Unit 4 | unit 4 new development of intellectual property

Intellectual Property Rights(IPR)

Unit - 4

New development of intellectual property

Q1) Discuss about the new developments taken place in trade mark law. 12

A1) There are many innovations are taking place on daily basis worldwide due to advancement of technology. It also leads to development in trade mark law. The areas of developments taken place in trade mark law are discussed below-

Figure: New development areas in trade mark law

1. The Internet:

i) Trademark owners throughout the world are struggling with new issues presented by increased electronic communication, primarily that occurring through the Internet.

Ii) The Internet derives from a network set up in the 1970s by the Department of Defence to connect military and research sites that could continue to communicate even in the event of nuclear attract.

Iii) In the 1980s, the National Science Foundation expanded on the system, and its first significant users were government agencies and universities.

Iv)In the early1990s, however, it became apparent that the system could provide a global communication network, allowing people from all over the world to talk with each other; send written messages, pictures, and text to each other; and establish web pages to advertise their ware and provide information to their customers.

2. Assignment of Domain Names:

i) A company’s presence on the internet begins with its address or domain name not only serves as a locator for a company but also functions as a designation of origin and a symbol of goodwill---a trademark.

Ii) There are two portions to a domain name: the generic top-level domain, which is the portion of the name to the right of a period (such as .gov or .com) and the secondary level domain, which is the portion of the name to the left of a period (such as “kraft” in Kraft.com”).

Disputes frequently arise between owners of registered mark and owners of domain names whose domain names similar or identical to the registered marks

3. Internet Corporation for Assigned Names and Numbers [ICANN]:

i) To help resolve the problems in the domain names registration and use process

Ii) The government created the ICANN

Iii) It is a non-profit corporation

Iv) It is governed by a board of directors elected in part by various members of the Internet Community. ICANN are authorized to register domain names ending with .com, .org and .net

v) Registrations usually last one year, at which time they can be removed or will expire.

Vi) Registration requires a representation that the person seeing to register the name is not doing so far an unlawful purpose and does not know of any infringement

Vii) ICANN recently added seven new top-level domains, including .biz and .info.

4. Protecting a domain name:

a) People register well-known marks as domain names to prey on consumer confusion by misusing the domain name to divert customers from the legitimate mark owner’s site. This practice is commonly called cybersquatting.

b) There are three approaches for against cybersquatter:

i) An action can be brought under the Federal Trademark dilution Act

Ii) A civil suit can be instituted under the recent Anticybersquatting consumer protection Act, or

Iii) An arbitration proceeding can be instituted through ICANN’s disputes resolutions process

c) Cybersqutter and the dilution doctrine: Federal trademark dilution Act (15 U.S.C § 1125 (C). Cybersquatters and Anticybersquatting consumer protection Act (15 U.S.C § 1125 (d) [ACPA: Anticybersquatting consumer Protection Act]

d) To prevail in a civil action under ACPA, a plaintiff must prove three things:

i) The plaintiff’s mark is a distinctive or famous mark deserving of protection

Ii) The alleged cybersquatter’s infringing domain name is identical to or confusingly similar to the plaintiff mark

Iii) The cybersquatter registered the domain name is bad faith

e) Resolving Disputes through the Uniform Domain Name Dispute Resolution Policy: [UDRP] 1999

i) The allegedly wrongful domain name is identical or confusingly similar to the complainants’ trademark;

Ii) The domain name registrant has no legitimate interest in the domain name and

Iii)The domain name is being used in bad faith.

Q2) What are the new developments has taken place in copyright law.

