1
Q
What is the Value of Intellectual Property Rights derived from?
A
Legal Mechanisms:
1. The granting of the IPRs
2. The enforcement of the IPRs
1
Q
What are Intellectual Property Rights (IPRs) ?
A
Instruments to transform knowledge into value
2
Q
What does Copyright law protect?
A
- Literary works
- Artistic works
- Scientific works
3
Q
What is Intellectual Property?
A
- The legal rights which derive from intellectual activity in the industrial, scientific, literary and artistic field.
4
Q
Why do countries have laws to protect intellectual property?
A
- Protect creators by recognising their economic and moral rights in what their creation, while also safeguarding the publics rights to access them
- They are a policy tool to encourage creativity and ensure that new ideas are widely used and shared, and promote fair competition to support economic and social development
5
Q
In what two branches is Intellectual Property typically divided?
A
- Copyright
- Industrial property
6
Q
What does Intellectual Property include rights for?
A
- literary, artistic, and scientific works (and all other rights resulting from intellectual activity in these fields)
- performances, phonograms and broadcasts
- inventions
- scientific discoveries
- industrial design
- Trademarks, service marks and commercial names and designations
- protection against unfair competition
- all other
7
Q
What areas of intellectual Property Rights belong to Copyright law?
A
- literary, artistic, and scientific works
8
Q
What areas of intellectual Property Rights belong to Industrial Property Rights?
A
- Inventions
- Industrial designs
- Trademarks and Servicemarks
- Commercial names and Designations
- protection against unfair competition
9
Q
What areas of intellectual Property Rights belong to Related Rights?
A
- performances of performing artists
- phonograms
- broadcasts
10
Q
What are related rights?
A
- Rights related to copyright law
11
Q
What is meant by “protections against unfair competition” in Industrial Rights?
A
Commercial practices that are misleading, dishonest or parasitic
E.g.:
- Deception of customer
- Passing off (as competitor)
- Free riding (taking advantage of competitors investments)
12
Q
What are Inventions in Industrial Property Rights?
A
- New Solutions to technical Problems
13
Q
What are Industrial Designs in Property Rights?
A
- aesthetic creations determining the appearance of industrial products
14
Q
How is a Scientific discovery defined in the WIPO Convention?
A
Phenomena, properties or laws, not recognised until now and capable of verification
15
Q
What is the WIPO?
A
- The World Intellectual Property Organisation?
16
Q
How did the WIPO develop?
A
- 1883 Paris Convention & 1886 Berne Convention:
–> Establishment of secretariats for Copyright and Industrial Right - 1893: Both Secretariat’s United as “BIRPI”
- 1967 Stockholm: Revision and turned into full governing body of the United Nations as WIPO
- 1974: WIPO becomes specialised agency of UN
17
Q
What is a specialised agency of the UN and how does it function?
A
- Independent organisations within the UN
- Member states can decide to be part of it or not
- Has its own constitution, elections, budget, etc
18
Q
What is the mission of the WIPO
A
WIPO’s mission is to:
-Promote international cooperation -Protect creativity
-Ensuring broad access to its economic, cultural, and social benefits.
19
Q
What was the Goal of the Patent Law Treaty in 2000
A
To streamline the Patent application process in all member states
20
Q
What are some of WIPOs other tasks that they have taken on over the years?
A
- Arbitrage and Mediation Centres -> prevent misuse of internet domains
- WIPOnet – sharing Information between all IP offices in member states
- Demystify IP to have it become part of everyday life
21
Q
What does the General Assembly of the WIPO consist of?
A
- All Member states
- Members of any of the Unions
22
Q
What does the Conference of the WIPO consist of?
A
- All the Member states
23
Q
What is the purpose of the conference of the WIPO
A
- Serve as a forum of discussion and exchange of views
- Issue recommendations on IP issues
- Decides on support for developing countries
- Adopts the budget
- Formally change or adapt the WIPO convention
- Decides which states or organisations may attend as observers
24
What is the role of a treaty?
- Legal agreements that set the international IP laws
25
What is the role of a Union in the WIPO?
- A group of states which all accept the same treaties as their IP laws
26
What are the three types of treaties?
- Treaties that establish international protection (create protection)
- Treaties that facilitate international protection (make it easier faster)
- Treaties that classifies and improves IP rights (harmonise it)
27
What are the 4 organs of the WIPO?
- General Assembly
- Conference
- Coordination Committee
- International Bureau of WIPO
28
What is the purpose of the General Assembly?
- It is the Supreme Decision making body
Appoints director, approves budget,...
29
What is the purpose of the Coordination committee?
Coordinate between unions, prepare nominations, supervise financials and administrative matters
30
What is the purpose of the International Bureau of WIPO?
Operations and day to day work
31
Why was the Paris Convention originally created?
- Highly difficult to obtain IP rights in each of the many countries
32
When was the Paris Convention signed and when did it come into affect?
- 1883
- 1884
33
What are the 4 main pillars of provisions that the Paris Convention includes?
- National Treatment
- Right of Priority
- Indipendence of Patents
- Common substantive rules
- Administrative framework
34
What does National Treatment in the Paris Convention mean?
- Each country must apply its IP laws equally to nationals and foreigners (foreigners can be people domiciled in a member state)
35
How must a country treat foreigners who have a shorter Patent holding timeline in their home country
- Country A must give them the same patent holding time as in their home country
36
What are exceptions to the National Treatment in the Paris Convention?
Special procedures for foreigners such as security deposits
37
What does it mean to be domiciled in a member state under the Paris convention?
- Company: Headquarters in member country
- Individual: more or less permanent residence is sufficient
--> There must be real commercial activity in the residence or headquarters
38
What is the right of priority in the Paris Convention?
A first filing in one member country secures the same filing date for later filings in other member countries (within 6 or 12 months).
--> Priority period is not deducted from the new countries patent term
39
For which Industrial Property Rights is the priority period 12 months?
- Patents
- Inventions
- Utility models
40
For which Industrial Property Rights is the priority period 6 months?
- Industrial Design
- Trademarks
41
What is the principle of independence of patents?
- Patents are independent in each country. Granting or declining of a patent in one does not affect the process in other countries as the legal frameworks often differ
42
What is the right of the inventor to be mentioned?
- The inventor has the right to be mentioned by name in the patent
43
What happens when a patented good is not manufactured in that country?
- As long as it is manufactured in a country which is part of the Paris Union the patent is kept
- Otherwise the countries decide individually
44
What is the Compulsory license right?
- If a license owner does not "work" the invention or uses it inadequately a country has the right to force the patent owner to licence it
45
What is the minimum time period a country has to wait before using compulsory licensing?
The longer of:
- 4 years from filing date
- 3 years from grant date
- Extension if he can give legitimate reason (e.g. legal, economic)
46
When can a Patent holder ask for an extension against the use of compulsory licensing?
If a legitimate reason such as legal, economic or technical obstacles prevent working or working more intensely
47
What are some other reasons when compulsory licensing is granted
- abuse of patent (high prices)
- public interest
- patent is needed work a new patent
Public interest compulsory licensing is independent of the time limits
48
What is the minimum grace period for non-payment before the patent is annulled?
- 6 months
49
What does the Paris convention say about inventions shown at international exhibitions?
An invention showed at an official exhibition must be IP protected, meaning:
- does not loose novelty of invention
- invention cannot be copied or appropriated
50
What is Copyright?
The protection of original creations of the human mind
51
How is the Copyright Law justified?
- Natural rights (moral right to control what they create)
- Reward & Incentive argument
- Neoliberal economics (support markets & competition)
- Democracy (free expression and pluralism)
- Personality (personal bond between creator and creation)
- Artistic argument (preserves artistic quality)
52
What did the Berne convention 1886 introduce?
- Principle of National Treatment
- Principle of Minimum rights
- Principle of immediate protection
- Principle of no formalities (states may not ask for applications)
53
Why does IP have a fundamental rights status?
- Article 27 UDHR (right to freely participate in cultural life & right to protection of creation)
- Article 17 UDHR (right to own property and not have it taken)
- Article 17 EU Charter (IP shall be protected)
- Article 1 Human right convention (right to possession and control over such)
54
What is Subject Matter?
- The Subject matter describes what is protected – Can this kind of work be protected?
55
What is the originality requirement in Copyright law?
- Work must be Original to be protected
Must be:
- The authors own intellectual creation
- Reflect personal choices
56
When is a photograph an authors own intellectual creation?
when it:
- Reflects the authors personality
- Expresses his creative abilities by making free creative choices
57
How are Computer programs protected?
Under Copyright law protected:
- Source code & object code are a form of expression
- Preparatory design work
Not Protected:
- functionality
- ideas, logic, algorithms
- formats and programming language
58
How are Databases protected and what does it prevent ?
Protected by Article 7 if:
- substantial investment in obtaining, verifying or presenting contents has been made
-> prevents:
- Extraction (taking the contents) & Re-utilisation (making them public)
59
How are sporting events protected?
- The invent itself is not but the creative elements around it can be
e.g. broadcast, camerawork etc
60
How is Information protected by Copyright law?
- purely factual or technical information cannot be protected as it leaves no room for creative choice
--> e.g. military reports
61
When are designs of products protected by Copyright law?
- Only where the designer’s form results from free creative choices
- Not from technical necessity or mere aesthetic effect.
62
What are the Requirements to be protected by Copyright law?
- Authors own intellectual creation
- free and creative choices applying their personal stamp
- identifiable with precision and objectivity
- Author is a natural person
63
What is a Work in the Berne convention?
every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression
64
How long is the duration of copyrights?
- 70 years after authors death
65
What is the duration of related rights?
- differing usually between 50 and 70 years after creation or death
66
Who is the owner of a protected work?
- The author (the persons whose intellectual creation it expresses)
67
What is the reproduction right in Copyright?
- The author has to authorise the reproduction of its work in any way
68
What constitutes reproduction of a Copyright protected work?
- Saving a digital copy
- Changing the medium (foto to poster)
--> accounts for the whole or a part
69
How far can music be sampled without infringing Copyright law?
