Primer on the IP Code

8/2/2019 Primer on the IP Code

1/23


2/23

INTRODUCTION

When the first men invented the wheel, Who did what? was afairly straightforward question. Nowadays, in our age of economic glo-balization, rapidly changing technologies and skyrocketing populationrates, it is impossible to come up with the answer without stumblingacross the term intellectual property rights.

Intellectual property rights was an item long ago included inthe General Agreement on Tariffs and Trade during the Uruguay Round.Amidst the new economic order taking shape the world over, everymember country then was asked to construct the legal architecture forits protection.

In June 1997, the Philippines responded with the enactment ofRepublic Act No. 8293 or the Intellectual Property Code of the Philip-pines, at once hailed as one of the most comprehensive laws on thematter. Notwithstanding its importance and the fact that it is now overfive years old, up to this day only a few (mostly lawyers, scientists andtechnocrats) have at least an understanding of the Codes key provi-sions.

Patents, industrial designs, trademarks and service marks, copy-right and related rights, geographical indications, layout-designs of in-tegrated circuits, and undisclosed information. Not to mention, utilitymodels and plant varieties. The average person would not actually knowwhat these terms mean, let alone the term intellectual property.

Thus, the need for this primer that comes in a neat question-and-answer format to apprise the public on the subject, the law meant topreserve and promote it, and the new intellectual property system thatlaw laid. In addition, this primer showcases the Intellectual PropertyOffice (IPO), the premier body tasked to promote and protect intellec-tual property rights.

Corollarily, this publication aims to afford entrepreneurs and sci-entists alike an overview of the various protections the law affords themas well as the requirements (in registration and licensing, for instance)which are of immense value in managing their present and future ven-tures and researches.


3/23

At the minimum, however, this publication simply aims to encour-age the support of everyone in upholding and preserving each onesright to his intellectual creation. Indeed, this purpose is in line with the

Macapagal-Arroyo Administrations vision of building a strong repub-lic based on solid and strong institutions which, needless to say, in-clude the IPO.


4/23

TABLE OF CONTENTS

Introduction ---------------------------------------------------------------------- i

The Law on Intellectual Property ------------------------------------------- 1

What is Intellectual Property ------------------------------------------------ 1

The Intellectual Property Office & Allied Agencies -------------------- 4

Procedures --------------------------------------------------------------------- 6Terms of Protection ----------------------------------------------------------- 11

Going International (Treaties)------------------------------------------------ 12


5/23

1

THE LAW ON INTELLECTUAL PROPERTY

What is the current Philippine law on Intellectual Property?

The current law on Intellectual Property is Republic Act No. 8293

which was approved by then President Fidel V. Ramos on June 16, 1997

and took effect on January 1, 1998. The law is also known as the Intellectual

Property (IP) Code of the Philippines.

INTELLECTUAL PROPERTY

What is Intellectual Property?

The law, among others, defines intellectual property as consisting of:

1) Patents;2) Industrial Designs;3) Trademarks and Service Marks;4) Copyright and Related Rights;5) Geographical Indications;6) Layout-designs (Topographies) of Integrated Circuits; and7) Protection of Undisclosed Information.

Hence, the law provides protection for the aforementioned subjects.

In addition to the list, the current intellectual property right system provides

protection to utility models under the IP Code and to new plant varieties

under Republic Act No. 9168 which was signed into law and took effect on

July 20, 2002.

What is a Patent?

A Patent is a grant issued by the Philippine Government giving an

inventor the right to exclude others from making, using or selling his invention

within the Philippines in exchange for his patentable information or disclosure

(Quid Pro Quo). Under the current statute, the right includes the exclusion

of others from importing the invention.

Patents, in many jurisdictions, refer to titles granted to inventions only.In the Philippines, patent had been used in its generic sense, to include titlesto inventions, utility models and industrial designs. Under the new IP Code,the meaning of patent is made to refer to the title granted to protect an invention


6/23

2

defined as any technical solution of a problem in any field of human activitywhich is new, involves inventive stepand is industrially applicable. Itmay be, or may relate to, a product, or process, or an improvement of any of

the foregoing.

What is the First-to-File Rule in Patents?

The First-to-File Rule provides that if two or more persons have madethe invention separately, the right to the patent shall belong to the personwho filed an application for such invention, or where two or more applicationsare filed for the same invention, to the applicant who has the earliest filingdate or the earliest priority date.

