If imitation is indeed the sincerest form of flattery, then the Chinese can be very sincere flatterers indeed. But if you prefer prosperity over flattery it would be wise to take precautions against losing your shirt (or at least the rights to it) in one of the world’s most dangerous IP jungles. It isn’t that the legal regime is deficient – it’s enforcement that’s lacking. For the present at least, China is a net importer of intellectual property. A relatively lawless IP environment is advantageous to China’s short-term interests, just as a strictly enforced IP environment suits the interests of net IP exporters such as the United States. This issue has been constant irritant in relations between China and Western nations, as well as Japan. Nevertheless, China’s enforcement of intellectual property has steadily improved in recent years.

Protecting intellectual property (IP) in China requires a multi-pronged strategy including registration, workplace security, employee contracts, commercial contracts and enforcement.

Registrations

China’s IP registration regimes are more or less consistent with international standards.

Trademarks – are protected on a first-to-file basis, with an exception for well-known trademarks. Do not rely on the “well-known” exception, however (unless you are Coca-Cola), because whether a particular trademark is “well-known” or not is a time-consuming argument that keeps IP lawyers in business all over the world. If a trademark uses words, the Chinese language equivalent should also be registered.

China has adopted the international Classification of Goods and Services under the Nice Agreement, and has also adopted the international registration regime under the Madrid system.

FIE Business Names – must be in Chinese and registered with the local Administration of Industry and Commerce before an application to set up a Foreign Invested Enterprise can be submitted (see this site’s Company Startup Guide for details on company name registration). Since China does not have a national register of business names, registrations are valid only within a particular locality (and an FIE business name cannot be registered in any location except its location of establishment). Trademark registrations offer better protection in this respect.

Patents & Designs – are protected on a first-to-file basis. China is a member of the Paris Convention, so filings in a member country within applicable time limits can also gain priority in China. More ominously, compulsory licenses may be granted (i) to qualified enterprises if the owner of the patent fails to license the patent on reasonable terms, and (ii) in the event of a national emergency. Because of this, many foreign companies do not register patents for sensitive technology in China. See Technology Transfers and Licensing for related information.

Copyrights – Copyrighted material may be registered with the China National Copyright Administration. As in the United States, copyrights are not granted on a first-to-file basis. Registration does serves as useful evidence of ownership of a copyrighted work, but it is not a legal precondition to enforcement.

Software – is considered copyrighted material and may be registered with the China National Copyright Administration. Registration requires the filing of source code (with some code blacked out). As a consequence, many foreign companies refuse to register their software in China.

Domain Names – are protected on a “first-to-file” basis. A foreign company
must have an FIE or Representative Office in order to register a “.cn” domain name in China.

Workplace Security

It is strongly advised to create a “plumbing” system to control IP leakage in the workplace.

IT systems and any hard copies of IP should be kept in an access-restricted, secure location.

Confidential information should be distributed on a strict “need to know” basis.

Confidential material should be marked “Confidential Information” in Chinese in anticipation of possible litigation in Chinese courts.

Employees

Independently investigate the reputation and trustworthiness of applicants for sensitive positions during the recruitment process.

Labor contracts should be prepared carefully. You should consider including the following in all labor contracts:

Confidentiality obligations

Non-compete clauses – Post-termination non-competition clauses should be limited to a reasonable geographic area and time limit. Compensation is also required to be paid during the period of non-competition.

Assignment – Although China recognizes the work-for-hire principle, the labor contract should clearly assign ownership of intellectual property created in the course of employment; otherwise IP rights may prove practically impossible to enforce against an employee who creates an IP-related work for hire.

Product Selection

Despite the additional tax breaks and incentives available, think carefully before manufacturing products that require new and sensitive technology in China. Components requiring new and sensitive technology may be imported into China in a secure manner for integration with the rest of the product.

Commercial Contracts

Since many commercial arrangements, even sourcing materials and components, can necessitate an exchange of intellectual property, adequate protections should be included in the contracts and associated documentation.

Administrative Enforcement Action

Various government organs have the power to take administrative action against IP infringers:

National Copyright Administration – The NCA is the “big gun” of the Chinese IP enforcement arsenal and is endowed with broad enforcement powers. They may order cessation of the infringing activities, confiscate illegal income, confiscate and destroy illegal copies, and impose fines.

State Administration of Industry and Commerce – The SAIC and its local AICs have a reputation for efficient trademark enforcement action, including investigations and raids. The SAIC also handles disputes regarding business names, registered trademarks, trade secrets, and passing off activities.

Customs – may confiscate products that infringe trademarks, copyrights and patents.

China Patent Office – may help with patent enforcement through investigation, mediation and raids.

General Administration of Quality Supervision, Inspection and Quarantine – may get involved if product quality and health issues are at issue.

Administrative enforcement is a relatively inexpensive and efficient alternative to litigation, and it is easier to win a conviction.

Litigation

If administrative action fails to bring the desired result, litigation may have to be resorted to. Chinese courts can issue injunctions and award damages, although in practice their enforcement powers are typically weaker than in Western nations.

Criminal Prosecution

Criminal liability, including imprisonment, can be imposed for IP violations, although successful prosecutions are rare. Financial thresholds that must be met before criminal liability can be assessed can be difficult to prove. These thresholds include:

RMB50,000 turnover for knowingly selling goods with counterfeit registered trademarks

RMB50,000 turnover or RMB30,000 profits if trademarks are applied to goods without authorization

International Enforcement

Products that infringe intellectual property rights can be interdicted by customs at the destination port. It is also possible to seize the overseas assets of infringers located in China.

Technology Transfers and Licensing

Foreign investors often license technology and intellectual property such as trademarks, patents, copyrighted material and trademarks to the FIEs they invest in. A foreign party may also license technology to unaffiliated Chinese companies, such as in manufacturing or management contracts. Unlike joint venture contracts, licensing contracts can be governed by foreign law.

Proper licensing will help the foreign party control its technology and secure the payment of royalties (registration is required for the latter). Only the brave, however, will dare to license sensitive technology to an entity which the foreign party does not control.

Technology transfers are understandably less common than licensing and are usually used as part of the foreign investor’s contribution of technology to a Foreign Invested Enterprise as Registered Capital.