- If a sample is modified unrecognisable to the ear in a new work
70
What is the distribution right in copyright?
- The author has exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise
71
When does Exhaustion of the distribution right apply?
- Once a physical copy has been sold with consent of the author the distribution right over that copy is exhausted
Does not apply if:
- If the medium is changed after purchase
72
How does the exhaustion of the distribution right apply to Software and E-books?
Software: Sale also leads to exhaustion but user must stop using his copy once sold
E-books: seen as communication to the public --> no exhaustion
73
What is the step by step approach to validating if IP rights are infringed?
1) What is the subject matter of the work? (literary / video / applied arts / etc.)
2) What is the (copyright) requirement here? Generally:
a. Authors own intellectual creation
b. Author was able to make free and creative choices, applying their personal stamp/touch
c. Identifiable with sufficient precision and objectivity (i.e. it is not very subjective whether it is a work or not)
d. Author here means a natural person: a company cannot be the author of a work under copyright
3) Registration requirements? (Generally none)
4) Duration still applies (is it not due)
5) What rights are involved here / are they infringed?
6) Did a potential infringer receive permission / does it fall under the limitations like fair use?
74
What is Communication to the public?
Any transmission or making available of protected work so that the public can access it from a place and time chosen by them
75
What is the right to communication to the public?
- The right of the owner of a protected work to authorise or deny the making available of said work to the public
76
When is a protected work communicated to the public?
- An act of Communication (TV, broadcast, upload)
- To a new public (fairly large number of people)
- at place and time chosen by the public
77
What can and cannot be linked without communicating protected work to the public ?
Can be linked:
- Anything that is freely accessible and no restrictions are bypassed (no new public)
Cannot be linked:
—> Communication to the public
- If linker knew or should have known work was illegal to link
- Link was used for profit
78
When is the right of communication to the public exhausted?
- Never
79
Can reproductions receive copyright, and if so how?
yes, if the reproduction is original
80
What is the right of panorama
- Some countries allow the use of fotos of works permanently located in public places without the authors permission
81
What are the moral rights mentioned in the Berne convention
- Right of attribution (be named as author)
- Right of integrity
--> object to distortion , mutiliation, modification etc
82
What kind of works can be protected by Copyright law?
- Artistic works
- Literary works
- Scientific works
- Maps and technical drawings
- Photographic works and motion pictures
- Computer programs
- Works of applied arts (jewellery, lamps, wallpaper)
83
What are the exclusive rights of copyright law?
- The rights of the author to use the work as he pleases and exude others from using it
- Economic and Moral
84
What is the right of rental in Copyright law?
- The right to refuse rental of the work as it is quite easy to copy
85
What is the right to control importation?
- The authors right not to import copies of his work to specific places as these might have no copyright protection laws
86
What is the right of performance ?
- The right to allow or block public performances of the authors art (e.g. reading of a bock)
87
What is the right of recording ?
- The right to authorise sound recordings of the authors work
88
What are the three steps to check whether a copyright exception is permissible ?
Basic Limitations:
- Legitimate Statutory Purpose (is it a legit & specific exception?)
- Necessity (does the use go beyond what is needed?)
- Proportionality (does the use unreasonably harm the rights holder?)
89
What is the WIPO Copyright Treaty?
- A treaty made to react to new technologies emerging to further protect authors ontop of the Berne convention
90
What did the WIPO Copyright Treaty include?
- Storage of digital works is seen as reproduction
- Extension of communication to public to all works
- Contracting parties must provide adequate legal protection for misuse
- Inclusion of computer programs and databases as "works"
91
What was the goal or the Rome convention 1961?
Complement Copyright law and protect performers, phonogram producers, broadcasters
92
What Rights does the Rome convention 1961 introduce?
- National treatment
- minimum protection
- limitations & reservations
for performers, phonogram producers, broadcasters
93
What are the minimum right stated in the Rome convention 1961?
- Performers: right to prevent
- Phonogram Producers: right to control reproduction
- Broadcasters: Rights over rebroadcasting, reproduction, etc
94
How long is the duration of a Copyright?
- Generally 70 years after authors death
- Film 50 years after publication
- Applied Arts 25 years from creation
95
What counts as Fair use in Copyright Law?
- A copy solely for personal and private use (from lawful sources)
- Reproduction by the press, newspaper articles or broadcasts
- Use in the context of quotation (source and name must be present)
- Parodies of work
96
What does the WIPO Performances and Phonograms Treaty entail?
- Storage of works in an electronic medium counts as reproduction
-
97
How is Software/Computer Programs protected compared to other works?
- Protected as literary work, entailing all protections
Additionally:
- Cannot be copied for private use (only allowed when technically necessary)
- Decompilation is allowed (only when necessary to gain interoperability)
-
98
How is the ease of copying in the digital age generally approached?
Through a Levy charged on upstream products (Smartphones, CDs, USBs) and then distributed back to artists.
99
How is National Law applied for broadcasts send internationally?
- The law of the sending country is generally applied
100
How are Copyright Infringements usually handled?