What is a Utility Model?

A Utility Model is any technical solution of a problem in any field ofhuman activity which is newand industrially applicable. A utility modelmay be, or may relate to, a useful machine, an implement or tool, a productor composition or an improvement of any of the foregoing.

What is an Industrial Design?

An Industrial Design is any composition of lines or colors or anythree-dimensional form, whether or not associated with lines or colors;provided, that such composition or form gives a special appearance andcan serve as a pattern for an industrial product or handicraft.

What is a Trademark?

A Trademark is a system providing protection for mark, collective markand tradename.

Mark means any visible signcapable of distinguishing the goods(trademark) or services (service mark) of an enterprise and shall include astamped or marked container of goods.

Collective mark means any visible signdesignated as such inapplication for registration capable of distinguishing the origin or any other

common characteristics, including the quality of goods or services of differententerprises which use the sign under the control of the registered owner ofthe collective mark.

Tradename means the name or designation identifying ordistinguishing an enterprise.


7/23

3

What are Copyrights and Related Rights?

A Copyright is the protection extended to expressionsand not to

ideas, procedures, methods of operation or mathematical concepts. Suchexpressions may be in the form of literary, scholarly, scientific and artistic

works.

Related Rights refer to the protection extended to derivative works,

to include among others, dramatizations, translations, adaptations,

abridgements, arrangements, and other alterations of literary or artistic works.

What are Geographical Indications?

Geographical Indications are indications that identify a good as

originating in the territory of a country or a region or locality in the territory,where a given quality, reputation, or other characteristic of the good is

essentially attributable to its geographical origin.

What is a Layout-design of integrated circuits?

A Layout-design is synonymous with topography and means the

three-dimensional disposition, however expressed, of the elements, at least

one of which is an active element, and of some or all of the interconnections

of an integrated circuit, or such a three-dimensional disposition prepared for

an integrated circuit intended for manufacture.

Integrated Circuit means a product, in its final form or an

intermediate form, in which the elements, at least one of which is an active

element, and some or all of the interconnections are integrally formed in

and/or on a piece of material and which is intended to perform an electronic

function.

Layout-designs of integrated circuits are not industrial designs in the

sense of the laws providing for the registration of industrial designs because

they do not determine the external appearance of integrated circuits.

Moreover, layout-designs of integrated circuits are not normally patentable

inventions because their creation does not require an inventive step, althoughit requires a great amount of work by an expert.

What is Undisclosed Information?

Natural and legal persons may prevent information lawfully within their


8/23

4

control from being disclosed to, acquired by, or used by others without theirconsent in a manner contrary to honest commercial practices so long assuch information:

a. Is secret in the sense that it is not, as a body or in preciseconfiguration and assembly of its components, generally known among orreadily accessible to person within the circles that normally deal with thekind of information in question;

b. Has commercial value because it is secret; and

c. Has been subject to reasonable stepsunder the circumstances,by the person lawfully in control of the information, to keep it secret.

What Plant Varieties shall be qualified for protection?

Plant varieties that are new, distinct, uniform and stable are qualifiedfor protection.

THE INTELLECTUAL PROPERTY OFFICE& ALLIED AGENCIES

Did the IP Code created an office to administer and implement the

policies declared in its provisions? If yes, what are its functions?

Yes. The IP Code created the Intellectual Property Office (IPO) whichhave the following functions:

a. Examine applications for grant of letter patents for inventions andregister utility models and industrial designs;

b. Examine applications for the registration of marks, geographicindications, and integrated circuits;

c. Register technology transfer arrangements and settle disputesinvolving technology;

d. Transfer payments covered by the provisions of Part II, ChapterIX on Voluntary Licensing and develop and implement strategies to promoteand facilitate technology transfer;

e. Promote the use of patent information as a tool for technologydevelopment;


9/23

5

f. Publish regularly in its own publication the patents, marks, utilitymodels and industrial designs, issued and approved, and the technologytransfer arrangements registered;

g. Administratively adjudicate contested proceedings affectingintellectual property rights; and

h. Coordinate with other government agencies and the private sectoron efforts to formulate and implement plans and policies to strengthen theprotection of intellectual property rights in the country.

What is the organizational structure of the IPO? To what departmentdoes it belong?

The Office is headed by the Director General and is assisted by two

(2) Deputies Director General.