A2) The new developments that take place in copyright law is discussed below-

a) While acknowledging that clothing is a useful article and thus not subject to copyright protection, a New York Federal court ruled that lace design, copyrighted as writing and incorporated into wedding dresses, were protectable and enjoined another maker of wedding dresses from making or marketing copies. Similarly, detailed embroiders or some other two dimensional drawing or graphic work affixed to a portion of a garment may be copyrightable.

b) A federal court in California recently held that while type fonts themselves are not protectable under copyright law, a software program that generated and created the typefaces was protectable.

c) As soon as Stephen King sold his book riding the Bullet exclusively in an Internet format, an individual cracked the copyright protection software and posted free copies of the book on the Internet. The publishers responded by adopting stronger encryption technology. Similarly, in 2000, Mr. King suspended online publication of a serial novel because too many individuals were downloading the work without paying it.

d) It late 1997 President Clinton signed into law the No Electronic Theft [NET] Act [amending 18 U.S.C §2319] to enhance criminal penalties for copyright infringement, even if the infringer does not profit from the transaction. The act also extends the statutes of limitations for criminal copyright infringement from three to five years, and allows law enforcement officers to use federal copyright law against online copyright violation, thereby extending the same copyright protection to the Internet that is provided to other media.

e) In September 1999, the Clinton administration relaxed government restrictions on the export of encryption products and simultaneously introduced new legislation to give law enforcement agencies greater authority to combat the use of computers by terrorists and criminals and to create a new code cracking unit within the FBI [Foreign Bureau of Investigation].

f) In mid-2000, president Clinton signed the electronic signatures in Global and National Commerce Act, making digital execution, called e-signatures, as legally binding as their paper counterparts.

g) In 2000, federal prosecutors in Chicago indicted seventeen people who called themselves “Pirates with Attitude” for pirating thousands of software program. The case was brought under the NET Act. Some of the individuals were former employees of Intel and Microsoft.

h) The copyright office has recommended that congress amend section 110 of the copyright Act to grant educators the right to transmit copyrighted works for distance learning if certain conditions are met.

Q3) What are the new developments has taken place in patent law.

A3) The patent Act has proven remarkably flexible in accommodating changes and development in technology. Thus, advisement in technology generally has not necessitated changes in the stately governing patent protection.

Figure: New development patent law

Business method and software patent:

Many of the cutting-edge issues in patent law related to patents for computer software. For several years, the conventional wisdom has been that unless a computer program had significant commercial value and application patent protection was often counterproductive or ineffective in that the PTO often took two years to issue a patent, roughly the same time it took for the software program to become absolute.

2. Biotechnology patent:

Medicines, Science, agricultural and pharmacology present the other cutting-edge issues in patent law. Research into genes may hold the key to curing disease throughout the world. Agricultural research may hold the key to providing sufficient food for the world’s ever- increasing population. The development of strains of plants and crops that are resistant to brought and disease has also led to an increasing number of patents issued, and attendant litigation in the field of “agbiotech”.

3. American Investors Protection Act of 1999 [AIPA]:

The AIPA was signed into law in 1999 and represents the most significant changes to patent law in twenty years. Although some of the provisions of AIPA have been discussed earlier, its key subtitles are as follows:

Inventors’ Right Act of 1999
The First Inventor Defence Act of 1999
The patent term guarantee act of 1999
The domestic publication of Foreign filed patent application act of 1999
The optional Inter parts re-examination procedure Act of 1999

4. Introduction of International Patent protection:

The rights granted by a U.S Patent extend only throughout the U.S and have no effect in a foreign country. Therefore, an inventor who desires patent protection in other countries must apply for a patent in each of the other countries or in regional patent office.

The Paris convention (already it is in previous units)
The European patent organization
Agreement on Trade-Related Aspects of IPR (already it is in previous units)
The patent Law Treaty
Foreign Filling Licenses
Applications for United States Patents by Foreign applicants.

5. The European patent organization:

The European Patent Organization (EPO) was founded in 1973 to provide a uniform patent system in Europe. A European patent can be obtained by filing a single application with the EPO headquartered in Munich (or its sub-branches in The Hague or Berlin or with the national offices in the contracting nations). Once granted, the patent in valid in any of the EPO countries designated in the application and has the same force as patent granted in any one of the contracting nations.

Q4) Define IP audit. State the steps involved in IP audit.

A4) The IP audit is analogous to the accounting audit most companies conduct on an annual basis to review their financial status.