- Inform the infringer by letter of his right
- Make an Injunction to stop the infringement
- Receive compensation for the value of their work (as if infringement hadn't happened)
101
What makes digital piracy more difficult to enforce?
- Impossible to find all outlets of piracy
- Pirates may be outside of jurisdiction
- Expensive legal & long proceedings with low hopes of repayment as evidence can be destroyed and documents changes
102
What is the Anton Piller order and why was it created?
- It Allows inspection of premises where copyright infringing activity is believed to take place.
Requirements:
- clear evidence of infringement
- possibility of hiding or destroying of evidence
- potential damages are very serious
--> makes it easier to stop only piracy, as it stops defendant form destroying possible evidence
103
What are Interlocutory proceedings?
- Pre cases in Copyright infringements with the goal of creating pre-injunctions
--> Long-trials can lead to a long period of infringement
104
What are penal sanctions?
- fines or imprisonment for those that commit wilful copyright infringements (or with great negligence)
105
What is causal connection?
- In Copyright Law the plaintiff must proof that the defendant copied from him.
Needed for infringement:
- Access to the original work
- Degree of similarity (non-technical)
106
How are damages determined in the case of copyright infringements?
- Estimate based on notational arm length (what defendant would have paid)
- Estimate of lost sales (entire lost profit)
107
What are alternative dispute resolutions?
- Some parties may not want to move to court and choose ADR
- Arbitration: similar but less formal court process with binding results (cheaper and faster)
- Mediation: Neutral third person assists in resolving conflict
108
How can an AI output be protected by Copyright?
- Same as a normal Copyright: originality, creative choices, not dictated by technical function
- If output is purely determined by algorithm or data --> No Copyright
- If output reflect human input through prompt --> possible Copyright
109
How can AI systems be protected if Copyright doesnt apply?
- Database Protection
- Patent Protection (algorithms and technical solutions)
- Design Protection
- Trade Secrets or Contracts
110
What are the Copyright problems regarding AI Input?
- Permanent Reproduction
- Temporary Reproduction
- Text and Data Mining (TDM)
111
Can AI input be legal when trying to argue for Permanent reproduction?
- Training of AI usually uses permanent copies of protected works (stored, retained, reusable) --> as in the dataset
Could be lawful in cases of illustration for teaching
but only applies if :
- No commercial purpose (usually not the case)
- Source and author acknowledge
- Teaching takes place via closed access restricted online system (usually not the case)
112
Can AI input be legal when trying to argue for Temporary reproduction?
To be legal must be:
- Technically necessary
- Soley to enable transmission or lawful use
- Transient or incidental (exist for short time or is created as side effect)
Usually not legal because:
- Lawful use not given: AI often scrapes information of the internet without clear licenses and unclear mix of sources
- Not truly temporary: Training involves storing data
113
Can AI input be legal when trying to argue for Text and Data Mining?
- Allows for any automated analytical technique to analyse text and data to generate information --> Primary legal basis for AI training
For scientific research needed:
- lawfully accessible works
- purpose is scientific
For non-scientific AI needed:
- lawfully accessible work
- Rightsholder has not explicitly opted out of the (e.g. All rights reserved)
114
What is Text and Data Mining?
- Any automated analytical technique to analyse text and data to generate information
115
What can be protected as Industrial Design?
- ornamental or non-functional features of products
116
What are the Requirements for design right protection ?
- Design is for a product, capable of being used in industry (mass production)
- The design is novel and original
--> Absolute novelty: must be new in all world, all time
--> Qualified novelty: New within a given territory
- Design is of Individual character
- Needs to be registered
117
What counts as Design under Industrial Design law?
- Shape/ configuration of the article
- Pattern /ornament - embossing, engraving, painting or other form of decoration of the article
118
In industrial design protection what is meant by Design of individual character?
- Overall impression by an informed user is different from previous designs
119
What are limitations to Industrial design protection?
- Design cannot be dictated by the function (e.g. a spoon or screw), unless there are other ways of making it
-->are there aesthetic choices left to be made given the functional need?
- cannot be contrary to public policy or morality (obscene/racist signs)
- Exhaustion of right after first sale
- Fair use limitations
120
What are the moral rights of Industrial design protection?
- The right of the author to be named
121
What are the rights conferred by industrial design law?
- Exclusive right of use
- Stocking as infringement (having them in a warehouse even if not sold)
- Protection against immaterial differences (does not need to be an exact copy, as long as an informed user perceives the overall same impression)
122
How long is the duration of an industrial design right?
3 years (for non-registered works) to 25 years
123
How is infringement in design law different from copyright law?
- Design law infringement is absolute (no matter if deliberate or not)
124
What is a trademark?
- A sign with distinguishing features and used in the activities of trade (principle of specificity)
125
Why are trademarks important?
- They incentivise companies to create a brand associated with high standards
- Gain of exclusive right to use or authorise usage of said sign
126
What are the sibling marks of trade marks?
- Service Marks (marks for service providers)
- Collective Marks (Marks for associations used by its members)
- Certification Marks (certifications, such as fair trade marks)
127
How long is the duration of a Trademark ?
- 10 year, after which they can be renewed endlessly
128
What are the positive requirements of trademarks?
