Theme 4. Industrial property

1. Concept of industrial property.

2. Characteristic features of industrial property institution.

3. Legal sources in the domain of industrial property right.

4. Paris convention on industrial property legal safeguard.

5. Objects of patent right.

6. Characteristic features of industrial property legal safeguard.

7. State registration of industrial property objects.

The second type of creativity is made up of scientific and technical activity the results of which are named industrial ownership.

In Ukraine the legislation about scientific and technical creation is in the state of becoming. Presently the laws of Ukraine "About ownership" from February, 7, 1991 are the basic sources of legislation of Ukraine about industrial ownership, "About bases of state policy in the sphere of science and scientific and technical activity" from December, 13 1991 p. "About scientific and technical information" from June, 25 1993 p., "About the guard of rights on the inventions and useful models" from December, 15, 1993, "About the guard of rights on industrial prototypes" from December, 15, 1993, "About the guard of rights on the sorts of plants" from April, 21, 1993, "About the stock-raising" from December, 15 1993 p.. Position about the State patent department of Ukraine from July, 21 1992 p. According to the law from September, 8 a 1992 p  national Patent of Ukraine accepted the row of tender law normative acts, which regulate the order of registration of rights for the objects of industrial ownership, and other department acts.

International agreements and conventions are the important source of patent right of Ukraine. Cabinet of Ministers of Ukraine by the statement from August, 26 1992 p. declared tacking of Ukraine to Parisian convention about the guard of industrial ownership, Madrid agreement about international registration of signs, Agreement about patent co-operation. The government of Ukraine took the responsibilities come out from these Conventions, Agreement and Contract.

A patent right in the objective sense is an aggregate of norms which regulate relations in connection with confession of authorship the use and granting permission on the usage and secure of the personal unproperty and property rights for authors and rightowners of rights for inventions, useful models, industrial prototypes.

A patent right in the subjective sense is the personal unproperty and property rights, which belong to the author of invention, useful model, industrial prototype, and other persons who purchased property rights on the objects of patent right in the order, forseen by current legislation.

After Parisian convention about the guard of industrial ownership from March, 20, 1883, to which the Ukraine inventions joined, the objects of industrial ownership, pare general utility standards, industrial drawings and models, factory and commodity signs, signs of service, firm brands pointing about the place or brands of origin and also prevention of unfair competition. However in article 1 of this Convention is specified, that all products can be the objects of industry, both of producible and natural origin.

In accordance with the current legislation of Ukraine about industrial ownership to this group of objects of intellectual property belong: inventions, useful models, industrial prototypes, unexposed information, including secrets of production (now-how), selection achievements, rationalization suggestions.

An invention is considered to be suitable for acquisition of right of intellectual ownership on it, if it, in accordance with the law, is new, has an inventional level and suitable for the industrial use. An invention is a technological (technical) decision which answers the terms of patentability.

The object of invention can be a product (device, substance and so on) or any process in any sphere of technology.

It provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally 20 years. Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.

A patent owner has the right to decide who may - or may not - use the patented invention for the period in which the invention is protected. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain, that is, the owner no longer holds exclusive rights to the invention, which becomes available to commercial exploitation by others.

Patents provide incentives to individuals by offering them recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which assures that the quality of human life is continuously enhanced.

Patented inventions have, in fact, pervaded every aspect of human life, from electric lighting (patents held by Edison and Swan) and plastic (patents held by Baekeland), to ballpoint pens (patents held by Biro) and microprocessors (patents held by Intel, for example).

All patent owners are obliged, in return for patent protection, to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world. Such an ever-increasing body of public knowledge promotes further creativity and innovation in others. In this way, patents provide not only protection for the owner but valuable information and inspiration for future generations of researchers and inventors.

The first step in securing a patent is the filing of a patent application. The patent application generally contains the title of the invention, as well as an indication of its technical field; it must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention. The application also contains various «claims», that is, information which determines the extent of protection granted by the patent.

An invention must, in general, fulfill the following conditions to be protected by a patent. It must be of practical use; it must show an element of novelty, that is, some new characteristic which is not known in the body of existing knowledge in its technical field. This body of existing knowledge is called «prior art». The invention must show an inventive step which could not be deduced by a person with average knowledge of the technical field. Finally, its subject matter must be accepted as «patentable» under law. In many countries, scientific theories, mathematical methods, plant or animal breeds, discoveries of natural substances, commercial methods, or methods for medical treatment (as opposed to medical products) are generally not patentable.

A patent is granted by a national patent office or by a regional office that does the work for a number of countries, such as the European Patent Office and the African Regional Intellectual Property Organization. Under such regional systems, an applicant requests protection for the invention in one or more countries, and each country decides as to whether to offer patent protection within its borders.

In accordance with chapter 3 article 6 of the Law of Ukraine «About the guard of rights on inventions and useful models» a legal safeguard does not spread on such objects of technology as: sorts of plants and breed of animals; topographies of integral microcircuits; results of the artistic constructing.

A useful model is considered to be suitable for acquisition of right of intellectual ownership on it, if it, in accordance with the law, is new and suitable for the industrial use.

The legal safeguard is given to the invention (to the useful model), that does not conflict with the public order, answers the principles of humanity and moral and corresponds to the terms of patentability.

An invention (useful model) is acknowledged new, if it is not part of level of technique. The level of technique includes all the information which became popular in the world to the date of presentation of request to the Government al service of intellectual property or, if priority is declared, to the date of its priority.

The disclosure this intonnation about it by an inventor or a person who got from an inventor does not influence on confession patentability of information invention (useful model) of information during 12 months to the date of presentation of request to the Governmental service of intellectual property or, if priority is declared, to the date of its priority. An invention has an inventional level, if for a specialist it is not obvious, so that it does not come out from the level of technique.

