Intellectual Property

Prepared and presented by

Dr. Bal Bahadur Mukhia,
 1. Intellectual Property
Intellectual Property establishes property rights which allow creators to benefit from his/her
creations.
In modern industrial and commercial society property is not an exclusive relation of
dominance exercise by one person natural or corporate, over the thing, or even a number
of “quasi-things” but that is rather a collective description for complex of powers, functions,
expectation, liabilities, which may be apportioned between different parties to a legal
transaction.
The concept of IP was originally designed to cover ownership of copyright on literary, artistic
works and industrial property relating to patents for invention, trademarks.
A. Industrial Property covers the following:
Patents
Industrial Designs
Trademarks
Geographical indication
Integrated Circuits
Trade Secrets
Copyright and related rights
Protection against acts of unfair competition
Utility Model

.
 Intellectual Property rights -Like any property
rights-which allow the creator or owner of
intellectual property (patent, trademark, copyright
etc.) to benefit from his or her own work or
investment.
Art. 27(2) of UDHR sets forth the right to benefit
from the protection of moral and material interests
resulting from authorship of any scientific, literary
or artistic production.
 2. Categories of IP: IP refers to creations of the
mind and Intellectual Property is divided into two
categories:
•Industrial Property: inventions, trademarks,
service marks, industrial designs, geographical
indication, utility model, integrated circuits
•Copyright: literary works, artistic works, dramatic
works, cinematograph works, rights related to
copyright include those of performing artists in
their performances, producers of phonograms,
those of broadcaster in their radio and television
programs.
 Categories of protection: Paris Convention for the
Protection of Industrial Property 1883 (Amended 1971)
(a) Trademarks, (b) Service Marks, (c) Collective Marks:
A sign which serves to distinguish the geographical
origin, material, mode of manufacture, quality or other
common characteristics of goods and services of
different enterprises that simultaneously use the
collective marks under the control of the owner.
(d) Well-known marks, (e) Prevention of the use of the
signs as trademarks of the states emblems, official
hallmarks of international organizations, (f) Industrial
designs, (g) Trade names, (h) Unfair competition, (I)
Patents, (j) Geographical Indication.
 The Convention Establishing the World Intellectual
Property Organization, July 14, 1967
.
Article 2(viii) provided the term intellectual property which
include rights relating to: Literary, artistic and scientific works
Performers of performing artists, phonograms and
broadcasts
Inventions in all fields of human endeavor
Scientific discoveries, Industrial designs
Trademarks, service marks and commercial names and
designs
Protection against unfair competition and all other rights
resulting from intellectual activity in the industrial, scientific,
literary or artistic fields.
 Agreement on Trade Related Aspects of
Intellectual Property (TRIPS), (1994)

TRIPS Agreement is consisted of 1-67 Articles.

TRIPS Agreement provides
[Link] and Related rights
[Link] mark
3. Geographical indication
[Link] design
5. Patents
[Link] designs
[Link] of undisclosed information
[Link] of Competitive Practices in contractual licenses.
 1.1 Industrial Design
An industrial design is the ornamental or aesthetic aspect
of an article. The design may consist of three dimensional
features-shape or surface of an article or of two
dimensional features-patterns, lines, colour. Industrial
designs are applied to a wide variety of products of industry
or handicraft (technical and medical instruments, watches,
jewelry other luxury items, house wares, electrical
appliances, vehicles, architectural structures, textile.
Industrial designs make an article attractive and appealing,
owner of registered design is assured an exclusive right
against unauthorized copying or imitation.* In Nepal
Industrial design is registered for 5 yrs and renewal
twice for 5 yrs. Registered 73 (foreign: 54, Domestic:19
as of Dec.2010).
 The international classification under NICE
Agreement Concerning the Industrial Classification of
Goods and Services for the Purposes of Registration
of Marks, 1957 comprises the following:

