international business law C17

domain name

first protected by trademark law, then UDRP

biopiracy

governments and organizations in some emerging countries extract native or indigenous plants and animals for research (with the help of local knowledge), alter the plant or animal (such as through genetic engineering), and then obtain patents related to this research without providing the host country with compensation or affordable access to the inventions

royalty

a fee for granting a license to a foreign company

license

a limited permission to use the US firm's trade markets, copyrights, or know-how in making products for sale in the vicinity of the foreign company's country, or alternatively, for reexport to US

Uniform Domain Name Dispute Resolution Policy (UDRP)

adopted by Internet Corporation for Assigned Names and Numbers (ICANN), set forth general 'first to file' rules for domain names, but excepted bad-faith filing, created a dispute resolution process; created online protest to WIPO

utility patent

one that has a broad range of potential applications

counterfeit goods

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franchise tax

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How long can a trademark last

May have the trademark forever, renews every 10 ten years

priority claim

PCT gives the application a priority claim on that invention in all signatory states, with which the applicant business has up to 30 M after filing to begin the administrative processing (prosecution) of the application in the countries in which it wishes to obtain protection

Computer programs copyrights

WIPO approved a draft/treaty providing that computer programs are protected as literary works within the meaning of Article 2 of the Berne Convention; also expands the scope of broadcasts

countertrade

payments to the franchiser with goods instead of hard currency, e.g. Pepsi mushroom and cola

Licensor's economic return

depends on the licensee's marketing success, who usually will be expected to pledge to use its 'best efforts' to develop a market for the products manufactured with the IPR

output or customer restrictions

if the licensor plans to use the licensee as a source of products for the licensor's own distribution requirements

gray market/parallel trade

importation of merchandise produced and sold abroad and then imported back into US for sale in competition with the US trademark owner; left open in TRIPS

confidentiality

licensees are obligated to keep the licensed tech confidential, especially when the IPR being licensed is a tech that is protected primarily by trade secret procedures rather than patent law

Trade-Related Aspects of IPRs (TRIPS)

realizing the defects of the Paris and Berne Convention, the GATT agreement on Trade-Related Aspects of IPRs became effective in most nations on Jan 1, 2000; requires its signatories to enact minimum substantive standards of protection and create a viable enforcement mechanism; in effect caused developing countries to adopt ip laws that approximate those of E and NA and has created a system to enforce them

more about TRIPS

requires every member of the WTO to abide by the Paris and Berne Conventions-i/c protocols-and apply the national treatment; establishes 50 yr copyright protection pursuant to the Berne Convention; WTO members must recognize the patent holder's right to assign or license their patents and the term of patent protection must be at least 20 yrs

field of use limitations

restrict the applications for which the licensee may employ the IPR. e.g. the licensor of a laser tech permits use of tech for medical applications but not for communications

intellectual property rights

rights to technological know-how or artistic work; need not involve any capital investment abroad; transfer which to a foreign business in exchange for a fee or other form of remuneration; transferring risk losing control of one's IPRs and helping to establish a competitor

Patent Cooperation Treaty (PCT)

supplemented the paris convention by establishing a centralized utility patent application process, signed by 142 states, application filed with the WIPO (UN agency); if at least one of the applicants named in the PCT application is a national or resident of a PCT signatory than the app has a priority claim only applies to utility patents

gray market goods/parallel imports

the products imported back, can also be called counterfeit goods

+ and drawbacks of TRIPS

+: sets minimum standards of IP protection Drawback: developed nations accepted an 'escape clause' to the minimum substantive standards in Article 8 of TRIPS - exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, i/c to protect human, animal or plant life or health or to avoid serious prejudice to the environment

language politics

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tied-purchase

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Two main problems with the Paris Convention

1st: does not require any minimum substantive standard of patent protection; 2nd: lack of an enforcement mechanism, usually in CoJ but not enforcible; results in the TRIPS agreement in 1990s

patent

A patent is an intellectual property right granted by the Government of the United States of America to an inventor "to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" for a limited time in exchange for public disclosure of the invention when the patent is granted

trademark

A trademark is a brand name; assured national treatment by the Paris Convention, confers a 'right of priority' to a trademark holder if the foreign registrations are made within 6M after the original registration, prosecution is usually based on the law of the country where registration is sought (nation-by-nation process except for EU's system, and Madrid Protocol signatories administered by WIPO~PCT)

bad faith

At common law, it meant intentional wrongful behavior; under UDRP includes some negligence without a finding of intent desiring to stop cybersquatting

copyright

Berne Covention grants copyrights among signatory nations and bases on a national treatment scheme and requires all 164 signatory nations to enact certain minimum substantive laws; no filing needed; grant national treatment to copyright holders from other signatories automatically from the moment of creation rather than the time of filing

region with a consolidated multinational patent application

EU. since 1978, one has been able to obtain protection in all EU countries by filing a single application under the European Patent Convention; the Agreement Relating to Community Patents enhanced the system: created a unitary system for the application and grant of European patents and a uniform system for the resolution of litigation concerning patent infringement, under which all persons seeking a European patent complete the same PCT application form and file it with the European Patent Office

Chapter Sum

IPRs are licensed b/c receipt of royalties or for use in contract manufacturing, drafted to protect the IPR owner by restricting the licensee's use of the IPR, e.g. geo, field, output

Internet Corporation for Assigned Names and Numbers (ICANN)

Internet Corporation for Assigned Names and Numbers than administrated UDRP for issues about domain name

Bud case

Paris Convention: "indication of source"->Madrid Agreement, true but misleading TRIPS: 1) geographical indication violations to cases where an appellation misleads the public as to its true origin and 2)acts of unfair competition, has been called the misleading test -> requires a geographical indication to be misleading in order to be actionable

Differences btw TRIPS and US law

US geographic indications is significantly weaker, only if proving it deceives consumers into believing that the product actually originates from that place; TRIPS allows good faith misleads before effective date will US grants usage b4 effective date; TRIPS grants legal standing to interested parties while US allows purely commercial plantiffs

geographical limitations

When the licensor agrees to provide services to facilitate the anticipated activities, such as assistance in setting up an assembly line or other training and technical support, this is one way it can restrict the licensee's use of the transferred IPR. e.g. within a specific nation

franchising

an arrangement in which the licensor permits the licensee to sell certain good under the licensor's trademark or service mark under a franchising agreement, usually after conditioning its use on the licensee's observance of certain quality standards

useful

one part of the defi for new inventions protected by patent protection: capable of industrial application

nonobvious

one part of the defi for new inventions protected by patent protection: new, involves an inventive step

Paris Convention (International Convention for the protection of Industrial Property)

the first international property treaty on patent and trademark; Target Discrimination: guarantees that in each signatory country, foriegn trademark and patent applications from other signatory countries will receive the same treatment and priority as those from domestic applicants; Right of Priority: the date of an applicant's foreign application is deemed to be the same as the sate of the applicant's original application on the same invention, so long as the foreign application was filed before the first anniversary of the original application

exclusive rights

when exploitation of the licensed IPR requires significant financial or other resources of the licensee, it will often demand exclusive rights in the IPR within some geographic area in order to enhance its chances of earning an adequate return on its investment; the licensor sometimes grant rights to two or more licensees who are willing to compete to develop the target market

grant back

when negotiating over ownership and use rights if the licensee develops improvements in the licensed tech or creates new inventions based on that tech, the licensor may seek a grant back to itself of ownership in or at least the right to use-often without compensation-such new tech,

geographical indications

where a product, particularly a wine or liquor, is marketed by reference to a geographic region; under TRIPS, indication which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin