Slide 1 Intellectual Property Law Dr. Ana Ramalho, LL.M. Assistant Professor, Maastricht University CESL Master in European and International Law (MEIL)
Patents Legal framework Substantive issues Procedural issues Patents and other IP Trademarks Legal framework Substantive issues Procedural issues Lecture Overview
Patents Legal framework Source: WIPO SCP 12/3/Rev.2 (2009) Annex II
Main instruments Patents Legal framework Paris Convention (1883) PCT Patent Cooperation Treaty (1970) TRIPs (1994) Patent Law Treaty (2000) But also: EPC European Patent Convention (1973, 2000) Unitary patent (package agreed in 2012)
Patents Substantive issues Patentable subject matter (1) 27.1 TRIPs, 52 EPC Any inventions in allfields of technology Novelty Inventive Step Not defined in TRIPs Industrial Application
Patents Substantive issues Patentable subject matter (2) TRIPS Positive definition Any inventions, whether products or processes No negative list Earlier draft had one based on national practices, but it disappeared from the second draft Definition of what is not an invention interpretation only What is an invention? EPC Negative definition Any inventions But not inventions: Discoveries, scientific theories, mathematical methods Aesthetic creations Schemes, rules and methods for performing mental acts, playing games or doing business, and computer programmes Presentations of information... as such
Patents Substantive issues Patentable subject matter (3) Exclusions (27.2 & 3 TRIPs, 53 EPC) TRIPS May Diagnostic, therapeutic, surgical methods Plants and animals, biological processes [but plant varieties shall be protected] ] Inventions the protection of which would be against public policy or morality EPC Shall Methods for treatment by surgery or therapy, diagnostic methods (but products for use in these methods may be patentable) Plants and animals, biological processes Inventions the protection of which would be against public policy or morality
Patents Substantive issues Patentable subject matter (4) Controversies: Method of competitionand methodsin non technological fields (game, doing business) Computer program and software Biotech, gene, diagnostic methods Remember: Art. 27.1 TRIPs does not preclude anything ex ante (exceptions allowed)
Novelty (1) Patents Substantive issues Art. 54 EPC: An invention is new if it is not comprised in the state of the art State of the art: everything made available to the public by State of the art: everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing
As a minimum requirement, TRIPs Art. 27.1. does not preclude anything and allows exceptions. Novelty (1) Patents Substantive issues Art. 54 EPC: An invention is new if it is not comprised in the state of the art painting patents publications products State of the art: everything made available to the public by means of a written or oral description, by use, or in any TV other way, before the date of filing conversation Journal articles Information on the Internet Espacenet: more than 80 million patent docs
Novelty (2) Patents Substantive issues State of the art prior art = everything, everywhere Famous example from the UK: entry signal system for pets
Novelty (3) Patents Substantive issues Bad luck the examiner was a cartoon lover!
Novelty (4) Still new : (54.44 & 5, 55, 83 EPC) Patents Substantive issues First and second medical use Disclosure derived from evident abuse e.g., fraud, illegal action with intention to harm (6 mo) Disclosure at international exhibition as defined in law (6 mo) Insufficient disclosure
Inventive step (1) Patents Substantive issues Art. 56 EPC: having regard of the state of the art, the invention is not obvious to a person skilled in the art
Inventive step (2) Patents Substantive issues Art. 56 EPC: having regard of the state of the art, the invention is not obvious to a person skilled in the art Involves the exercise of skills beyond what is expected from the PSITA Does not follow logically from prior art Inventive step: a solution to a new problem or a surprising effect (e.g., a herbicide used as a headache pill) Exampleof noinventive step: Nailvs screw to hang up a picture
Inventive step (3) Patents Substantive issues Art. 56 EPC: having regard of the state of the art, the invention is not obvious to a person skilled in the art Has common general knowledge in the technical field Has everything in SoA Has no imagination or inventive ability Has means and capacity for routine work and experimentation
Patent infringement (1) Patents Substantive issues Anatomy of a patent infringement What Performing a prohibited act (commercial) No exception applicable Covered by the scope of a patent (=claims) (=duration) Provision 28 TRIPS 30 +31 TRIPS 69 EPC 33 TRIPS
Patent infringement (2) Patents Substantive issues Prohibited acts (28 TRIPS): The patent owner has the exclusive right ihto prevent others from: Making, using, selling, offering for sale, importing a product or using a process or making, using selling or importing a product that is directly obtained through the process Subject to exhaustion (although art. 6 TRIPS: no harmonization!) what about exporting?
