Team Green Presents:

WIPO Intellectual Property Handbook: Policy, Law and Use. Chapter 6

Green Team Members

Robert Fox

Seygourney Gilbert

Jarius Glover

Odaine Godson

Morris Harrington

Jessica Herd

Introduction

WIPO Intellectual Property Handbook

Chapter 6

Administration and Teaching of Intellectual Property

Table of Contents

Administration of Industrial Property

Administration of Copyright and Related Rights

The Patent and Trademark Attorney

The Teaching of Intellectual Property Law

Administration of Industrial Property

Discusses the organizational structures which need to be established by the government of a country for industrial property laws to operate effectively fall into three categories: Bodies operated directly as part of the

government machinery (Industrial Property Office and a Policy Unit)

Bodies outside the government machinery but which may call for government supervision (Patent and trademark agents)

Special arrangements in the courts

The Industrial Property Office

Often called the Patent Office for short, even though it handles trademarks and designs as well as patents.

A Government institution

May be organized as a semi-autonomous body, able to recruit and train its own staff on its own terms, to control its own fees and other charges and to manage its own finances (No restrictions on funding)

Structure

Current trend is to group all the industrial property activities under one authority. Allows having managers with specific technical

and operational knowledge and experience at certain levels but liberates others to concentrate on primarily management issues.

Reduces the number of managers requiring in-depth knowledge of industrial property.

Presents the possibility of shared services, often reducing costs and the amount of equipment and office space required.

Directorate General

Directorate General – is the authority to which all the organizational centers report. Also called:

Commissioner of Patents,

Registrar of Trademarks

The Patent Office

Tasks: Receiving applications for the grant of patents

and deciding, separately of each application, whether a patent should be granted or refused

Deal with the renewals of the patents granted

The Trademark Office

Tasks Receiving applications for the registration of trademarks

and service marks and deciding, separately for each application, whether registration should be effected or refused.

Deal with requests for the renewal of existing registrations.

Give information, at the request of any member of the public, on the existence, in its register, of trademarks or service marks that are identical or similar to a sign in resect of which that member of the public requests the information.

The Industrial Designs Office

Tasks: Receiving applications for the registration of

industrial designs and deciding, separately for each application, whether registration should be efffected or refused.

Renewal

Intergovernmental Cooperation

TREATIES:

The Patent Cooperation Treaty (PCT) - multilateral treaty for the filing of international patent applications. Under the PCT, international patent applications may be filed in any of the national industrial property offices of the member States, with the European Patent Office, or directly with WIPO.

The Madrid Agreement Concerning the International Registration of Marks and the Protocol relating to the Madrid Agreement Concerning the International Registration of Marks are two multilateral treaties for the registration of marks.

Treaties Continued

The Hague Agreement Concerning the International Deposit of Industrial Designs establishes a system of deposit of industrial designs with the International Bureau of WIPO.

Since 1973, WIPO and the United Nations Economic Commission for Africa (ECA) have been collaborating to assist the governments of English-speaking African countries in their efforts to harmonize and develop their industrial property systems to create the appropriateintergovernmental structures

Treaties Continued

The North American Free Trade Agreement (NAFTA) between the United States of America, Canada and Mexico entered into force on January 1, 1994. One of its main objectives is to provide adequate and effective protection and enforcement of intellectual property rights.

Administration of Copyright and Related

RightsRole:

The administrative role of the State in the field of copyright and related rights varies greatly from country to country. In general terms, it is, in most countries, far less important than in the field of industrial property. This is mainly due to the fact that the international protection system is based on the principle of automatic protection, according to which the enjoyment and exercise of copyright must not be subject to any formality, such as registration, deposit or the like.

Collective Management of Copyright and Related

RightsThroughout the world, the rights of creators

such as writers and music composers are known to be their personal rights or, if those rights have been legally transferred, the rights of the new owners. They form part of the individual rights provided for in Article 27 of the Universal Declaration of Human Rights of December 10, 1948. They are called exclusive rights in the Berne Convention for the Protection of Literary and Artistic Works.

In the field of copyright and related rights, the experience of recent years has increasingly confirmed that the individual exercise of rights is impractical in cases where users need rapid access to a large number of works. Collective management organizations, also frequently called authors’ societies, therefore play an important and very useful role for authors, composers and performers as well as for users. This is why they have experienced considerable development in parallel to the increased use of works made possible by new technology.

The Patent and Trademark Attorney

Industrial property agents deal generally with all matters in the field of industrial property, to the extent permitted by their national laws, and especially with the following three: the filing and processing of applications for

patents for invention (and utility models where applicable), trademarks and industrial designs, and the maintenance of their registration;

advising in matters relating to industrial property rights, including unfair competition, licensing, know-how and transfer of technology;

litigation in all fields of industrial property.

The Functions of a Patent Agent

The professionals who practice the profession most commonly known as that of “patent agents” can also be called, depending on the circumstances and the particular country, “patent attorneys” or “industrial property agents” or “attorneys.”

Their basic function is to offer the following professional services: advice in the initial phase of the explanation and definition of the

right; service and performance in the phase of the acquisition of the

right; representation and advice in the phase of the maintenance and

working of the right and in the period of possible conflicts which may arise in connection with obtaining and/or protecting the right.

Corporate Patent Attorneys

A patent department in a corporation usually consists of both technical and clerical staff and is, in many cases, headed by a patent attorney

While the main function of a patent attorney’s office is often limited to proceedings for the acquisition of industrial property rights, the scope of the business of the corporate patent department covers a much wider field including legal, business and commercial considerations.

Corporate Patent Attorneys Continued

filing and processing applications;

searches and monitoring;

prior art documentation;

coordination with the research and development division of the corporation and with patent attorney’s offices;

licensing and related negotiations;

maintenance of rights;

training of any personnel who are or may become involved with industrial property matters;

assignment of inventions for reward under remuneration systems;

prosecuting and defending infringement suits.

The Functions of a Trademark Agent

The trademark agent performs the same functions for trademark owners, as patent agents perform for patent owners. In some countries both groups of functions are performed by the same agents.

In some cases, a trademark agent works with an enterprise as a member of the legal staff. In such a capacity, he gives advice on trademark matters directly to executive officers and conducts such business as the registration and renewal of trademarks, trademark licensing and the elimination of infringements.

Conclusion: The Teaching of Intellectual

Property Law A renewed awakening of the role of intellectual property in

the countries of the various regions of the world has led more recently to the adoption or revision of national legislation on patents for inventions, industrial designs, trademarks, copyright and related rights and the transfer of technology, as well as to the establishment or modernization of government structures that administer such legislation. At the same time, the legal profession, consisting of law officers in the various government ministries, judges and legal practitioners, are attempting to respond to the need for a better understanding of the problems presented by the new technologies and by the new technological means of communication of information and ideas and of their impact on industry and commerce and on the quality of life.