Intellectual Property can have significant commercial and financial benefits for individual, research groups and the Universities including:
· It converts knowledge into tangible assets which can be transferred, assigned and licensed;
· It can generate significant royalty revenues for the University and the researchers;
· Inventors qualify for income obtained from licensing in the form of royalty payment;
· It can provide a legal monopoly in technology niche area.
Intellectual Property is an area of law which concerns legal rights associated with creative effort or commercial reputation and goodwill. Intellectual property refers to creations of the human mind. The legal system of intellectual property rights converts this innovative and creative output into property and thus into valuable tradable assets. Human ingenuity and insight manifest in the form of new and/or original ideas, inventions, information, creative expressions, knowledge and other such intangibles that may be embedded in or relate to the products and services that we so depend on in our daily lives.
Thus, new and improved technology, know-how, confidential information, software and databases, creative expression in the making of instruction manuals, books, plays, movies, videotapes, television productions, music, multimedia, the image, reputation and goodwill linked to trustworthy names of goods and services, business identifiers, etc., can be protected by a range of intellectual property and certain aspects of unfair competition laws. The law deters others from copying or taking unfair advantage of the work or reputation of another and provides remedies should this happen. The most common types of intellectual property:-
· Copyright
· Patents
· Trade Marks
· Industrial Design
· Trade Secret.
· Geographical Indication
· Layout Designs of Integrated Circuits
Copyright
Copyright law is governed by the Copyright Act 1987. Copyright is a property right which subsists in various “works” for example literary works, artistic works, music works, sound recording, films and broadcast. The author of a work is the person who creates it and he (or his employer) is normally the first owner of the copyright which will last until 50 years after the author’s death[1]. In sound recordings, broadcast and films, copyright protection is 50 years after the first works are published or made. Copyright gives the owner the right to do certain things in relation to the work which include making copy, broadcasting or giving a public performance. Anyone else, who does any of these things without the consent of the owner, infringes copyright and may be sued by the owner for infringement. Ownership of a copyright is transferable to another or a licence may be granted by the owner to another, permitting him to do one or more specified acts with the work in question.
Patent
Patent is governed by the Patent Act 1983. A patent right is where it gives its owner the monopoly over his invention. A patent may be granted in respect of the new invention if it new, involves and inventive steps and is industrially applicable. If these criteria are met it gives a monopoly right that can last up twenty (20) years. This very strong form of protection is reserved for inventions that satisfy rigorous standards (for example , novelty and inventiveness) and an application for a patent has to be drawn up precisely and accurately stating the scope of the invention and the claims made in respect of it for which the protection is sought. The application is made available for public inspection after 18 months period from either the date of priority or date of filing of application. Patents can be assigned and licenses may be granted in respect of them. The owner of a patent is the person who is registered as the proprietor. A large number of inventions are made by the employees and usually, in such cases, the employer will be the proprietor although the inventors will be still named as such.
Trade Mark
The Trade Mark protection is governed by the Trade Marks Act 1976. Trade marks may not have the glamour of inventions or creative works but they are, nevertheless, of substantial importance in an industrial and commercial sense. Trade marks are closely associated with business image, goodwill and reputation. Goods or services are often requested by reference to a trade mark and the public rely on many marks as indicating the quality, value for money or origin of the goods or services. The period of protection is 10 years, renewable for a period of every ten years thereafter. The proprietor of the trade mark or service mark has the right to deal or assign as well as to licence its use.
Industrial Design
Industrial Design protection is governed by the Industrial Design Act 1996. It provides the rights of registered industrial design as that of a personal property. To be eligible for registration, industrial design must be new and do not include a method of construction or design that is dictated solely by function. In addition, the design of the article must not be dependent upon the appearance of another article of which it forms an integral part. The right can either be assigned as well licence its use.
Trade Secret
Trade secret can be any useful information that is not generally known. A popular definition is “anything you don’t want the competition to know”. Other terms used for trade secrets are “confidential information’, proprietary information and “know how”. The trade secrets are generally divided into two sorts: technical and business secrets. Technical trade secrets are found in research and development, secret formulas, designs, computer source code, manufacturing tools and the like. Business trade secrets a much more broader category, cover the vast pool of marketing, sales, and financial and administrative data used to manage business. Trade secret cannot cover information that is generally known to professionals in the field or generalized know-how.
Geographical Indication
The Geographical Indication Act 2000 provides protection upon the registration to goods following the name of a place where the goods are produced, where a given quality, reputation or other characteristic of the goods is essential attributable to their geographical origin. Protection of geographical indications shall be given regardless whether or not the geographical indication is registered and as against another geographical indication which, although literary true as to the country, territory, region or locality in which the goods originated, falsely represents to the public that the goods originated in another country, territory, region or locally. In the case of registered geographical indications, only producers carrying on their activities in the geographical area specified in the register shall have the exclusive right to use a registered geographical indication in the course of the trade. A registered geographical indication is given 10 years of protection from the date of filing and is renewable for every ten years.
Layout-Designs of Integrated Circuits
Layout-Designs of Integrated Circuits is governed by the Layout-Designs of Integrated Circuits Act 2000. A layout-design of an integrated circuit is the three dimensional disposition of the elements of an integrated circuit and some or all of the interconnections of the integrated circuit or such three dimensional disposition prepared for an integrated circuit intended for manufacture. A layout design is eligible for protection automatically upon fulfillment of the following conditions.
