#11170 - International Protection Of Intellectual Property - International Law II

International Protection of Intellectual Property

1. International Intellectual Property Rights Framework

   1. In General

      1. The predominant vehicle for controlling technology transfers across national borders is the “license” or “franchise” contract.

         1. (1) The holder of a patent, copyright, or trademark in one country first acquires the legally protected right to the same in another country.

            1. With few exceptions, IP rights are national in origin, products of territorial domestic regimes.

         2. (2) Once acquired, the holder then licenses that right, usually for a fee known as royalty, to a person in the other country.

   2. Patents

      1. Patent Protection

         1. For the most part, patents are granted to inventors according to national law.

            1. Thus, patents represent territorial grants of exclusive rights.

         2. What constitutes a “patent” and how it is protected in any country depends upon domestic law.

            1. In the U.S.: a patent issued by the U.S. Patent Office will grant the right of 20 years from the date of application to exclude everyone from making, using, or selling the patented invention without permission of the patentee.

               1. The U.S. is now a “first to file” jurisdiction.

               2. Patent infringement can result in injunctive and damages relief in the U.S. Microsoft (CB 754).

               3. Exclusion Orders against foreign-made patent infringing goods are available.

                  1. Such orders are frequently issued by the ITC under Section 337 of the Tariff Act.

                  2. Such orders are enforced by the U.S. Customs Service.

               4. To obtain U.S. patents, applicants must demonstrate to the satisfaction of the U.S. Patent Office that their inventions are (1) novel, (2) useful, and (3) nonobvious.

            2. The terms of a patent grant depends country to country.

               1. Local law may provide for “confirmation,” “importation,” “introduction,” or “revalidation” patents (which serve to extend limited protection to patents already existing in another country).

               2. “Inventor’s certificates” and rewards are granted in some socialist countries where private ownership of the means of production is discouraged.

                  1. The state owns the invention

               3. Some countries (e.g., Britain) require that a patent be “worked” (commercially applied) within a designated period of time.

         3. There are basically two types of patent systems:

            1. (1) Registration

               1. Some countries (e.g., France) grant a patent upon “registration” (accompanied by appropriate documents and fees), without making an inquiry about the patentability of the invention.

            2. (2) Examination

               1. In other countries (e.g., United States, Germany), the patent grant is made following a careful “examination” of the prior art and statutory criteria on patentability or a “deferred examination” is made following public notice given to permit “opposition.”

                  1. To obtain U.S. patents, applicants must demonstrate to the satisfaction of the U.S. Patent Office that their inventions are (1) novel, (2) useful, and (3) nonobvious.

      2. International Recognition of Patents

         1. 1883 Convention of the Union of Paris (Paris Convention): 170 states, administered by WIPO

            1. To some extent the Paris Convention also deals with trademarks, servicemarks, trade names, industrial designs, an unfair competition.

            2. This convention remains the basic international agreement dealing with treatment of foreigners under national patent laws.

            3. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva

            4. The “rights of national treatment” (art. 2) prohibits discrimination against foreign holders of local patents and trademarks.

            5. Moreover, important “rights of priority” are granted to patent holders provided they file in foreign jurisdictions within twelve months of their home country patent applications.

               1. But, such rights may not overcome prior filing by others in “first to file” jurisdictions.

            6. Patent applications in foreign jurisdictions are not dependent upon success in the home country.

               1. Patentability depends country to country.

            7. Nonetheless, the Paris Convention obviates the need to file simultaneously in every country where intellectual property protection is sought.

            8. If an inventor elects not to obtain patent protection in other countries, anyone may make, use or sell the invention in that territory.

            9. The Paris Convention does not attempt to reduce the need for individual patent applications in all jurisdictions where patent protection is sought.

               1. Nor, does it alter the various domestic criteria on patentability.

         2. 1970 Patent Cooperation Treaty (PCT): 140 states

            1. Designed to achieve greater uniformity snf less cost in the international patent filing process, and in the examination of prior art.

