Intellectual probability

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INTELLECTUAL PROPERTY RIGHTS

Beesan Babieh

Queen Rania Center for Entrepreneurship

Made in Jordan Competition



Objectives

Students will be able to:

• Understand and use basic vocabulary for intellectual property• Recognize basic legal concepts in IP• Identify agreement types

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Exercise:

Arranging IP rights.

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What is Intellectual Property?

Intellectual Property (IP) refers to a set of rights designed to protect the creative innovations of the human intellect, such as inventions, signs, logos, novels and paintings.

IP grants the creator the exclusive right to use and benefit from his/her creations for a certain period of time.

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What does Intellectual Property include?

Intellectual Property rights are generally divided into two main parts:

- Industrial and commercial property; which includes trademarks, patents of inventions, industrial designs and models, geographical indications, plant varieties, and trade secrets.

- Literary and artistic property which includes copyright.

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Kinds of Intellectual Property

Intellectual Property divided into two kinds :

- Registered IP: - Technical: Patents, Industrial Designs and Plant Variety - Non-Technical : trademarks/ service marks

- Unregistered IP - Technical: Specific copyrights (technical drawings, software etc.), Secret know-how (“unprotected

inventions“)- Non-Technical: Copyrights in general , Trademarks by use

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Intellectual Property Rights

Trademark

any sign, word, phrase, symbol, or design, or a combination thereof that is used to

distinguish goods and services in the markets of a certain trader from those of

other traders s, e.g. Coca Cola, FedEx.

Patent of Invention

A certificate granted by authorities to inventors acknowledging their exclusive

rights over their inventions.

Industrial Design

Any arrangement of lines, colors, patterns or three dimensional shapes which

gives the product a special appearance and appeal.

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Made in Jordan CompetitionIntellectual Property Rights

Geographical Indication

A name or sign used on certain products which correspond to a specific

geographical location or origin. The use of geographical indication may act as a

certification if the product possesses certain qualities, or enjoys certain

reputation, due to its geographical origin.

Plant Variety

Any new and distinct, invented or discovered asexually reproduced plant.

Trade Secret

Any and all valuable confidential information, such as formulas, recipes, process, business method, or others, whether used in commerce or industry, whose owner assumes reasonable measurements to maintain its secrecy”

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Geographical Indication

A name or sign used on certain products which correspond to a specific

geographical location or origin. The use of geographical indication may act as a

certification if the product possesses certain qualities, or enjoys certain

reputation, due to its geographical origin.

Plant Variety

Any new and distinct, invented or discovered asexually reproduced plant.

Trade Secret

Any and all valuable confidential information, such as formulas, recipes, process, business method, or others, whether used in commerce or industry, whose owner assumes reasonable measurements to maintain its secrecy”

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Copyright

legal term describing rights given to creators for their literary and artistic work,

such as songs, poems, novels, paintings, architecture and work of applied art.

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Made in Jordan CompetitionTrademarks

A trademark is any distinctive sign used by a certain business or trader to uniquely

identify and distinguish its products and/or services to consumers.

A trademark mainly serves to:

• Uniquely identify the products and services to consumers.• Distinguish the products and services bearing the trademark from competing with

(identical or similar) products and services.• Identify the commercial source of the products or services bearing the trademark.• Help consumers associate the product or service bearing the mark with certain

desired characteristics enjoyed by the product or its commercial source.• Ensure fair competition between competitors.

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A trademark consist of:

Conventionally, a trademark may consist of a name, word, phrase, logos, symbol, color, design, image, three dimensional shapes or a combination of two or more of these elements. Where as, non-conventional marks such as sounds, smell and holograms are also being used as trademarks in several countries.

Protection of a trademark

Protection is only granted to marks that have proven distinctiveness in their overall shape and design, in order to be able to distinguish and identify the commercial source of the product or service. Therefore, if a trademark is identical or confusingly similar to another trademark that is being used for the same kind of products or services, then it will not be protected. However, using an identical or confusingly similar trademark for a totally different kind of products or services is possible, except in the case of internationally well-known trademarks.

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A trademark registration:

Registration is a direct evidence of exclusive ownership of the mark and it helps in protecting your products against potential infringers. In addition, it enables you to simply and easily protect your rights should someone challenge them since the onus is on the challenger to prove rights in any dispute

A trademark search:

A preliminary trademark search is conducted prior to filing a trademark registration. This search will allow the applicants to know about any conflicting trademarks, ensuring that they are claiming a unique trademark that is eligible for registration, and help them avoid infringement of other parties’ rights.

