Select Page

International Business Transactions
University of Kentucky School of Law
Michael, Douglas

International Business Transactions Michael Spring 2017
 
Intellectual Property
 
Types of Intellectual Property
Patents
Definition
Patentable subject matter
Varies from country to country, but generally any kind of new machine, chemicals, and manufactured products, the types of patents include:
Product
Process
Method
Novelty
No one in the country in which the patent was granted had discovered and revealed the invention to the public before the patent applicant
Inventiveness
Must be real contributions to technology, not meaningless variations of existing technology
Industrial applicability (utility)
Patents are granted only on inventions that actually work as intended and have at least the potential of serving a commercial or industrial purpose
Registration and Rights
Registration 
Every patent system requires the applicant to file publically, including a written description of the invention
Rights
Exclusion
Right to exclude others from exploiting or benefitting from an invention
Royalties
Right to collect royalties from someone wishing to make use of invention for the purpose of generating revenue
Enforcement
Can obtain an injunction if someone uses your patent without permission
Term
Fixed term of 20 years in the US
Trademarks and Service Marks
Definition
A name, symbol, logo, or other identifying device that can be used to designate the source of a product
Types
Strong Mark
No other possible meaning, term that doesn’t describe the product/service
Delta Airlines, and Delta faucets
Suggestive
Refers to quality of the goods or services offered indirectly, so some kind of inference is required to connect the mark and the goods/services
Business wants to register the mark “Caribbean” for informal clothing (you might wear on the beach)
Descriptive
One that uses a dictionary term that is associated with the product or service offered under the mark
Must be distinctive (i.e. – Raisin Bran cereal)
Famous Mark
Unique identity apart from product/service, and others usually don’t have the right to use
i.e. – Nestlé
Registration and Rights
Registration
Registration is not required, but is permitted in most countries
Provides notice of first use
Rights
Exclusion
Right to exclude others from using mark or one that is confusingly similar
Infringement Actions
Dilution
TM owner can bring a suit if someone uses mark, claiming that the use dilutes the quality of the TM
Counterfeiting
The intentional reproduction of a registered TM for purposes of deceiving consumers
Term
Indefinite so long as used in commerce
Copyrights
Definition
Expressive work that has been embodied or stored in a tangible or electronic medium
Not the idea itself
Identical independent works can each receive protection
Registration and Rights
Registration
Formal registration is rarely required, but may be required to enforce the rights
Rights
Right to exclude others from using CR work
Derivative works
Sometimes a right to exclude other from making works derived from the original CR work (i.e. – translation of a book or a movie based on a novel)
Exceptions
Fair use
Copying of copyrighted material done for a limited and “transformative” purpose
Work for hire
CR to a work product created by an employee in course of employment, automatically vests to the employer instead of the creator
Term
Life of the author plus a fixed number of years:
Minimum of 50 years under Berne/TRIPs Conventions
Generally 70 years for post-1978 works in US
Trade Secrets
Definition
Not generally known to the public
Commercially valuable to the public
Derives its value from not being generally known
Owner has taken reasonable precautions against disclosure
Protected primarily by non-disclosure agreements
 
Treaties
Patents
Paris Convention (1883)
Patents are independent in each country
Importation of infringing items is infringement
National treatment for all Paris Union members
One-year grace period for patent filed anywhere in Paris Union
TRIPS (1994)
From Uruguay round of GATT which established the WTO
Incorporates Paris Convention
Gives MFN status to members
Arbitration state-state through DSB
Patent Law Treaty (2000)
Intended to harmonize globally national and regional patent application and maintenance procedures
US is not a member
Trademarks
Paris Convention (1883)
Same national treatment obligation
If any third party applies to register a trademark during the six-month priority period, it must prove use in commerce before the priority date
TRIPS (1994)
Likelihood of confusion is presumed and registration of a confusingly similar mark should be denied when identical marks are used to designate identical goods/services
Initial term of protection for trademarks must be at least seven years
Copyrights
Berne Convention (1886)
Requires all

carno Agreement and Hague Agreement are used to create classifications for design patents
All of Western Europe are members, but not US, Japan, or Canada
Trademark Registration
Background
Required in civil law countries for protection
Not required in CL countries like the US, protection of TM is through use alone
Regional Trademark Organizations
EU Office for Harmonization in the Internal Market (OHIM)
The EC Council adopted a community TM regulation to harmonize the TM laws of the EU member states
The Community Trade Mark does not replace national TMs within the EU, rather, it adds the CTM as an alternative or complementary option
Period lasts for 10 years, but can be renewed indefinitely
Community trade mark may protect a sign which has already been filed at a national office of a country party to the Paris Convention or TRIPs Agreement
Madrid System
Background
Madrid Agreement was the first for the registration of TMs in multiple countries
However, the Agreement is now relatively obscure and not a key instrument in multinational trademark registration
Madrid Protocol
Allows a TM applicant to file a single TM application with its national or regional TM office and to designate multiple countries in which the applicant seeks TM protection
It is the TM counterpart to the PCT
Includes 83 states, like the US, Japan, the EU, and China
International stage
To file an application, applicant must be a national of or have a commercial establishment in, a member of the Madrid Union
Office forwards the application to the WIPO IB and decides if goods/services properly classified according to the Nice System
If so, the IB records the mark in the International RM Register and forwards the application to the states designated in the application 
National stage
Application is examined by each designated country on an individual basis
If national office fails to take action within a certain time period, the mark is deemed registered in that country