Any Agro-Food company that invests in
some form of creative or intellectual output, whether it be in R&D,
manufacturing, product formulation, packaging, marketing, media, or sales and
distribution needs to be aware of Intellectual Property Rights.
Intellectual
property pertains to any original creation of the human intellect such as
artistic, literary, technical, or scientific creation. Intellectual property
rights (IPR) refer to the legal rights given to the inventor or creator to
protect his/her invention or creation for a certain period of time.
It is very well
settled that IP play a vital role in the modern economy. It has also been
conclusively established that the intellectual labor associated with the
innovation should be given due importance so that public good emanates from it.
There has been a quantum jump in R&D costs with an associated jump in
investments required for putting a new technology in the market place. The
stakes of the developers of technology have become very high, and hence, the
need to protect the knowledge from unlawful use has become expedient, at least
for a period, that would ensure recovery of the R&D and other associated
costs and adequate profits for continuous investments in R&D.
IPR is a strong
tool, to protect investments, time, money, effort invested by the
inventor/creator of an IP, since it grants the inventor/creator an exclusive
right for a certain period of time for use of his invention/creation. Thus IPR,
in this way aids the economic development of a country by promoting healthy
competition and encouraging industrial development and economic growth.
As noted by the
World Trade Organization (WTO), intellectual property rights are customarily
divided into two main areas:
1. Copyright and
rights related to copyright
The rights of
authors of literary and artistic works (such as books and other writings,
musical compositions, paintings, sculpture, computer programs and films) are
protected by copyright, for a minimum period of 50 years after the death of the
author.
Also protected
through copyright and related (sometimes referred to as “neighboring”) rights
are the rights of performers (e.g. actors, singers and musicians), producers of
phonograms (sound recordings) and broadcasting organizations. The main social
purpose of protection of copyright and related rights is to encourage and
reward creative work.
2. Industrial
property
Industrial
property can usefully be divided into two main areas:
One area can be
characterized as the protection of distinctive signs, in particular trademarks
and geographical indications.
The protection
of such distinctive signs aims to stimulate and ensure fair competition and to
protect consumers, by enabling them to make informed choices between various
goods and services. The protection may last indefinitely, provided the sign in
question continues to be distinctive.
Other types of
industrial property are protected primarily to stimulate innovation, design and
the creation of technology. In this category fall inventions (protected by
patents), industrial designs and trade secrets.
The social
purpose is to provide protection for the results of investment in the
development of new technology, thus giving the incentive and means to finance
research and development activities.
A functioning
intellectual property regime should also facilitate the transfer of technology
in the form of foreign direct investment, joint ventures and licensing.
Each form of
IPRs has different requirements and grants different rights. Before the whole range
of possibilities offered by modern technologies in the agricultural sector was
available, inventions based on living organisms were considered natural
phenomena, i.e. discoveries, and were thus not patentable. However, developments
in modern biotechnology require substantial levels of investment in research
and development, and its processes and products can be easily copied. The IPRs
system provides a way of ensuring the financial revenues required to make the
technology profitable.
In what follows
we take a look at the various IP rights that are available to agro-food
companies.
Patents
In a legal
terminology a patent is an exclusive right granted for an invention, which can
be a product or a process that provides, in general, a new way of doing
something, or offers a new technical solution to a problem. A patent provides protection for the
invention to the owner of the patent. The owner can be an individual, or a
group of people or organization. In order to be patentable, the invention must
fulfill certain conditions as specified in the Patent Act.
Patent
protection means that the invention cannot be commercially made, used,
distributed or sold without the patent owner's consent. These patent rights are
usually enforced in a court, which, in most systems, holds the authority to
stop patent infringement.
A patent owner
has the right to decide who may – or may not – use the patented invention for
the period in which the invention is protected. Under TRIPS agreement of WTO, the
protection is granted for a limited period, generally 20 years. The patent
owner may give permission to, or license other parties to use the invention on
mutually agreed terms. The owner may also sell the right to the invention to
someone else, who will then become the new owner of the patent. Conversely, a
court can also declare a patent invalid upon a successful challenge by a third
party.
Once a patent
expires, the protection ends, and an invention enters the public domain. The
owner then no longer holds exclusive rights to the invention. It becomes
available to commercial exploitation by others.
