+86 21 658 939 33 support@translegal.com.cn

Often known by the abbreviation “IP”, is an umbrella term referring to creations of the mind or intellect, e.g., inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. Intellectual property is sometimes divided into two categories: (i) industrial property, which includes inventions (patents), trade marks, industrial designs, and geographic indications of source; and (ii) copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. However, in some jurisdictions, the phrases industrial property and intellectual property are used interchangeably with no real distinction in meaning. The three main, traditional areas of IP are patents, trade marks and copyrights.
{{image}}

Patent law

The purpose of patent law is to foster and encourage innovation by granting inventors exclusive rights protecting their original inventions. The issuance of a patent is essentially a bargain between an inventor and a state. The inventor must disclose the details of the invention in exchange for enforceable rights to exclude or prevent others from using, making or selling this invention. Such exclusive rights, however, exist only for a limited time. After that period expires (generally twenty years), the invention enters the public domain and is then free to be used and exploited by anyone.

Patent protection is available for nearly all manufactured items. The patent laws usually require that, in order for an invention to be patentable, it must be novel, useful, and non-obvious. An invention is considered novel if it merely has not been previously invented by another; at least some aspect of the invention must be new. An invention is deemed useful if it provides some form of benefit or is capable of industrial application. Whether a patent is obvious is the most subjective element of any patent application. The mere fact that a patent reflects a simple idea does not mean that it is obvious; the issue is whether it would have been obvious to somebody with ordinary skill in the area related to the invention at the time the invention was made. European patent law requires that a patent involves an inventive step which is the equivalent of the non-obvious requirement.

Prior to filing a patent application, inventors often obtain a patentability opinion from a patent attorney regarding whether an invention satisfies the substantive conditions of patentability. In such cases, a search of existing patents and “prior art” is made to help determine the viability of the application. In order to obtain a patent, an applicant must provide a written description of the invention in sufficient detail for a person “skilled in the art” to make and use the invention. This written description is known as the patent specification, which is often accompanied by drawings or diagrams demonstrating how an invention is made and how it operates. In addition, the applicant must provide the patent office with one or more claims that distinctly set forth what the applicant regards as the invention. A claim is a description designed to notify the public of precisely what the patent owner can exclude others from making, using, or selling.

Trade mark law

A trade mark (US: “trademark ”) is anything that is used to identify and differentiate the goods of one owner from the goods of others. Trade marks consist of any word, name, symbol, logo, sound or other device which acts as a source identifier. These are often referred to as brand names. A service mark is virtually identical to a trade mark, except that it is used to identify services rather than goods. Although this distinction exists between trade marks and service marks, the term “trade mark” is an umbrella term that usually refers to both. Trade marks are exceedingly important business tools which enable a company to establish a product’s reputation without the fear of a subsequent company diminishing this reputation or reaping profits by confusing or deceiving consumers.

A mark is eligible for registration if it has distinctive character. A mark is either (a) inherently distinctive or (b) not-inherently distinctive. Inherently distinctive marks are fanciful, arbitrary or suggestive in relation to the goods or services with which the mark is used. Fanciful marks are comprised of entirely invented or coined terms or signs. Such marks are prima facie registrable. For example, KODAK had no meaning in any context before it was adopted as a trade mark. Fanciful marks are terms not previously found in any dictionary. These represent the strongest of all trade marks because there is no reason whatsoever for competitors to use the term. Arbitrary marks are usually common words used in a meaningless context (e.g., CAMEL for cigarettes or APPLE for computers). Such marks consist of words or images which have some dictionary meaning but which are used in connection with products or services unrelated to that meaning. Suggestive marks suggest a quality or a characteristic of the products or services in relation to which they are used, but require imagination on the part of the consumer to identify the characteristic (e.g., GREYHOUND for bus services). Suggestive marks invoke the consumer’s perceptive imagination.

