- What is intellectual property?
Intellectual property could be described as those creations of the mind
which are of commercial use in respect of which the state bestows upon
individuals a statutory monopoly for a definite term to preclude their
unlawful exploitation. Part 11 of the TRIPS Agreement provides the list
of intellectual property rights, namely copyright and related rights,
trademarks, geographical indications, industrial designs, patents, layout-designs
(topographies) of integrated circuits and confidential information.
Intellectual property is conventionally embraced into two major divisions,
namely copyright and rights related to copyright and industrial property
which comprises patents, industrial designs and trademarks. Rights related
to copyright or as sometimes called neighboring rights embrace rights
of performers, producers of phonograms (sound recording) and the rights
of broadcasting organizations. The TRIPS Agreement does not address
the minimum standards required as regards utility models and breeders'
rights. This entails that developing and least developed countries are
not bound by the TRIPS Agreements in respect of the said two categories.
- Do the minimum rules or standards for intellectual property
protection differ between developed and least developed countries?
The general agreement on Tariff and Trade (GATT) and the World Trade
Organization (WTO) recognize that developing and least developed countries
are disadvantaged in international trade to the effect that the Special
and Differential Treatment (SDT) arrangement as incorporated in the
above captioned agreements stands as a fundamental principle of the
said two organizations. Again, under the earlier Paris Convention each
country is obliged to provide intellectual property protection no worse
that its own to other members of the Convention. By demanding a similar
level of protection for all countries, the TRIPS Agreement no longer
permits countries to elect the level of intellectual property protection
in line with the level of each country economic development The Trade
Related Aspects of Intellectual Property Rights (TRIPS) Agreement does
not incorporate similar provisions. It is devoid of significant differences
in the rules applicable to developing and least developed countries
in contrast to developed countries. It is a type of an international
agreement structured on the basis of ' one size fits all" as regards
the minimum rules for intellectual property protection. Nonetheless,
the timing of implementation of the rules differs as regards developing
and least developed countries through provisions of longer transition
periods.
- What are the transitions periods offered to least developed
countries?
The least developed countries may apply the TRIPS Agreement until January
1, 2006 with the possibility of an extension and until January1, 2016
as regards pharmaceutical and agricultural chemical patents. The transition
periods apply only to WTO members as of January 1995. However, new members
would not benefit of any transition period. The transition rules embrace
the situation where a country has no legislation to address patent protection
in a particular area of technology when the TRIPS Agreement came into
force on January 1, 1995. The said country is expected to take the requisite
measures to introduce the required protection by January1, 2005.
- What does the so called Mailbox provision signify?
Paragraph 70.8 of the TRIPS Agreement provides that a country had to
accept the filing of patent applications as regards pharmaceuticals
and agricultural chemical products from the inception of the transition
period despite the fact that the decision on whether or not to grant
any patent may be deferred until the end of the period. Paragraph 65.5
expressly provides that within the transition period the relevant country
shall enact the requisite legislation in line with the provisions as
contained in the TRIPS Agreement to the effect of avoiding any inconsistency.
- What is Technology Transfer?
Technology transfer is a process of transferring intellectual property
employing the appropriate legal vehicle from one technology developer
organization to another innovation-seeking organization to the effect
of attaining scientific and technical progress in a specific industry
open to the user. The user of the technology may be in a position to
enhance the technology further into new products, processes, materials
or services as would upgrade the user's industrial capabilities. The
process would ultimately raise the standard of living in a nation, improve
quality of life and hence boost up economic growth. Technology transfer
is the bedrock of industrial countries economic success. A highly related
matter is commercialization which is the mechanism employed to transform
an invention into a valuable application in industry or introducing
a new product to the market. Technology transfer embraces an array of
official and unofficial cooperation between technology producers and
technology users. It is not only confined to the transfer of knowledge
and technical know-how but it also includes physical devices and equipment.
The means employed to obtain technology transfer encompass licensing,
information dissemination, technical meetings, joint research, cooperative
agreements, cooperative and research development agreements.
The most utilized device to transfer technology is the license contract.
A license is a contractual arrangement between the licensor and the
licensee by virtue of which the licensor grants the licensee the right
to use or develop the technology for a prescribed fee normally termed
as a royalty. Licenses fall into three categories, exclusive, partially
exclusive and non-excusive. Technology transfer may be defined as the
route of moving research into the commercial arena. American universities
earn approximately a billion dollars in royalties from science and technology
which is thus far only a little bit of the royalties ascribed to gigantic
patent licensors such as IBM and Qualcomm. Qualcomm Research and Development
(R&D) expenses were $ 252 million in the second fiscal quarter of
2005. The U.S.A has over seven hundred Federal Laboratories which are
annually funded at over $24 billions. The U.S.A government finances
approximately fifty percent or thereabouts of all R&D in the U.S.A
and employs one sixth of U.S.A scientists. The utilization of computers
extended from Federal Laboratories to corporate America. The U.S.A government
expenditure on R&D surpasses Japan, Germany, France and England
collectively. A substantial portion of on-the-shelf government inventions
are not yet licensed for commercial operations. On account of the above
it is obvious that the process of technology transfer requires a great
effort. Opportunities may be on the horizon for developing countries
to raise capital if the process of transferring intellectual property
proved to be effective.
- Does the TRIPS Agreement incorporate any binding provisions
by virtue of which developed countries are legally obliged to provide
financial assistance and promote technology transfer to developing and
least developed countries?
No. TRIPS had been accepted by developing and least developed
countries against the transfer of technology and the opening of agricultural
markets. As a matter of fact, supported by empirical historical evidence,
countries adopted stronger patent protection once they have developed
strong technology. However, the ability of a country to choose a level
of patent protection that corresponds to its level of technology had
disappeared with the TRIPS. Again, technology transfer is a long term
process, and in the meantime large sums of money will be transferred
from developing to developed countries. It is in the interest of all
industrialized countries to reinforce their dominant position in research,
technological innovation and industrial protection by strengthening
intellectual property rights and pressing for worldwide system.
A stronger and enforceable global system of IPRs would provide principal
countries in manufacturing and technology with unfettered authority
to determine how innovative products where to be used and by whom. In
this respect, it would be difficult to challenge the dominant position
of the industrialized countries in research, technological innovation
and industrial production. Technology is the main competitive factor.
An intellectual property regime characterized by being too open as regards
technological and scientific achievements would probably permit developing
countries to imitate innovations worked in the industrial world. The
competition shown by the NIC countries is considered by countries such
as the U.S.A as an unintended transfer of wealth due to lack of strong
intellectual property enforcement machinery which gave rise to proliferation
of counterfeiting and piracy. It is submitted that a strong IP protection
would promote domestic and economic growth by encouraging the inflow
of foreign technology and eventually result in an increase of local
innovation. However NIC countries continue to maintain weak IP protection
due to the strong monopoly power of giant multinational companies. The
approach followed by NIC countries does not appear to be a strategic
option residing on a trade-off between innovation and imitation. The
slow tempo of the dissemination of knowledge due to the monopoly power
grip underlies the said approach. The inference is well-nigh irresistible.
In the end the industrialized countries would opt for trade rather than
to diffuse their technology. Under the circumstances, imitation may
be sought as a vehicle to increase dissemination of knowledge to the
effect of furnishing the consumer with cheaper cost varieties.
A strong intellectual property regime would ultimately lead to a technological
and scientific monopoly prone to maintain the status quo or even reverse
the situation and hence pave the way for industrialized countries' products
to dominate the global market. This is made easier by elimination of
the obligation to exploit patents locally. Such a change would support
multinational companies to recoup R& D expenditure. Under the TRIPS
regime patents are an instrument for retaining and increasing industrial
capabilities in developed countries while also controlling commercialization
of protected goods and services in the rest of the world. If the new
intellectual property regime would ultimately lead to market control,
the justification for overseas investment may be substantially weakened.