Patent infringement (3) Patents Substantive issues Other exclusive rights conferred by patents (Art. 28.2 TRIPS) 1. Assignment sale of the right 2. License transfer of right to use Exclusive Non exclusive Vl Voluntary v. compulsory iht? right?
Patent infringement (4) Patents Substantive issues Exceptions (Art. 30 + 31 TRIPS) 1. Art. 30: limited exceptions that do not unreasonably conflict with the normal exploitation of a patent and do not unreasonably prejudice the legitimate interests of the patent holder Research oriented andmarket oriented experiments 2. Art. 31: Compulsory licensing and government non commercial uses
Patents Substantive issues Compulsory licences and government n.c. uses (1) Why? Balance between the interests of the public Local industry Access to health and the interests of right holders and the interests of right holders Exclusive rights income
Patents Substantive issues Compulsory licences and government n.c. uses (2) Article 31 TRIPS: Based on individual merits Subject to prior negotiation Limited scope and duration Non exclusive license Non assignable Predominantly P d i for domestic market kt Termination, if circumstances cease to exist Subject to remuneration Judicial review (or distinct higher authority review) Remedy for anti competitive practice (in which case no prior negotiation needed and foreign markets possible)
Patents Substantive issues Compulsory licences and government n.c. uses (3) This requirement may be waived by a Member in the case of a national emergency or other circumstances of extreme urgency or in cases of public non Article 31 TRIPS: Based on individual merits Subject to prior negotiation Limited scope and duration commercial il use. Non exclusive license Non assignable Predominantly P d i for domestic market kt Termination, if circumstances cease to exist Subject to remuneration Judicial review (or distinct higher authority review) Remedy for anti competitive practice (in which case no prior negotiation needed and foreign markets possible)
Patents Substantive issues Compulsory licences and government n.c. uses (4) 1) Doha Declaration on the TRIPS Agreement and Public Health, November 2001 Bottom line: countries lacking capacity to manufacture generic drugs can obtain imports from other countries without interference from patent holders Public health policies by Brazil and South Africa Post September 11 anthrax attacks TRIPS Art. 31 on compulsory license had never been used until then
Patents Substantive issues Compulsory licences and government n.c. uses (5) 1) Doha Declaration on the TRIPS Agreement and Public Health, November 2001 Each Member has the right to grant compulsory licences and the freedom to determine the grounds upon which such licences are granted. Each Member has the right to determine what constitutes a national emergency or other circumstances of extreme urgency, it being understood that public health crises, including those relating to HIV/AIDS, tuberculosis, malaria and other epidemics, can represent a national emergency or other circumstances of extreme urgency. The effect of the provisions in the TRIPS Agreement that are relevant to the exhaustion of intellectual property rights is to leave each Member free to establish its own regime for such exhaustion without challenge, subject to the MFN and national treatment provisions ii of Articles 3 and 4.
Patents Substantive issues Compulsory licences and government n.c. uses (6) 2) Doha Decision: implementation of para. 6 of the Doha Declaration, August 2003 Para. 6: We recognize that WTO Members with insufficient or no manufacturing capacities in the pharmaceutical sector could face difficulties in making effective use of compulsory licensingi under the TRIPS Agreement. We instruct tthe Council for TRIPS to find an expeditious solution to this problem and to report to the General Council before the end of 2002.
Patents Substantive issues Compulsory licences and government n.c. uses (7) 2) Doha Decision: implementation of para. 6 of the Doha Declaration, August 2003 Two waivers for Art. 31f) Exporting countries obligations waived Exporting constraints waived within a regional trade agreement with conditions (see point 2 of the Decision) One waiver for Art. 31h) Importing countries obligations on remuneration to patent holder are waived
Patents Substantive issues Compulsory licences and government n.c. uses (8) 3) TRIPS Amendment, December 2005 Article 31bis same content as Doha Decision Needs to be ratified by 2/3 of all WTO Members Will replace the Doha Decision
Patents Substantive issues Compulsory licences and government n.c. uses (9) Legal status of Doha instruments 1. Doha Declaration: interpretative value 2. Doha Decision: probably overrules WTO rules as a subsequent agreement interpretative value 3. TRIPS amendment: not yet in force
Patents Substantive issues Compulsory licences and government n.c. uses (10) Dependent patents Article 31(l) TRIPS: (i) the invention claimed in the second patent shall involve an important technical advance of considerable economic significance in relation to the invention claimed in the first patent; (ii) the owner of the first patent shall be entitled to a crosslicence on reasonable terms to use the invention claimed in the second patent; and (iii) the use authorized in respect of the first patent shall be nonassignable except with the assignment of the second patent.