i. A list of classes: this list comprises 34 classes of

goods and 8 classes of services
ii. An alphabetical list of goods and services giving the
class in which each product of service is classified.
A country is free to adopt the Nice classification as
the sole classification to be used for the purposes of
registration of marks to keep and existing system of
classification of goods and services and to use the
Nice Classification as supplementary classification
which will also be shown in the publication of marks.
 1.2 Geographical
Indication (GI)
A geographical indication is a
sign used goods that have a
specific geographical origin
and possess qualities. *
Geographical indications are
understood by consumers to
denote the origin and the
quality of products. Roquefor
 * Nepal could decide to obtain GI for Khukuris
from Bhojpur, Tea from Ilam, Dhaka from Palpa,
Apple brandy from Marpha.
Export Import restriction
* Some Nepal Act amending Act Relating to
Export Import and Intellectual Property , 2007
(2063 B.S) has replaced Section 3 by Section 3
stipulates that Nepal government prohibits fully or
quantitative restriction of export and import of
goods with the certain conditions or without
condition if deemed necessary to restrict by written
notice for the protection of intellectual property,
such as trademark, copyright, industrial design,
geographical indication, undisclosed information
1.3 Protection against Unfair
Competition
Consumer Protection Act
1997(2054): Section 6 prohibits the
creation of circumstances that would lead to any
adverse impact in the market or in demand and
supply or price of goods or services through
collusion, by fixing quotas, hoarding and by
creating artificial scarcity of goods and services.
 * Protection against unfair
competition has been
recognized in 1990 at the
Brussels Diplomatic Conference
for the Revision of the Paris
Convention. Art.10bis requires
its member countries to provide
protection of industrial property
against unfair competition.
Control of anti-competitive
Protection against Unfair Competition incorporated
in the Convention Establishing the WIPO, 1967. *
Unfair Competition Law 1850 (France), Law
Against Unfair Competition, 1909 (Germany), Law
against unfair competition, 1986 (Switzerland),
Unfair Competition Law, 1991 (Spain), Protection
of Unfair Market Practices, 1990 (Hungary),
*Market Protection and Competition Promotion Act
2006 (2063): Section 32 stipulates the government
make necessary provision if the intellectual
property owner misuse the IP against consumer
interest & hinder in the fair competition.
 Unfair competition law contd.
Monopolies and Restrictive Trade Practices Act
1969 (India), Unfair Competition Law (Japan),
Consumer Protection Act, 1987, Fair Trading Act
1973, Trade Description Act 1968, Unsolicited
Goods and Services Act 1975 (UK), Sherman Act-
declared that every contract, combination in the
form of trust or conspiracy in restraint of trade or
commerce to be illegal (USA) etc.
More laws in Nepal on Unfair
competition:
Essential Goods Control (Authority) Act 1961,
Black Marketing and Some other Social Offenses
or Punishment Act 2032, Foreign Investment and
Technology Transfer Act,1992, Medicine Act,2035,
Nepal Electricity Authority Act, 2041, Nepal
Standard (Certification) Act 2037, Food Act 2023,
Cheating (Thagiko Mahal), Fake Practices(Kkota
Chalan ko mahal), Patent, Design and Trademark
Act.
1.4 Undisclosed Information:
The first international agreement containing any
explicit provisions for protection of trade secrets
was the North American Free Trade Agreement
(NAFTA) signed by the United States on
December 8, 1993, and following the year the
TRIPS Agreement contained similar provision on
the protection of undisclosed information
incorporated in Article 39 of the TRIPS.
Four elements of trade secrets: (1) Information
release or disclose of which would be injurious to
the owner. (2) the information is
confidential/secret.
 (3) Previous headings must be
reasonable
(4) The information must be
judged in the light of the usages
and practices of the particular
industry, trade concerned.

1.5 Layout Designs

(topographies) of integrated
Protection to be granted to layout design or topography of
integrated circuits is relatively new. Components of electrical
circuitry have been used in the manufacture of electrical
equipment (i.e radios), large scale integration of multitude of
electrical functions. They are usually the result of big investment.
Requirements of TRIPS Agreement –Members must provide
protection for layout designs of integrated circuits.

