What is intellectual property?

Intellectual property could be described as those creations of the mind which are of commercial use in respect of which the state bestows upon individuals a statutory monopoly for a definite term to preclude their unlawful exploitation. Part 11 of the TRIPS Agreement provides the list of intellectual property rights, namely copyright and related rights, trademarks, geographical indications, industrial designs, patents, layout-designs (topographies) of integrated circuits and confidential information. Intellectual property is conventionally embraced into two major divisions, namely copyright and rights related to copyright and industrial property which comprises patents, industrial designs and trademarks. Rights related to copyright or as sometimes called neighboring rights embrace rights of performers, producers of phonograms (sound recording) and the rights of broadcasting organizations. The TRIPS Agreement does not address the minimum standards required as regards utility models and breeders’ rights. This entails that developing and least developed countries are not bound by the TRIPS Agreements in respect of the said two categories.

Do the minimum rules or standards for intellectual property protection differ between developed and least developed countries?

The general agreement on Tariff and Trade (GATT) and the World Trade Organization (WTO) recognize that developing and least developed countries are disadvantaged in international trade to the effect that the Special and Differential Treatment (SDT) arrangement as incorporated in the aforestated agreements stands as a fundamental principle of the said two organizations. Again, under the earlier Paris Convention each country is obliged to provide intellectual property protection no worse that its own to other members of the Convention. By demanding a similar level of protection for all countries, the TRIPS Agreement no longer permits countries to elect the level of intellectual property protection in line with the level of each country economic development The Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement does not incorporate similar provisions. It is devoid of significant differences in the rules applicable to developing and least developed countries in contrast to developed countries. It is a type of an international agreement structured on the basis of ‘ one size fits all” as regards the minimum rules for intellectual property protection. Nonetheless, the timing of implementation of the rules differs as regards developing and least developed countries through provisions of longer transition periods.

What are transitions periods offered to least developed countries?

The least developed countries may apply the TRIPS Agreement until January 1, 2006 with the possibility of an extension and until January1, 2016 as regards pharmaceutical and agricultural chemical patents. The transition periods apply only to WTO members as of January 1995. However, new members would not benefit of any transition period. The transition rules embrace the situation where a country has no legislation to address patent protection in a particular area of technology when the TRIPS Agreement came into force on January 1, 1995. The said country is expected to take the requisite measures to introduce the required protection by January1, 2005.

What does the so called Mailbox provision signify?

Paragraph 70.8 of the TRIPS Agreement provides that a country had to accept the filing of patent applications as regards pharmaceuticals and agricultural chemical products from the inception of the transition period despite the fact that the decision on whether or not to grant any patent may be deferred until the end of the period. Paragraph 65.5 expressly provides that within the transition period the relevant country shall enact the requisite legislation in line with the provisions as contained in the TRIPS Agreement to the effect of avoiding any inconsistency.

What is compulsory licensing and what are the conditions as contained in the TRIPS Agreement under which Compulsory Licensing may be triggered?

Compulsory licensing operates to trim down the power of the exclusive rights conferred by a patent. Its application arises where a patent protection exists in countries where an inventor has received a valid patent. Good patents are expensive and should be filed in each country in which protection is sought. It is now firmly embedded in law that if an inventor elects not to secure protection in a particular country or a market, any interested person may make use, offer for sale or sell the product in that market or use the process or produce the product for export. In historical fact the underlying justifications for compulsory licensing is to maintain a state’s national security and public interest. Compulsory licensing is a device utilized to meet domestic needs by limiting importation of a patented product and ensuring that lack of exploitation by the patentee will not impede the export market being supplied with the patented product. The state’s ability to surpass the patentee’s non-authorization after being consulted is a crucial counterbalance to absolute monopoly power.

As a matter of fact, the great majority of patents are owned by larger corporations or multinational companies having the financial capacity to undertake the required research. Accordingly, it is a pre-condition to funding that ownership of all patents rights shall bestow on these corporations. The financial capacity of larger corporations provides them with the power to utilize the regime of patent protection in a manner conducive to claim ownership in many inventions.

The prime goal of an offensive patent strategy is to set up an extensive patent protection to the extent of controlling a particular business area in the territories covered by the patent. On the other hand, the main purpose of the defensive patent strategy is to utilize well calculated measures to preclude others from patenting in a specific field. Larger corporations prefer to employ their patents defensively with a view to protecting strategic technologies more willingly than to license them to non-competing companies. Immediate competitors would be perfectly debarred. Patents are considered strategic assets which deserve to be defended to boost up the company’s competitive edge and earning capacity. It is pertinent to indicate that some of these inventions may not be put into operation and others may be filed to perplex competitors. Again, patent monopolies lead to keeping research findings under wraps in a manner that would ultimately restrict the dissemination of research findings and hence slow down the advancement of research. Such a state of affairs will provide transnational companies the chance to deal with the entire world as their untreated field of open wealth, workforce and consumer market. On account of this, patent monopolies result in economic distortions in the like manner that trade tariffs or quoted quotas steer economic distortions, however, the extent of distortions in the former case is excessive. Consequently, the earliest notion of the patent as an individual or an entrepreneurial right does no longer survive.