Steps involved in conducting the Audit:

The first step in the audit should be a face-to-face meeting of the legal team and company managers.
The legal team should make a brief presentation on what Intellectual Property is, why it is important to the company, and why and how the audit will be conducted. Managers will be more likely to cooperate if they fully understand the importance of the audit.
Obtaining this kind of “buyin” from the clints managers and employees will speed the audit and reduce costs.
Moreover, education about the importance of intellectual property helps ensure that managers consider ways to further protect a company’s valuable assets and remain alert to possible infringements of the company’s Intellectual capital or infringements by the computer of other’s right.
Finally, having, outside counsel involved in the process will ensure that communications related to the audit are protected by the attorney-client privilege.
Once the company’s managers have been advised of the need for the audit, the legal team should provide a work-sheet or questionnaire to the company specifying the type of information that the firm is looking for so that company files can be reviewed and materials assembled for inspection by the firm and its representatives.

Q5) Write a note on Intellectual Trade Mark Law.

A5) International intellectual property law is a patchwork area of intersecting multilateral and bilateral agreements and their resulting harmonization of national laws. It has become an increasingly important and frequently litigated area, particularly in the patent, copyright, and trademark arenas. In addition, in the past few decades, there have been louder calls for the protection of domain names, databases, software, and traditional knowledge. Many of these cutting-edge intellectual property issues are addressed on an international level through the World Intellectual Property Organization (WIPO). Along with new forms of protection, the trend towards globalization in the trade arena has had a direct effect on the harmonization of national intellectual property laws through the World Trade Organization (WTO) and regional trade organizations. With increased interest in international intellectual property law, there are now numerous high quality electronic resources that cover various facets of this ever-changing area.

International Centre for Trade and Sustainable Development (ICTSD) and United Nations Conference on Trade and Development (UNCTAD), IPRsonline.org, General Resources on IPRs includes online reports, articles, and web sites from 1989. It also subjects indexing to limit searches to narrower topics, including traditional knowledge, biodiversity, and human rights. A trademark is registered for the territory in which the respective trademark office is based. Trademarks are territorial and must be filed in each country where protection is sought. Protection of a trademark can be granted on a national basis, but can also be subject to the territorial extension to the European Union. This grant of protection is handled by the EUIPO (European Union Intellectual Property Office). Where opposition is entered against a registration within the opposition period, and if the refusal leads to a decision to refuse protection of the mark in one of the member states, the application will be rejected entirely. The applicant would have the option to claim priority of previous applications of a union trademark by applying again for registration in every other country and pay the official fees. Apart from the possibility to apply for a union trademark in order to achieve protection for 28 territories, it is also possible to achieve protection of a union mark by multilateral agreements. The protection of Industrial Property is determined by the Paris Convention. Claiming priority of a trademark is laid down in The Paris Convention for the Protection of Industrial Property. It is stated that any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed. In addition to the Paris Convention there is the Madrid Agreement, concluded in 1891. The system makes it possible to protect a mark in a large number of countries by obtaining an international registration that has effect in each of the designated contracting parties. In addition to the Madrid Agreement there is the Protocol relating to that Agreement, concluded in 1989. The Protocol relating to the Madrid Agreement concerning the international registration of marks also regulates the time limit for ex officio examinations which has been extended to 18 months. This was because in some countries prior rights are checked by the national office if they are jeopardized by the younger mark. Based on the above Agreement and the Protocol to same it is now possible through the Office with which the basic application was filed to apply for a territorial extension of the international applications in up to 86 countries of the world. Apart from the above trademark organizations there is the OAPI (African Intellectual Property Organization) and the ARIPO (African Regional Intellectual Property Organization). OAPI is the main organization that ensures protection of intellectual property rights in most African French speaking countries, whereas ARIPO is the main organization that ensures protection of intellectual property rights in most African English speaking countries. It is possible for an applicant to apply for a trademark in a large number of countries by filing a single international application. The system also simplifies the subsequent management of the mark. There is no need of appointing any national colleagues for assistance.

In all other states which are not part of the Madrid Agreement, Paris Convention, OAPI or ARIPO, the trademark application has to be made by a local representative. This applies to all Latin American countries, except for Colombia, Mexico and Canada which belongs to North America.

The Convention provides for the right of priority in the case of trademarks. This right means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (6 months for marks) apply for protection in any of the other Contracting States. One of the great practical advantages of this provision is that applicants seeking protection in several countries are not required to present all of their applications at the same time but have 6 months to decide in which countries they wish to seek protection. These subsequent applications will be regarded as if they had been filed on the same day as the first application. Due to this time limit set (6 months) the financial burden connected with a trademark application in different territories can be spread over time.

Q6) Write a note on international copyright law.

A6) Each country has its own domestic copyright laws that apply to its own citizens, and also to the use of foreign content when used in one's country. It allows creators and content owners around the world and citizens of many countries to enjoy copyright protection in countries other than their own. Many copyright issues that appear to be national copyright issues are in fact international copyright issues. Copyright is a creation of law in each country, and therefore there is no such thing as an international copyright law. Nevertheless, nearly 180 countries have ratified a treaty – the Berne Convention, administered by the World Intellectual Property Organization (WIPO) – that sets a minimum set of standards for the protection of the rights of the creators of copyrighted works around the world.

One of the basic principles of the Berne Convention is that of “automatic protection”, which means that copyright protection exists automatically from the time a qualifying work is fixed in a tangible medium (such as paper, film or a silicon chip).

A “qualifying work” is a

Literary work
a musical composition
a film, a software program
a painting
Or any of many other expressions of creative ideas

– but it is only the expression, and not the idea, that is protected by copyright law.

Neither publication, registration, nor other action is required to secure a copyright, although in some countries use of a copyright notice is recommended, and in a few countries (including the United States) registration of domestic works is required in order to sue for infringement.

Figure: Logo of international copyright

The Berne Convention provides that, at a minimum, copyright protection in all signatory countries should extend to “literary and artistic works”, including “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression.” The detailed list of categories of works that are protected by copyright – and the specific definition and scope of each of them – may slightly vary from country to country, but it generally includes scientific articles, essays, novels, short stories, poems, plays and other literary works; drawings, paintings, photographs, sculptures and other two- and three-dimensional pieces of art; films and other audio-visual works; musical compositions; software and others.

Duration under International copyright law

The duration of copyright may vary from country to country according to the type of work (and the particular right in question). Although Berne sets a minimum duration of a copyright in a literary work equal to the life of the author plus 50 years, in most cases and countries today, the general rule is that copyright in literary, dramatic, musical or artistic works lasts for the life of the author and then until 31 December of the year 70 years after his or her death (usually referred to as “life plus 70”). In some countries, specific rules may apply that alter or add to the general rule of life plus 70 years (for example, granting extensions for the period of World War II). In addition, some countries had different copyright terms that were in effect before adoption of the general rule. For example, the United States did not adopt a “life plus” copyright duration until 1978. These differences in national laws imply the fact that in some cases a specific work can still be in copyright in some countries but out of copyright (that is, in the public domain) in others.

Q7) What do you mean by qualifying work? What are the types of international copyright law?

A7) A “qualifying work” is a

Literary work
a musical composition
a film, a software program
a painting
Or any of many other expressions of creative ideas

But it is only the expression, and not the idea, that is protected by copyright law.

Types of rights under the international copyright law

Most national copyright laws recognize two different types of rights within copyright:

Figure: Types of copyright

Countries in the Anglo-American tradition, including the United Kingdom, the United States, Canada, Australia and New Zealand, tend to minimize the existence of moral rights in favour of an emphasis on economic rights in copyright.

Economic rights

Economic or exploitation rights recognize the right of the holder to use, to authorize use of, or to prohibit the use of, a work, and to set the conditions for its use. Different specific uses (or “acts of exploitation”) of a work can be treated separately, meaning that the rights holder can deal with each right (including using, transferring, licensing or selling the right) on an individual type-of-use basis. Economic rights typically include:

a) The right of reproduction (for instance, making copies by digital or analogue means),

b) The right of distribution by way of tangible copies (for example, selling, renting or lending of copies),

c) The right of communication to the public (including public performance, public display and dissemination over digital networks like the Internet), and

d) The right of transformation (including the adaptation or translation of a text work).

e) Moral rights refer to the idea that a copyrighted work is an expression of the personality and humanity of its author or creator. They include:

f) The right to be identified as the author of a work,

g) The right of integrity (that is, the right to forbid alteration, mutilation or distortion of the work), and

h) The right of first divulgation (that is, making public) of the work.