The Office is divided into six (6) bureaus, each of which is headed bya Director and assisted by an Assistant Director. These bureaus are:

1) Bureau of Patents;2) Bureau of Trademarks;3) Bureau of Legal Affairs;4) Documentation, Information and Technology Transfer

Bureau;5) Management Information System and EDP Bureau; and6) Administrative, Financial and Personnel Services Bureau.

Formerly, the IPO was under the Department of Trade and Industryas provided in RA 8293; now it is under the Office of the President as perExecutive Order No. 39 issued on October 2001.

Other than the Intellectual Property Office, what other governmentagencies are involved in the registration of certain intellectualproperty rights?

The other agencies involved in the registration of certain intellectualproperty rights are:

1) The National Library and the Supreme Court Library whereincertain copyrightable works shall be for the purpose of completing theirrecords be registered and deposited with them; and

2) The National Plant Variety Protection Board wherein new plantvarieties may be registered with.


10/23

6

PROCEDURES

How may one apply for a patent, trademark, utility model and industrial

design at the IPO?

PATENT APPLICATION

1. Application for Invention Patent

The application for grant of patents for inventions must be filed withthe Bureau of Patents (BOP) of the IPO. All applicants shall submit a requestfor the grant of a patent together with the description and the claims of invention.

2. Formality and Search Examination

Upon receipt of the application, the examiner shall check if theapplication satisfies the formal requirements needed for the grant of a filingdate. The date of filing is very important under the present First-to-FileSystem because it serves to determine, in case of a dispute with anotherapplicant for the same invention, who has the right to the patent.

3. Publication of Unexamined Application

After the formality examination, search and classification in the field oftechnology to which the invention is assigned, the application together withthe results of the search (which contains a list of published patent applications

or issued patents for inventions identical or equivalent to those claimed bythe application) will be published in the IPO Gazette after the expiration of 18months from the filing date or priority date.

After the publication of the application, any person may presentobservation in writing concerning the patentability of the invention. Suchobservation shall be communicated to the applicant who may comment onthem.

4. Request for Substantive Examination

Substantive Examination is conducted upon request and must

be filed within six (6) months from the date of the publication. The applicationis considered withdrawn if no request is made within that period. If theexaminer finds reason to refuse the registration of the application, i.e. theapplication is not new, inventive or industrially applicable, the BOP shall notifythe applicant of the reason for the refusal/rejection eventually giving theapplicant the chance to defend or amend the application.


11/23

7

5. Decision to Grant Patent or Decision of Refusal

If the examiner finds no reason for refusal of the application, or if the

notice of reason for refusal is satisfactorily complied with by amendment orcorrection, the examiner shall issue a decision to grant the patent, otherwise

the examiner shall refuse the application.

6. Inspection of Records

The grant of a patent together with other information shall be publishedin the IPO Gazette within six (6) months. Any interested party may inspectthe complete description, claims and drawings of the patent on file with theIPO.

7. Appeal

Every applicant may appeal to the Director of Patents the final refusalof the examiner to grant the patent within two (2) months from the mailingdate of such final refusal. The decision or order of the Director shall becomefinal and executory 15 days after receipt of a copy by the appellant unlesswithin the same period, a motion for reconsideration is filed with the Directoror an appeal to the Director General is filed together with the prescribed fee.

TRADEMARK APPLICATION

1. Application for Trademark Registration

The application for registration of a trademark must be filed with theBureau of Trademarks (BOT) of the IPO. All applicants shall submit thefollowing indications and elements in English or Filipino to be granted a filingdate:

a. An express or implicit indication that the registration of a mark

is sought;

b. The identity of the applicant;

c. Indications sufficient to contact the applicant or his representative,

if any;

d. A reproduction of the mark whose registration is sought;


12/23

8

e. The list of goods or services for which the registration issought;

f. The payment of the prescribed filing fee.

2. Formality and Examination

Upon receipt of the application, the examiner shall examine if theapplication complies with the formal requirements.

3. Substantive Examination

The examiner shall perform substantive examination for a trademarkapplication. He shall check the distinctiveness and registrability of the markbased on the law.

