intellectual property rights fifth unit power point presentation.

1. Intellectual Property
Rights
Unit 5

2. International Patent Law
• The rights granted by a U.S. patent extend only throughout the
United States and have no effect in a foreign country.
• Therefore, generally, an inventor who desires patent protection in other
countries must apply for a patent in each of the other countries or in
regional patent offices.
• Nearly every country has its own patent law, and a person who wishes to
obtain a patent in a particular country must make an application for
patent in that country, in accordance with its requirements.
• A directory of and links to worldwide patent offices can be found at http://
www.wipo.int/directory/en/urls.jsp.
• The laws of many other countries differ in various respects from the
patent law of the United States.

3. • In the United States, however, effective under the AIA on March 16, 2013,
the one-year grace period applies as to the inventor’s own publication or
disclosure.
• Most foreign countries require that the invention be manufactured in that
country within a certain period of time, usually three years, after grant of the
patent.
• Additionally, nearly all foreign countries grant patents to the “first to file”
the application.
• The United States has followed a “first to invent” system for 200 years,
although under the AIA, effective March 16, 2013, the United States will
adopt a “first to file” system.
• There are several international patent treaties to which the United States
adheres, primarily the Paris Convention, the PCT, and the Agreement on
TRIPS.

4. 1
. Paris Convention
• The Paris Convention for the Protection of Intellectual Property of 1883 is a
treaty adhered to by more than 170 nations and is administered by WIPO.
• The Paris Convention requires that each member country guarantee to the
citizens of the other member adherents the same rights in patent and trademark
matters that it provides to its own citizens.
• The treaty also provides for the right of priority in the case of
patents, trademarks, and industrial designs (design patents).
• The right of priority means that, on the basis of a patent application filed in
one of the member countries, the applicant may, within one year, apply for
patent protection in any of the other member countries.
• These later applications will then be regarded as if they had been filed on the
same day as the first application in the first country.

5. 2. Patent Cooperation Treaty(PCT)
• While the Paris Convention allows applicants to defer decisions about filing in member
countries for 12 months, it still requires that applicants file separate applications in
each country in which they desire protection.
• For an inventor who wishes to market his or her invention on a global basis, this
process is time-consuming and expensive in the extreme.
• The PCT, which was negotiated in 1970 and came into force in 1978, responds to these
concerns by providing a centralized way of filing, searching, and examining patent
applications in several countries simultaneously.
• Moreover, a standardized application format is used, saving applicants substantial time
and money that is ordinarily incurred in ensuring that a patent application complies
with the procedural and formatting requirements imposed by each country.
• The PCT is adhered to by more than 140 countries, including the United States, and is
administered by WIPO.
• In sum, the PCT allows an inventor to file one “international” application and
seek protection for the invention simultaneously in several countries.

6. Phases in the PCT Application Process:
There are two main “phases” for PCT applications:
• The “international phase,” which begins with filing the application and
includes an international search report and written opinion and that may
consist of two parts or “chapters,” mandatory Chapter I and an optional
Chapter II (collectively referred to as the “international phase”)
• The “national phase,” which involves prosecution of the application in each
country in which the applicant desires patent protection.

7. The PCT Application Process:
 The “international” application may be filed with the patent office of the member
country of which the applicant is a national or resident.
 When filed with a national patent office, such as the USPTO, the office is said to
act as a PCT receiving office.
 Typically, applicants file their PCT applications with their own national patent
offices.
 Thus, the USPTO acts as a receiving office for most international applications filed by
nationals or residents of the United States, and the application may be filed
electronically using EFS-Web.

8.  Effective January 1, 2004, the filing of an international application
automatically constitutes the designation of all contracting countries to the
PCT on that filing date, meaning that the application is viewed as requesting
patent protection in the more than 140 PCT countries.
 Ultimately, the applicant will designate or elect those countries in which the
applicant desires patent protection.
 Only one filing fee is paid for filing the PCT application, which is
called an
“international patent application.”
 The amount of the filing fee generally depends upon the length of the
application.
 The application is similar in form to utility patent applications in that it
contains
claims and drawings of the invention.

