History of IPDL

History of Intellectual Property Digital Library:

• 1996/4 JPO website opened

• 1997/4 PAJ retrieval service launched

• 1998/10 Japanese Well-known Trademark service started

• 1999/3 IPDL has opened in the JPO website (Initial services in English:

• PAJ, Japanese Trademark Database, Japanese Well-knownTrademark)

• 2000/3 Figure Trademark Search started

• Automatic Full-text Translation was made available (PAJ)

• 2001/3 List of Goods and Services for Trademarks was made availablePatent Map Guidance/ FI/F-term Search started

• 2002/3 Patent & Utility Model Gazette DB was made availablePatent & Utility Model Concordance service launched

• 2004/3 Design Gazette Search started 

Outline of the IPDL – Facts :

Number of Searches / Fiscal year

What is IPDL ?

lIPDL (Industrial Property Digital Library):

The IPDL is a public resource which provides free access to replications of the JPO database 

of industrial property information with search functions through the Internet.

       --Everyone can access to the IPDL at anytime, anywhere, free of charge, without any permission.

      --The IPDL has been started since March 31, 1999 and over 80．4 million documents
        are available.

       --Some services are available in English as well.


Concept of the IPDL:

Concept of IPDL

Sample Intellectual Policy Statement

INTELLECTUAL PROPERTY POLICY OF …………..

1. POLICY STATEMENT

  2. OBJECTIVES

• Promote the fundamental object and purpose of facilitating and creating indigenous technology, and creative and innovative capability

•  
• Protect the Organization’s integrity, interests and intellectual property generated
•  
• Provide the staff with fair and reasonable recognition and remuneration
•  
• Encourage and develop Organization growth, progress and success through active application of intellectual activity in industry and commerce
•  
• Create a secure environment where original inventions/innovations can be protected

  3. SCOPE
               Depending on the organization, insert the scope of the policy here

     4.  TYPES OF IP RIGHTS

•  Patents
•  Registered and Unregistered Trademarks
•  Industrial Designs
•  Copyright
•  Geographical Indications
•  Layout Design of Integrated Circuits
•  Plant Variety Rights
•  Confidential information

    5.     OWNERSHIP

    5.1   Claim of Ownership

      The organization claims ownership of all Intellectual Property created by an employee in 

      the course of their employment with the organization, even if the Intellectual Property 

      is  conceived outside the premises of the organization or at the collaborator’s premises.

5.2       The organization will claim ownership of Intellectual Property where:

• Generation of the Intellectual Property has involved substantial use of the organization’s resources and/or services.  The organization does not construe the use of ordinarily available resources such as office equipment, computer workstations, library and other general information resources as constituting substantial use of the organization’s resources

• Generation of the Intellectual Property has resulted from the use of preexisting Intellectual Property owned by the organization

• The Intellectual Property forms part of Intellectual Property generated by a team of employees and visitors to the organization

• The Intellectual Property has been generated as a result of specific project funding provided or obtained by the organization

    5.3  Courses developed and taught by employees of the organization belongs to 

          the organization. Any courses that are videotaped or recorded using any other media are 

          the organization’s property and may not be distributed without permission

5.4   Ownership of all Intellectual Property that is developed in the course of or pursuant 

       to a sponsored research or other agreements, to which the organization is a party, shall 

       be determined in accordance with the terms of the sponsored research or other agreements

5.5  Individuals may not use the organization’s resources including facilities, personnel,    

      equipment or any confidential information for outside consulting activities or any other 

      activities in pursuit  of personal gain

5.6  The originator/inventor/designer shall cooperate and assist the organization in all phases in the registration of the Intellectual Property and shall assign the resulting Intellectual Property to the organization

5.7  The organization reserves the right to decide in which countries it will seek Intellectual Property protection.

5.8       In cases in which the organization has an ownership interest in an invention but either does not register the statutory Intellectual Property interest within one year or fails to make a positive determination regarding pursuit of the statutory Intellectual Property interest within a period of 6 months from the date of disclosure of the IP to the Organization’s Secretariat, the matter shall be submitted to the IP Committee for a final determination

6.  WORK OF NON-EMPLOYEES

         The organization will enter into an agreement with the non-employees.  Work of 

         non-employees includes but not limited to work done by consultants, visitors, 

        fellows,  independent contractors, etc.

