What to protect:Overview of Intellectual Property including how to identify if you have IP that needs to

be protectedby

CHINYERE OKOROCHAPARTNER, JACKSON,ETTI AND EDU

Presented at the Anadach Workshop on “The Dynamic Role of Intellectual Property in Promoting

Innovation and Economic Development in Emerging Markets”.

July 14th -16th 2015

WHAT IS INTELLECTUAL PROPERTY (IP)?

• Intellectual property (IP) is a legal field that refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce

• Any product of the human intellect that is unique, novel, non-obvious, and has some value in the marketplace deserves protection under the law. This includes ideas, inventions, business methods and manufacturing processes

• Although the various types of IP are not physical, they are intangible assets that are protectable and can be monetized

TYPES OF INTELLECTUAL PROPERTY (IP)

– Trademarks– Patents– Industrial designs– Domain Names– Copyright

– Geographical Indications

– Traditional Knowledge– Trade Secrets– Know How

All of the above are capable of protection and may be All of the above are capable of protection and may be commercially exploitedcommercially exploitedUSP- Unique Selling Points of different Organisations USP- Unique Selling Points of different Organisations (what makes each one unique)(what makes each one unique)

TRADE MARKS

• A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company.

• The origin of trademarks dates back to ancient times when craftsmen reproduced their signatures, or “marks”, on their artistic works or products of a functional or practical nature.

• Trademarks may be one or a combination of words, letters and numerals. They may consist of drawings, symbols or three dimensional signs, such as the shape and packaging of goods

Examples of protected trade/service marks

Non traditional forms of IP

• Smell marks (the smell of freshly cut grass for tennis balls, smell of a perfume)

• Colour marks (the colour purple for Chocolates- Cadbury)

• Moving images marks (the movement of a car door opening, Lamborghini)

• Sound marks (the roar of a lion, MGM; sound heard when a phone is turned on e.g. Nokia Phone)

PATENTS

• A Patent can be defined as any new and useful process or invention.

• It may be an improvement of an old process/product.• It may also be a new use for an existing product. • Protects Innovative And New Ideas not In the Prior

Art• Strongest Of All IP Rights (And Most Difficult To

Obtain) except in Nigeria where there is no examination as to the validity or otherwise of the patent

• Valid for 20 years and renewable every year from the filing date.

• Characteristics of a patent– It must be new or an improvement of an old invention.– It must involve an inventive step.– It must be capable of industrial application.

EXAMPLES OF PATENTS

COPYRIGHT• A copyright can be defined as any original

work of authorship, fixed in any tangible medium of expression and includes literary, artistic or musical works

• Examples include, computer software, pictures, sculptures, Stage Performances in any form such as Chinua Achebe’s Things Fall Apart’; Don Jazzy’s Live Performance, ‘Tyler Perry’ movie; ‘website pages, etc

• Literary, Artistic and musical works - 70 years from the death of the author from the end of the year in which the author dies.

COPYRIGHT CONTD.• Cinematography – 50 years after the end of the year in which

the work was first published• Sound recording - 50 years after the end of the year in which

the recording was first made• Broadcasting - 50 years after the end of the year in which the

recording was first made Note: Works that fall under this category of Intellectual

Property need not be registered, Copyright automatically subsists in them.

However, in Nigeria, the Nigerian Copyright Commission has a notification system in place where owners may notify the commission of the existence of their works. This is not compulsory but advisable.

COPYRIGHT

• EXCEPTIONS

• Fair Dealing for purposes of research, Educational purposes, private use, criticism, review, reporting of current events.

• All of the above must be accompanied by an acknowledgment of the title of the work and its authorship.

EXAMPLES OF COPYRIGHTABLE SUBJECT MATTER

Industrial Design

• An industrial design constitutes the ornamental or aesthetic aspect of an article.

• A design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or colour.

• The design features must be applied to an article by any industrial process or means of which the features in the finished article appeal to eye.

What can be protected?

• Packages and containers, furnishing and household goods, lighting equipment, jewellery, and from electronic devices to textiles. Industrial designs may also be relevant to graphic symbols, graphical user interfaces (GUI), and logos.

