Post on 08-Jan-2018
description
Intellectual Property and Other Legal
Issues
Chapter Five
The Concept of Intellectual Property
IP Incentive TheoryIncentives to invent
Incentives to disclose
Incentives to commercialize
Patents It must have utility. (It must be
useful with a practical purpose.) It must not contain prior art. It must
be novel in an important way that is not known by others and not previously published for public consumption.
It must be non obvious to someone with ordinary skills in the field of invention. For example, it cannot be the logical next step in a known process.
Five Classes of Patents1. Machine or something with moving parts or circuitry (e.g., fax, rocket, photocopier, laser, electronic circuit).
2. Process or method for producing a useful and tangible result (e.g., chemical reaction, method for producing products, business model).
3. Article of manufacture (e.g., furniture, transistor, diskette, toy).
4. Composition of matter (e.g., gasoline, food additive, drug, genetically altered life-form).
5. A new use or improvement of something from the first four categories.
Types of Patents Utility patents
Functional part of a machine or process Business method patents
A form of utility patent under the classification of process
Design patent Visual ornamental characteristics of an article of
manufacture Plant Patent
New and distinct varieties of asexually reproducing plants
An Effective Patent StrategyEstablishes a temporary monopoly
First-mover advantageImproves financial performance
Majority of assets reside in IP – use as revenue generators
Save money by using as bargaining chipsIncreases competitiveness
First mover advantage Can be licensed Patents of competitors yield important intelligence
When and If to Patent
Patent Infringement When a party other than the inventor or
legal licensee makes and sells a product that contain every one of the elements of a claim in the patent
Successful prosecution of an infringer will result in a reasonable royalty and an injunction to prevent further use
Defendants bear the burden of proving the patent is invalid
Courts tend to favor inventors
Trademarks Symbol, logo, word, sound, color, design, or other
device used to identify a business or product
Holder has right to exclude others from using confusingly similar marks Counterfeiting and misappropriation Infringement, when a mark can cause confusion Dilution, when use dilutes the value of the mark to
the owner
For valid trademark, must show intent-to-use or that the mark is in use in country commerce.
Protecting TrademarksThe standard for judging trademark
infringement is the likelihood of confusion
Trademarks are adjectives that describe – they are not the product
Monitor all uses of the company’s trademark and make sure it is used correctly
Trade SecretsInformation such as formulas, patterns,
devices, etc. that derive value from not being known and are not readily ascertainable.
Any information commonly known or in common use cannot be a trade secret
Conveys the right to prevent others from copying, using, and benefiting from the secret.
CopyrightsProtects artistic works Protect the original works of authors,
composers, screenwriters, computer programmers, and other developers of creative works.
Work must be in a tangible formCopyright notice is not required
© Copyright 2012 by [name of copyright holder]
Licensing Intellectual Property
Licensing: a grant to another party that permits development, manufacture, distribution, and use of the licensor’s IP.
Advantages of licensing Platform technologies have too many
applications for one company to handle Inventor company does not have the
resources to develop applications May be more profitable Reach multiple markets without the
expense of distribution channels
Licensor’s Perspective Decide what will be licensed Define the benefits to the licensee Determine the value of the license
The economic life of the IP Potential for direct competition Potential for negative government legislation or
regulation Changes in market conditions that might obsolete the
technology Conduct market research Screen candidates Manage the license
Licensee’s Perspective Search for the right technology
Does the technology work in the way the licensor claims? On what measures are the performance data calculated? Will the licensor provide any guarantees of the
technology’s performance? Is the technology completely owned by the licensor or
does the licensee also have to be concerned about another party and their role in the process?
