-2-3
Direct Infringement
Direct patent infringement is the most common type and occurs when a product
or process performs the same function as the patented product or matches the
patented product’s claimed description.
Patent Infringement
= Direct Infringement

Infringement and Patents Module 7-2-3
1 Literal Infringement
≐≐ Every essential element or integer listed in the patent claim corresponds to the allegedly
infringing product or process.
CASE Did you know?
Janssen Inc v. Teva Canada Ltd M7-2-3, 4 min 8 sec
This patent dispute was over the long-acting paliperidone palmitate depot
formulations for treatment of schizophrenia, which is a drug treatment where
the drug is released slowly into injection sites, providing patients with a
prolonged dose intended to reduce the side-effects of paliperidone and improve
patient adherence. The Canadian Court found that Teva's product would directly
infringe Janssen's patent.
2 Non-Literal Infringement (known as “doctrine of equivalents”)

≐≐ Even if the wording of the patent claim differs, non-literal infringement may still be
established if the item performs the same function and produces the same result.
Indirect Infringement
Indirect patent infringement encompasses violations of a patent with or without
the infringer’s knowledge.
1 Contributory Infringement
≐≐ The purchasing or importing of materials that are intended to be used as part of a
patented item constitutes contributory infringement, and it is necessary to prove that those
materials were intended to be used exclusively as part of a product protected by a patent.
For example, with 3D printing, someone disseminating the digital version to others could be
considered an indirect infringer.
2 Infringement by Inducement
≐≐ Infringement by inducement occurs when one party convinces another to engage in
actions that infringe a patent, typically involving direct infringement by both the inducing
party and the induced party.
199
11 min 40 sec
Module
3. How to Prevent Patent Infringement
7-2-3
The primary responsibility of monitoring, identifying, and taking action against

infringers of a patent falls on the patent owner.
Five Actions Related to Patent Infringement
1 Is the patent registered and in force?
2 Would the product violate the patent rights of a competitor?
3 Could your company invent around such a patent easily and quickly?
4 Option A: If you cannot design around the patented invention, examine whether you have
some key strengths or assets that your competitor would like to have access to.
‌Option B: Consider entering into negotiations to licence your competitor’s patent for
specific use in your business.
5 No mutual solution
Three-legged table Four-legged table Three-legged table with stable support
The holder of Patent 1 has the For an infringement, all ele-

Patent 2, considered novel due
right to stop or exclude others ments of the claims must be
to its addition of a fourth leg,
from producing the four-legged present. In Patent 3, since some
infringes on Patent 1, as it in-
table but does not have the right elements of Patent 1 are miss-
cludes a fourth leg on a three-
to produce the four-legged table ing, Patent 3 will not infringe on
legged table.
themselves. Patent 1.
Two Defences against Patent Infringement
1 To Attack the Validity of the Patent

≐≐ One could challenge the patent on one or more grounds, such as the sufficiency of disclosure,
or by citing other relevant prior art that was not cited during the patent’s prosecution.
2 Exhaustion of Rights
≐≐ After the patented “article” has been sold, the purchaser is free to use it as though it is no
longer under patent protection.

Infringement and Patents Module 7-2-3
An exclusive or exclusionary monopoly can only be defended through active

monitoring of infringements. Although infringement actions can be costly and
require careful consideration of the willingness to enforce rights, taking one
or more firm actions against infringers often sends the correct message to
competitors that your intellectual property rights should be respected.
CASE Did you know?
Idenix Pharmaceuticals LLC and Universita Degli Studi Di

Cagliari M7-2-3, 19 min 28 sec
Idenix sued Gilead for patent infringement related to the treatment of

