Key Intellectual Property Concepts: Trademarks and Copyright

Prepared by

Luljeta PLAKOLLI-KASUMI, LL.M1

For the Intellectual Property Rights for Kosovo’s IT Industry Workshop

March 9-11, 2010

Pristina, Kosovo

INTRODUCTION

Intellectual Property is regarded as an economic asset, but only if it is managed

effectively. An effective management of your company’s IP can benefit not only you
and your company, but also the society as well. Speaking in Kosovo context,
Intellectual Property has just recently emerged as a notion and its importance has not
been institutionally embarked upon to the satisfactory level.

We will elaborate more on the existing legal framework and institutional initiatives in
creating a sustainable IP system in Kosovo in minutes to come, but for the time being,
allow me to focus on basics of Intellectual Property, and what concepts you should
have in mind when developing your company’s IP.

Intellectual Property protects creations of mind. It protects innovation and creativity

employed in industry and business. Intellectual property plays an important role by
serving as a stimulus of economic growth, and enables creation of a secure
environment for a knowledge-based economy driven by competition and creativity.
Without a proper and effective IP portfolio, the private sector cannot survive. Creating
an effective IP portfolio can be costly however, especially for small businesses. In
addition to that there is no guarantee that your business will succeed and your
investment will pay-off. Yet, that is a risk that should be taken into account when
aiming high in business world.

Once you have created your IP, you have to protect it; this way you protect your
company against your competitors. In order to be able to protect your IP, you should
know what you need to protect, and be able to distinguish between different types of
IP rights that may be employed in your products or services. Some of IP rights are
protected by means of registration; some of them are protected through contracts,
licenses and confidentiality agreements. Therefore, it is crucial for you to know what
to do first with your IP rights.

1
LL.M. in International and Comparative Law/Intellectual Property Law, University of Pittsburgh
School of Law; Assistant Professor at the University of Pristina, Law Faculty.

1
INTELLECTUAL PROPERTY: What does it protect?

Intellectual Property is a term that encompasses Copyright, Trademarks, Patents,

Designs and other types of property that derive from the human intellect. Not all of
them protect same things. What can be protected by copyright cannot be protected by
trademark or patent and vice versa.

♦ Copyright- Protects literary and artistic works, poems, novels, music, films
and alike. International agreement known as TRIPS which stands for Trade-
Related Aspects of Intellectual Property Rights that came into force on 1995,
requires member countries to protect software within their national
legislations, whether in source or object codes. Consequently, some of the
countries provide protection for software under both, copyright and patent,
whereas some countries provide protection for software only under the
copyright. There is no such a requirement under the TRIPS as to the level of
protection that countries must afford to software, because TRIPS sets only
minimum standards for the protection of IPR;

♦ Trademarks: are signs that are used in business in order to distinguish the
origin of goods and services between different competitors. Letters, numbers,
words, phrases, sounds, in some countries even scent, shape, logo, picture,
packaging or any combination of these can be registered as a trademark.

♦ Patents: protect processes, inventions, and methods if they are new (novel),
involve an inventive step and are industrially applicable (Patent Law, Article
1).

Intellectual Property laws are territorial in nature. This means that apart from knowing
what you can do with your IP rights nationally, you must also be aware of the
differences between different IP regimes that exist throughout the world. If you for
instance develop a software in Kosovo and want to exploit that in the U.S., the first
thing you have to ask your legal advisors is what types of protection your software
can enjoy in these two continents. For instance, in the United States software can be
protected by both Copyright and Patent, whereas in Kosovo, as well as in other
European countries, you can claim only Copyright protection, but not Patent.

Intellectual Property laws around the globe are not unified, but they are harmonized
through international and regional conventions which set minimum standards and
requirements for contracting states for the protection of IP rights. Apart from the
international standards, there are also European standards that derive from the
European Union Law. The most important international conventions that apply to
Copyright are the Berne Convention and the WIPO Copyright Treaty. Trademark
laws are harmonized through international conventions such as the Paris Convention,
European Community Trademark, Madrid Protocol and the Madrid Agreement. The
most popular international and regional treaties in the field of patents are: Paris
Convention, European Patent Convention, Eurasian Patent Convention, Patent
Cooperation Treaty, African Regional Industrial Property Organization, and the
African Intellectual Property Organization. And at the top, there is a TRIPS
Agreement which provides for certain minimum standards for the protection of the

2
most important forms of intellectual property rights, and obliges countries to comply
with the standards set forth by the Berne Convention.

CREATING AN IP PORTFOLIO FOR YOUR COMPANY: Key considerations

When you create your company’s IP, do not look at it only as a tool for preventing
others of copying and using you ideas. Instead, look at your IP as something that you
can turn into a valuable asset. You don’t have to be rich to create an IP portfolio; all
you need to do is be creative, innovative and act with due diligence. There are four
most important steps you have to follow when creating an IP portfolio:

- Identify and record your company’s IP assets. This is known as an IP audit

which means that you have to create a list of all your IP i.e. trademarks,
inventions (pending patent or granted patent(s), copyright, trade-secrets,
know-how, domains, websites etc.). Once you have made your list, give it
a price by evaluating how much has your company invested in creating
every single IP and acquiring legal rights, and then see what’s the market
value for each Intellectual Property;
- Create policies for protecting your IP assets. You have to make sure that
you company’s trade secrets and ideas are not revealed to your competitors
before your have exploited them in the market first. This is best achieved
by setting up trade secret procedures and by using non-disclosure or
confidentiality agreements amongst the personnel;
- Protect your IP: if it’s an innovation, file for a patent but only if the cost of
patent application does not exceed the profit you can gain by that
innovation. If it’s a sign or domain name register it as a trademark. This
way you will distinguish your goods and services from the goods and
services of your competitors. If it includes a writing, artistic work,
manuals, software etc. claim copyright;
- Last but not the least, exploit your IP assets. If you own IP but you don’t
exploit it, or don’t exploit it properly, you will reap no rewards. The best
way to exploit your IP is to sell, license or create joint-ventures.

PROTECTING YOUR IP: Basic steps

If you have an idea for a concept, system or method you may want to file for a
Patent. However, before doing that you first have to keep it secret. Do not disclose it
to your competitors before you have applied or eventually granted with patent.
Certainly, in order to develop an idea into something useful you have to share it with
someone. Do this only if you have trade-secret and confidentiality agreements in
place. In order to qualify for patent protection, your invention should be novel. If you
disclose it before you file for a patent, it will not be considered as novel any longer
thus it will loose its eligibility for patent protection.

Ideas cannot be protected by copyright. Copyright does not protect ideas; it rather
protects the form in which an idea is expressed. Unlike with patents, the expression of
an idea does not have to be novel but it has to be an original work of authorship.
Software can be protected by copyright because it is regarded as a computer program
and computer programs are regarded as literally works which under the TRIPS
Agreement must enjoy copyright protection. Unlike with patents and trademarks, an

3
original work of authorship enjoys Copyright protection from the moment of its
creation. There are not formalities required for Copyright protection. However, it is
advisable that once you have created a copyrighted work, you register it with the
Copyright Office. In this way you can prove easier that you are the owner in case of
any conflict. In the United States, one cannot sue for copyright infringement unless
he/she has registered his/her copyright with the U.S. Copyright Office. Copyright lasts
during the life of the author and 70 years after the death of the author.

COMMERCIALIZING YOUR IP

RESOURCES

http://www.oecd.org/dataoecd/62/52/37031481.pdf

http://www.iptoolbox.gov.au

http://www.stepstoipr.com/