9. • Chapter I: The filing of the international patent application triggers the first phase
of the PCT process, called Chapter I.
• Chapter II: After completion of Chapter I, the applicant may now elect to prosecute the
application in individual countries in which patent protection is desired (the “national
phase”) or may delay prosecution in the national phase until 30 months (in most countries)
from the effective filing date of the PCT application.
• Alternatively, the applicant may take the optional step of entering Chapter II and
requesting or demanding an international preliminary examination.
• The National Phase. If, after the duration of Chapter I the applicant decides to go
forward with the application in the countries designated in the application, the applicant
commences the “national phase” of the PCT application process.

10. 3. The European Patent Organization(EPO)
• The EPO was founded in 1973 to provide a uniform patent system in Europe.
• A European patent can be obtained by filing a single application with the EPO
headquartered in Munich.
• The application is deemed to designate all contracting states in the EPO, but the
applicant must later confirm the designation for the specific countries in which
protection is desired.
• Once granted, the patent is valid in any of the EPO countries designated and has
the same force as a patent granted in any one of the contracting nations.

11. 4. Patent Prosecution Highway (PPH)
• In 2006, the U.S launched its PPH, which fast-tracks examination of
corresponding patent applications filed in the USPTO and in various IP offices
around the world.
• Under the PPH program, an applicant who receives a ruling from an “Office of
First Filing” that at least one claim is patentable may request that the “Office of
Second Filing” fast-track the examination of corresponding claims in
corresponding applications filed in the Office of Second Filing.
• The Office of Second Filing can use the Office of First Filing’s work products, such
as search and examination reports, to streamline and expedite patent processing.
• The USPTO will advance the application and examine it before others that may
have been filed earlier.
• The USPTO also benefits from work previously done by the other office, in turn
reducing workload and improving patent quality.

12. 5. Agreement on TRIPS
• The World Trade Organization’s Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS) was accepted by the
United States in 1995.
• In addition to providing enhanced protection for trademarks and
copyrights (by specifying that computer programs must be protected as
literary works), TRIPS also strengthens international patent law.

13. 6. Patent Law Treaty (PLT)
• Negotiations in WIPO in the latter half of the 1990s produced the Patent Law Treaty
(PLT), which was adopted in June of 2000 and entered into force in April 2005.
• The goal of the PLT is to harmonize the formal requirements established by the
individual patent offices around the world and streamline the procedures for obtaining
and maintaining patents.
• The PLT is primarily concerned with patent formalities.
• The PLT eliminates overly burdensome requirements and establishes limits on the
requirements that can be imposed by the various national patent offices throughout the
world.
• It simplifies and standardizes application procedures that at present vary from nation to
nation.
• These simplified procedures make it easier and less expensive for individual inventors to
apply for patents.
• Finally, the PLT does not require that a representative be employed during all stages
of prosecution.

14. Foreign Filing Licenses
• To ensure that national security is not impaired, a person may not file a patent
application in another country for an invention made in the United States
unless the Commissioner of Patents grants a license allowing the foreign
filing or until six months after the filing of the U.S. application for the
invention.
• The six-month waiting period allows the USPTO to review applications that
might affect matters of national security.
• Filing a patent application with the USPTO is deemed to be a request to the
Commissioner for a license to file an application in a foreign country.
• The official USPTO filing receipt will indicate to the applicant whether the
license is granted or denied.
• If the inventor does not wish to file an application in the United States but
prefers to file immediately in a foreign country.