Technology Restrictions

Chinese foreign trade law recognizes three categories of technology: Permitted, Restricted, and Prohibited. These are contained in a catalogue that lists specific technologies.

Permitted technology is simply technology which has not been classified as Restricted or Prohibited.

Restricted technology may not be imported without a license, and is generally related to the chemical, petrochemical, biochemical, biological, and petroleum refining industries.

Prohibited Technology is technology that is considered to endanger national security, the public interest, or public morals by placing people’s lives or health at risk or destroying the environment.

Paperwork

A license for restricted technology must be approved by and registered with the Commission of Foreign Trade and Economic Cooperation (COFTEC). COFTEC will adjudicate a license application within 30 days. Licensing contracts for Restricted technology are effective only after COFTEC issues the corresponding Technology Import License.

Prohibited technology may not be brought into China.

Certain types of Permitted technology, while not subject to licensing requirements, are still subject to filing with COFTEC.

Technology transfers relating to certain major projects must be registered with and approved by the Ministry of Commerce. Trademark licenses must be filed with the
China Trademark Office within three months of execution in order to remit royalties out of China. Foreign trademarks must be recorded at the China Trademark Office in order to remit royalties out of China. Trademark recordation takes about a year and a half.

Improvements

A foreign company may not prohibit a licensee from improving the licensed
Technology, and these improvements become the property of the improver.

Technology as FIE Capital Contributions

Technology may be contributed as part of an FIE’s Registered Capital; however, the FIE will then become the owner of the technology and the foreign contributor will have to license the technology from the FIE if it wants to use it.

Technology contributed as capital is required to be appraised upon importation and should also be appraised by the Ministry of Commerce or the relevant local COFTEC as soon as the FIE is approved.

Since the Company Law requires 30% of the Registered Capital of an FIE to be contributed in currency (20% of the initial installment of Registered Capital), it follows that alternative forms of contribution, including technology, cannot total more than 70% and 80%, respectively.

“Lawsuits primarily benefit the attorneys and nobody else.”
- Bryce’s Law

INTRODUCTION

The protection of intellectual property should be a significant concern to all
Information Technology organizations. Without protection, commercial
hardware/software vendors would quickly evaporate as others would inevitably
steal their designs and programs. Corporate developers would also suffer if
their ideas, inventions, and programs were misappropriated thereby causing
them to lose their competitive advantage. In fact, our corporate landscape
and standard of living would be radically different if we had no such
protection. Fortunately, the framers of the U.S. Constitution were wise
enough to implement legislation safeguarding the authorship and ownership
of literature, art, and inventions, thus causing the United States to flourish in
the arts and sciences. But the advent of the computer caused us to reconsider
how we safeguard such property. For example, the concept of a computer
program has been a bit nebulous to some people; should the source code be
protected by copyright? What about the object code (executable)? Attorneys
have been debating this subject over the last thirty years and there is still
general confusion in the field.

In 1974, MBA embarked on our own lawsuit to protect the “PRIDE” methodology.
This was a lengthy legal battle which took the courts into unchartered waters. At
the time, “PRIDE” was nothing more than a methodology implemented with
printed manuals and forms (no software support at the time). To safeguard our
product, our lawyers drafted a standard nondisclosure agreement which all
prospective buyers would sign prior to our sales presentation. Further, our
contracts included similar verbiage instructing the customer to safeguard the
physical embodiment of the product and not to divulge it to unauthorized third parties.

We were contacted by Arthur Young & Company in 1974 to conduct a “PRIDE” sales
presentation for one of their consulting clients in Milwaukee, Wisconsin; the
Harley Davidson Motorcycle Company (then a division of AMF). The attendees
signed the nondisclosure agreement and the presentation was conducted as
usual. Following the presentation, MBA was informed that Harley wouldn’t be
purchasing our product, and that Arthur Young would be developing a similar
methodology for Harley instead. This made MBA suspicious, particularly since one
of Young’s consultants was a former “PRIDE” user. Consequently, MBA initiated a
lawsuit over misappropriation of trade secrets.

This turned into a long and ugly legal battle which lasted eight years. Basically,
the lawyers for the opposition contended that since the “PRIDE” materials had
copyright notation printed on them, they were in the public domain. In contrast,
it was our contention that “PRIDE” was a trade secret, In the end, we won the
lawsuit and “PRIDE” was proven to be a trade secret in a court of law. This
litigation established many precedents and is often referenced in similar cases;
for additional information, see:

Chicago-Kent College of Law

http://www.kentlaw.edu/perritt/honorsseminar/honorssemts2.htm

Library Law

http://www.librarylaw.com/ip-kirschner3.html

Many years have gone by since the verdict was passed. In 1989, Arthur
Young & Company merged with Ernst and Ernst (now called Ernst & Young),
the principals of the case have moved on and we no longer bear any ill-will
towards the company. Further, “PRIDE” was placed on the Internet
in 2004 (with copyright notation).

As a result of the lawsuit, MBA learned a lot about the protection of
intellectual property. I may not be an attorney, but you may look upon this
as a convenient primer to protect yourself.

COPYRIGHTS

Copyright is primarily concerned with the authorized reproduction of such things as text, graphics, music, and audio/video recordings. As such, it protects publishers, authors,
artists, and designers from unauthorized republication or redistribution of their work. Not too long ago, in order for a copyright to be enforceable, it had to be registered with the copyright office. However, the laws were somewhat loosened in 1976 whereby copyright protection is now effective from the moment the work is first created in fixed form. Although the
use of copyright notation is no longer mandatory, it is highly beneficial to include it whenever possible to indicate your work is protected by copyright. Notation typically appears as:

“Copyright © 2002 ABC Company”

Since computer program source code is written as text, it is a wise idea to add such notation in the source code. But understand this, copyright only protects the work from unauthorized reproduction, it does not protect the author’s ideas (which is how the lawyers of Arthur Young argued against us). Although the exact source code cannot be reused, it does not protect the logic of the program. To illustrate, suppose a new
employee brings with him some source code from his last place of employment. Copyright protection would prohibit him from reusing the source code, but it wouldn’t stop him from using the ideas contained in the program. Unfortunately, most programmers do not like to reinvent the wheel and, as such, frequently reuse source code over and over again. From this perspective, probably every company with an I.T. department is guilty of some form of copyright infringement.