7.  WHOLLY OWNED SUBSIDIARIES AND JOINT - VENTURE COMPANIES

 

a)         The IP Policy shall apply without limitations

b)         Joint-venture or not wholly owned company - to share equity based on proportion

8.         EXTERNAL TECHNOLOGY SUPPLIERS

    The supplier shall either own the IP rights or the company be legally licensed to sell, 

    transfer or sub-license the technology to any third party.  External supplier must also

   indemnify the organization against damages for infringement.

9.         FOR UNIVERSITY

            Research Output from Undergraduate and Post-Graduate Students Wholly owned by University

10.       COLLABORATIVE WORK

            Organization will negotiate with the collaborator(s) to retain the ownership of the IP rights.

11.       ACQUISITION OF SOFTWARE

a)         The organization will make every effort to ensure that all software used in the organization 

      is  properly licensed. Where software and databases used in the organization are owned by 

      users or third parties and are protected by copyright and/or other laws, or subject to license 

      or other contractual arrangement, it is the policy of the organization that users abide by any 

      legal restrictions imposed by the owner of the software or databases.  It is the responsibility 

      of the owner of the protected software or databases to make the nature of the restrictions 

      known to the user.

b)  Wherever possible the organization will negotiate with software suppliers to ensure that their license rights do not constrain use of the software by the organization, its employees and visitors or impair the organization’s right to develop and distribute software which is dependent upon the acquired software.

12.   DISCLOSURE

No disclosure prior to securing IP rights.  Inventors or researchers to provide all information for IP application by using an Invention Disclosure Form. 

13. PUBLICATION

The author shall be named as such in the publication.  The publication rights shall belong to the organization or University

14. DISPOSITION

            The organization shall have the sole discretion to dispose the IP 

15.       COMMERCIAL DEVELOPMENT

            The organization shall have the sole discretion to commence commercial development 

      on an invention following consultation with the inventor(s)

16.       INCENTIVES, AWARD AND REWARD SCHEMES AND ROYALTIES

a)         The organization will have the sole discretion to determine the incentives, award 

       and reward schemes

b)         One-off payment vs. sharing of royalties

17. EMPLOYEE AND VISITOR OBLIGATIONS

a)   Terms and conditions of Employment - HR to include confidentiality clauses and NDA 

b)   Confidentiality Agreement and NDA for Visitors

      c)  Official Secrecy Act requirements for government employees, if applicable 

18.       BREACH

            Action taken by organization.  Types of action – warning letter, demotion, etc.

19.   WAIVERS

            The organization has the sole discretion to give waivers and is decided on a case by case basis

 20.      IMPLEMENTATION AND ADMINISTRATION

   a)      The Policy is implemented through a IP Policy Implementation Manual

   b)      The administration is carried out by an IP Unit/Department which acts as a Secretariat 

         and  reports to an IP Council or Committee

(F)       SETTING THE IP INFRASTRUCTURE

• Review organizational structure in lieu of Policy

• Assignment of IP personnel in the organization (in big companies - have IP departments, in small organizations - have IP units/sections)

• Appoint IP personnel and determine job functions of IP personnel

• Appoint IP Committee Members or IP Steering Committee Members or IP Council Members

(G)  DISSEMINATION AND IMPLEMENTATION

• Conduct road show to disseminate the IP Policy and Implementation Manual to all staff so that they are aware of such policy

• Upload the IP Policy onto the organization website to inform the public and visitors

• Update and review the Policy from time to time (to keep in pace with the development of laws and the working environment) Monitoring and enforcement

IMPLEMENTATION MANUAL of IP POLICY

IP POLICY IMPLEMENTATION MANUAL

• To implement the IP Policy, an IP Policy Implementation Manual is provided.

