Intellectual Property Rights - Chapter 7 - BIT - IT5104

Chapter 07 - Intellectual Property Rights

IT5104: Professional Issues in IT

OpenArc Campus – BIT Sem V - PIIT

Patents, Confidential Information, Trademarks and

Domain names

Patents

Temporary right (20 years), granted by the state, enabling an

inventor to prevent other people from exploiting his invention

without his permission. Even if they have discovered it for

themselves.

Unlike copyright, it does not come into existence automatically.

the inventor must apply for the patent to be granted. (NIPO)

•Encourage new inventions

•Encourage the disclosure of those new inventions

Paris Convention

Advantages Patentee will have

As a solution to above patentee will have

• Government will grant a temporary monopoly on the

commercial use of their invention.

• The temporary monopoly also gives the inventor a

chance to recover the expenses made during the

development of his invention.

• They could then set a high price and make a nice profit

as there will be no other competitors for that temporary

period.

Inventors are often hesitant to reveal the details of their Invention,

for fear that someone else might copy it.

• They could also request money from others in return for a

license to practice the invention. The licensing income then

provides extra income.

What can be Patented

If the work

• is new;

• involves an inventive step;

• is capable of industrial application;

• is not in an area specifically legally excluded.

An Invention is a practical solution to a problem in technology. An

invention may relate to a product or a process.

NIPO

‘New’ means that it must not should be publicly used or disclosed.

‘Inventive’ means that the invention should not be obvious. Must

not be something that anyone reasonably competent in the field

would have produced if faced with the same requirements.

What can be Patented

The requirement that the invention is capable of ‘industrial

application’ is simply a requirement that the invention must

have a practical application.

What cannot be Patented

• Discoveries, scientific theories and mathematical methods;

• Plants, animals micro organisms other than transgenic micro

organisms and an essentially biological process for the

production of plants and animals other than non biological and

micro-biological processes;

• Schemes, rules or methods for doing business, performing

purely mental acts or playing games .

• Methods for treatment of human or animal body by surgery or

therapy and diagnostic methods practiced on human or animal

body.

• Inventions which are necessary to protect public order,

morality including human animal or plant life, health, or to

avoid serious prejudice to environment.

• A literary, dramatic, musical or artistic work or any other

aesthetic Creation.

• The presentation of information.

What cannot be Patented

Patents for Software

Softwares are usually protected by Copyrights. (Sri Lanka also)

To make it patented, different countries taken it differently.

In USA, software can be patented, if…

• It is part of a product that is itself eligible to be patented.

• It controls a process that has some physical effect.

• It processes data that arises from the physical world.

Issues related to patents

Patents are not helpful to small companies. Even if they can

afford to file for patents, they cannot afford to defend their

patents or defend themselves against invalid claims for

patent infringement coming from large companies.

Confidential Information

Obligation of Confidence

result of a specific clause in contracts

Non Disclosure Agreements (NDA)

Protection of trade secrets

Avoid for personal benefits, for monetary value, as a retaliation.

Enable a competitor to gain a considerable advantage.

Official Secrets Act. (Sri L

anka)

Confidential Info in Employment

Why having a Notice Period in Leaving Employment

One reason is to avoid issues related to confidential information.

It is common for working people who are likely to have sensitive

knowledge about the organization (Marketing, Finance), to be

employed on contracts of employment that comparatively long

periods of notice (typically three or six months). Other areas

usually have one month notice period.

When a employee give a notice, they being immediately removed

from the sensitive work and assigned to such important and

worthy tasks as reorganizing the company's technical library which

are not sensitive.

NOT Confidential Info in Employment

Confidential information doesn’t include professional skills and

expertise gained from the employment.

Ex : If as part of your employment, you learn to code in Java or to

design using UML you take these skills with you and you are

entitled to use them in your new employment.

For public interest, confidential information can be disclosed,

complaining malpractice on the part of their employer. But there

is no legal framework for protection over the whistle blower yet.

Whistle Blowing Situation

Whistle Blowing Situations

But in many Professional Body code of conducts clearly mention

that, for the public interest you should blow the whistle. But not

for personal gain.

It is reasonable to blow the whistle in following situations.

• a criminal offence;

• failure to comply with a legal obligation;

• a miscarriage of justice;

• danger to health and safety;

• environmental damage:Freedom of Expression

(Fundamental Right in Sri Lankan

Constitution)

Most of the employers encouraged workers to raise the matter

internally, and also developed organization procedure to

handle those kind of situations ethically.

If only the internal route has proved ineffective, it may be

appropriate to disclose the information to a professional body

or to a public official.

Whistle Blowing Situations

Trade Marks

• Any sign capable of being represented graphically, which is

capable of distinguishing goods or services of different

enterprises.

• A trade mark may, in particular, consist of words (including

personal names), designs, letters, numerals or the shape of

goods or their packaging.

• Registration is valid for a period of 10 years. Need to be

renewal. Marks registered in Sri Lanka are valid only in Sri

Lanka as Sri Lanka still not sign for the relevant convention.

™ ®℠

NIPO

Functions of a mark

(a) Distinguishes the goods or services of its owner from those

of others

(b) Indicates the source of the goods or services

(c) Individualizes the goods or services of the owner

(d) Enables the owner to reach the customers

(e) Helps the consumers to make the choice in the market etc.

Unregistered marks can be protected under the

unfair competition law or common law action

for passing off.

Popular trade marks

Nokia tune

• Apply a unauthorized registered trade mark (that a registered

trade mark that you do not own or do not have the owner's

permission to use) to goods;

• Sell or offer for sale (or hire) goods or packaging that bear an

unauthorized trade mark;

• Import or export goods that bear an unauthorized trade mark;

• Have in the course of business, goods for sale or hire goods

(or packaging) that bear an unauthorized trade mark.

Offences

In most circumstances, the offence will be criminal and punishable

by a fine or up to two years' imprisonment. However. the trade mark

owner can also bring civil proceedings to claim for the financial

damage he may have suffered.

Registered Trade Marks

It is highly recommended for register the mark. The registration of

the mark, gives its owner exclusive right to use it, assign it and

license it. You can enforce these rights easily and effectively through

court- civil or criminal or both. You can  refrain others from using

your mark or a mark deceptively resembling your mark. You are

even entitled to claim damages.

MTN Networks (Pvt) Ltd

filed suit against an individual

Dialog GSM

Vs

Dualog Phone Centre

Lanka Spice Limited McCurrie

VsMcDonanald

Trade Marks for Software

Trade marks are an effective way of protecting retail package

software from piracy.

Given that pirated software can be distributed over the internet

with no physical packaging, it is desirable to display the trade

mark prominently when the software is loaded, as well as

displaying it on the packaging.

Domain Names

Domain names need to be easily remember and need to be a way

of identifying a business.

Typically domain name is a way of advertising and marketing.

So companies like to use their trade marks or their company names

as their Internet domain names.

http://67.23.249.138 http://sarasavi.lk/

ICANN – Internet Corporation for Assigned Names and Numbers

• Manage Internet domain names.

• Its main responsibility is to ensure ‘universal resolvability’

(having  globally unique – same domain name should always

lead to the same internet location) of Internet address.

• They delegates the responsibility to regionally respective bodies

and coordinates them. (lk domain registry)

ICANN

Cyber Squatting

Also known as domain squatting.

“Using a domain name with bad faith, intent to profit from the

goodwill of a trademark belonging to someone else. “

The cybersquatter then offers to sell the domain to the person or

company who owns a trademark contained within the name at an

inflated price.

It is usually cheaper and quicker for the trademark owner to pay

up than to pursue legal remedies.