At present an inventor may be one who has put in a significant part to an invention, as a minimum, one of the claims scheduled in the patent is attributable to that inventor. The argument that diminutive protection usurps innovators from the fruit of their creativity i.e. the predictable reimbursement in substitute of making a full and complete disclosure can no longer be convincingly upheld. The general view even in major industrialized countries such as the U.S.A is that the direct reason of elevated drug prices is government approval of patents monopolies, which permits drug companies to charge prices commonly 400 percent or extra on top of competitive market prices. Lack of competition in some industries entails high profits. This is due to the fact that rival companies have no access to critical inputs such as skilled labor and entrepreneurship. This signifies a vital resource limitation and hence the likelihood of unusual profits. Given these facts, the likelihood of some of the developing countries being entirely competitive is highly remote in the near future. In addition to that lack of specialist knowledge in appraising investment in innovative pursuits may add to the technological gap. Again, Research and Development (R&D) requires a science-base sector which is weak or not sufficiently available in developing countries. In the industrialized countries such as the U.S.A public and the private sector engage to perform R&D utilizing specialized governmental facilities regularly having exceptional potentialities not available to the private sector such as equipment, expertise and information. In cases where the information is of high interest to the scientific community at large a Cooperative Research & Development Agreement (CROA) will be structured. This entails sharing information, exchanging personnel, finding technical assistance, utilizing distinctive government laboratory facilities and potentialities, licensing patent and technical know-how, forming consortia and using technology built-up by virtue of government contracts.

Some commentators espouse the view of establishing publicly aided research centers through purchase of patents by governments and set them in public domain. A host of other suggestions are offered such as zero-cost compulsory licensing founded on value and extent of use, a mandatory employer developed research fee to be distributed to researchers, curtailing expenses squandered on excessive marketing, and duplicate research. Moreover, it is suggested that research and development of copycat drugs may militate against the present crisis. This suggestion is structured on the ground that developing countries in reliance on paragraph 39.3 of the TRIPS are entitled to undertake testing to establish the bioequivalence of generic products before expiration of the relevant patent on the premise that protection as regards test data is confined to chemical entities to the effect that usage for second and further applications is permissible.

The conflict between the yearning of the industrialized countries to control the justifications of compulsory licensing and the developing countries to ease and make things easier as regards compulsory licensing typified the TRIPS negotiations. As a compromise article 31 of the TRIPS provides in pertinent part for other use of the subject matter of a patent without the authorization of the right holder, including use by the government or third parties authorized by the government, subject to certain conditions such as assessment of the other use on its individual merits, securing prior authorization from the right holder. However such authorization may be waived in the case of national emergency or other circumstances of extreme urgency or in case of public non-commercial use or in the event that prior to use the right holder declined to provide authorization though reasonable commercial terms were offered.

In a case of anti-competitive practice, prior consultation is not required, and the amount of remuneration will be assessed on the need to correct the said anti-competitive practice. In the case of semi-conductor technology, compulsory licensing shall only be for public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive. The said use shall be non-exclusive, non-assignable, authorized predominately for the supply of the domestic market subject to payment of adequate remuneration to the right holder and adequate protection of the legitimate interests of the authorized person. As a safeguard, the right for judicial review to assess legal validity of the authorization and adequacy of the compensation is provided for. Article 7 entitled objectives sets down a subtle weighing scale between the requirement to recompense inventors and the demand for technological dissemination. It aims at striking a balance that protection and enforcement of intellectual property rights must eventually lead to the promotion of technological innovation and the transfer of technology. Again, article 8 provides that members may adopt the necessary required measures to protect public health and nutrition insofar as such measures are not contravening the provisions as contained in Article 31 of the TRIPS which deal with compulsory licensing.

It is obvious that the TRIPS Agreement does not thoroughly itemize the basis for granting of a compulsory license without prior authorization of the right holder. However, as hereinbefore stated a number of conditions were indicated such as national emergency or other extreme urgency, public non-commercial use, to remedy an adverse anti-competitive practice as determined by a competent judicial and administrative authority. In other instances, such as the case of a dependent patent, prior consultation with the patentee is required unless an unsuccessful effort has been exercised and proved to be futile. The effort must be in line with normal commercial practices. Overriding public interest furnishes the ground for exploitation by the government or any other authorized third party. Failure to supply necessary products such as drugs at affordable prices justifies compulsory licensing within the ambit of public non-commercial use.

Access to drugs at reasonable prices may be difficult to achieve in a country facing financial hurdles, physical and infrastructure barriers, in addition to the information gap. In the same vein, compulsory licensing may be executed by means of parallel importation from compulsory licensees of patent products where the size of the market does not justify local manufacturing. Concomitant to this, a compulsory licensee can export the products to other markets. The said measures are considered to be effective machinery apt to force intellectual property rights holders to sell their protected products of high need at reasonable affordable prices.

In connection with access to essential medicine, developing countries have argued that the TRIPS Agreement does not limit their sovereignty to address epidemics such as HIV/AIDS, tuberculosis, and malaria. They entertain the view that compulsory licensing and parallel importation are permissible objectives that do not violate the TRIPS Agreement. They contend that the Ministry of Health in any developing country may on the basis of national security and the public interest authorize an importer to procure essential drugs not manufactured by the patentee to meet national health requirements. Developed countries, particularly the U.S.A and Switzerland have argued that the only flexibility in the TRIPS Agreement is the deferred implementation periods developing countries can enjoy under the agreement. One would hope that Article 31 is to be given its ordinary sense and is not to be watered down. Any effort to whittle away the privilege conferred by the said article may have a negative impact. Access to essential medicine represents the first dispute between developing and developed countries as regards the TRIPS Agreement. Developed countries adopt the view that high level of intellectual property protection furnishes the needed incentive for investment in research and development which is the paramount guarantee to access to indispensable medicine for all countries. In contrast, developing countries advocate the view that strict construction of the TRIPS Agreement fails to recognize the legitimate interest of these countries.

The ministerial Declaration on TRIPS and Public health adopted by WTO ministers in the Doha Round in December 14, 2001 entitled “Doha Ministerial Declaration” clearly delineates the grounds and conditions under which compulsory licensing may be given and at the same time keeping the TRIPS provisions intact. The yardstick in employing compulsory licensing is an exercise of an assessment of the public interest of working the patent against the public interest in the protection and enforcement of intellectual property rights. The relevant country is obligated to weigh up the competing interests. In light of the predictability needed in the intellectual property regime, the public interest of working the patent must outweigh the public interest in the protection and enforcement of intellectual property. However, such a decision as stipulated in paragraph 27.1 of the TRIPS must be made without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

What is Technology Transfer?

