1. PROTECTING AND REGISTERING YOUR INTELLECTUAL PROPERTY (MANAGING YOUR IP IN THE RESEARCH PROCESS)BY
SARAH NORKOR ANKU (MRS)
LEGAL PRACTITIONER
REGISTRAR GENERAL’S DEPARTMENT

2. PROTECTING AND REGISTERING YOUR INTELLECTUAL PROPERTY
Two main areas of IP
Industrial Property and Copyrights & Related Rights
Main difference between the two areas of IP: registration
Industrial Property Laws are administered by the Registrar General’s Department
Copyright and related rights are administered by the Copyright Office

3. IP AND THE RESEARCHER (THE STORY OF TSRUKPE TOTA)
People in Tsrukpe Tota use certain herbs to instantly cure malaria
Researcher seeks to find a solution to malaria problem
With prior informed consent and a benefit sharing agreement with the Tsrukpe Tota community the researcher receives information and samples of the miracle plant
Researcher isolates active ingredient or develops a method of extracting the active ingredients: Confidentiality / trade secret and Patent

4. STORY CONT’
Researcher writes a paper or publishes a book on his findings: copyright
Researcher sets up a spin-off company to produce the drug and names the drug: trademark
Commissions an artist to design a container for the drug: industrial design
Commissions an artist to design labels and leaflets for the drug: copyright and trademarks
Researcher decides to license or assign his rights: IP Commercialization

5. STORY CONT’
Researcher conducts further research to develop high yielding and pest resistant variety of the miracle plant: plant variety protection
If the plant is trans-boundary but the plants grown in Tsrukpe Tota have certain unique characteristics: Geographical Indications as a marketing tool

6. BEGINNING RESEARCH
Identify a problem in any field of technology and propose a solution
Seek funding (what are the IP conditions attached to the funding)
Who will participate in finding the solution to the problem and what are their IP rights?
Collaboration; student/lecturer; lecturer/lecturer researcher/industry
KNUST IP Policy: who owns the IP Rights and how are benefits shared?

7. Beginning Research Cont’
Conduct searches using free patent search engines
Google patent search
Espacenet
Patentscope

8. PROTECTION – THREE STAGES
Beginning: define boundaries / ownership
Beginning throughout process: confidentiality / trade secret
Throughout process to end: choosing other IP tools
Patents / Utility Model Certificate
Trade marks / Service marks / Collective marks
Industrial Designs
Copyright
Geographical Indications

9. PATENTS
Titles granted by Governments/States for the protection of inventions
An invention is a solution to a problem in any field of technology
Five criteria for protection:
New (not anticipated by prior art)
Inventive Step (non-obvious to a person skilled in the art)
Industrially applicable (useful)
Disclosure
Not excluded from patentability

10. PATENT PROSECTION
Patent drafting: Background; description; claims; drawings (where applicable); abstract
Claims: defines the scope of protection
Remember a patent document is a legal document not a scientific paper
Three routes of protection
1. National route
2. Regional route (ARIPO)
3. International route (PCT / Paris Convention)

11. NATIONAL ROUTE
Fill and submit patent request form (Form No.2) together with patent application documents at the Registrar General’s Department
Registrar of patents conducts formality and substantive examinations
NB: In Ghana substantive examinations are outsourced
Successful applications are published and granted
Duration of protection is 20years from date of application
Annuities must be paid yearly to maintain application and grant

12. REGIONAL ROUTE (ARIPO)
Begin with National application and request for an ARIPO Patent, designating ARIPO Member States
Apply directly to ARIPO
ARIPO conducts both formality and substantive examinations
Designated States conducts further substantive examinations to ensure conformity with national laws
ARIPO publishes and grants patents for and on behalf of designated Member States

13. International Route Paris Convention:
Applicants can apply directly to Member States of the Paris Convention within one year after first application (requires legal representation in all the States; fees paid in local currencies; patent documents in foreign language).