What do the symbols ™ and ® mean?

Merchants often associate their trademarks with the TM symbol, where as registered trademarks are often used in association with the ® symbol.

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A trademark registration process:

- Search (optional)

- Filing (examination, registrar’s notice, acceptance)

- Publication

- Registration

- Renewals

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Made in Jordan CompetitionPatents

An official document granting an inventor sole rights to an invention for a fixed period of time in exchange for the regulated, public disclosure of certain details of an invention.

A patent covers:

Patents are granted for new or novel inventions. An invention is any idea concluded by an inventor in any field of technology, related to a product or a process of manufacturing which practically results in solving a specific problem.

In many countries, if the inventor conducts some amendments or enhancements to the invention, he may register these amendments as an “additional patent” to the original one.

The “additional patent” shall be available for the remainder of the protection period of the original patent, provided that the original patent is still in force.

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An invention can be patented when:

• It is new or novel: it has never been disclosed to the public by any means in any place in the world.

• It is industrially applicable: therefore theories in general can not be patented.• It contains an inventive step: in the sense that it is not obvious to people with the

same field of• invention.• It is legal and does not contradict with public order of morals. E.g. a process to

produce pure and• refined cocaine is not patentable.

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Inventions cannot be patented:

• Inventions whose use encourages the breach of public order and morals.• Inventions which the prohibition of their commercial exploitation is necessary to

protect life,• human, animal or plan health, or to avoid extensive damage to the environment.• Discoveries, scientific theories, and mathematical methods.• Means of diagnostics, therapy, or surgery required for treating humans or animals.• Plants and animals, not including microorganisms.• Biological processes for the production of plants and animals.

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Obtaining a patent:

Without a patent, you will only be able to protect your invention as a trade secret; however, when publishing or selling your invention, anyone will be able to exploit it without you being able to stop that.

In case you did not obtain a patent for your invention and someone else independently comes with the same invention, and obtains a patent, this will prevent you from exploiting your own invention.

Who can apply for a patent?

• The inventor, or

• The person who buys or inherits the invention, or

• All inventors equally in case of joint-inventions, or

• The first to file for a patent in the case of independent inventions, or

• The first to invent exclusively under the American system, or

• The employer if the invention was made by an employee under an employment contract.

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Patent holder rights:

A patent owner has the right to prevent others from using, and/or making and/or selling the

patented inventions, or products embodying the patented process.

Disclosing invention details:

For the registration authorities:

According to national laws, inventors wishing to patent their inventions should disclose all invention specifications, and provide detailed description of the invention to enable a person of experience in the field of the invention to implement it.

For public before filing:

It is important to file a patent application before publicly disclosing the details of the invention. In general, any invention will lose its novelty if made public before an application is filed, whether been disclosed by publications in magazines, websites or discussions with others.

However, if it is inevitable to disclose your invention to a potential investor or a business partner, confidentiality agreement should be signed before filing a patent application..

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Patents

A patent registration process:

- Search (optional)

- Filing (examination, registrar’s notice, acceptance)

- Publication

- Registration

- Renewals

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Made in Jordan CompetitionIndustrial Design

An industrial design is the decorative and aesthetic aspect of a useful article which mainly gives the product an attractive appearance. It may consist of two dimensional features such as patterns, lines, colors (industrial designs) or of three dimensional features such as shapes, or surface of the article, in which case it is called an industrial model.

An industrial design can be registered if it is:

• Novel, i.e. the design must not have been disclosed to the public by any means, whether by written or oral means before applying for registration.

• Original, i.e. the design should substantially differ from other designs though not necessarily distinctive.

• Industrially applicable, i.e. the design should be applicable to an article which is functional and useful..

• Legal, i.e. does not contradict with public order or morals, which then can not be registered.

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Additional Conditions:

There are three main technical requirements in respect of a design:

• Visibility: Industrial designs must be visible, perceptible and judged by the sense of sight in its normal use. For example, a special design of the inside of a suit case can be considered as an industrial design because it is visible during the normal use of a suit case, while a car engine is not considered as one because it is hidden and not visible during the normal use.

• Special appearance: This requirement stems from the purpose and function of an industrial design to make a certain article more appealing to the eye. The design must add an ornamental and a special effect to the article, whether by the use of lines, colors, shapes or patterns.