Technology transfer is a process of transferring intellectual property employing the appropriate legal vehicle from one technology developer organization to another innovation-seeking organization to the effect of attaining scientific and technical progress in a specific industry open to the user. The user of the technology may be in a position to enhance the technology further into new products, processes, materials or services as would upgrade the user’s industrial capabilities. The process would ultimately raise the standard of living in a nation, improve quality of life and hence boost up economic growth. Technology transfer is the bedrock of industrial countries economic success. A highly related matter is commercialization which is the mechanism employed to transform an invention into a valuable application in industry or introducing a new product to the market. Technology transfer embraces an array of official and unofficial cooperation between technology producers and technology users. It is not only confined to the transfer of knowledge and technical know-how but it also includes physical devices and equipment. The means employed to obtain technology transfer encompass licensing, information dissemination, technical meetings, joint research, cooperative agreements, cooperative and research development agreements.

The most utilized device to transfer technology is the license contract. A license is a contractual arrangement between the licensor and the licensee by virtue of which the licensor grants the licensee the right to use or develop the technology for a prescribed fee normally termed as a royalty. Licenses fall into three categories, exclusive, partially exclusive and non-excusive. Technology transfer may be defined as the route of moving research into the commercial arena. American universities earn approximately a billion dollars in royalties from science and technology which is thus far only a little bit of the royalties ascribed to gigantic patent licensors such as IBM and Qualcomm. Qualcomm Research and Development (R&D) expenses were $ 252 million in the second fiscal quarter of 2005. The U.S.A has over seven hundred Federal Laboratories which are annually funded at over $24 billions. The U.S.A government finances approximately fifty percent or thereabouts of all R&D in the U.S.A and employs one sixth of U.S.A scientists. The utilization of computers extended from Federal Laboratories to corporate America. The U.S.A government expenditure on R&D surpasses Japan, Germany, France and England collectively. A substantial portion of on-the-shelf government inventions are not yet licensed for commercial operations. On account of the above it is obvious that the process of technology transfer requires a great effort. Opportunities may be on the horizon for developing countries to raise capital if the process of transferring intellectual property proved to be effective.

Does the TRIPS Agreement incorporate any binding provisions by virtue of which developed countries are legally obliged to provide financial assistance and promote technology transfer to developing and least developed countries?

No. TRIPS had been accepted by developing and least developed countries against the transfer of technology and the opening of agricultural markets. As a matter of fact, supported by empirical historical evidence, countries adopted stronger patent protection once they have developed strong technology. However, the ability of a country to choose a level of patent protection that corresponds to its level of technology had disappeared with the TRIPS. Again, technology transfer is a long term process, and in the meantime large sums of money will be transferred from developing to developed countries. It is in the interest of all industrialized countries to reinforce their dominant position in research, technological innovation and industrial protection by strengthening intellectual property rights and pressing for worldwide system.

A stronger and enforceable global system of IPRs would provide principal countries in manufacturing and technology with unfettered authority to determine how innovative products where to be used and by whom. In this respect, it would be difficult to challenge the dominant position of the industrialized countries in research, technological innovation and industrial production. Technology is the main competitive factor. An intellectual property regime characterized by being too open as regards technological and scientific achievements would probably permit developing countries to imitate innovations worked in the industrial world. The competition shown by the NIC countries is considered by countries such as the U.S.A as an unintended transfer of wealth due to lack of strong intellectual property enforcement machinery which gave rise to proliferation of counterfeiting and piracy. It is submitted that a strong IP protection would promote domestic and economic growth by encouraging the inflow of foreign technology and eventually result in an increase of local innovation. However NIC countries continue to maintain weak IP protection due to the strong monopoly power of giant multinational companies. The approach followed by NIC countries does not appear to be a strategic option residing on a trade-off between innovation and imitation. The slow tempo of the dissemination of knowledge due to the monopoly power grip underlies the said approach. The inference is well-nigh irresistible. In the end the industrialized countries would opt for trade rather than to diffuse their technology. Under the circumstances, imitation may be sought as a vehicle to increase dissemination of knowledge to the effect of furnishing the consumer with cheaper cost varieties.

A strong intellectual property regime would ultimately lead to a technological and scientific monopoly prone to maintain the status quo or even reverse the situation and hence pave the way for industrialized countries’ products to dominate the global market. This is made easier by elimination of the obligation to exploit patents locally. Such a change would support multinational companies to recoup R& D expenditure. Under the TRIPS regime patents are an instrument for retaining and increasing industrial capabilities in developed countries while also controlling commercialization of protected goods and services in the rest of the world. If the new intellectual property regime would ultimately lead to market control, the justification for overseas investment may be substantially weakened. On the other hand, the motive to transfer technology or establish productive facilities in the developing world may substantially slacken or disappear. The TRIPS Agreement provides world protection which developed countries have been seeking. It narrows access to technology, and slows down the expected rapid diffusion of new technology to developing countries. The new notion carried in the TRIPS Agreement requires changes in many of the basic principles of the legal systems as developed by international conventions and national legislation. It includes the expansion of new areas such as biotechnology, integrated circuits, computer programs, the universlaization of standards of protection and the strengthening of enforcement mechanism.

What is the phenomenon of counterfeiting and what are its adverse consequences?

Counterfeiting is an illegal use or an infringement of intellectual property rights by imitating trademark goods, copyright goods, patent, and design without the prior authorization of the right owner to effect of causing direct loss to the owner in the form of diminished trade revenue.

