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Overview of Overview of International Intellectual International Intellectual

Property LawsProperty Laws

Treaties and UseTreaties and Use

August 18, 2009August 18, 2009

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TreatiesTreaties

• Multiple parties/nationsMultiple parties/nations• Highly negotiatedHighly negotiated• CompromiseCompromise• Vague languageVague language• Inconsistent between treatiesInconsistent between treaties• Culture and value standardsCulture and value standards

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WIPOWIPO

• Administers intellectual property Administers intellectual property treaties (~24)treaties (~24)

• Aids in setting up national laws on IPRAids in setting up national laws on IPR• Maintains records of various Maintains records of various

international agencies – IP search sitesinternational agencies – IP search sites• 184 members184 members• Geneva headquartersGeneva headquarters

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Paris ConventionParis Convention

• 7 July 18847 July 1884• Method to have 1 year priorityMethod to have 1 year priority• Global noveltyGlobal novelty• Many negotiated amendments with Many negotiated amendments with

different nations signed to different different nations signed to different onesones

• 173 members173 members

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PCTPCT

• Subset from ParisSubset from Paris• 24 January 197824 January 1978• Originally for formalities – paper, Originally for formalities – paper,

marginsmargins• 141 members141 members

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WTOWTO

• 1 January 19951 January 1995• 153 members153 members• Major task is trade issues among nationsMajor task is trade issues among nations• WTO members must treat all members WTO members must treat all members

alike – duty, fees for import, security, alike – duty, fees for import, security, healthhealth

• Membership is IMPORTANT for fair trade Membership is IMPORTANT for fair trade practicespractices

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WTO - 2WTO - 2

• Developed Countries – US etc – should Developed Countries – US etc – should be fully in compliance from 1996be fully in compliance from 1996

• Developing Countries – CA? CN? – Developing Countries – CA? CN? – should be fully in compliance since Jan should be fully in compliance since Jan 20002000

• Least Developed Countries – 32 [UN Least Developed Countries – 32 [UN 49] – compliance extended until 201649] – compliance extended until 2016

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WTO - 3WTO - 3

• Enforcement is provided including loss Enforcement is provided including loss of membership, penalties (CN?)of membership, penalties (CN?)

• Disputes are only between nationsDisputes are only between nations• Usually on bans to import or unfair Usually on bans to import or unfair

practices – dumping, piracy of IPR, practices – dumping, piracy of IPR, protection of home industryprotection of home industry

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TRIPsTRIPs

• A part of GATT so that when nations A part of GATT so that when nations had to sign to join WTO they had to had to sign to join WTO they had to accept TRIPs tooaccept TRIPs too

• More uniform IPR protection globally for More uniform IPR protection globally for innovatorsinnovators

• Cut down on piracy (copyright) and Cut down on piracy (copyright) and counterfeit (patents/trademarks) and counterfeit (patents/trademarks) and have stiff penalties (WIPO/Paris/PCT has have stiff penalties (WIPO/Paris/PCT has no enforcement)no enforcement)

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TRIPs - 2TRIPs - 2

• Basic principles – minimum standardsBasic principles – minimum standards• Adequate protection – years, typesAdequate protection – years, types• Enforcement by nations must be Enforcement by nations must be

strong in local systemsstrong in local systems• Settle disputes between WTO Settle disputes between WTO

membersmembers• Transitional provisions for compliance Transitional provisions for compliance

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TRIPs - 3TRIPs - 3

• PatentsPatents• At least 20 years from filing At least 20 years from filing • All technology areas must be All technology areas must be

patentable unless public order or patentable unless public order or morality issue (applied to all uniformly) morality issue (applied to all uniformly)

• Include microorganisms, drugs, process Include microorganisms, drugs, process includes the product – Budapest Treatyincludes the product – Budapest Treaty

• Geographical Indications (Article 22-24)Geographical Indications (Article 22-24)• Plant varieties – UPOV ConventionPlant varieties – UPOV Convention

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US ProvisionalUS Provisional

• Provisional ApplicationProvisional Application• Just as hard to write for priority claimJust as hard to write for priority claim• Needs to be global – have at least 1 claim, Needs to be global – have at least 1 claim,

inventorsinventors• Only 12 months – then another case –US utility or Only 12 months – then another case –US utility or

PCTPCT• Low cost $220 LE/$110 SE; >100 sheets $220/ Low cost $220 LE/$110 SE; >100 sheets $220/

$135 SE$135 SE• Not examinedNot examined• Not publishedNot published• Never issues as a patentNever issues as a patent

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Errors on ProvisionalErrors on Provisional

• Disclose before filed – public or TMDisclose before filed – public or TM• Not well writtenNot well written

• EnablementEnablement• Written descriptionWritten description

• Does not comply with all the US laws Does not comply with all the US laws or treatiesor treaties

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US UtilityUS Utility

• Original US ApplicationOriginal US Application• Can issueCan issue• Publishes at 18 months from 1Publishes at 18 months from 1stst filed (unless filed (unless

file a request)file a request)• Is examinedIs examined• Cost higher: Filing $330 LE/ $165 SE/ $82 Cost higher: Filing $330 LE/ $165 SE/ $82

electronicelectronic• More costs for claims >3 indep.; >20 claims More costs for claims >3 indep.; >20 claims

total, size >100 pgs $270/$135 per 50 pgs; total, size >100 pgs $270/$135 per 50 pgs; Search $540 LE/ $270 SE; Exam $220 LE/ Search $540 LE/ $270 SE; Exam $220 LE/ $110 SE$110 SE

