Intellectual Property Rights - Prof. D. Petraz - appunti + simulazione d'esame + mappe concettuali

Intellectual Property Right

Davide L. Petrazdpetraz@glp.eu

UNIVERSITY OF TRIESTE · FACULTY OF ECONOMICSACADEMIC YEAR 2016-2017

ADVANTAGES OF INTELLECTUAL PROPERTY

• PASSIVE UTILITY
• ACTIVE UTILITY
• DIRECT USE
• INDIRECT USE
• CROSS LICENCE
• ECONOMICAL ASSET
• MARKET SHARE

Benefit from Intellectual Property

The IPRs (Intellectual Property Rights) permit to have a profit higher of 20–25%.

The BASCAP (Business Action to stop Counterfeiting and Piracy) and ICC Commission on Intellectual Property confirmed that — on equal terms — a patented invention has double economical value than the one not patented.

Definitions of Intellectual Property

• Secret Information
• Patents
• Utility Models
• Semiconductors Topographies
• Trademarks (including the firm, the insignia)
• Geographical Indications
• Domain Names
• Designs
• Copyright (including Software, Database, etc.)

Secret Information 4/4

• Secrecy Clauses
• Confidentiality Agreements
• Non-Competition Agreements
• © Copyright

Secrecy Agreement 1/3

This is the agreement according to which a person undertakes not to divulge certain information that is transferred to him or that he acquires knowledge of.

The obligation not to divulge derives from:

• Art. 2105 CC; whereby the worker must not divulge information concerning the organization and production methods of the Company for which he works or use the same in such a way as to cause harm;
• Arts. 98 and 99 IPC: see previous slides.

Patent Rights 1/5

The patent confers on the proprietor the following exclusive rights:

• a. if the patent concerns a product, it gives the right to forbid third persons – except with proprietor’s consent – to produce, use, market, sell or import the product in question for these purposes;

Patent Rights 2/5

• b. if the patent concerns a method, it gives the right to forbid third persons – except with proprietor’s consent – to apply the method, and to use, market, sell or import for these purposes the product obtained directly with the method in question.

Novelty and Inventive Activity

Any act, voluntary or involuntary, that transmits to third parties the knowledge of the invention, provided the third person is able to understand or to re-transmit said knowledge thoroughly, is considered prior disclosure.

Patent Deadlines

T₀T₁₂

• Filing date
• End of priority period

Priority deadline, that is, the deadline within which the patent application can be extended

• Extension within this period will be retroactive to T₀
• Extension beyond this period will be substantially nil

Patent Cooperation Treaty 3/3

After 8 months from the filing date:

• Search Report
• Preliminary Opinion
• Possibility to modify the application asking the examination of the application (Chapter 2)
• National phases

European Patent 1/3

• First level examination
  • granted
  • granted amended
  • rejected
• appeal
  • granted
  • granted amended
  • rejected

JAPANESE PATENT

EUROPEAN PATENT CONVENTION (EPC)

• www.epo.org
• since 1977
• 38 contracting States + 2 extension States + 2 validation States

PETITION FOR REVIEW 2/3

Procedure:

1. Within 2 months from the decision of the Boards of Appeal it is possible to file the petition for review with the grounds for which an annulment of the decision is requested, as well as facts and evidence to support the same;
2. Review procedure which has two distinct moments:
   • a commission of the Enlarged Board of Appeal examines all the petitions presented and rejects those obviously inadmissible or unallowable;
   • a commission of the Enlarged Board of Appeal, examines all the petitions which have passed the preceding phase and takes the final decision…

PETITION FOR REVIEW 3/3

Please note that, until a final decision is reached on the part of the Enlarged Board of Appeal, the simple petition for review has no suspensive effect of the contested decision, nor does it prejudice the rights of third parties who have, in the meantime, carried out or used the invention covered by the European patent regarding which the contested decision was taken.

3. If the petition is accepted by the Enlarged Board of Appeal, the contested decision is annulled, and the appeal phase is re-opened. Furthermore, the Enlarged Board of Appeal has the power to request that the new adjudicating Board of Appeal is made up in a different way than was the commission of the first stage of appeal.

EP DIVISIONAL APPLICATIONS 3/6

Voluntary division

Rule 36 (1)(a) EPC provides that a divisional application may be filed, on the basis of an earlier application, before the expiry of 24 months from the Examining Division's first communication in respect of such earlier application.

If the earlier application on which the divisional application is based is cancelled or withdrawn during this 24 month period, the divisional can no longer be filed.

In the case of a sequence of divisional applications, the 24 month period is to be calculated from the date on which the Examining Division's first communication was issued for the earliest application in the sequence.

EP DIVISIONAL APPLICATIONS 4/6

Mandatory division

Rule 36 (1)(b) EPC provides that a divisional application may be filed, on the basis of an earlier patent application, before the expiry of 24 months from any communication in which the Examining Division raises a non-unity objection for the first time on such application, according to Art 82 EPC.

A non-unity objection is typically raised in the Examining Division's first communication or, if already raised at the search state, maintained therein.

Trademarks

• Famous trademark

Trademark Registration Flowchart

• Full availability search for proposed trademark
• Filing of trademark application
• Formal/substantial examination of proposed trademark by the Italian PTO (no novelty examination is carried out)
• Refusal
• Acceptance
• Filing of an appeal before the Board of Appeal of the PTO
• No appeal is filed
• Acceptance of the application
• The PTO decision is confirmed
• Rejection of the trademark
• Registration of the trademark

• Modularity
• External parts
• Commercial areas

Design or Model Registration Flowchart

• Filing of design or model application
• • Formal / Substantial examination of proposed design or model by the Italian PTO (no novelty examination is carried out)
  • • Refusal
    • • Filing of an appeal before the Board of Appeal of the PTO
      • • Acceptance of the application
        • The PTO decision is confirmed
    • Acceptance
    • • No appeal is filed
      • Rejection of the design or model

• Registration of the design or model
• Rejection of the design or model
• Registration of the design or model