1. INTRODUCTION TO INTELLECTUAL PROPERTY BY Ronald De Four The University of the West Indies St. Augustine The material presented in this document was sourced from the WIPO Web Site

2. Contents Property Types Property Types Divisions of IP Divisions of IP Copyright Related Rights Copyright Related Rights IP Conventions IP Conventions Most Used IP Conventions Most Used IP Conventions Paris Convention (1883) Paris Convention (1883) National Treatment Rights of Priority Common Rules (Patents) Common Rules (Marks) Common Rules (Other)

3. Contents Berne Convention (1886) Berne Convention (1886) Three Basic Principles Minimum Standards for Protection Rights to be Protected Duration of Protection WIPO Convention (1970) WIPO Convention (1970) Patent Cooperation Treaty (PCT) (1970) Patent Cooperation Treaty (PCT) (1970) Advantages of the PCT Example of Search Report Example of Search Report Example of Written Opinion Example of Written Opinion Example of Published Application Example of Published Application

4. Contents IP Treaties Supported by UWI Campus Countries: IP Treaties Supported by UWI Campus Countries: (a) Trinidad & Tobago (b) Jamaica (c)Barbados

5. Property Types Traditional Property Traditional Property e.g. Land, building, natural resources etc. e.g. Land, building, natural resources etc. Intellectual Property – creations of the mind Intellectual Property – creations of the mind e.g. Inventions, literary and artistic works, symbols and design used in commerce e.g. Inventions, literary and artistic works, symbols and design used in commerce

6. Divisions of IP

7. Copyright Related Rights Performing artists in their performances Performing artists in their performances Producers of phonograms in their recordings Producers of phonograms in their recordings Those of broadcasters in their radio and television programs Those of broadcasters in their radio and television programs

8. IP Conventions Berne Convention (1886):- Literary & Artistic Works Berne Convention (1886):- Literary & Artistic Works Brussels Convention (1974):- Distribution of Programme-carrying Brussels Convention (1974):- Distribution of Programme-carrying signals distributed by satellite) signals distributed by satellite) Film Register Treaty (1989):- Int. registration of audiovisual works Film Register Treaty (1989):- Int. registration of audiovisual works Madrid Agreement(1891):- Repression of false or deceptive Madrid Agreement(1891):- Repression of false or deceptive indications of source on goods indications of source on goods Nairobi Treaty (1981):- Protection of Olympic symbol Nairobi Treaty (1981):- Protection of Olympic symbol Paris Convention (1883):- Protection of Industrial property Paris Convention (1883):- Protection of Industrial property Patent Law Treaty (2000):- Streamlining of patent application Patent Law Treaty (2000):- Streamlining of patent application procedures procedures

9. IP Conventions Phonograms Convention (1971):- Protection of Phonograms Convention (1971):- Protection of phonograms against unauthorized duplication Rome Convention (1961):- Protection of performers, Rome Convention (1961):- Protection of performers, producers of phonograms and broadcast organizations producers of phonograms and broadcast organizations Singapore Treaty (2006 not in force ):- law of trademarks Singapore Treaty (2006 not in force ):- law of trademarks Trademark Law Treaty(1994):- To streamline trademark registration procedures Trademark Law Treaty(1994):- To streamline trademark registration procedures Washington Treaty (1989):- IP treaty w.r.t Integrated Circuits Washington Treaty (1989):- IP treaty w.r.t Integrated Circuits WCT (1996):- Adds copyrighting of computer programs & databases WCT (1996):- Adds copyrighting of computer programs & databases WPPT (1996):- WIPO Performances and phonograms treaty WPPT (1996):- WIPO Performances and phonograms treaty

10. Main Patent & Copyright Conventions The following four conventions are frequently used with patents and copyright The following four conventions are frequently used with patents and copyright Paris Convention (1883) –Industrial Property Paris Convention (1883) –Industrial Property Berne Convention(1886)-Literary & Artistic Berne Convention(1886)-Literary & Artistic WIPO Convention(1970)-Merger of Paris & Berne WIPO Convention(1970)-Merger of Paris & Berne PCT Convention(1970)-Simultaneous Protection PCT Convention(1970)-Simultaneous Protection

11. Paris Convention (1883) This convention applies to industrial property and includes: This convention applies to industrial property and includes: -patents, marks, industrial designs, utility models, trade names, geographic indicators and repression of unfair competition. -patents, marks, industrial designs, utility models, trade names, geographic indicators and repression of unfair competition. The provisions of the convention fall into three categories:- (a) national treatment The provisions of the convention fall into three categories:- (a) national treatment (b) right of priority (b) right of priority (c) common rules. (c) common rules.

