International Business Law - Chapter 9
International Business Law - Chapter 9
International Business Law - Chapter 9
Introduction
Intellectual Property: useful information or
knowledge
Artistic property
Artistic, literary and musical works
Industrial property
Inventions and trademarks
Right of performance
Right to communicate the work to the public by
any means whatsoever, including public recitation,
lyrical performance, public presentation, public
projection and telecommunication.
Note on subsidiary rights (Germany)
Must be original
Creative effort invested by author in raw materials that
gives them a new quality or character
Formalities
Berne Convention: subject to no formalities
Scope
Only within scope of territory granting it
Duration
50 years post mortem (some jurisdictions 70
years)
Design patent
Plant patents
Utility patents
(petty patents)
TRIPS
1) diagnostic/therapeutic/surgical methods 2) plants/animals
(except microorganisms) 3) essentially biological processes
for the production of plants/animals
Scope of Patents
Only valid in territory of the state granting it
Service mark
Mark used in the sale of advertising of services to identify the
services of one person and distinguish them from another
KFC (Yum Brands) trademark and service mark
Coca Cola tradename and trademark
Registration
Public notification of other potential users of ones
claim to the mark
Registration criteria
Not infringe on another mark
Be distinctive
Possessing a unique design that distinguishes a product
from other similar products
Registration Review
Publication
Time to oppose (30-90 days)
If no opposition, registration issued
Usage requirements
Many jurisdictions require usage of mark
Common rules
May not deny protection because it originates from
another state
Must protect trade names without registration
Must outlaw false labeling
Must take effective measures to prevent unfair
competition
License
Franchise
Distributorship
Chain-style distributorship
Manufacturing or processing plant
Licensing Regulations
Grants of patents, trademarks and copyright
create monopolies
Strictly controlled, often special laws for it
Limited to what is granted by
contract/license
Rule of Reason
Courts must consider the overall impact of the
particular agreement on competition in relevant
market
Weighing the pro-competitive verses the anticompetitiveness
Licensing Regulations
(Contd)
Grants of patents, trademarks and copyright
create monopolies
Strictly controlled, often special laws for it
Limited to what is granted by
contract/license
Rule of Reason
Courts must consider the overall impact of the
particular agreement on competition in relevant
market
Weighing the pro-competitive verses the anticompetitiveness
Licensing Regulations
(Contd)
Territorial Restrictions
Exhaustion of rights doctrine
Once a good made or sold under license is in
circulation, the licensor has no further right to control
its distribution (see earlier)
See Terrapin v Terranova, and Centrafarm v Sterling
Drug
Licensing Regulations
(Contd)
NB:
Primary purpose of a trademark is to
assure consumers of the place of origin
i.e. chocopie
Primary purpose of patent/copyright is
to reward creativity
Licensing Regulations
(Contd)
Export Restrictions
Restrict, entirely or partially, right to
export goods from territory where licensee
or production facilities are located
Most countries prohibit export
Some limit, to exports where:
Licensor owns IPRs and local laws allow
licensor to restrict imports
Licensing Regulations
(Contd)
Export Restrictions (contd)
Horizontal competition agreement
Division of industry on a global/regional
scale
US: per se violation of Sherman Act
Licensing Regulations
(Contd)
Cartels
Combination of independent business firms organized to
regulate the production, pricing and marketing of goods
by its members
Cross-licensing agreements
Patent pool
Multiple licensing agreement
Bottle neck principle: participants in an industry wide
patent pool must grant reasonable access to the pool to
any firm wishing to compete so that no firm will be
disadvantaged
See shared licensing in mobile phone technology, Apple,
Samsung
Licensing Regulations
(Contd)
Exclusive licensing
Restricts who may compete with the
license
Sole rights
Exclusive rights
Nonexclusive rights
Licensing Regulations
(Contd)
Sales and distribution arrangements
Several approaches
Prohibits any interference by the licensor in
the licensees distribution system
Prohibits only those provisions that give
licensor exclusive distribution rights
Prohibit exclusive sales arrangements that
tend to allocate or monopolize the market
Licensing Regulations
(Contd)
Price fixing
Requires licensee to sell products at a
price set by licensor
Most countries prohibit all forms of price
fixing
Licensing Regulations
(Contd)
Noncompetition clause
Forbidding a licensee from competing
with the licensor
Most countries prohibited
Some exceptional circumstances
Licensing Regulations
(Contd)
Challenges to validity
Provisions forbidding a licensee from
challenging the validity of a licensors
claim to a particular statutory right.
Tying clauses
Provision requiring a licensee to acquire
or use, apart from the technology wanted,
goods or personnel designated by licensor
Illegal in most countries
Licensing Regulations
(Contd)
Quantity Restrictions
Field of Use Restrictions
Licensing Regulations
(Contd)
Restrictions on research and
development
Quality controls
Licensing Regulations
(Contd)
Grant Back Provisions
Restrictions that apply after the
expiration of IPR
See exhibit 9-3, p. 511
Licensing Regulations
(Contd)
Package licensing
Licensing Regulations
(Contd)
Restrictions that apply after the
expiration of the licensing agreement
Noncompetition agreements must be
reasonable
1)
2)
3)
2) tier of countries
3) tier of countries
See p. 512
Compulsory Licenses
Patents
See p. 513
See case 9-2, AIDS drugs
Compulsory Licenses
(Contd)
Copyrights
Statutory copyright license
Compulsory copyright license