*DISCLAIMER*
The notes below are adapted from the Kenyatta University, UoN
and Moi University Teaching module and the students are adviced to take keen
notice of the various legal and judicial reforms that might have been
ocassioned since the module was adapted. the laws and statutes might also have
changed or been repealed and the students are to be wary and consult the
various statutes reffered to herein
NOMENCLATURE OF INTELLECTUAL PROPERTY
AND TRANSFER OF TECHNOLOGY
Intellectual property law is interested
in protecting the product of human mind or product of creation. IP is
sometimes regarded as protecting the physical embodiment of an otherwise
intangible asset.
Manifestations of IP
1.
Patents – the certificate that you get from the patent office after you
have made an invention. The relationship that exists between an inventor
on one hand or patentee and the patent office, the estate or society. It
is a juridical relationship between an inventor or patent owner on one hand and
on the other hand the patent office or the state or society in general.
The inventor is that person who has brought out a new process or a new
invention. A patent owner is the person who holds the rights. The
state here is Kenya and the office is Kenya Intellectual Property Institute
(KIPI). To get a patent one must have an invention, it must be new (novel).
In the case of Windsurfing v Tabur Marines
– a boy used to play with a play boat, later on a company made a similar play
boat and wanted a patent on it, they were denied because it was not new. It
must constitute an inventive step – this is the doctrine of non-obviousness
i.e. is it obvious to PHOSITA (person having ordinary skill in the art), an
invention need not be complex for it to constitute an inventive step, it may be
simple but not obvious. Patents must be useful (doctrine of utility), it
must be capable of industrial application this is the same as
utility.
2.
Utility Models – these are sometimes called petty patents. The
concept is that there are certain innovations that don’t need to be entirely
new, it might be new in Kenya but not necessarily elsewhere, the newness need
not be absolute and there need not be an inventive step, it must be
useful. Kenya has both patents and utility models, Kenya Ceramic Jiko
(KCJ) from the metal jiko we realised the need to conserve energy, the idea was
that metal was making energy disappear but ceramic would conserve energy.
Utility Models can be used to protect Kitenges, Kikoi’s etc which is also a
case of copyrights.
3.
Copyright: - protects original expressions embodied in material,
tangible or fixed form. © it starts with an idea, it is expressed and the
expression is then embodied in material form. For example a writer gets
the idea to write, writes notes down on a piece of paper and then the book,
this is the idea, expression dichotomy. Ideas are not protectable in
intellectual property expressions are. Copyright is more dynamic 3 areas
where copyright is useful i.e. in software, literature and entertainment
amongst others.
4.
Trademarks -
5.
Trade secret
Look at the:
Ø Industrial Property Act 2001
Ø Trademarks Act Cap 506
Ø Copyright Act 2001
COPYRIGHT
Copyright law is intended to protect
and to reward original expressions embodied in tangible material
or fixed form. In the first category an idea does not infringe copyright
but once it is expressed in some form, then it becomes tangible when expressed,
you don’t only have the idea in your head you have expressed it and its somehow
in fixed form. Not everything that is new is patentable unless they are
original expressions and are in original form.
Subject matter of copyright is divided
into two broad categories
1.
Primary works; Americans call these works of original authorship. These
include literally works, artistic work, musical work ,sound recordings are
physical embodiments of primary works.
- Secondary Works – sometimes called neighbouring related or allied.
Primary works include - These include
literally works, artistic work, musical work. Literally works
are defined under Section 2 of Copyright Act as meaning irrespective of
literally quality. When a play is in writing it is a literally work but
the moment you perform it is called a performance. A treatise is a book
that deals with one subject in great detail. Essays and articles are also
copyrightable. Letters are copyrightable. Reports are
copyrightable. Memorandum including MOUs are copyrightable, summons are
copyrightable. Charts and tables, computer programs or software, tables and
compilation of data are copyrightable.
Literally works do not include judicial
decisions and statutes. A headnote is copyrightable.
Musical works – means any musical work
irrespective of musical quality and includes works composed for musical accompaniments.
Artistic works – means irrespective of
artistic qualities, paintings are artistic works, etching, lithographs,
woodcarvings and maps etc. photographs which are not comprised in audiovisual
works i.e stills, the photographer owns the copyright in a picture for
exercising skill and judgment in taking the photo, the poser is not
responsible for the composition of the photograph.
An author is the first owner of a
copyright.
Payment is not the basic issue in
intellectual property, the issue is who exercises skill and judgment.
Works of architecture in the form of buildings are artistic works and are
copyrightable.
Industrial handcrafts and clothe
designs.
Secondary works or neighbouring works –
these works do not belong to the cathedral of creativity. Poets,
painters, musicians
2.
Audiovisual works – a VHS or DVD are audiovisual they are both audio and
visual or have both qualities – it is the director who owns the copyright for
audiovisual work.
3.
Sound recordings - sound recordings are physical embodiments of primary works.
4.
Broadcasts – this is any transmission intended to be received whether it is
received or not,
What
is a performance S. 30 (6) of the copyright Act defines a performance as
"performance" means the representation of a work by such action as
dancing, playing, reciting, singing, declaiming or projecting to listeners by
any means whatsoever;
What is original?
Original is many times
confused with the term creative but original may mean
That its not a copy; - copy – its not a
reprint of another and it is not a copy version of another, it embodies skill
and judgment i.e. a work must embody skill and judgment to be copyrightable –Feist
v Rural (US) a company published a white pages directory, another company
copied the entries and published a yellow pages directory, they even copied
trap entries.
In the supreme court the white
pages directory said the yellow pages was infringing and yellow pages argued
that what white pages had was not copyrightable but it was only sweat and
brow, sweat and brow are not copyrightable.
What white directory had entered was
mere data and was not works of skill. Feist Publications, Inc., v. Rural
Telephone Service Co., Inc., 499 U.S. 340 (1991), commonly called just Feist v. Rural, was a
United States Supreme Court case in which Feist
copied information from Rural's telephone listings to include in its own, after
Rural refused to license the information. Rural sued for copyright infringement. The Court ruled that
information contained in Rural's phone directory was not copyrightable, and
that therefore no infringement existed.
UNFAIR COMPETITION:
This is a cross cutting aspect of
intellectual property in the sense that it relates to patents, copyright,
trademark law and other areas. Under IP Act 2001 some regulations have
been enacted to ensure that licensors of technology or patents do not include
inequitable and fair or oppressive terms in licensing agreements or
contracts. For example under IPA 2001 if a licensed agreement compels a
licensee to acquire technology from abroad and yet that technology is available
locally that is regarded as unfair technology, or importing expensive
technology where alternative technology is available and cheaper.
Unfair competition in area of passing
off – whenever someone passes-off your property that is unfair competition.
Section 5 of the Trade Marks Act.
Contracts in restraint of trade –
unfair competition – Cassman Brown
Contract in Restrain of Trade Act
To what extent can you limit an
employee or competitor from competing with you?
Geographical Scope – what radius
Duration – For how long can you
restrict trade?
Scope of Business – being prohibited
from doing two similar things for two rival companies. There was a big
issue with Saachi and Saachi.
Restrictive or Unfair Trade Practices –
they are closely related to passing off. When one enters into a contract,
in software Microsoft has been accused of bundling products (bundling means for
example buying sugar must go with bread) to buy one item you are bundled
with another item. Whenever one buys Windows software, one gets
Explorer, Netscape existed and they had Nestcape Navigator for exploring
the net , Microsoft was forcing people to use Explorer because it came with the
Windows package which was unfair because in a way it was locking Netscape out,
even where it is offered to free it is still bundling, taking unfair advantage
of market dominance.
Cap 504 – The Restrictive Trade
Practices Monopolies and Price Control Act – this Act does not sufficiently
deal with intellectual property. it does not sufficiently understand
intellectual property technological issues, there is a technology and IP
deficit.
The following instruments have tried to
deal with the problems of unfair competition
1.
Paris Convention on the Protection of Industrial Property 1883
2.
There were negotiations in the 70s through 1980s for an international code of
conduct on Restrictive Trade or Business practices (RBTs) there were
arguments that Trans-national Corporations like Microsoft, Nation Media Group
were engaged in restrictive business practice or unfair competition. For
example price fixing.
3.
In 1970 – 1985 there were concerted discussion for a draft international code
of conduct on transfer of technology hereinafter called the Draft Tot Code.
Last aspect of Unfair Competition is
advertising which is an arena for providing information to customers or
consumers as well as developing and selling a brand. This issue play out
in the realm of comparative advertising, misleading advertising and unfair
advertising. These are problems in the realm of economic torts as well as
intellectual property particularly Unfair Competition. In comparative
advertising one company advertises its product and compares it with the
competition i.e. that it is cheaper, better quality, long-lasting in relation
to the competition which mostly is identifiable competition. Compaq v Dell.
One company insisting they are cheaper than the competition.
Read an article written by Daniel
Chunovsky on Trademarks in Developing Countries, - Particularly on issue
of advertising goods for multinationals and advertising being used to spread
misinformation. In the area of franchising
TRADE SECRETS
Trade secrets are sometimes called
undisclosed information as TRIPS calls them then they can also be called
confidential information, know how. Trade secrets have 3 major
characteristics
1.
