WIPO IP CAI

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                                                                WIPO/IP/CAI/04/3
                                                                ORIGINAL: English
                                                                DATE: August 2004




ARAB REPUBLIC OF EGYPT                                       WORLD INTELLECTUAL
                                                            PROPERTY ORGANIZATION



                WIPO INTRODUCTORY WORKSHOP
                 ON INTELLECTUAL PROPERTY
                                 organized by
             the World Intellectual Property Organization (WIPO)
                               in cooperation with
                   the Ministry of Foreign Trade and Industry


                             Cairo, October 10, 2004


            INTRODUCTION TO INDUSTRIAL PROPERTY RIGHTS


                                Mr. Karim El-Helaly
                                        Head
                         Intellectual Property Department
                              Zaki Hashem Law Firm
                                        Cairo
      What Is Industrial Property?
• Distinctive Aspects of            • Emergence of Industrial
  Industrial Property                 Property as a Single Field of
                                      Law
   – The fact that more than one
     person can possess or use         – Until the 1970’s,
     the same intangible subject         practitioners of what later
     matter, without depriving           came to be known as IP
     any other possessor of              law, labored in their
     similar use or enjoyment,           separate fields, unconscious
     makes Industrial property an
     inexhaustible resource, or          of each other’s work
     in economic terms, a “free
     good”                             – Recent development in IP
                                         law have begun to “knit this
   – Industrial property                 patchwork of separate legal
     protection provides fuel            regimes into a “single-
     for the engine of                   coherent fabric”
     innovation
Subfields of Industrial Property

                        Patents
          PVR’s                            GI




                    Semi-
Trade
                  conductor   Trademarks    Copyrights
secrets
                     Chip
 Comparing the Forms of Industrial
            Property

• Each area of IP law has its own set of complex
  rules and statutes

• As a result, Industrial property law is a “complex
  mélange of legal detail that can take the better
  part of a lifetime to master fully”
             Protected Subject Matter
Patents- products, processes, compositions of matter and improvements thereof
Trade secrets- Very broad: virtually any information or expression, whether or
   not recorded, qualifies for trade secret protection if its limited availability gives it
   economic value and is reasonably guarded (includes a drawing, cost data, customer
   list, formula, pattern, compilation, program, device, method, technique, or process
Semiconductor Chip Protection- The intangible information content in a
   three-dimensional “blueprint” for a semiconductor chip, i.e. a “mask work”
Trademarks -verbal symbols, designs, distinctive features of products, sounds, and
   even fragrances, also trade dress, i.e. the design, packaging, and manner of sale of
   products and services
Copyrights - original works of authorship fixed in any tangible medium of
   expression (however, not ideas, principles, themes, or facts)
          Exploiting the Overlap
• The five areas of Industrial property protection
  mentioned above overlap

• Although several distinct types of Industrial property
  protection may protect a single product or service,
  there is usually a center of gravity

•    A positive synergy can be achieved by combining
    different types of Industrial property protection

• Using various forms of protection may be helpful in
  that if one form is invalidated or expires, another may
  act as a fall-back form of protection
• Practitioners should avoid narrow specialization
         Strength of Protection
  * Patents:

• strongest protection of
  the various forms

• - right to exclude all
  others from: making,
  using, and selling (and
  for processes, importing,
  using, or selling products
  of that process)
          Strength of Protection
  * Copyrights

- exclusive right to
   reproduce, distribute,
   publish, display, perform
   publicly, and to prepare
   “derivative works”
       Strength of Protection
* Semiconductor Chip Protection

exclusive right to reproduce the
mask work (in chips or
otherwise), and to import and
distribute semiconductor chips
embodying the mask work (in
products or otherwise)
           Strength of Protection
  * Trade Secrets

- right to prohibit acquisition of
   the protected secret by
   “improper means,” such as
   industrial espionage, breach
   of confidence, bribery or
   subversion of employees, or
   breach of contract
           Strength of Protection
  * Trademarks
- the right to prevent uses
   of similar marks or
   features which are likely
   to confuse the relevant
   public or which dilute
   the distinctive quality of
   the mark
           Duration of Protection
                Duration from shortest to longest

(1) mask work = 10 years if its owner timely applies for
registration; otherwise, for 2 years
(2) utility and plant patents = 20 years from filing

(3) design patents = 14 years from issue

(4) copyrights = life of the authors plus 50 years after the death
of the last surviving author
(5) trademark = as long as the mark is used in commerce
(although federal registration must be renewed every 10 years)
(6) trade secret = as long as the secret is not in the public
domain, has competitive value by virtue of its limited availability,
and is guarded with reasonable effort
     Requirements for Protection
*Patents
- to qualify for a utility patent an invention must be:
(1) novel; (2) useful*; and (3) industrial
   appilicability/nonobvious, at the time it was made, to
   those of ordinary skill in the relevant art:
 *for design patents the utility requirement is replaced
   with a requirement that the design be ornamental
 *for plant patents the utility requirement is replaced with
   a requirement that the plant be a distinct new variety
   that is capable of being asexually reproduced
     Requirements for Protection

* Copyrights
- to qualify for legal protection a recorded expression need
   only be:
(1) original; and
(2) fixed in a tangible medium of expression - in other
   words, original expression is protected automatically
   from the moment it is first fixed in a tangible medium
- copyright is the best bargain in all Industrialproperty law
     Requirements for Protection

*Semiconductor Chip Protection
- to qualify for legal protection a mask work must:
(1) be original; and
(2) fixed in a semiconductor chip product
(3) registered within two years of its first commercial
   exploitation
    Requirements for Protection

*Trade Secrets
- to qualify for legal protection a secret must:
(1) not be known or readily ascertainable by all of those
   who could profit from it;
(2) have economic value by virtue of its limited
   availability; and
(3) its owner must have taken reasonable effort to guard
   the secret and to protect it form unauthorized use or
   disclosure
   Requirements for Protection
*Trademarks and Related Property
- to qualify for legal protection a mark, trade dress,
  or other symbol must be:

(1) distinctive;
(2) nonfunctional; and
(3) used in commerce
        Requirements for Protection
* Trademarks and Related Property
- in determining if a mark is distinctive, a court generally places it
   into one of four categories:
(1) generic (no legal protection)
(2) descriptive (may be protected upon showing of “secondary
   meaning”)
(3) suggestive (protectible even without showing “secondary
   meaning”)
(4) arbitrary or fanciful (protectible even without showing
   “secondary meaning”)
the above categories, or “distinctiveness spectrum,” was
  developed for verbal marks and may not apply in the same
  way to designs and trade dress (e.g. some courts require a
  demonstration of secondary meaning for all nonverbal marks;
  others require nonverbal marks to be “inherently distinctive”)
               Contemplation
Is it possible that IPR’s:
(1)do have a great impact on research by disseminating
   info on advances in technology
(2)do promote the innovation process
(3)do encourage high risk investments which lead to
   industrialization
(4)do facilitate licensing and technology transfer
(5)do have a significant influence on economic progress.
& will provide the greatest incentive for Research and
   development with the aim to achieve useful
   innovations, and productive investments.
Thank you