The IP Code provides that a mark cannot be registered if:

a. The trademark is identical with a registered mark belonging to adifferent proprietor or a mark with an earlier filing or priority date;

b. The trademark is identical with, or confusingly similar to, or

constitutes a translation of a mark which is considered by a competent

authority to be well-known internationally, whether or not it is registered here,

as being already the mark of a person other than the applicants and used

for identical or similar goods or services; or

c. The trademark consists of the flag or coat of arms or other insigniaof the Philippines or any of its political subdivisions, or of any foreign nation,or any simulation of it.

If the examiner finds that the application fails to meet any of these

requirements, the BOT shall notify the applicant of the reason for the refusal/

rejection. The applicant, shall within a period of 60 days from mailing date of

the notice complete or file an opinion and/or amendment to the application

as required, or else the application shall be deemed withdrawn.

4. Allowance or Refusal of Application for Trademark Registration

If the examiner finds no reason to refuse the application, or if the noticeof reasons for refusal is satisfactorily complied by amendments/orcorrections, the examiner shall recommend allowance for the mark and thesubsequent publication of the mark for opposition.


13/23

9

5. Post-Grant Opposition System

After allowance by the examiner, the application is published inthe

IPO Gazette to give all interested parties an opportunity to oppose theregistration of the trademark by petition with the IPO Bureau of Legal Affairs.The period to file an opposition is one month from the date of the application.If no opposition is filed within the said period and upon payment of theprescribed fee, the Certificate of Registration will be issued. The issuanceof the certificate shall be published in the IPO Gazette and shall be enteredin the records of the IPO.

6. Appeal

Every applicant for the registration of a mark or other mark of ownership

may, upon the final refusal of the examiner to allow registration, appeal the

matter to the Director of Trademarks within two (2) months from the mailing

date of the action under appeal. The decision or order of the Director shall

become final and executory 15 days after receipt of a copy of it by the appellant

unless within the said period, a motion for reconsideration is filed with the

Director or an appeal to the Director General is filed together with the payment

of the required fee.

The decision of the Director General is appealable to the Court of

Appeals. If the applicant is still not satisfied with the decision of the Appellate

Court, applicant may appeal to the Supreme Court.

UTILITY MODEL/ INDUSTRIAL DESIGN APPLICATION

1. Application for Utility Model or Industrial Design

The application for registration of utility model or industrial design mustbe filed with the BOP of the IPO. All applicants shall submit a request forregistration of the utility model or industrial design together with thedescription, claims, drawings, or a pictorial representation disclosingcompletely the utility model or industrial design, and the prescribed fee.

2. Formality Examination

The utility model or industrial design shall be examined as to thecompleteness of the requirements for the grant of a filing date. Under thepresent First-to-File System, the date of filing is very important because itdetermines in case of a dispute with another applicant for the same or


14/23

similar utility model or industrial design, who has the prior right and istherefore entitled to the registration of the utility model or industrial design.

3. Applicants Action on the Formality Examination Report

Within two months from the mailing date of the formality examinationreport, the applicant may:

a. convert the utility model applicationfor an invention patent;

b. withdraw or amendthe application;

c. request for a registrability report; or

The registrability report shall be given to the applicant within two (2)months from receipt of the request and payment of prescribed fee from theapplicant. The report must contain citations of relevant prior art documentswith appropriate indications as to their degree of relevance which will serveas an aid to the applicant or to third parties including judicial and quasi

judicial bodies in the determination of the validity of the utility model or industrialdesign claims in respect to newness.

d. not actin anyway

If the application meets all the formal requirements for registration andthe BOP does not receive any action from the applicant, the utility model or

industrial design application will be published in the IPO Gazette. If theapplicant has previously requested for a registrability report, the publicationshall include the registrability report.

4. Effects of Adverse Information

Within two (2) months from publication of the utility model or industrialdesign application, any interested party may request the Director of Patentsfor a registrability report and/or furnish the Director of Patents information,evidence or data in writing and under oath, showing that the utility model orindustrial design is not new.

The Director of Patents may require such third party to submit relevantand collateral facts or data to substantiate the information. Within two (2)months from receipt of the request and/or adverse information, he will decidewhether or not to register the utility report, if one has been requested. Hemay also issue a registrability report on his own within the same two-month

period.

10


15/23

5. Registrability of the Utility Model or Industrial Design

If the applicant satisfactorily complied with the requirements, the

Director of Patents issues the registration of the utility model or industrialdesign.