Information must be secret or confidential – not disclosed to other people;
2.
Information must have commercial value – commercial value by reason of its
confidentiality;
3.
There must be an obligation to keep that information secret – confidential
obligation. This is done through non-disclosure agreements NDA or the
confidentiality clause in the contract of employment. Coca cola is a good
example in discussing trade secrets law, the black syrup base of Coca cola is
not patented but protected by Trade Secret Law. If it was protected by
trademark, it would have expired by now.
Diana Princess of Wales as a Trade
Secret – character merchandising, Diana dolls, Diana’s portrait on plates
etc. Diana’s letters to Major James Hewitt were a trade secret.
David Beckham – David Beckham
merchandise -
TRADE SECRETS: protect your
trade secrets through patents other than trade secrets. Trade secrets are not
sustainable if leaked or if the owner of a trade secret dies, they die with it,
this is the problem with traditional knowledge. Traditional Medicinal
Knowledge. Whenever an elder dies in a village a section of the African
Library is burnt because most of the information is committed in memory and
rarely disclosed.
TECHNOLOGY
TRANSFER
For a long time there has been an
argument whether IP enhances or stifles innovation (creativity), technological
transfer and development. On the one hand it is argued that IP acts as a
protective and reward mechanism to creators. In sectors such as the
pharmaceutical industries for instance there is evidence to suggest that
investment and development would be seriously limited if patent protection were
to be removed. Part of the reasoning is that there are usually heavy
upfront or sunk costs or investments before a drug can be developed.
Examples of this sunk costs include initial research, initial development of
the drug, clinical and related trials.
It has been argued that intellectual
property especially patents stifles innovation, access and development.
Some have argued that the Swiss Pharmaceutical Industry development without
pharmaceutical patents. Secondly relatedly it has been argued that IP and
particularly patents increase the cost of medicines because loyalties have to
be paid. HIV drugs have been very expensive because of patents.
When one takes an example of painkillers the active ingredient is Paracetemol
but the moment it is given a brand name, they start charging for it. It
does not necessarily mean that a generic drug is fake, it just doesn’t have
brand name.
Modes or channels of technology
transfer:
From 1960s through 1980s there was a
debate regarding technology transfer. Developing countries argued that
there was limited transfer of technology to developing countries and that most
of the technology was controlled by the West and Transnational
Corporations. Developing countries persuaded UNCTAD to initiate a process
for drafting an international code of conduct for technology transfer
(ToT Code). This draft instrument was negotiated up to about 1985 when it
ended in a stalemate. Some of the core perspectives were as follows:
Developing countries argued for
concessions or preferential treatment in technology transfer transactions e.g.
more favourable pricing and generally easier and more favourable terms in
transfer of technology. On the other hand developed countries preferred a
market-based approach whereby ToT transactions would be based on market or arms
length bargains and therefore a limited role for the state in regulating
ToT. They argued that most of the technology was developed by
private enterprises and was therefore proprietary i.e. they were not within the
control of the State and so the State could not make decision on their
transfer.
Socialist countries especially of
Eastern Europe or the Soviet Satellites ideologically agreed with the
developing countries because they were opposed to Western Imperialism. But when
it came to voting on the draft, Soviet Satellites voted with the Western
World. This was because most of these countries had developed some
technology and they needed a market and therefore to them the idea that they
could give their technology for free was unthinkable. Some of the most
important export from the Soviet Systems were wine arms and liquor. The
Soviet empire was not too keen on transfer of technology.
The negotiations on the draft
International Code of Conduct on Technology Transfer ended in a stalemate in
1985. However 2 major lessons were learnt from this process
Promulgation of laws
Many developing countries including
Kenya have since promulgated laws to regulate technology (ToT). Most of
these laws begin with a market based approach to ToT e.g. the laws will saying
that the parties who are negotiating the transfer should decide the terms of
the transfer and if there is a problem with the transfer then the state can
come in. Part X S. 64 onwards of IPA 2001 has provisions on contractual
licensing. It gives party the freedom to determine the terms of the
licence. However it indicates about 33 terms which may make a contractual
licence voidable and therefore unregistrable by the MD of KIPI. The 33
terms may render a licence voidable because the are oppressive, inequitable or
Four pronged typology
If the price is unreasonably high then
that price shall not be registered by KIPI. For a long time KIPO as KIPI
then was and CBK emphasised a lot on the price clause partly because there was
the argument that Kenya was losing a lot of money. After 1995 CBK and
KIPI are no longer keen on scrutinizing licensing agreements although they are
responsible for scrutinizing what technology is being brought into Kenya.
They had only focussed on foreign exchange which was a narrow perspective.
-
if the contract requires one to import technology that is already available in
the country, KIPI can refuse to issue a contractual licence. This clause
also helps us in deepening our own technology and helps in building linkages
i.e. forward and backward linkages
Choice of
Law: What law shall
apply to the transaction. It the law to apply is foreign, then it is voidable
because they want you to use Kenya Law. if the forum for resolving the
dispute is a foreign forum then the contract is voidable.
It is in this context that Osunbor
argues that it is important that we regulate and strengthen the regulatory
systems.
Copyright Act 2001 Section 33 –
provides … for licensing, assignment and ToT for copyright works. It
provides thus:
33. (1) Subject to this section,
copyright shall be transmissible by assignment, by licence, testamentary,
disposition, or by operation of law as movable property.
(2) An assignment or testamentary
disposition of copyright may be limited so as to apply only to some of the acts
which the owner of the copyright has the exclusive right to control, or to a
part only of the period of the copyright, or to a specified country or other
geographical area.
(3) No assignment of copyright and no
exclusive licence to do an act the doing of which is controlled by copyright
shall have effect unless it is in writing signed by or on behalf of the assignor,
or by or on behalf of the licensor, as the case may be and the written
assignment of copyright shall be accompanied by a letter of verification from
the Board in the event of an assignment of copyright works from outside Kenya.
(4) A non-exclusive licence to do
an act the doing of which is controlled by copyright may be written or oral, or
may be inferred from conduct, and may be revoked at any time, but a licence
granted by contract shall not be revoked, either by the person who granted the
licence or his successor in title, except as the contract may provide, or by a
further contract.
(5) An assignment, licence or
testamentary disposition may be effectively granted or made in respect of a
future work, or an existing work in which copyright does not yet subsist, and
the prospective copyright in any such work shall be transmissible by operation
of law as movable property.
(6) A testamentary disposition of
the material on which a work is first written or otherwise recorded shall, in
the absence of contrary indication, be taken to include the disposition of any
copyright or prospective copyright in the work which is vested in the deceased.
(7) Where an agreement for
assignment of copyright does not specify the period of assignment, the
assignment shall terminate after three years.
(8) In the case of agreements
regarding future works which are not specified in detail, either party may, on
giving not less than one month's notice, terminate the agreement not earlier
than three years after it was signed or such shorter period as may be agreed.
(9) A licence granted in respect
of any copyright by the person who, in relation to the matters to which the
licence relates, is the owner of the copyright, shall be binding upon every
successor in title to his interest in the copyright, except a purchaser in good
faith and without notice, actual or constructive, of the licence, or a person
deriving title from such purchaser and any reference in this Act to the doing
of anything in relation to any copyright, with or without the licence of the
owner of the copyright, shall be construed accordingly.
(10) Where the doing of anything
is authorised by the grantee of a licence or a person deriving title from the
grantee, and it is within the terms, including any implied terms of the licence
for him to authorise it, it shall for the purpose of this Act be deemed to be
done with the licence of the grantor and of every person, if any, upon whom the
licence is binding.
This is essentially a market based
approach, however under Section 48 of the Act a compulsory license may be
avoided in at least two contexts
1.
Where the copyright owner or holder does not produce sufficient materials to
supply the relevant market; or
2.
Where the copyright holder refused to grant a licence or grants a licence on
inordinate or inequitable terms.
After 1995 there have been two major
reports the issue of law reforms captured by the Industrial Property and even
trademark law has been reformed to assist licensing. There have been
institutional reforms and policy reforms. You can licence the business
without the mark or the Mark without the business – this only means that if for
example you are running Nandos Restaurant, if one wanted to carryout other
business but not Nandos business with the consent of the Nandos Business owner,
they have licensed the premises and not the mark, but if they say fine you can
go open a Nandos premises in another premises, they have licensed the Mark but
not the business.
Institutional policy reform – many
countries have reformed their institutions and policy to enhance licensing and
other forms of transfers especially on market oriented principles.
Section 48 and Section 64
A licence is the permission that which
would otherwise be unlawful if the licence was not granted. A license may
take 3 forms
1.
A sole licence – this is whereby the licensor licenses only one licensee
however the licensor may compete with the licencee;
2.
Exclusive Licence – this is where the licensor licenses the licensee
exclusively and even the licensor cannot compete with the licensee.
3.
Non-exclusive Licence – this is where the Licensor licenses one or more
licencees and the licensor can also compete.
