BIT Semester 5 - Professional Issues in IT by Ms.Dilshara: March 2018

Wednesday, March 14, 2018

Patents

Why Patents?
Patents protect inventions and ensure the inventors the benefits resulting from the inventions thereby providing incentives for creativity, encouraging further inventions and promoting investment. This will spur the economic and technological development.

Patent documents describe newly invented technologies and are available for anyone to refer to. They contain vital information for researchers, inventors and enterprises etc. who want to keep up with new developments, carry out R&D activities and use new technologies.

What is a Patent?
The State grants the inventor, by means of a patent, the right to exclude others from making, using and selling the qualified invention for a period of 20 years from the date of application for patent. The owner of the patent can use, sell or license the patented technology and derive financial benefits.

What is an invention?
An Invention is a practical solution to a problem in technology. An invention may relate to a product or a process.

What can be patented?
an invention is patentable if it

(a) is new ( not known in the body of existing knowledge)

(b) industrially applicable ( functional and operative) and

(c) involves an inventive step ( the development or improvement is not obvious to a person of average skill in the particular field. )

** A patent may be granted to an improvement of a valid patented invention but if you use it sometimes you may infringe the rights of the owner of the first patent. Solve this problem by negotiation with the owner.

How a patent is granted?
Make an application to the Intellectual Property Office using the prescribed form P1( see the regulations). You have to submit a document with the application form describing your invention clearly and completely and the claims. Pay the prescribed fee. ( refer to the regulations for fees). You must submit a search report prepared by an international searching authority or alternatively request the IP Office to forward your invention to a local examiner for search and report.
The IP Office will examine your application as to the formal requirements. If formal requirements are fulfilled and the international type search report is available the patent will be granted. The invention will be published before grant if an international type search report is not available.

Renewal
A patent is valid for 20 years from the date of application. The patent must be renewed annually from the expiration of the second year from the date of grant paying a fee ( refer to the regulations).

What is not patented:

(i) discoveries, scientific theories and mathematical methods;

(ii) 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;

(iii) schemes, rules or methods for doing business, performing purely mental acts or playing games

(iv) methods for treatment of human or animal body by surgery or therapy and diagnostic methods practiced on human or animal body

(v) inventions which are necessary to protect public order, morality including human animal or plant life, health, or to avoid serious prejudice to environment.

Trademarks–A descriptive Note

What is a mark?
A mark- trademark or service mark- is a visible sign that is capable of distinguishing the goods or services of different enterprises.

A trademark –goods

service mark - services. .

What constitutes a mark?
A mark may consists of a word, a symbol, a device, letters, numerals, a name, surname or geographical name, a combination or arrangement of colors and shapes of goods or containers etc. The visible sign must always be capable of distinguishing the goods or services of different enterprises (it must be distinctive)

Functions of a mark
It has several functions such as: (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.

Registered and unregistered marks

A registered mark is a mark registered under the law and with National Intellectual Property office. You can use a mark even without registration. Unregistered marks can be protected under the unfair competition law or common law action for passing off.

Why registered?
It is highly recommended that you register your mark. The registration of the make 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 retrain others from using your mark or a mark deceptively resembling your mark. You are even entitled to claim damages.

Registrable marks
The marks which are not inadmissible under sections 103 and 104 of the Intellectual Property Act No: 36 of 2003 can be registered. A mark is inadmissible if it is, for example, descriptive of the goods or services concerned, if it is not capable of distinguishing your goods or services from those of others and if it is deceptively similar to the other registered or well known marks.

Flowchart of the Registration Procedure

Click here to view detailed Flowchart of the Trademark Registration Procedure.

How to register?
Make the application using the Form M1. The processing of the application involves a number of work steps. The mark is examined to see whether it complies with formal requirements and whether it is not inadmissible under sections 103 and 104 of the Act. If the IP Office refuses it you can make submissions against the decision and ask for a hearing within one month from the refusal. If it is still refused you can challenge the decision in Court ( The Commercial High Court).

The mark is first accepted for the publication in the Gazette. A period of 3 months is given to the public for opposition after the publication. If there is any opposition the IP Office will send you a copy of it. You are required to forward your observations of the grounds of opposition. The IP Office will conduct an inquiry into the opposition with the participation of you and the opponent . After on the inquiry, your mark may be accepted or refused. If it is refused you can challenge the decision in Court. If it is accepted the registration will be effected upon the payment of the registration fee.( please refer to Part V of the Act and regulations made under that Act.)

Who can register?
Any person or body of persons corporate and unincorporated ( individual (s), company, partnership, association etc).

Fees

Please refer to the fee schedule.

Period of validity and renewal
The registration is valid for a period of 10 years from the date of application and is renewable on the payment of the fee for further periods of 10 years. For the fee please refer to the fee schedule.