All patent
owners are under obligation to publicly disclose information on their invention
in order to enrich the total body of technical knowledge in the world. Such an
ever-increasing body of public knowledge promotes further creativity and
innovation. In this way, patents provide not only protection for the owner but
valuable information and inspiration for future generations of researchers and
inventors.
The agro-food industry
is currently experiencing rapid technical advances, which are set to continue
with the growing interest in, for example, functional foods; and, in view of
the increasing crossover that exists with pharmaceutical chemistry and
biotechnology, patents are now highly relevant. A patent may provide protection
for a novel microorganism, plant or animal that has been genetically modified
to produce a particular food ingredient or additive.
It may also
protect a new synthetic process, a molecule produced by that process, or the
use of that molecule to produce a particular effect, for example, a flavor,
aroma, texture or stability. It is also possible to patent a new and improved
composition, or a method or apparatus for making or testing a composition. With
shelf life, nutrition and health becoming increasingly important to today’s
consumer, machines, techniques and processes for testing or monitoring food
quality may all provide patentable subject matter.
Robots or other
machines used for performing tasks, such as packaging of food products, and different
types of packaging are also candidates for patent protection.
A patent is
commonly described as a “monopoly right”, meaning that it gives its owner the
right to prevent everyone, other than people authorized by the owner, to use, produce,
sell, import or keep anything that falls under the protection of the patent.
A patent is an
item of personal property and, like any other property; it can be bought, sold
or licensed. Patents have a lifespan of 20 years from the filing date of the application
(subject to the payment of annual fees), and have a territorial effect.
To simplify the
patenting in many countries WIPO administers Patent Cooperation Treaty. The
WIPO-administered Patent Cooperation Treaty (PCT) provides for the filing of a
single international patent application, which has the same effect as national
applications filed in the designated countries. An applicant seeking protection
may file one application and request protection in as many signatory states as
needed.
Any resident or
national of a Contracting State of the PCT may file an international
application under the PCT. A single international patent application has the
same effect as national applications filed in each designated Contracting State
of the PCT. However, under the PCT system, in order to obtain patent protection
in the designated States, a patent shall be granted by each designated State to
the claimed invention contained in the international application.
Procedural and substantive
requirements for the grant of patents as well as the amount of fees required
are different from one country/region to the other. It is therefore recommended
to consult any practicing techno-legal professional who is specialized in
intellectual property or the intellectual property offices of those countries
in which one is are interested to get protection.
Searchable
Internet patent databases have significantly facilitated the access to patent
information. However, given the complexity of patent documents and the
technical and legal skills required, it is advisable to contact a professional
patent attorney. Please note Patent is a techno-legal exercise and not just
legal drafting.
Trademarks
A trademark is
basically a sign that is used to distinguish the goods or services offered by
one undertaking from those offered by another. A trademark is a word, a logo, a
number, a letter, a slogan, a sound, a color, or sometimes even a smell, which
identifies the source of goods and/or services with which the trademark is
used.
Its purpose is
to protect the name of the product rather than the invention or idea behind the
product. Trademarks can be owned by individuals or companies and should be
registered with a governmental agency, which is usually referred to as the
Trademarks Office.
Generally
speaking, trademarks should be distinctive and should neither be generic nor
merely descriptive of the goods or services they represent. For example, the
word "vegetable" cannot be registered as a trademark of a supermarket,
since it is certainly descriptive of items, which a supermarket sells. In
addition, it cannot be registered as a trademark for carrots, since it is a
generic term for carrots. On the other hand, the word "vegetable"
might well serve as a trademark for bicycles since it has little or nothing to
do with bicycles.
Trademarks should preferably not be
geographical or primarily a surname. Thus, "Paris" cannot serve as a
trademark for perfume. In many countries, trademarks, which comprise mere
letters and/or numbers or are surnames, are considered to be indistinct.
In some
instances, trademark registration can still be obtained for trademarks that are
merely (i) descriptive, (ii) a surname, (iii) geographic or (iv) indistinct.
Trademarks, also
known as brand names, are part of everyday life. Trademarks usually ensure a
consistent level of quality - be it good or bad. A mark helps you to use your
experience either to return to a desirable product or service or to avoid an
undesirable one.