TRADE SECRETS

A trade secret is much different than a copyright. Basically, it represents some unique formula, design or idea. Perhaps the best known example of a trade secret is the Coca-Cola syrup formula which is strictly protected in a vault. There are essentially two elements for establishing a trade secret; first, that it is a “unique” idea or formula, that it has distinguishable characteristics or properties to differentiate it from others, and;
second, that you can demonstrate you are taking effective safeguards to protect it from unauthorized use (hence, making it a “secret”). In the lawsuit over “PRIDE”, we were able to successfully demonstrate that “PRIDE” was unique and that we had taken adequate steps to safeguard unauthorized use (our nondisclosure agreement).

PATENTS

A patent is similar to a trade secret in that the inventor has a unique idea or device he wishes to prevent others from producing. To implement a patent, the idea or device must be registered with the U.S. Patent and Trademark Office. A registration process is required which includes a fee. For an invention to be patented, it must be proven to be unique, useful, and not of an obvious nature. If a patent is granted, the inventor is protected from others producing a similar invention for a limited period of time (20 years). The patent is renewable
at the end of this period.

The computer field makes active use of patents to establish unique inventions and protect them from others For example, IBM typically registers the most patents each year, both hardware and software.

TRADE MARKS/SERVICE MARKS

A trademark is an arbitrary word, name, symbol, or device used to distinguish a particular product. A service mark is similar except it is used to distinguish a particular service. For example, “PRIDE” is the registered trademark of M. Bryce & Associates.

Like a patent, the trade/service mark has to be registered with the U.S. Patent and Trademark Office. And, Yes, a registration fee is required. Notation normally accompanies the trademark
to indicate it is registered ®. Use of such notation should be encouraged so that others know your product or service is a trademark.

A trade/service mark means no other company can use it to offer a competing product or service unless authorized by the company holding its title. As such, it is closely related to the integrity of the title company. If a competitor uses it, the public will assume they are somehow aligned with your business and, as customers of your competitor, are entitled to the same level of service or quality your business offers. If the competitor fails in this regards, it is a reflection of both your product/service and your company which could damage your business.

CONCLUSION

When MBA was founded, we were very lucky to get good, sound legal advice for protecting our intellectual property. Because of this, I encourage anyone concerned in this regard to seek such advice from a qualified attorney.

Another way to assist in the protection of your intellectual property is to enact some form of employee agreement, whereby the employee agrees not to misappropriate your products (such as designs and software), or use other intellectual property without expressed authorization. This puts your employees on notice.

Devices such as copyrights, trade secrets, patents, trade/service marks are very helpful for preventing the unauthorized use or distribution of your products. However, if someone really wants to pirate your products, they will. When you catch someone in the act though, try to give them a way out. I always recommend that you try to avoid litigation whenever possible. I find such
lawsuits primarily benefit the attorneys and nobody else. But if your livelihood is genuinely threatened, as ours was, then you have no alternative but to use the full force of the law.

Intangible assets such as trademarks, copyrights and patents have the same basic attributes of ownership as any tangible property. Then why do they seem so confusing? While the attributes of ownership for intangibles are the same as for those you touch, the nomenclature, i.e. the labels used to describe the rights in intangibles, are different from that which we learned with respect to hard assets. Learn the language of intangible assets and you will be on your way to a better understanding.

What terms are used instead of “sale” or “lease”? With real or personal property, one sells the car or the land, or rents or leases the house to a tenant. Intellectual property has the exact same rights and attributes, only the words are different. A total sale is called an “assignment” and a lease or rental of rights is a “license.” One tenant is called an “exclusive licensee” and co-users of the same IP, at the same time, are “non-exclusive licensees.”

What is a trademark? A trademark is a word, symbol, slogan or sound that is used to identify and distinguish your goods and services from those of your competitors. The rights in a trademark are secured and ultimately maintained only by continuous use in commerce on certain goods and services. Trademark rights are not established without use for particular goods or services.

What does it mean when a mark is “inherently distinctive?” A word, phrase or symbol that is “inherently distinctive” is strong and generally easy to protect as a trademark. It is a term that does not describe the qualities, characteristics or ingredients of your goods and services. It is protectable against third parties without proof of “secondary meaning” and serves as a strong sword against infringers and cyber squatters. While not always easy to select, inherently distinctive marks bring stronger value and protection to your business. The word “diesel” is generic as applied to truck and engine parts, but it becomes distinctive when applied “arbitrarily” to clothing. Diesel has nothing to do with clothing, except as a brand.

What is “secondary meaning” or acquired distinctiveness? Terms that describe the qualities, characteristics or ingredients of your goods are “descriptive” and cannot be registered as a trademark. Nor can those terms be used as a sword against infringers, unless the owner successfully proves that the mark has acquired a “secondary meaning” in addition to its literal meaning. The question is whether the mark can be shown to be known by the public as a product from a unique source? Is there a public association of the term with your product or service? For example, the owner of CHARCOAL STEAK HOUSE lost in an effort to enforce its name since it was held descriptive and the owner was unable to present enough evidence of secondary meaning.

How does a trademark differ from my company name? Formation of a company and the right to use that company name as a corporate entity has nothing to do with establishing trademark rights! The distinctive portion of a corporate name can become a trademark when correctly used in connection with the sale of goods or services to the public. However, until this occurs, a corporate name offers little protection against subsequent use in commerce by a competitor who establishes prior lawful use and/or registration with the U.S. Trademark Office for specific goods and services.

How does a domain name differ from a trademark? A domain is an address on the Internet. It is the location of your website, and may or may not be used to offer particular goods and services to the public. Domain names are not a substitute for a brand. Many domains cannot serve as trademarks, especially if they are only a descriptive term which describes the goods and services. Trademark rights in domains can be registered if the term is distinctive and used to advertise and sell goods and services. An example of a descriptive domain with little or no trademark protection is .

To clear up confusion as to how to protect the Intellectual Property of websites, this article will give a brief explanation on how websites might be protected under Patent Law, Trademark Law, and Copyright Law.