• Non-functionality: Industrial designs’ only concern is the visible appearance of a product, and not the technical or functional features. While a product, as a whole, would include both functional and non-functional features, only the functional features will be registered as an industrial design.

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Industrial Design Protection (how & why):

How:

In most countries, an industrial design must be registered as such in order to be protected under industrial design law.

Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law.

Why:

• Industrial designs make a product attractive as well as appealing, and they add to its commercial value.

• They facilitate a product’s marketability.

• They help insure a return on investment to the owner in his/her design.

• They enhance export potential of national products.

• They encourage creativity in the industrial and manufacturing sector and lead to more aesthetically attractive and diversified products.

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Registration of ID:

Registering your design will grant you exclusive rights to your design. Registration enables you to prevent others from making, importing, renting, selling or offering or exposing any product for sale in respect of the registered design..

Moreover, keep in mind that unless you register your design, you can make no legal claim of ownership and have no legal protection from imitation.

Owner of ID:

According to the country’s national law, the rights of an industrial design registration shall be granted to:

• The creator of the design or to whom the rights were transferred (assignee, successor).

• All persons involved in the creation of the design in case the design was the result of a joint effort.

• The creator who files an application first, if several inventors created the same design independently from each other (first to apply rule).

• The employer, if the employee created the design in the course of and for the purpose of his work.

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Industrial Design

• It serves to make a certain product more appealing to the eye.

• It must be new or original but not necessarily distinctive.

• It adds commercial value to the product

Trademark

• It mainly serves to indicate the commercial source of the product.

• It must be distinctive in order to be registered and protected.

• The value of the product is solely linked to the product and its commercial source.

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Industrial Design VS. Trademark



Industrial Design

• An Ornamental feature added to a product.

• It adds an aesthetical touch to a product.

• It consists of non-functional feature and does affect the performance of the product

Patent

• A new invention that could be a process of a final product

• It provides a technical solution to a certain problem or challenge.

• It has to be technical and functional (performs a certain function)

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Industrial Design VS. Patent



• What may be protected

• Protection provided

• How to obtain protection

• Duration

• Enforcement

• Words, phrases or logos used for Trademark (tangible goods) or Service mark (services), or visual appearance used as Trade dress

• May prevent others from using mark in commerce

• Common law protection through use; Registration process

• Unlimited until abandoned;

• Infringement law suit

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Trademarks Summery






• Duration

• Enforcement

• Process, machine, manufacture or composition of material.

• May prevent others from making, using, selling, offering to sell and importing

• Registration process

• 20 years from filing (at least/ National Laws)

• Infringement suit in country specified court

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Patents Summery






• Duration

• Enforcement

• Designs

• May prevent others from making, using, selling, offering to sell and importing

• Registration process

• 15 years from filing (10 at least/ National Laws)


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Industrial Design Summery


Made in Jordan CompetitionCopyright

Copyright, more broadly known as literary and artistic property, is a legal term describing a set of moral and economic rights exclusively granted to authors over their creative work.

Copyright include:

Copyright is the broadest right of all Intellectual Property Rights (IPRs) that includes work of literary, artistic or scientific nature.

Copyright covers:

• Written works (novels, poems…)

• Oral works (lectures, speeches…)

• Theatrical works,

• choreography

• Musical Works,

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• Audio and visual works,• Cinematic works• Photography and paintings,• Sculptures and applied arts• Architecture• Databases and computer programs

Protected work by Copyright:

Protection is granted to original work; Originality exists in creative and individual expression, or representation of the work, regardless to the minimum level of such creativity and individuality, and no work could be protected unless this minimum requirement exists.

Copyright does not protect ideas; but it protects the way an idea is expressed and articulated, including the creative way in which the idea was expressed whether in words, drawings, colors and other forms of expressions.

The underlying principle is that ideas can not be owned by or limited to one single person, and the protection is in the creator’s individuality and personality manifested in the work.

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Owners of copyrights are granted two sets of rights:

• Moral rights which refer to the authors’ right to have the work attributed to their names, the right to decide the time and form of disclosing it to the public, the right of modifying the name, and the right to maintain the integrity of the work.

• Financial rights which refer to the author’s rights to financially benefit from the work through, its reproduction in various forms, its public performance, its recordings, its broadcasting, by radio, cable or satellite; and, its translation into other languages, or its adaptation, such as a novel into a screenplay, in addition to having the right to prevent others from using the work.