The symbol should be used to represent a registered
trademark, whereas the symbol “TM” should be used where the trademark is not
registered.
Trademarks can
be important marketing tools for your business and, unlike patents; a trademark
can last forever. They also have territorial rights. As with patents, international
treaties and laws are in place to make it easier for a trademark owner to
register a trademark in several countries simultaneously. By filing a trademark
application via the Madrid System, an international trademark can be obtained
in those member states.
A trademark is
registered only in connection with specific categories of goods and services.
This has the interesting consequence that it can enable different companies to
use very similar or identical trade names or marks, provided that the
respective goods or services of each company are sufficiently different to
avoid confusion. But, a valid trademark gives its owner the legal right to prevent
others from using a similar mark in connection with the same or similar goods.
In other words, it allows the trademark owner to prevent competitors from using
marks that imitate or could be confused with an existing trademark.
Geographical Indications
The term
“geographical indication” has been chosen by WIPO to describe the subject
matter of a new treaty for the international protection of names and symbols,
which indicate a certain geographical origin of a given product.
A geographical
indication tells consumers that a product is produced in a certain place and
has certain characteristics that are due to that place of production. All
producers who make their products in the place designated by a geographical
indication and whose products share typical qualities may use it.
It embraces all
existing means of protection of such names and symbols, regardless of whether
they indicate the qualities of a given product due to its geographical origin
(such as appellations of origin), or they merely indicate the place of origin
of a product.
This definition
also covers symbols, because geographical indications are not only constituted
by names, such as the name of a town, a region or a country, but may also
consist of symbols. Such symbols may be capable of indicating the origin of
goods without literally naming its place of origin.
The commercial
significance of this relatively new term can be assessed by the fact that
Geographical Indications are integral part of national, regional and international
trade negotiations.
When considering
geographical indications as a special kind of distinctive sign used in commerce
and thus as a particular category of intellectual property, it is important to
distinguish them from trademarks: a geographical indication identifies a
geographical area in which one or several enterprises are located which produce
the kind of product for which the geographical indication is used. Thus, there
is no “owner” of a geographical indication in the sense that one person or
enterprise can exclude other persons or enterprises from the use of a geographical
indication, but each and every enterprise which is located in the area to which
the geographical indication refers to has the right to use the said indication
for the products originating in the said area, but possibly subject to
compliance with certain quality requirements as prescribed.
It might well be
that a geographical name is regarded in one country as a geographical
indication and is protected accordingly, whereas it is considered to be a
generic or semi-generic term in another country. Notorious examples for such
diverging treatment of geographical names are the French names “Champagne” and
“Chablis” which, in France, are only allowed to be used for products
originating from a certain geographical area and produced according to certain
quality standards, whereas, in the United States of America for example, they
are regarded as being semi-generic names, and therefore may be also used for
wines not originating from the particular area of production in France.
Geographical indications are protected in accordance with national laws and
under a wide range of concepts, such as laws against unfair competition,
consumer protection laws, laws for the protection of certification marks or
special laws for the protection of geographical indications or appellations of
origin.
A number of
treaties administered by the WIPO provide for the protection of geographical
indications, most notably being the Paris Convention for the Protection of
Industrial Property of 1883, and the Lisbon Agreement for the Protection of
Appellations of Origin and Their International Registration. In addition,
Articles 22 to 24 of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) deal with the international protection of geographical
indications within the framework of the WTO.
Trade Secrets
Trade secrets
encompass manufacturing, industrial secrets and/or commercial secrets. The
unauthorized use of such information by persons other than the holder is
regarded as an unfair practice and a violation of the trade secret. Depending
on the legal system, the protection of trade secrets forms part of the general
concept of protection against unfair competition or is based on specific
provisions or case law on the protection of confidential information.
The subject matter
of trade secrets is usually defined in general and broad terms and includes
recipes, formulations, sales methods, distribution methods, consumer profiles,
advertising strategies, lists of suppliers and clients, and manufacturing
processes. While a final determination of what information constitutes a trade
secret will depend on the circumstances of each individual case, clearly unfair
practices in respect of secret information include industrial or commercial
espionage, breach of contract and breach of confidence.