- Distinctiveness
- Novelty
129
Can Any word be a trademark?
- Some word might be to generic such as a company called Chair selling Chairs
--> But a different language Stoel would work or in a different industry (e.g. Apple selling phones)
130
Can a Trademark be to simple?
- Yes if it is too simple it may not capture the consumers attention enough to become a trademark
131
What does not count as distinctive in Trademark?
- Too generic words (e.g. Chair selling Chairs) --> Chair selling watches or Stoel selling Chairs could work
- "Fanciful marks" are easier to protect than "descriptive marks)
- Extremely simple signs not catching attention of customer
- References to geographic origin
- Letters, numerical and basic economic shapes
- Colours are almost always distinctive (always register In colour and black or white)
132
What is seen as novel in Trademark?
- When a sign is new in a specific administrative category for which it is registered
133
When is a reference to geographic origins allowed in Trademarks?
- The origin is practically unknown
- No-one would expect the product to come from this area
- No other manufacturer or potential for one in that area
- Long and intensive use of the sign
134
What are the negative requirements of Trademarks?
- Cannot be Misleading (good chocolate, Swiss chocolate)
- Cannot be generic
- Descriptive (or becoming a generic term)
- Violating to Public order or Morality (offensive)
- Not be Unused (grace period of 3-5 years)
135
What can Companies do to prevent a mark from becoming a generic term?
- Using the product designation + name ("apple Phone")
- Using the trademark only as adjective never as noun
- Visibly highlight the trademark making it stand out
- Using the trademark notice (small r)
136
How can one apply for a trademark?
- Nationally
- Regionally (EUIPO)
- Internationally (WIPO)
137
What is meant by a central attack?
- Attacking the original trademark in the first country on which all other trademarks in other countries are based.
138
What are the factors deciding which route to take when applying for a trademark?
- Costs (cheaper nationally...)
- Speed (faster, nationally)
- Plans (scaling or only one market)
- Legal risk (if fails in one member state fails in all)
139
What are the pros and cons of applying nationally for a trademark?
Pros:
- Low costs
- Speedy application
- Low legal risk (only one law)
Cons:
- No protection outside that country
140
What are the pros and cons of applying Regionally for a trademark?
Pros:
- One application = all member states
- Cost efficient if operating in more countries
Cons:
- All or nothing (one country doesn't accept non do)
141
In how far can companies with unregistered trademarks argue for use in an infringement?
- Use can give earlier rights and protection against confusion
But:
- High burden of proof
- Only local scope
- Not automatically exclusive
142
Who has priority in trademark? The first user or the first register
- The first user
143
How is a trademark application evaluated
Evaluation is done on:
- Absolute grounds (does it fit criteria)
- Relative grounds (similarity to other goods/rights)
144
What are the rights of a trademark?
- right to use and exclude others from using the mark
145
When is a trademark exhausted?
- after first sale
146
What does the right to exclude cover in trademark?
- Sale
- Advertising
- Any other document
--> as long as it is likely confuse the customer
147
What is the test of confusing similarity?
- Asks not for similarity of sign but for confusion of customer --> are these from the same company?
148
When is confusion shown in Trademark?
- Does the average consumer think the products belong to the same company? --> Even doubt is enough for confusion
149
Who is the average consumer/ consuming public and why does it matter in trademark?
- The persons buying the product
Either: Professionals or Ordinary Consumers
--> for Ordinary Consumers differentiation must be higher
150
What is the difference between the beginning and the end of a mark ?
Consumers pay more attention to the beginning making differentiation there more important than in the end
151
When can confusion be denied in Trademarks?
- If many other registered trademarks use the same element (consumers are accustomed and it is no longer differentiating)
152
In how far does it matter how famous a mark is for the protection?
- Famous marks receive broader protection
--> infringement if it harms reputation or distinctiveness
153
When is the usage of a trademark allowed despite protection?
- Use of own name, address or pseudonym
- Descriptive of informational use (e.g. newspaper)
154
What happens if a Trademark Infringement action is successful?
- prohibition of use of similar mark
- Compensation for damages (usually not done as hard to proof)
- Criminal sanctions (if counterfeit)
155
What is the Trademark law treaty of 1994?
- An act to harmonise and simplify application to trade and service marks across national borders
156
According to the trademark law treaty of 1994, what can a country demand in an application?
- No other information than specified in the treaty
- Single application for products used in several classes
- If refused in some classes, trademark must be split and issued for non rejected goods and services
- No signature certification (notary, etc)
- In renewal office cannot ask again for the substance (use, etc)
157
According to the TRIPS agreement what must members ensure for trademark applications?
- Trademark cannot be refused based on good or service (e.g. weapons)
- Members must give reasonable opportunity to cancel registration (challenge, revoke)
- There can be no compulsory licensing of trademarks
158
What is the input of the Madrid Agreement?
- After registration of a mark in one country, international registration must be made possible in other desired countries
- Countries have 12-18 months to refuse protection
159
What is the input of the Nice agreement
- Provides a classification system for goods and services for the use of marks
160
What are Patens?
A mechanism for protecting inventions
- Temporary monopolies granted as reward for inventing
161
What are the criteria for patents?