If the Director of Patents receives no adverse information within the

two-month period from publication, he will certify to that effect and direct the

preparation and issuance of the certificate of registration with effect as to

the date of publication of the utility model or industrial design application.

Any interested party may file a petition for cancellation with the IPOs

Bureau of Legal Affairs to oppose the registration of the utility model or

industrial design.

6. Appeal

Every applicant may appeal to the Director General the final refusal of

the Director of Patents to register the utility model or industrial design by

filing a notice of appeal and payment of the prescribed fee.

The decision of the Director General is appealable to the Court of

Appeals. If the applicant is still not satisfied with the decision of the Appellate

Court, he may appeal and elevate his case to the Supreme Court.

TERMS OF PROTECTION

What are the terms of protection for intellectual property rights?

The terms of protection are as follows:

a. For Patent, the term of protection is 20 years from the filing date

of the application. The patent shall, however, take effect on the date of the

publication of the grant of the patent in the IPO Gazette. Furthermore, to

maintain the effectivity of a patent, the annual fee shall be paid upon theexpiration of four (4) years from the date the patent application was published,

and on each subsequent anniversary.

b. For utility model, the term of protection is seven (7) years from

the filing date of the application.

11


16/23

c. For industrial design, the term of protection is five (5) years

from the date of application. The term may be renewed for not more than

two (2) consecutive periods of five (5) years from the filing of the application.

d. For trademark, the term of protection is 10 years from the filing

date of the application, provided that a declaration of actual use is filed within

three (3) years from the filing date and within one (1) year after the 5th

anniversary from the same filing date. The term can be extended by indefinite

renewals.

e. For layout-designs, the term of protection is 10 years from thefiling date of the application.

f. For copyrights, the term of protection is generally the lifetime of

the author and 50 years thereafter. The term is from the moment of creation.Certain related rights may have shorter terms.

g. For new plant varieties, the period of protection for trees and

vines is 25 years from the date of the grant of the certificate of registration.

For all other types of plants, the period of protection is 20 years.

After the term of protection of a certain intellectual property has lapsedor expired, does the intellectual property become public property?

After the term of protection of a certain intellectual property has lapsed

or expired, the intellectual property becomes public property.

As for a lapsed/expired patent, anybody can make, use, sell or import

the product, like the pharmaceutical paracetamol.

GOING INTERNATIONAL (Treaties)

Is the Philippines a member of international treaties or conventions

related to intellectual property? If yes, what are those treaties or

conventions that include the Philippines as a member?

Yes. The international treaties or conventions related to intellectual

property and which count the Philippines as a member are:

1. Convention Establishing the World Intellectual PropertyOrganization (WIPO)(since 1980)

12


17/23

The WIPO is an intergovernmental organization based in Geneva,Switzerland, and is responsible for the promotion of the intellectual propertythroughout the world through cooperation among States, and for the

administration of various Unions, each founded on a multilateral treaty anddealing with the legal and administrative aspects of intellectual property.

2. Paris Convention for the Protection of Industrial Property (since1965)

The Paris Convention applies to industrial property in the widest

sense, which includes inventions, marks, industrial designs, utility models

(a kind of small patent provided for by the laws of some countries), trade

names (designations under which an industrial or commercial activity is

carried on), geographical indications (indications of source and appellations

of origin) and the repressions of unfair competition.

The substantive provisions of the Convention fall into three main

categories namely; the national treatment, right of priority and the common

rules.

3. Budapest Treaty on the International Recognition of the Depositof Microorganisms for the Purposes of Patent Procedure (since 1981)

The main feature of this treaty is that a contracting state which allows

or requires the deposit of microorganisms for the purposes of patent

procedure must recognize, for such purposes, the deposit of a microorganismwith any international depositary irrespective of whether such authority

is on or outside the territory of the said state.

Disclosure of the invention is a requirement for the grant of patents.

Normally, an invention is disclosed by means of a written description. Where

an invention involves a microorganism or the use of a microorganism,

disclosure is not possible in writing but can only be effected by the deposit

with a specialized institution of a sample of the microorganism in particular

regarding the inventions relating to food and pharmaceutical fields.

Thus, in order to eliminate the need to deposit in each country inwhich protection is sought, the Treaty provides that the deposit of a

microorganism with any international depositary authority suffices for

the purposes of patent procedure before the national patent offices of all

contracting states and before any regional patent office (if such regional

office declares that it recognizes the effects of the Treaty).