15. Applications for U.S. Patents by Foreign
Applicants:
• The patent laws of the United States make no discrimination with respect to
citizenship of the inventor.
• Any inventor, regardless of his or her citizenship, may apply for a patent in the United
States on the same basis as a U.S. citizen.
• In fact, approximately 50 percent of the patent applications received by the USPTO
come from abroad.
• If the applicant is a citizen of a Paris Convention nation and has first filed the
application in a foreign country, the applicant may claim the filing date of the earlier
filed application.
• The U.S. application will then be treated as if it were filed on the earlier filing date.
• An oath or declaration must be made with respect to the U.S. application.
• This requirement imposed on all applicants for U.S. patents is somewhat different from
that of many foreign nations in that foreign nations often require neither the signature

16. International Trademark law:
 International trademark law involves a set of principles,
treaties, and conventions that govern the protection
and registration of trademarks across multiple
countries. The goal of these international agreements is
to provide a framework for trademark owners to secure
and enforce their rights in foreign markets.

17. Here are some key aspects of international trademark law:
 Paris Convention for the Protection of Industrial Property: The Paris Convention
is one of the oldest and most important international agreements related to
intellectual property, including trademarks. It establishes minimum standards for the
protection of trademarks and other intellectual property rights. The convention
includes the principle of "priority rights," which allows trademark owners to claim the
same filing date in multiple member countries as their original application, making it
easier to protect their marks globally.
 Madrid System for the International Registration of Trademarks: Administered
by the World Intellectual Property Organization (WIPO), the Madrid System simplifies
the process of seeking trademark protection in multiple countries. Trademark owners
can file a single international application to seek protection in one or more member
countries. This system streamlines the registration process and provides cost savings
and efficiency.

18.  The Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS): Part of the World Trade Organization (WTO) agreements, TRIPS sets
minimum standards for the protection of intellectual property rights, including
trademarks. It requires member countries to provide effective trademark
protection and enforcement mechanisms.
 The European Union Trade Mark (EUTM): The EU has established a unified
trademark system, the EUTM, which provides protection across all EU member
states. It simplifies the process of obtaining trademark protection within the
European Union and is governed by the European Union Intellectual Property
Office (EUIPO).

19.  African Regional Intellectual Property Organization (ARIPO): ARIPO is an
intergovernmental organization that allows its member states to register
trademarks in multiple African countries through a single application process.
 Regional Agreements and Bilateral Treaties: Some regions have their own
agreements and organizations governing trademark protection, such as the
Andean Community, which includes countries like Colombia and Peru.
Additionally, many countries have bilateral or regional agreements that
include provisions for trademark protection.
 National Trademark Laws: In addition to international agreements, national
trademark laws remain essential, as they provide the specific legal framework
for trademark protection in individual countries.

20. International copyright law:
International copyright law encompasses a set of principles and
agreements that govern the protection of copyrighted works across
multiple countries. The primary objective is to provide creators and
authors with the means to protect their creative works in foreign
markets.
Here are some key aspects of international copyright law:
 Berne Convention for the Protection of Literary and Artistic Works: The
Berne Convention is one of the foundational treaties in international
copyright law. It sets out basic principles for copyright protection, including
the principle of "national treatment," which ensures that foreign works are
granted the same copyright protection as domestic works. It also mandates
minimum copyright terms.

21. Here are some key aspects of international copyright law:
 Universal Copyright Convention (UCC): The UCC, also administered by the
World Intellectual Property Organization (WIPO), provides an alternative
framework for copyright protection. It is often chosen by countries that are not
party to the Berne Convention.
 Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS): TRIPS, a part of the World Trade Organization (WTO) agreements, sets
out minimum standards for copyright protection. It requires member countries
to provide protection for copyrights and related rights, including enforcement
mechanisms.

22.  WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms
Treaty (WPPT): These two WIPO-administered treaties address digital copyright
issues and the rights of performers and producers of phonograms. They set
minimum standards for the protection of copyright in the digital environment.
 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are
Blind, Visually Impaired, or Otherwise Print Disabled: Administered by WIPO,
this treaty focuses on providing access to published works in accessible formats for
individuals with print disabilities. It allows for the cross-border exchange of
accessible-format books.
 European Union Copyright Law: The European Union has harmonized copyright
law across its member states, establishing a common legal framework that includes
the Directive on Copyright in the Digital Single Market.

23.  National Copyright Laws: In addition to international agreements, individual
countries have their own copyright laws and regulations, which determine the
specific details of copyright protection, duration, and exceptions.
 Fair Use and Fair Dealing: The concept of fair use (in the United States) and fair
dealing (in many other countries) is an essential part of copyright law, allowing
limited use of copyrighted materials without the need for permission or
payment. The specific scope of these exceptions varies from one country to
another.
 Enforcement and Anti-Piracy Measures: International copyright law also
covers enforcement mechanisms, anti-piracy efforts, and legal remedies for
copyright infringement.

24. New developments in trademark law:
An overview of some general trends and developments in trademark law:
 Online Brand Protection: With the growth of e-commerce and online
business, trademark holders have been increasingly concerned about
protecting their brands in the digital space. This includes dealing with issues
like domain name disputes, counterfeit products, and online trademark
infringement.
 Geographic Indicators and Appellations of Origin: The protection of
geographical indications (GIs) and appellations of origin has become a
significant area of trademark law. Many countries have been strengthening
the protection of GIs for products like wine, cheese, and agricultural products.

25.  Non-Traditional Trademarks: Courts and trademark offices have been
addressing the registration and protection of non-traditional trademarks,
such as sound marks, scent marks, and color marks. These cases have led
to evolving jurisprudence in many jurisdictions.
 Navigating International Trademark Systems: With globalization,
international trademark registration systems like the Madrid Protocol have
become more important. Trademark owners are looking for ways to
protect their brands in multiple countries efficiently.
 Trademark Opposition and Cancellation Proceedings: Trademark
offices continue to refine their processes for opposition and cancellation
proceedings to resolve disputes between trademark owners efficiently.

26.  AI and Trademarks: The use of artificial intelligence (AI) in trademark searches
and brand monitoring has raised interesting legal questions regarding
ownership, infringement, and liability.
 Counterfeiting and Anti-Counterfeiting Measures: The battle against
counterfeit products remains a top concern for trademark owners and
governments. Both are exploring new strategies and technologies to combat
counterfeiting.
 Fair Use and Parody: Courts have been dealing with cases that involve the
delicate balance between protecting trademarks and allowing for fair use and
parody, especially in the context of the internet and social media.

27. New developments in patents law:
Here are some trends and issues in patent law:
 Patent Eligibility: One of the most significant ongoing issues in patent
law involved determining the eligibility of certain inventions for patent
protection, particularly in the fields of software and biotechnology. The
criteria for patent-eligible subject matter continued to evolve through
court decisions and legislative efforts.
 Artificial Intelligence and Patents: The use of artificial intelligence (AI)
in inventing and patenting processes raised complex questions about
inventorship and the criteria for patenting AI-generated inventions.

28.  Patent Examination and Quality: Patent offices worldwide were working to
improve the quality and efficiency of the patent examination process, including
the use of AI and machine learning to enhance patent searches and evaluations.
 International Harmonization: Efforts to harmonize patent laws and
procedures across different countries and regions were ongoing. The global
patent community continued to work toward simplifying and streamlining
international patent protection.
 Patent Litigation: Patent litigation, particularly in the technology sector,
remained a prominent issue. Ongoing discussions and reforms aimed at
curbing patent assertion entities (sometimes referred to as "patent trolls") and
patent infringement lawsuits.

29.  Biosimilars and Pharmaceutical Patents: The pharmaceutical industry
continued to deal with issues related to the approval and litigation of biosimilar
drugs and the associated patent disputes.
 Trade Secrets and Patents: The interaction between trade secrets and patents
became a subject of discussion, especially in cases where companies choose to
keep certain innovations as trade secrets rather than pursuing patent
protection.
 Environmental and Green Technology Patents: An increasing focus on
environmental and green technologies led to an emphasis on patenting
inventions related to clean energy, sustainability, and eco-friendly solutions.