Patents Procedural issues National patent can be used: For protection in the home country market or in a few countries As a basis for extending protection to other countries orregionsregions International patent applications can be used: For protection in many countries and for extending the prepublication period (up to 30 months) Regional patent can be used: For protection in a number of countries in the same region at a lower cost
National route Patents Procedural issues Apply separately in each country & pay fees in each IP office. UK Brazil US Japan Search Search Search Search A Pub A Pub A Pub A Pub Exam Exam Exam Exam GRANT GRANT GRANT GRANT Source: EPO
Regional route Patents Procedural issues Regional agreements for obtaining IP protection for an entire region with a single application. Ex: EPO EPO Search EPO A Pub EPO Exam EPO GRANT UK Germany All designated states GRANT GRANT GRANT Source: EPO
Regional route Patents Procedural issues Other regional agreements: ARIPO: English speaking speaking Africa OAPI: French and Portuguese speaking Africa EAPO: Community of Independent States Patent Office of the Cooperation Council for the Arab States of the Gulf: Arab States of the Gulf
International route Patents Procedural issues WIPO administered system of international filing and registration for multiple countries around the world: PCT I.S.A. Search I.S.A. A Pub Exam Exam Exam Exam Exam UK Slovenia Brazil US Japan GRANT GRANT GRANT GRANT GRANT Source: EPO
International route Some advantages Patents Procedural issues Winning time (PCT: 18 additional months) Efficiency: 1 international application/renewal, 1 place, 1 language Decrease initial costs: 1 language, 1 set of fees Vl Valuable information (PCT: international ti search report) Combination of regional+international route 21.11.12
Patents v. trade secrets (1) Patents and otherip
Patents v. trade secrets (2) Patents and otherip
Patents and otherip Patents v. trade secrets (1) Patent Wider protection High costs Opportunity to make money Public access Duration: 20 years Territorial limits Inventions only Trade Secret Restricted protection only against industry espionage Apparently no costs Very difficult to make money Restricted access Duration: potentially unlimited No territorial limits Any kind of information
Trademarks Legal framework Main instruments Paris Convention (1883) Madrid Agreement (1891) and Protocol (1989) TRIPs (1994) But also: EU Trademark Directive (1988, codified in 2008) EU Trademark Regulation (1994, codified in 2009)
Trademarks Substantive issues Requirements for protection (1) 15 TRIPs, 4 CTR, 2 TMD Any sign(s) Capable of being represented graphically Not mandatory in TRIPs Capable of distinguishing goods/services
Trademarks Substantive issues Requirements for protection (2) Capable of being bi represented tdgraphically
Trademarks Substantive issues Requirements for protection (3) Capable of distinguishing i goods/services d/ to be determined dwith ihregard to specific goods or services (principle of speciality) Ajax for a soccer team Ajax for a cleaning detergent depends on social and cultural context acquired i ddistinctivenessi i case by case analysis
Trademarks Substantive issues Trademark s Taxonomy of Distinctiveness Acquired Distinctiveness Inherent Distinctiveness Generic Descriptive Descriptive without with acquired acquired Suggestive Arbitrary Fanciful distinctiveness distinctiveness The Internet Profitability Company Ineligible for protection eligibility to trademark status and degree of protection accorded
Trademarks Substantive issues Requirements for protection (4) Grounds for refusal (7 & 8 CTR, 3 &4 TMD) Absolute Art 7 CTR Public interest need to keep free Ex officio examination Must be judged in relation to the goods and services at issue, not in a void Relative Art. 8 CTR Third parties prior rights No ex officio examination Mirror the provisions on TM infringement
Trademarks Substantive issues Requirements for protection (5) Grounds for refusal (7 & 8 CTR, 3 &4 TMD) Absolute Non distinctive Descriptive Generic Public morality Functional Deceptive Relative Double identity Likelihood of confusion Well known trademarks (6bis PC) Unregistered trademarks and earlier signs used in the course of trade (dependent on nationallaw) law) Dilution, misappropriation or tarnishment of trademarks with a reputation tti
Trademarks Substantive issues Well known trademarks (1) Article 6bis Paris Convention: (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar il goods. These provisions ii shall hllalso apply when the essential part of the mark constitutes a reproduction of any such well known mark or an imitation liable to create confusion therewith.
