Variations In The Law And Practice Of Intellectual Property Law Across A Variety Of Jurisdictions

Although the practice of intellectual property is generally constant around the globe there are important differences between specific countries. An excellent guide highlighting those differences and commonalities was put together by Gordon Harris of Gowling WLG and published on the in-house lawyer website (see References for link). 20 major intellectual property jurisdictions are highlighted.  These are: China, France, Germany, Greece, India, Israel, Japan, Mexico, Philippines, Portugal, Singapore, South Africa, Spain, Sweden, Switzerland, Turkey, UAE, Ukraine, United Kingdom, and the United States.

For each of these jurisdictions answers from 32 categories of questions are provided. These 32 general areas were:

      1. What different types of intellectual property rights exist in this jurisdiction to protect?
      2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
      3. Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
      4. Which of the intellectual property rights described in questions 1-3 are registered?
      5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
      6. How long does the registration procedure usually take?
      7. Do third parties have the right to take part in or comment on the registration process?
      8. What (if any) steps can the applicant take if registration is refused?
      9. What are the current application and renewal fees for each of these intellectual property rights?
      10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
      11. What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3?
      12. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
      13. What are the requirements to license a third party to use each of the intellectual property rights described in questions 1-3?
      14. Is there a requirement to register a license of any of these intellectual property rights and, if so, what is the consequence of failing to register?
      15. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
      16. Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
      17. What other enforcement options are available in your jurisdiction for each of the intellectual property rights described in questions 1-3? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
      18. What is the length and cost of such procedures?
      19. Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
      20. How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?
      21. How is information and evidence submitted to the court scrutinized? For example, is cross-examination available and if so, how frequently is it employed in practice?
      22. What customs procedures are available to stop the import and/or export of infringing goods?
      23. Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
      24. What options are available to settle intellectual property disputes in your jurisdiction?
      25. What is required to establish infringement of each of the intellectual property rights described in questions 1-3? What evidence is necessary in this context?
      26. What defenses to infringement are available?
      27. Who can challenge each of the intellectual property rights described in questions 1-3?
      28. When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
      29. Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
      30. Are there any other methods to remove or limit the effect of any of the intellectual property rights described in questions 1-3, for example, declaratory relief or licenses of right?
      31. What remedies (both interim and final) are available for infringement of each of the intellectual property rights described in questions 1-3?
      32. What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?

As an example of the different types of intellectual property rights that exist in the China jurisdiction are:

  1. Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how); Invention patents, utility model patents, rights in confidential information and know-how as trade secrets.
  2. Brands (e.g. trademarks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional specialty guarantees); Trademarks and certain brand related actions pursuant to the Anti-Unfair Competition Act.
  3. Other creations, technology and proprietary interests (e.g. copyright, design patents, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how). Copyright, design patents, semiconductor topography rights, plant varieties , and rights in confidential information and know-how as trade secrets.

Thus for different jurisdictions the rights available, how they may be secured, how they may be maintained, and how they may be enforced vary.  When considering securing intellectual property rights in various jurisdictions it is strongly recommended that a local resource be consulted.