PROTECTING AND REGISTERING
YOUR INTELLECTUAL PROPERTY
(MANAGING YOUR IP IN THE
RESEARCH PROCESS)
BY
SARAH NORKOR ANKU (MRS)
LEGAL PRACTITIONER
REGISTRAR GENERAL’S DEPARTMENT
PROTECTING AND REGISTERING YOUR
INTELLECTUAL PROPERTY
• Two main areas of IP
• Industrial Property and Copyrights & Related
Rights
• Main difference between the two areas of IP:
registration
• Industrial Property Laws are administered by
the Registrar General’s Department
• Copyright and related rights are administered
by the Copyright Office
IP AND THE RESEARCHER
(THE STORY OF TSRUKPE TOTA)
• People in Tsrukpe Tota use certain herbs to
instantly cure malaria
• Researcher seeks to find a solution to malaria
problem
• With prior informed consent and a benefit
sharing agreement with the Tsrukpe Tota
community the researcher receives information
and samples of the miracle plant
• Researcher isolates active ingredient or develops
a method of extracting the active ingredients:
Confidentiality / trade secret and Patent
STORY CONT’
• Researcher writes a paper or publishes a book on
his findings: copyright
• Researcher sets up a spin-off company to
produce the drug and names the drug: trademark
• Commissions an artist to design a container for
the drug: industrial design
• Commissions an artist to design labels and
leaflets for the drug: copyright and trademarks
• Researcher decides to license or assign his rights:
IP Commercialization
STORY CONT’
• Researcher conducts further research to
develop high yielding and pest resistant
variety of the miracle plant: plant variety
protection
• If the plant is trans-boundary but the plants
grown in Tsrukpe Tota have certain unique
characteristics: Geographical Indications as a
marketing tool
BEGINNING RESEARCH
• Identify a problem in any field of technology and
propose a solution
• Seek funding (what are the IP conditions attached
to the funding)
• Who will participate in finding the solution to the
problem and what are their IP rights?
• Collaboration; student/lecturer; lecturer/lecturer
researcher/industry
• KNUST IP Policy: who owns the IP Rights and how
are benefits shared?
Beginning Research Cont’
• Conduct searches using free patent search
engines
• Google patent search
• Espacenet
• Patentscope
PROTECTION – THREE STAGES
• Beginning: define boundaries / ownership
• Beginning throughout process: confidentiality /
trade secret
• Throughout process to end: choosing other IP
tools
• Patents / Utility Model Certificate
• Trade marks / Service marks / Collective marks
• Industrial Designs
• Copyright
• Geographical Indications
PATENTS
• Titles granted by Governments/States for the
protection of inventions
• An invention is a solution to a problem in any field of
technology
• Five criteria for protection:
• New (not anticipated by prior art)
• Inventive Step (non-obvious to a person skilled in the
art)
• Industrially applicable (useful)
• Disclosure
• Not excluded from patentability
PATENT PROSECTION
• Patent drafting: Background; description; claims;
drawings (where applicable); abstract
• Claims: defines the scope of protection
• Remember a patent document is a legal
document not a scientific paper
• Three routes of protection
• 1. National route
• 2. Regional route (ARIPO)
• 3. International route (PCT / Paris Convention)
NATIONAL ROUTE
• Fill and submit patent request form (Form No.2)
together with patent application documents at the
Registrar General’s Department
• Registrar of patents conducts formality and substantive
examinations
• NB: In Ghana substantive examinations are outsourced
• Successful applications are published and granted
• Duration of protection is 20years from date of
application
• Annuities must be paid yearly to maintain application
and grant
REGIONAL ROUTE (ARIPO)
• Begin with National application and request for
an ARIPO Patent, designating ARIPO Member
States
• Apply directly to ARIPO
• ARIPO conducts both formality and substantive
examinations
• Designated States conducts further substantive
examinations to ensure conformity with national
laws
• ARIPO publishes and grants patents for and on
behalf of designated Member States
International Route
• Paris Convention:
• Applicants can apply directly to Member
States of the Paris Convention within one year
after first application (requires legal
representation in all the States; fees paid in
local currencies; patent documents in foreign
language).