ASSIGNMENT:
In most assignment transaction the
assignee replaces the assignors for most intents and purposes. It is
recommended that the contract should be the assignor should sign the
assignment, the assignor’s is the most important.
My talking points – most important
Copyright
Introduction
Patents
Trademarks
Look at the case involving Diamond & Chakarabhaty – using
micro-organisms to remove oil spills.
Anything under the sun made by man is
patentable. This doctrine helps stimulate investments in bio-technology
in the 80s-90s. there has been a lot of investment in Genetics and
informatics. (Genomics – genetic engineering and informatics.
In 1994 – TRIPS adopted the standard
that all inventions are prima facie patentable and that no invention should be
excluded by state parties without sufficient justification.
INDUSTRIAL DESIGNS:
Section 84 of IPA – an industrial design means any composition of
lines or colours or any three dimensional form, whether or not associated
with lines or colours.
2.
The protection under this Act shall not extend to anything in an industrial
design which serves solely to obtain a technical result.
IDs are compositions of lines or
colours or any 3 dimensional form. They are protectable on the basis of
special appearance or aesthetics and not on the basis of their technical effect
or technical result. Most perfume bottles have elegant shapes.
Aesthetics other than utility or functionality. When does utility
override aestheticity – when one wants patents, they ask if it is useful and if
it is new i.e. viagra. Patents are all about utility it is in the extreme
utility end. Trademark is in the middle and is for both utility and
aesthetics and Industrial Designs is more to do with aesthetics. It
depends on what one wants, some may have both utility and aesthetic, Jean Paul
Gautier Woman form perfume bottle is a good example for me.
Technovations related to industrial
designs, they relate to arrangements of things. Section 94 of IPA
Character Merchandising:
this occurs when the owner of the rights some popular character grants licence
to others …
Character Merchandising is the process
of licensing and utilising representations of popular characters in goods or
services. Most of these characters are derived from fictitious characters
made famous through T.V. films or books for example like Harry Porter, Mickey
Mouse etc some of the characters are real life for example Diana Princess of
Wales in Dolls, Plates etc. Character merchandising constitutes
between fiction and faction. When you can trace fictitious material or
character to the real one you call it factual between fictitious and factual it
is a thin line, the more fictitious a novel is the more protected in copyright
(thick copyright as in protecting poetry) as it is work of the imagination.
Right of Publicity:
seeks to protect the image, voice and likeness of famous people especially celebrities.
These should not be copied or imitated without their permission. Paul
Goldstein talks of Johnnie Carson in the way he used to enter the stage
and say Heeeere comes Johnnie! and Vorna White who had her own
style of spinning the wheel of fortune. Right of publicity does not extend to
protect the individual from satirical commentary. Satirising is not
property but is in the area of freedom of expression.
Discuss forms of IP that may be used to
protect a Coke bottle and its contents
Many scholars have argued that in a
perfect market where transactions are efficient intellectual property (IP) may
not be justified. They have thus argued that (I)P should be created only
where there is market failure. The best arguments have been made by Stanford
Law Professor John Barton. He argues that trade presupposes freedom. On
the other hand property or IP presupposes restriction or control. Indeed
property includes the right to use abuse and the right to exercise exclusive
control. John Barton’s arguments underscore the tensions within
TRIPs. He is more convincing than activists and others who have argued
that trade has nothing to do with IP. Many of our communities have
pots, whenever they made posts they would put their marks, that was a
sign of trademark. In the area of music many people were identifiable
with the music that they had sung or written which is an issue of
copyright. It is not created by TRIPs but trademarks have there.
WHY DO MARKETS FAIL:
Markets fail for four reasons
1.
Abuse of market power – having market power is not a problem, the problem is
abusing it. It is abused through monopolies and monopsonies, a monopolist
is a single provider of a service for example KBS TV in the 70’s while a
monopsony is a single consumer. In Kenya when one wants to use software, they
buy it from Microsoft so this is a Monopoly. It has been argued that
Microsoft has been abusing its Monopoly power. When it got into the
market it was giving windows explorer for free so as to kill Netscape
Navigator, they killed navigator through bundling ( putting many products
together so that to use one you need the other)
2.
Asymmetrical information – one party to a transaction has more party than the
other party. In IP and computer products, the supplier is likely to have
more information than the buyer e.g. the software seller is likely to know more
about the software than the buyer. In second-hand markets, this also
happens a lot. For example the seller of a second hand car is likely to
know more about the car. Need to create property rights to correct this
anomaly.
3.
Negative Externalities: the opposite of this is
the Network Effect: It has been argued that whenever an individual cannot
internalise certain costs, they are not going to internalise the cost unless
there is a tax or penalty. There will be a moral hazard. In 1980s –
90s WM/IMF there was the argument that education, health service should be cost
based, education should not be free because people are not likely to
internalise the cost, they will abuse it.
Novels are good places from which one
can do character merchandising e.g. Harry Porter – one can merchandise Harry.
Characteristics of “Network Effect” –
examples tv programs and novels
Public goods problems:
Non-rivalous products
If the cost of producing an extra unit
of a product is limited. Book publishing- Aminata – Prof Imbuga – for Prof to
publish Aminata he has to start with Research about the cultural practices. He
has to spend time on writing the book
The book has to be edited, printed,
Published, Advertised or promoted and distributed to bookshops
The processes are costly and time
consuming,
This work can be destroyed by a
counterfeiter who does not need to go through all the processes that the author
has gone through. Where the book has a captive market like Aminata did,
the counterfeiter does not pay any royalties.. this is the problem of freeloading.
Freeloading is a problem because the
extra cost of producing of an IP product is costly. Stop free riding be a
fair follower. The phenomenon of non-exclusive – if there is a tv program
showing , it is difficult to exclude others from watching. It is non-rivalous
and non-excluding, if you light your cigarette from mine, I don’t lose and you
benefit. Theory by Yochai Benkler
Once an article of a public good is
created, it is non-rivalous – it is non-exclusive. Because of that once a
product is created it becomes much cheaper to reproduce, e.g. publishing
Aminata, counterfeiters come to cash in. Problem of IP first copy difficult to
produce but you cannot exclude others from enjoying it. There are two
approaches to studying IP
Human Rights Approach – Continental
Europe;
Utilitarian – Anglo American –based on
the work of Jeremy Bentham, innovation is not protectable and not intrinsically
valuable so as to be valuable, one has to prove that IP is good for it to get
protection, is it useful. Utilitarianism finds expression in Article 1 of
he American Constitution, the idea is that for copyright and patents to be
protected they must be able to promote useful art and science. The
question is which comes first, the promotion of useful arts and science or is it
the protection of IP? The whole debate of incentive regimes.
There are two broad typologies of
incentives. They may be ex post facto or they may be ex ante, they may be
to the creator or innovator or they may be to others.
For example the money given to gidigidi
by the NARC government was after the fact. KISIMA AWARDS and KORA
AWARDS. JOMO KENYATTA AWARDS IN LITERATURE. Ex post facto are
things like Oscar Awards all these are post facto.
Rival publicity issues:
Ex ante - this is where the award
is given before the product to give incentive. It is used to identify
talent. University of Nairobi giving grants for research up to KShs.
400,000/-. Kenya Medical Research Institutes gives money
as incentives for research on medicines for things such as AIDS, and in
Biotechnology. Coca Cola Popstar giving incentives to people with musical
talent - ex ante, Face of Africa . In Eldred v Ashcroft (John
Ashcroft was the AG America) Eric Edred had a school going daughter and the
daughter where she was going to school were always being asked to read some
very old books.
Eldred being a computer geek started
reducing the books into digital format so that his daughter could enjoy reading
the old books. One day the US Government decided they were going to
extend copyright by 20 years which meant that what Eldred was turning into
digital information was going to be copyrightable because the period was going
to be retroactive.
Eldred went to Harvard at the
Backman Centre and told the professors that he wished to continue digitising
the books inspite of what Congress had decided. In the meantime the US
Congress passed the Sonny Bono motion on Extending Copyright to 700
(CTEA) Copyright Time Extension Act. People started criticising the
Act which meant that copyright would last for life plus fifty.
In the Supreme Court Eldred lost 7 to
2. The argument at the Supreme Court for Eldred were that for a long time
Congress had extended copyright time which was contrary to the Constitution
which states that Copyright should have limited time. But the other were
arguing that limited could mean eternity minus a day. The other argument
was on incentives and the question was who was getting the incentives, the
creator or their dependants. Experts were brought to bring in their
opinion.
The question is what is the optimal, or
efficient copyright duration.
TRANSACTION COST THEORY:
This theory is associated with
neo-classical economists and helps elaborate the Utilitarian approach to
IP. The economist in this league include people like Professor
… The major argument is that states should focus on creating
property rights and enforcing copyrights. The government should not
bother too much about who is poor or rich but should bother about property
rights and contracts as this would help allocate resources in the most
efficient manner.
What are transaction costs:
The cost of identifying the
parties.
There are costs incurred in transacting
when one is negotiating
A poacher’s fee –
There are transaction costs associated
with enforcement and this is costly. Some quarters are arguing about
efficient breach – contracts are an issue of economic efficiency. Richard
Posner has argued that there are costs as transaction costs
1.