13


18/23

What the Treaty calls an international depositary authority is ascientific institution, typically a culture collection which is capable ofstoring microorganisms. Such an institution acquires the status of international

depositary authority through the furnishing by the contracting State in theterritory of which it is located of assurances to the Director General of WIPOthat the said institution complies and will continue to comply with certainrequirements of the said Treaty.

4. Berne Convention for the Protection of Literary and Artistic Works(since 1951)

This Convention rests on three basic principles and contains series ofprovisions that determines the minimum protection to be granted, as well asspecial provisions available to developing countries which want to make use

of them namely:

a. Works originating in one of the contracting states (that is, works

which where first published in a particular state and of which the author is a

national) must be given the same protection in each of the other contracting

states as the latter grants to the works of its own nationals (principle of

national treatment);

b. Such protection must not be conditional upon compliance withany formality (principle of automatic protection);

c. Such protection is independent of the existence of protection in

the country of origin of the work (principle of independence of

protection). If, however, a contracting state provides for a longer term

than the minimum prescribed by the Convention and the work ceases to be

protected in the country of origin, protection may be denied.

5. Rome Convention for the Protection of Performers, Producers ofPhonograms and Broadcasting Organizations (since 1984)

This Convention secures protection in performances of performers,phonograms of producers and broadcasts of broadcasting organizations.

However, the Rome Convention allows exceptions in national laws tothe abovementioned rights as regards private use; use of short excerpts inconnection with the reporting of current events; ephemeral fixation by abroadcasting organization by means of its own facilities and for its ownbroadcasts and use solely for the purpose of teaching or scientific researchand in other cases, except for compulsory licenses that would be incompatible

14


19/23

with the stipulated provisions of the Berne Convention. Furthermore, once aperformer consented to the incorporation of his performance in a visual oraudio-visual fixation, the provisions on the performers rights have no more

application.

The protection under this convention last at least until the end of a

period of 20 years computed from the end of the year in which (a) the fixation

was made, as for phonograms and for performances; (b) performances

took place, but performances are not incorporated in phonograms; and (c)

the broadcast took place as for broadcast. National laws however provides

for a 50-year term of protection, at least for phonograms and for performances.

6. Agreement on Trade-Related Aspects of Intellectual Property

Rights (TRIPS Agreement) (since January 1995)

The TRIPS Agreement, one of accords under the agreement

establishing the World Trade Agreement (WTO) requires, among others,

minimum standards concerning the availability, scope and use of the

intellectual property rights covering copyrights and related rights, trademarks,

geographical indications, industrial designs, patents, layout-designs

(topographies) of integrated circuits, protection of undisclosed information

and control of anti-competitive practices in contractual licenses.

7. Patent Cooperation Treaty (PCT) (since August 2001)

This Treaty makes it possible to seek patent protection for an inventionsimultaneously in each of a large number of countries by filing an

international patent application. Such an application may be filed by anyone

who is a national or resident of a contracting state. It may generally be filed

with the National Patents Office of the contracting state of which the applicant

is a national or resident, or at the applicants option with the International

Bureau of WIPO in Geneva. If the applicant is, however, a national or resident

of a contracting state which is party to the European Patent Convention, the

Harrare Protocol on Patents and Industrial Designs (Harrare Protocol) or

the Eurasian Patent Convention, the international application may also be

filed with the European Patent Office (EPO), the African Regional Industrial

Property Organization (ARIPO) or the Eurasian Patent Office (EAPO)respectively. This Treaty regulates in detail the formal requirements with

which any international application must comply.

Among all the contracting states, the applicant indicates those in whichhe wishes his international application to have effect (designated states).

15


20/23

The effect of the international application in each designated state is thesame as if a national patent application had been filed with the national patentoffice of that state. Where a designated state is party to the European Patent

Convention, the applicant may and in the case of Belgium, Cyprus, France,Greece, Ireland, Italy, Monaco and the Netherlands, must opt for the effect ofa European patent application. Where a designated state is party to theEurasian Patent Convention, the applicant may opt for the effect of a Eurasianpatent. Where a designated state is party to the Harrare Protocol, the applicantmay and in the case of Swaziland, opt for the effect of an African RegionalIndustrial Property Organization (ARIPO) patent application. Where adesignated state is a member of the African Intellectual Property Organization,the effect of the designation is automatically that of a regional applicationfiled with African Intellectual Property Organization.

