Intellectual Property

It is important to file a patent application before publicly disclosing the details of the invention. In general, any invention which is made public before an application is filed would be considered prior art.  Although the definition of the term ‘prior art’ is not unified at the international level, in many countries it consists of any information which has been made available to the public anywhere in the world by written or oral disclosure.  In countries which apply the above definition of the term ‘prior art’, the applicant's public disclosure of the invention prior to filing a patent application would prevent him/her from obtaining a valid patent for that invention, since such invention would not comply with the novelty requirement. Some countries, however, allow for a grace period, which provides a safeguard for applicants who disclosed their inventions before filing a patent application, and the novelty criteria may be interpreted differently depending on the applicable law.

For example, if it is inevitable to disclose your invention to a potential investor or a business partner, before filing a patent application, such a disclosure should be accompanied by a confidentiality agreement.

Procedural and substantive requirements for the grant of patents are different from one country/region to the other. In particular, practices and case law regarding the patentability of software-related inventions vary significantly in different countries. For example, in some countries, “inventions” within the meaning of patent law must have a ‘technical character’ and software as such is not considered a patentable invention, while in others, such requirements do not exist, so that software is generally patentable subject matter.
It is therefore recommend that you speak with one of our practicing lawyers who is specialized in intellectual property or the intellectual property offices of those countries in which you are interested to get protection. A list of URLs and a directory of national and regional intellectual property offices are available.
On the other hand, computer programs may be protected under copyright.  According to a well-established principle, copyright protection extends only to expressions, not to ideas, procedures, methods of operation or mathematical concepts as such.

All the WTO agreements (except for some ‘plurilateral’ agreements) apply to all WTO members. The members each accepted all the agreements as a single package with a single signature making it, a ‘single undertaking’.
The TRIPS Agreement is part of that package. Therefore it applies to all WTO members.
More on the single undertaking.
The agreement allows countries different periods of time to delay applying its provisions. These delays define the transition from before the agreement came into force (before 1 January 1995) until it is applied in member countries. The main transition periods are:

Developed countries were granted a transition period of one year following the entry into force of the WTO Agreement, i.e. until 1 January 1996.

Developing countries were allowed a further period of four years (i.e. to 1 January 2000) to apply the provisions of

• The agreement other than Articles 3, 4 and 5 which deal with general principles such as non-discrimination.
• Transition economies, i.e. members in the process of transformation from centrally-planned into market economies, could also benefit from the same delay (also until 1 January 2000) if they met certain additional conditions.
• Least-developed countries are granted a longer transition period of a total of eleven years (until 1 January 2006), with the possibility of an extension. For pharmaceutical patents, this has been extended to 1 January 2016, under a decision taken by ministers at the Fourth Ministerial Conference in November 2001.

No, the TRIPS Agreement requires members to comply with certain minimum standards for the protection of intellectual property rights covered in it.
But Members may choose to implement laws which give more extensive protection than is required in the agreement, so long as the additional protection does not contravene the provisions of the agreement.
This is why the TRIPS Agreement is sometimes described as a “minimum standards” agreement.
In addition, the agreement gives members the freedom to determine the appropriate method of implementing the provisions of the agreement within their own legal system and practice. The agreement thus takes into account the diversity of members’ legal frameworks (for instance between common law and civil law traditions).

At present, no ‘world patents’ or ‘international patents’ exist.
An application for a patent must be filed, a patent shall be granted and enforced in each country in which you seek patent protection for your invention, in accordance with the law of that country. In some regions, a regional patent office, for example, the European Patent Office (EPO) and the African Regional Intellectual Property Organization (ARIPO), accepts regional patent applications or grants patents, which have the same effect as applications filed or patents granted in the member States of that region.
Any resident or national of a Contracting State of the Patent Cooperation Treaty (PCT) may file an international application under the PCT. A single international patent application has the same effect as national applications filed in each designated Contracting State of the PCT. However, under the PCT system, in order to obtain patent protection in the designated States, a patent shall be granted by each designated State to the claimed invention contained in the international application. Further information concerning the PCT is available.

Procedural and substantive requirements for the grant of patents as well as the amount of fees required are different from one country/region to the other. It is therefore recommended that you consult a practicing lawyer who is specialized in intellectual property or the intellectual property offices of those countries in which you are interested to get protection. A list of URLs and a directory of national and regional intellectual property offices are available.

The Collection of Laws for Electronic Access (CLEA) provides easy access to intellectual property legislation from a wide range of countries and regions as well as to treaties on intellectual property administered by WIPO.
Many national or regional patent Offices provide information concerning national or regional legislation on their web sites. A list of URLs of national and regional intellectual property offices are available.

The first step in securing a patent is the filing of a patent application. The patent application generally contains the title of the invention and as well as an indication of its technical field it must include the background and a description of the invention in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials such as drawings, plans or diagrams to better describe the invention. The application also contains various ‘claims’ or information which determines the extent of protection granted by the patent.

Intellectual property rights can be defined as the rights given to people over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creations for a certain period of time.
Intellectual property rights are traditionally divided into two main categories:

• Copyright and rights related to copyright: i.e. rights granted to authors of literary and artistic works, and the rights of performers, producers of phonograms and broadcasting organizations. The main purpose of protection of copyright and related rights is to encourage and reward creative work.
• Industrial property: This includes (1) the protection of distinctive signs such as trademarks and geographical indications, and (2) industrial property protected primarily to stimulate innovation, design and the creation of technology. In this category fall inventions (protected by patents), industrial designs and trade secrets.

For the purposes of the TRIPS Agreement, ‘intellectual property’ refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II of the agreement (Article 1:2). This includes copyright and related rights, trademarks, geographical indications, industrial designs, patents, integrated circuit layout-designs and protection of undisclosed information.

