2016 seminars entrepreneurship methods - sites...

Prof. Manuel David Masseno

February 19, 2016

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2016 Seminars – Entrepreneurship Methods IP Topics for Engineering: I – Industrial Property Issues

III – Industrial Property Issues

1. The Main Sources and Institutions

Besides the Specific Sources, that will be referred to

along with each Industrial Property Right, we have:

International and European Sources:

the Paris Convention for the Protection of

Industrial Property (CUP), of 1883 - TRIPS

National Sources and Institutions:

the Industrial Property Code (CPI), approved by

Decree-Law Nº 36/2003 of 5 March and last modified

by Decree-Law No. 143/2008 of July 25

the National Institute of Industrial Property (INPI)

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2. New Creations

Creations of the Human Mind with a practical, not

just aesthetical, purpose, meaning (a) Know How,

(b) Inventions, including biotechnological

inventions (c) Utility Models, (d) Designs or

Models, (e) Topography of Semiconductor

Products and (f) Plant Variety Rights

(a) Know How

Industrial Property rights are not granted

regarding information, as such

Specific Souces:

the Commission Regulation (EC) No 772/2004 of 7

April 2004 on the application of Article 81(3) of the

Treaty to categories of technology transfer 3


“‘know-how’ means a package of non-patented practical

information, resulting from experience and testing, which

is: (i) secret, that is to say, not generally known or easily

accessible, (ii) substantial, that is to say, significant and useful

for the production of the contract products, and (iii) identified,

that is to say, described in a sufficiently comprehensive manner

so as to make it possible to verify that it fulfils the criteria of

secrecy and substantiality;’’ (Art. 1.1 i), an Industrial Secret, in

short.

the Proposal of an EU Directive on Trade Secrets,

under discussion since November 2013, with a

“provisional agreement” reached last December, but

not yet adopted

In Portugal, Know How is indirectly protect as its

disclosure amounts to a special sort of Unfair

Competition, by Art. 318 of CPI, specifying Art.

10bis of CUP 4


“Pursuant to the preceding article, an illicit act is defined in particular

as the disclosure, acquisition or use of the business secrets of a

competitor without its consent, provided that said information: a)

Is secret in the sense that it is not common knowledge or easily

accessible, in its totality or in the exact configuration and connection

of its constitutive elements, for persons in the circles that normally deal

with the type of information in question; b) Has commercial value

based on the fact that it is secret; c) Has been the object of

considerable diligences on the part of the person with legal

control over it, with a view to keeping it secret.”

this is about to change, into a less stringent definition: “1) 'trade

secret' means information which meets all of the following

requirements: (a) is secret in the sense that it is not, as a body or in

the precise configuration and assembly of its components, generally

known among or readily accessible to persons within the circles

that normally deal with the kind of information in question; (b)

has commercial value because it is secret; (c) has been subject to

reasonable steps under the circumstances, by the person lawfully in

control of the information, to keep it secret.” (Article 2 of the

Proposal of Diretive)

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(b) Inventions (and Patents)

Specific Souces, I - International:

the Patent Cooperation Treaty (PCT), of 1970

provides an unified procedure for filing patent

applications (PCT applications)

the Patent Law Treaty (PLT), of 2000

harmonizes the formal requirements for patent

applications

Specific Souces, II - European:

the European Patent Convention (EPC), of 1973

autonomous from the European Union

provides a legal framework for the granting of

European patents, through a single, harmonized

procedure before the European Patent Office - EPO

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the Regulation (EU) No 1257/2012 of the European

Parliament and of the Council of 17 December 2012

implementing enhanced cooperation in the area

of the creation of unitary patent protection

an enhanced cooperation between most Member-

States of the EU, including Portugal but not Croatia,

Italy, Poland or Spain, and a non-mandatory alternative

the EPO is fully in charge of granting a patent with an

unitary effect in all participating Member-States

also created an Unified Patent Court

Specific European Institutions:

the European Patent Organisation (EPO)

autonomous from the European Union

implements the European Patent Convention

includes the European Patent Office and the Boards

of Appeal

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In Portugal, the Object, according to CPI (Art. 51):

“1. New inventions involving inventive activity can

be patented if they have an industrial use, even if

they apply to a product consisting of or containing

biological material or to a process that produces,

treats or uses biological material.

