General Introduction

Intellectual property (Concept)

Intellectual property (IP) is a term referring to a number of distinct types of creations of the mind for
which a set of exclusive rights are recognized—and the corresponding fields of law.[1] Under intellectual
property law, owners are granted certain exclusive rights to a variety of intangible assets, such as
musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and
designs. Common types of intellectual property include copyrights, trademarks, patents, industrial
design rights and trade secrets in some jurisdictions.
Although many of the legal principles governing intellectual property have evolved over centuries, it was
not until the 19th century that the term intellectual property began to be used, and not until the late
20th century that it became commonplace in the United States. [2] The British Statute of Anne 1710 and
the Statute of Monopolies 1623 are now seen as the origin of copyright and patent law respectively.[3]

History
Modern usage of the term intellectual property goes back at least as far as 1867 with the founding of
the North German Confederation whose constitution granted legislative power over the protection of
intellectual property (Schutz des geistigen Eigentums) to the confederation.[4] When the administrative
secretariats established by the Paris Convention (1883) and theBerne Convention (1886) merged in
1893, they located in Berne, and also adopted the term intellectual property in their new combined title,
the United International Bureaux for the Protection of Intellectual Property. The organisation
subsequently relocated to Geneva in 1960, and was succeeded in 1967 with the establishment of
the World Intellectual Property Organization (WIPO) by treaty as an agency of the United Nations.
According to Lemley, it was only at this point that the term really began to be used in the United States
(which had not been a party to the Berne Convention), [2] and it did not enter popular usage until passage
of the Bayh-Dole Act in 1980.[5]
"The history of patents does not begin with inventions, but rather with royal grants by Queen Elizabeth
I (1558-1603) for monopoly privileges... Approximately 200 years after the end of Elizabeth's reign,
however, a patent represents a legal [right] obtained by an inventor providing for exclusive control over
the production and sale of his mechanical or scientific invention... [demonstrating] the evolution of
patents from royal prerogative to common-law doctrine." [6]
In an 1818 collection of his writings, the French liberal theorist, Benjamin Constant, argued against the
recently introduced idea of "property which has been called intellectual." [7] The term intellectual
property can be found used in an October 1845 Massachusetts Circuit Court ruling in the patent
case Davoll et al. v. Brown., in which Justice Charles L. Woodbury wrote that "only in this way can we
protect intellectual property, the labors of the mind, productions and interests are as much a man's
own...as the wheat he cultivates, or the flocks he rears." (1 Woodb. & M. 53, 3 West.L.J. 151, 7 F.Cas.
197, No. 3662, 2 Robb.Pat.Cas. 303, Merw.Pat.Inv. 414). The statement that "discoveries are...property"
goes back earlier. Section 1 of the French law of 1791 stated, "All new discoveries are the property of
the author; to assure the inventor the property and temporary enjoyment of his discovery, there shall
be delivered to him a patent for five, ten or fifteen years." [8] In Europe, French author A. Nion
mentioned propriété intellectuelle in his Droits civils des auteurs, artistes et inventeurs, published in
1846.
The concept's origins can potentially be traced back further. Jewish law includes several considerations
whose effects are similar to those of modern intellectual property laws, though the notion of intellectual
creations as property does not seem to exist – notably the principle of Hasagat Ge'vul (unfair
encroachment) was used to justify limited-term publisher (but not author) copyright in the 16th century.

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[9]
 The Talmud contains the prohibitions against certain mental crimes (further elaborated in
the Shulchan Aruch), notably Geneivat da'at (‫גניבת דעת‬, literally "mind theft"), which some have
interpreted[10] as prohibiting theft of ideas, though the doctrine is principally concerned
with fraud and deception, not property.

Objectives
Financial incentive
These exclusive rights allow owners of intellectual property to benefit from the property they have
created, providing a financial incentive for the creation of and investment in intellectual property, and,
in case of patents, pay associated research and development costs.[11] Some commentators, such
as David Levine and Michele Boldrin, dispute this justification.[12]
Economic growth
The existence of IP laws is credited with significant contributions toward economic growth. [citation
needed]
 Economists estimate that two-thirds of the value of large businesses in the U.S. can be traced to
intangible assets.[citation needed] "IP-intensive industries" are estimated to generate 72 percent more value
added (price minus material cost) per employee than "non-IP-intensive industries". [13][dubious  –  discuss]
A joint research project of the WIPO and the United Nations University measuring the impact of IP
systems on six Asian countries found "a positive correlation between the strengthening of the IP system
and subsequent economic growth." [14] Other models, such as the Nash equilibrium, would not expect
that this correlation necessarily means causation: The Nash equilibrium model predicts that patent
holders will prefer to operate in countries with stronger IP laws. [neutrality  is  disputed] In some of the cases, as
was shown for Taiwan[15]after the 1986 reform, the economic growth that comes with a stronger IP
system might be due to an increase in stock capital from direct foreign investment.

Criticism
The term itself
Free Software Foundation founder Richard Stallman argues that, although the term intellectual
property is in wide use, it should be rejected altogether, because it "systematically distorts and confuses
these issues, and its use was and is promoted by those who gain from this confusion." He claims that the
term "operates as a catch-all to lump together disparate laws [which] originated separately, evolved
differently, cover different activities, have different rules, and raise different public policy issues" and
that it creates a "bias" by confusing these monopolies with ownership of limited physical things, likening
them to "property rights".[16] Stallman advocates referring to copyrights, patents and trademarks in the
singular and warns against abstracting disparate laws into a collective term.
Lawrence Lessig, along with many other copyleft and free software activists, have criticized the implied
analogy with physical property (like land or an automobile). They argue such an analogy fails because
physical property is generally rivalrous while intellectual works are non-rivalrous (that is, if one makes a
copy of a work, the enjoyment of the copy does not prevent enjoyment of the original). [17]
Limitation
Some critics of intellectual property, such as those in the free culture movement, point at intellectual
monopolies as harming health, preventing progress, and benefiting concentrated interests to the
detriment of the masses,[18][19] and argue that the public interest is harmed by ever expansive
monopolies in the form of copyright extensions, software patents andbusiness method patents.
There is also criticism[by whom?] because strict intellectual property rights can inhibit the flow of innovations
to poor nations. Developing countries have benefitted from the spread of developed country
technologies, such as the internet, mobile phone, vaccines, and high-yielding grains. Many intellectual
property rights, such as patent laws, arguably go too far in protecting those who produce innovations at

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the expense of those who use them.[citation needed] The Commitment to Development Index measures donor
government policies and ranks them on the "friendliness" of their intellectual property rights to the
developing world.
Some libertarian critics of intellectual property have argued that allowing property rights in ideas and
information creates artificial scarcity and infringes on the right to own tangible property. Stephan
Kinsella uses the following scenario to argue this point:
[I]magine the time when men lived in caves. One bright guy—let's call him Galt-Magnon—decides to
build a log cabin on an open field, near his crops. To be sure, this is a good idea, and others notice it.
They naturally imitate Galt-Magnon, and they start building their own cabins. But the first man to invent
a house, according to IP advocates, would have a right to prevent others from building houses on their
own land, with their own logs, or to charge them a fee if they do build houses. It is plain that the
innovator in these examples becomes a partial owner of the tangible property (e.g., land and logs) of
others, due not to first occupation and use of that property (for it is already owned), but due to his
coming up with an idea. Clearly, this rule flies in the face of the first-user homesteading rule, arbitrarily
and groundlessly overriding the very homesteading rule that is at the foundation of all property rights. [20]
Other criticism of intellectual property law concerns the tendency of the protections of intellectual
property to expand, both in duration and in scope. The trend has been toward longer copyright
protection[21] (raising fears that it may some day be eternal). [22][17][23][24] In addition, the developers and
controllers of items of intellectual property have sought to bring more items under the protection.
Patents have been granted for living organisms, [25] and colors have been trademarked.[26] Because they
are systems of government-granted monopoliescopyrights, patents, and trademarks are
called intellectual monopoly privileges, (IMP) a topic on which several academics, including Birgitte
Andersen[27] and Thomas Alured Faunce[28]have written.
In 2005 the RSA launched the Adelphi Charter, aimed at creating an international policy statement to
frame how governments should make balanced intellectual property law.

