Issues in Asset Protection

Issues in Asset Protection
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 MNC’s are spending high in terms of
time & money for R&D….Innovations
 MNC’s operates at different nations with
different rules & regulations, which
creates uncertainity….
 Poor IPR may lead to financial losses to
firm
 WTO ensure Asset protection through
TRIPS
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Introduction
 Brief history of Intellectual Property Rights (IPRs)
 Intellectual property rights are the rights given to
persons over the creations of their minds. They usually
give the creator an exclusive right over the use of
his/her creation for a certain period of time
 Linkage between Intellectual Property (IP) and trade:
broadly through following two premises:
(I) Widespread piracy, counterfeiting and infringements
of intellectual property rights constituted a barrier to
trade
(II) IPRs transfer agreements
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Objectives
 To reduce distortions and impediments to international
trade and take into account the need to promote competent
as well as adequate protection of IPRs
 To ensure that measures and procedures to enforce IPRs do
not themselves become barriers to legitimate trade
 To reduce tensions by reaching strengthened commitment
to resolve disputes on trade-related IP issues through
multilateral procedures
 To establish a mutually supportive relationship between
the World Trade Organisation (WTO) and World
Intellectual Property Organisation (WIPO)
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Basic principles: national treatment, MFN and
balanced protection
Non-discrimination features prominently in TRIPS, similar

to GATT and GATS,by following principles of:
 National Treatment (Article 3): Equal treatment for foreign
and domestic individuals and companies
 Most Favoured Nation (Article 4): Equal treatment for
nationals of all trading partners in the WTO
 TRIPS Agreement has additional important principle:
Intellectual property protection should contribute to
technical innovation and transfer of technology
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Relationship between TRIPS agreement
(Agreement on Trade-Related Aspects of
Intellectual Property Rights) and other IP treaties
 Respects the standards and complies with the multilateral

conventions administered by WIPO
 Incorporation of explicit provision of various conventions
in WIPO into TRIPS agreement allows WTO panels to
interpret them
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Acquisition and maintenance of IP
 Member countries must create office and operate

governmental offices for the acquisition and maintenance
of IPRs
 Procedures for granting and registration of IPR must be
reasonable
 Member country's law must provide for opposition,
revocation and cancellation
 Member country may adopt measures to protect public
health and the public interest
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Types of IPRs:
Copyright and related rights
 Copyright grants exclusive rights to the creator of
original scientific, artistic and literary works
 ‘Original’ is key in defining a work that qualifies for
copyright protection
 The term of protection
 Countries to confine limitations or exceptions to
exclusive rights to certain special cases which do not
conflict with exploitation of the work and not prejudicial
to right holder
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Trademark
 Trademark protects any word, name, logo or device used
to identify, distinguish or indicate the source of goods or
services
 Includes trade dress (the total image and overall
appearance of a product) and product configuration (the
shape if non functional)
 The purpose is to safeguard the integrity of products and
to prevent product confusion and unfair competition
 The term of protection (initial registration and each
renewal of registration of a trademark shall be for a term
of no less than 7 years)
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Geographical Indications (GIs)
 The WTO Agreement on Trade-Related
Aspects of Intellectual Property Rights
("TRIPS") defines "geographical
indications" as indications that identify a
good as "originating in the territory of a
Member, or a region or locality in that
territory, where a given quality, reputation or
other characteristic of the good is ...
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 In addition, the qualities, characteristics or
reputation of the product should be
essentially due to the place of origin. ...
Geographical indications are typically
used for agricultural products, foodstuffs,
wine and spirit drinks, handicrafts, and
industrial products
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 There are also products which have two
geographical indications, one for the
name and another for the logo.
 Darjeeling tea became the first GI tagged

product in India, in 2004-05, since then by
May 2017, 295 had been added to the list
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Industrial designs
 An industrial design right is an intellectual property
right that protects the visual design of objects that are not
purely utilitarian. ... An industrial design can be a two- or
three-dimensional pattern used to produce a product,
industrial commodity or handicraft.
 Design patents do NOT protect an idea or an invention,

