WIPO TRAINING OF TRAINERS PROGRAM ON EFFECTIVE INTELLECTUAL PROPERTY ASSET MANAGEMENT BY SMALL AND MEDIUM-SIZED ENTERPRISES (SMEs)

Transcription

1 E TRAINING OF TRAINERS PROGRAM WIPO TRAINING OF TRAINERS PROGRAM ON EFFECTIVE INTELLECTUAL PROPERTY ASSET MANAGEMENT BY SMALL AND MEDIUM-SIZED ENTERPRISES (SMEs) Organized by the World Intellectual Property Organization (WIPO) in cooperation with the Intellectual Property Rights Standing Committee, Ministry of Commerce and Industry Kingdom of Saudi Arabia Riyadh, September 16 to 18, 2014 FINAL ASSESSMENT TEST Prepared by the international bureau of WIPO

2 2 1. What do you understand by the term intellectual property rights and what is its relevance for SMEs? 2. IP rights can be owned by: Only natural persons Only legal persons 3. Your company invents a product comprising a new chemical formula (Tetrafluorethylene,) which when used on, or applied to kitchen utensils has the characteristics of preventing food in general and eggs in particular from sticking to the pan. Your company wants to ensure that it has the right to prevent others from using the formula. Which of the following IP right/s could be relevant and why? Trade secrets Copyright Patent Trademark Industrial design 4. Which of the following is not true? Trademarks act as an indicator or source and as an indicator of the quality of a product or service. Trademarks must be distinctive or have acquired distinctiveness in order to act as a trademark. A trademark can be registered with Trademark Offices if there are no previously applied for or registered trademarks existing at those Trademark Offices. In most countries, trademarks can be registered for 10 years and renewed 2 times for an additional 20 years.

3 3 5. Which of the following is not true? Trademark searches are important to assist in determining whether a proposed trademark conflicts with third party trademarks with earlier rights. When conducting a trademark search and a potentially conflicting third party trademark is identified, the following should be considered: The similarity of the pronunciation, meaning, and visual appearance of the respective trademarks. The similarity of the goods/services for the 2 respective trademarks. The channels of trade for the 2 respective goods/services. Trademark searches assist in making certain the proposed trademarks are inherently strong trademarks Trademark searches assist in understanding whether any third parties have somewhat similar trademarks that may limit the ability to commercialize a trademark. 6. Which of the following is not true? In some countries, sound, shapes, colors, touch and smell can act as trademarks. Merely descriptive word trademarks such as Blue for water that immediately describe a characteristic of a product or service are inherently strong trademarks that are easy to register and have a broad scope of protection. Generic words such as Water for water can never act as a trademark as this would allow parties to have a monopoly on words that belong in the public domain for everyone to be able use in commercial activities to indicate the generic nature of their products. Trademarks serve the valuable commercial purpose of allowing consumers to be able to distinguish between products manufactured and services provided by different companies. 7. To be registable trademark must Be distinctive Descriptive of the products on which mark is to be applied Not be any language other than Thai Language 8. A trademark functions as identifier of source of a product or service assurance of certain quality of products or service Differentiate the product of one manufacturer from the product of another manufacturer of the same type of products. As a means to increase the sales price of the product

4 4 9. John applied to register the trademark aeroplane for men s shorts on in Saudi Arabia. What products can David apply to register the aeroplane mark on? trousers pajamas sweets Coffee 10. Finest Products Company and Great Goods, Inc would like to add value to their products by conducting external examination of the products and indicating their checked quality when marketing. Finest and Great are not in business together and use their own marks. What might be relevant in this situation? a certification mark a collective mark a service mark 11. If a product has a particular quality or reputation because of the geographical region from which it originates, then all enterprises in that region may be able to prevent other enterprises, outside that geographical region, from free riding on that reputation/name by relying on a: An individual trademark A Geographical Indication A Collective Mark A Certification Mark Depending on the national legislation by one, some or all of the above. 12. Industrial design protects the following Features that appeal to the eye Features that are functional Colors of the product The material in which the product is made of 13. To obtain copyright in an original work in form of artwork used on a new package : It should be registered at the Department of Intellectual Property It does not require to be registered anywhere The work may be deposited at the Department of Intellectual Property

5 5 14. Rights to this original art work (see question 13) terminates in Saudi Arabia : 70 years after the death of the author of the art work 50 years after the death of the author of the art work 20 years from the creation of the art work 15. A is one of the employees of your company, whose responsibilities include writing training/ operations manuals for your business. a. When she retires or otherwise is no longer employed by your company, would A be entitled to reproduce or to give others the permission to make copies of the manuals she wrote for you during the normal course of her employment? b. While being employed by your company, A was allowed to and worked as a freelance journalist and a publicist. Realizing the value of A s extra talent, she is requested to write media release and an article for a local newspaper to promote the business of your company. You agree to remunerate her for this work. Later on, you want to reproduce the article in your new marketing booklet. Do you need her permission to do it? 16. A patentable invention must necessarily be: A technical solution to a problem May be any solution to any problem 17. Which of the following is not true? If a company has a trade secret for a soft drink and a third party reverse engineers the soft drink and discovers the soft drink formula through the reverse engineering process, the third party has violated the soft drinks owner s trade secret rights. Trade secrets protect important valuable commercial information that isn t known to the public. To be considered a trade secret, the owner of the trade secret must take affirmative steps to keep the information secret. Trade secret law acts as an incentive for businesses to innovate by safeguarding the substantial investment and time to develop competitively advantageous innovations.

6 6 18. Which of the following is not true? Trade secrets can last forever as long as the owner of the trade secrets successfully takes steps to keep the information secret. When an employee creates information for his employer that the employer has made a trade secret, the employee can use the information he created outside of work responsibilities or share the information with a new employer he joins after leaving the trade secret owner s company. Trade secrets may include, among other information, the following: formulas, devices, compilations of information, technical information, manufacturing processes, marketing information and customer lists. It is important for trade secret owners to educate their employees about trade secrets and the processes that must always be followed to maintain the trade secret 19. Who can enforce IP rights? IP owner Only a collective administration society Any person 20. IP owner had the right: Only to license Only to assign Both to license and to assign 21. The right of the owner of a patented invention is essentially: The right to exclude others who have not been permitted to use the patented invention The right of the owner to use the patent in his/her business for production of goods 22. If you have developed a new or improved product which required you to find a technical solution to a problem faced by you before putting it on the market, you should: File a patent application at the Department of Intellectual Property, before putting the product or disclosing publicly any key technical information about it Display the product and demonstrate the technology at an industrial fair Not worry at all about making a detailed announcement about the technical details of the improved or new technology in an advertisement or other marketing materials 23. Copyright to a work in a country is enforceable: Only in that country If that country is a member of the Berne Convention and/or the World Trade Organization then it would be enforceable in all member countries

7 7 24. Peter and Alex are employed as designers in Saudi Arabia Woodcraft Ltd. The designs they create while is the employment of Saudi Arabia Woodcraft Ltd. belong to Peter and Alex Saudi Arabia Woodcraft Ltd. The Government of Saudi Arabia 25. Ms. Diana creates a new floral ornamentation for wallpaper that she thinks will appeal to tourists who visit Saudi Arabia. What type of Intellectual Property right should Diana consider registering to protect the features of the wallpaper Industrial design Copyright Trademark Patent Trade secret 26. The following article is not suitable for registration of industrial design A car engine A water pump telephone a kettle for use the house 27. A wooden cupboard made by craftsman with attractive carvings on the door is best protected from being copied by the registration of (state one) trademark Industrial design patent trade secret copyright 28. Which of the following is not true? Competitive intelligence is the gathering and analysis of information from human and published sources about market trends and industry developments that allows for advanced identification of risks and opportunities in the competitive arena. Competitive Intelligence uses open sources, public domain information; not spying (breaking laws and use of illegal means to gather information). By reviewing trademark applications from trademark offices around the world, a party is able to identify potential new products a competitor may be interested in introducing. By implementing deceptive methods to gather competitive intelligence, a company can identify important trade secrets of competitors and freely use those trade secrets.

8 29. Which of the following is not true? WIPO/SMES/RYD/14 General purpose IP Audits aren t effective at identifying the whether commercial activities may infringe the IP of other parties. A general purpose IP Audit should identify all types of IP owned by the IP owner, including patents, designs, trademarks, copyrights and trade secrets. Before beginning an event driven IP audit for an acquisition with another company, a mutual non-disclosure agreement should be signed between (a) the potential acquirer, investor, or creator and (b) the target company. When conducting an IP Audit, it is important to create an IP Audit Plan that specifies the purpose, scope, expected length of the IP Audit, the budget, and who will be responsible for each area of the IP Audit Plan A is the Managing Director of A Manufacturing Ltd. of Saudi Arabia, which is involved in the design manufacture, and sales of beautiful wooden handicrafts. He says he employs craftsmen on a full-time basis to create new types of wooden handicrafts such as pictures frames, bed-side tables, wooden chairs and tables. Every new product is put in the display area of his showroom which area is open to the public. He is angry that his products are copied and reproduced by his competitors in Saudi Arabia. A also informs you that he has a secret formulation for the varnish he applies on his products. What would you advise him to ensure that his competition do not unlawfully compete with his business. (In your advice ignore non-intellectual property issues)

9 31. You are the new CEO of a major Saudi Arabia company which is rich in IP assets. However, the assets have not been fully exploited. You wish to explain to your board of directors that the IP assets can be exploited for a number of purposes. Please name three of the purposes of exploiting IP assets You have been approached to become a licensee of a water purification technology and to sell the purified water in Saudi Arabia. What are the benefits of obtaining a license? 33. What are the risks of licensing for a licensor? 34. What is the difference between licensing and franchising?

10 35. What are the three types of IP Audit? WIPO/SMES/RYD/ Your company wishes to acquire a company which has a lot of IP assets. Should you do an IP audit? If so, please give three reasons. 37. What are the agreements which should be audited?

11 38. What are the valuation methods that are normally used to determine the value of IP assets? The value of an IP asset is always affected by various factors. Please name 5 factors? 40. Every company should do a SWOT analysis? What do the letters SWOT stand for? [End of document]