hepatitis C virus (HCV) using nucleosides or phosphate derivatives. Gilead
appealed the decision, arguing that the patent was invalid. A federal judge
later found that the patent lacked sufficient disclosure to explain how to make
the treatment without undue experimentation, leading to its invalidation.
Memo
201
Quiz Module 7-2-3
Quiz 1
Let’s return to our fuel cells from Module 1, where it was identified that copyright resides in the
computer program and the instructions for use/assembly of the fuel cells. Assess, by performing
the six-step test, whether copyright may reside in the computer program or the instructions for
use/assembly of the fuel cells. [10 marks]
Steps Applying the steps to our fuel cell example
Step 1:
Determine if the work for which copyright is being
claimed falls within a category of works which are not
eligible for copyright protection. For example, if you are
using the facts or ideas from a protected work rather
than the author's expression.
If it is determined that the work could be eligible for
copyright protection, then the rest of the steps should be
carried out.
Step 2:
Assess whether the work for which copyright is claimed
is original. This is not an absolute test, but instead could
involve giving consideration to whether or not you believe
that the copyright holder who is claiming copyright has
produced an original work, and if there is appropriate
evidence that it may not be original.
Step 3:
Determine if the eligible work is copyright protected.
In general, one would know that a work is protected
by copyright based on the copyright notice which will
specify the year of creation of the copyright and to whom
the copyright belongs.
Step 4:
Assess whether you are copying the whole work or a
substantial part of the work.
Step 5:
Assess whether the copying could fall within the category
of fair use and/or fair dealing.
Step 6:
If you determine that the copyright appears to be held
validly by the copyright holder and your intended use
does not fall within the defined categories of limitation
and exceptions, then permission is needed from the
copyright holder.

Eli Lilly v. Actavis UK Limited M7-2-3, 6 min 28 sec
In the case of Eli Lilly versus Actavis UK Limited and others, the United
Kingdom Supreme Court introduced non-literal infringement or the Doctrine
of Equivalents into UK law. The case centered around Eli Lilly's patent for a
combination of the disodium salt of pemetrexed and vitamin B12 for cancer
treatment. Actavis produced products containing vitamin B12 and different
forms of pemetrexed, not falling within the literal meaning of Eli Lilly's claim.
However, the court devised a test to determine if Actavis' products infringed
by equivalence. It was found that Actavis' products achieved the same result (cancer treatment) in the
same way as the claimed invention, leading to infringement of Eli Lilly's patent.
Limelight Networks Inc v. Akamai Technologies Inc. M7-2-3, 10 min 32 sec
In this case, the question was whether patent

infringement for a technological method required
each step of the method to be performed by a
single party. Akamai licensed a patent from the
Massachusetts Institute of Technology for delivering
electronic data using a content delivery network and sued Limelight Networks for infringement. Even
though Limelight's customers performed some of the method steps described in the patent claims,
the courts decided it was an indirect patent infringement because Limelight performed most of the
steps and induced its customers to perform the rest. However, the Supreme Court later reversed this
decision, as there cannot be indirect infringement without direct infringement.
Memo
203
IP Panorama 2.0
Study Book
8
Module
IP Utilisation
8-1-1 Different Forms of IP Utilisation208

8-1-2 L icensing and Franchising,
Telling the Difference210
8-1-3 L icensing in More Detail,
How to Conclude a Licence
Agreement213
8-1-4 G
rowing and Scaling My
Business through On-going IP
Management and Utilisation218
Module 8 IP Utilisation
8-1-1 Different Forms of IP Utilisation

Submodule
8-1-2 Licensing and Franchising,
Telling the Difference
8-1-3 Licensing in More Detail,
How to Conclude a Licence Agreement
8-1-4 Growing and Scaling My Business
through On-going IP Management
and Utilisation
IP Panorama 2.0 M 8-1-1 / M 8-1-2 / M 8-1-3 / M 8-1-4
Overview
In this submodule, you will learn about the various forms of IP utilisation, details
of licensing, and how to conclude a licence agreement.
Learning Points
Different Forms of Intellectual Property Utilisation
Licensing and Franchising, Telling the Difference
Licensing in More Detail, How to Conclude a Licence Agreement
G rowing and Scaling My Business through On-going IP Management and
Utilisation
Learning Outcomes
Understanding various forms of intellectual property use
Specific understanding of licensing agreements
<Different Forms of IP Utilisation> 8-1-1
1. Different Forms of IP Utilisation 8-1-1 0 min 15 sec

Different Forms of IP Utilisation Module 8-1-1
<Licensing and Franchising, Telling the Difference> 8-1-2
0. Licensing and Franchising, Telling The Difference 8-1-2 0 min 0 sec
1. Telling the Difference between Licensing and Franchising 8-1-2 0 min 34 sec
2. Different Types of Licences 8-1-2 2 min 55 sec
3. Different Types of Franchises 8-1-2 9 min 47 sec
<Licensing in More Detail, How to Conclude

8-1-3
a Licence Agreement>
1. ‌Licensing in More Detail, How to Conclude a Licence

8-1-3 0 min 0 sec
Agreement
<Growing and Scaling My Business through On-going IP

8-1-4
Management and Utilisation>
1. ‌Growing and Scaling My Business through On-going IP