EXAMPLES OF INDUSTRIAL DESIGN

TRADE SECRETS• Confidential business information which provides an

enterprise a competitive edge• Encompasses manufacturing or industrial and

commercial secrets• The information must be secret• It must have commercial value because it is a secret• It must have been subject to reasonable steps by the

rightful holder of the information to keep it secret (e.g. confidentiality agreements)

• Unauthorised use by persons other than the holder is regarded as unfair practice and a violation of the trade secret. Examples: sales and distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, manufacturing processes.

• No formal procedure for protection of trade secrets.

EXAMPLES OF BRANDS WITH TRADE SECRETS

GEOGRAPHICAL INDICATION

• Geographical indications (GI) are signs used on goods that have a specific geographical origin and possess qualities, a reputation or characteristics that are essentially attributable to that place of origin.

• In order to function as a GI, a sign must identify a product as originating in a given place.

• In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.

What can be protected • Geographical indications are typically used for agricultural products,

foodstuffs, wine and spirit drinks, handicrafts, and industrial products.

• Scotch Whiskey of Scotland

Roquefort cheese

• There are three main ways to protect a geographical indication:

• sui generis systems (i.e. special regimes of protection);

• collective or certification marks (A certification mark is a specific type of trade mark. They provide a guarantee that the goods or services bearing the mark meet a certain defined standard or possess a particular characteristic. A collective mark is a specific type of trade mark which indicates that the goods or services bearing the mark originate from members of a trade association, rather than just one trader);

• methods focusing on business practices, including administrative product approval schemes.

Rights conferred by Geographical Indications

• A geographical indication enables the owner to prevent its use by a third party whose product does not conform to the applicable standards.

For example, in the jurisdictions in which the Darjeeling geographical

indication is protected, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the standards set out in the code of practice for the geographical indication.

• Note that, a protected geographical indication does not enable the holder to prevent someone from making a product using the same techniques as those set out in the standards for that indication. Protection for a geographical indication is usually obtained by acquiring a right over the sign that constitutes the indication

Applicable laws in Nigeria

• The Nigerian Trade marks Act 1965 and Regulation of 1967• The Patents and Designs Act• The Nigerian Copyright Act• Nigerian Internet Registration Association (NIRA) Regulations• The Merchandize Marks Act• Trade Malpractices (Miscellaneous Offences) Act

Some of these Laws criminalize the following acts: Forgery of trade marks; False trade description; Manufacture, sale or possession of machineries used in forging trade marks Deceptive application and use of trade marks Piracy ( Unlawful production of works for economic benefits) Importation of infringing works Distribution for the purposes of trade any infringing copy of a work

Protection under common law

• Passing Off

• Product liability

• Contract

• Trade secret

TREATIES

• Paris convention Treaty

• Berne Convention

• TRIPS

• PCT (Patent Cooperation Treaty

Why is IP important?

• Economic Benefits• Many products or services embody different types of

intellectual property • Intellectual capital, which translates to intellectual

property assets, makes up approximately 80% of the worth of the Fortune 500 Companies

• IP Assets are vital to all businesses and are indeed a source of securing the competitive advantage in the market place

• The driving force of successful businesses in the 21st Century is use of innovation and creativity

DANGER IN IGNORING IPRs

TIPS ON IPR PROTECTION

• Registration, Maintenance and Exploitation of Intellectual Property Rights (IPRs)

• IP Audit – What do you have? What is it’s value . From this you can develop a strategy through which you may exploit your IP

• Be Vigilant

WHAT NEXT?

• Identify your IPRs, Protect your IPRs, Respect other people’s IPRs, and … Exploit your IPRs

EXCERCISETYPES OF IP – ALL IN ONE

FORMULATIONProtected by both patent and know-how.

BOTTLEProtected by registered design.

LABEL DESIGN AND INSTRUCTIONSProtected by copyright.

GAVISCON ADVANCE, THE LOGO AND THE COLOURSare all registered trade marks.

Trademark

BOTTLE CAPCould be protected by a patent, a utility model or by design rights.

QUESTIONS??