12. National Treatment Equality of protection to nationals and members of contracting state, and Equality of protection to nationals and members of contracting state, and National protection treatment to: National protection treatment to: (a) domiciled non-contracting states (b) non-contracting states having a real and effective industrial or commercial establishment in a contracting state

13. Right of Priority Upholds 1 st application date for duration of 12 months (patents) & 6 months (industrial designs & marks) with other contracting state Upholds 1 st application date for duration of 12 months (patents) & 6 months (industrial designs & marks) with other contracting state

14. Common Rules (Patents) Patents granted in different contracting for the same invention are independent of each other. Patents granted in different contracting for the same invention are independent of each other. The inventor has the right to be named in the patent. The inventor has the right to be named in the patent. The grant of a patent may not be refused if the sale of the patented produce is restricted by law. The grant of a patent may not be refused if the sale of the patented produce is restricted by law. The limitations imposed on contracting states w.r.t. compulsory licenses to prevent abuse are: The limitations imposed on contracting states w.r.t. compulsory licenses to prevent abuse are: (a) grant is only after 3 to 4 yrs of failure to work (a) grant is only after 3 to 4 yrs of failure to work (b) refused if inaction is justified by legitimate reasons (c) forfeiture only occur on compulsory license failure

15. Common Rules (Marks) Conditions for filing and registration of marks are regulated by domestic law and not this convention. Conditions for filing and registration of marks are regulated by domestic law and not this convention. Hence, no application for the registration of a mark may be refused, nor can a registration be invalidated due to country of origin issue. Hence, no application for the registration of a mark may be refused, nor can a registration be invalidated due to country of origin issue. Registration in contracting states are independent to each other. Registration in contracting states are independent to each other. The acceptance of a mark in the country of origin ensures its acceptance in other contracting states. The acceptance of a mark in the country of origin ensures its acceptance in other contracting states. Compulsory marks are canceled after a reasonable period or if inaction is unjustifiable by owner. Compulsory marks are canceled after a reasonable period or if inaction is unjustifiable by owner. Marks are prohibited if they imitate other registered marks or contain state emblems and official signs. Marks are prohibited if they imitate other registered marks or contain state emblems and official signs.

16. Common Rules (Other) Industrial designs must be protected in each state. Industrial designs must be protected in each state. Trade name protection must be granted without filing or registration. Trade name protection must be granted without filing or registration. False indications of source of goods either directly or indirectly is prohibited. False indications of source of goods either directly or indirectly is prohibited. Effective protection against unfair competition must be provided. Effective protection against unfair competition must be provided.

17. Berne Convention (1886) This convention applies to the protection of literary and artistic works. This convention applies to the protection of literary and artistic works. The convention rests on: The convention rests on: (a) three basic principles (b) the minimum standards of protection..

18. Three Basic Principles Principle of national treatment:- works originating in one contracting state must be given the same protection in other states. Principle of national treatment:- works originating in one contracting state must be given the same protection in other states. Principle of automatic protection:- such protection must not be in compliance with any formality. Principle of automatic protection:- such protection must not be in compliance with any formality. Principle of independence of protection:- such protection is independent of the existence of protection in the country of origin of the work. Principle of independence of protection:- such protection is independent of the existence of protection in the country of origin of the work.

19. Minimum Standards of Protection Minimum protection standards depend on: Minimum protection standards depend on: (a) the work to be protected, (b) the rights to be protected and (c) the duration of protection. Concerning the work, protection must include every production in the literary, scientific and artistic domain, whatever may be the mode or form of expression. Concerning the work, protection must include every production in the literary, scientific and artistic domain, whatever may be the mode or form of expression.

20. Rights to be Protected Exclusive rights of authorization: Exclusive rights of authorization: (a) the right to translate, (b) the right to make adaptations and arrangements of the work, work, (c) the right to perform in public dramatic, dramatico-musical and musical works, and musical works, (d) the right to recite in public literary works, (e) the right to communicate to the public the performance of such works, such works, (f) the right to broadcast with the possibility of receiving a right of equitable remuneration instead of a right of right of equitable remuneration instead of a right of authorization, authorization, (g) the right to make reproductions in any manner of form, (h) the right to use the work as a basis for an audiovisual work and to reproduce, distribute, perform the work in public.

21. Rights to be Protected Moral Right is another exclusive right and entails: Moral Right is another exclusive right and entails: (a) the right to claim authorship of work (b) the right to object to any mutilation, deformation, modification or derogatory deformation, modification or derogatory action in relation to the work. action in relation to the work.

22. Duration of Protection The general rule is that protection must be granted until the expiration of the 50 th year after the author’s death. The general rule is that protection must be granted until the expiration of the 50 th year after the author’s death. Exception to above are anonymous and pseudonymous works, where the term of protection expires 50 years after lawful public release. Exception to above are anonymous and pseudonymous works, where the term of protection expires 50 years after lawful public release.