2. Patents may be obtained for any inventions, be

they products or processes, in all fields of

technology, provided that these inventions comply

with the previous paragraph.

3. New processes for obtaining known products,

substances or compositions may also be patented.”

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Limitations on Object (Art. 52 of CPI):

“1. The following are exceptions to the previous article: a)

Discoveries, scientific theories and mathematical

methods; b) Materials or substances already existing in

nature and nuclear materials; c) Aesthetic creations; d)

Schemes, rules or methods for intellectual acts, playing

a game or doing business and computer programs, as

such, with no contributions; e) Presentations of

information;”

Limitations on Patent (Art. 53 of CPI):

“1. Inventions whose commercial exploitation is

against the law or contrary to public policy, public

health or morality are not patentable and their

exploitation may not be considered as such due to the

simple fact that it is forbidden by law or regulations.”

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Patentability Requirements (Art. 54 of CPI):

“1. An invention is considered new if it does not form part

of the state of the art.

2. An invention shall be considered as involving an

inventive step if, having regard to the state of the art, it is

not obvious to a person skilled in the art.

3. An invention shall be considered as susceptible of

industrial application if it can be made or used in any kind

of industry or in agriculture.”

Rules on the Right to Patent:

“The right to patent shall belong to the inventor or his

successors in title.” (Art. 58.1 of CPI)

“If an invention was made during the performance of an

employment contract in which inventive activity is provided

for, the right to the patent belongs to the company.” (Art.

59.1 of CPI)

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Duration (Art. 99 of CPI):

“The duration of a patent is 20 years from date of

application.”

Rights Conferred by a Patent (Art. 100 of CPI):

“1. A patent confers the exclusive right to exploit

the invention anywhere in Portuguese territory.

2. A patent also confers upon its holder the right to

prevent others from manufacturing, offering,

storing, commercializing or using a patented

product or importing or possessing it for any of

the aforementioned purposes without his consent.”

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Also Biotechnology Patents:

the Budapest Treaty on the International Recognition

of the Deposit of Microorganisms for the Purposes of

Patent Procedure, of 1977

the Directive 98/44/EC of the European Parliament

and of the Council of 6 July 1998 on the legal

protection of biotechnological inventions

in Portugal, according to CPI (Art. 51):

“1. New inventions involving inventive activity can be

patented if they have an industrial use, even if they

apply to a product consisting of or containing biological

material or to a process that produces, treats or uses

biological material.”

under a special regulation by Articles 54, 63, 97 n. 2

and 4 & 109 n. 6

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(c) Utility Models

Are protected under National Laws, in many

Countries, including Portugal

also protects inovations, but of a lesser degree

less stringent requirements

for a shorter duration

In Portugal, Object (Art. 117 of CPI)

“1. New inventions involving an inventive step can be

protected as utility models, if they have an industrial

application.

2. The aim of utility models is to protect inventions by

means of a simpler, speedier administrative procedure

than that for patents.

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3. An invention that abides by the conditions established

in paragraph 1 can be protected by a utility model or

patent, as the applicant chooses.

4. The same invention may be simultaneously or

successively the subject of a patent and utility model

application.”

Grant Requirements (Art. 120 of CPI):

“2. An invention shall be considered as involving an

inventive step, if it meets one of the following

requirements: a) If it is not obvious to a person skilled in

the art; b) If it offers a practical or technical advantage

for the manufacture or use of the product or process in

question.”


“1. The duration of a utility model shall be six years from

date of application.”

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(d) Designs or Models


The Hague Agreement Concerning the

International Deposit of Industrial Designs, of

1925


Directive 98/71/EC of the European Parliament and

of the Council of 13 October 1998 on the legal

protection of designs

Council Regulation (EC) No 6/2002 of 12 December

2001 on Community designs

Specific European Institutions:

the Office for the Harmonazation of the Internal

Market (Trade Marks and Designs)

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In Portugal, as a Definition of a Design or Model (Art.

