Vu Van Ngoc, PhD ngocvv@neu.edu.

vn

Remind questions
What are conditions for a work to be copyrighted?
How long does copyright last? What are the actions not amounting to

infringement of copyright? What does the doctrine "Sweat of the brow" mean?

Case study
Kate dictates a short story to John, her John, who as a family favor to Kate takes the story down in shorthand and transcribes it into readable form on a word processor. John corrects obvious grammatical errors and eliminates all the "Ah"s and "Um"s but otherwise transcribes Kates spoken words verbatim. Kate dies shortly thereafter, and Spouse succeeds to Kate's estate, including all of Kates copyright rights in this short story, if any. Spouse considers the short story to be obscene and demands that John destroy all copies. John, however,

believes that the story is a great work of literature and that it would be a travesty to keep it out of the worlds literary canon. John therefore makes the story available on the internet at his personal web site and emails the story to about 1000 libraries and individuals who he thinks would be interested in having and reading it. Spouse obtains a copy from Johns web site and uses that to register the copyright. Spouse then brings an action against John for copyright infringement. John defends on the ground that he is the Kate of the story, or at least a joint author, and that in any event his making the story available to others in the way he has was a fair use. Evaluate the issues in this litigation.

Apple vs. Samsung: A battle over billions

Apple vs. Samsung: A battle over billions

Apple vs. Samsung: A battle over billions

A nine-person jury has sided with Apple on a majority

of its patent infringement claims against Samsung Electronics. The jury also awarded Apple more than $1 billion in damages. Jury found Samsung infringement of Apple utility, design patents for some (though not all) products. Jury found willful infringement on five of six patents. (CNET UK, August 24, 2012)

Apple vs. Samsung: A battle over billions

The U.S. International Trade Commission on Friday, 9

August 2013 ruled that South Korea's Samsung infringes on portions of two Apple Inc patents on digital mobile devices, covering the detection of headphone jacks and operation of touchscreens. The panel moved to prohibit Samsung from importing, selling and distributing devices in the United States that infringe on certain claims on the patents. It is unclear how many Samsung phones and devices would be subject to the ban.

Apple, Google, Amazon, more buying Kodak patents for $525 million
Bankrupt Eastman Kodak Co. said it will sell about 1,100 digital-imaging patents to a group that includes Apple Inc., Google Inc. and Facebook Inc., for about $525 million.

Apple, Google, Amazon, more buying Kodak patents for $525 million
The consortium of 12 companies, led by Intellectual

Ventures and RPX Corp., also includes a collection of other major technology companies including Research in Motion, Amazon.com Inc., Microsoft Corp., Samsung Electronics Co., Adobe Systems Inc., Huawei Technologies Co. and HTC Corp. The deal particularly benefits the companies Kodak sued over patent infringement. Existing lawsuits between Kodak and Apple, RIM, Fujifilm, HTC, Samsung and Shutterfly, are resolved under the deal. (Los Angeles Times, 19/12/2012)

Mobile Device Legal Wars

What is a patent?
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing

something, or offers a new technical solution to a problem.*

*WIPO Handbook IP

Steve Jobs Design Patents iPhone 4 and iPad

Patent Basics
Patents can protect ideas, not just the

expression of ideas Not all ideas fall within patentable subject matter Patents do not protect scientific principles or abstract theorems

Inventions: the 2011 EPO awards

Examples of Winning inventions:
Steel wire element to improve strength and stability of reinforced

concrete (steel); Car radar for driver assistance system: Unlike many similar systems on the market, the solution resulting from the inventions implements a frequency-shift keying continuous-wave (FSK-CW) to simultaneously determine the car's distance from foreign objects and gauge their speeds. Method of operating concatenated optical amplifiers: a way to speed up data transmission and expand its reach to a global scale. Using optical amplifiers doped with the element erbium, they could transfer more data through optical fibres, over virtually unlimited distances - revolutionising global communications.

What does a patent protect?

It provides protection to the owner of the patent.
Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner's consent. A patent therefore protects against infringements, and allows a patent owner to sell or license its invention (voluntary licenses).

PCT Applications by Country

Whats the aim of a patent?

It provides incentives to individuals by giving them recognition for their creativity and material reward for invention, and; the obligatory disclosure of the invention, should encourage further creativity and innovation in others. Economic growth needs innovation needs IPR

A quote in Steve Jobs by Walter Isaacson at p. 396

From the earliest days at Apple, I realized that we

thrived when we created intellectual property. If people copied or stole our software, wed be out of business. If it werent protected, thered be no incentive for us to make new software or product designs. If protection of intellectual property begins to disappear, creative companies will disappear or never get started. But theres a simpler reason: Its wrong to steal. It hurts other people. And it hurts your own character.