23. WIPO Convention (1970) WIPO convention was signed in 1967 and enforced in 1970. WIPO convention was signed in 1967 and enforced in 1970. In 1974 WIPO became a UN agency. In 1974 WIPO became a UN agency. WIPO was born from the merging of the Paris & Berne Conventions. WIPO was born from the merging of the Paris & Berne Conventions. Two main objectives of WIPO: Two main objectives of WIPO: (a) Promote IP protection worldwide. (b) To ensure administrative cooperation among IP unions established by WIPO administered treaties unions established by WIPO administered treaties

24. WIPO Convention (1970) The objectives of WIPO are achieved by: The objectives of WIPO are achieved by: (a) normative activities:- involves setting norms and std for protection & enforcement of IP rights, (b) program activities:- involving legal technical assistance to IP involved states (c)int. classification & standardization activities:- involves cooperation among IP offices wrt patents, trademarks and ID documentation (d) registration activities:- involves services related to int. applications for patents, marks and ID WIPO headquarters is located in Geneva Switzerland WIPO headquarters is located in Geneva Switzerland

25. Patent Cooperation Treaty (PCT) 1970 Allows for simultaneous patent protection in all PCT contracting states. Allows for simultaneous patent protection in all PCT contracting states. The PCT regulates requirements of application. The PCT regulates requirements of application. PCT response to application consists of: PCT response to application consists of: (a) international search report listing citations of published documents that might affect patentability published documents that might affect patentability of invention of invention (b) written opinion stating whether patentability criteria are addressed in light of search report criteria are addressed in light of search report results results The combination of search report and written opinion are called the IPER and it determines the outcome of the application. The combination of search report and written opinion are called the IPER and it determines the outcome of the application.

26. Patent Cooperation Treaty (PCT) 1970 Publication of application and search report on WIPO’s web site occurs as the next stage. Publication of application and search report on WIPO’s web site occurs as the next stage. National patent applications are made by supplying a translation of the application and the national fees to the national office through a local Agent on or before 18 months after the priority date. National patent applications are made by supplying a translation of the application and the national fees to the national office through a local Agent on or before 18 months after the priority date.

27. Advantages of the PCT Applicants have 18 months to reflect on desirability of foreign country protection & preparation. Applicants have 18 months to reflect on desirability of foreign country protection & preparation. Applications prepared using PCT guidelines are accepted on formal grounds by PCT contracting states in the national phase. Applications prepared using PCT guidelines are accepted on formal grounds by PCT contracting states in the national phase. The IPER provides a reasonable probability of invention patentability. The IPER provides a reasonable probability of invention patentability. Applications can be amended during the int. prelim. exam stage before it reaches the national stage. Applications can be amended during the int. prelim. exam stage before it reaches the national stage. Reduction or elimination of search and examination work at the national stage. Reduction or elimination of search and examination work at the national stage. Well-founded 3 rd party opinion obtainable due to publication of application and search report. Well-founded 3 rd party opinion obtainable due to publication of application and search report. Applications are advertised to the world. Applications are advertised to the world.

28. Example of Search Report

33. Example of Written Opinion

36. Example of Published Application

37. IP Treaties Supported by UWI Campus Countries Trinidad & Tobago Trinidad & Tobago TREATYSTATUSENTRYINTOFORCE Berne Convention In Force August 16, 1988 Brussels Convention In Force November 1, 1996 Budapest Treaty In Force March 10, 1994 Locarno Agreement In Force March 20, 1996 Nairobi Treaty Signature Nice Agreement In Force March 20, 1996 Paris Convention In Force August 1, 1964 PCT In Force March 10, 1994 Phonograms Convention In Force October 1, 1988 Strasbourg Agreement In Force December 20, 1996 TLT In Force April 16, 1998 UPOV Convention In Force January 30, 1998 Vienna Agreement In Force March 20, 1996 WIPO Convention In Force August 16, 1988

38. Jamaica Jamaica TREATYSTATUSENTRYINTOFORCE Berne Convention In Force January 1, 1994 Brussels Convention In Force January 12, 2000 Nairobi Treaty In Force March 17, 1984 Nice Agreement In Force February 7, 2006 Paris Convention In Force December 24, 1999 Phonograms Convention In Force January 11, 1994 Rome Convention In Force January 27, 1994 Vienna Agreement In Force February 7, 2006 WCT In Force June 12, 2002 WIPO Convention In Force August 16, 1988 WPPT In Force June 12, 2002 IP Treaties Supported by UWI Campus Countries

39. TREATYSTATUSENTRYINTOFORCE Berne Convention In Force July 30, 1983 Nairobi Treaty In Force February 28, 1986 Nice Agreement In Force March 12, 1985 Paris Convention In Force March 12, 1985 PCT In Force March 12, 1985 Phonograms Convention In Force July 29, 1983 Rome Agreement In Force September 18, 1983 WIPO Convention In Force October 5, 1979 Barbados Barbados IP Treaties Supported by UWI Campus Countries

40. The End The End