30.  Standard-Essential Patents: Legal issues concerning the use of standard-
essential patents in the context of technology standards and the obligations
of patent holders in licensing their essential patents were subjects of ongoing
litigation and regulatory scrutiny.
 Patent Office Backlogs and Pendency: Many patent offices worldwide were
grappling with backlogs and long pendency times for patent applications.
Efforts to streamline and expedite the patent examination process were being
explored.

31. New developments in copyright law:
Here are some of the key trends and issues in copyright law :
 Digital Copyright and Streaming Services: The continued growth of digital
content distribution and streaming services raised questions about licensing,
fair use, and copyright enforcement in the digital era. Issues related to the
rights of content creators, streaming platforms, and consumers remained a
topic of discussion.
 Fair Use: The interpretation and application of the fair use doctrine in
copyright law continued to be the subject of litigation and debate, especially
in cases involving user-generated content, parody, and transformative uses of
copyrighted material.

32.  EU Copyright Directive: The European Union's Copyright Directive, which was
adopted in 2019 and subsequently implemented by member states, introduced
significant changes to copyright law, including provisions related to user-generated
content, content platforms, and the responsibility of online service providers for
copyright infringement.
 Orphan Works: Legislation and initiatives aimed at addressing the issue of orphan
works, where the copyright owner is unknown or cannot be located, were
introduced in various jurisdictions to enable the use of these works while protecting
the rights of creators.
 Artificial Intelligence and Copyright: Questions about the copyright ownership of
creative works generated by artificial intelligence and the legal status of AI-
generated content were being considered in different legal systems.

33.  DMCA Safe Harbor: The Digital Millennium Copyright Act (DMCA) safe
harbor provisions, which provide liability protection to online service providers
for copyright infringement by users, continued to be a topic of debate and
potential reform.
 Copyright and Education: Copyright issues related to the use of digital
materials in educational settings, especially during the COVID-19 pandemic,
were discussed and addressed through temporary measures.
 Public Domain and Creative Commons: The use of public domain works and
Creative Commons licenses for sharing and collaborating on creative content
continued to be popular, with an increasing emphasis on open access and
open educational resources.

34.  Copyright Enforcement and Anti-Piracy Efforts: Ongoing efforts to
combat online piracy and copyright infringement included site blocking,
takedown requests, and legal action against infringing platforms and
individuals.
 International Copyright Treaties: International agreements and treaties,
such as the Marrakesh Treaty for the visually impaired and the WIPO
Copyright Treaty, continued to shape global copyright law and policy.

35. Intellectual property Audits:
 An intellectual property (IP) audit, also known as an IP due diligence or IP
assessment, is a comprehensive review of an organization's intellectual
property assets and their management. Intellectual property includes patents,
trademarks, copyrights, trade secrets, and other intangible assets that can
provide a competitive advantage.
Conducting an IP audit is essential for various reasons:
 Asset Identification: An IP audit helps identify and catalog all intellectual
property assets owned or used by the organization. This includes patents,
trademarks, copyrights, domain names, trade secrets, and even contractual
IP rights.
 Valuation: By understanding the value of your intellectual property, you can
make informed decisions about licensing, selling, or using it as collateral for
loans or investments.

36.  Risk Management: It helps identify and mitigate the risks associated with IP,
such as potential infringement claims, gaps in protection, or the risk of losing
valuable IP rights.
 Compliance: Ensuring that the organization complies with legal requirements
related to IP, such as renewing trademarks and copyrights, is a crucial aspect of
an IP audit.
 Cost Management: An IP audit helps in optimizing IP-related expenses. This
can include assessing the need for certain patents or trademarks and deciding
when to abandon or maintain them.