- Patentable subject matter?
- Industrially applicable
- New (novel)
- Sufficient inventive step (non-obvious)
- Disclosure standards
- Unity of inventions
162
What are exceptions of patentable subject matter in EU law?
- Substances existing in nature
- Scientific theories or mathematical formulas
- Processes for the production of new forms of live (animals and plants)
- Aesthetic creations
- Schemes, rules and methods for playing games
- Things against public order or morality
- Medical methods for treatment
163
What are new plant variety certificated?
- Since new plants cannot be patented this is an alternative to patents
164
What is patentable subject matter?
- Any invention in all fields of technology (expect limitations)
165
What is meant by Industrially applicable in patent law?
The invention can be made or used in industry
- Industry: Any kind of economic or technical activity
- made or used: capable of being made or used
- Must have utility: practical real world use --> cannot be speculative or abstract
166
What is meant by novel in patent law?
Something of which its absence can be proven
- Not anticipated by prior art (published writing, spoken word, public use)
- Prior Art must be in one document including every technical element (if not invention is still novel)
- Prior art does not inevitably lead to the claimed invention
- US has grace period of 12 months after publication
167
What is meant by inventive step/non-obvious in patent law?
Would the solution have been obvious to a person having ordinary skill in that art (expert but an average one)
- Previous art can be combined (only if it is obvious)
- Real technical advance
- Choice of combined elements can be obvious or non obvious
168
Where can the inventive step lie?
- The problem (new problem before not recognised)
- The solution (new solution which is non-obvious)
- Advantageous effect (unexpected or superior result)
169
What are the disclosure requirements in patent law?
- Must be sufficiently clear to be carried out by a person skilled in the art
- Must include Claims (what exclusive right is claimed over) and descriptions
- Optional Drawings
170
What is meant by Unity of inventions?
- When multiple inventions are bundled in one patent they must belong together
171
How do patent offices evaluate patent applications?
- Formal examination: filing correct?, fees paid?
- Substantive examination (sometimes): patentability requirements met?
- Search: prior art, not oral disclosure or public use
--> Doubt of applicant will often be resolved in favour of applicant as final rulings can be decided I court
172
How long are patents protected?
- 20 years + renewal
173
How can patents be prolonged
- Against a fee
- Pharma 3-5 years to account for approval process of drug
- Evergreening
174
What is Evergreening?
- Adding elements onto an existing such that a new patent can be started for the new product (which is mostly the same)
175
What are the limitations to the exclusive rights to a patent?
- Obligation to use or licence the patent
- Government use in public interest
- Research and experimental use exception
- For vehicles in transit
- Groundless threats of patent enforcement
176
How are process patents enforced?
- Alleged infringer must prove non-infringement
177
When is a patent infringed?
- If the accused product or process falls into the patent claims
--> wording interpreted not to narrow nor to wide
--> infringement cannot be prevented by change elements, such as changing form, adding features, improving the product
- Doctrine of equivalence
--> substitution of one element with a technically or functionally similar element
178
What happens when a infringement is proven?
- Grant of damages
--> Financial losses, profits made by infringing party, royalties paid by licensing
- Injunction
- seizure and destruction of infringing products
- criminal sanctions (under specific circumstances)
179
What is the aim of the Patent Cooperation Treaty (PCT)
- Establishes an international system for the filing of patent applications with a single patent office
180
What are the two phases of the PCT?
- International phase
- National phase
181
What is done during the international phase of the PCT?
- Formal examination
- International search (novelty, inventive step, industrial applicability)
- Preliminary examination of likelihood of success (optional)
- If the PCT does not give out merit they are not continued to the national phase
182
What is done during the national phase of the PCT?
- Each national or regional patent office examines the application
183
What are the benefits of the PCT?
- Easier application procedure
- Evaluation of merits of potential patent process
- Offices reduce workload (as novelty, inventive step and industrial are checked)
184
How do regional patent application processes differ from the PCT ?
- Regional you apply in one office at national law and get granted a patent for the whole region
- PCT the patent had to be granted by every country
185
What are the methods by which commercial transfer of a patent can take place?
- Licensing (using IP without owning it)
- Sale (full ownership transfer)
- Know-how contract (transfer of knowledge)
--> All three often go hand in hand
(e.g. sale of machine, licensing of software, installation knowhow)
186
What is a licensing contract usually composed of?
- Identification of the parties
- Scope of the license
- Limitations of there licence
- Settlement of disputes
- Duration
- Signature
187
What is meant by Identification of the parties in a patent licensing contract?
- Must make clear without doubt who the contracting parties are
E.g. Licence to group company --> subsidiary is sold --> can they use the licence?
188
What is meant by scope of the license in a patent licensing contract?
- What is the subject matter of the licence ?
- Which acts of exploitation?
- Territory (which place)?
- Purpose for exploitation
- Working obligation
- Cross-licensing/ access to improvements
- Technical assistance
- Sub-licensing
- Remuneration
189
In a licensing contract, what is meant by subject matter?
- What exactly is licensed (patent number, trademark registration)
190
In a licensing contract, what is meant by Acts of exploitation?