Trademarks Substantive issues Well known trademarks (2) Effect: to extend protection to a trademark that is well known in a member country even though it is not registered or used in that country the protectionofthewell know of the mark results notfromregistration, registration, butfrom reputation Liable to create confusion Reproduction Imitation Translation country 1 country 2
Trademarks Substantive issues Well known trademarks (3) Justification: protection of good will/reputation; protection of the interests of the public conflicting signs must be used for identical or similar goods well known to be dt determined dby the member country. Ex: a trade mark may not have been used in a country in the sense that the goods have not been sold there; yet it may be well known because of publicity service marks not mentioned in Art. 6bis PC (but covered in TRIPS)
Trademarks Substantive issues Well known trademarks (4) Identifying well known trademarks Art. 16.2 TRIPS: In determining whether a trademark is well known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned that has been obtained as a result of the promotion of the trademark.
Trademarks Substantive issues Well known trademarks (5) Identifying well known trademarks WIPO s Joint Recommendation: Art. 2. Factors to be taken into account include: Degree of knowledge/recognition of the mark Duration, extent, and geographical area of the use of the mark Duration, extent and geographical area of any promotion of the mark, including: advertising; publicity; presentation at fairs/exhibitions of the goods/services Value associated with the mark Record of successful enforcement Use of the mark in neighbouring territories, in territories that speak the same language or are covered by the same media (TV, press), in territories i that have close trade relations Etc
Trademarks Substantive issues Well known trademarks (6) Identifying well known trademarks WIPO s Joint Recommendation: Art. 2. Relevant sectors of the public shall include but not be limited to: Actual/potential consumers of the goods/services Persons involved in channels of distribution of goods/services Business circles dealing with the goods/services d/ Art. 2.2: Where a mark is determined dto be well known in at least one relevant sector of the public in a Member State, the mark shall be considered by the Member State to be a well known mark niche knowledge
Trademarks Substantive issues Well known trademarks (7) TRIPS = Paris plus? Application to services Relevant factors to determine whether a mark is well known Art. 16.3: application where goods/services d/ are dissimilar: Provided use would indicate connection Provided there is likely damage to interests of trademark owner but trademark needs to be registered
Trademarks Substantive issues Trademark infringement (1) At Art. 16 TRIPS, 9 CTR, 5 TMD Use in the course of trade Identical signs + identical goods/services Identical or similar signs + identical or similar goods/services = likelihood of confusion TRIPs, CTR, TMD Identical or similar signs to a TM with a reputation = unfair advantage/detrimental to distinctiveness/reputation Well known marks CTR, TMD TRIPS
Trademarks Substantive issues Trademark infringement (2) Exceptions (Art. 17 TRIPS) Limited exceptions definedboundaries/narrow Legitimate interests = art 16.1 + other public policy interests (e.g., interest in preserving the distinctiveness of the trademark) Non commercial use not necessarily a defence against infringement take account not a too high threshold (different, e.g., from the 3 step test in copyright ihof Art. 13) WTO panel: Art 17 trips not only refers to the legitimate interests of 3rd parties but treats them on par with those of the right holder Balance between the interests involved
Trademarks Substantive issues Trademark infringement (3) Exceptions EU Comparative advertising Own name/address defence Descriptive uses Intended purpose Exhaustion Acquiescence Local uses Use requirement
Trademarks Procedural issues National trademark applications: Protectionin the home country market or in a few countries Basis for extending protection to other countries orregionsregions Internationaltrademark applications: Protection in manycountries Need to register first via national office or OHIM R i lt d k li ti Regional trademark applications: For protection in a number of countries in the same region at a lower cost (EU: OHIM)
Trademarks Procedural issues Nti National route Applicant can apply at each national (individual country office) in which protection is desired Easy to do if filing in one or two countries Becomes very expensive if filing in multiple countries due to: Filing fees Inefficient / Duplication of efforts Filing in multiple languages Multiple legal rules, agentsandadministrativeand administrative burdens Different pricing, different deadlines If filing in multiple countries, the applicant may want to consider filing for a community trademark or using the international application
Trademarks Procedural issues Regional route the CTM (1) one application in any of the official EU languages one set of fees in one currency (Euro) one set of procedures in one office on line application possible www.oami.europa.eu Fast and cheap All or nothing system
Trademarks Procedural issues Regional route the CTM (2) Publication (not before 1 month after communication of search report) refusal Application Examination Opposition (3 months) Conditions of filing Relative grounds Absolute grounds registration it ti Search report
Trademarks Procedural issues International ti route An international application can only be filed if the mark has already been applied for at a national trademark office (referred to as the office of origin) or as a CTM An international application must be presented to the international bureau (WIPO) through the office of origin Advantage when compared to national lfilings: It allows for one application to be used to protect trademarks in several countries Simpler More efficient More cost effective
Thank you for your attention! Comments/questions to ana.ramalho@maastrichtuniversity.nl