37.  Strategic Planning: Understanding your IP portfolio and its strengths and
weaknesses can inform your business strategy. It can help you identify areas
where you should invest in new IP, and where you may want to divest.
 Licensing and Monetization: An IP audit can identify opportunities for
licensing your IP to generate revenue or cross-licensing with others for
mutual benefit.
 IP Policies and Procedures: Reviewing existing IP policies and procedures
and making necessary adjustments to protect and manage IP assets
effectively.

38. Here are some common steps involved in
conducting an IP Audit:
 Define the Scope: Determine the scope of the audit, including which IP assets and related documents will
be reviewed.
 Gather Information: Collect all relevant IP documentation, including patents, trademarks, copyrights,
contracts, and other IP-related agreements.
 Review Documentation: Examine each IP asset's documentation to confirm ownership, status, and
compliance with legal requirements.
 Assess Value: Determine the value of each IP asset and assess its potential for revenue generation.
 Identify Risks: Identify any risks or potential issues related to IP, such as infringement claims.
 Compliance Check: Verify that the organization is in compliance with relevant IP laws and regulations.
 Report and Recommendations: Compile the findings of the audit into a report and provide
recommendations for optimizing the management of intellectual property assets.
 Implementation: After the audit, it's essential to act on the recommendations and make necessary
changes to protect, manage, and monetize your IP assets effectively.

39. International overview on Intellectual property:
Intellectual property (IP) is a critical aspect of the global economy, and international
treaties and agreements play a significant role in providing protection for creators
and innovators worldwide.
Here's an international overview of key aspects of intellectual property:
 World Intellectual Property Organization (WIPO): WIPO is a specialized
agency of the United Nations responsible for promoting the protection of
intellectual property worldwide. It administers various international treaties and
agreements related to IP, conducts research, provides IP services, and supports
capacity-building in member states.
 Paris Convention for the Protection of Industrial Property: This treaty,
administered by WIPO, establishes minimum standards for the protection of
industrial property, including patents, trademarks, and industrial designs. It
provides for national treatment, meaning that creators and inventors from
member countries are treated equally in terms of IP protection.

40.  Berne Convention for the Protection of Literary and Artistic Works: The Berne
Convention, also administered by WIPO, sets out the basic principles for copyright
protection. It establishes the principle of automatic protection upon the creation
of a work and ensures that the copyright of a work is recognized in all member
countries.
 Patent Cooperation Treaty (PCT): The PCT is an international treaty that
simplifies the process of filing patent applications in multiple countries. It provides
a centralized filing system, allowing applicants to seek patent protection in many
member states through a single international application.
 Madrid System for the International Registration of Trademarks: Administered
by WIPO, the Madrid System simplifies the process of protecting trademarks in
multiple countries. Trademark owners can file a single international application to
seek protection in multiple member states.

41.  Trade-Related Aspects of Intellectual Property Rights (TRIPS): TRIPS is an agreement
under the World Trade Organization (WTO) that sets out minimum standards for the
protection of intellectual property rights, including patents, trademarks, copyrights, and trade
secrets. All WTO members are required to comply with TRIPS.
 Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind,
Visually Impaired, or Otherwise Print Disabled: This treaty, administered by WIPO, aims to
ensure that individuals with print disabilities have access to published works in accessible
formats. It facilitates cross-border exchange of accessible-format books and other materials.
 Nagoya Protocol on Access and Benefit-sharing: This treaty governs access to genetic
resources and the sharing of benefits arising from their utilization. It aims to ensure that the
benefits of using genetic resources are shared equitably with the countries and communities
that provide those resources.

42.  Regional Agreements: Various regions and economic blocs have their own
intellectual property agreements and organizations, such as the European
Union's Unified Patent Court and the African Regional Intellectual Property
Organization (ARIPO).
 Bilateral and Free Trade Agreements: Many countries negotiate bilateral or
regional free trade agreements that include provisions on intellectual
property protection. These agreements often go beyond the minimum
standards set by international treaties.

43. Thank You