On the other hand, the motive to transfer technology or establish productive
facilities in the developing world may substantially slacken or disappear.
The TRIPS Agreement provides world protection which developed countries
have been seeking. It narrows access to technology, and slows down the
expected rapid diffusion of new technology to developing countries.
The new notion carried in the TRIPS Agreement requires changes in many
of the basic principles of the legal systems as developed by international
conventions and national legislation. It includes the expansion of new
areas such as biotechnology, integrated circuits, computer programs,
the universlalization of standards of protection and the strengthening
of enforcement mechanism.
- What is the phenomenon of counterfeiting and what are its
adverse consequences?
Counterfeiting is an illegal use or an infringement of intellectual
property rights by imitating trademark goods, copyright goods, patent,
and design without the prior authorization of the right owner to effect
of causing direct loss to the owner in the form of diminished trade
revenue.
The initial process in the direction of global harmonization of intellectual
property protection started with the industrialized countries concern,
particularly the U.S in combating counterfeit goods. In historical fact,
a draft entitled "agreement on measures to discourage the importation
of counterfeit goods" was prepared by the U.S.A and EU in 1979.
The main purpose was to combat the unfavorable effect of counterfeiting
on trade revenues. In 1982 some industrialized countries prepared a
draft entitled "the anti-counterfeiting code." The U.S.A suggested
that the said code should be adopted as part of the GATT. However, developing
countries under the leadership of Brazil and India contended that intellectual
property issues fall outside the ambit of physical goods which is the
domain of GATT. They argued that intellectual property deals with intangible
property which falls within the jurisdiction of WIPO. The issue raised
for consideration is this: what are the effects of importation of counterfeit
goods on international trade and whether it could be quantified? The
sub-committee on trade of the U.S House of Representatives on the basis
of 1983 hearings issued a report supported by a report produced by the
International Property Alliance showed huge losses.
The U.S.A with a view to removing the deadlock at the GATT amended in
1984 section 301 of the Trade Act of 1974 authorizing the President
to take measures conducive to eradicate "unjustifiable or unreasonable
trade practices." to the effect of making intellectual property
unambiguously actionable under Section 301. The U.S.A Trade Representative
was assigned the task to make an annual review in order to detect priority
foreign countries which deny adequate and effective protection to intellectual
property rights or which deny fair and equitable market access to U.S
traders. The USTR is required to locate such countries on a priority
watch list or a watch list followed by retaliation or sanctions in the
form of increased duties, import restrictions and tariff exemptions.
The issue of intellectual property protection including counterfeit
goods was thoroughly discussed during the Uruguay Round trade negotiations
continuing from September 1986 to April 1994 which changed the General
Agreement on Tariffs and Trade into the World Trade Organization (WTO).
The Uruguay Round incorporated a resolution taken on January 28, 1987
under the title 'trade related aspects of intellectual property rights
including trade in counterfeit goods". The agreement of World Trade
Organization (WTO) was signed on April 1994 by ministers of 125 participating
countries at a meeting in Marrakech, Morocco. The TRIPS Agreement was
an Annex among a package of 2o agreements; however the phrase "including
trade in counterfeit goods" was removed and substituted with a
preamble carrying the same purport. The WTO Agreement entered into force
on January 1, 1995. The negotiations surrounded the TRIPS Agreement
demonstrate that a system of coercive economic retaliation measures
could serve enforcement mechanism.
Counterfeiting adverse effects include loss of sales revenue as would
diminish market share, it also acts to devaluate a company's brand image,
and may negatively encroach on a company's investment in research and
development. In some industries such as medicine and spare parts it
may pose a serious risk of purchasing poor quality goods. Needless to
say, it would do nothing to raise public faith in the probity of the
business world if commercial culpable dealings such as that of counterfeiters
were to be free from penalty. A report issued by OECD in 1989 has estimated
that counterfeiting illegal operations fall within the range of 5 to
7 percent of world trade and have generated about 250 billion in euro.
The World Customs Organization report of January 27, 2003 estimated
illegal trade at 450 billions in euro. Illegal sale of CDs represented
28% of total sales in 2001.
The World Economic Forum held at Davos on January 2003 supported by
government representatives, police authorities and customs departments
decided to take tough measures to combat counterfeiting. The Trans Atlantic
Business Dialogue has acknowledged counterfeiting and piracy as a priority
issue for action between the U.S.A and the EU governments. It has endorsed
clamping down measures on infringement of intellectual property rights.
OECD member states, industry associations, multinational companies are
exerting great efforts to implement new effective initiatives, ideas
and programs concerning IP enforcement. A noteworthy happening was the
creation of the First Global Congress on combating counterfeiting held
in Brussels in May 2004. It was attended by the World Customs Organization
(WCO), the Interpol, the International Trademarks Association (INTA),
World Intellectual Property Organization (WIPO) and Global Business
Leaders Alliance (GBLAC) a coalition of 15 major multinational corporations.
In the said Congress, the question of counterfeiting has been carefully
canvassed. The Global Congress urges a public-private partnership for
pursuing more concrete actions, undertaking joint studies focusing on
the means to avoid barriers and to structure much more effective machinery
prone to materialize in a proper enforcement of IP, particularly in
hot-spot countries.
It is pertinent to indicate that an efficient global IP protection is
a complex issue, as it does not operate to meet the economic interest
of each and every government which is obliged to strictly implement
the requisite enforcement measures. Global innovative pursuits would
probably entail large international profits, but the level of technological
development in each country determines the capacity to capture these
profits. The economic situation of the less developed countries, lacking
manufacturing capacity, may encourage counterfeiters to imitate, to
capture as a minimum, a fraction of the international profits resulting
from others research pursuits. However, as a matter of fact imitation
occurs in middle income, newly industrialized countries (NIC) having
the sufficient imitation capacity due to the fact that innovative activities
are ever more witnessed. The main reason behind imitation is that the
trade-off between innovation and imitation is not very similar for all
countries. Imitation offers the opportunity to acquire some profits
in the event local innovation is not paying. It should be observed that
even in countries where intellectual property has been implemented for
a considerable time, legal protection and enforcement still requires
great efforts.
There is one final reflection on all this and that is that, the grave
situation which encourages counterfeiters and faces companies producing
state- of- the- art products is the quality of the counterfeit goods.
When the quality of a counterfeit product is higher compared to an old
generation product, the consumer is likely to prefer the counterfeit
product. The poor consumer would find a substitute and the richer consumer
will pay less price. As a foregone conclusion the old generation product
would be turned out of the market. In such an instance a counterfeit
product would drive prices down.
- What is a patent?
A patent is a collection of exclusive monopoly rights granted by a state
to an invention for a specified period of time normally 20 years from
the date of filing.
- How is protection achieved?
Patent grants are territorial in nature. Each country grants its own
patents. Countries and regions differ significantly in terms of scope
of patents granted, exemptions, examination systems, evidence required
to challenge patents validity, susceptibility of system to political
abuse. Thus, a thing as an international patent is not yet recognized,
however, a number of international treaties establish some consistency
and minimum standards. Many of the international treaties are calculated
to afford some recognition of filing dates to patent application filed
in one country. Inventors are permitted 12 months from the date of their
filing in their home country to file the application abroad. Systems
such as the Patent Cooperation Treaty (PCT) permit inventors a cost
effective way to secure further delay as regards national stage filing
as it is often called. At present there are a number of international
treaties governing patents. However, the most worldwide of these is
the WTO TRIPS Agreement. Countries not yet signatories to the said agreement
aim at bringing their intellectual property laws into compliance with
TRIPS. Nonetheless, the place of patent systems in international treaties
is uncertain. Again, there are vague parts at the intersection of such
treaties such as TRIPS and the Convention on Biological Diversity.
- What does an invention mean?