            2. Instead of filing patent applications individually in each nation, filings under the PCT are done in selected countries.

               1. The national patent offices of Japan, Sweden, Russia, and the United States have been designated International Searching Authorities (ISA) as has the European Patent Office in Munich and The Hague.

            3. The international application, together with the international search report, is communicated by an ISA to each national patent office where protection is sought.

            4. Nothing in the treaty limits the freedom of each nation to require expensive translations, establish substantive conditions of patentability, and determine infringement remedies.

               1. However, the PCT also provides that the applicant may arrange for an international preliminary examination in order to formulate a non-binding opinion on the questions whether the claimed invention is novel, involves an inventive step (non-obvious) and is industrially applicable.

            5. In a country without sophisticated search facilitates, the report of the international preliminary examination may largely determine whether a patent will be granted.

               1. For this reason alone, the PCT may help to create more uniformity in global patent law.

         3. European Patent Convention (35 states)

            1. Designed to permit a single office at Munich and The Hague to issue patents of 35 countries party to the treaty

         4. European Union Patent Convention (EU members)

            1. Intended to create a single patent valid through the E.U.

   3. Trademarks

      1. Trademark Protection

         1. Virtually all countries offer some legal protection to trademarks, even when they do not have trademark registration systems.

            1. Trademark rights derived from the use of marks on goods in commerce have long been recognized at common law and remain so today in countries as diverse as the United States and the United Arab Emirates.

         2. In the U.S., trademarks are protected at common law and by state and federal registrations.

            1. Federal registration is permitted by the U.S. Trademark Office for all marks capable of distinguishing the goods on which they appear from other goods.

            2. U.S. law allows trademarks on distinct smells, color, sounds, and tastes.

            3. Unless the mark falls within a category of forbidden registration (e.g., those that offend socialist morality in the People’s Republic of China), a mark becomes valid for a term of years following registration.

         3. In some countries (e.g., the United States prior to 1989), marks must be used on goods before registration.

            1. In other countries (e.g., France), use is not required and speculative registration of marks can occur.

               1. Since 1989, the U.S. has allowed applications when there is a bona fide intent to use a trademark within 12 month, and, if there is good cause for the delay in actual usage, up to 24 additional months.

                  1. The emphasis on bona fide intent and good cause represent an attempt to control any speculative use of U.S. trademark law.

         4. The scope of trademark protection may differ substantially from country to country.

            1. Under U.S. federal trademark law, injunctions, damages, and seizures of goods by customs officials may follow infringement.

               1. Also, Congress created criminal offenses and private treble damages remedies for the first time in the Trademark Counterfeiting Act of 1984.

            2. Other jurisdictions may provide similar remedies on their law books, but offer little practical enforcement.

         5. In many countries, trademarks (appearing on goods) may be distinguished from “service marks” (used by providers of services), “trade names” (business names), “collective marks” (marks used by a group or organization), and “certificate marks” (marks which certify a certain quality, origin, or other fact).

            1. Although national trademark schemes differ, it can be said generally that a valid trademark (e.g., a mark not “cancelled,” “renounced,” “abandoned,” “waived,” or “generic”) will be protected against infringing use.

               1. A trademark can be valid in one country (e.g., Aspirin brand tablets in Canada), but be invalid because it is generic in another country (e.g., Bayer brand aspirin in the United States).

         6. Unlike patents and copyrights, trademarks may be renewed continuously.

         7. A valid mark may be licensed, perhaps to a “registered user” OR it may be assigned, in some cases only with the sale of the goodwill of a business.

         8. The Lanham Act has been construed to apply extra-territorially.

         9. Foreigners who seek a registration may be required to prove a prior and valid “home registration,” a new registration in another country may not have an existence “independent” of the home country registration’s continued validity.

            1. Foreigners are often assisted in their registration efforts by international and regional trademark treaties.

      2. International Recognition of Trademarks

         1. In General

            1. The International Bureau of WIPO plays a central role in the administration of arrangements contemplated by these agreements.

         2. 1883 Paris Convention (U.S....