That the cost of enforcement include the cost incurred by courts and police in
preventing infringement or addressing piracy;
2.
Cost of restricting a good property when it has a public goods character.
These are just some of the transaction
costs.
Over the years transaction costs have
been criticised by assuming that they can be zero or minimise. The idea
is to fight to reduce transaction costs. The transaction cost theory is
powerful and professors such as Godwin. These scholars have argued that
the exception or limitation to copyright such as criticism or review and
private use are based on transaction use theory, that it is costly to monitor
the use of intellectual property in private area, for example would it be
possible for a lecturer to call Daily Nation every time they wanted to quote
from an article that was on that day’s newspaper? It would be practically
impossible.
Prof Goldstein in Copyrights highway
has argued that transaction costs are being reduced by the internet.
There was a time that it would take a long time for one to get a book or a
piece of music. The internet facilitates a quicker way of getting these
items especially music, books and software.
Transaction costs involved other
issues, opportunity costs, money etc.
NATURAL RIGHTS, HUMAN RIGHTS
PERSPECTIVE
The natural right perspective to
intellectual property is based on natural rights theories or epistemology of
human rights. the conceptual basis of IP is that you have the right
because you are a human being. There is a strong argument that the rights
that one has are not a reward but a recognition of ones nature such that
everybody has those rights. Philosophers like Emanuel Kant have argued
that IP should be protected because it is an extension of human persona.
There has been debate on distinction between utilitarian approach to IT and
natural rights tradition approach however UDHR encompasses both traditions.
Article 17 protects property article 27
(1) focuses on access to information and access to cultural rights.
Access and participation
27(2) focuses on property – issue of
exclusive rights. This focuses on property exclusive rights both material
and moral right of a creator or innovator. Economic rights tend to have a
utilitarian connotation to them. For example Nyambane has a right to
economically benefit from playing the character Moi in Red Corner, he deserves
a cheque and this is an economic right. The right to benefit financially
from creativity.
Any singer has the right to be named as
the writer of a song, this is a moral right. an actor has a right to have
his name on the credits, this is a moral right, receiving money for acting is
the economic right. 27(1) and 27(2) when read together constitute a
balance in Intellectual Property, you want to ensure that those who have
produced cultural products are rewarded. John Locke argued from a labour
theory of IP of property, he argued that if any individual finds land which is
farrow and they apply their labour to improve the land they make the land
useful and ought to claim ownership of that land this is usufructuary.
This theory in IP says that IP ought to be protected where one has made a
creation.
The other angle to John Locke’s
argument is that one can appropriate that which was pre-existing so long as one
leaves enough and as good for the public domain. This is related to the
argument of common use.
MORAL RIGHTS
© is divided into 2 broad categories
1.
Moral rights
2.
Economic or material rights
Morals rights or authors rights are
many times read in opposition to copyright and the economic rights are mainly
focused on owner rather than author. There are at least four examples of
moral rights. in Kenya we emphasize on two:
1.
The right to paternity (right to be named as the person who has given rise to
an IP product; one has a right to be named and a negative right not to be
named. The author also has the right to claim authorship and ownership
(when not credit) Right of Attribution or acknowledgment.
2.
The author has the right to object to distortion, mutilation or other
modification, as well as any derogatory or disparaging reference to the
work. This right may be claimed where the work has been adversely
reviewed. Moral rights here relate very closely to defamation.
RIGHT TO INTEGRITY & FREEDOM
FROM FALSE ATTRIBUTION. Right to integrity. No one has right to modify
other people’s creation without their permission. Psalm 23 – a Poet from
Uganda called Timothy Wangusa wrote a poem called Psalm 23 part 2 he satirised
Psalms, one has a right to satirise textual satire like Wangusa writing a poem
to satirise a written text. Social satire is like Imbuga writing Betrayal
in the City to satirise society.
The first person to own copyright is
the publisher until the author is identified.
Moral rights live and die with the
author. These are covered under S. 32(1) of the Copyright Act, 2001.
Duration of anonymous works is 50 years
since there is no author, for audiovisual work it is 50 since creation or being
published. After the end of the year in which the author dies.
Right of Integrity – this is protection
against disparagement alternation of mutilation.
Imitative Innovation – people who
mutilate other people’s songs and come up with their song e.g. Mercy Myra
borrowing a little here a little there to make a song, or Kajairo totally
mutilating a song to come up with his own. The amount of material in terms
of quantity and quality matters. An example is Gerry Ford’s Memoirs -
Gerry was being asked questions on the Watergate Scandal whether he wanted to
forgive Nixon or take him to trial as the Vice President. He decided to
forgive Richard Nixon.
The dilemma had been to forgive
and be seen as condoning political corruption or trying Nixon and being seen as
a callous person. Harper agree with The Time Magazine agrees that
they will get the scoop but before the Memoirs hit the streets, Nation steals
the book and they publish 300 words from a volume – the issue is do 300 words
out of about constitute copyright infringement? This is based on
the right to modify, alter or mutilate. The court held that there was
infringement as the words were Jerry Fords own words.
Right of integrity or freedom from
disparaging is closely related to the law of defamation. Like book
reviewers who review the author instead of reviewing the book, the author can
sue under moral rights section.
TRIPS and the context of Berne Article
6(b)
Why do moral rights matter? They
are serious in areas of films and publicity. When TRIPS was being
negotiated the American Film Industry argued that moral rights ought not to be
protected and they succeeded so TRIPS does not protect moral rights. If
one was to protect moral rights, it would mean that whenever one wanted to use
a film clip, one would have to call up the actor or actress every time they
wanted to use the clip which would be a very expensive and tedious exercise –
whenever one is acting it is assumed that it is hired work, it is an artificial
agreement that all actors and actresses are treated as if their work is on
hire.
American quarrel with moral rights-
suppose one removes from Titanic the scene where Leonardo Di Caprio is drawing
and put it on t.v. two issues will arise, Di Caprio may have a problem with
that.
Does IP stimulate or stifle innovation,
technology transfer or development
There have been arguments on whether IP
stimulates or stifles innovation. In the 1980s this debate was taken up
by US EC and Japanese trans-nationals with the support of their governments to
argue that non-protection or weak protection of IP stifled innovation and
hindered Trade, ToT and development. They gave some data to suggest that
billions of dollars were being lost especially in the pharmaceutical industries
(Pharmaceutical companies Merck Inc., Glaxo, software industries (Microsoft)
Entertainment Industries (Sony). They argued that in the area of IP they
tend to be monopolistic and do not allow competition. It has also been
argue that IP enhances transaction cost, i.e. before one acquires an IP product
one is supposed to negotiate or even pay a royalty and this is argued that it
enhances transaction costs. Newspaper houses stifle stories by using the
stories without sufficient acknowledgement. In IP the meaning of the word
correspondent will mean that the publisher will own the copyright.
Too much of research conducted on IP
and Patent Law are
There are problems on research that has
been conducted with IP and Patent Law
The role of IP in innovation has
fundamental weaknesses
1.
Most of the research focuses on patents; very little has been done on ©
and Trademark
2.
Most of research is in developed countries
3.
Most of research is based on interviews with corporate executives rather than
consumers, academics and so on meaning the research is not entirely empirical
but is largely intuitive and speculative.
Refer to Casper Primo Brage , Keith
Mascus, studies by WIPO, UNDP and Cultural Industries, Edwin Mansfield
IP and TRIPS
UNCTAD – poor man’s cushion – for
helping developing countries in their trade interests.
344-345
Historically WIPO and UNESCO were the
major regimes regulating trade regimes and Intellectual Property. UNCESCO
was administering Universal Copyright Convention of 1952 (UCC)which had partly
been passed to accommodated America. America for a long time was not a
member of Berne but was using Berne.
Over the years WIPO had been criticised
and it lacked resources to deal with IP it had limited personnel and more
recently it has sent limited materials to address IP. In order to
continue being relevant WIPO has now moved to Dispute Resolution since most of
its mandate has been taken over by WTO/GATT.
WIPO lacked a clear mechanism and
sanctions as there was nowhere to address disputes if one was aggrieved.
The major magic of TRIPS is that it has a clear dispute resolution mechanism
that if you infringe another country’s IP there can be sanctions. WIPO
did not contextualise IP and developed countries led an onslaught to WTO
criticising WIPO. BY 1996 WIPO Copyright Treaty etc were passed.
Evolution of IP within GATT
The argument relating to America is
that from around 1974 America was clear about its Trade Diplomacy and had its
Trade Act of 1974 and amended it in 1988 which had Section 301 generally called
super 301 which was a clause that said that if any country undermines or
comprises American trade interests, they will take any appropriate sanctions
and the sanctions could be unilateral. It took the following formats
1.
Aggressive Unilateralism
2.
Bilateralism – America dealing with countries one on one
3.
Multilateralism through GATT
How did IP develop within GATT
“Whether GATT could play a role in
IP … only in the Uruguay round has the idea gained ground.