2. Moral rights

Moral rights cannot always be transferred by the creator to a third party, and some of them do not expire in certain countries. They include:

a) The right to be identified as the author of a work,

b) The right of integrity (that is, the right to forbid alteration, mutilation or distortion of the work), and

c) The right of first divulgation (that is, making public) of the work.

Q8) Write a note on international patent law.

A8) A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. Different treaties of international patent law are discussed below-

Figure: International treaty related to patent

1. The European Patent Convention (EPC)

It is an international treaty between European countries. For the Contracting States, the EPC establishes a European Patent Organisation ("EPO") and a uniform system for the filing and grant of patents. Such "European Patents" have in each of the Contracting States the effect of a national patent granted by that State, and is subject to the same national conditions (cf. Article 2 para 2 EPC). The procedure in case of an infringement of a European Patent follows the national legal system of the Contracting State concerned.

2.The Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It is an international treaty and provides the possibility to file one single patent application (an "international" patent application) that has the same effect as a national patent application in more than 120 States, instead of filing multiple national or regional patent applications. Only after a delay of at least 30 months, the national or regional procedures are to be started in the desired States or regions. Within this period, the applicant receives an official opinion regarding patentability of the invention and has time to decide whether and in which countries respectively he wants to enter the national or regional phase. Accordingly, the prosecution costs in the desired States or regions are delayed.

Paris Convention for the Protection of Industrial Property

The Paris Convention, adopted in 1883, applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical indications and the repression of unfair competition. This international agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries.

2. Strasbourg Agreement Concerning the International Patent Classification

The Strasbourg Agreement establishes the International Patent Classification (IPC) which divides technology into eight sections with approximately 70,000 subdivisions. Classification is indispensable for the retrieval of patent documents in the search for "prior art". Such retrieval is needed by patent-issuing authorities, potential inventors, research and development units and others concerned with the application or development of technology.

3. Patent law treaty

The Patent Law Treaty (PLT) was adopted in 2000 with the aim of harmonizing and streamlining formal procedures with respect to national and regional patent applications and patents and making such procedures more user friendly. With the significant exception of filing date requirements, the PLT provides the maximum sets of requirements the office of a Contracting Party may apply.

4. Budapest treaty

The Budapest Treaty was adopted in 1977 and concerns a specific topic in the international patent process: microorganisms. All states party to the Treaty are obliged to recognize microorganisms deposited as a part of the patent procedure, irrespective of where the depository authority is located. In practice this means that the requirement to submit microorganisms to each and every national authority in which patent protection is sought no longer exists.

5. Standing Committee (SCP)

In the Standing Committee on the Law of Patents (SCP), WIPO works with its member states and observer organizations to develop balanced international frameworks for patent law and policy. Committee members discuss, debate and decide on diverse issues related to the development of patent law to meet society's evolving needs.

Q9) “New developments has taken place in trade secrets”-Write in Indian perspective.

A9)

“Intellectual Property Laws” is a diverse field for protecting the intangible assets. It is fully emphasized in the R&D, company’s having secret information, manufacturing and service units and in trade related issues. The IPR laws are quite well laid out and are in practice in developed countries like in West European Countries, United Sates, Japan, Canada, and Australia etc. However, in a developing country like India, there is somewhat lack of awareness about the IPR’s and their consequential effects in the economic and business sectors.

Except for law of contract, there is no specific law in India that protects trade secrets and confidential information. Nevertheless, Indian courts have upheld the trade secret protection under law of contracts on basis of principles of equity, and at times, upon a common law action of breach of confidence, which in effect amounts to a breach of contractual obligation. Trade secret in the Indian perspective seems to be below satisfactory level, as there is no full-fledged enactment of framework for the protection of trade secrets. This form of intellectual property is a new entrant in India, but is nevertheless a very important field of IP. India has not had much experience in relation to trade secret matters and the courts while determining a case, would have a diverse array of persuasive value precedents from all systems of law. There is need of a dedicated legislation, which would concretize trade secret protection in India. Trade secrets are fast becoming intellectual property of choice for many corporate bodies, SME’s and R&D labs and therefore an effective legislative intervention for it is felt even more expedient.