8-1-4 0 min 0 sec
Management and Utilisation
Memo
207
0 min 15 sec
Module
1. Different Forms of IP Utilisation
8-1-1
Intellectual property is created, guarded, and upheld by businesses both to prevent

competition and to forge an exclusive market monopoly, turning intangible assets
into sellable products or solutions. Utilizing IP and IPR in this way is known as “IP
in action.”
Six Different Ways of IP Utilisation:
1 Use of IP or IPRs by the business

≐≐ Depending on its size and the rights associated with the IP, a business can employ
traditional or e-commerce methods to produce, process, or offer services themselves in
various jurisdictions.
2 Licensing of IP or IPRs to others

≐≐ A strategic way to allow a third party to legally use one’s IP is through the use of a non-
exclusive, exclusive, or sole license, each having its own characteristics regarding the
distribution of usage rights. Companies like Qualcomm and Solas OLED Ltd. have
effectively implemented licensing strategies.
≐≐ A non-exclusive license allows the licensor to grant rights to more than one licensee for
the use of the intellectual property or associated rights. Exclusive licenses permit only the
licensee to exploit the relevant intellectual property or associated rights, potentially even
excluding the licensor. A sole license is a less common form of license, typically indicating
that the license is exclusive, but that both the licensor and a single licensee have full rights
to exploit the intellectual property or intellectual property rights.
3 Main Forms
for the
Granting of
Licence Rights
3 Use of confidential information

≐≐ Protecting confidential information during discussions for potential business arrangements
or investments, without granting any IP usage rights
4 Collaboration with others

≐≐ Established between entities (often involving research projects) to outline the contributions
of each party and regulate the use and ownership of the developed IP

Licensing and Franchising, Telling the Difference Module 8-1-2
5 Access to material: Material Transfer Agreements (MTAs)

≐≐ Govern the sharing of materials (like biological samples) for further research, determining
the ownership of any newly created IP.
6 Sale of IP or IPRs
≐≐ This involves the absolute transfer of IP ownership through assignment agreements, such
as transferring a literary work’s copyright to a publisher or the assignment of the right to an
invention from an employee to an employer.
≐≐ While the first five methods involve granting access under specific conditions without
transferring ownership, selling IP entails a complete transfer of ownership rights.
0 min 34 sec
Module 1. ‌Telling the Difference between Licensing

8-1-2 and Franchising
To expand a business, often companies

opt for licensing or franchising models.
In a licensing model, a licensor grants
rights to use certain intellectual
properties to a licensee. Meanwhile,
franchising involves a franchisor
who allows a franchisee to operate
an independent branch under the
franchisor’s brand and business
model, maintaining notable control over operations and offering support. The franchisee
must adhere to the brand standards to ensure customer satisfaction. Both models involve
payments from licensees or franchisees to licensors or franchisors, except in revenue-
free agreements. We delve next into various license and franchise types.
209
2 min 55 sec
Module
2. Different Types of Licences
8-1-2
Licenses can be grouped into three categories: licensing-in, licensing-out, and

cross-licensing.
1 Licensing-in allows businesses to access external intellectual properties. While it facilitates
market access and maintains competitiveness, it may entail substantial upfront costs and
reliance on external intellectual property.
3 Advantages
3 Disadvantages
or Risks
Memo

Licensing and Franchising, Telling the Difference Module 8-1-2
2 Licensing-out is when a business grants others access to its intellectual property, offering
benefits such as collaboration opportunities, revenue generation, and opportunities to leverage
patent pools. However, it can potentially create competitors and cause the company that
owns the patent to lose control over the intellectual property. As a result, the trademark
licensee could damage the brand value and goodwill due to lack of quality control.
6 Advantages
4 Disadvantages
Memo
211
3 Cross-licensing involves mutual intellectual property rights sharing between two entities to
avoid litigation and foster improvements. These agreements are mainly non-exclusive or
sole licenses, unlike other licenses, which can also be exclusive.
9 min 47 sec
Module
3. Different Types of Franchises
8-1-2
Franchising, a specific licensing type, encompasses the right to use a business

model and its accompanying intellectual properties. There are three categories:
1 A Product or Distribution Franchise permits franchisees to sell specific products exclusively,
such as vending machines that sell only Coca-Cola products.
2 A Manufacturing Franchise involves licensing to produce a branded product adhering to the

franchisor’s guidelines, as seen by certain beverage manufacturers.
3 A Business Format Franchise is the most prevalent type of franchise, where franchisees
not only sell but also produce and deliver products or services based on the franchisor’s
specifications and with their support. Examples include franchises like Subway and
Marriott.