An invention means a new product or process resulting from an inventive
activity and is capable of industrial application. Again, an invention
constituting an improvement upon a patented invention is patentable,
provided that it is new, results from an inventive activity and is capable
of industrial application.
- What are the exclusions from patentable subject-matter?
Principles and discoveries of scientific nature shall not be considered
to be inventions. Scientific theories and mathematical algorithms are
not per se patentable because they do not show the prerequisite of a
manner of manufacture. The same applies to ideas, schemes and plans.
Accordingly, a biological entity may be patentable if the technical
interference of man has resulted in an artificial situation which does
not occur in nature. A chemical stuff or microorganism which is discovered
in nature without any practical application can not be considered a
subject matter patentable. Patents can not be validly obtained in respect
of inventions the publication or exploitation of which would be contrary
to public order and morality.
- Are methods and processes patentable?
The effect of a patent is to provide the patentee the exclusive right
of utilizing the invention. Thus a patent concerning an item may also
secure protection for processes of producing or using that article.
Industrial application refers to all fields of technology where the
application is subjected to commercial usage.
- What is the scope of the right?
The patent shall confer upon its registered owner, where the subject
matter of the patent is a product, the right to preclude third parties
who do not have his consent from the act of making, importing offering
for sell, selling or using the product. In the event the subject matter
is a process, the proprietor is entitled to preclude third parties who
fail to secure his consent from the act of using that process and from
the act of using, offering for sale, selling or importing for those
purposes the product obtained directly by that process. The scope of
protection conferred by the patent shall be determined by the terms
of the claim. The description and drawings included in the patent shall
be used to interpret the claim. The purposive construction is invariably
accepted by most legal systems as a legal approach to claim interpretation.
The rationale behind this canon of construction is to determine the
true scope of the claims as they would be read by a person skilled in
the art without knowledge of particular alleged infringement acts. The
rights under a patent shall only extend to acts done for industrial
or commercial purpose.
- What does novelty mean?
An invention is new if it does not form part of the state of the art
before the date of filing. No identical invention has been publicly
disclosed in publication anywhere and at anytime whatever.
Prior art encompasses everything made available to the public by way
of a written or oral description or by use, or by any other means before
the date of filing of the Sudan patent application or the priority date
validity claimed in respect thereof..
Prior state of the art does not keep out new uses of known material
or compositions from patentability.
- What does an inventive activity mean?
Inventiveness or an inventive step signifies that the invention has
prominent substantive features, compared to the prior state of the art,
as to represent a notable progress in the area of the invention. It
is not obvious to a person skilled in the art
In determining the inventive activity as prescribed under s.5 the invention
compared with the prior state of the art should indicate a difference
either to the method, the application, the combination of methods or
the product which it concerns, or as to the industrial result it produces.
The objection must indicate objectivity and must show the problem that
it has tackled and solved.
- What are the contents of the description?
The description shall disclose the invention in a manner sufficiently
clear and complete for it to be carried out by a person skilled in the
relevant field.
The description or the specification must encompass the claims that
define the invention. That is to say, the specification must identify
the scope of protection called for by the applicant.
The specification must identify the technical field within the ambit
of which the invention falls, the background art the applicant considers
useful for comprehending the invention. Again, the specification must
disclose the invention as claimed in clear wording that the technical
problem and the attendant solution can be easily discerned, together
with any meritorious effects of the invention as compared to the background
art. It must also indicate that the invention is capable of industrial
application.
- What is the function of claims?
The claim or claims shall define the protection thought and shall be
clear and concise having the requisite description support, that is
to say technical terms, legal terms delineating the monopoly thought
must be clear and concise. The same applies to grammatical construction.
General terms of vague sphere may not be entertained in the claims even
when they are terms which the addressee might be in a position to discern
for performance purposes.
The claims shall not exceed the content of the description. Claims may
include in particular.
Apart from claims for one or more products, claims for one or more manufacturing
processes for the product or products and claims for one or more applications
of the product or products.
Apart from claims for one or more processes, claims for means of working
the process or processes and claims for the product or products which
result from the working and claims for the application of such products.
In the event of several claims, they shall be numbered consecutively
in Arabic numerals.
- What does first to file mean?
The applicant must be the first person to file his patent. He does not
need to be the first person who has made the invention.
- What are the types of Applications?
The bulk of applications are filed by way of the Patent Cooperation
Treaty (PCT). A provisional application needs only have a description
of the invention. The applicant has 12 months from the date of filing
a provisional application to file a complete application. A complete
application should include a full description of the invention accompanied
by claims, and an abstract having a summary of the invention being disclosed.
A complete application may have as its foundation one or more provisional
applications. The priority date of a patent claim is significant in
telling whether the requirement for patentability of an invention has
been satisfied. The requirement of novelty and an inventive step are
evaluated against the prior art as it existed before the priority date.
The priority date is normally the date on which a provisional application
is filed, or the date on which an application is filed in another member
jurisdiction. A PCT application designates all the jurisdictions that
are parties to the PCT application, as well as the Sudan and secures
an international priority date.
- What does a divisional application signify?
In most legal systems the Application for a patent shall relate to only
one invention. Accordingly, subsequent to an assessment of a patent
application, a patent examiner discovers that an applicant has claimed
more than one invention in the application; the applicant may choose
to file a divisional application. A divisional application signifies
a new application divided from the original application. A divisional
application permits the applicant to utilize the priority date as shown
in his original application. Divisional application may work in instances
where the original application has not been lapsed, refused or withdrawn
at the time the divisional application has been filed. A divisional
application may assert a subject matter not included in the original
application insofar as all the features of at least one of the claims
were shown in the original application. However, a divisional application
must be filed within a period of three months so as to benefit from
the date of the filing of the original application. In the event the
Patent Office invited the applicant to submit a divisional application
with a view to restricting the original application to one invention,
and the applicant fails so to do, not patent shall be granted.
- What does invalidity mean?
A patent may be challenged by any person prior to acceptance of a patent
application or after acceptance of a patent application by the Patent
Office. Again, a patent may be revoked after being granted and registered.
- What are the grounds for patent opposition?
Any person prior to acceptance or after acceptance and grant of a patent
may challenge the patent right on the ground of usurpation to the effect
that the applicant for the patent has wrongfully obtained the invention
or any part thereof by way of filching i.e. theft. Any person may initiate
legal proceeding after the patent has been granted requesting revocation
on the following grounds:
- That the subject of the patent is not patentable within the terms
as prescribed under the law.
- That the description of the invention or the claim or claims
in the patent does not satisfy the requirements as prescribed under
the law.
- That for the same invention, a patent has already been granted
in the country as a result of a prior application or for an application
benefiting from an earlier application.
- Why examination by the court may be initiated?
Examination by the court provides a mechanism by virtue of which the
validity of a patent may be challenged. The main issue relevant to the
court examination is to determine whether the patent claimed in the
patent application is novel or involves an inventive step. Again, whether
the patent holder in entitled to the patent or breached a condition
in the patent. On account of the court examination one or more of the
claims in a patent may be amended as directed by the court. The court
has the authority to revoke an issued patent either in whole or in part...
Naturally an application for revocation of a patent is filed in a counter-claim
to a claim of infringement, however, revocation of a patent may be prayed
for by any person separately of infringement proceedings.
- What are the methods of enforcement?
Enforcement takes place via infringement proceedings Infringement materializes
if a person engages in an activity in relation to which a registered
owner is granted exclusive rights. The registered owner may institute
legal proceedings designed to prevent the infringement or to prohibit
its constitution. The registered owner may have the following remedies:
- An injunction to prevent the infringement.
- Seizure and destruction of the infringing products or the machinery
used for the making of such products.
- Damages or any other sanction provided for under the law such
as an account for profits
- What are the advantages of a PCT Procedure?
