Lecture 3 - the proprietary approach to IP

Disclaimer

Today's lecture will focus on the proprietary, WIPO understanding of the intellectual property concept. The critical analysis of the model as well as discussion of alternative models will follow in following lectures.

Intro

As discussed earlier, there are two quite different schools in dealing with copyright and related issues - the Continental European and Anglo-American school. Estonia is generally considered to belong into the Continental European school (although some features point towards the other school too). The Continental European school is based on Roman Law and inherits its understanding of two major legal categories:

• Public law - governs the relationship between individuals (citizens, companies) and the state. Examples include constitutional, criminal and administrative law.
• Private law - involves relationships between individuals. Examples include business law and family law.

Intellectual property is considered to be a part of private law.

To describe the relation between the subjects, there are two concepts of

• coordination - 'horizontal' legal relationship (between equal peers); typically in private law
• subordination - 'vertical' legal relationship (between the master and the servant); typically in public law

The WIPO concept of intellectual property

The World Intellectual Property Organization (WIPO) was formed in Stockholm in 1967 (this may be considered the starting point of international proprietary copyright sphere). WIPO defines intellectual property as any result of human intellectual activity. Examples include

• ideas
• scientific discoveries
• inventions
• trade marks
• works of art and literature
• scientific works
• computer hardware and software

The idea of IP is twofold:

• on one hand, to provide fair compensation for creators
• on the other hand, to allow the society to use the creation

Although IP is in essence a right, it has many features of physical property - it can be rented, bought, sold or given away, but also stolen. The major specific features of IP are:

• immateriality - the object of IP is not a physical entity.
• territoriality - IP is originally protected only inside the borders of the country of origin and only involves citizens and resident aliens. There is a number of international treaties to coordinate the legislation of different countries.
• temporarity - IP has finite duration during which the rights are protected.

Main categories of IP

The main categories are

• Copyright may subsist in creative and artistic works (e.g. books, movies, music, paintings, photographs, and software) and give a copyright holder the exclusive right to control reproduction or adaptation of such works for a certain period of time. In addition to the copyright itself, the concept of related or neighbouring rights has obtained an increasingly central role in IP (being also a major source of criticism and controversy). These include the rights of performers, phonogram makers, mass media etc.
• A patent may be granted for a new, useful, and non-obvious invention, and gives the patent holder an exclusive right to commercially exploit the invention for a certain period of time (typically 20 years from the filing date of a patent application). Many countries also protect utility models which have lower inventive step requirements but also shorter protection (in Estonia also known as "small patents").
• A trademark is a distinctive sign which is used to distinguish the products or services of different businesses.
• An industrial design right protects the form of appearance, style or design of an industrial object (e.g. spare parts, furniture, or textiles).
• A trade secret (which is sometimes either equated with, or a subset of, "confidential information") is secret, non-public information concerning the commercial practices or proprietary knowledge of a business, public disclosure of which may sometimes be illegal.

Patents, trademarks, and designs rights are sometimes collectively known as industrial property, as they are typically created and used for industrial or commercial purposes.

Copyright vs industrial property

The main differences are as follows:

• the Object - copyright is used for works of art, literature and science. A work is defined as an original intellectual creation which is expressed in an objective form and reproducible as such. Meanwhile, industrial property is mostly used for creation applicable in industry and business, like methods, inventions, trade marks etc.
• the Owner - copyright belongs to the author and can be inherited on regular basis. Industrial property belongs to the person who applied for it. There are two major systems used in different countries:
  • application system - patent is granted to the applier, regardless of the actual authorship
  • author system - patent is granted to the author or his/her legal successors
• the Rights - copyright is applied automatically at the moment of creation and is also applied to the 'raw' forms like sketches, partial models, chapters etc; no registration is needed. Industrial property is protected after its formal registration. As the registration may take time, most countries apply temporary protection for the registration period already, although the proper protection is applied at the issue of patent or other document. Typically the registration also involves a set fee.
• the Duration - while the personal, immaterial rights are eternal and inseparable from person, the material rights are valid for the author's lifetime plus 70 years. Industrial property typically has shorter durations. In Estonia, the following durations apply:
  • a patent is valid for 20 years after the date of application submission
  • an utility model is protected for 4 years initially, further protection for 4+2 years is possible upon application
  • trademarks are protected for 10 years initially, further 10-year periods can be applied for.
  • industrial designs are initially protected for 5 years, further 5-year periods can be applied for, up to the total of 25 years.