Licensing in More Detail, How to Conclude a Licence Agreement Module 8-1-3
0 min 0 sec
Module 1. ‌Licensing in More Detail, How to Conclude

8-1-3 a Licence Agreement
Concluding and managing a license agreement involves at least five steps which
are: considering the opportunity cost, conducting due diligence, negotiating the
license agreement, finalizing the crucial aspects of the agreement, and overseeing
the licensee and ending the agreement if necessary.
Let’s go back to the example of the fuel cell start-up named “Fuel1T” based in Chile.
It has three product lines: transportation vehicles, rural emergency structures,
and broad-range energy storage. The steps for licensing these products and
services can be applied in a detailed manner as follows:
1 Opportunity cost
≐≐ The start-up assessed its ability to meet global demand, identified strategic partnership
opportunities, areas to maximize return, and the administrative costs of licensing.
Recognizing its limitation in meeting global demands, it decided to collaborate with partners
in the US, China, Germany, Korea, Japan, and Australia for manufacturing their products.
Assessment
3 Key Areas for
Assessment
2 Due diligence
≐≐ Both licensors and licensees should carry out a comprehensive background check,
including reviewing intellectual property and associated rights. In the Fuel1T scenario,
they conducted research to find suitable businesses in various regions, ensuring that the
licensing will not engender competitive threats and that the intellectual property rights were
secured and complied with the legal requisites in the respective jurisdictions.
Licensors
5th Due Diligence
Aspects
LICENSORS
213
3 Negotiating the license agreement

≐≐ T he negotiation process, aiming to reach a “win-win” outcome, is divided into four
phases: preparation, discussion, proposing, and
bargaining. During these phases, both parties
deliberate on the key terms of the agreement. For
Fuel1T, the negotiation process was repeated with
different potential partners in various jurisdictions
sequentially, leveraging lessons from one negotiation in the subsequent ones.
4 Concluding the critical aspects of the licensing agreement

≐≐ This step involves drafting the legal document with attention to intricate legal matters
including jurisdiction, applicable laws, dispute resolution arrangements, and so on. Legal
assistance is advised to navigate the complex issues and rounds of negotiation.
The following 13 key matters should be addressed, at a minimum, when concluding

a licensing agreement:
1 Identification of the parties

≐≐ The initial focal point of a licensing agreement
is the clear identification of the involved parties:
the licensor granting the license rights and
the licensee utilizing them. It should specify
addresses, jurisdiction of incorporation, and
the agreement’s effective date. In the Fuel1T scenario, the licensor could be engaging with
businesses in distinct jurisdictions either through separate agreements or a unified one with
a parent company harboring sub-license rights.
2 Definitions
≐≐ The agreement necessitates a clear “dictionary” delineating potential ambiguous terms to
prevent misinterpretations. A minimum of three terms must be defined: the licensed IP and
IPRs, the licensed products under the agreement’s terms, and the specific territories where
the products can be utilized. For Fuel1T, the agreement will detail specific technologies to be
licensed and will stipulate territorial rights and restrictions for various products and regions.
3 Subject matter or scope

≐≐ The third vital aspect to consider is the exact scope or subject matter of the agreement,
specifying the licensed intellectual property rights and technology rights linked to Company
X’s technologies. For Fuel1T, this encompasses all their rights in patent applications and all
their technology or technical information that is not covered by IPR but which is necessary
for practicing and utilizing disclosed or claimed inventions.

4 Field of use
≐≐ Fourth is determining the licensee’s field of use, which may have restrictions such as
customer class, industry segment, or a specific purpose. For Fuel1T, rights for certain
technologies were segmented based on geographic regions with varying permissions,
including manufacturing and sale rights in designated areas and potential export allowances.
5 Technical assistance
≐≐ T he fifth consideration is offering technical Technical assistance
assistance to the licensee, including essential