- What the licensee may do (make, use, sell, import, distribute)
191
In a licensing contract, what is meant by Territory?
- Where the license applies (country, region, world)
192
In a licensing contract, what is meant by Purpose for exploitation?
- For what purpose the license may be used (industry, product line, non-commercial/commercial)
193
In a licensing contract, what is meant by working obligation?
- Licensee must actually use the licensee (not shelf it)
194
In a licensing contract, what is meant by Cross-licensing/ access to improvements?
- Licensee may get access to future improvements
- Licensee may get access to another companies license in return
195
What kinds of renumeration are there in patent licensing?
- Lump-sum payment (one-off fee)
- Royalties
- Fees (compensation for services provided)
- Non-monetary Compensation (feedback, technical information, data)
--> currency should be a stable one
196
What is a guarantee of knowledge clause?
- Guarantee that provided information ins valid and accurate
197
What are the pros and cons of lump sums and royalties?
- Lump sum: royalties may be higher if product is good
- Royalties: If product/or licensee doesn't perform no payment
--> usually a mix of both is used
198
What are typical limitations named in a licence contract?
- Territory
- Quantity / production limits
- Distribution channel restrictions
- Quality control
- Price restrictions
199
How are disputes usually settled in licensing contracts?
- Usually law of the country where the act arises
--> can be decided beforehand
200
What are the 4 license types from strongest to weakest?
- Exclusive license
- Sole license (exclusive in contractual territory)
- Simple license
- Non-exclusive license (same as simple but another licence already exists)
201
What is the most-favoured license clause?
- The license shares the most favourable conditions, which may be given to other licensees
202
How are licensees protected against infringements?
Exclusive license: can always sue for infringement
Patent license: If patent owner is informed and does nothing licensee can sue
203
Can Trademarks be licensed?
- Yes, but only under strict quality control to not deceive consumer
204
Can copyrights be licensed?
- Yes, may give rights to reproduce, copy or communicate the work in specific forms other than the original
205
Why do some countries require registration or even approval of licensing ?
- Create legal certainty & market stability
- Prevent abuse of IP power
206
What terms to governments look for when trying to prevent terms of power?
- Unreasonable payments
- Restrictions on sourcing raw materials (unless necessary for quality)
- Limits to production quantity
- Price fixing
207
When are forced licenses given out?
- Public interest (knowledge transfer)
- Patent abuse
208
What are typical forced licensing regimes?
- Improvements belong to the improver
- Prohibition of restrictive causes in technology import contracts (forcing licensee to use outdated tech or not to improve)
- No prohibition of sub-licensing
- Mandatory indemnification against third party IP infringement (cover legal cost & step into litigation if license infringes)
- Guarantee of completeness, effectiveness and error-free technology
- Export controls and compliance obligations
209
What three options does a licensor faced with licensing regimes have?
- Loose the market
- Break the law
- Face the regimes
210
What is the involvement of the trips agreement in force licensing?
Forced licensing is governed by the trips agreement
- Introducing minimum IP rules & enforcement mechanisms
211
What is the role of Standard Essential Patents (SEP) and licensing
- Patents for technologies used as standard (e.g. bluetooth)
--> these are especially strong as they must be used in certain industries
--> strong tension between competition law (wanting to prevent power abuse) and patent law (wanting to reward innovation)
212
What is the solution to the tension between patent and competition law created by standard essential patents ?
FRAND licenses
- Fair
- Reasonable
- Non-Discriminatory
213
When is a license fair in a F/RAND license?
- When the terms are not considered breaching competition law if imposed by a dominant position company
214
When is a license reasonable in a FRAND license?
When taking the average of all licenses it would not make the industry/market anti economical
(e.g. phone needs a lot of licenses, each can only demand small royalties)
215
When is a license non-discriminatory in a FRAND license?
- Similar across all users
216
What makes patent infringement so easy in SEPs ?
- since they are unavoidable, if they produce a product they use it.
217
What is the process of standard essential patent licensing ?
- Notification by the SEP holder of infringement
- Willingness of implementer (do not delay negotiations)
- FRAND offer
- Counteroffer
- Assessment of conduct (by a court)
218
What are the strategic assets IP represents for startups?
- Block competitors
- Create barriers to entry
- Strengthen their valuations
- Build leverage in negotiations
- protect brand identity
- control knowhow and data
219
What is the concept of Freedom to Operate (FTO)?
- Freedom to operate describes whether a company is able to carry out their business operations without infringing another competitor's rights
220
What questions do Investors ask about IP in startups?
- Freedom to operate
- Clarity of Ownership
- Ability to enforce IP rights
- Uniqueness of Tech and brand
- IP embedded in product roadmap
- Risk of being copied quickly
221
What should startups focus on with trademarks?
- Filing in the right class (Nice Classification)
- Checking prior conflicts (can it be used)
- Securing full brand architecture (Word mark, Logo, Variants)
- Prioritise word mark (also protects similar word or designs)
- Domains and Social handles
222
What should startups focus on with copyrights?
- Software code
- Content
- UI (design rights)
223
What is a trade secret?