What kind of inventions can be protected?

Conditions:

the invention must consist of a patentable subject matter; the invention must be industrially applicable (useful); it must be new (novel); it must exhibit a sufficient inventive step (be nonobvious) disclosure in the patent application must meet certain standards

Patent Applications
Patent Rights do not arise automatically upon

conception of an invention Must obtain approval from a governmental patent Examiner in order to obtain enforceable rights Patent application process is costly and time consuming

Cost & Complexity

Patent applications are significantly more

expensive to prepare and file than trademark or copyright applications Patents are also typically more expensive to enforce than other forms of intellectual property protection

How Does One Obtain a Patent?

First assessment for whether or not the invention is patentable

AND marketable
File provisional application (~$10K) International (PCT Application) (~$20-30K) non-binding

examination and allows an applicant to postpone the applications for up to 30 months

US Utility Application (~$20-30K) binding examination Examination rounds and appeals require more time and money

Total average cost of a US patent: $50K

Total average time to obtain a US patent: 3-6 years

Who grants patents and how?

Patents are granted by national or regional offices;
The application must consist in title of invention, background and description of invention

(drawings); and claims.

Examination: as to form, the search and substantive examination (does it fulfil certain

conditions of patentibility).

What are the Parts of a Patent?

Abstract

Background of the Invention

Summary of the Invention Figures with brief descriptions

Detailed description or specification

Fully discloses what the invention is How it is made? How it can be used?

Claim(s): sets the legal boundaries of protection

Independent Dependent

Consolboard Inc. v. Macmillan Bloedel (Sask.) Ltd.(1978), 63 CPR (2d)

Enabling disclosure is the heart of the

patent system Patent is entirely directed at those skilled in the art

Structure of Patent Specifications

Claims

one or more numbered paragraphs which define the scope of the monopoly which the patent affords Drawings illustrations of the invention using the reference numbers used in the Detailed Description not all inventions require drawings

Other elements of patent protection

Scope: Patents have territorial application. An invention is

protected by the country that granted the patent (multiple patents);

Duration: average 20 years;

Enforcement in civil or criminal courts;

Exceptions/limitations: non patentable subjects and e.g.

compulsory licenses

License/sell: the patent owner may permit or license others

to use invention or sell it.

Compulsory licences: necessity or threat?

According to TRIPS agreement, compulsory licences

should only be granted in specific circumstances, including public health crises. For example, if the population of a particular country needs a potentially life-saving invention as quickly as possible and the patent holder is unable or unwilling to meet the demand. The use of compulsory licences in India and some other countries is attracting attention around the world.

Compulsory licences: necessity or threat?

The decision by the Indian Patent Office to impose a

compulsory licence against Bayer in 2012, forcing the company to allow a local manufacturer to produce a generic version of the cancer drug Nexavar . If countries grant compulsory licences too freely, innovators are deprived of the full benefit of their monopoly rights.

In sum a Patent
Is the right granted by the state to an inventor to

exclude others from commercially exploiting the invention for a limited period of time, in return for the disclosure of the invention, so that others may gain benefit of the invention.* *(WIPO handbook, p. 17).

Trade Secrets
Some inventions are better maintained as trade secrets
Trade secret protection may be available for new ideas

which do not constitute patentable subject matter

Patent law in Vietnam

General conditions for inventions to be eligible for

protection

"First to file" principle

General conditions for inventions to be eligible for protection (Art. 58, Law on IP) (1)
An invention shall be eligible for protection in the

form of the grant of an invention patent when it satisfies the following conditions:
(a) It is novel; (b)It is of an inventive nature; (c) It is susceptible of industrial application.

General conditions for inventions to be eligible for protection (Art. 58, Law on IP) (2)
Unless an invention is common knowledge, it shall be protected in the form of the grant of a utility solution patent when it satisfies the following conditions:
(a) It is novel; (b) It is susceptible of industrial application.

Objects ineligible for protection as inventions (Art. 59, Law on IP) (1)
The following objects shall be ineligible for protection

as inventions: 1. Scientific discoveries or theories, mathematical methods. 2. Schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games and doing business; computer programs. 3. Presentations of information.

Objects ineligible for protection as inventions (Art. 59, Law on IP) (2)
4. Solutions of aesthetic characteristics only. 5. Plant varieties, animal breeds. 6.Processes of plant or animal production which are principally of a biological nature, other than microbiological processes. 7. Human and animal disease prevention methods, diagnostic and treatment methods.

Novelty of inventions (Art. 60, Law on IP)

1. An invention shall be deemed novel if it has not yet been publicly disclosed by use or by means of a written description or any other form either inside or outside Vietnam before the filing date or the priority date, as applicable, of the invention registration application. 2. An invention shall be deemed not yet publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.

Inventive nature of inventions (Art. 60, Law on IP)

An invention shall be deemed to be of an inventive

nature if, based on technical solutions already publicly disclosed by use or by means of a written description or any other form either inside or outside Vietnam prior to the filing date or the priority date as applicable of the application for registration of the invention, the invention constitutes inventive progress and cannot be easily created by a person with average knowledge in the art.

Inventions which are susceptible of industrial application (Art. 60, Law on IP)
An invention shall be deemed to be susceptible of

industrial application if it is possible to realize mass manufacture or production of products or repeated application of the process which is the subject matter of the invention, and to achieve stable results.

Right to register inventions (Art. 86, Law on IP)

1. The following organizations and individuals shall have the right to register inventions, industrial designs and layout designs: (a) Authors who have created inventions by their own labour and at their own expense; (b) Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring, unless otherwise agreed by the parties involved.

"First to file" principle (Art. 90, Law on IP) (1)

1.

Where two or more applications for registration are filed by different parties for the same invention, a protection title may only be granted to the valid application with the earliest priority or filing date amongst applications which satisfy all conditions for the grant of a protection title.

"First to file" principle (Art. 90, Law on IP) (2)

Where there are two or more applications

satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date, a protection title may only be granted to a single application from such applications with agreement from all applicants. Without such an agreement, all such applications shall be refused the grant of a protection title.

Protection titles (Art. 92, Law on IP)

A protection title shall recognize the owner of the

invention (hereinafter all referred to as protection title owners); the author of the invention; and the subject matter, scope and term of protection. Protections title shall include an invention patent, utility solution patent.

Validity of protection titles (Art. 93, Law on IP)

1. Protection titles shall be valid throughout the entire territory of Vietnam. 2. An invention patent shall be valid from the grant date until the end of twenty (20) years after the filing date. 3. A utility solution patent shall be valid from the grant date until the end of ten (10) years after the filing date.

General requirements applicable to applications for registration of industrial property (Art. 100, Law on IP)
1. An industrial property registration application shall contain the
following documents: (a) Registration Form, made on the stipulated form; (b) Documents, samples and information identifying the industrial property object registered for protection as specified in articles 102 to 106 inclusive of this Law; (c) Power of attorney, if the application is filed through a representative; (d) Documents evidencing the registration right, if such right is acquired by the applicant from another person; (dd) Documents evidencing the priority right, if such right is claimed; (e) Receipt for payment of fees and charges.

Requirements on applications for registration of inventions (Art. 100, Law on IP) (1)
1. Documents identifying an invention registered for protection in an application for invention registration shall include a description of the invention and an abstract of the invention. The invention description shall contain a descriptive section and the scope of protection of the invention. 2. The description of an invention must satisfy the following conditions: (a) Fully and clearly disclose the nature of the invention to the extent that such invention may be realized by a person with average knowledge in the art;

Requirements on applications for registration of inventions (Art. 100, Law on IP) (2)
(b) Briefly explain accompanying drawings, if it is required to further clarify the nature of the invention; (c) Clarify the novelty, inventive step and susceptibility of industrial application of the invention.

Requirements on applications for registration of inventions (Art. 100, Law on IP) (3)
3. The scope of protection of an invention shall be expressed in the form of a combination of technical specifications which are necessary and sufficient to identify the scope of the rights to such invention, compatible with the description of invention and drawings. 4. An abstract of an invention must disclose principal features of the nature of such invention.

General provisions on assignment of industrial property rights (Art. 138, Law on IP)
1. Assignment of an industrial property right means the transfer of ownership right by the owner of such industrial property right to another organization or individual. 2. An assignment of an industrial property right must be established in the form of a written contract (hereinafter referred to as an industrial property right assignment contract).

Contents of industrial property right assignment contracts (Art. 140, Law on IP)
An industrial property right assignment contract must

contain the following principal contents: 1. Full names and addresses of the assignor and of the assignee. 2. Grounds for the assignment. 3. Assignment price. 4. Rights and obligations of the assignor and the assignee.

International Patent Environment

The Paris Convention (1883); substantive. The Patent Cooperation Treaty (1979); procedural,

international patent. TRIPS (1994); substantive. The Patent Law Treaty (2000, WIPO), procedural.