The PCT procedure is a procedure planned to abridge the process of filing
foreign patent applications. By virtue of article 11 of the PCT an international
application designating any contracting party shall have priority from
its international filing date, as if it is a national application for
a patent normally filed in the patent office of that state. The scheme
of filing an international patent under PCT affords the facility to
safeguard the prospect to get a patent in any or all PCT contracting
countries. Yet again, the PCT procedure presents the plus of acquiring
an international search report and an international preliminary examination
(IPE). The international search report is performed by international
searching authorities. It permits the applicant to weigh up the probability
of acquiring patent protection in the designated countries. The international
preliminary examination is performed by the International Preliminary
Examination Authority (IPEA) grounded on the international search report.
The IPE furnishes the applicant with comprehensive information regarding
the patent before incurring the high cost of entering the national stage.
In the end, the IPE is reliable; however, it is not obligatory. The
final assessment as to the patent grant vests in the national or regional
offices designated in the international application. A national application
is expected to be made within 20 months from the date of an international
application, if only an international search report is carried out by
searching authorities. In this instance, the delay gives an applicant
8 months before having to satisfy national demands than by employing
the PCT procedure. However, if the applicant elected to utilize the
international Preliminary Examination option, the national application
shall be made in the designated countries within 30 months from the
priority date of the international application.
- What is the core of trademark protection?
The main purpose underlying the protection of a trademark is to serve
the function of indicating the origin of goods and services. In effect
a trademark distinguishes the origin of goods and services of a person
from those of other persons and conveys the goodwill and history as
would ensure customer’s satisfaction. On account of this your
trademark may be your undertaking’s most valuable property.
- Is prior use required before applying?
Under the Sudanese law registered trademarks are protected as personal
property rights. There is no requirement to have used the mark before
applying. One of the great advantages of registration, under Sudanese
law, is to be able to secure legal protection before beginning the mark
itself.
- Why a trademark must be capable of representation?
To be registered as a trademark a sign must be capable of representation
in a visible form. A visible sign is any sign capable of being represented
graphically to the effect of distinguishing goods or services of persons
from those of other persons. Visible signs typically include invented
or existing words, names, pseudonym, brand, arbitrary or fictitious
description, letters, numerals, pictures or any symbols or combinations
of these signs. Invented words, a host of devices including logos which
have no pictorial contents to call up other associations are inherently
distinctive.
- What are the statutory Relative objections?
Denial for registration of a trademark may be based on relative statutory
grounds or absolute statutory grounds. The relative grounds concern
conflicts in connection with marks and signs that may arise between
applicants for marks and owners of earlier rights. Subject to consent
of the interested third parties the following marks would not be registered.
- marks which resemble other marks already validly filed or registered
by a third party or by a party validly claiming priority in respect
of the same goods or of other goods in connection with which use
of such marks may likely mislead the public.
- Marks which constitute reproduction or an imitation or a translation
likely to mislead the public or to create confusion with a well
known mark which belongs to a third party.
- Marks which infringe other third party rights or contrary to
the rules for the prevention of unfair competition. Third party
rights such as the right to a trade name or a copyright or a registered
design.
- What are the absolute Statutory Objections?
- Trade marks which are devoid of any distinctive character, that
is to say they lack the capacity to distinguish. This materializes
when the mark is so simple such as a star or a letter or too complicated
or merely a slogan consisting of a recommendation to use or buy
the goods. A trade mark lacks distinctiveness when it becomes in
general use or becomes so associated with the type of goods to the
extent of becoming a generic description of those goods. Arbitrary
marks are the best choice when selecting a trade mark since they
have no meaning associated with the owner’s products or services.
- Trade marks that designate characteristics of the goods or services
such as quality, geographical origin, intended purpose value, the
time of production of goods or rendering services, or other characteristics
of goods or services. Again, trademarks that incarnate shapes resulting
from the nature of the goods themselves would not be registered.
This is because it is least likely that satisfactory distinctiveness
can be shown. The same applies to shapes of goods necessary to get
a technical result or provide substantial value to goods.
- Trademarks which consist exclusively of signs or indications
which have become customary on the current language or in the bona
fide and established practices of the trade of the country, a customary
designation of the goods concerned. However, objection may be defeated
by countervailing evidence if actual use has been proved to the
effect that in fact as a result of use the mark has acquired a distinctive
character. Nonetheless, Marks which are unavoidably descriptive
or geographical could not be registered even if there is conclusive
evidence that in trade they were understood to be the applicant
trademark. In respect to geographical origin no person should acquire
exclusive rights in a geographical name without convincing evidence
that the name has been appropriated to trademark purposes by actual
use. If the public conceives the name as to indicate the locality
from which the goods come or in which they were conceived or designed,
the objection to registration must arise.
- If the trade mark is contrary to public policy or accepted principles
of morality.
- If the trade mark is of such a nature as to deceive the public
in connection with the nature, quality or geographical origin of
the goods or services.
- Trade marks which resemble or depict the portrait of a character
of any religious or any sectarian significance or which involve
the use without relevant authorization of armorial bearings, flags
and any other state emblems.
- Use of a trademark contrary to law would not be entertained.
For example a use which is contrary to Consumer Protection Law such
as using tobacco marks in connection with other goods or services.
- What does classification mean?
When registering a trademark you need to specify the products and services
that will be connected with your trademark. Classification is an administrative
measure calculated to support the process of searching. The Trade mark
Act permits separate registration for marks in respect of each of 42
categories of goods and services laid down in the international classification
of goods and services which was recognized in accordance with the NICE
arrangement of 1957 and its subsequent revisions. Insofar as many classes
are wide, the applicant is expected to specify the goods and services
within a class for which registration is considered. The registrar has
a final power to decide the class in which particular goods and services
are to be located. A single application may be submitted in respect
of goods or services in different classes, though still with additional
fees for each class
- What are the substantive grounds for trademark opposition?
Opposition proceedings provide an opportunity for interested parties
to oppose the registration of a mark or the opportunity for its cancellation
after registration. In the event the trademark office reaches a conclusion
that the trademark can be registered it will publish the trade mark
in the Official Gazette of the Office with an indication of the time
limit within which an opposition may be filed. Accordingly, an opposition
can be launched, in the event an application is advertised as accepted,
by any interested person whether resident in the Sudan or outside the
Sudan within six months or eight months respectively from the date of
such advertisement. An opposition must contend at least one of the following
substantive grounds of objections:
- That the trade mark is not entitled to registration under the
provisions of the Trade Marks Act. This may include that the applicant
is not the first user in the Sudan and the opponent may be able
to rely upon the priority which is conferred by Article 4 of the
Paris Convention that the period of priority which binds the other
countries of the Union is for a period of six months.
- That the mark has been obtained by fraud.
- That at the date of application there was no bona fide intention
to use the mark or that the applicant has effectively abandoned
his mark.
- The opposition shall be supported by evidence normally in the
form of affidavit; however the Registrar may as he deems fit request
oral evidence in addition to the affidavit. The Registrar shall
send a copy of the notice of opposition to the applicant, and the
applicant is bound within the prescribed time to submit a counter-statement
of the grounds on which he relies for his registration. In case
the applicant fails to respond, his application shall be deemed
to have been abandoned. However, in the event a counter-statement
has been furnished by the applicant, the Registrar shall send a
copy to the person having given notice of opposition. The decision
of the Registrar either at ex parte or inter parte shall be subject
to appeal to the Commercial Court. The Registrar decision may include
permission of registration subject to amendments, modifications
or limitations (if any). In the event of rival claims as regards
identical marks, the registrar may refer the issue to the commercial
court. In determining the rights of the parties; the court shall
have regard to the date of registration in the country of origin
and the priority of user of the mark in the Sudan. After final decision
of the court granting registration, the Registrar shall subject
to any conditions proceed to register the mark and shall issue a
certificate of registration. The mark when registered shall be registered
as on the date of application and such date shall be deemed to be
the date of registration.
- What is the duration of protection?
Initial registration and each renewal of registration of a Trade mark
shall last for ten years and will then fall due for renewal at ten-
yearly intervals for as long as the mark does not fall liable to revocation,
principally for non-use. Renewal must be made within six months before
expiration of such term or any subsequent term of ten years. However
at the time of renewal no change shall be made in the mark or the list
of the goods in respect of which the mark is registered except that
goods may be eliminated from the list. A period of grace of six months
shall be allowed for the renewal of a registered trademark after its
term has expired subject to payment of a charge for the delay.
- What are the rights conferred by registration?
The owner of a duly registered trade mark shall have the exclusive right
to put off all third parties not having the owner’s permission
from using in the course of trade identical or similar marks to those
in respect of which the mark is registered where such use would result
in a possibility of confusion.
- What does infringement mean?
The classic infringer uses another duly registered trade mark or a confusingly
similar sign as a trade mark to indicate the source of the goods or
services. In a market where competitors are free to utilize legal means,
this unwarranted conduct should be disallowed. If it is not prevented,
it would ultimately cause loss to owners. Again, consumers would lose
confidence in the market and the possibilities of product demarcation
will collapse.
- What are the types of infringements?
Use in the ordinary course of trade of a sign identical to the trade
mark of another proprietor for identical goods or services. As regards
this type of infringement, it is not necessary to show any likelihood
of confusion. This type of infringement is the simplest case, insofar,
as the marks are identical and that the goods and services fall within
those specified in the registration.
Use in the ordinary course of trade of a sign similar to the trade mark
of another proprietor. As regards this type the touchstone is similarity
rather than identity. The plaintiff must establish that there exists
likelihood of confusion on the part of the public in associating the
trade mark of the plaintiff with those of the defendant.
Where a trade mark has a reputation in the Sudan, it would be infringement
to use an identical or a similar sign for dissimilar goods or services
where such use of the sign is without due cause and has taken unfair
advantage of or is detrimental to the distinctive character or the repute
of the mark. The other’s use of the mark after the owner’s
mark becomes famous would ultimately cause dilution of the distinctive
quality of owner’s mark. This type of infringement arises where
the reputation of the mark is such that the use of the mark would take
unfair advantage of that reputation or would be detrimental the reputation
or to the distinctive character of the trade mark.
- What is an industrial design?
S.2 of the Sudan Industrial Design Act defines an industrial design
as any composition of lines or colors formed to give a special appearance
to any industrial or hand made product or to any plastic form whether
or not it is restricted to color on condition that, the form or composition
can be used as an industrial design or handicraft design. A registered
design is a monopoly right for the appearance of the whole or a part
of a product resulting from features such as lines, contours, colors,
shape, texture or materials of the product or its ornamentation. A complex
product may include component parts such as parts of a car. Such products
can embrace graphic, symbols, logos, displays, packing. Thus, the scope
of what is meant by a design is very wide and mainly falls into two
categories whether the design is two dimensional or three dimensional.
- What is the Importance of an industrial design?
The expansion of mass production of articles by means of the industrial
process spawned the need for the protection of the ornamental aspects
of goods. The design or shape of a product reflects the image of the
company. It may be identical with the company’s branding. It can
become an asset having momentary value and susceptible to increase in
value. In the event you slacken to protect your design others may benefit
from your design. An industrial design is an applied art whereby the
aesthetics and usability of products may be enhanced. Design features
individualized by the industrial designer may embrace the total form
of the object, the position of details as regards another, textures,
colors, sounds, and ergonomics. The features that are included in the
article must appeal to the eye to the effect of having an attractive
consequence on the eye chiefly the eye of a potential buyer. Usually
through the application of industrial design, a product’s appeal
to the consumer is very much enhanced. An industrial design may be the
reason that a particular product is chosen or desired. Design protection
prevents competitors from using the same or a strongly similar design
and especially where a design has been copied.
- What is the difference between a three dimensional trademark
and a design?
A registered three dimensional trademark protects the distinctiveness
of the sign as regards other existing signs in use for the same products
or services. On the other hand, the design protects the novelty and
the individual character of a product. Accordingly, the characteristic
of novelty does not apply in the case of a trademark. Again, the characteristic
of distinctiveness does not apply to a design. A trademark registration
period has not time limit, while a registered design has a maximum registration
period of 15 years.
- What is the difference between a patent and a design?
A patent protection covers an innovative function having an industrial
application. The nature of the invention must be identified in the specifications
and in particular in the claims which define the monopoly right and
are addressed to a person skilled in the art. On the other hand, a design
covers only the appearance of a product. In view of that, a design can
not protect the function of the product.
- What does design publication mean?
The Industrial Design Office shall publish registered industrial designs
in the order of their registration showing all the requisite details.
A search free of charge can be made for the records of industrial designs
including all related dealing in connection thereof.
An applicant for registration may require that his lodged industrial
designs be kept secret for a period not exceeding 12 months from the
date of application. In such an instance the industrial design must
be forwarded in an envelope sealed with red wax
- How to maintain a priority claim for a design?
An applicant for registration of an industrial design may benefit from
priority of an earlier application filed in another country which is
a party to the Paris Convention.
A statement must be attached to the application indicating the date
and number of the earlier application and the country in which it was
filed and the name of the applicant.
The statement must be forwarded within three months from the date of
the late application.
A copy of the earlier application certified as being correct by the
responsible authority on the country where such application was filed.
- Is there any limit to the number of designs for one application?
The application may contain from 1 to 50 industrial designs, provided
however that the product to which the design is applied must belong
to the same Locarno class, that is to say the products must relate to
the same type of goods.
- What is the difference between the Hague system and the domestic
system?
The Sudan system is a national system while the Hague system is an international
system. The latter system is structured on the Hague Agreement which
confers protection by filing a single application with the World Intellectual
Property Organization. The system is applicable only to countries which
are parties to the convention. The applicant must specify the states
in which protection is thought.
- What are the substantive conditions governing protection?
The types of design which could be registered must satisfy the following
conditions:
- Novelty, in the sense of being new. S.7 (1) stipulates that only
new designs shall enjoy the protection provided for in the Act.
This signifies that the design must not be similar to any design
which has already been made available to the public. at any place
and by any means
- An industrial design shall not be considered new if because it
only contains minor differences from preceding industrial designs.
This signifies that the design must have an individual character
to the effect that the general impression it generates on an knowledgeable
user of the design must be different from the overall impression
brought on such user by any design which has already been available
to the public
- How to apply for a registered design?
In the Sudan an application is filed at the Industrial Designs Office
which is part of the Intellectual Property Registrar General Office.
The reproduction of the industrial design usually includes drawings
and/or photographs or other graphic representation which demonstrate
all features of the design. Therefore, for a three dimensional article
a number of different views may be fitting. In the event, the design
explicitly applies only to part of an object, this should be designated.
Designs are not limited to specific articles and may embrace any article
made to that design. Nonetheless, it is necessary to designate an object
to which the design is usually applied.
- What protection conferred by registration?
A registered design grants monopoly rights to the effect of precluding
other people from producing the same design or a similar design whether
or not they have copied your design. However, the rights conferred by
registration of an industrial design shall extend only to acts done
for industrial or commercial purposes.
- What is intellectual property?
Intellectual property could be described as those creations of the mind
which are of commercial use in respect of which the state bestows upon
individuals a statutory monopoly for a definite term to preclude their
unlawful exploitation. Part 11 of the TRIPS Agreement provides the list
of intellectual property rights, namely copyright and related rights,
trademarks, geographical indications, industrial designs, patents, layout-designs
(topographies) of integrated circuits and confidential information.