documentation, data, and expertise. Fuel1T
would need a detailed capacity development
plan within each agreement due to the complex
manufacturing process involved.
6 License fees
≐≐ Lastly, the sixth aspect involves deciding on the
licensing fees, which include lump sum payments,
potentially at different milestones, and royalty
payments that might be contingent on various factors such as gross revenue or sales
metrics. Fuel1T’s approach would be to tailor fees based on individual business assessments
in each jurisdiction, with potential royalty rates determined by gross sales revenue.
7 Sub-license
Sub-license
terms to
consider
≐≐ Considering sub-licensing is vital. It entails allowing the licensee to grant sublicenses within
its operational scope or region, and this should be stipulated clearly in the agreement. Key
considerations include the eligible sublicensees, transferable rights, control retained by the
licensor, necessity of the licensor’s written approval, and the sub-license’s status once the
main license is terminated or expires.
≐≐ For our Fuel1T example, in the event that a single parent company is found with affiliates in
each jurisdiction, then the licence agreement could include the right for the parent company
to sub-licence to its affiliates.
215
In addition, say the Australian company was struggling to meet the needs of the New
Zealand market, then rights to sub-licence to a local New Zealand company could be given
to the Australian Company. This sub-licence could be granted with prior written approval
from Fuel1T.
8 Improvements
≐≐ A ddressing improvements by defining
what qualifies as an improvement and
establishing the ownership of such
enhancements is essential. It is pivotal to
clarify the implications of improvements
on the existing license agreement and
potentially negotiate joint ownership.
≐≐ In the Fuel1T scenario, a collaborative approach with the licensee could result in enhancements
owned by Fuel1T but accessible to the licensee, possibly involving royalty arrangements
beneficial to both parties.
9 Infringement
≐≐ Handling infringement efficiently, generally the licensor’s responsibility, can involve
collaborative efforts to protect intellectual property rights.
≐≐ For Fuel1T, proactive management in each licensed territory is essential to shield licensees
from unfair competition and ensure adherence to licensing obligations. Fuel1T will also
have to make sure its licensees have freedom to operate.
10 Licensor and licensee obligations

≐≐ Defining obligations helps maintain a fruitful collaboration, involving enablement and
performance expectations for both parties. Maintenance responsibilities and performance
standards, such as production quotas, are crucial.
≐≐ Fuel1T must delineate clear performance standards to assure market needs are met,
retaining the right to action if standards aren’t upheld.
11 Confidentiality
≐≐ Securing confidentiality preserves the competitive edge, mandating non-disclosure of

sensitive information, particularly to rivals, through robust agreement clauses.

≐≐ For Fuel1T, it entails safeguarding transmitted know-how and technical data from being
public or accessed by competitors.
12 Disputes
≐≐ Anticipating disputes and delineating resolution mechanisms in the agreement ensures a
smoother collaboration process. Options include arbitration, mediation, or specified court
litigation, tailored to the parties’ preferences and circumstances.
≐≐ Fuel1T should prioritize arbitration or mediation, resorting to litigation only if necessary,
preferably in neutral or local Chilean courts.
13 Termination
Two ways to
end licence
agreements
≐≐ Articulating termination provisions, typically through natural expiration or triggered events,

safeguards parties’ interests. Possible grounds for early termination include breaches like
non-payment or bankruptcy incidents.
≐≐ Fuel1T’s agreement might span a fixed term or the patents’ lifespan, or even be extended
due to the involved know-how and copyrights whose protection periods stretch beyond the
duration of other registered rights.
Monitoring the Licensee and Termination of the Agreement
The final phase in sustaining a license agreement is Monitoring the Agreement.

Licensors should monitor their licensees’ use of the IP or IRPs to ensure
compliance with the terms of the agreement as well as their financial and
reputational expectations, including: monitoring royalties generated by the
licensed IP, monitoring the quality of products sold under the licensed brand, and
monitoring whether the licensee is doing anything to undermine the licensor’s
ability to collect damages from infringers in potential future litigation.
217
Failing in this step could nullify the purpose of acquiring a licensee. Hence,
sufficient resources must be dedicated to this function.
In the Fuel1T scenario, the start-up should designate resources to manage
the agreements effectively, confirming that revenues align with the licensees’
audited financial reports, a critical aspect initially considered when entering the
agreements.
0 min 0 sec
Module 1. ‌Growing and Scaling My Business through

8-1-4 On-going IP Management and Utilisation
Successful innovation relies not just on the novelty but also on organizational
culture, experienced innovation teams, and supportive leadership. Nokia faltered
because of hesitant product managers, an R&D team that couldn’t innovate timely,
and executives misjudging market trends.
To avoid such pitfalls, businesses should:
1 Recognize and shield their intellectual property
2 Strategically use or license it
3 Constantly refine it while considering market and competitor trends
Following this roadmap will ensure businesses remain competitive, either by

leading market trends or swiftly adapting to them, avoiding stagnation in a rapidly
evolving market.
CASE Did you know?
The Rise and Demise of Nokia M8-1-4, 0 min 58 sec
Managing and continuously improving intellectual property rights after launching

products or services is vital to retain a market monopoly based on unique offerings.
This process demands adapting to market demands and learning from failures like
Nokia’s, a company that, despite massive R&D investments, couldn't compete with
iPhone due to untimely decisions and not aligning with market needs.

