|
What is Intellectual Property? > Study Aids > The Jig-saw of Intellectual Property Protection on Information Technology
The Jig-saw of Intellectual Property Protection on Information Technology
International Symposium on Intellectual Property & Information Technology 1999
Held on 8 to 9 November 1999
Presentation by Peter KF CHEUNG
Deputy Director of Intellectual Property , Hong Kong SAR Government
1 Introduction
Information technology (IT) presents challenges for many of the established categories of law ranging from computer crimes to human rights. The purpose of this paper is to interface IT with intellectual property (IP) protection. It purports to elaborate how IP can be used constructively to add value on the IT front.
2 IT & IP interface
(a) IT In ancient
Greek times, technology means "the art of producing and using tools". IT includes various information storage technology, word processing by computers and software, telecommunications by satellite and cable, conducting materials such as optic fibres and micro-electronic chip technology. In short, it may mean all the know-hows by which information can be stored, processed and transmitted via computers and other telecommunication networks.
(b) IP
IP refers to the property right conferred by law to protect basically the creations of the intellect. It encourages fair competition. Thus, the result of research and development is a possible bundle of IP rights. "Possible" because some IP rights such as patents for inventions have to be formally acquired. "Bundle" because IP rights such as copyright in the content and trade marks as manifested in goods and services can co-exist. Different IP rights can arise from initial intellectual research activities through industrial development to product manufacturing (or service providing) and subsequent commercial marketing and distribution.
3 Proprietary information & undisclosed information
(a) Proprietary information
Proprietary information can be anything. What makes it proprietary is that such information is secret, has commercial value because it is secret and has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information to keep it secret.
(b) Undisclosed information
The person lawfully in control of the proprietary information can prevent others from using the secret information without his consent in a manner contrary to honest commercial practices. Legal protection of undisclosed information in the HKSAR is based on the common law.
4 Informational product & copyright work
(a) Informational product
Products such as academic articles, computer programs, original databases, sound recordings, films, television and cable programmes are informational in nature.
(b) Copyright work
In broad terms, once substantive information is expressed in a medium, a copyright work may subsist. No registration is required. Protection is automatic. The copyright owner has the exclusive right to use the work. The duration of protection is generally for his life and 50 years after. Thus, copyright is being used as a convenient legal vehicle to protect computer programs and original databases. Like academic articles, they are treated as copyright literary works. Independent and separate copyright subsist in sound recordings and film. In addition, the HKSAR copyright law protects radio and television broadcast (both terrestrial and satellite) and cable programmes.
5 Ecommerce & challenge to copyright
(a) Ecommerce
Informational products have taken a new form with the advent of IT. They can be dematerialised. An artistic work can now be represented in a string of zeros and ones. Ecommerce has transformed the traditional market place. There is a rapid growth of Ecommerce on all fronts. Many copyright loaded informational products can be reproduced, distributed and publicly performed through the Internet.
(b) Challenge to copyright
The challenge of IT on copyright is not unexpected. The twin World Intellectual Property Organisation Copyright Treaty 1996 and the Performances and Phonograms Treaty 1996 establish the basic standards of copyright protection on the Internet and other digital networks. They contain a general update of the legal principles underpinning international protection of the right of the copyright owners, the rights of performers and phonogram producers, in the cyberspace, more particularly on the Internet. They clarify that the traditional copyright principles apply in the digital environment. The HKSAR has voluntarily incorporated a greater part of the international legal norms into the Copyright Ordinance in 1997. There are express provisions governing Internet activities.
6 Inventive IT & patent
(a) Inventive IT
Any IT which provides a new way of doing something, or offers a new technical solution to a problem may be patented. For example, inventive conducting material or storage medium may be patentable.
