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International Patents: General Rules
Paris Convention (over 100 countries)
“National treatment” assures all patent holders in a
country the same treatment whether they are
foreign or domestic patent holders.
This does NOT extend rights of patents in one
country to another country. Patents must be filed
in each country separately.
Priority of filing in every country considered to be
same as initial patent filing; 12 month limitation.
Does not require same application process.
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International Patents: PCT
Patent Cooperation Treaty (1970 / 1975)
Goal is to save time and money for governments
and patent applicants by streamlining international
patent application processes
Allows filing “international patent” with countries
for which patent is applied selected from list.
International central repository receives
application and distributes information.
International patent search saves time for each country
Looks to see if technology is new and non-obvious
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International Patents: GATT / WTO
Uruguay round of GATT (1986) reached
agreement on intellectual property (TRIPS)
Trade-Related Aspects of Intellectual Property
Rights (some similarities to Paris Convention)
Most favored nations rights – no special deals.
Universal minimum standards for laws
Can not exclude specific technologies
Can not show bias towards any locations of invention
Must provide protections for all patent holders in country
At least 20 year protections for patent holders
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International Issues and Differences
in Intellectual Property Law
Four types of laws to consider
US law
UK / EC laws
HK laws
Rest of World
Four areas of IP laws to be addressed
Copyright
Patent
Trademark
Other laws and means of protecting innovation
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Patent International Issues
Patent laws increasingly similar worldwide
Treaties bringing patent life to same length
Treaties under WTO requiring similar treatments
However, registration of patent still required
in every country, unlike with copyrights
Registration process different in each country
Costs of registration and process of registration
not same in each country, and may not be the
same for citizens versus non-citizens of country
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UK / EU Patent Law Differences
UK and EC patent law formally prohibits:
Patent of computer software
Patent of business process or methods
Both are allowed as patents in USA
However, differences are less than they seem
Some patents in UK and EC have been granted
for software as “part of” a “technical innovation”
Some patents for business process innovations
were granted which include “technical innovation”
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Short Grace Period for Prior Use
Patenting an invention in any country starts
the clock as a legal publication that creates
prior usage unless patented within short time
Must patent in every country where you want
patent within one year of first patent being filed
Some countries apply six months test
Some countries have zero tolerance for
publication or patent in other countries prior to
application
Simultaneous applications recommended
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When Patents Don’t Work
Software – often can not qualify for patent
Generally protected by a different type of IP Law
Copyright, Trade Secret, Trademark
Semiconductors – why not patent protection?
How long does it take to get a patent?
What is required to get patent issued?
Small Businesses – can you afford to patent?
Cost of getting patent
Cost of ENFORCING PATENT
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Copyright International Issues
Laws for copyright are very similar worldwide
Some differences in what is allowed “fair use”
Some differences in penalties for violation
Some differences in criminal code application
HK Law versus USA laws
Criminal act to sell ANY pirated goods in HK, but
not as easy to be subject to criminal law in USA
Criminal act to USE any pirated software in any
form of business in Hong Kong (for firm and user)
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International Trademark Issues
The only international Trademark laws that
exist are EU laws related to EU trademarks
Similar in some ways to US federal trademarks
Requirements for trademark registration are
not the same from country to country
Protections under trademark differ as well
Overlap with copyright laws, which are
internationally recognized (to protect brand)
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Other Laws Worth Considering
Personal Privacy Laws
Why might these laws affect innovation?
Contract laws (especially for eCommerce)
eCommerce Registration and Trademarks
When is Trademark on internet in commerce?
UK requires direct efforts to market to UK
consumers, but US does not have this
requirement
Trade Secret, Moral Rights, Design Rights
Passing Off: Reputation, Goodwill, Custom
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Personal Privacy Laws
USA has relatively liberal privacy laws
Medical information protected
Video rental history protected
Not much else is protected under US law
Hong Kong has one of the most strict
personal privacy laws in the world
Can not publish list of church members without
getting permission in writing of all members
EU Privacy laws stronger than US laws
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Reverse Engineering Under
Patents versus Trade Secrets
Patents allows protection of the
implementation of a system or machine.
Publication of ideas and processes required
Competition from overlapping product not allowed
Trade secret protects ideas which are not
disclosed in public from being “stolen”
Reverse engineering allowed
Introduction of competing product or process
allowed, if acquired or developed by legal means
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Trade Secret Reverse
Engineering
Trade Secret does not protect companies
from having their products broken apart and
reverse engineered to replicate their design
Patents or copyrights can provide some
protection against reverse engineering, as
can the semiconductor chip act, but there is
no protection at all under trade secrets
The only protection trade secret provides is
against using information disclosed illegally
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What is Reverse Engineering?
Discovery of how a product is made by
working backward to find the method by
which it was developed or could be replicated
Product must be acquired by legal means for
reverse engineering to be considered legal
De-compilation of computer program is legal
Patents may be able to stop reverse
engineering, but copyright and trade secret
will not stop reverse engineering. Why?
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Why Permit Reverse
Engineering?
Most copyrighted works reveal their contents
to anyone seeking to read or view them,
which makes reverse engineering irrelevant
Software is a special case which could
involve using copyright plus trade secret via
use of compiled code if decompilation is
prohibited to grant protections stronger than
patent or copyright to functions never
expected to be protected in current IP laws
worldwide.
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Reverse Engineering Software
Decompilation of source code into assembly
language, and then into human readable
code is expensive and time consuming
Imperfect results likely
Requires making one or more intermediate copies,
which might be violation of copyright laws
Alternative approach to reverse engineering
is to view code as a black box and watch
what comes out in response to a variety of
inputs
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Encryption and Reverse Engineering
One of the best ways to legally stop reverse
engineering of software is to combine
encryption of data and processes with
compiled code distribution of programs.
Make simple and fast encryption / decryption
part of the compiled program code itself.
DMCA protections dramatically increase
protection of compiled code.
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Microcode and Reverse Engineering
Reverse engineering of chips, including code
embedded in chips as microcode, is permitted
under trade secret and copyright law.
Patents provide greater protection, but it is
rare for computer chips to be patented.
Why are patents rare for electronic circuit chips?
Can you encrypt the microcode on a chip?
How could this be done, and why would you want
to do this anyway?