Prepare a business plan Negotiate the type of license
Exclusive Non-exclusive
Intellectual Property Protection
In Ethiopia
In Ethiopia … Ethiopia has enacted laws for the
protection of Inventions, Literary and artistic works, Distinguishing marks and new plant varieties Through patents, copyright, trademarks and
plant breeders’ rights Ethiopia is also party to several
international intellectual property agreements
Intellectual Property Laws in Ethiopia
Traditional Knowledge (Access Genetic Resources No. 482), Proclamation, 2006 - Proclamation No. 482/2006 Access to Genetic Resources and Community Knowledge, and Community Rights Proclamation
Copyright, Law (Proclamation), 24/07/2004, No. 410 - Proclamation No. 410/2004 on Copyright and Neighboring Rights Protection
Industrial Designs (Proclamation No. 123/1995), Regulations, 10/12/1996 - inventions, Minor Inventions and Industrial Designs Regulations (Proclamation No. 123/1995)
Industrial Property, Law (Proclamation), 10/05/1995, No. 123 - Proclamation No. 123/1995 concerning Inventions, Minor Inventions and Industrial Designs
Industrial Property (Science and Technology Commission), Law (Proclamation),1994, No. 91 - Proclamation No. 91/1994 to Provide for the Establishment of the Ethiopian Science and Technology Commission
Other (Transfer of Technology), Regulation, 1993, No. 121 - Council of Ministers Regulations to Regulate the Transfer of Technology No. 121/1993
Patent in Ethiopia “Inventions, Minor Inventions and
Industrial Designs” Proclamation was enacted in 1995 with the objective of encouraging local inventive activities
A patent is given in Ethiopia for 15 years (and additional five years if the patentee works the invention in the country.)
Included in the country’s patent law is the protection of minor inventions through utility model certificates and the protection of designs through industrial design registration certificates.
TrademarksEthiopia has issued a Trademark Law in
July 2006 for the protection of signs which distinguish goods or services
The registration of a trademark in Ethiopia shall remain valid for a period of seven years
A trademark which is entitled to protection under an international convention to which Ethiopia is a party
In Ethiopia In Ethiopia the law does not permit
illegal copying of books, music tapes or computer software for business purposes
The exceptions are copying of the mentioned works for personal use, for the purpose of teaching and for use in libraries, museums and other similar institutions
Need For a Lawyer Entrepreneurs needs to be aware of any
regulations that may affect his or her new venture. At different stages of the start-up there will be a
need to seek legal advice. The legal expertise required will vary based on such
factors as whether the new venture is independent start-up, a buyout, consumer versus industrial product, a franchise, nonprofit, or involves exporting or importing
By being aware of when and what legal advice is required, the entrepreneur can save time and money.
Business RegistrationFor a business to operate legally there is a need
for registration and getting a license from the appropriate regional and/or federal government body.
For registering a business there are different requirements. Examples: the legal form of the business, its size, and
the sector of operation. The entrepreneur needs to determine the
requirements from the appropriate government body or business formation advisors.
Product Safety and LiabilityProduct liability problems are complex and
are important consideration for entrepreneurs
Claims regarding product liability usually fall under one of the following categories: Negligence, Warranty, Strict Liability or Misrepresentation
The best protection against product liability is to produce safe products and to warn consumers of any potential hazards
InsuranceIt is in the best interests of the
entrepreneur to purchase insurance in the event that problems do occur.
It is important for the entrepreneur to not only determine what kind of insurance to purchase but also to determine how much to purchase and from what company.
Seeking advice from an insurance agent is often difficult because the agent is trying to sell insurance.
TaxesTax is one of the legal
concerns of entrepreneursThere are many kinds of taxes
that entrepreneurs have to withhold and/or pay to the government.
TaxesTaxes can be classified into two as direct
taxes and indirect taxes.Direct taxes include personal income,
business profit tax, tax on income from rental of building, tax on interest income on deposits, dividend income tax, tax on income from royalties etc.
Indirect taxes include turnover tax, value added tax (VAT), excise tax, and customs duty.
Taxes Entrepreneurs need to know the
taxes that apply to their business and to which category of taxpayers they belong.
There may be a need to get advice
from experts on how to manage taxes.
End of Course Lecture