The idea of putting IP within GATT regime
is traceable to the Kennedy Round in 1964 where there was a major issue that
trade is not only restricted by tariffs but there are other non-tariff barriers
to trade with the same consequences to trade. For example Sanitary and
Phytosanitary Services and quotas, America suggested that if a country
does not protect International Property, counterfeiting was another NTB.
In 1986 Ministers met in Punta Del Este in Uruguay and TRIPS was on the Table
that it ought to be included in the GATT regime. TRIPS first started its
life due to trademark counterfeiting. It relocation in TRIPS was
therefore a natural consequence since trademarks are very trade related and
later on expanded to include patents and copyright.
The debate in WTO was whether TRIPS should
be mandatory, TRIPS is essentially an agreement and one is therefore not bound
by TRIPS per se. By 1994 once a state signed as a member of WTO then they
became bound by TRIPS, TRIMS and GATS agreements. 15th April
1994 Marrakesh Morocco TRIPS agreement was signed and countries were given
Special and Differential Treatment to be compliant.
America has two systems of dealing with
States that are not TRIPS compliant
1.
Watch list –
2.
Priority Watch List – South Africa most Asian countries that were
counterfeiting which meant that measures were likely to be taken.
PATENTS
One of the core issues in TRIPS is that
it adopts the obita dicta in Diamond v Chakrabaty. For a long time Japan
did not want to patent bombs because of Hiroshima and Nagasaki but as per
TRIPS article 27 one has to patent or innovations.
Patents exist for at lease 20 years
which is another TRIPS standard.
Under Article 29 one is obliged to
disclose their invention in a manner that can allow PHOSITA to work the
invention.
Article 30 – exceptions to those
exclusive rights and recognises limitations to those exclusive rights, the
exception should not contradict with normal contradiction with the normal
exploitation of a patent – this is complicated.
Article 31 talks of compulsory
licensing and government use.
Article 34 – burden of proof is
reversed in
COPYRIGHTS UNDER TRIPS
Article 9 provides foundation for
implementing Berne but not the administrative provisions only the substantive
provisions.
Article 9(2) – makes it absolutely
clear that copyright does not extend to idea procedures, the clearest statement
on this
Article 10 – deals with computer
programs and software and not literally works
10(2) – protects databases in machine
readable forms.
Article 12 deals with the term of
copyright and it is at least life plus 50 Europeans life plus 70.
There can be exceptions to copyright
Article 14 protects performance.
1939-1945 – countries argued that the 2nd
world-war was caused by a trade after, that Germany went to war over trade
restrictions.
In 1947 there were meetings to try and
secure international peace and to regulate economic activities and development
and balance of payments issues. There was a problem that some countries were
imposing quantitative restrictions or quotas on imports. They established
the World Bank to help countries in reconstructing and the IMF to help
countries facing balance of payments problems.
To regulate international trade there
was a suggested to establish the International Trade Organization but in the
Havana Charter the ITO was rejected. GATT has a three prong identity one
it was a forum for countries to discuss on how to regulate tariffs but it was
not very organized like the UN for example. It was just a forum with
rounds like the Havana Round. It also had the character of Rules – the
GATT deals on how to deal with tariffs the other prong was about its
being an organization and a Club. It was referred to as the rich
countries’ club.
Around 1964 during the Kennedy Round of
GATT some countries argued that tariffs and barriers were not the only barriers
to trade but there were other Non-tariff barriers to trade such as Sanitary and
Phyto sanitary standards SPS and technical barriers referred to as NTBs
sanitary standards are used for example when the EU puts a ban on importation
of fish from Kenya saying they are not handled well, this becomes an SPS
barrier to trade.
1979 Japan Round – the US and other
countries started talking about counterfeiting that when you counterfeit other
peoples works, you deny the countries the right to trade, allowing
copying of others trademark was trade distorting
In 1974 US enacted its Trade Act
Section 301 that any country that undermined US Trade would face
sanctions. Infringing copyrights a country could be put on the Watch List
and if they continued they would be put on a Priority Watch List and a country
could face sanctions. The US adopted unilateral measures on countries
that continued to infringe on its copyrights. America also adopted
bilateral measures and negotiated the US Canada Free Trade Agreement USCFTA
among other agreements with Intellectual Property clause USCFTA was later
transformed into North America Free Trade Agreement NAFTA after they signed
multilateral agreement with Canada and Mexico.
In 1986 – 1994 the Uruguay Round took
place and the foreign Minister met at Punta del Este and at this round the main
issue was reforming the trade in goods and adding services such as banking,
telecommunications, legal services etc there should be no restriction to
offering services if AT&T wants to come and invest in telecommunications in
Kenya then there should be no barriers into their doing so.
In April 1994 the deal was sealed in
Marrakesh Morocco and Intellectual Property became part of GATT. A General
Agreement on Trades in Services (GATS) also became part of GATT.
Intellectual Property was allowed in GATT as Trade Related Aspects of
Intellectual Property (TRIPS) and intellectual property was allowed into
WTO. WTO became a specific institute that was born in Marrakesh
Morocco. Developed countries were to be bound by the year 2000 and LDCs
like Uganda and Tanzania were to be bound in 2016.
Trademarks under TRIPS
Historically trademarks were about
goods but now services are specifically being included. Article 15
recognizes the Paris Convention on protection of trade marks which gives as the
idea of well known marks or notorious marks.
Article 16 marks must be protected for
at least 7 years. TRIPS gave minimum standards to trademarks. It
conferred certain rights to trademark owners.
Article 17 – allowed limited exceptions
to the exclusive rights
Article 21 – provided general framework
for licences and assignments and emphasises that there can be no compulsory
licensing in the case of trademarks. The rationale here being trademarks
are about trade and to allow compulsory licensing in this area is to undermine
the trademark owner. It also confirms that one can transfer their business
without necessarily transferring their mark.
Trademark became a precondition of
maintaining registration. If one does not use a mark for 3 years it can be
expunged. Case of Drum Magazine.
In defence of abandoning a trademark,
one can argue that where a mark had been notorious and therefore state
protected. On the other hand if the mark has not been used for 12 years,
the owners have slept on their rights and equity does not protect the indolent
but protects the diligent and therefore abandonment is as good as
cancellation. There can be arguments on both sides.
Trademark, copyright, patent are
territorial so for example if Drum was not being used in Kenya, it can be said
to have died in Kenya.
Kenya imposes trademark protection for
10 years. TRIPS sets a minimum protection time of 7 years.
In PATENTS it is 20 years in Kenya and in copyright it is indeterminate
it is for life.
Undisclosed information – this trade
secrets related to undisclosed information under Article 39. It is also
closely related to the idea of controlling Intellectual Property
Article 40 –
Geographical Indications – GIs are
being debated quite a lot. TRIPS issue that are controversial are patents
and Geographical Indications this is partly because countries have realised
that they did not take interest to protect their own interests.
Article 25 –
Goldstein sees a lot of advantages in
TRIPS in that it seeks to address a lot of mischief in International IP law
since before 1991 there were no substantive binding minimum standards in
Patent, copyright, Trademark and IP Law.
Paris Convention did not bind states to
have specific standards in patents. It was not strict on issues of patent
rights and we had a chaotic regime, some countries like US had 17 years before
TRIPS after TRIPs it became 20 years, US added 3 years the time they
estimated it would take from application of a patent to grant. There were
no substantive issues on patenting, Japan could refuse to patent explosives but
after Diamond and Chakrabaty things changed.
TRIPs has provide to criminal and civil
enforcement procedures which were lacking before. before TRIPs, if ones
patent was infringed by other countries one could only try to take the matter
to the UN where UN could use diplomacy to try and resolve the issue. One
could also take the matter to the ICJ but decisions of ICJ matter if all
parties are willing to be bound. TRIPs brought in procedural requirements
regarding how one could acquire, maintain and register patents, trademarks etc.
Goldstein has argued that the magic or
wisdom of TRIPs was that before there were no clear enforcement mechanism, now
there is a Dispute Settlement Mechanism and even an Appeal.
Sihanya’s issues – some of the issues
are that TRIPs is only enforcing Western Standars and Patent terms are American
Standards, where is forklore, Traditional Knowledge? There are no utility
models under TRIPs. This is partly because America said that utility
models are a dilution of patents.
TRIPs is a patchwork of various
agreement, articles 9, 10, 11, 12, 13 14 dealing with © deal with Berne
Principles and does not say what they want to protect, they borrow some of the
Berne principles but reject moral rights. in Patent law they adopt some
of the articles of Paris but not others, it is truly a patchwork.
Constitutional politics and that there
was not enough participation from developing countries.
When TRIPs comes to form in Kenya (January
2000) developing countries argue that they have other challenges facing
them that they have to sort out before they can comply with TRIPS
requirements. They were asking for realistic standards that all countries
could easily comply with instead of graduated compliance. There has been
a huge debate in the idea of compliance in that the terms of TRIPs are onerous
and burdensome, they should be made less onerous to developing countries but US
is saying they can only review how TRIPs can be implemented while developing
countries are saying that they should make compliance less onerous.
Western want review of TRIPs and they want to add new issues.