173 of CPI), we have “A design or model represents the

appearance of a product in whole or in part by virtue

of such characteristics as lines, contours, colours,

forms, textures or materials used in then product

itself and its ornamentation.”

Definition of Product (Art. 174 of CPI):

“1. A product is any industrial or crafted article,

including, inter alia, the components for assembling a

complex product, packaging, presentation elements,

graphic signs and typographic characters, but excluding

computer programs.

2. A complex product is any product composed of

multiple components that can be removed from it for the

purpose of stripping it, and replaced in it for the purpose of

reassembling it.”

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Requirements for Grant (Art. 176 of CPI):

“1. New designs or models that are distinctive in

character shall have legal protection.

2. Designs or models that are not entirely new but involve

novel combinations of known elements or a different

layout of elements already used in such a way as to

endow their products with a distinctive character shall

also have legal protection. […]

6. The following are not protected by registration: a) The

visible characteristics of a product resulting

exclusively from its technical function; b) The

characteristics of the appearance of a product that

must necessarily be reproduced in their exact form and

dimensions so that the product into which the industrial

model or design is incorporated, or in which it is applied, be

it mechanically connected to another product or inserted

into, around or against the other product, so that both can

perform their function.” 17


Novelty (Art. 177 of CPI):

“1. A design or model shall be new if, before the

application for registration or priority claim, no identical

design or model has been disclosed to the public in

Portugal or abroad.

2. Designs or models are considered identical if their

specific characteristics differ only in insignificant

details.”

Distintictive Character (Art. 178 of CPI):

“1. A design or model is considered to be distinctive if the

overall impression that it gives to an informed user

differs from the overall impression caused to that user

by any model or design published prior to the date of the

registration application or priority claim.

2. Appreciation of distinctive character shall take into

account the degree of freedom afforded to the creator

to create the design or model.”

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Relationship with Copyright (Art. 200 of CPI):

“Any registered design or model also enjoys the

protection conferred by legislation on copyright, as of

the date on which the design or model was created or

defined in any form.”


“1. The duration of registration shall be five years as of the

date of application and it can be renewed for equal periods

up to a limit of 25 years.”

Rights Conferred by Registration (Art. 203 of

CPI):

“1. Registration of a design or model confers on its holder

the exclusive right to use it and prohibit its use by third

parties without his consent.”

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(e) Topography of Semiconductor Products


the Treaty on Intellectual Property in Respect of

Integrated Circuits (IPIC), of 1989 - TRIPS


Council Directive 87/54/EEC of 16 December 1986

on the legal protection of topographies of

semiconductor products

In Portugal, is regulated by the CPI, from Art. 153

also by Art. 8.2 of Law No. 109/2009, of 15

September, approves the Law on Cybercrime

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In Portugal:

as a Definition of Semiconductor Product (Art. 153 of

CPI), we have “A semiconductor product is the final or

intermediate form of any product meeting all the

following criteria:

a) It consists of a body of material including a layer

of semiconducting material;

b) It has one or more layers composed of

conducting, insulating or semiconducting

materials and they are arranged in accordance

with a predetermined three-dimensional pattern;

c) It is intended to perform an electronic function,

exclusively or in conjunction with other functions.”

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Besides, “The topography of a semiconductor

product is a set of related fixed or encoded

images that represent the three-dimensional

layout of the layers making up the product, in

which each image shows the layout or part of the

layout of a surface of the same product in any

stage of its manufacture.” (Art. 154 of CPI)

Applicable Rules (Art. 159 of CPI):

“The provisions on patents are applicable to

topographies of semiconductor products in as far

as they do not go against the nature of this private

right.”

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“The duration of a registration is 10 years from the

date of application or the date on which the

topography was first exploited in any location, if

earlier”.

Rights Conferred by Registration (Art. 162 of

CPI):

“1. Registration of a topography entitles its holder

to exclusive use throughout Portuguese territory,

producing, manufacturing, selling or exploiting

the topography or objects in which it is used, with

the obligation to do so effectively and in keeping

with market needs.”.