· It is original. i.e the result of its creator’s own intellectual effort and not common place among creators and manufacturers of integrated circuit,
· It has been foxed in a material form or incorporated into an integrated circuit;
· The right holder of the layout-design is a qualified person.
A layout-design is protected for the period of 10 years from the first date it is commercially exploited. Notwithstanding this, the protection granted lapses 15 years after the date it is created.
2. COMMERCIALISATION
“Successful commercialisation is the result of driving home competitive advantage. The key input [is] the needs of the marketplace. It is therefore imperative that R&D incorporates into its decision making process some commercial judgments. Indeed, the difference between market pull R&D and technical push is just that: coming at the R&D challenge by posing an acceptable market solution and conducting R&D to achieve it, rather than pushing forward the frontiers of knowledge and then looking for market acceptance”[2]
Intellectual property assets can be commercially exploited by their owner or with the permission of the owner by others. One way for others to exploit intellectual property is through licensing the intellectual property from the owner. The word “license” simply means permission granted by the owner of the intellectual property right to another to use it on agreed terms and conditions, for a defined purpose, in a defined territory and for an agreed period of time. Licensing of intellectual property is often considered in three broad categories, namely technology licenses, publishing and entertainment licenses, and trademark and merchandising licenses. These categories are, however, not watertight compartments. This Handbook will not be dealing with aspects specific to publishing and entertainment licenses or to trademark and merchandising licenses. Its focus will be on commercialisation of a technology and technology licensing, which mainly involve patents. Software licensing, which may in some countries be protected by patents and could, therefore, fall within technology licensing.
Only companies that continue to provide better products and services at a lower price will be competitive, profitable and maintain an edge in a market economy that is globalized, fast moving and demanding. A better product may be a new product or it may be a superior product. A superior product may result, for example, from an improved manufacturing process that increases cost-effectiveness by reducing production time and/or using fewer resources. Such a product may be superior by virtue of its new features, higher quality, lower cost or a combination of these.
Only companies that continue to provide better products and services at a lower price will be competitive, profitable and maintain an edge in a market economy that is globalized, fast moving and demanding. A better product may be a new product or it may be a superior product. A superior product may result, for example, from an improved manufacturing process that increases cost-effectiveness by reducing production time and/or using fewer resources. Such a product may be superior by virtue of its new features, higher quality, lower cost or a combination of these. How do companies meet this demand for new or better products and services, and provide these at a competitive price? The traditional drivers of economic growth: land, labor and capital, are no longer sufficient to provide the necessary competitive advantage that makes the difference between companies that are otherwise very similar to one another. The answer lies in new or improved technology.
A technology can be defined as “technology is the practical use of scientific information.” Therefore, broadly speaking, technology refers to end products of scientific research and development in the form of inventions and know-how which are used as tools or processes for creating new or improved products and services that better serve the needs of the market. There is often a tendency to equate one patent with one technology. This is rarely the case nowadays. Increasingly, a number of patents together are responsible for a technology and a number of technologies for a product, for example, a camera or a car. Such technology may be acquired either through research and development undertaken by the company itself, in cooperation with others, or by acquiring technology developed by others which may be on offer in the market. Often, it is prudent to obtain technology from others instead of investing the time and resources to find the perfect solution oneself; this would be the case, for example, if the necessary technology cannot be developed in-house for reasons of cost, timeframe, human resources and complimentary assets, it may make good business sense to use or adapt a technological solution that has already been found by others and is available on the market.
Sometimes, it may even be necessary to obtain licenses for technologies which are part of industry, national or international standards set by standard-setting organizations. A license may be necessary in a situation where a new or improved product inadvertently violates the intellectual property rights owned by another. Further, a company that has come up with a new or better product or process will do well to know that there may be others searching for such a solution and it could be a good business option to transfer that knowledge and earn a bonus from an additional source of income. In fact, a number of companies have either shifted from manufacturing of products to licensing of intellectual property in the form of patents and know-how or have been set up with the sole objective of creating and licensing intellectual property without manufacturing any products. In other words, the technology becomes the product.
Today, even the largest companies are no longer doing everything in-house and depend on outside sources not only for key components and services but also for technologies. Some other companies just develop technology and outsource the manufacture of the products to other companies in their own country or abroad by entering into a licensing agreement for this purpose. Given the intangible character of technology, its use by one does not detract from its use by another. In other words, it can be used simultaneously by many users for the same or different purposes without impacting in any way on its quality or functionality. Therefore, the owner of technology could potentially license the use of his technology to as many licensees as he wishes, maximising the earning potential of his technology constrained only by the terms of the agreements that he enters into with the potential licensees. In a sense, one technology could become the basis for a whole range of related or unrelated products and services made by one or many enterprises in a potentially large number of locations in one or many countries.
Intellectual property licensing and technology transfer are important factors in strategic alliances, joint ventures and so-called turnkey contracts. Technology licenses, which, as indicated above, are one type of intellectual property license, fall within the broad concept of technology transfer. Technology transfer is to transfer existing technology for application by a new user in the same area of application or in a completely new area of application by the same or a new user. It could be effected by an activity as simple as teaching and as commonly as the hiring of skilled workers to the formalising of contracts including technology licensing contracts.
to be continued