Implementation of TRIPs have serious
implication, it requires administrative reforms and these are debatable issues,
sovereign countries do not want to be told how to reform their administrative
and judicial systems. Trying to direct a country on political and
judicial decision making is not easy it is tantamount to interfering with the
sovereignty of a country.
REGIONAL IP REGIMES
ARIPO African Regional Property
Organization
It was established in 1976 in Lusaka
Zambia as English Speaking African Regional Property Organization and industrial
which means it did not deal with copyright, it was later changed to African
Regional Property Organization Industrial and now it is known as African
Regional Property Organization. It helps in registration of patents and
trademarks but it is not clear what role it will play in copyright. It
has laws and is trying to harmonise IP regimes in English speaking
Africa. It is trying to harmonise the substantive IP Laws which are known
as ARIPO model laws. It is also helping in administration of IP where
countries can compare notes on IP issues.
OAPI Organisation Africaine Propriette
Intellectuelle Africa organisation for Intellectual Property. This
is for French speaking Africa. It has had both copyright and
patents. If one registers with OAPI the patent or copyright will be
protected in all the African French speaking countries.
European Patent Convention – EPC this
protects patents in certain specific European countries. It has its
offices in Germany Munich, it has both substantive and procedural standards and
it should be distinguished from the Community Patent Convention CPC which was
basically a proposal agreement in Europe that was interested in establishing
one specific standard applicable to all countries in Europe.
ANDEAN - this is for Latin
American Countries
Generally the EU and NAFTA and to some
extent ASEAN ( Association of East Asian Nations) and related trade
agreement have tried to adopt IP as a standard to be observed in their
trade. However most of trade in Africa like COMESA, PTA, SADC and ECOWAS
– most of these have not integrated IP into their agreements there are
only a few clauses that mention IP related concepts such as trade,
Industrial Development, Science and Technology and cultural development hence
it is argued that these RTAs exhibit an IP or technology deficit.
PATENT AND RELATED DOCTRINES
Patents are regarded in two ways, as a
certificate and as a juridical relationship. The inventor or patentee
gets licensed by KIPI, there is a legal relationship between Inventor or
Patentee and on the other hand one has KIPI representing the state.
Article 27 of UDHR says that Intellectual Property should have a balance.
Patents started their lives not as IP but as a system of helping free trade,
one receives letters patentes to assist one in trading.
When one wanted to participate in
trade, one required patent. The modern patent law is traceable to UK and
the system of Monopoly, patents were granted at the discretion of the
Monarch. Now it has become an IP issue rather than a business
issue. In 1789 it was incorporated into the US Constitution Article
1881. A Patent is a bundle of rights that can protect an individual and
it carries duties and obligations, duties to disclose to the patent office, on
payment office on grant of registration and renew etc. there is also the
obligation of compulsory licensing if one does not meet the conditions.
Is Patent a Monopoly? This is a
controversial issue because for one to be granted a patent, one has to meet
many standards. It is not really a monopoly like in other sectors but in
this case one has to invent something. Secondly besides being intelligent
and meeting the basic standard, one has to be good in business to secure market
presence. When ones patent exclusive rights is limited in scope in terms
of duration a patent is not a perpetual monopoly and is only protected
for 20 years and the protection is not even exclusive.
One may suffer compulsory licensing
anytime which means it is not exclusive.
Patents in the IP Monopoly
It has been argued that patents are the
most important in IP and in many universities it is taught in a lot of lectures
as opposed to only about two for trademarks and copyright. The argument
is because patents involve inventions and the most sophisticated
technologies. They also require long procedures and thirdly it has been
argued that protection of Patents if very high partly because of its
sophistication. There is a lot of protection for patents. Patents
generally have the tendency to secure very high revenues for the inventors, for
example if somebody invented a vaccine for HIV this would be a goldmine.
It is unlike some areas of copyright. Patents are the most controversial
and notorious because in most cases it deals with life and death issues as in
HIV drugs.
Acording to Professor Donald Chisum
Patents
The patent problem arose when there was
an exhibition in Paris in 1983 and there was need to protect the exhibitors.
PATENT LAW IN KENYA
Trademark Independence came in 1966 –
before that we applied 1911, 1956 UK Trademark Act
Patent Independence came in 1989
A dependent Patent System had the
following problem
1.
An inventor had to apply for protection in the UK, this undermined Kenya’s
security and sovereignty;
2.
We expended or Kenya’s inventors expended a lot of money in seeking patent
grant in the UK, the lawyer had to travel to the UK and had to pay money;
3.
There was a problem with technology transfer in the sense that once one
disclosed their information in UK, information was more available in UK than it
was in Kenya so it was only people in the UK who could easily access the
information while Kenyans had to travel there.
4.
The UK Patent System especially UK Act 1977 was regarded as largely
inappropriate to the interest of Kenya and other developing countries;
(a)
UK Patent Act 1977 did not provide for protection for Biological
innovations; there was a hot debate on non-patentability of life forms,
research by 1989 had shown that Kenya was making headway in the area of
Research and Development evidenced by the fact that KARI had done a lot of
research on crops and so had JKCAT, Life form was Kenya’s Forte where
they felt that they had made a lot of innovations;
(b)
It was also argued that UK Patent Act 1977 did not protect Jua Kali utility
models and Kenya needed its own independent system to do this and this is in
1989. In 1988 we had exhibited what Kenya was producing in the Jua Kali
Sector the Nyayo Era Exhibition which coincided with Kenya enacting the
Intellectual Property Act
WHAT IS PATENTABILITY
What is a patentable invention – under
IPA a patent is defined as a solution to a specific problem in
technology. It may be of two forms
1.
Product e.g. aspirin which means that a person can repackage and recreate
aspirin for other purposes and patent it, may be one discovers a new use
of aspirin for eg cancer, they can patent aspirin as a cure for cancer and
Bayer can still be manufacturing aspirin for the other diseases that they
invented it for like heart defects, one has to discover a new way of using a
known product, you can have the patent for the process.
Section 21 says that certain things are
excluded from patents ab initio, plants are not patentable.
Discovery in America patent law means invention. Scientific theories are
not patentable, for example discovering a universal law of nature like the fact
that water boils at a 100 degrees Celsius is not patentable. Energy is
neither destroyed or created but transferred.
2.
Schemes, Rules, Methods of doing business – schemes of playing games such as
soccer or performing mental acts are not patentable, the utility is
doubtful. For a long time the Law in US, UK and Kenya used to argue that
u cannot patent business methods. For example mali kwa mali is not
patentable. The argument is if one has a new way of doing business, they
can be protected under trademark. Around 1980 there was a lot of debate
and mostly people wanted to be allowed to patent business methods. There
was a convergence of computer science and there was development of software and
internet business. In the case of Diamond v Diehr (1980) there were
so many developments in software engineering and people wanted their inventions
in software protect and the US was saying that no you cannot patent software
which was classified as a logarithm you could only copyright software. After
1980 they were allowed to patent software in Kenya it was in 1989 saying that a
logarithms and computer programming were not patentable. Diamond &
Diehr were insisting that software could be patentable and Diamond v Chakarbaty
were saying that anything was patentable, in 1989 Kenya Industrial Act said
that one could not patent software but in 2001 the Kenya Act is saying that it
is possible to both copyright and patent software in Kenya. The one click
patent was given to Amazon.com this was a way of clicking once to access what
you want.
3.
Methods of treatment of human bodies or animals, these are not patentable, mere
representation of data or information is not patentable, public health using of
molecules to cure disease is not patentable and neither is gene
therapy. Standard information is not patentable e.g. Ghai and Mcauslan
cannot patent Kenya’s getting Independence in 1963 though they have written
about it.
2.
the reason why one does not want to protect the above list is because most of
them are protected under different regimes or other systems of law, discoveries
of plants are protected by Plant Breeders Rights, trade secrets are protected
by Industrial Property etc.
novelty must be absolute. How is
novelty determined. There are three ways in Kenya.
(a)
General Data Base of research at KIPI where one can research and see whether
what one has invented can be protected or whether it has been patented in
Kenya;
(b)
ARIPO based in Harare has another data base on what has been patented somewhere
and it helps member states with access to the database so that they can know
what has been patented
(c)
Patent African Cooperation Treaty entered into under the auspices of WIPO and
where one wants their invention to be protected in Kenya, KIPI will do but when
one wants to patent in many other countries ARIPO will protect one in English
speaking Africa, Patents are territorial and is only protectable only
where it has been registered when one wants patent in Europe they can go to
PCT. All these organizations help the inventor with the data and also
help patent offices with information to avoid duplicating research. There
is no worldwide patent and one has to designate the countries where they are
protected.
DOCTRINE OF DISCLOSURE
Duty to disclose invention to the
Patent Office to get patent protection: The disclosure must be full
disclosure and must enable the PHOSITA to use the product. Obel is being
bound to KIPI and he will be granted a Patent but only after he makes full
disclosure.