Module 8. Quiz
Quiz Module 8
Quiz 1
There are at least six different ways in which intellectual property and its associated rights can
be utilised:
‌The first way is for the business to use the IP and its associated rights .
‌The second way is via a .
‌The third way is through the use of information.
‌The fourth way to utilise IP is through , which could be concluded between two or
more private or public entities.
‌The fifth way is to , such as samples.
‌The sixth way to utilise IP is through a of the IP or associated rights.
Memo
219
IP Panorama 2.0
Study Book
Quiz Answers
Quiz Answers
Module 1 Module 3-2

Quiz 1 Quiz 1
‌technology ‌fixation
‌patent ‌Facts
‌business ‌publication year
Quiz 2 Sample Answer
Module 2 Copyright subsists automatically [1] for a
work which is original [1] and was created
Quiz 1 independently [ 1 ]. Some countries have
‌exclusionary right a requirement for fixation/reduction to
material form [1]. The lyrics will be eligible
‌
manufacturing capability, license, sell,
for protection as a literary work [1] to you as
assignment
the author and the melody for protection as
a musical work [1] with you and the guitarist
as co-authors. If you both record the song
Module 3-1 together, the recording will be eligible for
Quiz 1 protection as a sound recording [ 1 ] with
you and the guitarist as co-authors. If you
‌Monopolies, Anne
and your guitarist approach a producer to
‌Paris make a more professional version of your
‌Hague, Locarno song, the producer will be entitled to related
‌trade rights for the final production [ 1 ]. When
the sound recording is uploaded onto an
Quiz 2 Sample Answer
online streaming site and emitted through a
International treaties, conventions and
satellite by a broadcaster, for example, the
agreements are important to establish a level
broadcasting company will be entitled to
playing field [1] for nations who are at varying
related rights for the broadcast [1].
stages of development [1]. This means that
a person who creates new IP in one country
is given the same rights as a person who Module 3-3-1
creates new IP in another country, whether
it be an invention, literary work, design, or Quiz 1
a new plant variety, for example. They are ‌new, novel
eligible for protection as a patent, copyright, inventiveness
industrial design or plant breeders’ right [1].
‌industrial application
In addition, both individuals have the same
rights afforded to them to stop a third party
from infringing their rights. The limiting factor
is your country’s ability/willingness to become
Module 3-3-2
a signatory and then enact local legislation to Quiz 1
give effect to these rights in your jurisdiction
‌claims
[1]. The convention provides a framework for
drafting local legislation on which specific ‌12 months
issues of national sovereignty can be built as ‌30 or 31 months
necessary, and where flexibility is permitted
[1]. broad , narrow , broad , narrow , narrow

Module 3-4 Module 3-9
Quiz 1 Quiz 1
‌an article, Shape ‌originality or novelty
‌novelty, novelty ‌subject matter
‌the grace period, 6 and 12 months
Module 3-5 Module 4

Quiz 1 Quiz 1 Sample Answer
may be regarded as a trade secret, qualifies, Ensure that the trademark is registered and
any ensure that the TM symbols ™ or ® are used
on your website or social media platform [1];
‌not generally known All content should be marked as ⓒ to make
‌that confers an economic benefit it clear that content is subject to Copyright
protection. [1]
‌ensure that it remains a secret
Ensure that you obtain licenses for the use
of the e-commerce systems/on-line business
methods which are used to carry out the on-
Module 3-6 line transactions, the search engines and
Quiz 1 potentially any other technical tool used on
the Internet [1], as well as various aspects
‌Distinguish
of software [1], which may be protected by
‌visual communication patents [1] or utility models. [1]
‌distinctive, renewal fees The source code and text-based HTML
‌trust code [ 1 ] used in websites, as well as any
databases will be protected by copyright. [1]
‌emotional attachment
The screen displays, user interface, web
pages, and any computer-generated graphic
symbols [1], amongst other features can be
Module 3-7 protected by industrial designs. [1]
Lastly, the“hidden” aspects of a website
Quiz 1
such as algorithms, object code, data flow
‌indication of source
charts or object flow charts [ 1 ] can be
‌quality, reputation protected by trade secrets. [1]
‌appellation of origin
Module 3-8 Module 5-1