Intellecual Property- An Industry Perspective; Applications; Advantages

Intellectual property rights is a legal concept that confers rights to owners and creators of the work, for
their intellectual creativity. Such rights can be granted for areas related to literature, music, invention
etc, which are used in the business practices. In general, the intellectual property law offers exclusionary
rights to the creator or inventor against any misappropriation or use of work without his/her prior
knowledge. Intellectual property law establishes an equilibrium by granting rights for limited duration of
time.

Every nation has framed their own intellectual property laws. But on international level it is governed by
the World Intellectual Property Organization (WIPO). The Paris Convention for the Protection of
Industrial Property in 1883 and the 'Berne Convention for the Protection of Literary and Artistic Works'
in 1886 were first conventions which have recognized the importance of safeguarding intellectual
property. Both the treaties are under the direct administration of the WIPO. The WIPO convention lays
down following list of the activities or work which are covered by the intellectual property rights -

 Industrial designs
 Scientific discoveries
 Protection against unfair competition
 Literary, artistic and scientific works
 Inventions in all fields of human endeavor
 Performances of performing artists, phonograms and broadcasts

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  Trademarks, service marks and commercial names and designations
 All other rights resulting from intellectual activity in the industrial, scientific, literary or artistic
fields.

Types of Intellectual Property Rights

Intellectual Property Rights signifies to the bundle of exclusionary rights which can be further
categorized into the following heads-

Copyright
Copyright, one of the form of intellectual property law, offers exclusive rights for protecting the
authorship of original & creative work like dramatic, musical and literary in nature. Symbolized as "©",
here the term 'exclusive rights' mean that the holder has the right to determine who will be credited
with the work, who will perform the work and who will be benefited financially from it. However,
copyright does not extend any protection to the facts, methods of operation, system, ideas except to
the ways in which they can be expressed.

Being a copyrighted item does not mean that other person can't use or write on subject matter of
particular item. For e.g, if a person has written on a new motor cycle and he has copyrighted his article
then it means that other person can't use that article but he is free to write his thoughts on the similar
motor cycle. Copyright holder does not hold the rights by themselves. Instead of it they relinquish it to
publishers or big companies by entering into the contractual agreement. Generally copyright is
enforceable as a civil cases but in some jurisdiction, there are criminal infringement statutes. Criminal
Sanctions are made for targeting the counterfeiting work. There are innumerable factors which
determine the length of the duration term. Like the nature of work, the status of work i.e, whether it is
published or unpublished and finally whether the work has been created by single person or group.
Generally in various part of the world, the copyright has been granted for whole life of the author plus
for 50 or 70 years. 

Indian Copyright Act, 1957

The Indian copyright act facilitates the owner for reproducing or reusing their copyrighted items, to
prepare its derivate, to public their work and to distribute copies of their creative items. Copyright aims
to protect the work of creator, transformed in a tangible form of expression. It includes art work, plays,
movies, shows, various types of music, sound and songs, books, manuscripts, written work and all types
of images, photos, pictures, drawings, graphics.

Copyright Registration
Copyright comes into effect as soon as the work is done and no formalities are required to be follow.
However, certificate of copyright registration and entries made there upon serves as the prima facie
evidence, at the time of any dispute, in the court. But there is a procedure exist for registering the both
published/unpublished work in the Register of Copyrights, maintained in the Copyright Office of the
Department of Education. If the work has been registered as the unpublished in the Register of
Copyright but subsequently it is published then the requisite changes can be make by the applicant in
the Register of Copyright with addition to prescribed fees.

Procedure of Copyright
It is required to be in written form duly signed and authenticated by assignor or by his authorized agent.
It should legibly specified the amount of work and rights which are assigned to the other person. To

4
avoid emergence of conflict in near future, time with duration and territorial area should be explicitly
mentioned. It should clearly specify the royalty which is required to be paid to author or his legal
representative. The mentioned assignment should be clearly subject to termination, extension on terms
& conditions duly agreed and signed by both parties. There are some acts which have been put under
the head of 'copyright infringements' -

 Preparing infringing copies for the purpose of selling or hiring or let them to be hire by third
party.
 Authorizing for the performance of work in such public places where such performance gives
result to the copyright infringement.
 Making distribution of the infringe copies for trading with a motto of affecting prejudicially the
copyright owner interests.
 Public exhibiting the infringing copies for the purpose of trade.
 Importing the infringing copies into the India.

Advantages of Copyright
Copyright helps in protecting the original published/unpublished work, that can be fall under the
different heads of literature, musical, dramatic, artistic and intellectual. If we say the economic and
social development of the nation relies upon the creativity skills of its people, then there would be no
exaggeration. Copyright helps in making a protective shield, which is conducive for the growth rate of
writers, artists, producers, musicians, cinematographic artists and induce them towards indulging into
more creative work. By copyrighted their creation, copyright holder can enjoys following rights -

 One can use, re use, reproduce the copies and can sell the copies.
 One can import or export whole or part of work.
 One is free to create any derivative work.
 One can publicly demonstrate its work.
 One can sell or pass its rights to other person.
 One can indulge in transmitting or displaying work by radio or video.

Copyright Protection for Foreign Work

In case of the foreign work, only those work of nations are protected in India which are the member of
the Berne Convention for the Protection of Literary and Artistic Works, Universal Copyright convention
and the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement through the
International Copyright Order. Similarly to grant protection to the Indian work in throughout the world,
India has also entered into the below international conventions on copyright and neighboring (related)
rights -

 Berne Convention for the Protection of Literary and Artistic works.

 Universal Copyright Convention.
 Multilateral Convention with the motto of protecting the producers of phonograms against the
phonograms duplication done unauthorizedly.
 Trade Related Aspects of Intellectual Property Rights Agreement (TRIPS).

Copyright Law Administrating Body

The Indian Government has established Copyright Enforcement Advisory Council (CEAC) as an apex body
for dealing in copyright related issues. No special courts have been set up for hearing cases pertaining to

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copyright related matters. The act facilitates the person to either contact directly to the board or take
the help of normal courts regarding copyright issues. The board is not only taking care of infringe cases
but also govern all the issues related to copyright in India. The Copyright Board is quasi judiciary in
nature and it comprises of 2 or more but less than 14 members. The chairman of the board enjoys the
same level that of High Court Judge.