Protection abroad
Marks registered in Sri Lanka are valid only in Sri Lanka. If you do business in other countries it is advisable for you to register the mark in those countries. You have to make applications in each country where you seek the protection under the respective national law. ( Sri Lanka is not a member of the Madrid System under which you may make one international application for all the member countries.) However, you can claim priority under the Paris Convention for the protection of Industrial Property in its member countries. ( within 6 months from the date of application in Sri Lanka).

Trade names
A trade name is the name under which you do your bossiness- your name, partnership name etc. Your trade name can be protected under the IP Act. However, it can be registered as a mark only. Thus, it is advisable to register your trade name as a mark.

Agents
There are registered agents who can undertake to attend to your application or the registered mark on your behalf and any other application such as patent and industrial designs ( refer to the list of Agents).

Source : http://www.nipo.gov.lk/marks.htm

Issues we discussed in Class …

HI all,

can teaching to a group of students with copyrighted material an offense ?

NO ,

according to IP law ,

“Notwithstanding the provisions of subsection (1) of section 9, the fair use of a work, including such use by reproduction in copies or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, shall not be an infringement of copyright.”

What about the right to seize or act against misuse , after the death of copyright holder ?

“…….. subsequent to the death of the author, the physical person or legal entity upon whom or which the moral rights have devolved shall have the right to waive the said rights. ….”

Hope this sorts out the doubt .. Smile

Check page 11 of IP law in previous post .

Intellectual property act–2003 (Sri Lanka)

Read the full act : http://www.wipo.int/edocs/lexdocs/laws/en/lk/lk004en.pdf

What si the status of Copyrights in Sri Lanka

National Intellectual Property Office – Sri Lanka

The National Intellectual Property Office of Sri Lanka established under the Intellectual Property Act No 36 of 2003 is mandated with the administration of the intellectual Property System in Sri Lanka. It was first established on January 1, 1982 with the same mandate under the provisions of Code of intellectual property Act no 52 of 1979.

Visit and See : http://www.nipo.gov.lk/index8.htm

What is copyright
Copyright means the rights given by law to the creators for their literary and artistic works. The rights takes two forms (a) economic rights and (b) moral rights. The economic rights include the right to reproduce, sell, rent, distribute, communicate to the public, translate etc whereas the moral rights cover the right to claim the authorship and right to oppose distortion or mutilation of the work.

Why protected
Copyright protects the rights of the authors of literary and artistic works and ensures them the economic benefits and recognition thereby promoting creativity in literary and artistic fields and investment. Such creations enhances economic development, education, culture, and enjoyment of life.

What is covered
Copyright covers original literary and artistic works: writings such as books, computer programs, articles, oral works such as speeches and lectures, dramas, musical works, films, drawings, paintings and photographs. The woks such as databases and translations are also protected.

Formality free
protection is accorded without any formality such as registration in Sri Lanka.

Who owns
The author is the owner of economic rights but there are some exceptions such as a work created by an employee generally belongs to the employer. The economic rights can be assigned or licensed. The moral rights always belong to the author.

Duration
Copyright in Sri Lanka is generally protected during the life of the author and 70 years after his death.

Administration
You can administer your right individually. Alternatively, the owners can administer their rights collectively. The collective administration means that the owners form an organization which acts on their behalf in licensing the rights, collecting fees, monitoring use and infringement of rights and enforcement of rights.

Protection abroad
The woks of Sri Lankan authors are protected in all the member countries of the Berne Convention for the protection of literary and artistic works under the national law of the particular country.

Folklore
The expressions of folklore of Sri Lanka are protected against the unauthorized use.

Regulation
Regulations made under the Intellectual Property Act have been published in Gazette Numbers; 1415/18 of 10th October 2005

Copyrights–Econimic and Moral rights of Copyright Owner

Hello all ,

Do read this article :

http://www.copyrighthub.org/copyright-resources/your-rights/

Economic rights

Economic rights give you the right to earn money from your creative work. This means you can give or deny people permission to:

copy your work (for example by photocopying, scanning, recording, reproducing in a different format)
rent or lend copies of your work to the public (except that library loans are always permitted, and are compensated under the Public Lending Right Scheme)
show, play or perform your work in public
broadcast the work to the public – this includes putting the work on the internet
making an adaptation of your work (for example by translating it).

You can give or sell your economic rights to another person or organisation.

Moral rights

Moral rights help protect your reputation. They allow you to:

be identified as the creator of your work (you need to assert this right in writing when you give someone permission to use your work in some way)
object to your work being used in a derogatory way
not be attributed as the creator of a work you didn’t create.

You can’t give away or sell your moral rights.