The initial process in the direction of global harmonization of intellectual property protection started with the industrialized countries concern, particularly the U.S in combating counterfeit goods. In historical fact, a draft entitled “agreement on measures to discourage the importation of counterfeit goods” was prepared by the U.S.A and EU in 1979. The main purpose was to combat the unfavorable effect of counterfeiting on trade revenues. In 1982 some industrialized countries prepared a draft entitled “the anti-counterfeiting code.” The U.S.A suggested that the said code should be adopted as part of the GATT. However, developing countries under the leadership of Brazil and India contended that intellectual property issues fall outside the ambit of physical goods which is the domain of GATT. They argued that intellectual property deals with intangible property which falls within the jurisdiction of WIPO. The issue raised for consideration is this: what are the effects of importation of counterfeit goods on international trade and whether it could be quantified? The sub-committee on trade of the U.S House of Representatives on the basis of 1983 hearings issued a report supported by a report produced by the International Property Alliance showed huge losses.

The U.S.A with a view to removing the deadlock at the GATT amended in 1984 section 301 of the Trade Act of 1974 authorizing the President to take measures conducive to eradicate “unjustifiable or unreasonable trade practices.” to the effect of making intellectual property unambiguously actionable under Section 301. The U.S.A Trade Representative was assigned the task to make an annual review in order to detect priority foreign countries which deny adequate and effective protection to intellectual property rights or which deny fair and equitable market access to U.S traders. The USTR is required to locate such countries on a priority watch list or a watch list followed by retaliation or sanctions in the form of increased duties, import restrictions and tariff exemptions. The issue of intellectual property protection including counterfeit goods was thoroughly discussed during the Uruguay Round trade negotiations continuing from September 1986 to April 1994 which changed the General Agreement on Tariffs and Trade into the World Trade Organization (WTO). The Uruguay Round incorporated a resolution taken on January 28, 1987 under the title ‘trade related aspects of intellectual property rights including trade in counterfeit goods”. The agreement of World Trade Organization (WTO) was signed on April 1994 by ministers of 125 participating countries at a meeting in Marrakech, Morocco. The TRIPS Agreement was an Annex among a package of 2o agreements; however the phrase “including trade in counterfeit goods” was removed and substituted with a preamble carrying the same purport. The WTO Agreement entered into force on January 1, 1995. The negotiations surrounded the TRIPS Agreement demonstrate that a system of coercive economic retaliation measures could serve enforcement mechanism. .

Counterfeiting adverse effects include loss of sales revenue as would diminish market share, it also acts to devaluate a company’s brand image, and may negatively encroach on a company’s investment in research and development. In some industries such as medicine and spare parts it may pose a serious risk of purchasing poor quality goods. Needless to say, it would do nothing to raise public faith in the probity of the business world if commercial culpable dealings such as that of counterfeiters were to be free from penalty. A report issued by OECD in 1989 has estimated that counterfeiting illegal operations fall within the range of 5 to 7 percent of world trade and have generated about 250 billion in euro. The World Customs Organization report of January 27, 2003 estimated illegal trade at 450 billions in euro. Illegal sale of CDs represented 28% of total sales in 2001.

The World Economic Forum held at Davos on January 2003 supported by government representatives, police authorities and customs departments decided to take tough measures to combat counterfeiting. The Trans Atlantic Business Dialogue has acknowledged counterfeiting and piracy as a priority issue for action between the U.S.A and the EU governments. It has endorsed clamping down measures on infringement of intellectual property rights. OECD member states, industry associations, multinational companies are exerting great efforts to implement new effective initiatives, ideas and programs concerning IP enforcement. A noteworthy happening was the creation of the First Global Congress on combating counterfeiting held in Brussels in May 2004. It was attended by the World Customs Organization (WCO), the Interpol, the International Trademarks Association (INTA), World Intellectual Property Organization (WIPO) and Global Business Leaders Alliance (GBLAC) a coalition of 15 major multinational corporations. In the said Congress, the question of counterfeiting has been carefully canvassed. The Global Congress urges a public-private partnership for pursuing more concrete actions, undertaking joint studies focusing on the means to avoid barriers and to structure much more effective machinery prone to materialize in a proper enforcement of IP, particularly in hot-spot countries.

It is pertinent to indicate that an efficient global IP protection is a complex issue, as it does not operate to meet the economic interest of each and every government which is obliged to strictly implement the requisite enforcement measures. Global innovative pursuits would probably entail large international profits, but the level of technological development in each country determines the capacity to capture these profits. The economic situation of the less developed countries, lacking manufacturing capacity, may encourage counterfeiters to imitate, to capture as a minimum, a fraction of the international profits resulting from others research pursuits. However, as a matter of fact imitation occurs in middle income, newly industrialized countries (NIC) having the sufficient imitation capacity due to the fact that innovative activities are ever more witnessed. The main reason behind imitation is that the trade-off between innovation and imitation is not very similar for all countries. Imitation offers the opportunity to acquire some profits in the event local innovation is not paying. It should be observed that even in countries where intellectual property has been implemented for a considerable time, legal protection and enforcement still requires great efforts.

There is one final reflection on all this and that is that, the grave situation which encourages counterfeiters and faces companies producing state- of- the- art products is the quality of the counterfeit goods. When the quality of a counterfeit product is higher compared to an old generation product, the consumer is likely to prefer the counterfeit product. The poor consumer would find a substitute and the richer consumer will pay less price. As a foregone conclusion the old generation product would be turned out of the market. In such an instance a counterfeit product would drive prices down.

What is a patent?

A patent is a collection of exclusive monopoly rights granted by a state to an invention for a specified period of time normally 20 years from the date of filing.

How is protection achieved?