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(f) Plant Variety Rights

Specific Souces and Institutions, I - International:

the International Convention for the Protection of New

Varieties of Plants, of 1961

the International Union for the Protection of New

Varieties of Plants (UPOV)

Specific Souces and Institutions, II - European:

Council Regulation (EC) No 2100/94 of 27 July 1994

on Community plant variety rights

the Community Plant Variety Office (CPVO) products

In Portugal, this subject is regulated by Decree-Law

No. 213/90, of 28 June 1990,

implemented by the Direção-Geral da Agricultura e

Desenvolvimento Rural

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3. Distinctive Signs

Symbols intended to identify Business and its

products, in order to take advantage of the

inherent goodwill, earned by experience of

through advertising, meaning (a) Trade Names

(and logos), (b) Trade Marks, (c) Domain Names

and (d) Geographical Indications, including

Designations of Origin

even more sintetically, being possible...

(a) Trade Names (and logos)

Identify a Business and/or its premisses

Mentioned by CUP (Art. 8) - TRIPS

Protected as a Logotype by CPI (From Art. 304-A) 25


(b) Trade Marks

Identify the Products or the Services of a

Business


The Madrid Agreement Concerning the

International Registration of Marks, of 1891

The Trade Mark Treaty, of 1994

Specific Souces and Institutions, II - European:

Directive 2008/95/EC of the the European Parliament

and the Council of 22 October 2008 to approximate

the laws of the Member States relating to trade

marks

Council Regulation (EC) No. 207/2009, of 26

February 2009, on the Community trade mark

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The Office for the Harmonazation of the Internal

Market (Trade Marks and Designs)

In Portugal, are regulated by the Code of

Industrial Property, from Art. 222

(c) Domain Names

identify an Internet Protocol adress with an

autonomous administration, according to a

Domain Name System

currently ruled by ICANN – Internet Corporation of

Assigned Names and Numbers, on behalf of the

FCC - Federal Communications Commission

The ccTLD .pt is, currently, administrated by

Associação DNS.pt

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(d) Geographical Indications

Identify goods which reputation, or even which

quality, depend on a specific place of production


The Lisbon Agreement for the Protection of

Appellations of Origin and Their International

Registration, of 1958


Regulation (EU) No 1151/2012 of the European

Parliament and the of the Council of 21 November

2012 on quality schemes for agricultural products and

foodstuffs

In Portugal, both Appellations of Origin and

Geographical Indications are regulated by CPI, from

Art. 305

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4. Unfair Competition

Besides exclusive rights, Business Ethics is

mandatory also by Industrial Property Law. even

more sintetically, being possible...

Firstly regulated by CUP (Art. 10bis) – TRIPS:

“2. Any act of competition contrary to honest

practices in industrial or commercial matters

constitutes an act of unfair competition.”


Directive 2005/29/EC of the European Parliament

and of the Council of 11 May 2005 concerning unfair

business-to-consumer commercial practices in

the internal market (‘Unfair Commercial Practices

Directive’)

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In Portugal, Unfair Competition is regulated by

CPI (Art. 317):

“1. Unfair competition is defined as all acts of

competition that contradict the rules and honest

practices in any branch of economic activity, in

particular: a) Acts that may create confusion as to

the company, establishment, products or services of

competitors, regardless of the means employed; b)

False statements made in carrying out an economic

activity with the aim of discrediting competitors; c)

Unauthorized claims or references made with the aim

of deriving benefit from the credit or reputation of

another person’s name, establishment or trademark;

…”

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“d) False indications as to one’s own credit or

reputation relating to the capital or financial situation

of the company or establishment, to the nature and

scope of its activities and business or to the quality or

quantity of its clientele; e) False descriptions or

indications as to the nature, quality or utility of

the products or services, as well as false

information on the origin, locality, region or

territory of a factory, workshop, premises or

establishment, regardless of the mode adopted; and

f) Suppression, concealment or alteration, by the

seller or any other intermediary, of the appellation of

origin or geographic indication of the products or

the registered trademark of the producer or

manufacturer on products for sale whose packaging

has not been altered in any way.”

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now, also relevant Decree-Law No. 57/2008, of 26

March, laying down the legal rules applicable to

unfair business-to-consumer commercial

practices that occur before, during or after a

commercial transaction for a product or service

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