• The manual provides detailed guidelines on how each clause of the IP Policy can be effectively implemented taking into account the interest of the organization, its staff and society at large.

• Depends on the IP Policy - can be one single manual or a set of manuals, can be in a bound volume or in loose sheets.

• The manual provides the guidelines, flowchart, forms to be used, sample agreements, and suggestions on how intellectual activities and the ways in securing of IP Rights in an organization may be carried out.
  

WHAT ARE THE ESSENTIAL ELEMENTS IN AN IP POLICY

ESSENTIAL ELEMENTS IN AN IP POLICY:

• Policy Statement  
•  
• Objectives  
•  
• Scope  
•  
• Explanation on the types of IP Rights  
•  
• Ownership  
•  
• Works of Employees  
•  
• Works of Non-Employees  
•  
• Subsidiaries and Joint Venture Companies  
•  
• Undergraduate and Postgraduate research students (for university)  
•  
• Disclosure of inventions to the organization or employer 
•  
• Incentives, Award and Reward Schemes, Royalties 
•  
• Commercial development 
•  
• Employee & Visitor Obligations 
•  
• Agreements with third parties 
•  
• Improvement Patents 
•  
• First Right of Refusal 
•  
• Administration
  

WHY AN IP POLICY?

IP (Intellectual Property) POLICY:

• Ensure only novel projects in R & D are carried out (i.e. not re-inventing the wheel)
   
• Ensure that novel projects in R & D are not infringing third party's right
   
• Facilitate recording of R & D findings
   
• Examine patentability or alternative IP protection
   
• Determine inventorship and ownership of inventions
   
• Determine authorship and ownership of a work
   
• To clarify the respective legal rights and obligations of employers, employees and third parties
   
• Determine reward and award schemes - to seek to strike an equitable and practical balance between creators, originators, inventors and employers’ interests
   
• Provide IP data base - to encourage dissemination of knowledge by organizations for its commercial benefits
   
• To encourage conducive environment in which R & D culture will flourish within organizations
  
  To acknowledge moral rights of originators, creators, inventors and designers, and their rights to participate in decision making on commercialization along with dissemination of information developed by them.

WHAT IS AN IP POLICY?

IP POLICY:

A set of internal rules or guide to help administer, manage and monitor the proper management of IP rights so that intellectual activities are carried out in the right direction and in the right environment so as to bring about the desired results.




WHY AN IP POLICY?

• Ensure only novel projects in R & D are carried out (i.e. not re-inventing the wheel)

• Ensure that novel projects in R & D are not infringing third party's right

• Facilitate recording of R & D findings 

• Examine patentability or alternative IP protection

• Determine inventorship and ownership of inventions 

• Determine authorship and ownership of a work

• To clarify the respective legal rights and obligations of employers, employees and third parties

Useful IP Links

This chapter aims to provide the reader with quick access to selected parts of a few major Patent Office sites that have been designed specifically to encourage and demystify Intellectual Property issues for SMEs so that they can take full advantage of IP opportunities.

You can also find Links to even more information by clicking on the icons labelled “Virtual IP Library”, “Information for Inventors” to “IP Management”.

The major Patent Office websites are extremely well-stocked with information on just about every aspect of Intellectual Property and many have points of contact listed on them. All of the Patent Office sites store their information differently so they can take quite a while to get familiar with the way they work. Sometimes the site contain so much information that they can be difficult and time consuming to troll through.

If your time is limited though, or you are unsure about what to do next please feel free to e-mail us at webeditor@piperpat.com or contact one of PIPERS IP professionals directly at patents@piperpat.com.

PIPERS has Offices in New Zealand, Australia, Singapore, Malaysia, The UK, and satellite offices in Germany & Switzerland and offers clients a 24 an hour 7 day a week internet reception service for IP enquiries. To learn more about PIPERS and our services please click on the “About PIPERS” link at the left of this Page.