Some Important Court Cases

(i) Ciba Inc Vs. Sequent Scientific Ltd.

The importance of clearly defining the ‘confidential information’ in a confidentiality agreement was discussed in a recent interim relief sought by M/s Ciba Inc against M/s Sequent Scientific Ltd. And Others. The matter in question involved a process of manufacture of a compound called as Tetrakis commonly known as PEPQ [14]. Ciba claimed that the said process was unique and had been developed in-house by Ciba, except for certain information that was available publicly. According to Ciba, the only other manufacturer of PEPQ in the world was Clariant Group. The process was disclosed by Ciba to Plasma Laboratories, now known as Sequent Scientific Ltd., under a ‘confidentiality agreement’ in order to help it to develop a plant for the manufacture of PEPQ. Ciba claimed that the ‘confidentiality agreement’ provided for the non-disclosure of any ‘confidential information’ received by Sequent from Ciba to any third party except with the prior approval of Ciba. Hence, on coming to know of Sequent transferring its entire undertaking along with all agreements and contracts to a third party without informing Ciba, Ciba filed a suit against Sequent for the breach of the ‘confidentiality agreement’. Later, during the hearing of the interim relief, Sequent submitted that the definition, period of and extent of maintaining the ‘confidential information’ was not provided in the confidentiality agreement. In light of this, High Court of Bombay held (on 29.09.09) that Ciba had to clearly spell out the confidentiality agreement in order to determine the breach and violation of its ‘confidential information’, in absence of which, relief could not be provided to Ciba

Ii) Coca Cola Vs. Gujarat Bottling Co Ltd

M/s Coca Cola entered into an agreement with M/s Gujarat Bottling Co Ltd. Whereby Coca Cola granted to Gujarat Bottling Co Ltd a license to use the trademarks mentioned in the schedule to the agreement with Coca Cola [15]. The Agreement contained a negative covenant by means of which Gujarat Bottling Co Ltd could not manufacture, bottle, sell, deal in or otherwise be concerned with the products, beverages of any other brands or trademarks during the subsistence of the agreement with Coca Cola. But shares of Gujarat Bottling Co Ltd were later on sold to a closely associated subsidiary of Pepsi, which later gave a notice to Coca Cola for cancellation of the agreement. Coca Cola filed a suit (Suit No. 400 of 1995) in the Bombay High Court seeking various reliefs. In the said suit, Coca Cola took out Notice of Motion No. 316 of 1995 seeking interim relief. The Court laid down that it was difficult to appreciate how Pepsi could ask Coca Cola to part with its trade secrets to its business rival by supplying the essence/syrup etc., for which Coca Cola holds the trademarks, to Gujarat Bottling Co Ltd which is under effective control of Pepsi. Following was observed by Supreme Court in this case. ‘There is a growing trend to regulate distribution of goods and services through franchise agreements providing for grant of franchise by the franchisor on certain terms and conditions to the franchisee. In such agreements, a condition is often incorporated that the franchisee shall not deal with competing goods. Also stated there in is a condition restricting the right of the franchisee to deal with competing goods for facilitating the distribution of the goods of the franchisor and it cannot be regarded as to result in restraint of trade. Although the Court had refrained from entering into the question whether reasonable restraint is outside the purview of Section 27 of the Contact Act, the appeals, therefore, fail and are accordingly dismissed”.

Q10) Discuss briefly the international developments in trade secrets law.

A10) (A) The Indian Prospective

Some Important Court Cases

(i) Ciba Inc Vs. Sequent Scientific Ltd.

Ii) Coca Cola Vs. Gujarat Bottling Co Ltd

(B) United State of America (USA)

i) North American Free Trade Agreement (NAFTA)

The North American Free Trade Agreement (NAFTA) is an agreement signed by the government of the member countries such as Canada, Mexico and United States, creating a trilateral trade bloc in North America. Member countries have agreed on the issue of protection and they follow the steps to ensure that member countries will protect trade secrets from unauthorized acquisition, disclosure or use. Remedies must include injunctive relief and damages. In response to NAFTA, Mexico amended its 1991 Trade Secrets Law to permit private litigants to obtain injunctive relief. The agreement came into force on January 1, 1994.

(ii) General Agreement on Tariffs and Trade (GATT)

On April 15, 1994, the major industrialized nations of the world, including the United States, concluded the Final Act resulting from the Uruguay Round of GATT (General Agreement on Tariffs and Trade). GATT was established by the World Trade Organization (WTO) who also promulgated Trade-Related Aspects of Intellectual Properties (TRIPs) Agreement. Under GATT, "undisclosed information" must be protected against use by others if without the consent of the owner in case the use is contrary to honest commercial practices. Also, there is third-party liability for misappropriation if third parties knew or were grossly negligent in not knowing that such information had been obtained dishonestly

(iii) Uniform Trade Secrets Act (UTSA)

In the US, the Uniform Trade Secrets Act (UTSA) as amended in 1985, provides a widely accepted definition of a trade secret: information, including a formula, pattern, compilation, program, device, method, technique, or process, that derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by other persons who can obtain economic value from its disclosure or use, and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. In addition to the UTSA, whose adoption is voluntary with each of the States, the US Congress enacted a national Act to recognize certain forms of trade secret thefts as “criminal”. The Economic Espionage Act of 1996 makes illegal the misappropriation, copying or unauthorized possession of trade secrets. United States uses the different Pattern called 6- factor test for trade secrets determination by which it can be determined whether the said information is trade secret or not.

In the UK, a trade secret is some specific information known to only a few people, the disclosure of which to others would constitute a breach of confidence. The law that protects other kinds of confidential information from disclosure (Law of Confidentiality) also protects trade secrets in the UK.

(D) Brazil

In 1996, Brazil renovated its Intellectual Property Laws. Trade secrets are protected under the rubric of "Unfair Competition." Borrowing from U.S. Law, a variant of the Section 757, it also considered the United States 6-factor test to determine whether a piece of information qualifies as a trade secret, Common knowledge, prevalent information in the public domain, or knowledge that is apparent/ oblivious to an expert in the field cannot qualify for protection under trade secrets. The trade secret owner must take positive steps to safeguard the secrecy of the information

(E) Japan

Effective since June 15, 1991, Japan enacted a national trade secrets law. On the basis of this law, any "technical or business information” that has commercial value, which is not in the public domain, and which has been "administered" as a trade secret, will be protected for the purpose. Infringement occurs when a person procures a trade secret by theft, fraud, or extortion or when there is an unauthorized use or disclosure of a lawfully acquired trade secret for unfair competition. An injured party may obtain injunctive relief and damages [23]. The trade secret owner may also request destruction of all articles that have been manufactured as a result of the illegally obtained trade secret. In the Uniform Trade Secrets Act, statute has similarities for the same purpose. For example, there is a 3-year statute of limitations after discovery of the trade secret violation. There are no criminal penalties in the statute.

(F) China

The Law of the People's Republic of China (PRC) against Unfair Competition (Unfair Competition Law) was promulgated by the State Council in September 1993 and became effective on December 1, 1993. This is China's first trade secret law. The term "trade secrets" is defined for the technical information and management information that is undisclosed to the public, can bring economic benefits, is of practical value, and for which the rightful party has adopted measures to maintain its confidentiality. Article 10 of The Unfair Competition Law prohibits business operations from engaging in certain acts and the law also provides for the remedies in case of infringement of trade secrets.

(G) Korea

In 1991, Korea also amended its laws to provide statutory protection for trade secrets. This law, effective since December 15, 1992, was enacted during US litigation between GE and a Korean firm that had acquired GE trade secrets from a former GE employee

Q11) Write a note intellectual property audit.

A11) Many companies believe that copyright extends only to important literary works and therefore fail to secure protection for their marketing brochures or other written materials. Similarly, companies often fail to implement measures to ensure valuable trade secrets maintain their protect ability. Because clients are often unaware of the great potential and value of this property, law firms often offer their clients an intellectual property audit to uncover a company’s protectable intellectual property. The IP audit is analogous to the accounting audit most companies conduct on an annual basis to review their financial status. Another type of IP investigation is usually conducts when a company acquires another entity. At that time, a thorough investigation should be conducted of the intellectual property of the target company to ensure the acquiring company will obtain the benefits of what it is paying for and will not inherit infringement suits and other problems stemming from the targets’ failure to protect its IP. This type of IP investigation is generally called a due diligence review inasmuch as the acquiring company and its counsel have an obligation to duly and diligently investigate the target’s assets.

Conducting the Audit:

The first step in the audit should be a face-to-face meeting of the legal team and company managers.
The legal team should make a brief presentation on what Intellectual Property is, why it is important to the company, and why and how the audit will be conducted. Managers will be more likely to cooperate if they fully understand the importance of the audit.
Obtaining this kind of “buyin” from the clints managers and employees will speed the audit and reduce costs.
Moreover, education about the importance of intellectual property helps ensure that managers consider ways to further protect a company’s valuable assets and remain alert to possible infringements of the company’s Intellectual capital or infringements by the computer of other’s right.
Finally, having, outside counsel involved in the process will ensure that communications related to the audit are protected by the attorney-client privilege.
Once the company’s managers have been advised of the need for the audit, the legal team should provide a work-sheet or questionnaire to the company specifying the type of information that the firm is looking for so that company files can be reviewed and materials assembled for inspection by the firm and its representatives.

Q12) Write a note on international intellectual property.

A12) International intellectual property law is a patchwork area of intersecting multilateral and bilateral agreements and their resulting harmonization of national laws. It has become an increasingly important and frequently litigated area, particularly in the patent, copyright, and trademark arenas. In addition, in the past few decades, there have been louder calls for the protection of domain names, databases, software, and traditional knowledge. Many of these cutting-edge intellectual property issues are addressed on an international level through the World Intellectual Property Organization (WIPO). Along with new forms of protection, the trend towards globalization in the trade arena has had a direct effect on the harmonization of national intellectual property laws through the World Trade Organization (WTO) and regional trade organizations. With increased interest in international intellectual property law, there are now numerous high quality electronic resources that cover various facets of this ever-changing area. It consists of-

International trade mark:

2. International Copy right law

Each country has its own domestic copyright laws that apply to its own citizens, and also to the use of foreign content when used in one's country. It allows creators and content owners around the world and citizens of many countries to enjoy copyright protection in countries other than their own. Many copyright issues that appear to be national copyright issues are in fact international copyright issues. Copyright is a creation of law in each country, and therefore there is no such thing as an international copyright law. Nevertheless, nearly 180 countries have ratified a treaty – the Berne Convention, administered by the World Intellectual Property Organization (WIPO) – that sets a minimum set of standards for the protection of the rights of the creators of copyrighted works around the world.

3. International patent

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. Different treaties of international patent law are discussed below-

Figure: International treaty related to patent

4. International trade secrets

Trade secret protection confers owners the right to prevent the information lawfully within their control from being disclosed, acquired or used by others without their consent in a manner contrary to honest commercial practice. According to WIPO, Trade secrets are intellectual property (IP) rights on confidential information which may be sold or licensed. In general, to qualify as a trade secret, the information must be:

Commercially valuable because it is secret,
Be known only to a limited group of persons, and
Be subject to reasonable steps taken by the rightful holder of the information to keep it secret, including the use of confidentiality agreements for business partners and employees.

Type of information that could be a trade secret

(1) A trade secret may consist of information relating to a formula, pattern, device or other compilation of information that is used for a considerable period of time in a business.

(2) Often, a trade secret is technical information used in the manufacturing process for production of goods.

(3) A trade secret may relate to marketing, export or sales strategies, or a method of bookkeeping or other business management routines or procedures, including software used for various business purposes.

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