The first concept to understand regarding Intellectual Property is the fact that patent law, trademark law, and copyright law overlap.  It is possible to get a patent, a trademark, and a copyright on a bicycle.  A patent can be applied for a unique braking system on the bike.  A trademark can be created for a unique and non-functional look of the bike (and word marks).  And a copyright can be extended to various graphics on the bicycle as well.  The three pillars of intellectual property: patents, copyrights, and trademarks are no mutually exclusive.

As such, a website which incorporates a novel and non-obvious method or process can be afforded patent protection.  One bad example is the Amazon 1-click patent.  This is a bad example in the sense that the patent was probably improperly issued due to serious questions related to USC 103 which requires non-obvioiusness.

A website may also be able to qualify for trademark protection through various logos, words, colors, sounds, or other source identifiers which are placed throughout the website.  A consistent look throughout the website pages can be given trademark rights.  A closely related issue may be cyber-squatting which is actually covered under another narrow law.

And a website may also have copyright rights as well.  Most websites have an assortment of images, articles, artwork, and other text which certainly comes under copyright law.  Moreover, any software running on those websites may also qualify for copyright law through their source code and object code which may be registered with the Library of Congress.

Los Angeles Patent Attorney los angeles patent trademark attorney

The expression, ‘intellectual property’ has come to be internationally recognized as covering mainly two branches, namely; ‘industrial property’ and ‘copyright’. Patents, industrial designs and trade marks used to be considered as different kinds of industrial property. In Bangladesh (during the time of the then British regime), the first legislation of its kind, on copyright was introduced in 1914, which was mainly based on the British Copyright law of 1911. After the independence from Britain new law on copyright was promulgated in 1962. The Copyright Ordinance 1962 has been replaced by the new copyright act of 2000. Now in our country, Copyright law is regulated by the Copyright Act 2000. This is done because of the prevailing situation in Bangladesh and around the world.

In case of patent and designs we have law which we inherited from our Colonial ruler. Patent rights are created by statute and governed by the Patent and Designs Act 1911. We have also law related to trademarks and it is regulated by the Trademarks Act 1940.

Intellectual property has acquired an internationally recognized character. Now it is regarded as “one of the most important sectors” of international law, having its source in various international conventions. At present, each and every country is trying to shape or reshape their legislature, relating to intellectual property; in the light of those international conventions.

The convention establishing the World Intellectual Property Organization (WIPO), concluded in Stockholm on July 14th, 1967, provides that, ‘intellectual property’ shall include rights relating to:

1.            literary, artistic and  scientific works,

2.            performances of performing artists, phonograms and broadcasts,

3.            inventions in all fields of human endeavor,

4.            scientific discoveries,

5.            industrial designs,

6.            trade marks, service marks and commercial names and designations,

7.            protection against unfair competition,  

And all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields. (Article 2/VIII) 1

Intellectual property protects application of ideas and information that are of commercial value.2

By virtue of a number of international conventions such as the, Berne Convention and the Universal Copyright Convention, copyright acquired in one country extends to other countries which are member of these conventions. Other intellectual properties are beginning to acquire the same nature as well.

The principles of intellectual property law are substantially the same in all countries with little variation to meet the national requirements of each of the countries.

Bangladesh, as a least developed country, has also enacted intellectual property law in its national legislature.

The Trade Related aspects of Intellectual Property rights (TRIPs) were included as integral part of World Trade Organization (WTO) due to pressure and interest of basically transnational companies and developed countries to ensure maximum profit or interest out of intellectual property in international trade.3 The TRIPs Agreement has been called the most ambitious international intellectual property convention ever attempted. TRIPs agreement has established the protection of intellectual property as a major part of the multinational trading system embodied in the WTO. As one commentator observer, intellectual property is now a key component of this trading system, “the protection of intellectual property is one of the three pillars of the WTO”.4

Bangladesh is now enjoying the transitional period that has been fixed by WTO under the light of TRIPs. So, we do not have a clear idea about the relation between intellectual property rights and economical development. But, it is certain that after the expiration of transitional period, Bangladesh will have to face a serious and severe situation because of the weak legal framework relating to intellectual property.

Now, in brief, the main features of intellectual property laws are given below:

1.      The Patents and Designs Acts, 1911:-

     (Act no. 11 of 1911)

The salient features of our existing Act are as follows;

                          Part-1; of the Patents and Designs Act, 1911; is about of patent. This part starts from section-1 and extends to section-42.

                          Section 2(8) contains the definition of invention; it proceeds as – invention means any manner of new manufacture and includes an improvement and all alleged invention. In sub-section (10) of the same section, provides the explanation of manufacture, “manufacture includes any art, process or manner or producing, preparing or making any article and also any article prepared or produced by manufacturer.”

                          Section-3 of the Act provides about the manner and mode of an application for patent. According to section-3(1); a patent application can be made by any person, whether he is a citizen of Bangladesh or not. An application can be made, alone or jointly with any other person.

                          According to section-4 of the Act; there are some provisions about specification. Wection-4(2) states that, a complete specification must particularly describe and ascertain the nature of the invention and the manner in which the invention is to be performed.

                          Section-10 of the Act, discusses about the topic, “grant and sealing of patent”. According to section-10(1); if there is no opposition of the patent application or, in case of opposition, if the determination is in favor of the grant of a patent, a patent shall, on payment of the prescribed fee, be granted, subject to such conditions if any as the Government thinks expedient, to the applicant, or in the case of a joint application to the applicants jointly, and the Controller shall cause the patent to be sealed with the seal of the Patent Office.

                          Term of patent, is laid down in section-14(1) of the Act. The duration of patent is sixteen years from its date. Section 15 of the Act; also provides rules regarding extension of the term of patent.

                          If any patent has been ceased, owing to the failure of patentee to pay any prescribed fee within the prescribed time, the patentee may apply to the controller in the prescribed manner for an order for the restoration of the patent. Section-16 of the Act deals with the matter, restoration of lapsed patent.

                          Section-22 of the Act contains provisions of “Compulsory Licenses and Revocation”. Both the Govt. and High Court Division are empowered to grant compulsory license or revocation of patent. Any person interested may present a petition to the Govt., alleging that the demand for a patented article in Bangladesh is not being met to an adequate extent and on reasonable terms and praying for the grant of a compulsory license, or in the alternative, for the revocation of the patent.