Registered Copyright Societies in India

 Society for Copyright Regulation of Indian Producers for Film and Television
 The Indian Performing Right Society Limited
 Phonographic Performance Limited

Patent
A patent is termed as the exclusionary rights given by the government or the authorized authority to its
inventor for a particular duration of time, in respect of his invention. It is the part of the intellectual
property right, which connotes with all those rights which are granted to any person for protecting its
invention, process, discovery, composition or new useful development etc. from its further usage
without any authentication. If more than two persons have jointly applied for patent license, both will
own the patent separately. The original word 'patent' has come up from the latin term 'patere', which
means 'to lay open' or 'available for public usage'. Sometimes it is also related to the term 'letters
patent', which marks to the royal decree granting exclusive rights to patentee. Unlike copyright, patent
is not granted on giving mere suggestion or idea. An idea of mere manufacturing machine does not
comes under the purview of obtaining patent.

The roots of patents can be tracked back into the ancient Greek cities, where one person found out the
new recipe and was given 1 year exclusive right of making food. The modern sense of patents were
originated in 1474, when the Republic of Venice issued a decree and made it mandatory to
communicate all new discovered products to the Republic, after they have been put into practice. The
decree was enacted to prevent the usage of same products by the other persons. With the statues of
monopolies, under the kingship of James I in 1623, a declaration was made which made it obligatory to
patent the 'projects of new invention'. Afterwards, in the regime of Queen Anne (1702-1714), the
writing description of new invention has been enacted by the lawyers of English court. These
developments laid down the foundation of United States modern patent laws. In Italy, first patent was
issued by the Republic of Florence in 1421.

Oftentimes patents are wrongfully understood as a right to use the invention. Reversely, it is the right
which excludes other persons from using, making or importing the particular product or invention but
for a fixed duration of tenure. The patent provides the protection period of usually 20 years from the
date of filling the application, which can vary in throughout the world. Like of a property right, patent
rights can also be sold, mortgaged, licensed, transferred to a third party. One can completely write
off/abandon patent rights granted to him. The ability to transfer the patent rights to a third party,
increases its liquidity. After obtaining patent license, more often inventors sell it off to third parties.
Then third parties use it as they themselves have originally made the patented inventions. However,
patent doesn't give any exploitation rights to patent holder. Many new inventions are the outcome of
improvement done on prior one. For e.g, an inventor uses the patented keyboard designs and adds new
features onto it and obtains patent on its improvised version. In future, he can build his new keyboard
design only after getting approval from the patent holder of the original keyboard design, if the prior

6
patent is still in force. On the other side, owner of the improved keyboard design can patent his
invention and excludes its original patent holder from usage of its invention.

Generally both natural person or an whole entity can apply for a patent. However, it is somehow
necessitated in almost all nations, to give the name of inventor(s) in the public record and what is the
procedure they have followed in acquiring the exclusive rights for inventions. To successfully enacting
the patent laws within its national territorial, every country has their own patent offices. For requesting
the patent license, a written application is needed to be file in the patent office within jurisdiction for
granting the patent license for the particular geographical area over which its is required. The
application contains a description of making and usefulness of the intended patent product. The written
description filed by the applicant is known as the patent specification. It contains the specifications of
figures, biological composition or computer code, as a reference to the subject matter of patent
application. The specification provided is sometimes accustomed with the illustrative drawings of
invention. In some nations, like the USA, applicant is required to detail the best and effective method of
making and practicing the invention. In the end of the application, the patent application is required to
mention about the claims.

The procedure of granting patents and the rules abide on the patentee are different in every country as
per their national laws and international treaties. Therefore, patents are sometimes characterized as the
territorial in nature. In many nations, certain areas such as business methods and mental work do not
come under the purview of patent. Like the United States of America, covers the research work under
patent head and it may be termed as infringement with the discovery of any new invention, which is
headed towards by using the already patented invention. But Australian patent law rules out
infringement exceptions for those who conduct research on the invention. Many nations have
implemented their patent law which except its inventor exclude other people from usage, selling,
manufacturing or importing the patented invention.

Generally patent is enforceable in civil lawsuits. Like in USA, hearing for patent infringement case is
undertaken in the United States federal court. Usually patent holder gets monetary compensation from
any past patent infringement and seeks for injunction, which in turns prohibit the other party to involve
in any infringement case in nearby future. In case of infringement, patent holder needs to establish that
the infringer has actually undergone in practicing patented invention. One of the drawback from patent
holder part in complete asserting of patent in civil cases, is the ability of accused infringer to challenge
the validity of patent and its holder. There are innumerable examples in which patents have been
declared invalid during the civil court litigation. The set of rules for patent legislation on the basis of
which respective patent can be declared invalid, vary from one nation to another.

For facilitating the efficient use of patent on the global map, the Patent Law Treaty or PLT has been
signed in this direction by 53 nations and 1 intergovernmental organization-the European Patent
Organization. The treaty was signed on 1st June 2000 in Geneva, Switzerland. Its purpose is to easier the
official procedures required to be followed while obtaining the filling date for patent application, the
form and content of application. But due to its restrictions to some of the formalities, it has confined
only to a particular class group. Therefore, the term 'Substantial Patent Law Treaty'(SPLT) has come into
effect which is used interchangeably with the PLT. Whereas the PLT is confined only to some formalities,
the SPLT goes further in harmonizing substantive requirements of novelty, inventive step, utility,
sufficient disclosure etc.

Classification of Patent Application 

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On the basis of filling the application in the office, patent application can be classified under following
heads -

 National Patent Application :

These are filed in the national patent office to obtain patent license from that country. One can
directly file the application, or it may be from regional office or it can be an international
application under the Patent Corporation Treaty, after entering into the national boundary.
 Regional Patent Application :
Such applications have their effect in number of countries. The European Patent Office (EPO)
grants patent which can be effective in few or all nations coming under the head ' European
Patent Convention' (EPC). As one patent application allows access into the number of nations, it
results into the curtailing of cost, which would otherwise be incurred in obtaining license
separately in different nations.
 International Patent Application :
The Patent Corporation Treaty (PCT) is operated by the World Intellectual Property Organization
(WIPO). The PCT allows applicant to file single patent application in only 1 language. Known as
an international application, this enables in granting patent license in any of the nation comes
under the PCT. The WIPO completes all the patent application formalities in a centralized
manner. After filing of patent application, examination is done by an International Searching
Authority (ISA), which in turns will generate International Search Report (ISR) along with a
written opinion about patentability of invention. The ISA handed over ISR to the applicant after
the 9 months of first filing of application and 16 months after priority date in case of subsequent
filing. If the ISR is not in English, it is translated into English for publication purpose. The
international application is required to be published after 18 months of filing date or priority
date by the International Bureau (IB) of WIPO, situated in Geneva, Switzerland. Proceeding the
patent application via PCT treaty allows patent license in large number of countries.