Where one discloses in a journal or
newspaper without seeking protection, in some cases one may lose novelty and at
other times not due to full and enabling disclosure. Some of the
scientific journals for purposes of disclosures such as Lancet the Journal of
Medicine is taken seriously, Nature Journal , New England Journal of
Medicine - A patent lawyer has to read these journals. Suppose one
discloses in the context of delivering samples in a confidential context?
When one sends a colleague material under confidential cover, is that
disclosure? No it is not. The first person with an invention to get
to the Patent Office is the one who gets the Patent – in Kenya they have first
past the post – philosophy and in some countries researchers try to outsmart
each other.
If Professor Obel is afraid of
disclosing the Pearl Omega Formula, it is an unfounded fear or it can be
regarded as misplaced fear because under Kenya’s IPA one is protected and they
are supposed to keep the patent confidential. In Kenya we do not have the
equivalent of the Section 6 of the Lesotho Patent Act under which all officers
of the patent office are bound not to disclose the information and that in case
they do they will suffer imprisonment, fine or both and it would thus seem that
Professor Obel’s fears are not all that misplaced. The fear is also
well-placed because the Public Officer Ethics Act and the Common Law Rules on
privacy and protecting information and Copyright, Trade Secret, the Official
Secrets Act all of these Acts do not have a firm basis for protecting
information disclosing to a Patent Officer by an Inventor. On the other
hand The Official Secrets Act, Public Officer Ethics Act, Common Law Rules as
well as copyright can actually be used to protect patent information. For
example the information contained under copyright so even Professor Obel needs
protection, he can get protection under copyright, a patent can have two forms
of protection
1.
Patent or product process – protected..
2.
Disclosure of information, the claim, the description, the drawings which are
all protected under copyright.
One can argued both ways about
protection of an invention.
Inventive Step
This is sometimes called non-obvious –
it is not obvious to PHOSITA. Inventive step is UK-Kenya term and for US
it is Non-Obivousness. Non obvious does not mean that it must be complex,
it could be a very simple process. PHOSITA need not be a complicated
scientist, he need not be Einstein he can be of a lower standard than the
inventor. PHOSITA can even be an unimaginative unskilled worker.
But some people like Lord Morton have argued that PHOSITA must not be a
mechanical idiot but a mechanical genius and this was the case in Gillette
Razor. The halfway house is that PHOSITA must be a cross between the
genius and the idiot, intelligent enough who has some expertise in that
specific field.
Industrial Applicability
Utility is the convergence between the
intellectual and the property or commercial in Intellectual Property, it brings
the issues home. After we have invented, there is emphasis on utilitarianism
and one has to prove that an invention is useful. Something may appear
useful but it may not be patent, moneychangers, cannot patent their con-game,
issues.
Reproducibility
This means that it is not good enough
to reproduce a prototype or model, a product must have the ability to be
mass-produced to be useful to Kenyans and the world. It may be difficult
to develop biological models.
Exclusion
Section 37 – Right of Priority – the
right of priority, one has duty to disclose whether there are other inventions
that are in the field that you have applied for. all the applications
have to be sent within 12 months, one can seek priority to be granted a patent
where they live even though they are aware that it is patented elsewhere by
somebody else. When one is an inventor they must disclose what other
inventions close to theirs that people have made and gotten protection
elsewhere, an inventor buys time before one comes to their market to file for
patent. A Kenya may seek priority to be protected in Kenya even though
another inventor has filed papers somewhere
PATENT PROCEDURE
One has to name the Inventor
Name the Applicant
Description – the inventor must
specifically describe their invention, give background art or background
technology.
Designation of the State
The best mode of working the patent
must be stated. The cheapest, easiest most efficient way of working the
patent. How best can it be done. Include specifications and be
clear on what you are claiming. Specification should be accompanied by a
drawing where appropriate, sometimes it may not be easy to have a drawing.
The significance of drawing is related to the Chinese Proverb that a picture is
worth a thousand words.
CLAIM
What exactly does one want to
protect? East African Breweries v Castle
A claim may be broad or narrow and most
inventors tend to make their claims very broad and use words like all rights
etc. this is not acceptable in many countries, in US they allow broad
patent claims for certain reasons
UNITY OF INVENTION
One is allowed to make as many patent
applications as possible but each application must have a unity of claim, if it
is a writing instrument, patent it for writing but not as a beverage.
EXAMINATION AS TO SUBSTANCE:
EXAMINATION AS TO FORM
Has the doctrine of patentability been
met
Amendment
Minor changes and not substantive
changes.
Grant of Patent – have you fulfilled
examination as to form and examination as to substance.
PATENT INFRINGEMENT
What constitutes infringement?
The infringement can be strict/narrow or
purposive/broad. In our Act we look at primary and secondary
infringement. Primary is where one counterfeits a process e.g. where
Smithkline has panadol another person makes a paracetemol and calls it paranol
this is outright infringement. Secondary is where one actually encourages
someone else to use a process that has already been patented. In the case
of Catnic. Secondary infringement is where there is already a registered
patent or a patent waiting to be patent and another person wants to patent the
same kind of product.
REMEDIES/DEFENCES
& SANCTIONS
More often than not these are clearly
set out in the IP Act of 2001 and there are civil, criminal remedies. The
first thing a person does is to get an injunction either interim or
permanent. Permanent if the infringement is found to be subsisting.
Damages
Under Section 106(b) of the IP Act of
2001 the main purpose of granting damages is to compensate the Plaintiff done
by the patent infringor, punitive damages are only awarded where the act amounts
to criminal activity but courts usually give compensatory damages. The
plaintiff is entitled to any other remedy provided by the law.
Delivery up – is when the infringer is
ordered to deliver all the counterfeit or infringing material to the court and
the court disposes the infringing material as it deems fit.
Criminal Sanctions:
This are all available under the IP Act
and in Kenya what we have for example the find of KShs. 50,000/- the amount the
infringer makes is much more than the fine and therefore it does not seem to be
a deterrent. One of the issues that have been raised in this regard is
that the fines and the sentences which are between 3-5 years don’t act as a
deterrent. This is an Act passed in 2001 and we hope KIPI will address
this issue.. it is noteworthy that a lot of jurisdiction do not
criminalize Intellectual Property but in Kenya there has always been criminal
sanctions for infringement. There is a big problem however with the
enforcement of these rights probably because of the intangible nature if
Intellectual Property.
Bio-technology
This has in the recent past assumed a
significant role with regard to medicine, agriculture where one can modify
organisms to increase the yield of plants etc. the IP Act has certain things
excluded from patentability and one of them is the issue of life forms.
In the US practically anything under the sun can be patented. O ne of the
leading cases is Diamond v Chakarbaty and one of he main issues here was
whether artificially created life forms can be patented. At first they
agree to patent the process that created the bacteria but refused to patent the
bacterium itself at appeal they did agree to patent the bacterium that was
being created from the process.
Plant Varieties are protected under the
Seeds and Plant Varieties Act, to patent a new breed of plant, it has to be
new, it has to be distinct meaning it has to be distinguishable from any other
existing variety. It has to be uniform so there cannot be variance in the
new breed. It has to be stable meaning every time it is propagated it
does not mutate i.e. it maintains the same characteristics. The
opposition of patenting life forms is a moral, religious and ethical reason and
not legal.
Bio-tech companies rely on genetic
resources that are found within the tropics so essentially they take a life
form from here and go to the US and patent it stopping people from the tropics
who can patent it. For example they took the Basmati seed, modified it
and patented it in the US amid protests from Asia. How do we share
benefits that accrue from genetic resources? Who gets paid? One of
the most interesting cases is the Hoodia case of South Africa SCIR carried out
some research on the Hoodia Plant that had hunger depressant properties and
came up with an anti-obesity drug that were used by the Koikoi of the
Kalahari. SCI have now agreed to give 10% to the Sun and Koikoi.
Patenting of life forms is complex. At the moment WIPO has created a
forum where they meet once a year where the various country are supposed to
come up with ways to deal with issues of genetic resources and traditional
knowledge.
TRADE MARKS
™ - What is the difference between a
trade mark and a trade name? trademark falls under the realm of
Intellectual Property. Since colonial times we have had trademark
registered from as early as 1901 but the system then was to register your
trademark in UK for it to have value in Kenya.
™ Can be anything, combination of
names, combination of colours, designs all these can make a trademark.
Difference between ™ and ® some people will register a mark and not necessary
for the purpose of trademark. Trademarks are normally territorial for the
reason that they are registered in each country. If one registers Mwarsie
for shoes, someone else can go and register the same trademark in
Ethiopia. A trademark like Coca cola is universal to the point of being
generic.
Trade names are registered with the
registrar of companies to use in the course of trade. One can register a
trade name if they have used it for a while as a trademark. Certification
marks give certification as to the quality of the work for example the KBS logo
shows that the quality is approved by Kenya Bureau of Standards.
Use of Trademark
1.
To distinguish the goods of one traded from those of another.
2.
It refers to a particular quality more so like designer quality, like Gucci,
Channel etc, the trademarks are associated with quality.
3.
Trademark protects the investment of the inventor, labour capital and goodwill,
this attribute has been questioned that it has no legal basis.
4.