INTERNATIONAL ROUTE CONT’
• Patent Cooperation Treaty (PCT):
• National application followed by PCT application within
one year
• Apply directly to International Bureau of WIPO
• Thirty (30) months period to apply to all designated
states of interest
• One application; one PCT recognized language; search
and preliminary examination report and written
opinion
• Patents are granted by individual designated Member
States
UTILITY MODEL CERTIFICATE
• UM prosecution is similar to patent
prosecution
• Criteria for protection is less stringent,
involving two main steps, namely; novelty and
industrial applicability
• Duration of protection in Ghana is 7years
COPYRIGHT
• Automatic protection so long as it is original
• Registration provides prima facie evidence of
ownership
• To register at the copyright office, submit a filled
application form, three copies of the work and
pay prescribed registration fee
• Duration of protection: life time of the author
plus seventy (70) years after his death
• Author can assign economic rights not moral
rights
TRADEMARKS
• Trademarks distinguishes the goods or services of one
enterprise from the goods and services of other
enterprises
• Interactive mark; logotype; combination of interactive
mark and logotype
• Three routes of protection:
• National (Registrar General’s Department)
• Regional (ARIPO through the Banjul Protocol, however,
this route is currently not available to Ghanaians)
• International (International Bureau of WIPO through
the Madrid System)
TRADEMARKS REGISTRATION
National Route
• Ensure mark conforms with section 5 of the
Trademarks Act (Act 664)
• Conduct a search at the trademark registry: US$60
• Submit application form together with 2 copies of
trademarks: US$150
• Application processing may take a year
• Publication and Opposition period
• Certificate: US$100
• Protection is in perpetuity subject to renewal every
10years
TRADEMARK REGISTRATION
International Route
• National application followed by Madrid
application within 6 months
• Direct application to International Bureau
designating Member States of Interest
• Member States approves and registers
trademarks
INDUSTRIAL DESIGNS REGISTRATION
•
•
•
•
•
Three routes of protection:
National (Registrar General’s Department)
Regional (ARIPO)
International (International Bureau of WIPO)
Currently the only route available to
Ghanaians is the Regional route
INDUSTRIAL DESIGN REGISTRATION
CONT’
• Application may be submitted to the Registrar
General’s Department or directly to ARIPO
• Fill ARIPO Form 28, attach four copies of designs
(with description where necessary), a statement
of authorship, application fee of US$50 and
US$10 for each Designated State
• You must designate at least 1 Member State
• Application process may take a year
• Duration of protection in Ghana is 5years,
renewable two consecutive five years period
IP Management Services
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•
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Value assessment / IP audit
Cost management
Priority rights
Exhibitions
Protection routes
Value assessment / IP audit
Why IPR Audit
• The due diligence process associated with
mergers & acquisitions, joint ventures, portfolio
assessments, spin-offs and strategic alliances now
include an increased level of scrutiny of IPR
portfolio. (value of IPR)
• Identifying the origins and value of intellectual
property and assuring compliance with
obligations relating to licensed assets has become
a due diligence checklist item. (Chain of
ownership of patents, trademarks, copyrights)
Value assessment / IP audit
Why IPR Audit Cont’
• IP audit is a systematic review of the IP
owned, used or acquired by a
business/institution so as to assess and manage
risk, remedy problems and implement best
practices in IP asset management.
• It involves undertaking a comprehensive
review of an institution’s IP assets, related
agreements, relevant policies and compliance
procedures
Value assessment / IP audit
Why IPR Audit Cont’
How the IP assets are being used or not used.
Whether the IP assets used by it are owned by the
institution or by others.
Whether these IP assets are infringing the rights of others
or others are infringing on these rights, and determine, in
the light of all this information.
What actions are required to be taken with respect to
each IP asset, or a portfolio of such assets, to serve the
relevant business goals of the institution/company.
Cost management
• Cost of maintenance, enforcement,
exploitation of IP Rights; namely
• Patents
• Trademarks
• Copyright
• Industrial Designs
Priority rights & Exhibitions
• Patents: 1year
• Trademarks: 6months
• Industrial Designs: 6months
COMMERCIALIZATION
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•
•
•
Donation
Licensing
Assignment
All licenses and assignments must be
registered at the Registrar General’s
Department (notice to third parties)
• Spin-Off companies
• Role of Technology Transfer Units