Advantages of Patent

 Patents assist in powering the research and development. Many corporations have huge budget
set aside for extensive research and developments. Without the covering shell of patent,
extensive spending of R&D would be less or go insignificant, which will limit the chances of
technological growth. Such companies would hesitate in spending bulk amount on research
activities, as any other third person can easily exploit their new developments.
 With an accordance to the meaning of 'patent', it allows and encourages the holder to publicly
disclose the innovations in public domain for societal needs. If patent holder will not get any
legal protection, then they would tend to keep their invention as a secret, as any disclosure
would amount to the loss of license holder rights.
 Such companies which involve high fixed cost and low marginal cost, like computer processors
software, pharmaceuticals, face high commercialization cost of testing , setting up of factory etc.
Unless such companies do not have any protective shield for competing with marginal cost, they
will hesitate in moving ahead. Patent allows them to purely concentrate on manufacturing
process.
 It allows inventor to maintain monopoly on the invention for a specified period of time.
Generally a patent application must possessed of one or two claims, which are new, innovative
and commercially viable.

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Trademark
The trademark or trade mark, symbolized as the ™ and ®, is the distinctive sign or indication which is
used for signifying some kind of goods or/and services and is distinctively used across the business
organization or by an individual for identifying and uniquely classifying the source or their products
and/or services among consumers and making a distinction of its products or services from the other
entities. One of the part of the intellectual property law, trademark signifies to the name, word, phrase,
logo, image, design, symbol or combination of any or all of these elements. The trademark grants rights
to the owner which in turns may take or can commence legal proceedings in case of infringement of
trademark. However registration is not compulsory in trademark. The owner of common law trademark
can also file the suit but in case of the unregistered mark, the protection granted will only be confined
only to that geographical area within which it has been used or in that area into which it is expected to
be expand.

Informally the term 'trademark' is used for distinguishing those characteristics or attributes which helps
in identifying any individual. When the word 'trademark' is used in context of services rather than
products, it may called service mark. When the trademark is used for describing the product or service,
instead of making a distinction from the third parties then it is popularly called generalized trademark.
As any sign which is attributed of doing the essential required functions of the trademark may be
headed under the term 'trademark'. It may include various non-conventional signs like shapes(three
dimensional trademarks), smells, sounds, moving images, taste, color and even texture. The extent to
which these non conventional trade marks are recognized or even protected varies from one jurisdiction
to another. 

Advantages of Trademarks
The trademark owner is conferred upon the 'exclusionary rights' which says that the owner enjoys the
right of using the registered trademark and can indicate it by using the symbols- ™ and ® in relation
of those goods and services for which the owner has registered the trademark. At the time of any
infringement, the owner can take upon the case in the court. Trademark provides the guarantee for the
unchanged quality and helps in creating and advertising the products and services in public.

International Trademark Laws

Due to the increasing globalization of trading activities, it becomes necessary to integrate the trademark
law and policy, nucleus of which must be constancy in its various activities. The following trademark
laws have candidly enable the industrial market across the world to save their time and resources by
allowing the centralized filing system and completion of various procedures related to it.

 Agreement on Trade-Related Aspects of Intellectual Property Rights : 

Administered by the World Trade Organization (WTO), the Agreement on Trade Related Aspects
of Intellectual Property Rights (TRIPS) is the international agreement which laid down the
minimum standards for different parts of the intellectual property (IP) regulation. In the year
1994, the said agreement was negotiated at the end of the Uruguay round of the general
agreement on tariffs and trade (GATT). The TRIPS encompasses of the various requirements
which laws in different countries are required to abide for along with the specification of the
procedures, remedies and disputes. In the Article 15(1) of TRIPS, 'sign', which has been used in
part or form of the 'trademark' in the trademark legislation of various jurisdiction in throughout
the world.
 The Madrid system for the international registration of marks : 
The madrid system is seen as the pivotal international system for enabling the trademark

9
 registration in more than one jurisdiction. It offers the centrally administered system for
achieving the trademark registrations in the jurisdiction of member nations by extending and
facilitating the protection of the international registration obtained through the World
Intellectual Property Organization. The international registration is said to be based on the
application or registration which is acquired by the trademark applicant within its home
jurisdiction. The foremost benefit derived from the madrid system is that it facilitates the
trademark owner in obtaining trademark protection in multiple jurisdictions by filing the
application only in 1 jurisdiction on the payment of one set of fees. This system allows the
applicant to make amendments and complete registration process across all the jurisdictions by
applying through the single administrative process. Moreover, it is easy to extend the
international registration coverage to the other member jurisdictions at any given point of time.
 Trademark Law Treaty : 
The trademark law treaty aims to establish the system through which jurisdictions of member
nations agree for standardizing the various procedural requirements of the registration process
in connection to the trademark.
 The Communal Trademark System : 
It is the super national trademark system which is prevalent in the European union.

Trademark Laws in India

The Indian trademark law defines the trademark as the signature, device, word, invented word, letter,
numeral, brand, name written in the particular style, the shape of goods other than those for which the
mark is intended to be used, or any combination thereof or the combination of colors etc. Except in
certain cases, the trademark may also signified by the name of living or dead person. The trademark
helps in making an identification of the goods and services along with its origin. It helps the trademark
holder to advertise its products or/and services and also creates a good image in the mind of its final
consumer but the trademark chosen should be capable of making a distinction between the goods or
services of different people. Furthermore, it should not be deceptively identical to the existing mark of
the other person and should not be such that which is restricted in the act.

In India, any person who claims to be the trademark proprietor can apply for the trademark registration
of the goods and services. For registration, the application can be filed in the Trademark Office, in whose
jurisdiction the principal place of your business falls. If the principal office is not situated in India then
the applicant can file the application in the trademark office in whose jurisdiction the lawyer appointed
by the applicant is situated. In case it is the company which is yet to be formed then anyone can apply
for the registration on the behalf of the company. It is prudent to make a proper search in the
trademark office for ensuring that your registration may not be canceled due to the similarity of the
proposed mark to the already existing one. In India, the registration term of the trademark is 10 years
which can be renewed further for next 10 years by paying the renewal fees.

In India, only the trademark proprietor whose trademark has been registered can put the symbol ® into
use. If any use the symbol without the registration of mark he/she will be held under illegal use of the
trademark. If anyone is engage in selling or providing services by using the false trademark he/she will
be entitle to the penalty of minimum 6 months which may extend to maximum of 3 years and with the
fine of not less than Rs.50,000 and which can extend to Rs.2,00,000.

10
Trade Secrets
Trade secret points towards a formula, pattern, any instrument, design which is kept confidential and
through which any business or trade can edge over its rival and can enjoy economic gain. Trade secrets
can be anything from a chemical compound, manufacturing process, design or preserving materials or
even a list of consumers or clients. It is also known as "confidential information" or "classified
information". To be safeguarded under trade secrets, the matter should be 'secret'. Though the
definition of trade secret is variable as per the jurisdiction but there are following elements that are
found to be same -

 is not known by the public.

 provides some financial sort of gain to its holder.
 involves reasonable efforts from the holder side for maintaining secrecy.
 importance of data or information to him or for his rivals.
 the ease by which information could be learned or duplicated by others.

Any enterprise or an organization can safeguard its confidential data or information by entering into non
disclosure agreement with its employees. Such law of protecting confidential matters offers monopoly in
respect of any secret data and information. Trade secrets offer protection for an indefinite time period.
Unlike patent it does not expire.

Every company invests its time and resources into discovering information regarding refinement of its
various activities and operations. If other company will be allowed to use the same knowledge then the
chance of first company survival and dominance into the industrial arena would be vitiated. When trade
secrets are recognized then the inventor of such knowledge is entitled to consider that as part of the
intellectual property. 

Unlike of patent, copyright, there is no particular international treaty(s) for trade secrets. Moreover
there is no global law for standardizing definition of trade secrets. Trade secrets are gaining recognition
year by year in throughout the world. It has been said that the major technologies in the world are
protected under the head of trade secret instead of patent. The 'North American Free Trade Agreement'
(NAFTA) and the agreement on 'Trade Related Aspects of Intellectual Property' (TRIPs) ratified during
the Uruguay round of the 'General Agreement on Tariffs and Trade' (GATT) have there specific
provisions which point towards increase in the protection granted to trade secrets. Furthermore there
has been a rising trend particularly in Asian nations of using the domestic statues which direct towards
trade secrets protection.

Trade Secrets Protection

Trade secrets are kept secret and thus not disclosed to the public at large. The owner or creator takes
concurrent steps and prevent his knowledge from slipping out his hands to its rival side. In exchange of
getting the chance to be appointed by the holder of trade secrets, a worker will ready to sign a contract
not to disclose any material information and data of his employer. Any negligence or violation of the
same will means an imposition of financial penalties. Other business associates or companies with
whom the inventor is engaged are often signed a same contract and any negligence will lead to fine or
penalties.

If any company by unlawful means try to find out trade secrets of other company then he will be held
legally responsible under that country's act in which it has been happened. If trade secret has been

11
obtained via industrial espionage, then it will be called illegal and the person or company involved in it
shall be found guilty for legal liability.

Trade Secrets Infringement

Misappropriate use of trade secrets can be called an unfair practice. The Uniform Trade Secrets Act of
the USA defines misappropriation as -

 Acquiring trade secrets related of other by a person who has strong belief or reason that it was
acquired by wrongfully doings.
 Disclosing or using trade secrets of other person without any implied consent of its owner.

As per the Uniform Trade Secrets Act 'improper means' include "theft, bribery, misrepresentation,
breach or inducement of a breach of duty to maintain secrecy, or espionage through electronic or other
means."

Tips for safeguarding Trade Secrets

 Put a sign or any mark on various computer files and documents related to trade secrets which
you are intended to keep confidential.
 Allow the accessibility of trade secrets only to those people who have authentic reason to know
the information. The reason should be material and benefits you in business.
 Make it obligatory for everyone using trade secret to sign a non disclosure agreement. It should
describe every minute detail about trade secret applicability like how the person will use trade
secret, what will happen if he will pass over this agreement etc.
 All employees should consider trade secrets as confidential data or information even if he is
unaware about the trade secret.
 Always keep your trade secret in a private and restricted zone.

Utility Model
 The utility model is the intellectual property right for protecting the inventions. It is somehow
described as the statutory monopoly which is bestow upon for the fixed duration of time in
exchange to the inventor for the offering of the sufficient teaching of the invention and
permitting the other person, possessing the ordinary skills of the relevant art, of performing the
invention. The rights granted under the utility model are somewhat identical to those conferred
upon by the patent but are more considerable for using the term 'incremental inventions'.
Sometimes words like 'petty patent', 'innovation patent', 'minor patent' and 'small patent' are
used in reference of the utility model. Such models are considered to be more suitable
particularly for the small scale enterprises, which in turns make the 'minor' improvements with
the adaption of the existing products. Utility models are more commonly used for the
mechanical innovations. 

The utility model rights are recognized as the registered rights which provide the owner
'exclusivity' protection in terms of the invention. In general context the invention must be new
and should encompasses the inventive step and able for lending itself to the industrial usage,
which would be protected through the utility model. It is possible to grant utility model without

12
following the lengthy process of examination. Unlike patents, utility model rights are granted for
shorter time span, say 6 or 10 years, without the renewal or extension possibility and it follows
less stringent requirements. These models are comparatively cheaper in obtaining and
maintaining. The utility model of German and Austrian is known as the "Gebrauchsmuster",
which in turns have influenced the model of other nations like Japan. The utility model working
in Indonesia and Finland is termed as 'Petty Patent'. Such models are deemed to be more
suitable for small and medium size enterprises which make few improvements. These are
primarily found to be used for mechanical innovations also. 

The origin of utility model goes back to the period of 1891 in Germany where it was enacted
with a motto of filling the gap. During that time the patent office of Germany provided patents
only to those inventions which were new and showed some degree of creativeness. But it was
found that there were good number of the technical solutions which consisted of the industrial
creation having some technical or constructive complexity. Such small inventions were not
patented but the German legislature was of the view that they deserved to be protected due to
the possession of their high economic value. Therefore it was decided of creating the set of
exclusive rights, other than the patents and which was appropriate for safeguarding such minor
inventions. It comes in the form of the utility model rights. Soon after many other nations also
joined up the club in providing utility model in their respective territories. Like Poland, Japan,
Spain, Italy, Portugal. Afterwards the list has also been extended with the adoption of the utility
model by Greece, Finland, Denmark and Austria. Utility model safeguards the technical
inventions which comply with the requirements of novelty and industrial usages with some sort
of 'inventive' touch. 

Usually the procedure of obtaining the utility model right requires fulfillment of simple
registration procedure. There are some sort of formal requirements which are only required to
fulfill for enjoying the utility model rights. The application is required to be divided as per the
number of devices to be registered. Drawings which are required to be bring under the utility
model protection should be attached with the applications along with the prescribed fees. There
is no particular system for checking the application for utility model registration. Instead of
examining whether the filed application is novel or not, examiners check that the application
meets the desired requirements and is not against the societal orders, application is clear with
no misleading facts. If the application fails to comply with basic requirements then a notice will
be sent to applicant and ask him to amend it. If the applicant fails to do so then the proposed
application will no longer exist. Those applications which have been scrutinized and pass
through the formality checking levels are required to be registered. The registration rights will
be instituted without passing through any hard core examination. The applicant will pay
registration fees. After registering of utility rights same will be published in the official gazette to
let the public know about any such utility model rights. Once all these requirements have been
fulfilled, the person will be granted such rights. Generally the applicant can obtain utility model
after the 6 months of the application filing. Different rules are followed in various nations across
the world. In Spain, there comes an opposition stage after the formal examination of the

13
 application. The third party having the legitimate interests can oppose the utility model
registration and can proof that the invention is missing one of the protection requirement
prescribed by the law. Similarly in German, Austria, Finland and Denmark the applicant can ask
the patent office for writing the 'report on the state of the art', which would help in determining
that whether the invention is novel or not and whether it consists of the inventive skills or not.
But such report does not have any legal enforcement and therefore office should provide utility
model registration despite of what the report says.

Geographical Indication

Geographical Indication (GI) signifies to the name or sign, used in reference to the products which
are corresponding to the particular geographical area or somewhat related to the origin like town,
region or nation. Thus GI grants the rights to its holder which acts as the certification mark and
shows that the specified product consists of the some qualities and is enjoying good reputation due
to its origin from the specified geographical location. The Trade Related Aspects of Intellectual
Property Rights (TRIPs) Agreement has defined the 'geographical indications rights' as the
exclusionary rights for the indicator which identify the goods originated within the member nations
territories, or area or region of that territory, where the reputation or other attributes of the goods
is essentially related to the geographic origin of the place. Geographical indications are the part of
the intellectual property law therefore like any other law the regulation and govern conditions of GI
also varies from one country to another as high differences have been found out in the use of
generic terms across the world. Such case is prominent for food and beverage which more
commonly use the geographic terms. Geographical Indications are aimed towards identifying the
source of the product and is considered as the valuable business tool. 

The global trade has made it crucial of harmonizing the various approaches and methods which the
governments use for registering the GIs in their respective territories. The first initiative was taken in
the year 1883 as the Paris Convention on trademarks which was followed by the more elaborative
provisions of the Lisbon Agreement in the year 1958 for the Protection of Appellations of Origin and
their Registration. In the year 1994 during the conclusion of the negotiations on the WTO
Agreement on Trade Related Aspects of Intellectual Property Rights all WTO members were decided
to lay down certain standards for the GIs protection in their respective countries. The Article 22 of
the TRIPS Agreement emphasis on the obligations of the government for providing legal
opportunities within their territories for safeguarding the GI use and curbing its misappropriate use.

Geographical Indication Act in India

In India the geographical indications regime is regulated by the Geographical Indications of Goods
(Registration & Protection) Act, 1999 and the Geographical Indication of Goods (Regulation and
Protection) Rules, 2002. However registering of the GI is not compulsory in the India as the owner of

14
the unregistered GI can also enforce the actions with the help of passing off against the infringer but
it is recommendable to register the GI as the registration certificate acts as the prima facie evidence
in the court at the time of arising of any dispute and no additional evidence is required to proof the
validity. Examples of some of the popular geographical indicators are- Basmati Rice, Kanjeepuram
Sarees, Darjiling Tea. In the Indian act, geographical indication is used for identifying the goods from
a particular geographical location and its origin. It encircles the agriculture goods, natural goods and
is extended up to the manufacture goods also. In order to register the geographical indication, the
goods should possess the unique characteristic, reputation with other qualities attributed to its
geographical origin, for e.g, climate, quality of soil, processing methods etc. Normally the
geographical indicators signify to the rights of community or a group therefore, an individual cannot
register geographical indication on his/her name. The Indian Geographical Indication Act has
established the Geographical Indication Registry, the statutory body, for completing the
geographical indication registration. The body prepares the Register of Geographical Indications
which is prepared in two parts- Part A and Part B. While Part A consists of the important attributes
of the goods along with the name of the registered owner whereas Part B details down the various
rules which are related to the geographical indicator authorized users registration.

To register the geographical indication, any organization or association of people or the statutory
authority can apply for the registration. They need to file the application which should consists of
the statement that how the geographical indications are related to the quality and with other
characteristic features which are the result of the geographical environment, encompasses of the
natural qualities and human factors, unique methods of production, processing and preparation,
which occurs within the said geographical area. It is required that the class of goods which have
been chosen should be covered under the registration. The applicant is needed to give the
geographical map of the area in which the goods have been produced along with the descriptory
methods of the geographical indicators appearance of the goods. The applicant can file the single
application for varied classes of goods but separate fees is required to be paid for each class of
goods. However for the registration of foreign indications, the submitted application should detail
down the address of the services which are situated in the India. The submitted application may
either be accepted fully or conditionally. If the application has been rejected or has been accepted
partially then the registrar is required to record in writing the reasons of rejection or conditionally
acceptance. After the application acceptance it will be publicized in the Geographical Indication
Journal and within the 3 months of its publication, any person who oppose against the application
and can request for the opposition proceedings. The registrar will sent the copy of the opposition to
the applicant who in turns is required to counter the statement within 2 months of the receipt of
the opposition copy. But if the applicant fails to comply with the specified time duration then the
application would have been considered rejected. After the furnishing of the evidence by the
applicant, the registrar will provide a chance to both parties for the oral hearing and after that the
matter will be settled down through the quasi-judicial manner. In case of the foreign entities who
are interested in lodging the opposition, are needed to submit the security for costs.

15
 The initial registration of the geographical indication holds its validness for 10 years. The Indian act
has given gracing period of 2 years for restoring back the registration of those geographical
indications which have been canceled due to the failure of paying the renewal fees. At the time of
the geographical indications infringement there are two types of remedies which have been clearly
specified in the act- Civil remedies which cover the injunction damages, which in turns include the
delivery of the infringed goods for the destructive purpose and forfeiting of the goods which bear
upon the fake representation of the original geographical indication. However the criminal remedies
may include of the punishment to the offender minimum to 6 months which can extended
maximum to 3 years with the minimum Rs.50,000 fine and maximum to Rs.2,00,000. If the same
offense is repeated in the future again then the minimum sentence becomes of 1 year with
minimum Rs.2,00,000 fine.

Industrial Design Rights

Industrial design rights are defined as the part of the intellectual property rights which confers the
rights of exclusivity to the visual designs of objects which are generally not popular utilitarian. It
safeguards the appearance, style, design of the industrial object such as spare parts, textiles,
furniture. According to the Industrial Design Society of America (IDSA), "Industrial Design (ID) is the
professional service of creating and developing concepts and specifications that optimize the
function, value and appearance of products and systems for the mutual benefit of both user and
manufacturer." As these designs consist of the aesthetic features therefore they do not provide any
protection to the technical features of the article. The origin of design rights can be traced back in
the United Kingdom as 'Designing and Printing of Linen Act' (1787). 

Designs are used in different products and across the various industries like medical, handicrafts,
jewelry, electrical appliances etc. It precludes of any trademark or artistic type of work. In India the
ever first design related legislation was enacted by the British Government and was popularly
named as the Designs Act, 1911. The Hague Agreement in concern to the international deposit of
industrial designs, the WIPO administered treaty, the procedure of the international registration has
been laid down. The applicant intended to enjoy the industrial design rights can file the application
with the WIPO or in the national office of the nations which are member of the treaty. Due to the
application filing with the WIPO, the designs will be protected in various member nations of the
treaty. If the right holder wants to protect its rights in multiple jurisdictions then it is required to
seek protection separately from each nation. India has still not accepted the Hague System for the
International Registration of Industrial Designs, which offers the industrial design owner the right of
protecting its design product in various countries on mere filling of the application with the
international bureau of the WIPO. 

Advantages of Industrial Design Rights

Industrial designs help in making any product or item more beautiful and appealing ,henceforth they
help in increasing commercial viability of product and increases its market potentiality. The

16
industrial design registration helps in safeguarding the ornamental or aesthetic elements of the
article. Whenever an industrial design is being registered it gives an exclusionary rights to owner
against unauthorized use like copying or imitation by third party without his consent. This in turns
facilitate fair flow of investment. An effectual system also helps in benefiting public by encouraging
fair and effective competition and trading practices which at large bolster the creativity and the final
result comes in the form of attractive and beautiful products. Safeguarding of industrial designs help
in the overall economic development which promote creativity in the industrial arena. 

Industrial Design Rights in India

In present scenario, the Designs Act, 2000 and the Designs Rules, 2001 are governing the India's
design law. The industrial design registration grants the proprietor the exclusionary rights of selling,
importing and applying it to any product. India has adopted the 'first to file' system, which means
that the right holder should file the application on the earliest point of time to rule out the
possibility of any other person claiming for the rights of the intended designs. All such persons can
apply for the industrial design rights if they are the proprietor of the design and as far as the design
is new, not previously published in any nation, reproducible through the industrial means, not
against to the public order, distinct from the known designs, not consists of any obscene material,
eye catching. According to the designs law in India, the proprietor can file for the design application
only if they have their business center in India otherwise they are required to file the application
through the attorney/agent who will in turns design search, prepare file and finally done the
prosecution of the application. The applicant or its assignee can also file the application directly with
the filling of the requisite information. Applicants will be examined by the design offices for
ascertaining the availability of the intended designs.

The applicant must respond to any objection within the period of 3 months and if he fails to comply
with this time limit then the application would be considered to be rejected. Therefore, on the basis
of the responses of the objections filed by the applicant, the Controller of Designs determines that
whether the application should be accepted or canceled or should be put up for the hearing. The
registration of design is valid for the period of 10 years which can be extended further for 5 years on
the payment of renewable fees. One can transfer the rights of the industrial designs to other person
or party with the help of an assignment, transmission or license. Registered designs are kept to be
open for public inspection only after they publish in the office gazette by paying the prescribed fees.

There are some artistic work which is not possible to be registered as the design- a painting, a
sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph,
whether or not any such work possesses artistic quality, a work of architecture, any other work of
artistic craftsmanship. In case of the piracy of the registered designs, then the person who has
contravene the copyright in the design would be held liable for the fine not exceeding to Rs.25,000
and maximum to Rs.50,000. The registration of design can be canceled at any time after filing the
cancellation petition with the prescribed fees to the Controller of Designs.

17
Advantages of Intellectual Property Rights
Intellectual property rights help in providing exclusive rights to creator or inventor, thereby induces
them to distribute and share information and data instead of keeping it confidential. It provides legal
protection and offers them incentive of their work. Rights granted under the intellectual property act
helps in socio and economic development.

Intellectual Property Rights in India

India has defined the establishment of statutory, administrative and judicial framework for protecting
the intellectual property rights in the Indian territory, whether they connotes with the copyright, patent,
trademark, industrial designs or with other parts.

Tuning with the changing industrial world, the intellectual property rights have continued to strengthen
its position in the India. In 1999, the government has passed the important legislation in relation to the
protection of intellectual property rights on the terms of the worldwide practices and in accordance to
the India's obligations under the Trade Related Aspects of Intellectual Property Rights. It consists of -

 The Patents(Amendment) Act, 1999 which was passed on 10th March, 1999 in the Indian
Parliament for amending the Patents Act of 1970 which in turns facilitate to establish the mail
box system for filing patents and accords with the exclusive marketing rights for the time period
of 5 years.
 The Trade Marks Bill, 1999 was passed in the India parliament during the winter session for
replacing the Trade and Merchandise Marks Act, 1958. It was passed on 23rd December, 1999.
 The Copyright(Amendment) Act, 1999 was passed by both upper house and lower house of the
Indian parliament and was later on signed by the Indian president on 30th December, 1999.
 The sui generis legislation was approved by both houses of the Indian parliament on 23rd
December, 1999 and was named as the Geographical Indications of Goods (Registration &
Protection) Bill, 1999.
 The Industrial Designs Bill, 1999 was passed in the Upper House of the Indian parliament for
replacing the Designs Act, 1911.
 The Patents (Second Amendment) Bill, 1999 was introduced in the upper house of the
parliament for further amending the Patents Act 1970 and making it compliance with the TRIPS.

Along with the above legislative measures, the Indian government has introduced several changes for
streamlining and bolstering the intellectual property administration system in the nation. Several
projects concerning to the modernizing of the patent information services and trademark registry have
been undergone with the help of the World Intellectual Property Organization/ United Nations
Development Programme.

PATENT CLAIMS

Patent claims are the part of a patent or patent application that defines the scope of protection granted
by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent,
or the protection sought in a patent application. The claims are of the utmost importance both
during prosecution and litigation.

For instance, a claim could read:

18
 "An apparatus for catching mice, said apparatus comprising a base for placement on a surface, a
spring member..."
 "A chemical composition for cleaning windows, said composition comprising 10–15%
ammonia, ..."
 "Method for computing future life expectancies, said method comprising gathering data
including X, Y, Z, ..."

A patent is a right to exclude others from making, using, selling or offering for sale the subject matter
defined by the claims. In order to exclude someone from using a patented invention in a court, the
patent owner, or patentee, needs to demonstrate that what the other person is using falls within the
scope of a claim of the patent. Therefore, it is more valuable to obtain claims that include the minimal
set of limitations that differentiate an invention over what came before, i.e. the so-called prior art. On
the other hand, the fewer the limitations in a claim, the more likely it is that the claim will cover or "read
on" what came before and be rejected during examination or found to be invalid at a later time for lack
of novelty.
History

Patents have not always contained claims. In many European countries, patents did not contain claims
before the 1970s. It was then often difficult (and subjective) to decide whether a product infringed a
patent, since the sole basis to know the extent of protection was the description, in view of the prior art.
Claims have been necessary parts of U.S. patent applications since the enactment of the Patent Act of
1836.[1]

However, even among patent legal systems in which the claims are used as the reference to decide the
scope of protection conferred by a patent, the way the claims are used may vary substantially.
Traditionally, two types of claiming system exist:

 the central claiming system, according to which the claims identify the "centre" of the
patented invention. The exact scope of the protection depends on the actual nature of theinventor’s
contribution to the art in the concerned technology.
 the peripheral claiming system, according to which the claims identify the exact periphery, or
boundary, of the conferred protection. In this system, the burden of drafting good claims is much
higher on the patent applicant (or on his counsel). The applicant receives the protection he or she
requested and almost nothing more, provided that the invention isnew and non-obvious. This
theoretically makes it easier for third parties to examine whether infringement may exist or not.

No patent system today is a purely either central or peripheral, but the system used in Germany and
most of the other countries of continental Europe is considered more central than the system currently

19
used in the United Kingdom, the United States, and especially Japan, which are more peripheral.[citation
needed]
 In recent years, Japan's system has become more peripheral, [2] while the system used in the United
States has become less peripheral.[3][dubious  –  discuss]
Requirements and structure

In most modern patent laws, patent applications must have at least one claim, which are critical defining
elements of the patent and the primary subject of examination. In some patent laws however, a date of
filing may be obtained for an application which does not contain any claim. [4]

Under the European Patent Convention (EPC), a claim must define the matter for which the protection is
sought in terms of technical features. These technical features can be either structural (e.g. a nail,
a rivet) or functional (e.g. fastening means).

A claim may include the following parts (the terminology and requirements may however significantly
differ from one legislation to another):

 A preamble that recites the class of the invention, and optionally its primary properties,
purpose, or field: "An apparatus..." "A therapeutic method for treating cancer..." "A composition
having an affinity for protein X..." This preamble may also reference another claim and refine it, e.g.,
"The method of claim 1..." (See "dependent claim" below.). However, under the European Patent
Convention, the preamble has a different meaning. In an independent claim, it is everything which
precedes the expression "characterized in that" or "characterized by". [5]

 A "transitional" phrase that characterizes the elements that follow. The phrases "comprising",
"containing" and "including" are most often used and (under some patent laws, specifically US)
preferable, as it means "having at least the following elements..." and are therefore open (inclusive)
and do not exclude additional limitations. The phrases "consisting of" and "consisting essentially of"
are (under some patent laws, specifically US) more limiting, as they mean "having all and only" or
"virtually only" and are therefore closed (exclusive). In the US, the phrase "consisting of" excludes
additional limitations, while the phrase "consisting essentially of" excludes additional limitations
that would "materially affect the basic and novel characteristic(s) of the claimed invention". [6]

 A set of "limitations" that together describe the invention: "an X, a Y, and a Z connected to the X
and the Y." The elements should be described as though they interact or cooperate to achieve the
desired result.[7] The distinction between elements and limitations is explained in the article All
elements test.