                          According to section-25 of the Act, if any patented invention or the mode which it is exercised; is mischievous to the state or prejudicial to the public; Govt. can declare the patent, revoked, by notification in the official Gazette.

                          Section-26 of the Act; provides the grounds, on which; a patent can be revoked by the High Court Division. Section-26(2) also provides, who can present a petition for revocation of a patent.

                          Section-30 of the Act; declares that; an innocent infringer of a patent; is exempted from liability or damages for infringement.

                          Part-II of the Act; describes all about ‘Designs’ or industrial designs.  According to section-43(1); any person claiming to be the proprietor of any new or original design not previously published in Bangladesh, can apply to the Controller for the registration of that particular design.

                          According to section-47(1); the proprietor of a registered design, shall subject to the provisions of this Act, have copyright in the design during five years from the date of registration.

                          Section-51(A) of the Act; narrates that, any person interested may present a petition for the cancellation of the registration of a design. Such petition should be presented to the High Court Division.

                          Part-III of the Act; is about, Patent Office and proceedings there at.

                          According to section-59 of the Act; every register kept under this Act shall at any convenient times be open to the inspection of the public, subject to provisions of this Act.

                          Section-65 of the Act; states that, in any proceeding under this Act, the Controller shall have the powers of a Civil Court for the purpose of receiving evidence, administrating oaths, enforcing the attendance of witness compelling the discovery and production of documents, issuing commissions, for the examining of witnesses and awarding costs and such award shall be executable in any Court having jurisdiction as if it were a decree of that Court.5   

2. The Trade Marks Act; 1940:

     (Act No. V of 1940)

The basic principles of the Trade marks Act are described below:

            Section-2 of the Trade marks Act contains definitions that are related to this Act. As to, section-2(k); trade mark means a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of that identity of that person.

            The establishment of Trade marks Registry at Dhaka, appointment of the Registrar and Deputy Registrar are laid down in section-4 of the Act.

            According to section-5 of the Act; the registration of a trade mark, requires distinctiveness. Purpose of such distinctiveness is to distinguish those particular goods from the others, which have similarity in nature.

            Any mark, containing scandalous design; or be likely to hurt the religious susceptibilities of any class of the citizens, or to be contrary to any law for the time being in force or morality is prohibited for registration of that mark. Section-8 of the Act, say so.

            Section-16 of the Act; provides that; when an application for registration of a trade mark has been accepted and either has not been opposed or having been opposed, has been decided in favor of the applicant, the Registrar shall, registers the said trade mark.

            Section-18 of the Act, says that; the registration of a trade mark shall be a period of seven years, and may be renewed from time to time in accordance with the provisions of this section.

            According to section-20 of the Act; no person shall be entitled to institute any proceedings to prevent, or recover damages for the infringement of an unregistered trade mark.

            According to section-46 of the Act; any person aggrieved can apply to the High Court Division or the Registrar, for the cancellation or verification of the registration of a trade mark on the ground of any contravention of, or failure to observe a condition entered on the register in relation there to.

            Chapter-IX of the Act; is specially written down for textile goods.

            Chapter-X of the Act, states the provisions regarding offences and restriction of use of Royal Arms and state emblems.

            According to section-73 of the Act, any suit for the infringement of a trade mark or otherwise relating to any right in the trade mark; shall be instituted to a District Court having jurisdiction to try the suit.6

3.     THE COPYRIGHT ACT; 2000:

  (Act No. 28 of 2000)

A short overview:-

            Section-2 of the Copyright Act; provides all the definitions related to copyright and so on.

            According to Chapter II; section -9, 10 and 11; Copyright Board will consist and the post of Register has made. The board is a quasi-judicial body; while working, it would be deemed as a Civil Court.

            Definition of copyright is laid down in Chapter III; section 14 of the Act. Section 14(2) includes, ‘computer programs’ as a subject to this Act.

            Chapter IV; deals with the ownership of copyright and the rights of the copyright owner. This Chapter starts from section-17; ends to section-23.

            Chapter V of the Act; describes all about the term of different types of copyright. Generally the term extends from the lifetime of the author until sixty years from the beginning of the calendar year next following the year in which the author dies; is at section-22. The section also provides that, copyright shall subsist in any literary, dramatic, musical or artistic work (other than a photograph). Section-25 to section-32 of the Act narrates the duration of copyright for different types. For instance, posthumous work, cinematograph films, sound recordings, photograph, anonymous and pseudonymous works, Govt. works, work of any local body, work of international organizations.

            Section-50 of the Act; deals with compulsory licenses in works withheld from public.

            Chapter X of the Act is about, registration of copyright.

            Chapter XII; section-71, describes about infringement of copyright and section-72 of the Act; provides acts not to be infringement of copyright.

            Chapter XIV; is about Civil remedies, that are available against infringement of copyright. Exclusively, section-76 of the Act; provides, remedies against such infringement. According to section-81 if the Act; the Court of District Judge, is the Court of first instance of such proceedings.

            Chapter XV of this Act; describes offences and punishment. According to section-82 of the Act; any person who knowingly infringes or abets the infringement of copyright; shall be punishable with imprisonment for a term which shall not be less than six months. But, which may extend to four years and fine which shall not be less than fifty thousand taka but which may extend to Taka two lacks. But; where the infringement has not been made for gain in the course of trade or business; the Court may, adequate and special reasons to be mentioned in the judgment, impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand taka.