Patent grants are territorial in nature. Each country grants its own patents. Countries and regions differ significantly in terms of scope of patents granted, exemptions, examination systems, evidence required to challenge patents validity, susceptibility of system to political abuse. Thus, a thing as an international patent is not yet recognized, however, a number of international treaties establish some consistency and minimum standards. Many of the international treaties are calculated to afford some recognition of filing dates to patent application filed in one country. Inventors are permitted 12 months from the date of their filing in their home country to file the application abroad. Systems such as the Patent Cooperation Treaty (PCT) permit inventors a cost effective way to secure further delay as regards national stage filing as it is often called. At present there are a number of international treaties governing patents. However, the most worldwide of these is the WTO TRIPS Agreement. Countries not yet signatories to the said agreement aim at bringing their intellectual property laws into compliance with TRIPS. Nonetheless, the place of patent systems in international treaties is uncertain. Again, there are vague parts at the intersection of such treaties such as TRIPS and the Convention on Biological Diversity.

What does an invention mean?

An invention means a new product or process resulting from an inventive activity and is capable of industrial application. Again, an invention constituting an improvement upon a patented invention is patentable, provided that it is new, results from an inventive activity and is capable of industrial application.

What are the exclusions from patentable subject-matter?

Principles and discoveries of scientific nature shall not be considered to be inventions. Scientific theories and mathematical algorithms are not per se patentable because they do not show the prerequisite of a manner of manufacture. The same applies to ideas, schemes and plans. Accordingly, a biological entity may be patentable if the technical interference of man has resulted in an artificial situation which does not occur in nature. A chemical stuff or microorganism which is discovered in nature without any practical application can not be considered a subject matter patentable. Patents can not be validly obtained in respect of inventions the publication or exploitation of which would be contrary to public order and morality.

Are methods and processes patentable?

The effect of a patent is to provide the patentee the exclusive right of utilizing the invention. Thus a patent concerning an item may also secure protection for processes of producing or using that article. Industrial application refers to all fields of technology where the application is subjected to commercial usage.

What is the scope of the right?

The patent shall confer upon its registered owner, where the subject matter of the patent is a product, the right to preclude third parties who do not have his consent from the act of making, importing offering for sell, selling or using the product. In the event the subject matter is a process, the proprietor is entitled to preclude third parties who fail to secure his consent from the act of using that process and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process. The scope of protection conferred by the patent shall be determined by the terms of the claim. The description and drawings included in the patent shall be used to interpret the claim. The purposive construction is invariably accepted by most legal systems as a legal approach to claim interpretation. The rationale behind this canon of construction is to determine the true scope of the claims as they would be read by a person skilled in the art without knowledge of particular alleged infringement acts. The rights under a patent shall only extend to acts done for industrial or commercial purpose.

What does novelty mean?

An invention is new if it does not form part of the state of the art before the date of filing. No identical invention has been publicly disclosed in publication anywhere and at anytime whatever.

Prior art encompasses everything made available to the public by way of a written or oral description or by use, or by any other means before the date of filing of the Sudan patent application or the priority date validity claimed in respect thereof..

Prior state of the art does not keep out new uses of known material or compositions from patentability.

What does an inventive activity mean?

Inventiveness or an inventive step signifies that the invention has prominent substantive features, compared to the prior state of the art, as to represent a notable progress in the area of the invention. It is not obvious to a person skilled in the art

In determining the inventive activity as prescribed under s.5 the invention compared with the prior state of the art should indicate a difference either to the method, the application, the combination of methods or the product which it concerns, or as to the industrial result it produces. The objection must indicate objectivity and must show the problem that it has tackled and solved.

What are the contents of the description?

The description shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the relevant field.

The description or the specification must encompass the claims that define the invention. That is to say, the specification must identify the scope of protection called for by the applicant.

The specification must identify the technical field within the ambit of which the invention falls, the background art the applicant considers useful for comprehending the invention. Again, the specification must disclose the invention as claimed in clear wording that the technical problem and the attendant solution can be easily discerned, together with any meritorious effects of the invention as compared to the background art. It must also indicate that the invention is capable of industrial application.

What is the function of claims?

The claim or claims shall define the protection thought and shall be clear and concise having the requisite description support, that is to say technical terms, legal terms delineating the monopoly thought must be clear and concise. The same applies to grammatical construction. General terms of vague sphere may not be entertained in the claims even when they are terms which the addressee might be in a position to discern for performance purposes.

The claims shall not exceed the content of the description. Claims may include in particular.

Apart from claims for one or more products, claims for one or more manufacturing processes for the product or products and claims for one or more applications of the product or products.

Apart from claims for one or more processes, claims for means of working the process or processes and claims for the product or products which result from the working and claims for the application of such products.

In the event of several claims, they shall be numbered consecutively in Arabic numerals.

What does first to file mean?

The applicant must be the first person to file his patent. He does not need to be the first person who has made the invention.

What are the types of Applications?

The bulk of applications are filed by way of the Patent Cooperation Treaty (PCT). A provisional application needs only have a description of the invention. The applicant has 12 months from the date of filing a provisional application to file a complete application. A complete application should include a full description of the invention accompanied by claims, and an abstract having a summary of the invention being disclosed. A complete application may have as its foundation one or more provisional applications. The priority date of a patent claim is significant in telling whether the requirement for patentability of an invention has been satisfied. The requirement of novelty and an inventive step are evaluated against the prior art as it existed before the priority date. The priority date is normally the date on which a provisional application is filed, or the date on which an application is filed in another member jurisdiction. A PCT application designates all the jurisdictions that are parties to the PCT application, as well as the Sudan and secures an international priority date.

What does a divisional application signify?