1.6 Utility Models: Utility model is simply a name given to a title

of protection for certain inventions, such as inventions in the
mechanical field. Utility models are usually sought for technically
less complex inventions or inventions that have a short
commercial life.
1.7 Trademark:
A trademark is a distinctive sign used on or in connection
with the marketing of goods which distinguishes the goods
or services.
Mark includes a device, brand, heading, level, ticket, name,
signature, word, letter or numerical or any other
combination.
A trademark provides protection to the owner of the mark
by ensuring the exclusive right to use it to identify goods
and services or to authorize another to use it in return for
payment. The period of protection varies, but can be
renewed indefinitely on payment of corresponding fees.
Trademark protection is enforced by the courts.
 In Nepal trademarks are
registered for 7 years and
renewal every 7 years for
indefinite period. Total no. of
trademark registered 29630
(foreign origin 13248 & 16382
domestic origin) as of Dec 2010.
1.8 Patent: To be patentable,
the invention must be new,
Since 1967, WIPO has been the administrator of
the most major Unions and treaties with principal
exception of the TRIPS Agreement.
Nepal became the member of WIPO IN 1997
 1.8.1 Patent or copyright for Computer programmes
* Computer software has both a utilitarian element – it is
used for data processing and an expressive element, the
instruction used to carry out the operation utilitarian objects
have traditionally been the subject matter of patents, while
expressive elements fall under the domain copyright.
TRIPS Art.27(3)(b) states that members may exclude from
patentability: Plants and animals other than micro-
organisms, and essentially biological processes for the
production of plants or animals other than non-biological
and micro-biological process. Members shall provide for
protection of plant varieties either by patents or an effective
sui generis system or by any combination thereof. This
provides for patenting of life forms.
TRIPS Agreement requires membership in WTO.
TRIPS supplements the norms of the Berne Convention
and Rome Convention in many respects.
TRIPS confirms computer programs and compilation of
data are copyrightable works.
It articulates an international version of the idea/expression
dichotomy, states “Copyright Protection shall extend to
expression not to ideas, procedures, methods of operation
or mathematical concepts (Art.9(2).
It adds new exclusive rights not found in Berne Convention
and Rome Convention i.e right to authorize or prohibit
commercial rental to the public.
Art.14 deals with related rights. Neighbouring rights in the
terms of WIPO documents to designate related rights.
 TRIPS treats IPR as commercial or economic rights and in other
words it intends to ensure private material benefit to the creators of IP.
TRIPS adds new exclusive rights not found in Berne Convention
and Rome Convention and Rome Convention: the right to authorize
or to prohibit commercial rental to the public. The obligation to provide
a rental right is limited to three categories of works:
1. Computer programs. 2. Cinematographic works, 3. Phonograms
(Art.11, 14(4)
Article 63(2) of TRIPS Agreement requires Members to ratify the law
and regulations made effective by that member pertaining to the
subject matter of the Agreement to the Council for the TRIPS in order
to assist the Council in its review of the operation of the Agreement.
Laws and regulations should be notified promptly.
The Council of TRIPS shall monitor the operation of the Agreement and
particular member’s compliance with the obligation
Within TRIPS regime producers’ interests dominate consumer
interests..
TRIPS provisions do not adequately deal with the rights of Indigenous
Communities for TK.
Nepal became the member of WTO on April 23, 2004.
 2. Role of concerned
International Institutions for
protection and promotion of IP
2.1 WIPO’s mission:
1. Promote the protection of
intellectual property world wide.
2. Leverage intellectual
property as a tool for economic,
social and cultural development.
3. Promote creative and
intellectual activity.
Role of WIPO:
Empowers member states to
develop, protect, enforce,
manage and commercially
exploit IP as a tool for
economic, social and cultural
development
Raises the awareness with
regard to the development and
 Provides tools for the promotion of IP assets magnt. Including
guidelines and best practice models of managing intellectual
assets.
Encourages countries to develop IP culture and provide country
specific assistance in developing an IP system that meet
national policy and economic objectives.

WIPO has established an Arbitration Center for administration of

private international IP disputes.
WIPO Arbitration Consultative Council’s role is to provide advice
and make recommendations to the center.
WIPO’s Arbitration Consultative Commission is composed of
leading experts in the areas of IP and arbitration.
 2.2 TRIPS Council:
It is the body open to all Members of WTO that has
the responsibility for administration of the TRIPS
Agreement.
It is the body in which any Member can raise issue
relating to compliance by other parties. It is the
body to monitor compliance in a systematic
examination of each Member’s national
implementing legislation.
2.3 Organization for Economic
Cooperation and Development
(OECD): OECD consists of 29
member countries largely from
developed countries which
provides a forum for the
members to discuss economic,
social policy including issues
2.4 United Nations Educational, Scientific and
Cultural Organization (UNESCO): The principal
goal of UNESCO is to contribute to peace, security
in the world by promoting collaboration among
nations through education, science, culture and
communication.
2.5 International Confederation of Societies of
Authors and Composers (CISAC), June 1926.
2.6 European Patent Org. African IP Org, Erasian
Patent Org.