            According to section-95 of the Act; an order made by the Registrar is a subject to appeal to Copyright Board. According to section-96; against any order; made by the Board; any aggrieved person, within thirty days of such order can file a petition of appeal to the High Court Division.7

PROBLEMES AND INSUFFICIENCY OF THE EXISTING INTELLECTUAL PROPERTY LAWS:

PATENTS AND DESIGNS ACT:-

The defects are;-

Like any other national patent system, novelty is an essential requirement of an invention to be patentable under the existing law of our country. But it is clear from the definition of ‘invention’ in section-2(8) of the 1911 Act; the invention to be patentable need not have a commercial pecuniary success. In other words, utility of an invention is not required by this definition. Although lack of utility is a ground for revocation of a patent under section-26(f) of the Act, till now this has not been included in the definition of invention. The 1911 Act makes no difference between patentable and non patentable inventions. Considering the public interest certain items should be kept outside the domain of patent protection. Since under the existing law no item has been excluded from the domain of patent protection, any type of new invention may obtain patent protection although it should not be patentable for the greater interest of the public at large. Under the existing law, the application for a patent must contain a declaration that the applicant is the true and first inventor or the assignor or legal representative of such inventor. But the term, “true and first inventor” is left undefined. Thus any person importing an invention for the first time into Bangladesh or any person to whom an invention is first communicated from outside Bangladesh can claim to be the “true and first inventor” of that invention and thus, can take the advantage of the vagueness of the term. Here; a fact should be added that, such practice already has begun. Some pharmaceutical companies don’t having any research and develop cell, importing some drugs, and by claiming patent, under the ambiguity of the Act, getting patent. A statistic says that, at the 1st and 2nd week of March, 2006; on an average, 40 patents were granted by the patent office, in each week. Thus, the local producers are forced to remain non productive on that particular patented items. The standard of examination varies from country to country. In some countries like Netherlands, Germany, U.S.A. and Japan it is rigorously involving an extensive search for both novelty and obviousness among documents published in many countries, over a period of many years. But according to our existing patent law; examination is less rigorous involving for novelty only, and the extent of search is restricted. Term of patent protection shall, as laid down in section-14, be sixteen years from its date. But the term is not sufficient enough for the exploitation of the patent right. What constitutes infringement of patent isn’t defined in the Patents and Designs Act, 1911. Section-29(1) of the Act only says that, the patentee has a right to sue against the infringer during the continuance of the patent acquired by him. Section-30 of the Act says that, a patentee shall not be entitled to damages against an innocent infringer. But, ignorance of law is no defense. The infringer should pay for the project as compensation of damages. Under the existing law any process or manner of producing, preparing or making an article in patentable as appears from section-2 (8) read with section-2(16). But, the 1911 Act does not confer upon the patentee the exclusive right to exercise the process. The 1911 Act contains provisions regarding compulsory licenses of patent rights but the terms and conditions of conditions of compulsory licenses are not detailed in the Act.

TRADE MARKS ACT:-

1.            Section-22(3) of Trade Marks Act defined infringement in a very narrow sense though the act has provisions against infringement.

2.            Although Chapter X of the Act, describes about offences and restrictions of use of Royal Arms and state emblems but this chapter does not extends to the infringement of any registered trademark. Any deceptive use of any registered trademark; is not also included in this chapter.

3.            There is no provision for protection of internationally recognized trademark in our existing Trademark Act 1940.

COPYRIGHT ACT:- 

Our existing copyright law has been enacted in line with the copyright law of India. It has been enacted to cope with the prevailing international set up of copyright system. So, preventive measures have been adopted to tackle the future complications in copyright sector.

NECESSARY PROPOSAL FOR REFORMATIONS: The term ‘intellectual property’ is still at its nascent stage in our country and people are not aware of the concept and importance of intellectual property. But, in international arena, the concept and coverage of intellectual property is growing so fast than any other brunches of law. We have intellectual property laws but these laws are not sufficient to tackle the challenges that are imminent and threatening us. Keeping in mind the Trade Related Aspects of Intellectual Property Rights (TRIPs) agreement and other relevant conventions the following reformation proposals can be made:

Reformations of the Patents and Designs act:

ü      The Patent and Designs Act, 1911 should be revised thoroughly.

ü      Essential requirements of patentable invention should be described clearly and there must be a clear distinction between patentable and non patentable inventions.

ü      The standard of examining a patent application should be made more effective.

ü      Term of patent protection shall, as laid down in section 14, be 16 years from its date. But the term should be extended to 20 years for patent and the term of a design, according to sec – 47(1) is 5 years from the date of registration, should be extended to 10 years.

ü      Existing Act does not have any definition of infringement, it should be included.

ü      The part of “designs;” have some confusing words, as in that part the term, “copyright” has frequently used. But it may create confusion. Such confusion should be effaced.

ü      The Act does not have anything to do about the protection “Geographical indication” which could result a huge loss of losing our culture & heritage. So, it should be included.

ü      Provisions relevant to PARIS convention should be incorporated.

ü      The administrative provisions and complications should be avoided. The complications should be made more subject to judicial decision.

ü      The provisions of offences and penalties should be revised and reformed with the need of the time.

Proposal for reformations of The Trademarks Act:

After studying present Trademark Act and different conventions, it is clear that our existing Trademarks Act 1940 should be amended as well. The following suggestions can be made:

ü      The reformed trademark law should have a wide view about the marks which can be registerable and which marks cannot be.

ü      Infringement of trademark should be defined more accurately. Besides, punishment for infringement should be made stricter.

ü      How will we protect our renowned trademarks in international market and reciprocally how other countries trade marks can enjoy protection in our local market, should be defined in our trademarks act, with an assertive view.

ü      Offences and penalties, in respect of violation of any provisions of this act, should be made more effective and harder.

ü      If any complication or confusion arises in practicing of the act, the judicial body should be involved with more vigilance.

Proposed reformations to the copyright law:

The Copyright Act 2000 has been enacted to cover the rules and to cope with the international copyright system. Our existing copyright law has been enacted in line with the copyright law of India. It has been enacted to cope with the prevailing international set up of copyright system. So, preventive measures have been adopted to tackle the future complications in copyright sector. From the face of the Copyright Act 2000, it seems that our copyright law has fulfilled the need of the time.

Though computer programs, tables complications including data base are recognized to have the copyright protection, there is no legal recognition for transaction carried out by means of electronic data or other means ‘e-commerce’ which involves the use of alternativeness to paper based  method of communication and storage of information to facilitate filing of documents with government agencies .

The growing global importance of the cyber law is posing new challenges and in view of the peculiarity involved in the fields, the understanding between the nations of the world by treaties or covenants, may be of considerable importance in the absence of which the implementation of the legislation would be near to impossibility. Our present act should be amended to fulfill the shortage.

Finally we can hope that a stronger protection system of the intellectual property rights, a qualified commission to observe the protection and thus policy making options to bring civil remedies for the violation of the rights and finally a complete law regulation in all sectors of intellectual property  rights will surely lead us to a better future.

Notes and References:

Background reading materials on intellectual property: WIPO (Pp-3, 4).