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Financial Rights

• ensure the author’s entitlement to economic benefit of his work.

• can be valuated and priced for commercial exploitation purposes.

• subject to waiver and transfer to others by sale or license.

• in general, financial rights elapse by the end of the protection period,

• are in several times subject to mortgage or suspension.

Moral Rights

• protect the personality of the author in relation to his/her work.

• can not, in general, be financially valuated.

• can not be waived or transferred.

• are protected endlessly.

• cannot be mortgaged or seized

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Copyright



Copyright Protection:

Unlike other forms of Intellectual Property, copyright protection is not subject to registration or any formalities. Copyright protection is automatic from the moment it is created, and it is not granted by the recognition of an administrative authority.

Obtaining an official registration certificate for your copyright will provide you with an evidence of your ownership of the work, thus proving your ownership in case your work is being infringed, or you are being accused of infringing someone else’s work.

Under the Berne Convention for the Protection of Literary and Artistic Works, copyright work enjoys automatic protection in all countries members in the Convention.

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Copyright Protection:

The Internet is another means of publishing or disseminating information; therefore, copyright applies to websites, e-mail messages, web-based music, etc.

Simply because the Internet provides easy access to information, it does not mean that it is in the public domain or is available without limitations. Copyrighted work on the Internet should be treated the same way as copyrighted work found in other forms of media presentations.

Generally copyrights are protected during the life time of the author, in addition to 50 years after his/her death, or the death of the last author in case the work is of joint authorship.

Other terms of protection include:

• 50 years for television and cinematic work.

• 50 years for work created and/owned by a legal person.

• 25 years for photographic work and work of applied art.

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• Duration

• Enforcement

• literary, artistic or scientific works.

• May prevent others from copying or public performance

• Automatic; registration is an evidence

• Generally; author’s life time and 50 years after death.


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Copyright Summery


Made in Jordan CompetitionOther IP Rights:

Geographical Indications:

A Geographical Indication (GI) is a name or sign used on certain products which corresponds to a specific geographical location or origin (e.g. a town, region, or country). The use of a GI may act as a certification that the product possesses certain qualities, or enjoys a certain reputation, due to its geographical origin such as “Tuscany” for olive oil, and “Roquefort” for Cheese.

Trade Secrets:

There is no universally uniform definition for trade secrets, but it can be broadly defined as “any and all valuable confidential information whether used in commerce or industry, whose owner assumes reasonable measurements to maintain its secrecy.”

Plant Variety:

Any new and distinct, invented or discovered asexually reproduced plant, including cultivated ports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant, or a plant found in an uncultivated state.

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Made in Jordan CompetitionDomain Names

Domain names are the human-friendly (or easy to remember names) forms of Internet addresses, and are commonly used to find web sites. A domain name also forms the basis of other methods or applications on the Internet, such as file transfer (ftp) or email addresses.

Domain name system (DNS)

The domain name system is essentially a global addressing system. It is the way that domain names are located and translated into Internet Protocol (IP) addresses, and vice versa.

A domain name such as wipo.int is a unique alias for an IP address (a number), which is an actual physical point on the Internet.

Domain names allow users and search engines to locate businesses and other web sites on the Internet. These names are online source indicators and they are increasingly being used to identify the source of a good or service available online, a function conventionally served by trademarks.

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• Domain Names and Domains:

• Name.com = domain name

• .com = generic Top Level Domain (gTLD)

(A gTLD is a generic top level domain. It is the top-level domain of an Internet address )

• Open generic TLDs - gTLDs:

• .com, .net, or .org

• Restricted generic TLDs - gTLDs:

• .gov, .mil, .edu, .int

(A ccTLD is a country code top-level domain, these ccTLDs are administered independently by nationally designated registration authorities)

• Country code TLDs - ccTLDs

• country code TLD (such as .uk or .jo)

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Domain Names

Domain name protection

Registering a domain name is a simple, largely automated process that involves visiting a registrar online, checking to ensure that the desired domain name is available, and providing basic information such as your name and contact data and, normally, paying a basic registration fee.

Domain names are registered on a first-come, first-served basis. Most registration agreements require registrants to certify that, to the best of their knowledge, their chosen domain name registration does not infringe third party rights. In most cases, the registrar performs no further checks.

The domain name should be registered with the national authorities as well; in Jordan; with the National Information Technology Centre (NITC).

NITC; is the governmental party that is responsible about .jo registrations (.com.jo/ .jo/ .name.jo/ .org.jo/ .edu.jo …)

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Domain Names

Domain name Importance:

Domain names are important for several reasons:

• Domain names provide the basic connection between the physical and the virtual world.

• Domain names are more user-friendly than a series of numbers.

• Electronic commerce relies on the functioning of the Internet in a stable and effective manner. The successful operation of the Domain Name System facilitates this stability since domain names are tied to IP addresses that are used to route messages correctly

• Domain names often include trademarks within them (e.g., disney.com, where Disney is a registered trademark). These names have begun to serve as online source indicators, allowing consumers to distinguish one competitor’s online offering of goods or services from another.

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ICANN

The Internet Corporation for Assigned Names and Numbers (ICANN) is a key player in the domain name arena. This non-profit corporation, based in California, was formed to take over responsibility for the IP address space allocation, protocol parameter assignment.

The non-profit corporation is administered by a board of directors that aims to be functionally as well as internationally representative. It is currently funded by foundation grants and contributions.

ICANN is the coordinator for the continued technical development of the Domain Name System.

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Duration of protection & enforcement

Protection: as far as it is renewed

Enforcement:

Cyber Squatting is the bad faith registration of another party's trademark as an Internet domain name.

ICANN, Uniform Domain-Name Dispute Resolution Policy (UDRP)

The UDRP is an administrative proceeding against domain name registrant, which may be used where the domain name is:

– Identical or confusingly similar to a mark in which the complainant has rights; and

– domain name registrant has no rights or legitimate interests in respect of domain name; and

– domain name has been registered and is being used

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Made in Jordan CompetitionWIPO International Treaties

General Information:

The roots of the World Intellectual Property Organization go back to 1883, when Johannes Brahms was composing his third Symphony, Robert Louis Stevenson was writing Treasure Island, and John and Emily Roebling were completing construction of New York's Brooklyn Bridge.

The need for international protection of intellectual property became evident when foreign exhibitors refused to attend the International Exhibition of Inventions in Vienna in 1873 because they were afraid their ideas would be stolen and exploited commercially in other countries

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WIPO International Treaties

1883 marked the birth of the Paris Convention for the Protection of Industrial Property, the first major international treaty designed to help the people of one country obtain protection in other countries for their intellectual creations in the form of industrial property rights, known as:

– inventions (patents)

– trademarks

– industrial designs

In 1886, copyright entered the international arena with the Berne Convention for the Protection of Literary and Artistic Works. The aim of this Convention was to help nationals of its member States obtain international protection of their right to control, and receive payment for, the use of their creative works such as:

– novels, short stories, poems, plays;

– songs, operas, musicals, sonatas; and

– drawings, paintings, sculptures, architectural works.

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WIPO expanded its role and further demonstrated the importance of intellectual property rights in the management of globalized trade in 1996 by entering into a cooperation agreement with the World Trade Organization (WTO).

Treaties under WIPO administration: • Berne Convention • Brussels Convention • Film Register Treaty • Madrid Agreement (Indications of Source) • Nairobi Treaty • Paris Convention • Patent Law Treaty • Phonograms Convention • Rome Convention • Singapore Treaty on the Law of Trademarks • Trademark Law Treaty • Washington Treaty • WCT • WPPT

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Treaties under WIPO administration:

Global Protection Treaties:

• Budapest Treaty

• Hague Agreement

• Lisbon Agreement

• Madrid Agreement (Marks)

• Madrid Protocol

• PCT

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WIPO International Treaties

Treaties under WIPO administration:

Classifications:

• Locarno Agreement

• Nice Agreement

• Strasbourg Agreement

• Vienna Agreement

Details on all treaties are available on www.wipo.int

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Made in Jordan CompetitionCommercialization of Inventions

What is the over all objective of the commercialization?

• Financial Situation

• Qualifications & Availability of Resources

• Nature of the Technology

• Competitiveness in the Market

• Various usages of the technology

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Made in Jordan CompetitionCommercialization of Inventions

Kinds of Commercialization of Inventions:

• Licensing

• Assign

• Joint Venture

• Start-up Business

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Options Comparison

Thank You

Any further details needed, please contact me on:

Email: [email protected]

Phone: + 962 6 5100900 ext. 1105

Fax: + 962 6 5100901

Abu-Ghazaleh Intellectual Property

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