Websites Links

http://www.ip-europe.org/	The IP Europe Project
http://www.wipo.int/sme/en/	WIPO SME’s Division
http://www.european-patent-office.org/_new_patinfo_centers/index.en.php	PatLib
http://patentinfo.european-patent-office.org/index.en.php	European Patent Office (EPO)
http://www.uspto.gov/	United States Patent Office (USPTO)
http://www.copyright.gov/	U.S. Govt. copyright office website
http://www.ipos.gov.sg/main/index.html	Singapore Patent Office (IPOS)
http://www.patent.gov.uk/	UK Patent Office
http://www.ipaustralia.gov.au/	IP Australia
http://www.iponz.govt.nz	New Zealand Patent Office (IPONZ)

Patent Filing

http://www.pctfiler.com/

International Patent Filings

Patent & Trademark Searching

http://www.patmark.co.nz

IP Searching & Reporting

Cease & Desist Letters??

Cease & Desist Letters – What are they and what to do about them?

 It is not uncommon for small businesses or start-up companies, especially if they are successful, to receive letters accusing them of infringing the rights of another. The infringement may be of a product or process of a protected Patent, Design, Copyright, or even the use of a confusingly similar name of a Registered Trademark. More often than not the recipient is not even aware that such protection exists and that the products they are making, the drawings they are using to make those products, or even the name that they are selling those products under is protected by one or more Intellectual Property rights (IPR).

Such letters, often called “cease and desist” letters, usually inform the company of the existence of a granted Patent, Design, a copyright or a Registered Design by its number, assert ownership to the Intellectual Property and set conditions that are to be met and a deadline for meeting those conditions.

The letter will invariably indicate that the products you are making, selling or importing, or the process that you are using is a restricted one. And that if you do not stop selling or producing the offending items the matter will end up in court.

Cease & Desist letters are issued for two main reasons.

Firstly, a cease & desist letter can be generated by competitors who feel genuinely aggrieved that their hard won innovations, protected by Patents, Designs, Copyright are being infringed – or so it seems to them. Secondly, a cease & desist demand will often result from companies who wish to take advantage of recent IP purchases in the hope of gaining royalties or licenses to lucrative technologies or to technologies on which other companies depend. While Intellectual Property systems are designed to encourage technology transfer there are some companies that actively look at, and purchase issued patents as a means to secure out of court settlements or licenses.

In any event, a cease & desist letter should never be ignored - and can often lead to the transfer through licensing of state of the art technology that provides both licensee and licensor with technical advantages over competitors and which can secure and ensure present market position and future market growth. The matter of sub-licenses is also a real and potential lucrative proposition. So, looking at it positively, a cease & desist letter may not be the end - it may in all truth be the beginning.

What should you do if you receive a “Cease and Desist” letter?

The first thing that should happen on receipt of such a letter is to take the letter seriously. Obviously, such a letter is more than just an inconvenience. It is a downright nuisance and an initial reaction might simply be to ignore the matter it in the hope that it will go away. Do not do this. In most countries there are laws that protect manufacturers from receiving such letters without good reason. So there is a good chance that there is a certain amount of credibility to the Claim that you are infringing. Whether or not you are is an entirely different matter and will ultimately be determined by the courts or similar legal body.

The next thing to do is to stand back and take a rational look at the Claim being made and evaluate that, if the Claim is valid one, what affect it will have on your business and on your Clients. Following on from this, it is important to make a considered response to the sender. Such a response will almost invariably involve the services of an IP professional. The IP professional will evaluate the Claims made in the letter, comparing the alleged infringing act with what is actually protected by the Patent, design or the copyright.

It is also advisable to obtain a written opinion from your patent attorney as a sign that you have acted in good faith should the matter proceed to the courts at a later date. The written opinion might also suggest should you in fact be an infringer what options are open to you. These sorts of options may include designing around the protected article or process, licensing possibilities, and might even suggest some sort of manufacturing and distribution agreement with the complaining party. At the very least, the opinion will enable you to understand the process involved and the similarities (and differences) between your products and those of your competitor.

What is Copyright?