P.Narayanan.(pp-1). TRIPs agreement. John Madely hungry for trudeyzed books UK (2000) pp-96-97. The Patents and Designs Act 1911 The Trade Marks Act 1940 The Copyright Act 2000

If you are an inventor, a writer, a musician or a designer, it doesn’t matter if you live in Murrieta, California, San Diego, CA, Mission Viejo, Carlsbad, La Jolla, Westminster, Orange County, Anaheim, Orange, Irvine, Escondido, San Luis Obispo, Rancho Cucamonga, Ontario, Huntington Beach, Temecula or Palm Springs, Palm Desert, or Indian Wells, CA, the law is the same with regard to intellectual property in California. But why are patents, trademarks and copyrights are considered “Intellectual Property?” A good patent lawyer, trademark attorney, copyright lawyer or intellectual property law firm can tell you.

Actually it is the inventions that are patented, the symbols or words that are trademarked and the works of literature, music, film and the like that are copyrighted that are considered to be the intellectual property, but the question is really what makes them either intellectual or property?

Some, if not many of the works that are copyrighted are anything but intellectual, but their copyrights are extremely valuable nonetheless.

A funny looking symbol that becomes a trademark is perhaps more artistic than intellectual, but that symbol can be worth millions.I

nventions are really more inventive than intellectual, but if they work, they can be a benefit to mankind.

So, is it right that any of these things should be considered the property of one and not all of us?

What gives one person the right to protect a set of words or an invention as their own property?

Well, what the law does is reward people for their intellectual efforts. Whether that effort is to paint a beautiful painting, to write a wonderful piece of music or to create a device that makes it easier or more energy-saving to do something, that person deserves to be rewarded. And what the law does is give that composer or inventor a number of years to make a monetary reward from his or her efforts.

Some people question why a composer or inventor still has to go to great cost or effort to then market their works before they get any reward. Why aren’t they simply paid for the creation? Why do they still have to become marketing and advertising geniuses? Why must they even pay filing fees or an attorney to have their works and inventions protected.

The answer is simply a question. Who would pay these writers and inventors? The U.S. Patent and Trademark Office doesn’t have money to pay these people. Nor does the Library of Congress.

The system that is worldwide for protecting the works of our most artistic and intelligent people is not without fault, but it is the best system devised to date, despite the many efforts by pirates and infringers to steal the rewards that should go to these writers and inventors.

Patents, trademarks and copyrights can be extremely valuable. The copyright infringement of a book not long ago resulted in a seven figure settlement. Trademark infringement and patent infringement cases routinely result in settlement in the millions. And patents can be licensed or sold outright for tens of millions of dollars and sometimes more.

If you would like more information on intellectual property, need defense in a lawsuit, or wish to patent an invention or design, trademark a slogan, symbol or phrase, or copyright a literary work, photograph or a musical composition as an example, we invite you to call us.

If you have an intellectual property matter in Orange County, San Diego, in the Inland Empire, Palm Springs or anywhere in Southern California, we have the knowledge and resources to be your San Diego Intellectual Property Lawyers, and Orange County and Anaheim Intellectual Property Attorneys. For this reason, be sure to hire a California law firm with copyright lawyers who are ready to serve you in many areas such as Costa Mesa, Anaheim and Pacific Beach so you are properly represented when you need to be.

If you have an intellectual property matter and need to know your rights, call the Law Offices of R. Sebastian Gibson, or visit our website at http://www.SebastianGibsonLaw.com and learn about your rights and options. You can also call us to speak directly to Sebastian Gibson on the phone about your legal matter.

Copyright related advice provided is spread across various industry sectors such as media, technology and entertainment. This includes advice on registered as well as unregistered copy rights. Services offered include:

Registration of copyrights, Advice on copyright licensing, Copyright enforcement including Copyright dispute resolution (includes mediation arbitration and /or Court based litigation), Drafting enforceable copyright protection and assignment clauses in different agreements including employment agreements, shareholders agreements etc, Any related advice with regard to ownership, transfer or assignment of copyrights including but not limited to mergers, acquisitions, asset sales, slump sales, other arrangements and transactions including drafting relevant clauses in transaction documents and conducting negotiations on behalf of the client, Advice on related concepts like moral rights.

B. Trademarks

Lawyers advise on different businesses with regard to protection, transfer, enforcement of its goodwill in the trade name and trademark/s(registered as well as unregistered). Lawyers typically provide the following services:

Trademark registration including filing applications, lodging oppositions and cancellations, renewals etc, Trademark licensing and assignment advice, Advice on trademark related clauses in different agreements including commercial franchising agreements, employment agreements etc, Any related advice with regard to ownership ,transfer or assignment of trademarks during mergers, acquisitions, asset sales, slump sales, other arrangements and transactions including drafting relevant clauses in transaction documents and negotiating on behalf of the client, Advice on trademark infringement, Assistance in trademark protection and enforcement in related dispute resolution. (mediation, conciliation, arbitration and litigation), Trademark search, due diligence and research, Advice on matters related to unregistered trademarks including passing off actions and, Related advice on trademarks including trade names, domain names and service marks.

C. Patents

Lawyers and other professionals advise on non contentious as well as contentious patent and patent related matters. Services typically offered and provided include:

Patent searches for non-contentious, state of art, patentability, novelty, invalidity, opposition, infringement, freedom to operate, right to use, domination, patent watch, technology updates, Patent registration including connected searches, application, filing opposition etc. across (national, community and international)jurisdictions, Patent drawings, Commercialisation of patents including providing licensing and assignment related advice, Advice on patent infringement, Assistance in patent litigation and patent rights enforcement, Patent protection related advice, Any related advice with regard to ownership ,transfer or assignment of patents during mergers, acquisitions, asset sales, slump sales,other arrangements and transactions including drafting relevant clauses in transaction documents and negotiating on behalf of the client, Advice on patent related clauses in different agreements including commercial franchising agreements, employment agreements etc and

10.  Advice on related concepts such as trade secrets and confidential information as alternative modes of protection of intellectual property.