(b) Patent
Patents protect technical innovations. The patent system encourages new technology by granting the inventor a patent, which gives him the exclusive right to exploit the invention for a 20-year term generally. In exchange, the inventor is required to make the invention public. Any IT product or process satisfying the patentability criteria may be patented. First, it has to be new ie it must never have been made public and not form part of the state of the art. Second, it involves an inventive step ie there must be a clearly-noticeable difference between the state of the art and the claimed invention, resulting in a new, significant and essential step to the invention. Third, it should be something that can be made industrially, ie it must take the practical form of a product (such as a new material) and its use must be distinct from purely intellectual or aesthetic activity. The HKSAR has its own independent patent system on registration of standard patents and short-term patents. The registration of standard patents (20-year term maximum) is based on patents granted in the State Intellectual Property Office of China, the United Kingdom Patent Office and the European Patent Office, in respect of patents under the European Patent Convention designating the United Kingdom. The registration of short-term patents (eight-year term maximum) can be made directly to the HKSAR Patents Registry.
7 Aesthetic IT product & design
(a) Aesthetic IT product
An IT product may have aesthetic aspect in its design even though it may not be inventive in the patent sense. The design may consist of three-dimensional features. The design that is attractive and appealing adds commercial value to the product. Design protection can be of great importance especially to small and medium-sized IT enterprises.
(b) Design
Design protects only the appearance of a product. Independently created industrial designs that are new or original are protected. In general, protectable designs should differ significantly from known designs or combinations of known design features. They should not be dictated by technical and functional considerations ie they must have aesthetic appeal. The design owner has the exclusive right to use the design. Designs are registrable rights in the HKSAR. The maximum period of protection is 25 years.
8 R &D on chip and layout-design of IC
(a) R & D on chip
The function of a chip is to complete an electronic circuit. It is a means which facilitates the functioning of computers, among others. Layout-designs (topographies) of integrated circuits (IC) embodied in semi-conductor chips have acquired great economic significance in IT industry. Research and development costs are always substantial, but reproduction is comparatively easy.
(b) Layout-design of IC
Original layout-designs of ICs are protected. The layout-designs must be the result of the creators' own intellectual effort and are not commonplace among other creators. Protection can be accorded via the extension of other existing forms of IP protection. The HKSAR enacted a special legislation to provide copyright-like protection to layout-designs (topographies) of ICs. The duration of protection is 10 years from the date of first commercial exploitation wherever in the world it occurs, or 15 years after the creation of the layout-design (topography).
9 IT reputation & trade mark/domain name
(a) IT reputation
An IT product or service provider may build up a certain reputation. This reputation may crystalise in a mark carried by the provider. The mark is integral to the reputation of the provider's business. The mark indicates the source of origin and guarantees certain quality.
(b) Trade mark/domain name
Any sign, or combination of signs, capable of distinguishing the product or services of one undertaking from those of other undertakings can be constituted as a trade mark. The trade mark proprietor has the exclusive right to use it to identify products and services. The period of protection can be renewed indefinitely. A domain name (non-distinctive elements discarded) may also constitute a trade mark. Whether identical marks belonging to different owners can co-exist in different spaces (territorial space and cyberspace) is still a live issue. It is doubtful whether a particular court would have jurisdiction to issue and to enforce any general prohibition order against "cybersquatting" (the use of an identical mark by a different person on the Internet). There is as yet no international treaty rule or customary practice.
10 Strategic IP management & enforcement
(a) Strategic IP management
Strategic IP management adds value by enhancing economic reward and moral recognition on innovative IT research and development. Such incentives further encourage innovation which assures the sustainable development of the quality of human life. Every IT business should have an IP department managing IP aspects such as policy, acquisition, licensing, enforcement and prevention.
(b) Enforcement
For IP infringement, civil judicial remedies are always available. Criminal sanctions are at least available in cases of wilful copyright piracy and trademark counterfeiting on a commercial scale. Administrative remedies might be available in the case of cybersquatting on the Internet.
11 The Jig-saw game
The world is getting larger with its expanding cyberspace. One world, one intellectual property system, is still at its infancy. Different countries or territories have different IP rules, practice and procedures. However, in the final analysis, the fundamentals of IP on IT as highlighted above still apply. The nature of IP protection is to ensure fair competition. It prohibits others from free-riding the intellectual efforts of the creators and their investors. The jig-saw of IP protection on IT is itself a creative mix and match game.
|
|