In most legal systems the

Application for a patent shall relate to only one invention. Accordingly, subsequent to an assessment of a patent application, a patent examiner discovers that an applicant has claimed more than one invention in the application; the applicant may choose to file a divisional application. A divisional application signifies a new application divided from the original application. A divisional application permits the applicant to utilize the priority date as shown in his original application. Divisional application may work in instances where the original application has not been lapsed, refused or withdrawn at the time the divisional application has been filed. A divisional application may assert a subject matter not included in the original application insofar as all the features of at least one of the claims were shown in the original application. However, a divisional application must be filed within a period of three months so as to benefit from the date of the filing of the original application. In the event the Patent Office invited the applicant to submit a divisional application with a view to restricting the original application to one invention, and the applicant fails so to do, not patent shall be granted.

What does invalidity mean?

A patent may be challenged by any person prior to acceptance of a patent application or after acceptance of a patent application by the Patent Office. Again, a patent may be revoked after being granted and registered.

What are the grounds for patent opposition?

Any person prior to acceptance or after acceptance and grant of a patent may challenge the patent right on the ground of usurpation to the effect that the applicant for the patent has wrongfully obtained the invention or any part thereof by way of filching i.e. theft. Any person may initiate legal proceeding after the patent has been granted requesting revocation on the following grounds:

  1. That the subject of the patent is not patentable within the terms as prescribed under the law. .
  2. That the description of the invention or the claim or claims in the patent does not satisfy the requirements as prescribed under the law. .
  3. That for the same invention, a patent has already been granted in the country as a result of a prior application or for an application benefiting from an earlier application.

Why examination by the court may be initiated?

Examination by the court provides a mechanism by virtue of which the validity of a patent may be challenged. The main issue relevant to the court examination is to determine whether the patent claimed in the patent application is novel or involves an inventive step. Again, whether the patent holder in entitled to the patent or breached a condition in the patent. On account of the court examination one or more of the claims in a patent may be amended as directed by the court. The court has the authority to revoke an issued patent either in whole or in part… Naturally an application for revocation of a patent is filed in a counter-claim to a claim of infringement, however, revocation of a patent may be prayed for by any person separately of infringement proceedings.

What are the methods of enforcement?

Enforcement takes place via infringement proceedings Infringement materializes if a person engages in an activity in relation to which a registered owner is granted exclusive rights. The registered owner may institute legal proceedings designed to prevent the infringement or to prohibit its constitution. The registered owner may have the following remedies:

  • An injunction to prevent the infringement.
  • Seizure and destruction of the infringing products or the machinery used for the making of such products.
  • Damages or any other sanction provided for under the law such as an account for profits

What are the advantages of a PCT Procedure.?

The PCT procedure is a procedure planned to abridge the process of filing foreign patent applications. By virtue of article 11 of the PCT an international application designating any contracting party shall have priority from its international filing date, as if it is a national application for a patent normally filed in the patent office of that state. The scheme of filing an international patent under PCT affords the facility to safeguard the prospect to get a patent in any or all PCT contracting countries. Yet again, the PCT procedure presents the plus of acquiring an international search report and an international preliminary examination (IPE). The international search report is performed by international searching authorities. It permits the applicant to weigh up the probability of acquiring patent protection in the designated countries. The international preliminary examination is performed by the International Preliminary Examination Authority (IPEA) grounded on the international search report. The IPE furnishes the applicant with comprehensive information regarding the patent before incurring the high cost of entering the national stage. In the end, the IPE is reliable; however, it is not obligatory. The final assessment as to the patent grant vests in the national or regional offices designated in the international application. A national application is expected to be made within 20 months from the date of an international application, if only an international search report is carried out by searching authorities. In this instance, the delay gives an applicant 8 months before having to satisfy national demands than by employing the PCT procedure. However, if the applicant elected to utilize the international Preliminary Examination option, the national application shall be made in the designated countries within 30 months from the priority date of the international application.

What is the core of trademark protection?

The main purpose underlying the protection of a trademark is to serve the function of indicating the origin of goods and services. In effect a trademark distinguishes the origin of goods and services of a person from those of other persons and conveys the goodwill and history as would ensure customer’s satisfaction. On account of this your trademark may be your undertaking’s most valuable property.

Is prior use required before applying?

Under the Sudanese law registered trademarks are protected as personal property rights. There is no requirement to have used the mark before applying. One of the great advantages of registration, under Sudanese law, is to be able to secure legal protection before beginning the mark itself.

Why a trademark must be capable of representation?

To be registered as a trademark a sign must be capable of representation in a visible form. A   visible sign is any sign capable of being represented graphically to the effect of distinguishing goods or services of persons from those of other persons. Visible signs typically include invented or existing words, names, pseudonym, brand, arbitrary or fictitious description, letters, numerals, pictures or any symbols or combinations of these signs. Invented words, a host of devices including logos which have no pictorial contents to call up other associations are inherently distinctive.

What are the statutory Relative objections?

Denial for registration of a trademark may be based on relative statutory grounds or absolute statutory grounds. The relative grounds concern conflicts in connection with marks and signs that may arise between applicants for marks and owners of earlier rights. Subject to consent of the interested third parties the following marks would not be registered.

  • marks which resemble other marks already validly filed or registered by a third party or by a party validly claiming priority in respect of the same goods or of other goods in connection with which use of such marks may likely mislead the public.
  • Marks which constitute reproduction or an imitation or a translation likely to mislead the public or to create confusion with a well known mark which belongs to a third party.
  • Marks which infringe other third party rights or contrary to the rules for the prevention of unfair competition. Third party rights such as the right to a trade name or a copyright or a registered design.

What are the absolute Statutory Objections?