Copyright is a form of protection provided to the authors of “original works” and includes such things as literary, dramatic, musical, artistic, and certain other intellectual creations, both published and unpublished. Copyright does not protect ideas. It only protects the specific and original expression of the idea. A good example of this is that there are many films and books based on the classic boy meets girl theme in which the girl’s parents disapprove of boy and after many tears, true love finally triumphs. This theme cannot be monopolize, but original works to it can be. The same can be said of all other works.

So what does Copyright afford the owner? Copyright is an exclusive right and gives its creator, or owner if the rights are sold, the sole right to reproduce the copyrighted work, to prepare derivative works, to distribute and sell any copies of the copyrighted work, to perform or display the copyrighted work publicly. In many countries it will also give the creator of the work special privileges to determine how the work is to be displayed.

Copyright is Automatic – but still needs to be asserted.

Copyright protection is automatic. The act of creating the work also creates the Copyright. There is no requirement to Register for Copyright, although in the US and most other countries it is important to show (assert) that copyright is claimed in a particular work. This is easily enough done by clearly marking any original work with the symbol © followed by the date from which copyright is claimed and the owner of the copyright.

The US Situation – Infringement Proceedings

The US also has special requirements concerning the infringement of any Copyright and it is advisable to Contact an IP expert about these. The most important thing to be aware of is that before an infringement suit may be filed in court it is necessary to Register the works of US origin with the Library of Congress www.copyright.gov

Term of Copyright

In the US and in most European Countries Copyright, in general, lasts until 70 years after the death of the creator. There are however, different rules for created works that are industrially applied, such as Patent and Design drawings.

The above basic guide to copyright is aimed at providing general information only. If you have any questions concerning the above please give us an e-mail at webeditor@piperpat.com or, alternatively contact any one of our Offices either directly or again by dropping us an e-mail at copyright@piperpat.com. If you wish to talk directly to an IP professional links to our Offices can be found on the left hand side of this page by clicking on “About PIPERS”.

Designs/Industrial Designs

Designs are concerned with how things look. They protect, depending on the country in which they are Registered, for anywhere from 5 to 25 years. They relate to any original feature(s) of a product such as its shape or configuration, or texture or pattern of woven or textile articles, not dictated by their function.


Requirements for Registration

Almost any design that can be applied to a product which is not solely functional can be registered. The basic Requirements are:

That the design is new, the details of which have not been disclosed in public (unless a grace period applies) and

That the design has an individual character which would be readily apparent when compared with designs of similar products.

Nearly every country has some form of Industrial Design registration and protection legislation, the laws pertaining to each country can differ markedly.

It is important to note that in many countries on application, or after Registration, to mark the articles appropriately as “design Application No….” or “Reg. Design No…”.

Can I get Worldwide Design Protection in a single application?

Although there is no such thing as a worldwide Design application it is possible to gain protection of most European Countries in a single application via a European Community Design. A European Community Design when Registered confers protection for up to 25 years and has the added bonus of providing a 12-month Grace period from first public display of the design.

What is a Trademark?

Registered Trademark of Coca cola

A Trademark is the means by which a business makes itself visible in the marketplace. A Trademark can be any distinctive (not solely descriptive) name or logo. The best Trademarks are instantly recognizable and conjure up in the minds of existing or potential customers things like quality, dependability, or at the very least the source of the goods or services being bought.

A trademark is often defined as: “a word, name, symbol or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others”. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.

Trademarks provide their owners with the legal right to prevent others from using a confusingly similar mark. They cannot be used stop competitors from making the same goods or from selling the same goods or services under a clearly different mark.

Examples of well-known Trademarks are: Coca-Cola, Rolls-Royce, The Apple logo and the Nike “swoosh”.



Why register A Trademark?

Prudent business people register their Trademarks with Patent Offices to gain an official record of their rights to a particular mark. A Trademark registration also grants a statutory right, subject to certain conditions, to prevent others from using the trademark without the registered owner's permission - i.e. to prevent infringement.