An invention (useful model) is acknowledged industrially suitable, if it can be used in industry or in other sphere of activity.

An industrial prototype is a result of creative activity of a man in artistic constructing industry. An industrial prototype is considered suitable for acquisition of right of intellectual ownership on it, if it, in accordance with the law, is new.

An industrial prototype is acknowledged new, if aggregate of its substantial signs did not become popular in the world to the date of presentation of request to the Governmental service of intellectual property or, if priority is declared, to the date of its priority.

A legal safeguard gets an industrial prototype, that does not conflict with a public order, the principles of humanity and moral, and corresponds to the terms of patentability.

The object of industrial prototype can be a form; picture or colouring or their combinations which determine original appearance of industrial goods and is intended for satisfaction of aesthetic and ergonomics needs.

The acquisition of right of intellectual ownership on an invention, useful model, an industrial prototype is ensured by a patent.

A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.

The volume of legal safeguard is determined by the formula of invention, useful model, aggregate of substantial signs of industrial prototype.

Terms and order of delivery of patent are set in the section IV of the Law of Ukraine «About the guard of rights on inventions and useful models», section IV of the Law of Ukraine «About the guard of rights on industrial prototypes».

The citizen of Ukraine, citizen of any other state or person without citizenship can be the author of any result of creative labour, that is it will always be a physical person.

Any legal or physical persons to which the equitable right of authors passes by agreement or after the testament, can be the subjects of the noted rights.

The state can become the subject of the noted rights in cases by the law.

Very often invention, a useful model or industrial prototype can be created not by one author, beet mutual creative labour of a few coauthors. According to the legislation about industrial ownership, the relations between coauthors are determined by the agreement between them. The staff of coauthors can be changed by the patent department of Ukraine on the basis of application handed by the coauthors.

A new legislation about intellectual property increased the role of employer with whom an author is in the labour relations by agreement of hiving. Laws about the inventions, useful models and industrial prototypes contain norms in accordance with which the employer has right on the receipt of patent. In the case the invention, a useful model or industrial prototype must be created in connection with implementation of official duties or commission of employer, on condition that a labour contract (by a contract) does not foresee other things.

Legal subjects of intellectual property on an invention, useful model and industrial prototype are:

an inventor, author of industrial prototype;

other persons, who purchased rights on an invention, useful model and industrial prototype by agreement or law.

The property intellectual ownership rights on an invention, useful model, an industrial prototype are:

the right on the use of invention, useful model, industrial prototype;

absolute right to allow the use of invention, useful model, industrial prototype (to give out licenses);

absolute right to hinder the illegal use of invention, useful model, industrial prototype, besides to forbid such usage;

other property intellectual ownership rights, set by the law.

Property intellectual ownership rights on an invention, useful model, industrial prototype belong to the proprietor of the proper patent, if other is not set by the agreement or law.

Property intellectual ownership rights on an invention, useful model, an industrial prototype operates from the date, following after the date of their state registration, on condition of maintenance of action of these rights in accordance with the law.

By a law the terms of temporal action of property intellectual ownership rights can be set on an invention to the set by them to the action.

Consequently, the industrial ownership can be defined as results of scientific and technical creation, which can be used for society. Industrial ownership is one of types of intellectual property. The industrial ownership is the component o intellectual property which concerns the creations of human mind.

Any disputes which arise up in connection with application of legislation about industrial ownership are decided by the court. In particular, courts examine disputes about authorship on the invention, useful model or industrial prototype; establishment of patentee; violation of property rights of patentee; conclusion and implementation of the licensed agreements; right of the previous use; reward to the inventors and authors of industrial prototypes, and also patentees; compensation.

Trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement.

Broadly speaking, trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade.

Trademarks may be one or a combination of words, letters, and numerals. They may consist of drawings, symbols, three - dimensional signs such as the shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colors used as distinguishing feature. If someone wants to register a trademark an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colors, forms, or three-dimensional features. The application must also contain a list of goods or services to which the sign would apply. The sign must fulfill certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it as identifying a particular product, as well as from other trademarks identifying other products. It must neither mislead nor deceive customers or violate public order or morality.

Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by the national office, or by the opposition of third parties who claim similar or identical rights.

A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a geographical indication includes the name of the place of origin of the goods. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. Whether a sign is recognized as a geographical indication is a matter of national law. Geographical indications may be used for a wide variety of products, whether natural, agricultural or manufactured.

An appellation of origin is a special kind of geographical indication. It generally consists of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. The concept of a geographical indication encompasses appellations of origin.

A geographical indication points to a specific place, or region of production, that determines the characteristic qualities of the product which originates from that place. It is important that the product derives its qualities and reputation from that place. Since those qualities depend on the place of production, a specific «link» exists between the products and their original place of production.

Geographical indications are understood by consumers to denote the origin and the quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by dishonest commercial operators. False use of geographical indications by unauthorized parties is detrimental to consumers and legitimate producers. Consumers are deceived into believing that they are buying a genuine product with specific qualities and characteristics, when they are in fact getting an imitation. Legitimate producers are deprived of valuable business and the established reputation of their products is damaged. Georgaphical indications are different from trademarks.

A trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using the trademark. A trademark will often consist of a fanciful or arbitrary name or device. A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. It may be used by all producers who make their products in the place designated by a geographical indication and whose products share specified qualities. Unlike a trademark, the name used as a geographical indication will usually be predetermined by the name of the place of production.

In essence, unauthorized parties may not use a geographical indication in respect of products that do not originate in the place designated by that indication. Applicable sanctions range from court injunctions preventing the unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.