  1. Trade marks which are devoid of any distinctive character, that is to say they lack the capacity to distinguish. This materializes when the mark is so simple such as a star or a letter or too complicated or merely a slogan consisting of a recommendation to use or buy the goods. A trade mark lacks distinctiveness when it becomes in general use or becomes so associated with the type of goods to the extent of becoming a generic description of those goods. Arbitrary marks are the best choice when selecting a trade mark since they have no meaning associated with the owner’s products or services.
  2. Trade marks that designate characteristics of the goods or services such as quality, geographical origin, intended purpose value, the time of production of goods or rendering services, or other characteristics of goods or services. Again, trademarks that incarnate shapes resulting from the nature of the goods themselves would not be registered. This is because it is least likely that satisfactory distinctiveness can be shown. The same applies to shapes of goods necessary to get a technical result or provide substantial value to goods.
  3. Trademarks which consist exclusively of signs or indications which have become customary on the current language or in the bona fide and established practices of the trade of the country, a customary designation of the goods concerned. However, objection may be defeated by countervailing evidence if actual use has been proved to the effect that in fact as a result of use the mark has acquired a distinctive character. Nonetheless, Marks which are unavoidably descriptive or geographical could not be registered even if there is conclusive evidence that in trade they were understood to be the applicant trademark. In respect to geographical origin no person should acquire exclusive rights in a geographical name without convincing evidence that the name has been appropriated to trademark purposes by actual use. If the public conceives the name as to indicate the locality from which the goods come or in which they were conceived or designed, the objection to registration must arise.
  4. If the trade mark is contrary to public policy or accepted principles of morality.
  5. If the trade mark is of such a nature as to deceive the public in connection with the nature, quality or geographical origin of the goods or services.
  6. Trade marks which resemble or depict the portrait of a character of any religious or any sectarian significance or which involve the use without relevant authorization of armorial bearings, flags and any other state emblems.
  7. Use of a trademark contrary to law would not be entertained. For example a use which is contrary to Consumer Protection Law such as using tobacco marks in connection with other goods or services.

What does classification mean?

When registering a trademark you need to specify the products and services that will be connected with your trademark. Classification is an administrative measure calculated to support the process of searching. The Trade mark Act permits separate registration for marks in respect of each of 42 categories of goods and services laid down in the international classification of goods and services which was recognized in accordance with the NICE arrangement of 1957 and its subsequent revisions. Insofar as many classes are wide, the applicant is expected to specify the goods and services within a class for which registration is considered. The registrar has a final power to decide the class in which particular goods and services are to be located. A single application may be submitted in respect of goods or services in different classes, though still with additional fees for each class

What are the substantive grounds for trademark opposition?

Opposition proceedings provide an opportunity for interested parties to oppose the registration of a mark or the opportunity for its cancellation after registration. In the event the trademark office reaches a conclusion that the trademark can be registered it will publish the trade mark in the Official Gazette of the Office with an indication of the time limit within which an opposition may be filed. Accordingly, an opposition can be launched, in the event an application is advertised as accepted, by any interested person whether resident in the Sudan or outside the Sudan within six months or eight months respectively from the date of such advertisement. An opposition must contend at least one of the following substantive grounds of objections:

  • That the trade mark is not entitled to registration under the provisions of the Trade Marks Act. This may include that the applicant is not the first user in the Sudan and the opponent may be able to rely upon the priority which is conferred by Article 4 of the Paris Convention that the period of priority which binds the other countries of the Union is for a period of six months.
  • That the mark has been obtained by fraud.
  • That at the date of application there was no bona fide intention to use the mark or that the applicant has effectively abandoned his mark.
  • The opposition shall be supported by evidence normally in the form of affidavit; however the Registrar may as he deems fit request oral evidence in addition to the affidavit. The Registrar shall send a copy of the notice of opposition to the applicant, and the applicant is bound within the prescribed time to submit a counter-statement of the grounds on which he relies for his registration. In case the applicant fails to respond, his application shall be deemed to have been abandoned. However, in the event a counter-statement has been furnished by the applicant, the Registrar shall send a copy to the person having given notice of opposition. The decision of the Registrar either at ex parte or inter parte shall be subject to appeal to the Commercial Court. The Registrar decision may include permission of registration subject to amendments, modifications or limitations (if any). In the event of rival claims as regards identical marks, the registrar may refer the issue to the commercial court. In determining the rights of the parties; the court shall have regard to the date of registration in the country of origin and the priority of user of the mark in the Sudan. After final decision of the court granting registration, the Registrar shall subject to any conditions proceed to register the mark and shall issue a certificate of registration. The mark when registered shall be registered as on the date of application and such date shall be deemed to be the date of registration.

What is the duration of protection?

Initial registration and each renewal of registration of a Trade mark shall last for ten years and will then fall due for renewal at ten- yearly intervals for as long as the mark does not fall liable to revocation, principally for non-use. Renewal must be made within six months before expiration of such term or any subsequent term of ten years. However at the time of renewal no change shall be made in the mark or the list of the goods in respect of which the mark is registered except that goods may be eliminated from the list. A period of grace of six months shall be allowed for the renewal of a registered trademark after its term has expired subject to payment of a charge for the delay.

What are the rights conferred by registration?

The owner of a duly registered trade mark shall have the exclusive right to put off all third parties not having the owner’s permission from using in the course of trade identical or similar marks to those in respect of which the mark is registered where such use would result in a possibility of confusion.

What does infringement mean?

The classic infringer uses another duly registered trade mark or a confusingly similar sign as a trade mark to indicate the source of the goods or services. In a market where competitors are free to utilize legal means, this unwarranted conduct should be disallowed. If it is not prevented, it would ultimately cause loss to owners. Again, consumers would lose confidence in the market and the possibilities of product demarcation will collapse.

What are the types of infringements?