Marks that are not-inherently distinctive are afforded less protection. Descriptive marks are comprised of terms describing a quality or characteristic of the product or service used in connection with the mark (e.g., WIPE AWAY for a cleaning product). Marks that are primarily merely surnames (e.g., JOHNSON´S for any good or service) and geographically descriptive (CALIFORNIA SPIRITS for alcoholic beverages) are also deemed not-inherently distinctive. Due to their lack of distinctiveness or uniqueness, marks that are not-inherently distinctive are not registrable unless it can be shown that they have acquired distinctiveness (also called “secondary meaning” in the United States) through extensive use in the marketplace. Acquired distinctiveness can be established by presenting evidence showing that, in the minds of the public, the mark has become so associated with one particular owner or source that it is no longer merely descriptive.

If a mark merely consists of a generic term (e.g., “water” or “bread”), it is incapable of becoming a trade mark under any circumstance. Such terms must be free to be used by competitors in order to describe their products and services.

Trade mark infringement occurs when one uses a mark that is likely to confuse consumers due to its similarity to another mark. This “likelihood of confusion” standard is also used by some national trade mark offices to deny a particular registration.

Copyright law

Copyright refers to a set of exclusive rights granted to authors of original works created in a fixed, tangible form of expression. In this regard, copyright protects only the expression of ideas, not the ideas themselves. Copyright may subsist in a wide range of artistic forms including, inter alia, books, movies, sound recordings, musical compositions, photographs, radio and TV broadcasts, paintings, drawings, poems, plays, sculptures. A copyright owner has the exclusive right to reproduce the copyrighted work, prepare derivative works and to copy, perform and display the work.

Upon creation of the work, the copyright immediately becomes the property of the author. Copyright is secured automatically when a work is created. A work is considered “created” when it is fixed in a tangible medium of expression, such as the first time it is written or recorded. Neither publication nor registration in any Copyright Office is required in order to obtain a copyright. In order to qualify for copyright, a work must be an original creation. This requirement means only that the work must have been independently created and not copied. In fact, two works could conceivably be identical and nevertheless copyrightable provided they were created independently.

A copyright lasts for a specified period of time, depending on the jurisdiction. Currently, in most countries, the term of copyright protection endures for the author’s life plus an additional 70 years after the author’s death. For “works made for hire,” or works created within the scope of employment, the duration of copyright is generally 95 years from publication or 120 years from creation, whichever is shorter. After the expiration of these prescribed time periods, the works enter the public domain and can be used, copied and exploited freely by anyone.

Subject to certain exceptions, any unauthorized use of a copyrighted work is a copyright infringement. In order to be found liable for infringement, the alleged infringer must have had access to the copyrighted work and copied such work. Also, the alleged infringer´s resulting work must be “substantially similar” to the copyrighted work. Certain acts, however, are minimal enough that they do not interfere with the copyright holder´s exclusive rights and therefore do not rise to the level of infringement. The concept of “fair use,” or exceptions or exemptions from acts otherwise prohibited under copyright law, recognizes that certain types of use of copyright-protected works do not require the copyright holder’s authorization. Fair use is primarily designed to allow the use of the copyright-protected work for commentary, parody, news reporting, research and educational purposes.
Law in Practice

Intellectual property law in practice

Lawyers working with intellectual property law have a wide variety of duties depending on their specialty. Lawyers working in all three areas (trade mark, patent and copyright) often assist in litigation involving intellectual property, primarily infringement actions. IP lawyers also are requested to draft and enforce license agreements and assignments of IP rights. Such lawyers also file applications with national IP offices to attempt to obtain registrations for their clients. While a trade mark or copyright application takes only a few hours, or even minutes, a patent application usually takes months to prepare (due to its technical nature ). For this reason, most jurisdictions require patent attorneys to have scientific or technical backgrounds. In order to become a licensed patent attorney, most jurisdictions require an advanced degree in such areas and often require attorneys to pass an additional exam to qualify.