A patent provides the owner of the patent with protection for the invention. The protection is usually granted for a limited period of 20 years.

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something or offers a new technical solution to a problem.  In order to be patentable, the invention must fulfill certain conditions (please see the answer to the question below ‘what kinds of inventions can be patented?’. 

One of the fundamental characteristics of the TRIPS Agreement is that it makes protection of intellectual property rights an integral part of the multilateral trading system, as embodied in the WTO.
The TRIPS Agreement is often described as one of the three “pillars” of the WTO, the other two being trade in goods (the traditional domain of the GATT) and trade in services.
The TRIPS Agreement is part of the “single undertaking” resulting from the Uruguay Round negotiations. That implies that the TRIPS Agreement applies to all WTO members. It also means that the provisions of the agreement are subject to the integrated WTO dispute settlement mechanism which is contained in the Dispute Settlement Understanding (the “Understanding on Rules and Procedures Governing the Settlement of Disputes”).

The TRIPS Agreement says WTO member countries must comply with the substantive obligations of the main conventions of WIPO — the Paris Convention on industrial property, and the Berne Convention on copyright (in their most recent versions).
With the exception of the provisions of the Berne Convention on moral rights, all the substantive provisions of these conventions are incorporated by reference. They therefore become obligations for WTO member countries under the TRIPS Agreement — they have to apply these main provisions, and apply them to the individuals and companies of all other WTO members.
The TRIPS Agreement also introduces additional obligations in areas which were not addressed in these conventions, or were thought not to be sufficiently addressed in them.
The TRIPS Agreement is therefore sometimes described as a “Berne and Paris-plus” Agreement.
The text of the TRIPS Agreement also makes use of the provisions of some other international agreements on intellectual property rights:

• WTO members are required to protect integrated circuit layout designs in accordance with the provisions of the Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC Treaty) together with certain additional obligations.

The TRIPS Agreement refers to a number of provisions of the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Convention), without entailing a general requirement to comply with the substantive provisions of that

• Convention.

Article 2 of the TRIPS Agreement specifies that nothing in Parts I to IV of the agreement shall derogate from existing obligations that members may have to each other under the Paris Convention, the Berne Convention, the Rome Convention and the Treaty on Intellectual Property in respect of integrated circuits.

The World Intellectual Property Organization (WIPO) was established by a convention of
14 July 1967, which entered into force in 1970. It has been a specialized agency of the United Nations since 1974, and administers a number of international unions or treaties in the area of intellectual property, such as the Paris and Berne Conventions.
The objectives of WIPO are to promote intellectual property protection throughout the world through cooperation among states and, where appropriate, in collaboration with any other international organization. WIPO also aims to ensure administrative cooperation among the intellectual property unions created by the Paris and Berne Conventions and sub-treaties concluded by the members of the Paris Union.
The administration of the unions created under the various conventions is centralized through the WIPO secretariat, the “International Bureau”. The International Bureau also maintains international registration services in the field of patents, trademarks, industrial designs and appellations of origin. WIPO also undertakes development cooperation for developing countries through advice, training and furnishing of documents.
An agreement on cooperation between WIPO and the WTO came into force on 1 January 1996. The agreement provides cooperation in three main areas:

• notification of, access to and translation of national laws and regulations
• implementation of procedures for the protection of national emblems
• and technical cooperation.

 

WIPO is located at 34 Chemin des Colombettes, Geneva
mailing address: P.O. Box 18, CH-1211 Geneva 20
Telephone: (41 22) 338 9111
Fax: (41 22) 733 5428

Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. These patent rights are usually enforced in a court of law, which in most legal systems holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.

An invention must, in general, fulfill the following conditions to be protected by a patent. It must be of practical use and it must show an element of novelty and some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called ‘prior art’. The invention must show an inventive step which could not be deduced by a person with average knowledge of the technical field. Its subject matter must be accepted as ‘patentable’ under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) are generally not patentable.

A patent owner has the right to decide who may or may not use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license other parties to use the invention on mutually agreed terms. The owner may also sell the rights to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain and the owner no longer holds exclusive rights to the invention and it becomes available to commercial exploitation by others.

Patented inventions have pervaded every aspect of human life, for example, electric lighting patents are held by Edison and Swan, plastic patents held by Baekeland, ballpoint pens patents held by Biro and microprocessors patents held by Intel.
All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world. Such an increasing body of public knowledge promotes further creativity and innovation in others. In this way, patents provide not only protection for the owner but valuable information and inspiration for future generations of researchers and inventors.

In order to search patent applications and granted patents, some national or regional patent offices provide free-of charge electronic databases via Internet. A list of URLs of web-based databases is available.
WIPO provides access to a comprehensive electronic database on published international patent applications filed under the PCT system from 1978 to the present day in image format and to fully searchable text of descriptions and claims for PCT International Applications filed as from July 1998.
Wherever web-based databases are not available, patent information may be consulted on paper, on microfilms or CD-ROMs, at the national or regional patent offices.
Searchable Internet patent databases have significantly facilitated the access to patent information. However, given the complexity of patent documents and the technical and legal skills required, it is advisable to contact a professional patent attorney if a high-quality patent search is required.
WIPO Patent Information Services (WPIS) provides free-of-charge services for users in developing countries who wish to obtain technical search results in relation to their inventions.

A patent is granted by a national patent office or by a regional office that does the work for a number of countries, such as the European Patent Office and the African Regional Intellectual Property Organization. Under such regional systems, an applicant requests protection for the invention in one or more countries, and each country decides as to whether to offer patent protection within its borders. The WIPO-administered Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application which has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed.

Patents provide incentives to individuals by offering them recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which assures that the quality of human life is continuously enhanced.