Intellectual property is conventionally embraced into two major divisions,
namely copyright and rights related to copyright and industrial property
which comprises patents, industrial designs and trademarks. Rights related
to copyright or as sometimes called neighboring rights embrace rights
of performers, producers of phonograms (sound recording) and the rights
of broadcasting organizations. The TRIPS Agreement does not address
the minimum standards required as regards utility models and breeders'
rights. This entails that developing and least developed countries are
not bound by the TRIPS Agreements in respect of the said two categories.
- Do the minimum rules or standards for intellectual property
protection differ between developed and least developed countries?
The general agreement on Tariff and Trade (GATT) and the World Trade
Organization (WTO) recognize that developing and least developed countries
are disadvantaged in international trade to the effect that the Special
and Differential Treatment (SDT) arrangement as incorporated in the
aforestated agreements stands as a fundamental principle of the said
two organizations. Again, under the earlier Paris Convention each country
is obliged to provide intellectual property protection no worse that
its own to other members of the Convention. By demanding a similar level
of protection for all countries, the TRIPS Agreement no longer permits
countries to elect the level of intellectual property protection in
line with the level of each country economic development The Trade Related
Aspects of Intellectual Property Rights (TRIPS) Agreement does not incorporate
similar provisions. It is devoid of significant differences in the rules
applicable to developing and least developed countries in contrast to
developed countries. It is a type of an international agreement structured
on the basis of ' one size fits all" as regards the minimum rules
for intellectual property protection. Nonetheless, the timing of implementation
of the rules differs as regards developing and least developed countries
through provisions of longer transition periods.
- What are transitions periods offered to least developed countries?
The least developed countries may apply the TRIPS Agreement until January
1, 2006 with the possibility of an extension and until January1, 2016
as regards pharmaceutical and agricultural chemical patents. The transition
periods apply only to WTO members as of January 1995. However, new members
would not benefit of any transition period. The transition rules embrace
the situation where a country has no legislation to address patent protection
in a particular area of technology when the TRIPS Agreement came into
force on January 1, 1995. The said country is expected to take the requisite
measures to introduce the required protection by January1, 2005.
- What does the so called Mailbox provision signify?
Paragraph 70.8 of the TRIPS Agreement provides that a country had to
accept the filing of patent applications as regards pharmaceuticals
and agricultural chemical products from the inception of the transition
period despite the fact that the decision on whether or not to grant
any patent may be deferred until the end of the period. Paragraph 65.5
expressly provides that within the transition period the relevant country
shall enact the requisite legislation in line with the provisions as
contained in the TRIPS Agreement to the effect of avoiding any inconsistency.
- What is compulsory licensing and what are the conditions
as contained in the TRIPS Agreement under which Compulsory Licensing
may be triggered?
Compulsory licensing operates to trim down the power of the exclusive
rights conferred by a patent. Its application arises where a patent
protection exists in countries where an inventor has received a valid
patent. Good patents are expensive and should be filed in each country
in which protection is sought. It is now firmly embedded in law that
if an inventor elects not to secure protection in a particular country
or a market, any interested person may make use, offer for sale or sell
the product in that market or use the process or produce the product
for export. In historical fact the underlying justifications for compulsory
licensing is to maintain a state's national security and public interest.
Compulsory licensing is a device utilized to meet domestic needs by
limiting importation of a patented product and ensuring that lack of
exploitation by the patentee will not impede the export market being
supplied with the patented product. The state's ability to surpass the
patentee's non-authorization after being consulted is a crucial counterbalance
to absolute monopoly power.
As a matter of fact, the great majority of patents are owned by larger
corporations or multinational companies having the financial capacity
to undertake the required research. Accordingly, it is a pre-condition
to funding that ownership of all patents rights shall bestow on these
corporations. The financial capacity of larger corporations provides
them with the power to utilize the regime of patent protection in a
manner conducive to claim ownership in many inventions.
The prime goal of an offensive patent strategy is to set up an extensive
patent protection to the extent of controlling a particular business
area in the territories covered by the patent. On the other hand, the
main purpose of the defensive patent strategy is to utilize well calculated
measures to preclude others from patenting in a specific field. Larger
corporations prefer to employ their patents defensively with a view
to protecting strategic technologies more willingly than to license
them to non-competing companies. Immediate competitors would be perfectly
debarred. Patents are considered strategic assets which deserve to be
defended to boost up the company's competitive edge and earning capacity.
It is pertinent to indicate that some of these inventions may not be
put into operation and others may be filed to perplex competitors. Again,
patent monopolies lead to keeping research findings under wraps in a
manner that would ultimately restrict the dissemination of research
findings and hence slow down the advancement of research. Such a state
of affairs will provide transnational companies the chance to deal with
the entire world as their untreated field of open wealth, workforce
and consumer market. On account of this, patent monopolies result in
economic distortions in the like manner that trade tariffs or quoted
quotas steer economic distortions, however, the extent of distortions
in the former case is excessive. Consequently, the earliest notion of
the patent as an individual or an entrepreneurial right does no longer
survive.
At present an inventor may be one who has put in a significant part
to an invention, as a minimum, one of the claims scheduled in the patent
is attributable to that inventor. The argument that diminutive protection
usurps innovators from the fruit of their creativity i.e. the predictable
reimbursement in substitute of making a full and complete disclosure
can no longer be convincingly upheld. The general view even in major
industrialized countries such as the U.S.A is that the direct reason
of elevated drug prices is government approval of patents monopolies,
which permits drug companies to charge prices commonly 400 percent or
extra on top of competitive market prices. Lack of competition in some
industries entails high profits. This is due to the fact that rival
companies have no access to critical inputs such as skilled labor and
entrepreneurship. This signifies a vital resource limitation and hence
the likelihood of unusual profits. Given these facts, the likelihood
of some of the developing countries being entirely competitive is highly
remote in the near future. In addition to that lack of specialist knowledge
in appraising investment in innovative pursuits may add to the technological
gap. Again, Research and Development (R&D) requires a science-base
sector which is weak or not sufficiently available in developing countries.
In the industrialized countries such as the U.S.A public and the private
sector engage to perform R&D utilizing specialized governmental
facilities regularly having exceptional potentialities not available
to the private sector such as equipment, expertise and information.
In cases where the information is of high interest to the scientific
community at large a Cooperative Research & Development Agreement
(CROA) will be structured. This entails sharing information, exchanging
personnel, finding technical assistance, utilizing distinctive government
laboratory facilities and potentialities, licensing patent and technical
know-how, forming consortia and using technology built-up by virtue
of government contracts.
Some commentators espouse the view of establishing publicly aided research
centers through purchase of patents by governments and set them in public
domain. A host of other suggestions are offered such as zero-cost compulsory
licensing founded on value and extent of use, a mandatory employer developed
research fee to be distributed to researchers, curtailing expenses squandered
on excessive marketing, and duplicate research. Moreover, it is suggested
that research and development of copycat drugs may militate against
the present crisis. This suggestion is structured on the ground that
developing countries in reliance on paragraph 39.3 of the TRIPS are
entitled to undertake testing to establish the bioequivalence of generic
products before expiration of the relevant patent on the premise that
protection as regards test data is confined to chemical entities to
the effect that usage for second and further applications is permissible.
The conflict between the yearning of the industrialized countries to
control the justifications of compulsory licensing and the developing
countries to ease and make things easier as regards compulsory licensing
typified the TRIPS negotiations. As a compromise article 31 of the TRIPS
provides in pertinent part for other use of the subject matter of a
patent without the authorization of the right holder, including use
by the government or third parties authorized by the government, subject
to certain conditions such as assessment of the other use on its individual
merits, securing prior authorization from the right holder. However
such authorization may be waived in the case of national emergency or
other circumstances of extreme urgency or in case of public non-commercial
use or in the event that prior to use the right holder declined to provide
authorization though reasonable commercial terms were offered.