More about industrial property

Patent

The word originates from Latin patens (public) and reflects the original idea to make useful discoveries and inventions public by protecting them, rather than letting the creators keep them secret. Patents can be applied for

• devices
• methods
• substances (including biological)
• the combination of the previous

A good definition for invention - "a new way to create something old, or vice versa".

Examples of things which cannot be patented:

• design solutions
• animal breeds
• scientific discoveries
• algorithms and computer programs (!!!)

Patenting criteria are as follows:

• novelty - differs enough from the existing things
• grade of invention - must be nontrivial
• usability - can be produced or used in larger scale

The exclusive rights conferred by intellectual property laws can generally be transferred (with or without consideration), licensed (or rented), or mortgaged to third parties. In case a patent is not used by the owner, any interested party can apply for a forced license in a court of law.

Trademark

Can be

• verbal mark - must be intelligible, pronunciable and easy to remember
• visual mark (image) - the oldest form, typical examples are logos
• combined mark - the combination of two previous ones (IBM, HP)
• spatial mark - 3D-marks, bordering cases with industrial design (the Michelin Man)
• sound mark - callsigns (like in radio stations)
• moving mark - text or image changes in time
• scent mark - a certain scent which must be clearly distinguished

Three last ones cannot be protected in Estonia!

Trade secret

A piece of confindential information that

• is not generally known to the relevant portion of the public;
• confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being generally known, not just from the value of the information itself);
• is the subject of reasonable efforts to maintain its secrecy.

Works as a mouse trap (the first mouse gets killed, the next will eat the cheese). Are only protected until:

• released by the owner
• discovered independently
• discovered by reverse engineering or similar process

Industrial design

Covers the outer design of an object. To be protected as one, it must

• be new
• have distinct features
• be producible in industry settings (otherwise the object will be regarded as a work of art and protected by copyright)

Cannot be used when the form of the object is technically derived from its use (e.g. the shape of a rocket), can be used for e.g. the shape, material or colour of a keyboard (a concrete example: MS Natural Keyboard).

Competition law

Also considered a part of industrial property legislation already since 1883. Outlaws activities which are not in accordance with fair business practices and generally accepted manners. Includes

• unfair, misleading, derogatory or hidden advertisement
• illegal use of trademark, business name or other features of competitors
• derogation of a competitor or his/her product
• abuse of trade secret
• setting illegal limits on sales of competitors' goods (e.g. calling for a boycott)

Final words

While the current WIPO system developed a relatively working integrity during the second half of the 20th century and many parts of it are still fully applicable, the emergence of Internet and subsequent birth of the whole new ecosystem has proposed increasing challenges to it. These topics will be covered in future lectures (as well as licensing which may be done in various ways).

1995-2012, Kaido Kikkas

Käesoleva dokumendi paljundamine, edasiandmine ja/või muutmine on sätestatud kas GNU Vaba Dokumentatsiooni Litsentsi versiooni 1.2 või uuemaga (Litsentsi ingliskeelne täistekst) või Creative Commonsi Autorile viitamine + Jagamine samadel tingimustel 3.0 Eesti litsentsiga

1995-2012, by Kaido Kikkas. This document is distributed under either GNU Free Documentation License (v1.2 or newer) or Creative Commons Attribution-ShareAlike 3.0 Estonia license.