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RequirementsRequirements

• Novelty – absolute, globalNovelty – absolute, global• Non-obvious – Philips, KSR, Festo Non-obvious – Philips, KSR, Festo

CasesCases• Utility – useful vs. industrial Utility – useful vs. industrial

applicabilityapplicability

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US ProsecutionUS Prosecution

• Several Office Actions over time, time Several Office Actions over time, time delaysdelays

• RCE when needed $840 LE/ $405 SERCE when needed $840 LE/ $405 SE• Takes effort and knowledgeTakes effort and knowledge• Claims can cost tooClaims can cost too• Patent valuable when issuedPatent valuable when issued

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Maintenance Fees on US Maintenance Fees on US PatentPatent

• Due after issue of patentDue after issue of patent• 3.5 years = $980 LE/ $490 SE3.5 years = $980 LE/ $490 SE• 7.5 years = $2,480 LE/ $1,240 SE7.5 years = $2,480 LE/ $1,240 SE• 11.5 years = $4,110 LE/ $2,055 SE11.5 years = $4,110 LE/ $2,055 SE

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Time LineTime Line

• 0 = filed US Provisional0 = filed US Provisional• 12 months = PCT or US Utility filed12 months = PCT or US Utility filed• 17.5 months = withdraw 17.5 months = withdraw

publication/abandonpublication/abandon• 18 months = published18 months = published• 30 months = national countries files30 months = national countries files

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PCT - AdvantagesPCT - Advantages

• File in language of Receiving Office (RO) – File in language of Receiving Office (RO) – many national offices qualify as ROmany national offices qualify as RO

• Must have 1 inventor a citizen of that Must have 1 inventor a citizen of that country or the assignee is incorporated country or the assignee is incorporated there [IB will always accept the case from a there [IB will always accept the case from a member]member]

• Up to 30 months to decide where to file Up to 30 months to decide where to file national (7 Countries is break even on costs; national (7 Countries is break even on costs; EP = 1 with 34 ctry)EP = 1 with 34 ctry)

• Get all countries at filingGet all countries at filing

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PCT - ConcernsPCT - Concerns

• Export license – US if an inventor is US Export license – US if an inventor is US or data generated in USor data generated in US

• Security clearance if US government Security clearance if US government funding (DOD; DOE; etc.)funding (DOD; DOE; etc.)

• Costs – if intend less than 7 countries Costs – if intend less than 7 countries at national stageat national stage

• Publication at 18 monthsPublication at 18 months

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PCT – Where to FilePCT – Where to File

• Technology drivenTechnology driven• Speed to marketSpeed to market• Where are the markets?Where are the markets?• ObsolesceObsolesce• LicensingLicensing• Value received for the cost incurred Value received for the cost incurred

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PCT – Content of CasePCT – Content of Case

• Specification – problems between Specification – problems between countries (US – written description & countries (US – written description & enablement; EP - solution)enablement; EP - solution)

• Claims – number, type, multiple Claims – number, type, multiple dependencies, independent claims, dependencies, independent claims, wording (complex – meaning and wording (complex – meaning and translations)translations)

• How to draft PCT case is a separate How to draft PCT case is a separate course for IP lawyers as it is complexcourse for IP lawyers as it is complex

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PCT - ProcedurePCT - Procedure

• 0 Month - File Priority Case0 Month - File Priority Case• 12 months – file PCT Case + Non-PCT 12 months – file PCT Case + Non-PCT

Country CasesCountry Cases• 16 months – receive ISR/WO – can 16 months – receive ISR/WO – can

informally comment within 2 months; informally comment within 2 months; Article 19 - amend only claims [AT, AU, Article 19 - amend only claims [AT, AU, CA, CN, EP, ES, FI, JP, KR, RU, SE, US; CA, CN, EP, ES, FI, JP, KR, RU, SE, US; IB]IB]

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PCT – Procedure - 2PCT – Procedure - 2

• 17.5 months – stop publication; revoke 17.5 months – stop publication; revoke priority claim; withdraw all priority claim; withdraw all designations but USdesignations but US

• 18 months – publication18 months – publication• 22 months – demand; IPRP; can amend 22 months – demand; IPRP; can amend

entire application; Article 34entire application; Article 34• 28 months – IPRP; informal comments28 months – IPRP; informal comments• 30 months – National Phase30 months – National Phase

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National PhaseNational Phase

• Some countries give strong weight to a Some countries give strong weight to a positive IPRPpositive IPRP

• Examination should be in 54 languages of Examination should be in 54 languages of members (no one examiner does this so members (no one examiner does this so many countries re-examine)many countries re-examine)

• Examination standards are different so the Examination standards are different so the art is applied wrong – 35 USC art is applied wrong – 35 USC §§102(e)102(e)

• Maintenance fees are national and Maintenance fees are national and exponentially increase with patent lifeexponentially increase with patent life

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Now Global Ready?Now Global Ready?

►The world is small, so know how to The world is small, so know how to work in it.work in it.