D. Designs

Advice provided typically includes

Filing design applications, Prosecuting design applications, All aspects to design registrations, Conducting design searches, Renewal of design rights, Advice on design infringement and assistance in enforcement of design rights, Advice on design protection in different kinds of agreements including employment contracts, Commercialisation of designs including assignment and licensing and Any related advice with regard to ownership, transfer or assignment of patents during mergers, acquisitions, asset sales, slump sales, other arrangements and transactions including drafting relevant clauses in transaction documents and negotiating on behalf of the client.

E. Trade Secrets and Confidential information

Both non contentious as well as contentious advice with regard to trade secrets and confidential information are provided by lawyers who are skilled at these matters.

F. Other intellectual property matters

Professionals also provide advice on any other kind of intellectual property and connected matters, including trade names, service marks, domain names and moral rights.

In the past, many brand owners, both small as well as corporate sometimes did not consider much the immense importance of protecting someone’s brand overseas. The simple key should be “IP strategy”. If a strategic decision has been taken to go and expand the business and open new locations, one of the first things that should be done is to protect your brand. It has happened in the past that brand owners, went overseas, spent money on finding a local distributor, in opening new businesses and then discovered that their mark cannot be protected or has limited protection, when for example someone else has filed for a trademark first, and gained enough goodwill to bar their current application. Therefore, the importance of registering a trademark while planning ahead cannot be over rated.

When filing for a trademark in Israel, one should be aware that Israeli Law currently operates differently than the US trademark Law, whereas in Israel operates on a Mono-Class system , as opposed to the Multi-Class system that operates under US trademark Law.

A mono-class system means that when filing for one trademark in several classes, applicant will have to file several applications for the same trademark. On the financial aspect, this usually will mean that a bigger budget will be needed as each class is considered as one new application, and on the procedural aspect, each application will be allocated a different serial number, sometimes a different filing date and many times be examined separately.

Although one cannot generalize on all legal practitioners, some, do offer a reduced fee when filing for one trademark in different classes.

One more fact, applicant should be aware of, is that Israel is a member of the Paris Convention, by which any applicant who filed an application on an another member state, may file for the same application in Israel provided that the filed application be on the same class number, the same list of goods and/or services, for the same mark and that the Israeli application was filed within 6 months from the earlier priority date. This will allow the applicant to file the trademark in Israel claiming priority on the previously filed application date.

More factors need to be considered when filing for a trademark in Israel and it will be further detailed on the following article, published on this subject.

Although the data provided on this article should be error free and accurate, it can under no circumstances be considered as a legal advice and one should contact a lawyer on a case-by case advice.

If you have a specific design or invention you wish to protected, you must apply for a patent through the United States Patent and Trademark Office. It is important that you do not use terms such as “patented” or “patent pending” prior to applying for or being granted a patent, because doing so is a violation of federal law. Applying for a patent through the United States Patent and Trademark Office can require special legal knowledge. It may be in your best interest to consult with a patent attorney. Here are the basic steps outlining how to obtain a patent.

The first step you will want to take to obtain your patent is to visit a local branch of the United States Patent and Trademark Office. If that isn’t convenient, you can find most of the information and required forms at the U.S. Patent and Trademark Office Web site.

Next, you will need to prepare a full and detailed proposal of your design or invention. The proposal must contain specific descriptions in English and detailed drawings. You will then prepare and execute a brief declaration that the design or invention is an original, and that it does not infringe on any existing patent.

After making the appropriate number of copies and following all instructions, you will submit your proposal and declaration to the director of the U.S. Patent and Trademark Office at your local branch or through the Internet. Upon submission, you will be required to pay filing fees for a search and examination of your proposal.

If the U.S. Patent and Trademark Office presents any objections or requests any modifications, you must address them in a timely fashion.

Obtaining a patent through the U.S. Patent and Trademark Office can be a lengthy process. If everything in your proposal is accurate and there are no objections or requested modifications, the process will be completed in approximately 18 months. If there are objections or requested modifications, the process can take much longer.

Once you obtain a patent, you will be required to pay maintenance fees. Maintenance fees are required at three to four-year intervals following the grant date. You will typically be afforded a six-month grace period to pay your maintenance fees. You must renew your patent prior to the expiration date. Patents typically last for a period of 20 years, although design patents expire after a period of 14 years. Design patents include those that improve upon or act in conjunction with another patent.

Most people are attentive of the numerous benefits of owning a trademark registration. Trademark registration in India becoming familiar with complete customer satisfaction. Trademark registration is the protection agreed by the government to the business entities as to reduce the possibility of getting the advantage of the business by others by the way of misuse and to raise the opportunities keeping the mark exclusive under the eye of law.Generally, brand registration refers to the trade mark used to discriminate the goods or services among the consumers. The business group sells their services or goods under the precise name or brand that is called trade mark. Therefore, the brand is registered in order to evade the repetition or use the same mark by others. In vision of this, the brand registration referred to as trademark registration. Trademark brand was initially developed as a name, term, design, and symbol. Powerful brand can bring success in bloodthirsty and financial markets and thus become the markets worthless assets.

Trademark brand equity dealings the value of brand to the trademark owner. The brand name is used interchangeably with brand to designate written or spoken linguistic rudiments of the brand. Brand name is a form of trademark which identifies the brand owner as the money-making source of products or services. The brand owner may ask for to protect the proprietary rights in relation to a brand name during trademark registration. Trademark brand is a appliance to create monopoly so that the brand owner can obtain some of the reimbursement to those related to decline price competition. There is legal magnitude as it is essential that the brand names and trademarks are protected by all means. An existing brand name can be used as a vehicle for new and modified products. Individual brand names allow greater suppleness by permitting different products to be sold without puzzling the consumer.

The trademark is registered for the business name, brand name and logo as to discriminate, popularize, create the goodwill and put aside the mark from competitors and fraudulent. The trademark office is an organization to provide protection to the inventors and dealing for their inventions and trademark registration in India provide protection and intellectual property recognition.

In addition, if some business entity desires to extend its dealing in more than one or several countries, it can ensue with International Trade mark registration. The titled name International Brand Registration is the usual form of the International Trade mark registration. It is meant, when the registration is done through any International pact, that gives the protection in all the countries allied with the treaty. The trademark office is an agency, which provides protection to the inventors and business for their inventions and trademark registration for the product and intellectual property identification. The office is provided with funds by the fees, which are charged for processing the patents and trademark. The applications to trademark registration are examined by the trademark office.