14. INTERNATIONAL ROUTE CONT’
Patent Cooperation Treaty (PCT):
National application followed by PCT application within one year
Apply directly to International Bureau of WIPO
Thirty (30) months period to apply to all designated states of interest
One application; one PCT recognized language; search and preliminary examination report and written opinion
Patents are granted by individual designated Member States

15. UTILITY MODEL CERTIFICATE
UM prosecution is similar to patent prosecution
Criteria for protection is less stringent, involving two main steps, namely; novelty and industrial applicability
Duration of protection in Ghana is 7years

16. COPYRIGHT Automatic protection so long as it is original
Registration provides prima facie evidence of ownership
To register at the copyright office, submit a filled application form, three copies of the work and pay prescribed registration fee
Duration of protection: life time of the author plus seventy (70) years after his death
Author can assign economic rights not moral rights

17. TRADEMARKS
Trademarks distinguishes the goods or services of one enterprise from the goods and services of other enterprises
Interactive mark; logotype; combination of interactive mark and logotype
Three routes of protection:
National (Registrar General’s Department)
Regional (ARIPO through the Banjul Protocol, however, this route is currently not available to Ghanaians)
International (International Bureau of WIPO through the Madrid System)

18. TRADEMARKS REGISTRATION National Route
Ensure mark conforms with section 5 of the Trademarks Act (Act 664)
Conduct a search at the trademark registry: US$60
Submit application form together with 2 copies of trademarks: US$150
Application processing may take a year
Publication and Opposition period
Certificate: US$100
Protection is in perpetuity subject to renewal every 10years

19. TRADEMARK REGISTRATION International Route
National application followed by Madrid application within 6 months
Direct application to International Bureau designating Member States of Interest
Member States approves and registers trademarks

20. INDUSTRIAL DESIGNS REGISTRATION
Three routes of protection:
National (Registrar General’s Department)
Regional (ARIPO)
International (International Bureau of WIPO)
Currently the only route available to Ghanaians is the Regional route

21. INDUSTRIAL DESIGN REGISTRATION CONT’
Application may be submitted to the Registrar General’s Department or directly to ARIPO
Fill ARIPO Form 28, attach four copies of designs (with description where necessary), a statement of authorship, application fee of US$50 and US$10 for each Designated State
You must designate at least 1 Member State
Application process may take a year
Duration of protection in Ghana is 5years, renewable two consecutive five years period

22. IP Management Services
Value assessment / IP audit
Cost management
Priority rights
Exhibitions
Protection routes

23. Value assessment / IP audit Why IPR Audit
The due diligence process associated with mergers & acquisitions, joint ventures, portfolio assessments, spin-offs and strategic alliances now include an increased level of scrutiny of IPR portfolio. (value of IPR)
Identifying the origins and value of intellectual property and assuring compliance with obligations relating to licensed assets has become a due diligence checklist item. (Chain of ownership of patents, trademarks, copyrights)

24. Value assessment / IP audit Why IPR Audit Cont’
IP audit is a systematic review of the IP owned, used or acquired by a business/institution so as to assess and manage risk, remedy problems and implement best practices in IP asset management.
It involves undertaking a comprehensive review of an institution’s IP assets, related agreements, relevant policies and compliance procedures

25. Value assessment / IP audit Why IPR Audit Cont’
How the IP assets are being used or not used.
Whether the IP assets used by it are owned by the institution or by others.
Whether these IP assets are infringing the rights of others or others are infringing on these rights, and determine, in the light of all this information.
What actions are required to be taken with respect to each IP asset, or a portfolio of such assets, to serve the relevant business goals of the institution/company.

26. Cost management
Cost of maintenance, enforcement, exploitation of IP Rights; namely
Patents
Trademarks
Copyright
Industrial Designs

27. Priority rights & Exhibitions
Patents: 1year
Trademarks: 6months
Industrial Designs: 6months

28. COMMERCIALIZATION Donation Licensing Assignment
All licenses and assignments must be registered at the Registrar General’s Department (notice to third parties)
Spin-Off companies
Role of Technology Transfer Units