Quiz 1 Quiz 1
‌discovered, developed ‌defensive
‌sufficiently uniform ‌The creation of an exclusionary monopoly
‌denomination ‌picket-fence, Picket-fence
‌evaluation, growing ‌promptly, change
223
Quiz Answers
Module 5-2 Step 3:

Where the source code is built on, appropriate
Quiz 1 copyright notices should be associated with the
program. If the copyright is part of a Creative
‌the path to strategic value
Commons scheme for example, then one can
‌utilizes its IP contact the company and arrange copyright
‌Use of Information permission/payment of a fee. [1]
Similarly, copyright notices will be on the text
‌creator
books or websites that are used for the equations
or properties. But as the information taken relates
Module 6 to facts which are not protected themselves, it is
not necessary to determine whether the copyright
Quiz 1 has expired or not. [1]
‌ownership of all IP Step 4:
‌agreements For the computer program, if open source, one
‌the income approach is building upon the existing code and this is
regulated via a Creative Commons licence. [1]
‌b
This question is not relevant for the fuel cell
example, as there is no copying for the use/
assembly instructions. [1]
Module 7
Step 5:
Quiz 1 Sample Answer If the company used quotations in the use/
assembly instructions of some text they wanted
Step 1:
to refer to in another document, provided they
For the computer program, facts or ideas from
acknowledged the source, they could claim fair
a protected work should not be used to build the
use. [1]
computer program. [1]
When it comes to the use/assembly of the fuel Step 6:
cells, one may need to rely on some chemical Based on the analysis done, and if a licence
equations or physical properties of materials etc., was acquired for the open source through
when describing the fuel cells and how to use/ Creative Commons, it is likely that there will be
assembly them. These equations and properties no infringement of the copyright created in the
may be defined in some other documents in text computer and the instructions for use/assembly
books, online, etc., but as they are facts, [1] they of the fuel cells, and hence no approval needs
are not eligible for copyright protection, and so the to be obtained and the copyright created will be
inclusion of this information in the instructions for validly held by the author/fuel cell start-up. [1]
use/assembly will not require permission from
any copyright holder.
Step 2:
Module 8
If open source code is used, then the computer
program may build on that code. Permission may
Quiz 1
be needed depending on the type of source code ‌itself
and the platform. However, the code that is specific ‌licence
for the company’s fuel cells should be original. [1]
‌confidential
For the use/assembly instructions, the company
can ensure they do not infringe the copyright ‌collaboration
of other fuel cell manufacturers by adopting an ‌access materials
arrangement of the cells which is significantly
‌sale
different to any competitor. Hence, the work is likely
to meet the requirement for originality and qualify
for copyright. [1]

About the Study Book
This supplementary study book for the IP Panorama

2.0 multimedia contents was developed to support
learners.
Contact Information
World Intellectual Property Organization

34, chemin des Colombettes
CH-1211 Geneva 20, Switzerland
www.wipo.int
welc@wipo.int
Korean Intellectual Property Office

International Intellectual Property
Training Institute
82, Gwahak-ro, Yuseong-gu, Daejeon,
Republic of Korea
https://iipti.kipo.go.kr
kipoacademy@korea.kr
Korea Invention Promotion Association

131 Teheran-ro, Gangnam-gu, Seoul,
Korea
www.kipa.org/eng
kipoacademy@kipa.org
IP Panorama 2.0
Study Book

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IP Panorama 2.

At a Glance Key Improvements

The Korea Invention Promotion Association (KIPA) is a public non-profit

Since 2010, WIPO, KIPO, KIPA and KAIST Three-Stage Course

access tailored IP training programs for IP professionals,

offer on the WIPO Academy site.