Identifying the origin of a product i.e when you see Omo you associate it with
Unilever. This issue has become redundant in scholarly terms because of
the issue of franchising e.g. Nandos in Kenya makes different tasting chicken
from the Nandos in South Africa.
5.
To promote the marketing and sale of a product. When one has a trademark.
According to David Bainbridge says that
the purpose of a trademark are the distinguishing aspect, protection of
goodwill and to protect the consumers against confusion.
Registrability of trademarks:
Sections 20-22 of Trademarks Act are on
registerbility.
1.
Absolute Grounds – there are some grounds where the registrar has no
discretion i.e. Kenya Court of Arms is not registerable not matter what
you do it is not allowed to register. There are also names that one
cannot register as ™ like University of Nairobi, African Union etc.
2.
Relative Grounds: the registrar may accept or refuse the
registration. If the ™ is likely to cause confusion, the registrar will
refuse to register it, if it is confusingly similar the registrar will refuse
to register the mark, where the mark is misleading for example when one says
Kilimanjaro Oranges where the origin is from Meru, this is lying and confusing
as to the origin of the goods. Where the mark is descriptive the
registrar will refuse to register it since it describes what one is trying to
sell and may exclude a lot of people from using the mark in future. The
case of Wagamama v city centre restaurant – Wagamama was sending some kind of
cuisine and then some Indian came up with Rajamama selling cuisine and Wagamama
was arguing that this was likely to confuse clients. The court held that
there was a likelihood of confusion by association since one is likely to associate
Rajamama with Wagamama one may confuse and thing they are one and the same
people and Wagamama was given an injunction. This is likelihood of
confusion through the doctrine of confusion by association.
3.
Marks Capable of Distinguishing one product from another: ExE for
Flour or Vaseline for Petroleum Jelly. These ™ can distinguish what one
is buying. Distinctive marks are registerable under Part A and Part B for
those that are marks capable of distinguishing products
Registration
Procedure:
Read Trademarks Act Saudi
Arabia v Saudia Kenya Enterprises
Whatever ™ one registers for a certain
product they cannot deviate and later register the same ™ for other
goods. The use of ™ has to be in good faith. Read
Passing-Off
Brooke Bond v Chai, BAT v Cut
Tobacco, Hack Babies v Oper Pharmacies
Making a trademark generic
Rights of a ™ owner
Rights to use the ™ if a 3rd
party uses the ™ to further his own interests, it amounts to infringement.
If one uses a ™ that is confusingly
similar to the ™ of another, refer to Nivea v Nivelin or for
example in Kenya we have panadol and in South Africa we have Panado if
one registers Panado in Kenya there is a likelihood of confusion.
Parallel Importation
Parallel Importation – the principle of
exhaustion – once you have released your goods to the market, you have no
control and it can be used by an infinite number of people at the same
time. But the principle can be defined as National meaning once goods are
sold within Kenya one has exhausted the first right, so a 3rd party
cannot take the goods and sell them in Tanzania. International exhaustion
is to the extent that once the goods are in the market, you cannot stop other
people from selling the goods, the goods cannot be reproduced but they can be
redistributed. Refer to the Silhouette Case silhouette were manufacturers
of designer shades. The Defendant was based in Vienna and used to sell
discount frames, after a while Silhouette sold some old fashioned frames to a
buyer in Bulgaria and the defendant went to Bulgaria, bought the frames and
brought them to sell at a discount and Silhouette went to court. the
court held that since Bulgaria was out of the EU (regional exhaustion) the
importation and subsequent sale by the defendant amounted to infringement of
the Silhouette ™.
FRANCHISE & LICENSING WITH REGARD
TO ™
Oil Companies
FoodChains
Steers
Kenchic
COPYRIGHT & RELATED RIGHTS
People who compose their own music have
primary rights to the copyright while those who perform have secondary
derivative or related rights to copyright.
Berne Convention of 1886
Right of author to be recognized as the
author of his work
Right of paternity
Parody and satire are not infringement
of ©
TRIPS Agreement incorporated articles
1-24 of the Berne Convention excluding only moral rights. US does not
recognize moral rights, they can take your music and mutilate it.
COPYRIGHT
Copyright © protects the original expression of ideas, not the ideas themselves.
It is free and automatically safeguards your original works of art and
literature, music, films, sound recording, broadcasts and computer programs
from copying and certain other uses.
Under the © Act work has to be it
has to be original and reduced to material form, does it contradict Section 5
of the Berne Convention which says that there should be no formality.
Original means one has to show
sufficient skill and judgment. Refer to the case of Fiest Publications v
Rural Rural was a telephone company and had a telephone directory Fiest a
Yellow pages company. Feist Publications, Inc., v. Rural Telephone
Service Co., Inc., 499 U.S. 340 (1991), commonly called just Feist v. Rural, was a
United States Supreme Court case in which Feist
copied information from Rural's telephone listings to include in its own, after
Rural refused to license the information. Rural sued for copyright infringement. The Court ruled that
information contained in Rural's phone directory was not copyrightable, and
that therefore no infringement existed. The questions for determination
were can there be copyright in facts the answer was no. Had Rural
exercised sufficient skill and judgment to come up with their directory, they
had but the information in the directory was not copyrightable. This is
the definitive guide for originality. The Judges stated “The primary
objective of © is not to reward the owner to promote science and useful art. To
this end © assures the author the right to their original expression but also
encourages others to built freely on the ideas and information conveyed
by the work.”
Under the Copyright
Act 2001 originality is stated in Section (3) as A literary, musical or
artistic work shall not be eligible for copyright unless
(a)
sufficient effort has been expended on making the work to give it an original
character; and
(b)
the work has been written down, recorded or otherwise reduced to material form.
Creative ideas are expressed through
books, drawings, sculptures, drawings, photographs. Computer programs are
protected as literally works, why?
Copyright protects
"original works of authorship" that are fixed in a tangible form of
expression. The fixation need not be directly perceptible so long as it may be
communicated with the aid of a machine or device. Copyrightable works include
the following categories:
- literary works;
- musical works, including any accompanying words
- dramatic works, including any accompanying music
- pantomimes and choreographic works
- pictorial, graphic, and sculptural works
- motion pictures and other audiovisual works
- sound recordings
- architectural works
These categories should
be viewed broadly. For example, computer programs and most
"compilations" may be registered as "literary works"; maps
and architectural plans may be registered as "pictorial, graphic, and
sculptural works."
DURATION
OF COPYRIGHT
© Act in Kenya grants ©
to the © owners. It subsists for the life of the owner plus 50
years. In case of sound records, they compute 50 years after the year in
which the first recording was made. The problem with duration is that
most computer programs have a very short life span and there is no need of
protecting them for 50 years plus. Anonymous Works: © subsists for
the duration starting from the year of publication which is strictly 50 years
but if the author decides to disclose his identity before he dies, then it will
persist for his lifetime and then another 50 years after the author’s death.
These are called pseudononymous works. 50 years is a short time and there
are 2 dimensional characters like Mickey Mouse and the Looney Tunes and their
time was about to expire in the 2004, what the industry leaders did was to lobby
Congress to extend the duration of copyright another 20 years which now made it
the life of the author plus 70 years. Music produced in US prior to 1976
Act is already in public domain.
It does not matter what
kind of work it is, it may be a fantastic paper for the law journal but the
subject matter depends on whether it falls on the category of literary,
artistic or musical works.
Copyright
Act 2001 Section 22.(1) Subject to this section, the following works shall be
eligible for copyright
(a)
|
literary works;
|
(b)
|
musical works;
|
(c)
|
artistic works;
|
(d)
|
audio-visual works;
|
(e)
|
sound recordings;
and
|
(f)
|
broadcasts.
|
A broadcast shall not be eligible for
copyright until it has been broadcast.
(3) A literary,
musical or artistic work shall not be eligible for copyright unless
(a) sufficient effort has been expended
on making the work to give it an original character; and
(b) the work has been
written down, recorded or otherwise reduced to material form.
(4)
A work shall not be ineligible for copyright by reason only that the making of
the work, or the doing of any act in relation to the work, involved an
infringement of copyright in some other work.
Related rights for a long
time were not included in copyright because it was argued they lacked
creativity. Broadcasting Houses only get fringe rights for the investment
they have made. Broadcasting Stations have copyright to broadcast their
own programs. They only have primary rights in those programs that they
have themselves produced like ‘Wingu la Moto” NTV would have the primary rights
to this programs. But they get related rights to protect their
investments for broadcasting other people’s work.
The authors of a joint
work are co-owners of the copyright in the work, unless there is an agreement
to the contrary.
Copyright in each
separate contribution to a periodical or other collective work is distinct from
copyright in the collective work as a whole and vests initially with the author
of the contribution.
Two General
Principles
- Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the possessor the copyright. The law provides that transfer of ownership of any material object that embodies a protected work does not of itself convey any rights in the copyright.
- Minors may claim copyright, but state laws may regulate the business dealings involving copyrights owned by minors. For information on relevant state laws, consult an attorney.
This blog is really informative because nobody has the proper knowledge about this see more Kanchan Khatana and Associates
ReplyDeleteHelpfull post
ReplyDelete