Contrary to
patents, trade secrets are protected without registration. For these reasons,
the protection of trade secrets may appear to be particularly attractive for
food industry. There are, however, some conditions for the information to be considered
a trade secret. WTO agreement on TRIPS also recognizes the concept of trade
secret. Compliance with such conditions may turn out to be more difficult and
costly than it would appear at first glance. While these conditions vary from
country to country, some general standards exist which are referred to in Art.
39 of the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS Agreement):
The information
must be secret (i.e. it is not generally known among, or readily accessible to,
circles that normally deal with the kind of information in question).
It must have
commercial value because it is a secret.
It must have
been subject to reasonable steps by the rightful holder of the information to
keep it secret (e.g., through confidentiality agreements).
Trade secrets
are widely used by food industry including multinationals. In fact, many food
companies rely almost exclusively on trade secrets for the protection of their
IP (although in many cases they may not even be aware that trade secrets are
legally protected). It is important, therefore, to make sure that food
enterprises take all necessary measures to protect their trade secrets
effectively.
Trade secret
protection does not require compliance with formalities such as disclosure of
the information to a Government authority.
There are,
however, some concrete disadvantages of protecting confidential business
information as a trade secret, especially when the information meets the
criteria for patentability:
If the secret is
embodied in an innovative product, others may be able to inspect it, dissect and
analyze it and discover the secret and be thereafter entitled to use it. Trade
secret protection of an invention in fact does not provide the exclusive right
to exclude third parties from making commercial use of it. Only patents and
utility models can provide this type of protection.
The level of
protection granted to trade secrets varies significantly from country to
country, but is generally considered weak, particularly when compared with the
protection granted by a patent.
Registered Designs
Registered
designs protect the physical appearance of an article (or part of an article),
such as its shape, configuration, pattern or ornamentation, including features
of lines, contours, colors, texture or material. To register, a design must be
“new”, which means it must not be the same as any known design; and have
“individual character”, which essentially means that it gives a different
overall impression to any previously known design.
It is possible
to register a design in connection with almost any “article”, whether it is
mass-produced in industry, or a unique handicraft object. In the agro-food
industry, a registered design may be used to cover a new type of packaging or
the features of an electrical apparatus.
Since a
registered design can cover the whole or part of an object, a complicated item
may be protected by many different designs. Interestingly, a registered design
may even protect the appearance of a food item, for example, the shape of a
teabag.
Registered
designs provide similar rights to those of patents, in the sense that they can
be enforced to stop unauthorized persons from using, making, selling or
importing a product having an infringing design, for a maximum term of 25 years.
As with other forms of IP rights, it is possible to obtain registered design
rights internationally.
Copyright
Copyright
relates to the expression of an idea, rather than to the idea itself. Thus, it
applies to original literary, artistic or graphical works, including software
programs. A copyrighted work cannot be copied, without the consent of the
owner, for the term of the copyright, which, in most cases, is the life of the
author (or creator) plus 70 years. The best way to indicate that a work is protected
under copyright law is to display the symbol along with the name of the
copyright owner and the year of the work.
Copyright is
particularly relevant to the design, imagery and labeling of packaging, and
also applies to two-dimensional design drawings, such as plans, for example,
for new packaging or machinery.
Conclusion
In the global
marketplace, agro-food companies need to look to protect their IP abroad, as
well as in their country of origin. Most IP systems work internationally and so
it is generally straightforward to secure protection in key foreign markets. IP
is becoming rapidly more important in agro-food industry and you ignore it at
your peril.
It is generally
believed that in the field of agriculture, intellectual property regime will spur
activity among the scientists and farmers to facilitate new knowledge that will
lead to innovations. Such innovations will save countries from relying on
“climate fed” agriculture and pave way to intelligently driven agricultural
practices. Releasing agro-based population will expand other areas of the
economy such as the tourism industry, the retail industry and other
technologically oriented industries. This can also make countries to
effectively join the value added biotech industry and save their populations
from malnutrition and hunger. Moreover it will also attract more investment and
exchange of goods from other countries.
Ago-food companies
can benefit from the wealth of technological and commercial information
available in patent and trademark databases to learn about recent technological
breakthroughs, identify future partners, and find out about the innovative
activities of competitors.
Finally, managing
IP effectively and using it to devise business strategies is an increasingly
critical task for entrepreneurs worldwide.