In a case of anti-competitive practice, prior consultation is not required,
and the amount of remuneration will be assessed on the need to correct
the said anti-competitive practice. In the case of semi-conductor technology,
compulsory licensing shall only be for public non-commercial use or
to remedy a practice determined after judicial or administrative process
to be anti-competitive. The said use shall be non-exclusive, non-assignable,
authorized predominately for the supply of the domestic market subject
to payment of adequate remuneration to the right holder and adequate
protection of the legitimate interests of the authorized person. As
a safeguard, the right for judicial review to assess legal validity
of the authorization and adequacy of the compensation is provided for.
Article 7 entitled objectives sets down a subtle weighing scale between
the requirement to recompense inventors and the demand for technological
dissemination. It aims at striking a balance that protection and enforcement
of intellectual property rights must eventually lead to the promotion
of technological innovation and the transfer of technology. Again, article
8 provides that members may adopt the necessary required measures to
protect public health and nutrition insofar as such measures are not
contravening the provisions as contained in Article 31 of the TRIPS
which deal with compulsory licensing.
It is obvious that the TRIPS Agreement does not thoroughly itemize the
basis for granting of a compulsory license without prior authorization
of the right holder. However, as hereinbefore stated a number of conditions
were indicated such as national emergency or other extreme urgency,
public non-commercial use, to remedy an adverse anti-competitive practice
as determined by a competent judicial and administrative authority.
In other instances, such as the case of a dependent patent, prior consultation
with the patentee is required unless an unsuccessful effort has been
exercised and proved to be futile. The effort must be in line with normal
commercial practices. Overriding public interest furnishes the ground
for exploitation by the government or any other authorized third party.
Failure to supply necessary products such as drugs at affordable prices
justifies compulsory licensing within the ambit of public non-commercial
use.
Access to drugs at reasonable prices may be difficult to achieve in
a country facing financial hurdles, physical and infrastructure barriers,
in addition to the information gap. In the same vein, compulsory licensing
may be executed by means of parallel importation from compulsory licensees
of patent products where the size of the market does not justify local
manufacturing. Concomitant to this, a compulsory licensee can export
the products to other markets. The said measures are considered to be
effective machinery apt to force intellectual property rights holders
to sell their protected products of high need at reasonable affordable
prices.
In connection with access to essential medicine, developing countries
have argued that the TRIPS Agreement does not limit their sovereignty
to address epidemics such as HIV/AIDS, tuberculosis, and malaria. They
entertain the view that compulsory licensing and parallel importation
are permissible objectives that do not violate the TRIPS Agreement.
They contend that the Ministry of Health in any developing country may
on the basis of national security and the public interest authorize
an importer to procure essential drugs not manufactured by the patentee
to meet national health requirements. Developed countries, particularly
the U.S.A and Switzerland have argued that the only flexibility in the
TRIPS Agreement is the deferred implementation periods developing countries
can enjoy under the agreement. One would hope that Article 31 is to
be given its ordinary sense and is not to be watered down. Any effort
to whittle away the privilege conferred by the said article may have
a negative impact. Access to essential medicine represents the first
dispute between developing and developed countries as regards the TRIPS
Agreement. Developed countries adopt the view that high level of intellectual
property protection furnishes the needed incentive for investment in
research and development which is the paramount guarantee to access
to indispensable medicine for all countries. In contrast, developing
countries advocate the view that strict construction of the TRIPS Agreement
fails to recognize the legitimate interest of these countries.
The ministerial Declaration on TRIPS and Public health adopted by WTO
ministers in the Doha Round in December 14, 2001 entitled "Doha
Ministerial Declaration" clearly delineates the grounds and conditions
under which compulsory licensing may be given and at the same time keeping
the TRIPS provisions intact. The yardstick in employing compulsory licensing
is an exercise of an assessment of the public interest of working the
patent against the public interest in the protection and enforcement
of intellectual property rights. The relevant country is obligated to
weigh up the competing interests. In light of the predictability needed
in the intellectual property regime, the public interest of working
the patent must outweigh the public interest in the protection and enforcement
of intellectual property. However, such a decision as stipulated in
paragraph 27.1 of the TRIPS must be made without discrimination as to
the place of invention, the field of technology and whether products
are imported or locally produced.
- What is Technology Transfer?
Technology transfer is a process of transferring intellectual property
employing the appropriate legal vehicle from one technology developer
organization to another innovation-seeking organization to the effect
of attaining scientific and technical progress in a specific industry
open to the user. The user of the technology may be in a position to
enhance the technology further into new products, processes, materials
or services as would upgrade the user's industrial capabilities. The
process would ultimately raise the standard of living in a nation, improve
quality of life and hence boost up economic growth. Technology transfer
is the bedrock of industrial countries economic success. A highly related
matter is commercialization which is the mechanism employed to transform
an invention into a valuable application in industry or introducing
a new product to the market. Technology transfer embraces an array of
official and unofficial cooperation between technology producers and
technology users. It is not only confined to the transfer of knowledge
and technical know-how but it also includes physical devices and equipment.
The means employed to obtain technology transfer encompass licensing,
information dissemination, technical meetings, joint research, cooperative
agreements, cooperative and research development agreements.
The most utilized device to transfer technology is the license contract.
A license is a contractual arrangement between the licensor and the
licensee by virtue of which the licensor grants the licensee the right
to use or develop the technology for a prescribed fee normally termed
as a royalty. Licenses fall into three categories, exclusive, partially
exclusive and non-excusive. Technology transfer may be defined as the
route of moving research into the commercial arena. American universities
earn approximately a billion dollars in royalties from science and technology
which is thus far only a little bit of the royalties ascribed to gigantic
patent licensors such as IBM and Qualcomm. Qualcomm Research and Development
(R&D) expenses were $ 252 million in the second fiscal quarter of
2005. The U.S.A has over seven hundred Federal Laboratories which are
annually funded at over $24 billions. The U.S.A government finances
approximately fifty percent or thereabouts of all R&D in the U.S.A
and employs one sixth of U.S.A scientists. The utilization of computers
extended from Federal Laboratories to corporate America. The U.S.A government
expenditure on R&D surpasses Japan, Germany, France and England
collectively. A substantial portion of on-the-shelf government inventions
are not yet licensed for commercial operations. On account of the above
it is obvious that the process of technology transfer requires a great
effort. Opportunities may be on the horizon for developing countries
to raise capital if the process of transferring intellectual property
proved to be effective.
- Does the TRIPS Agreement incorporate any binding provisions
by virtue of which developed countries are legally obliged to provide
financial assistance and promote technology transfer to developing and
least developed countries?
No. TRIPS had been accepted by developing and least developed countries
against the transfer of technology and the opening of agricultural markets.
As a matter of fact, supported by empirical historical evidence, countries
adopted stronger patent protection once they have developed strong technology.
However, the ability of a country to choose a level of patent protection
that corresponds to its level of technology had disappeared with the
TRIPS. Again, technology transfer is a long term process, and in the
meantime large sums of money will be transferred from developing to
developed countries. It is in the interest of all industrialized countries
to reinforce their dominant position in research, technological innovation
and industrial protection by strengthening intellectual property rights
and pressing for worldwide system.
A stronger and enforceable global system of IPRs would provide principal
countries in manufacturing and technology with unfettered authority
to determine how innovative products where to be used and by whom. In
this respect, it would be difficult to challenge the dominant position
of the industrialized countries in research, technological innovation
and industrial production. Technology is the main competitive factor.