The international application is then subjected to what is called an

international search which is carried out by one of the major patentoffices and results in an international search report, which is a listingof the citations of published documents that might affect the patentability ofthe invention claimed in the international application. If this internationalapplication is not withdrawn, it shall be published by the International Bureauand communicated to each designated office together with the internationalsearch report.

If the applicant decides to continue with the international applicationwith a view to obtaining national or regional patents, he can wait until the end

of the 20thmonth after the filing of the international application or, where that

application claims the priority of an earlier application until the end of the 20thmonth after the filing of that earlier application, to commence the nationalprocedure before each designated office by furnishing a translation (wherenecessary) of the application into the official language of that office and payingfor its usual prescribed fees. This 20-month period is extended further byanother 10 months where the applicant chooses to ask for an internationalpreliminary examination report, a report which is prepared by one of themajor patent offices and which gives a preliminary and non-binding opinionon the patentability of the claimed invention. The applicant is also entitled toamend the international application during the international preliminaryexamination.

8. Internet Treaties WIPO Copyright Treaty, WIPO Performances &Phonograms Treaty (2002)

These treaties deal with the intellectual property rights of performers(actors, musicians, singers etc.) and producers of phonograms or the

16


21/23

persons or legal entities that took the initiative and had the responsibility forthe fixation of the sounds. They are dealt with in the same instrument becausemost of the rights granted to performers are rights connected with their fixed,

purely aural performances which are the subject matter of phonograms.

Specifically, these treaties grant performers four (4) kinds of

economic rights in their performances fixed in phonograms (not in

audiovisual fixations, such as motion pictures) namely:

a. Right of reproduction which is the right to authorize direct or

indirect reproduction of the phonograms in any manner or form;

b. Right of distribution which is the right to authorize the making

available to the public of the original and copies of the phonograms through

sale or other mode of transfer of ownership;

c. Right of rental which is the right to authorize the commercial

rental to the public of the original and copies of the phonogram as determined

in the national law of the contracting parties except for countries that since

April 15, 1994 have enforced a system of equitable remuneration for such

rentals; and

d. Right of making available is the right to authorize the making

available to the public, by wire or wireless means, any performance from a

place and a time individually chosen by them. This right covers in particular,

on-demand, interactive, making available through the Internet.

These treaties also grant three (3) kinds of economic rights to

performers with respect to their unfixed (live) performances namely:

a. Right of broadcasting except in the case of rebroadcasting;

b. Right of communication to the public except where the

performances is a broadcast performance; and

c. Right of fixation.

Finally, these treaties grant performers moral rights namely:

a. Right to claim to be identified as the performer; and

b. Right to object to any distortions, mutilations or other modification

17


22/23

that would be prejudicial to the performers reputation.

As far as producers of phonograms are concerned, these treaties

grant them four (4) kinds of rights (all economic) in their phonograms namely:the right of reproduction; the right of distribution; the right of rental; and theright of making available. These are the same rights given to performers andeach of them is an exclusive right although subject to certain limitations andexceptions.

On the other hand, as far as both performers and producers ofphonograms are concerned these treaties provide that both enjoy the rightto a single remuneration for the direct or indirect use of such phonograms,for the publication of such for commercial purposes, for broadcasting or forcommunication to the public. The term of protection under these treatiesmust be at least 50 years. The enjoyment and exercise of the rights providedcannot be subject to any formality.

The treaties oblige the contracting parties to provide legal remediesagainst the circumvention of technological measures used by performers orphonogram producers in connection with the exercise of their rights andagainst the removal or altering of information, such as the indication of certaindata that identify the performer, the performance, the producer of thephonogram, and the phonogram, necessary for the management (e.g.,licensing, collecting and distribution of royalties) of said rights or rightsmanagement information.

Furthermore, the treaties oblige each contracting party to adopt, inaccordance with its legal system, the measures necessary to ensure theirapplication. In particular, the contracting parties must ensure that enforcementprocedures are available under their laws so as to permit effective actionagainst any act of infringement of rights. Such action must include expeditiousremedies to prevent infringement and remedies that constitute deterrents tofurther infringements.

18


23/23

Date post:	06-Apr-2018
Category:	Documents
Upload:	ian-layno
View:	219 times
Download:	0 times

Primer on the IP Code

Documents