Use in the ordinary course of trade of a sign identical to the trade mark of another proprietor for identical goods or services. As regards this type of infringement, it is not necessary to show any likelihood of confusion. This type of infringement is the simplest case, insofar, as the marks are identical and that the goods and services fall within those specified in the registration.

Use in the ordinary course of trade of a sign similar to the trade mark of another proprietor. As regards this type the touchstone is similarity rather than identity. The plaintiff must establish that there exists likelihood of confusion on the part of the public in associating the trade mark of the plaintiff with those of the defendant.

Where a trade mark has a reputation in the Sudan, it would be infringement to use an identical or a similar sign for dissimilar goods or services where such use of the sign is without due cause and has taken unfair advantage of or is detrimental to the distinctive character or the repute of the mark. The other’s use of the mark after the owner’s mark becomes famous would ultimately cause dilution of the distinctive quality of owner’s mark. This type of infringement arises where the reputation of the mark is such that the use of the mark would take unfair advantage of that reputation or would be detrimental the reputation or to the distinctive character of the trade mark.

What is an industrial design?

S.2 of the Sudan Industrial Design Act defines an industrial design as any composition of lines or colors formed to give a special appearance to any industrial or hand made product or to any plastic form whether or not it is restricted to color on condition that, the form or composition can be used as an industrial design or handicraft design. A registered design is a monopoly right for the appearance of the whole or a part of a product resulting from features such as lines, contours, colors, shape, texture or materials of the product or its ornamentation. A complex product may include component parts such as parts of a car. Such products can embrace graphic, symbols, logos, displays, packing. Thus, the scope of what is meant by a design is very wide and mainly falls into two categories whether the design is two dimensional or three dimensional.

What is the Importance of an industrial design?

The expansion of mass production of articles by means of the industrial process spawned the need for the protection of the ornamental aspects of goods. The design or shape of a product reflects the image of the company. It may be identical with the company’s branding. It can become an asset having momentary value and susceptible to increase in value. In the event you slacken to protect your design others may benefit from your design. An industrial design is an applied art whereby the aesthetics and usability of products may be enhanced. Design features individualized by the industrial designer may embrace the total form of the object, the position of details as regards another, textures, colors, sounds, and ergonomics. The features that are included in the article must appeal to the eye to the effect of having an attractive consequence on the eye chiefly the eye of a potential buyer. Usually through the application of industrial design, a product’s appeal to the consumer is very much enhanced. An industrial design may be the reason that a particular product is chosen or desired. Design protection prevents competitors from using the same or a strongly similar design and especially where a design has been copied.

What is the difference between a three dimensional trademark and a design?

A registered three dimensional trademark protects the distinctiveness of the sign as regards other existing signs in use for the same products or services. On the other hand, the design protects the novelty and the individual character of a product. Accordingly, the characteristic of novelty does not apply in the case of a trademark. Again, the characteristic of distinctiveness does not apply to a design. A trademark registration period has not time limit, while a registered design has a maximum registration period of 15 years.

What is the difference between a patent and a design?

A patent protection covers an innovative function having an industrial application. The nature of the invention must be identified in the specifications and in particular in the claims which define the monopoly right and are addressed to a person skilled in the art. On the other hand, a design covers only the appearance of a product. In view of that, a design can not protect the function of the product.

What does design publication mean?

The Industrial Design Office shall publish registered industrial designs in the order of their registration showing all the requisite details.

A search free of charge can be made for the records of industrial designs including all related dealing in connection thereof.

An applicant for registration may require that his lodged industrial designs be kept secret for a period not exceeding 12 months from the date of application. In such an instance the industrial design must be forwarded in an envelope sealed with red wax

How to maintain a priority claim for a design?

An applicant for registration of an industrial design may benefit from priority of an earlier application filed in another country which is a party to the Paris Convention.

A statement must be attached to the application indicating the date and number of the earlier application and the country in which it was filed and the name of the applicant.

The statement must be forwarded within three months from the date of the late application.

A copy of the earlier application certified as being correct by the responsible authority on the country where such application was filed.

Is there any limit to the number of designs for one application?

The application may contain from 1 to 50 industrial designs, provided however that the product to which the design is applied must belong to the same Locarno class, that is to say the products must relate to the same type of goods.

What is the difference between the Hague system and the domestic system?

The Sudan system is a national system while the Hague system is an international system. The latter system is structured on the Hague Agreement which confers protection by filing a single application with the World Intellectual Property Organization. The system is applicable only to countries which are parties to the convention. The applicant must specify the states in which protection is thought.

What are the substantive conditions governing protection?

The types of design which could be registered must satisfy the following conditions:

  • Novelty, in the sense of being new. S.7 (1) stipulates that only new designs shall enjoy the protection provided for in the Act. This signifies that the design must not be similar to any design which has already been made available to the public. at any place and by any means
  • An industrial design shall not be considered new if because it only contains minor differences from preceding industrial designs. This signifies that the design must have an individual character to the effect that the general impression it generates on an knowledgeable user of the design must be different from the overall impression brought on such user by any design which has already been available to the public

How to apply for a registered design?

In the Sudan an application is filed at the Industrial Designs Office which is part of the Intellectual Property Registrar General Office. The reproduction of the industrial design usually includes drawings and/or photographs or other graphic representation which demonstrate all features of the design. Therefore, for a three dimensional article a number of different views may be fitting. In the event, the design explicitly applies only to part of an object, this should be designated. Designs are not limited to specific articles and may embrace any article made to that design. Nonetheless, it is necessary to designate an object to which the design is usually applied.

What protection conferred by registration?

A registered design grants monopoly rights to the effect of precluding other people from producing the same design or a similar design whether or not they have copied your design. However, the rights conferred by registration of an industrial design shall extend only to acts done for industrial or commercial purposes.

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