IP Basics

1. IP Basics Utility Models, Trade Secrets, Unfair Competition

2. Alternativeways of IP protection PILA M2 Meeting, 26-27October 2009

3. Patent protection? – not always Disadvantages Remedies Utility models easier and cheaper Trade secrets Without disclosure Unfair competition different legal concept of protection • Long and complicated procedures • Demanding requirementsof patentability • Expensive protection • Obligation to disclosure • Temporary protection • Subjectmattersexcludedfrompatentablity

4. Utilitymodels

5. Concept of utility models Three categories • three-dimensional solutions for which the conditions for obtaining protection are less strict, as for inventions (Japan, Mexico, Poland) • three-dimensional, as well as other solutions for which the conditions for obtaining protection are less strict than for inventions (Germany) • Inventions for which the protection is granted under the registration if a parallel system of granting “normal” patents exists (France) No common regulation

6. Examples

7. Utility models – general characteristics „Petty patents” • Different subject-matters • often: processes excluded • Different requirements of protection • often: lesser degree of inventive step • utility function • Different rules of protection • usually: no substantive examination – registration system)

8. Utility models The protection granted lasts 7-10 years from the date of filing Term Scope • Scope of protection • in prinicple, same as patent PCT and Paris Convention International regulation • Does not exisit • possibility to claim international filing date /priority date/ coming from national applications filed for utility model Community regulation • Proposal fo Community Utility Model • withdrawn

9. TRADE SECRETS

10. Trade secrets protection Advantages Disadvantages Risk of losingprotection Necessity to controlthe state of secrecy necessarymeasures to keepitsecret Limited protection onlyagainstunlawfulsteps of disclosureoruse • No formalities • Cheap • Long-lasting • Widescope of subjectmatterprotected

11. Trade secrets - requirements of protection Art.39.2 TRIPS • is secret • generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; • has commercial value • because it is secret • has been subject to reasonable steps to keep it secret • by the person lawfully in control of the information Any information which

12. Trade secrets • Protection lasts as long as the information protected is secret • unlawful disclosures • Sort of information comprised • technical • technological • organisational • business sensitive • other having commercial value • Necessary measures to keep it secret • Physical restrictions • legal • Employment relations

13. Non-disclosure agreements (NDA) • Powerful tools • Agreement structure • aim, definitions • conditions of disclosing information for other party • exceptions • use of passed information • term • penalty clauses • other

14. UnfairCompetition

15. Unfair competition Art.10bis Paris Convention Act of competition contrary to honest practices in industrial or commercial matters • Honest practices • reference to morality and ethics (business perspective) • Extension of judge power • protection executed, in principle ex post in civil proceedings • Complementary (not alternative) protection • Supplement to what IPRs cannot provide

16. Unfair competition European continental approach Common law approach Passing off Goodwill in relation to product or service Misrepresentations likely do deceive the public Misrepresentation is detrimental to the goodwill • Separate act on unfair competition • general clause • detailed provisions • Broader scope of regulation EU harmonization at B2C level only

17. Specific acts of unfair competition • Misleading practices • confusion • False allegations • (Slavish) imitations • As misleading practice • As abuse of investment • Trade names protection • Advertising law

18. Geographical Indications GEOGRAPHICAL INDICATIONS • identify a product • originating from the particular territory • if a specific quality, reputation, or other characteristics of the product • is essentially attributable to this territory. Art. 22 TRIPS

19. Geographical indications - EU regulation Designation of origin (PDO) • an agricultural product or a foodstuff: • originating in that region, specific place or country, • the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, • and the production, processing and preparation of which take place in the defined geographical area The PDO product must be traditionally and entirely manufactured (prepared, processed and produced) within the specific region and thus acquire unique properties.

20. Geographical indications - EU regulation Geographical indication (PGI) • an agricultural product or a foodstuff: • originating in that region, specific place or country, and • which possesses a specific quality, reputation or other characteristics attributable to that geographical origin, and • the production and/or processing and/or preparation of which take place in the defined geographical area The PGI status, the entire product must be traditionally and at least partially manufactured (prepared, processed or produced) within the specific region and thus acquire unique properties.

21. Geographical indications - EU regulation Traditional speciality guaranteed (TSG) • an agricultural product or a foodstuff: • with specific character what means the characteristic or set of characteristics which distinguishes an agricultural product or a foodstuff clearly from other similar products or foodstuffs of the same category; • which is "traditional“ • proven usage on the Community market for a time period showing transmission between generations, at least 25 years The TSG product does not have to be manufactured in a specific geographically delimited area; it is sufficient that it be traditional and different from other similar products.