One of the principal aims of a business is to build up the reputation of its goods or services and by applying for and gaining a Registered Trademark accelerates the process as it serves notice on would-be copiers of the serious intent of a business to defend its position in the marketplace.

If a Trademark is properly promoted and protected it can be a very valuable asset for any business and can in some circumstances be worth more than the bricks and mortar of a business.

Generally, Registered Trademarks are protected for specific classes of products and services for periods of 10 years, which are renewal indefinitely.

How Valuable is a Trademark?

There is much talk today about “the shop front” and “the High Street”. These terms are used colloquially to refer to business visibility and to company profile. To provide some indication of the value of a trademark one needs to look no further than Coca-Cola. Coca-cola is immediately recognizable. It is an icon for capitalism and private enterprise - and it is the most valuable piece of intellectual property in the world today.

The president of Coca-Cola has even publicly remarked that if all of the company’s buildings, vehicles factories and equipment were destroyed Coca-Cola Inc would immerge from the ruins and rebuild itself provided that the Trademark survived. The loss of the Coca-Cola mark however, would damage the company beyond repair.

It is estimated that Coca-Cola Inc has a stock value of about 160 billion dollars, with the value of the physical assets being put at around 20 billion dollars. The value remaining is therefore about 140 billion dollars. This is made up of its goodwill or the intangibles of the business. So, for a company like Coca Cola, the most valuable intangible that they have is the Coca Cola trademark, the Coca Cola brand. Even if the brand makes up only half of the intangibles of the business then the Brand alone is conservatively worth 70 billion dollars.

Should you wish to learn more about good will and valuing IP please go to the Articles section of the Virtual IP library and click onto Franchising and Valuing IP Articles.

What is the Difference between a Business, Trade or Company name and a Trademark?

Business, Trade or Company names are names under which a trading entity conducts its business. They are usually used for governmental, company registration, taxation and financial reporting purposes. Invariably a company or business name will not contain a logo or other identifier.

Probably only about half of all company names are eligible for trademark Registration. In fact, many company names are confusingly similar or so descriptive that they cannot be trademarked. In other words they do not have the necessary “distinctiveness” to be used in the marketplace to distinguish one proprietors good or services from another.

A Company Name can be registered as a Trademark, but only if it is used as such, that is, used to identify wares or services

To be registrable a trade mark must be:

distinctive for the goods/services for which registration is sought, and

not deceptive, or contrary to law or morality, and

not identical or similar to any earlier marks for the same or similar goods/services.

It is important when starting a business to consider not only what the business is to be called and what name is to be used to attract customers but also whether or not the name will infringe another businesses Trademark.

PIPERS highly recommends that before taking this important step to conduct a thorough search of relevant Trademark Registers, Company name Registers, Business Registries, the Telephone Yellow pages (or similar) and domain name registries to ensure that you are free to use that name in trade.

Should you wish help with such searches please contact PatMark Research, a professional searching service at search@patmark.co.nz or visit their website at www.patmark.co.nz and they will be happy to oblige.

Please also be aware that simply because you have a company name or a domain name does not automatically mean that the name will be accepted as a Trademark.

Can I get a world-wide Trademark registration?

The simple answer to this question is no. In general, you need to apply for a Trademark in distinct regions. However, with the advent of the European Community Trademark (ECTM) and the Madrid Protocol on Trademarks it is now possible to apply for a large selection of countries with a single application.

We would be more than happy to answer any questions that you have in this matter and assist you in formulating a cost-effective strategy to obtain a Trademark in one or more countries. Links to the the the ECTM and Madrid Protocol options can be found via the “Useful Links” on the right hand side of the screen.


.For more information relating to a multiple country application please see:

European Community Trade Mark (CTM) by means of the OHIM (Office for Harmonization in the Internal Market) in Alicante, Spain www.oami.eu.int or phone (+34) 965 138 800; or

to register your trade mark through the international "Madrid Protocol" system which covers various countries around the world which have joined the Protocol as administered by the World Intellectual Property Organization (WIPO) in Geneva. www.wipo.int or phone (+41) 227 335 428.