An intellectual property regime characterized by being too open as regards
technological and scientific achievements would probably permit developing
countries to imitate innovations worked in the industrial world. The
competition shown by the NIC countries is considered by countries such
as the U.S.A as an unintended transfer of wealth due to lack of strong
intellectual property enforcement machinery which gave rise to proliferation
of counterfeiting and piracy. It is submitted that a strong IP protection
would promote domestic and economic growth by encouraging the inflow
of foreign technology and eventually result in an increase of local
innovation. However NIC countries continue to maintain weak IP protection
due to the strong monopoly power of giant multinational companies. The
approach followed by NIC countries does not appear to be a strategic
option residing on a trade-off between innovation and imitation. The
slow tempo of the dissemination of knowledge due to the monopoly power
grip underlies the said approach. The inference is well-nigh irresistible.
In the end the industrialized countries would opt for trade rather than
to diffuse their technology. Under the circumstances, imitation may
be sought as a vehicle to increase dissemination of knowledge to the
effect of furnishing the consumer with cheaper cost varieties.
A strong intellectual property regime would ultimately lead to a technological
and scientific monopoly prone to maintain the status quo or even reverse
the situation and hence pave the way for industrialized countries' products
to dominate the global market. This is made easier by elimination of
the obligation to exploit patents locally. Such a change would support
multinational companies to recoup R& D expenditure. Under the TRIPS
regime patents are an instrument for retaining and increasing industrial
capabilities in developed countries while also controlling commercialization
of protected goods and services in the rest of the world. If the new
intellectual property regime would ultimately lead to market control,
the justification for overseas investment may be substantially weakened.
On the other hand, the motive to transfer technology or establish productive
facilities in the developing world may substantially slacken or disappear.
The TRIPS Agreement provides world protection which developed countries
have been seeking. It narrows access to technology, and slows down the
expected rapid diffusion of new technology to developing countries.
The new notion carried in the TRIPS Agreement requires changes in many
of the basic principles of the legal systems as developed by international
conventions and national legislation. It includes the expansion of new
areas such as biotechnology, integrated circuits, computer programs,
the universlaization of standards of protection and the strengthening
of enforcement mechanism.
- What is the phenomenon of counterfeiting and what are its
adverse consequences?
Counterfeiting is an illegal use or an infringement of intellectual
property rights by imitating trademark goods, copyright goods, patent,
and design without the prior authorization of the right owner to effect
of causing direct loss to the owner in the form of diminished trade
revenue.
The initial process in the direction of global harmonization of intellectual
property protection started with the industrialized countries concern,
particularly the U.S in combating counterfeit goods. In historical fact,
a draft entitled "agreement on measures to discourage the importation
of counterfeit goods" was prepared by the U.S.A and EU in 1979.
The main purpose was to combat the unfavorable effect of counterfeiting
on trade revenues. In 1982 some industrialized countries prepared a
draft entitled "the anti-counterfeiting code." The U.S.A suggested
that the said code should be adopted as part of the GATT. However, developing
countries under the leadership of Brazil and India contended that intellectual
property issues fall outside the ambit of physical goods which is the
domain of GATT. They argued that intellectual property deals with intangible
property which falls within the jurisdiction of WIPO. The issue raised
for consideration is this: what are the effects of importation of counterfeit
goods on international trade and whether it could be quantified? The
sub-committee on trade of the U.S House of Representatives on the basis
of 1983 hearings issued a report supported by a report produced by the
International Property Alliance showed huge losses.
The U.S.A with a view to removing the deadlock at the GATT amended in
1984 section 301 of the Trade Act of 1974 authorizing the President
to take measures conducive to eradicate "unjustifiable or unreasonable
trade practices." to the effect of making intellectual property
unambiguously actionable under Section 301. The U.S.A Trade Representative
was assigned the task to make an annual review in order to detect priority
foreign countries which deny adequate and effective protection to intellectual
property rights or which deny fair and equitable market access to U.S
traders. The USTR is required to locate such countries on a priority
watch list or a watch list followed by retaliation or sanctions in the
form of increased duties, import restrictions and tariff exemptions.
The issue of intellectual property protection including counterfeit
goods was thoroughly discussed during the Uruguay Round trade negotiations
continuing from September 1986 to April 1994 which changed the General
Agreement on Tariffs and Trade into the World Trade Organization (WTO).
The Uruguay Round incorporated a resolution taken on January 28, 1987
under the title 'trade related aspects of intellectual property rights
including trade in counterfeit goods". The agreement of World Trade
Organization (WTO) was signed on April 1994 by ministers of 125 participating
countries at a meeting in Marrakech, Morocco. The TRIPS Agreement was
an Annex among a package of 2o agreements; however the phrase "including
trade in counterfeit goods" was removed and substituted with a
preamble carrying the same purport. The WTO Agreement entered into force
on January 1, 1995. The negotiations surrounded the TRIPS Agreement
demonstrate that a system of coercive economic retaliation measures
could serve enforcement mechanism.
Counterfeiting adverse effects include loss of sales revenue as would
diminish market share, it also acts to devaluate a company's brand image,
and may negatively encroach on a company's investment in research and
development. In some industries such as medicine and spare parts it
may pose a serious risk of purchasing poor quality goods. Needless to
say, it would do nothing to raise public faith in the probity of the
business world if commercial culpable dealings such as that of counterfeiters
were to be free from penalty. A report issued by OECD in 1989 has estimated
that counterfeiting illegal operations fall within the range of 5 to
7 percent of world trade and have generated about 250 billion in euro.
The World Customs Organization report of January 27, 2003 estimated
illegal trade at 450 billions in euro. Illegal sale of CDs represented
28% of total sales in 2001.
The World Economic Forum held at Davos on January 2003 supported by
government representatives, police authorities and customs departments
decided to take tough measures to combat counterfeiting. The Trans Atlantic
Business Dialogue has acknowledged counterfeiting and piracy as a priority
issue for action between the U.S.A and the EU governments. It has endorsed
clamping down measures on infringement of intellectual property rights.
OECD member states, industry associations, multinational companies are
exerting great efforts to implement new effective initiatives, ideas
and programs concerning IP enforcement. A noteworthy happening was the
creation of the First Global Congress on combating counterfeiting held
in Brussels in May 2004. It was attended by the World Customs Organization
(WCO), the Interpol, the International Trademarks Association (INTA),
World Intellectual Property Organization (WIPO) and Global Business
Leaders Alliance (GBLAC) a coalition of 15 major multinational corporations.
In the said Congress, the question of counterfeiting has been carefully
canvassed. The Global Congress urges a public-private partnership for
pursuing more concrete actions, undertaking joint studies focusing on
the means to avoid barriers and to structure much more effective machinery
prone to materialize in a proper enforcement of IP, particularly in
hot-spot countries.
It is pertinent to indicate that an efficient global IP protection is
a complex issue, as it does not operate to meet the economic interest
of each and every government which is obliged to strictly implement
the requisite enforcement measures. Global innovative pursuits would
probably entail large international profits, but the level of technological
development in each country determines the capacity to capture these
profits. The economic situation of the less developed countries, lacking
manufacturing capacity, may encourage counterfeiters to imitate, to
capture as a minimum, a fraction of the international profits resulting
from others research pursuits. However, as a matter of fact imitation
occurs in middle income, newly industrialized countries (NIC) having
the sufficient imitation capacity due to the fact that innovative activities
are ever more witnessed. The main reason behind imitation is that the
trade-off between innovation and imitation is not very similar for all
countries. Imitation offers the opportunity to acquire some profits
in the event local innovation is not paying. It should be observed that
even in countries where intellectual property has been implemented for
a considerable time, legal protection and enforcement still requires
great efforts.
There is one final reflection on all this and that is that, the grave
situation which encourages counterfeiters and faces companies producing
state- of- the- art products is the quality of the counterfeit goods.
When the quality of a counterfeit product is higher compared to an old
generation product, the consumer is likely to prefer the counterfeit
product. The poor consumer would find a substitute and the richer consumer
will pay less price. As a foregone conclusion the old generation product
would be turned out of the market. In such an instance a counterfeit
product would drive prices down.
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