Module 1 The Role of IP 8

Module 2 Utilisation of IP and IPR 18

Module 3 Different Forms of IP and IPR 32

Module 4 ‌How to Ensure Your Business

Module 5 The IP Strategy 146

Module 6 IP Audit 168

Module 7 IP Infringement  184

Module 8 IP Utilisation 204

IP Panorama 2.0 Modules (8) Submodules (37) Time

1-1 What is IP? 9 min

Utilisation of 2-1 How Can We Utilise IP & IPR? 10 min

3-1 General Introduction 14 min

3-2-1 Works, and Copyright and Related Rights (1) 41 min

3-2-2 Works, and Copyright and Related Rights (2) 5 min

3-3-1 Inventions and Patents (1) 27 min

3-3-2 Inventions and Patents (2) 23 min

3-4-1 Designs and Industrial Design Rights (1) 21 min

3-4-2 Designs and Industrial Design Rights (2) 13 min

3-5-1 Trade Secrets (1) 8 min

3-5-2 Trade Secrets (2) 9 min

3-6-1 Marks and Trademarks (1) 19 min

3-7-1 Marks of Origin and Indications of Source (1) 13 min

3-7-2 Marks of Origin and Indications of Source (2) 12 min

3-8-1 Plant Varieties and Plant Breeders’ Rights (1) 9 min

3-8-2 Plant Varieties and Plant Breeders’ Rights (2) 5 min

Traditional Knowledge, Traditional Cultural

Traditional Knowledge, Traditional Cultural

IP Panorama 2.0 Modules (8) Submodules (37) Time

How to Use Existing Forms of IP Rights in

5-1-1 Business and the IP System 15 min

Steps to Consider before Formulating an IP

5-2-1 Formulating Your IP Strategy (1) 6 min

5-2-2 Formulating Your IP Strategy (2) 11 min

6-1 What Is an Intellectual Property Audit? 13 min

7-1-1 What Is Infringement of an IPR? 7 min

7-2-1 Infringement and Copyright 20 min

7-2-3 Infringement and Patents 23 min

8-1-1 Different Forms of IP Utilisation 10 min

8-1-2 Licensing and Franchising, Telling the Difference 12 min

Licensing in More Detail, How to Conclude a

Growing and Scaling My Business through On-

Total Time Approx. 10 hours 565 min

1-1 What is IP?12

1-1 What is IP?

Learning Points by Module and Location

Learning Point Module Location

<What is IP?> 1-1

0. Intro 1-1 0 min 15 sec

1. IP, Innovation, and Economic Growth 1-1 1 min 13 sec

2. IP vs. IPR 1-1 3 min 21 sec

3. IP is All Around Us 1-1 6 min 32 sec

- Key Takeaways for Module 1-1 1-1 8 min 58 sec

10 IP Panorama 2.0 Study Book

Learning Point Module Location

<Why is IP Important?> 1-2

0. Intro 1-2 0 min 17 sec

1. The Relevance of IP/IPR to a Business 1-2 1 min 0 sec

2. IP/IPR Strategy & Business Strategy 1-2 3 min 58 sec

Module 1 The Role of IP 8

Module 2 Utilisation of IP and IPR 18

Module 3 Different Forms of IP and IPR 32

Module 4 ‌How to Ensure Your Business

Module 5 The IP Strategy 146

Module 6 IP Audit 168

Module 7 IP Infringement 184

Module 8 IP Utilisation 204

1-1 What is IP?12

C onversion of intellectual property into innovation continues to result in

From the Telephone to the Smartphone M1-1, 7 min 7 sec

This is also clear from United Nations

Intellectual property refers to creations of the human mind such as new

Google M1-1, 8 min 25 sec

‌According to United Nations Sustainable Development Goal (SDG) 9, “without

Fuel Cell Case Patent Strategy M1-2, 7 min 3 sec

Fuel Cell Case Trade Secrets Strategy M1-2, 7 min 48 sec

Fuel Cell Case Trade Name Strategy M1-2, 8 min 14 sec

Fuel Cell Case Copyright Strategy M1-2, 8 min 33 sec

Fuel Cell Case Design Strategy M1-2, 9 min 8 sec

2-1 How Can We Utilise IP & IPR?22

IP can be developed and protected to prevent competitors from creating a

During the pending stage of an IP right, such as a patent or design application, it

This distinction is crucial in understanding IP rights. For instance, adding a fourth

Module 2. The Journey to the End User,

What is a fuel cell? M2-1, 5 min 55 sec

Is the solution scientifically

Is creating the IP techno-economically feasible without incurring unrecoverable

Understanding the unique benefits and competitive advantages of the new IP

Determining if the market is pre-established or requires development is essential.

In which jurisdictions should the IP be protected? This question is important

Scientific/Technological Feasibility: It is necessary to verify that