Any confidential business information that is:
- Not generally known or accessible
- Has commercial value
- Is subject to reasonable steps to keep it secret
224
What is the protection a trade secret offers?
- Prohibits unlawful acquisition, use or disclosure
--> Protection lasts as long as secrecy
225
What makes trade secrets so valuable to startups?
- No expiration date (as long as secret)
- Strong protection as long secrecy is held
226
What do startups need to focus on with trade secrets?
- Document trade secrets
- Maintain system with restricted access
227
When are patents valuable to startups?
- When startup has technical innovation
- Sectors valuing patents (e.g. biotech)
- Area where novelty is not the norm (quick evolution might make it useless)
228
What do startups need to care about with patents?
- Reveals key secrets
- Costly
- Must be able to enforce
229
When is a trade secret better suited than a patent?
- When the market is fast moving
- Product is hard to reverse engineer
- Technology is iterative (frequent small improvements of product)
- Startup wants to operate at low cost/stealth mode
230
What are the characteristics of a good IP portfolio?
- Has layers of different rights
- Is aligned with the business model
- Is dynamic as the business evolves
- Is enforceable
231
What are the characteristics of good IP management?
- Keeping track of priority dates
- Filing international applications
- Finding local partners wherever you sell and manufacture
232
How can founders monetise IP?
- Licensing
- Partnerships / Joint Ventures
- Franchising / Brand extensions
- IPO exit / Acquisition
233
What are the main rights used in digital ip protection?
- Copyright
- Design right
- Trademarks
- Trade secrets
234
What parts of a digital business does Copyright cover?
- UI/UX
- Software (can also be covered by patents, due to fast improvements often not feasible)
- Website layout and content
235
How are domain names protected?
- Via domain rights (also via trademarks)
--> protects agains third party taking domain names that confusingly similar to your own in bad faith
236
What are the problems with cross-border IP protection?
- Different national laws
- Location of infrastructure and people
- Enforcement against foreign infringers
237
Why are contracts so important when it comes to digital IP?
- Contracts apply regardless where parties is located
- Can specify governing laws
- Easier to enforce than IP
238
What does a good assignment clause / contract entail?
- IP is owned by client
- Transfer of all the rights
- Waives moral rights
239
What is needed for trade secrets to work well?
- Restricted access (pw protection)
- Confidentiality agreements
- Clear definitions of confidential information
- Access logs
- Clause for return of company materials
- No reverse engineering clauses
- Surviving obligations
240
What needs to be clarified in joint development agreements?
- Who owns preexisting IP
- Who owns jointly created IP
- What happens to royalty splits
- Who can commercialise the created product
- Who has the right to improvements
- What are the exit clauses
- Which law is the contract based on
241
What are the laws startups can choose from and why would they choose them?
- English law (for commercial clarity)
- Home market law (for safety)
- Neutral venues (for faireness)
- Arbitration for cross-border enforcement (decided by arbitrators)
242
What are Warranties in IP?
Promises assuring that IP is:
- Original
- Lawful
- Owned
243
What are indemnities ?
- Promise to cover losses if IP infringements occur
244
What are liability clauses?
- Clauses to allocate risk in IP related contracts
245
What is included in Technology Transfer?
- Licenses
- Patents
- Knowhow
- Software
- R&D Partnerhips
- ...
246
What are typical problems with developing countries regarding Technology Transfer?
- Weaker IP enforcement mechanisms
- slower courts + less predictable decisions
- Compulsory licensing
247
What are the limitations to copyright law ?
- Temporary acts of reproduction (Temporary, technically necessary copies used to enable transmission for lawful usage and are deleted automatically)
- Temporal (at least 50 years after death)
- Geographic (only laws of the country protect in the country)
- Permitted use (fair use, such as reproduction for personal or private use)
- Non-material works
248
What is seen as fair use in copyright law?
- Quotation
- Parody
- Private copying
- Teaching and research
- Reporting
- Temporary technical copies
- Text and data mining
249
What are the economic and moral rights of copyright holders ?
Economic:
- Right of distribution
- Right of reproduction
- Right of rental/ lending
- Right of communication to the public
Moral:
- Right of attribution
- Right of integrity (no modifications)
250
What is the triple test of similarity?
A test to determine similarity in a trademark
Based on
- Visual
- Sound
- Meaning
251
What is the principle of specificity?
- A trademark must be granted and compared to others in a specific product category
252
Name all the requirements (positive and negative) for the application of a trademark
Positive:
- Distinctive
- Novel
Negative:
- Descriptive
- Generic
- Misleading
- Violating public order or morality
- Unused
253
What is the act of deletion in trademark law?
- Removing a trademark from the registry for non-usage
254
What counts as a parody ?
- Must have an expression of humor or mockery
- must be noticeably different from the original
255
What are the AI transparency obligations regarding the EU AI Act?
- Disclosure (label ai content)
- Copyright compliance (obt out)
- Data summaries
256
What is the IP portfolio pyramid ?
Base: trademarks and brand
Middle: Trade secrets copyrights and design
Top: patents
Bocconi Semester 1
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Decks in class (6)
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