but rather only protect ornamental design of exactly what
is pictured. This means that they are weaker than a utility
patent, but because they are VERY easy to get you should
consider them to round out your portfolio.
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Industrial designs
 Protects the artistic aspect (namely, texture, pattern,
shape) of an object instead of the technical features
 The term of protection (amount to at least 10 years)
 ‘Amount to’ allow the term to be divided into two
periods (for example two periods of five years)
 The third party is prohibited from making, selling or
importing articles bearing a design which is a copy of
the protected design, when such acts are undertaken
for commercial purposes
 Exception: optional mandate, if introduced then such
exceptions do not unreasonably conflict with the
normal exploitation of protected industrial designs and
do not unreasonably prejudice the legitimate interests
of the owner of the protected design
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Patents
 The TRIPS Agreement requires Member countries to
make patents available for any inventions, whether
products or processes, in all fields of technology without
discrimination, subject to novelty, inventiveness and
industrial applicability
 Invention to be novel,useful and non-obvious
The agreement allows countries to exclude inventions
from patentability on following grounds:
 Inventions necessary ‘to protect ordre public or
morality; including to protect human, animal or plant
life or health or to avoid serious prejudice to the
environment…’
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Continued..
 Diagnostic, therapeutic and surgical methods for the
treatment of humans or animals
 Plants and animals other than micro-organisms and
essentially biological processes for the production of
plants or animals other than non-biological and
microbiological processes
 Limited Exceptions
 Compulsory Licensing
 The term of protection (for a period of 20 years counted
from the filing date)
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Layout-designs of integrated circuits and trade
secrets
 It refers to mask works (topographies) of the integrated
circuits, the stencils used to etch or encode an electrical
circuit on a semiconductor chip
 Protection conferred to “original” layout-
design/topographies
 Exclusive rights include the right of reproduction and
the right of importation, sale and other distribution for
commercial purposes
 The term of protection (ten years form the date of first
commercial exploitation)
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Protection of undisclosed information
 The protection must apply to information that is secret,
that has commercial value because it is secret and that has
been subject to reasonable steps to keep it secret
 Trade secrets consist of formulae, patterns, process or
compilation of information. (for example the formula for a
sports drink)
 In most countries, they are not subject to registration but
are protected through laws against unfair competition
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Exhaustion of IPR
Two main competing theories:

 Universal or international exhaustion theory: An IPR
holder’s right are exhausted on the first sale of the
protected product anywhere in the world
 Domestic or territorial exhaustion theory: The right
holder’s IP are not exhausted until after the first sale of the
product in the territory in which he holds the rights
 The resolution of exhaustion issues is left to national laws
and there are are no international or customary law norms
in this area
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Main feature of the agreement
 Standards: The agreement expresses minimum standards of
protection
(I) The subject matter to be protected
(II) The rights to be conferred and permissible exceptions
(III) The minimum period of protection
 Enforcement
(I) Provisions for domestic procedure and remedies for the
enforcement of the IPRs
(II) Includes general principle applicable to IPR enforcement
procedure apart from administrative, civil and criminal
procedure available for enforcement of rights of the right
holder
 Dispute settlement: The agreement further provides for the
settlement of disputes over IPR among the member states within the
parameters of dispute settlement procedure
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Institutional arrangements
 Council for Trade Related Aspects of Intellectual Property

Rights (TRIPS)
 Dispute Settlement Body (DSB)
 Current Negotiations in special sessions (SS)
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Public policy implications
 Benefits and costs of higher IP standards for developing
countries
 Protection of traditional knowledge and culture
 Biological diversity
 Health
 Food
 Investment and transfer of technology
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Provisions relating to developing countries
 Transitional arrangements
 Developed countries to provide
(I) Incentives for transfer of technology to Least
Developed Countries (LDCs)
(II) Technical assistance and financial support to
developing countries in preparing laws and
regulations on protection and enforcements of IPRs
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Conclusion
 Highly innovative agreement and remains the most

comprehensive international agreement on intellectual
property till date.
 Overall it has worked well, however, it needs to continue
to implement wide ranging provisions specially when it
touches significant public policy questions
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Issues in Asset Protection

Non-discrimination features prominently in TRIPS, similar

 Respects the standards and complies with the multilateral

 Member countries must create office and operate

 Darjeeling tea became the first GI tagged

 Design patents do NOT protect an idea or an invention,

Two main competing theories:

 Council for Trade Related Aspects of Intellectual Property

 Highly innovative agreement and remains the most

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