Types of Intellectual Property Rights

Chapter 2: Introduction to Intellectual Property Rights

2.1 Types of Intellectual Property Rights

The British Statute of Anne (1710) and the Statute of Monopolies (1624) are now seen as the origins of copyright and patent law respectively⁵, however it was not until the late 20^th century that intellectual property rights have become a mainstream in the world. Intellectual property (IP) is an intangible right that could legally exclude people from using the owner’s creation of mind. Intellectual property covers everything that is created by human’s mind, including but not limited to musicals, literatures, art works, inventions, discoveries, inventions, business methods, new plant species, symbols, designs, words, phrases and etc. Patent, copyright, trademark, trade dress, industrial design and trade secret are protected by intellectual property law. According to World Intellectual Property Organization (WIPO), intellectual property should include rights relating to⁶:

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. Trademarks, service marks and commercial names and designations; and 7. Protection against unfair competition.

The owner of an intellectual property does not own the absolute right to the intellectual property, of which it means a patent owner could not practice his or her invention unless he or she obtains rights to all patents covering the basic construction of his or her invention. However he or she has the right to exclude others from practicing or using the invention without consent.

This study focuses on the technology transfer in biotechnology industry, which further limits the scope of intellectual property rights to patents and trade secret. As mentioned on the Research Restriction, patent is the only intellectual property right being discussed in this research.

5 Sherman, B., Bently, L. (1999). The making of modern intellectual property law: the British experience, 1760–

1911. Cambridge University Press. p. 207. ISBN 9780521563635

6 The Convention founding the World Intellectual Property Organization (WIPO), concluded in Stockholm on July 14, 1967 (Article 2(viii)).

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Patent right is an exclusive rights being granted to an inventor by government agency, often known as Patent and Trademark Office. An inventor must apply for a patent in order to get protection from the authority. In most countries, both natural persons and business entities could apply for a patent. A patent does not give the owner rights to make, use or sell an invention. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission⁷.

A typical patent application must include at least one or more claims that define the invention. A patent claim must meet with the requirement of patentability, which includes (i) Patentable subject matter; (ii) Novel; (iii) Non-obvious (or involve an inventive step in Europe patent system), and (iv) Useful (Susceptible of industrial application in Europe patent system). A patent must also fulfill “sufficient disclosure”

and “best-mode” requirement, of which it means during application, inventor has to disclose sufficient information regarding the invention, allowing the public to receive knowledge of the preferred embodiments for practicing the claimed invention⁸.

Although patent gives the owner the exclusive right to make, use or sell the patent, that doesn’t mean the owner has the right to exploit the patent. A lot of patents are improvements of previous patents that might still valid; if the patent owner of an improved-patent based on an existing invention, he or she needs to get permission from the existing inventor before practicing his or her patent.

The grant and enforcement of patents are governed by national laws, and also by international treaties, where those treaties have been given effect in national laws.

Patents are granted by national or regional patent offices. In short, patent law is territorial in nature, a patent could only protect an invention in the country which that patent is granted in. However, when a patent application is published, the invention is thus disclosed into the public domain as prior art of every other country that the patent owner has not applied patent in.

Patent in most countries fall into three categories, though it is classified differently in various countries:

7 Patents: Frequently Asked Questions (n.d.), World Intellectual Property Organization, Retrieved from http://www.wipo.int/patentscope/en/patents_faq.html#protection

8 Eli Lilly & Co. v. Barr Laboratories Inc., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001).

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1. Invention Patents (Patents, utility patents): Issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement;

2. Utility Model Patents (Petty patents⁹): Issued for the creation of technical concepts that reflect the innovation of a form, construction, or installation of an article that possess a new purpose or improved efficacy. In most countries, utility model are cheaper to maintain (or free of maintenance fee), however the protection period are usually shorter; and

3. Design Patents (Industrial design patents): Issued for a new design in shape, pattern, color, or combination of an article to enhance its touch, view, quality, affinity or value through visual effects in order to increase market competitiveness.

In the United States, the United States Patent and Trademark Office (USPTO) handles all patent applications¹⁰. Upon granting a patent, the owner of the patent must pay a fee to maintain the patent for every few years. For research institutes that handle the patent application on behalf of their inventors, a lot of considerations must be made before applying for a patent because the cost of maintaining the validity of a patent is very expensive. In 2000, it costs a US patent owner to pay in between $10,000USD to

$30,000USD for obtaining and maintaining a patent depending on the claim numbers listed on the patent¹¹.

9 Utility model, also known as “petty patent” or “utility innovation”, registration of utility model are usually less strict because it required lower threshold of inventive steps compared to invention patent. Also, the registration is faster. Utility models are considered more suitable to SMEs to make “minor” modification on the current invention. Only a small but significant number of countries and regions provide the option of utility model protection. For more information, see

http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm

10 Types of Patents (n.d.), United States Patent and Trademark Office, Retrieved from http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm

11 Lemley, M.A., Rational Ignorance at the Patent Office (February 2001). Northwestern University Law Review, Vol. 95, No. 4, 2001.

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Table 1 Types of Patents in The United States

Types of Patent Length of Protection

Scope of Protection

Utility Patent 20 years Inventions that show "novelty" and are not obvious, that have been developed to the point that they can be utilized in industry

Design Patent 14 years Creations or improvements relating to the form, construction, or fitting of an object. Design patents are not subject to the payment of maintenance fees.

Plant Patent 20 years Issued for a new and distinct, invented or

discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

Plant patens are not subject to the payment of maintenance fees.

In Taiwan, all patent applications must be filed with Taiwan Intellectual Property Office (TIPO). Table 2 shows different types of patent in Taiwan, including the length of protection and the scope of protection for each types of patent.

Table 2 Type of Patents in Taiwan

Types of Patent Length of Protection

Scope of Protection Invention

Patent¹²

20 years Inventions that show "novelty" and are not obvious, that have been developed to the point that they can be utilized in industry

New Utility Model Patent¹³

10 years Creations or improvements relating to the form, construction, or fitting of an object (in general, technical requirements are not as high as those for an invention patent)

New Design Patent

12 years Original visual designs relating to the shape, pattern, color, or a combination thereof of an object