20
 Optionally, a purpose clause that further describes the overall operation of the invention, or the
goal that the invention achieves ("wherein the Z simultaneously controls the X and Y," or "wherein
the Z accomplishes purpose W by controlling X and Y," etc.) [citation needed]
Interpretation or claim construction

The claims often comprise precise language. Certain words commonly used in claims have specific legal
meanings determined by one or more court decisions. These meanings may be different from common
usage. For instance, the word "comprises", when used in the claims of a United States patent, means
"consists at least of". By contrast, the word "consists" means "consists only of", which may lead to a very
different scope of protection.

Furthermore, in U.S. patent practice at least, inventors may "act as their own lexicographer" in a patent
application. That means that an inventor may give a common word or phrase a meaning that is very
specific and different from the normal definition of said word or phrase. Thus a claim must be
interpreted in light of the definitions provided in the specification of a patent. The specification of a
patent is a written description of how to make and use the invention (see also: sufficiency of disclosure).

Construction, whether of a patent or any other document, is of course not directly concerned
with what the author meant to say. There is no window into the mind of the patentee or the
author of any other document. Construction is objective in the sense that it is concerned with
what a reasonable person to whom the utterance was addressed would have understood the
author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the
meaning of the words the author used", but rather what the notional addressee would have
understood the author to mean by using those words. The meaning of words is a matter of
convention, governed by rules, which can be found in dictionaries and grammars. What the
author would have been understood to mean by using those words is not simply a matter of
rules. It is highly sensitive to the context of and background to the particular utterance. It
depends not only upon the words the author has chosen but also upon the identity of the
audience he is taken to have been addressing and the knowledge and assumptions which one
attributes to that audience.[8]

Basic types and categories

There are two basic types of claims:

 the independent claims, which stand on their own, and

21
 the dependent claims, which depend on a single claim or on several claims and generally
express particular embodiments as fall-back positions.

The expressions "in one embodiment", "in a preferred embodiment", "in a particular
embodiment", "in an advantageous embodiment" or the like often appear in the description of
patent applications and are used to introduce a particular implementation or method of carrying
out the invention.[9] These embodiments usually correspond to a dependent claim or could form
the basis of a dependent claim. Each dependent claim is, by law, more narrow than the
independent claim upon which it depends. Accordingly, it might appear that there would be little
purpose to the dependent claim. In reality, however, there are at least three advantages to the
patent applicant in submitting and obtaining a full string of dependent claims:

 Clarification of the independent claim language: Independent claims are typically written with
very broad terms, to avoid permitting competitors to circumvent the claim by altering some
aspect of the basic design. But when a broad term is used, it may raise a question as to the
scope of the term itself. For example, does a "base" include a "set of legs"? A dependent claim,
including the phrase, "wherein said base comprises a set of legs," if allowed by the patent
examiner, clarifies that it does. In practice, dependent claims are often used to home in on the
inventor's preferred embodiment of the invention (e.g., the actual product design that the
inventor intends to use.) The independent claim broadly describes the invention; dependent
claim #1 describes the invention in a narrower aspect that more specifically describes the
preferred embodiment; dependent claim #2 is narrower still; etc.

 Possible invalidity of base claim: It is impossible to know, when beginning the application
process and even at the time of patent issuance, if a patent claim is valid. This is because any
publication dated before the application's priority date and published anywhere on earth in any
language can invalidate the claim (excluding publications by the inventor published during the
grace period in certain countries such as U.S., Canada and Japan). Furthermore, even
applications that were not yet published at the time of filling, but have a priority date prior to
the priority date of the application, can also invalidate the claim. As it is impossible to gain an
absolute and complete knowledge of every publication on earth, not to mention unpublished
patent applications, there is always some degree of uncertainty. If the independent claim is
determined to be invalid, however, a dependent claim may nevertheless survive, and may still
be broad enough to bar competitors from valuable commercial territory.

 Claim differentiation: In United States patent law, under the doctrine of claim differentiation,
each claim is presumed to cover a different aspect of the invention than in each other claim.

22
 This doctrine may be relied upon to help maintain broad claim scope in the case where a claim
standing alone might be construed as having either a broad or a narrow interpretation. If a
dependent claim is added that depends from this "parent" claim but is specifically drawn to the
narrower interpretation, then the parent claim must necessarily be different - i.e., it must be
the broader interpretation.[citation needed] As construed in the courts, the doctrine of claim
differentiation dictates that it would be "improper for the courts to read into an independent
claim a limitation explicitly set forth in a dependent claim."Environmental Designs Lid. v. Union
Oil Co. of California, 713 F.2d , 699 (1984). . This means that if an independent claim recites a
chair with a plurality of legs, and a dependent claim depending from the independent recites a
chair with 4 legs, the independent claim is not limited to what is recited in the dependent
claim. The dependent claim protects chairs with 4 legs, and the independent claim protects
chairs with 4 legs as well as chairs having 2, 3, 5 or more legs.

Under the European Patent Convention, when a claim in one particular category (see below),
e.g. a process claim, depends on a claim from a different category, e.g. a product claim, it is
not considered to be a dependent claim but an independent claim. Under U.S. law, this is still
counted as a dependent claim, regardless of the class change. [citation needed]

The rules of claim drafting also permit "multiple dependent claims" that reference more than
one other claim, e.g.: "3. The method of claims 1 or 2, further comprising..." The rules for this
are quite specific: specific claims must be referenced ("the method of any of these other
claims" is incorrect); the claims must be referenced in the alternative ("the method of claims
1 and 2" is incorrect); etc. While still acceptable, this claim style is seldom used in the U.S.
because it is counted for filing fee purposes according to the number of claims that it
references. Thus, if the claim depends from three former claims, it is counted for fee
purposes as three dependent claims. In light of the "excess claim" fees currently imposed by
the USPTO, this tactic can quickly become expensive. Multiple dependent claims are,
however, very commonly used in other jurisdictions, including Canada and Europe [10][11][citation
needed]

Claims can also be classified in categories, i.e. in terms of what they claim. A claim can refer
to

 a physical entity, i.e. a product (or material) or an apparatus (or device, system, article, ...).
The claim is then called respectively "product claim" or "apparatus claim"; or
 an activity, i.e. a process (or method) or a use. The claim is then called respectively "process
claim" (or method claim) or "use claim".

23
 Special types of claims
Main article:  List of patent claim types

In addition to the above basic claim types, there are also many special types of claim which
are used in different circumstances. Sometimes a particular claim form is required by law if a
patent is to be granted for a particular invention, such as for a second medical use of a
known substance where the "Swiss-type" claim might be required. Another reason to use a
particular claim might be to catch a particular class of infringer.

The procedure for getting a patent (Legal Process)

Patent rights are granted by national Patent Offices, and so patent protection for an invention must be
sought in each country individually. The procedure generally involves three steps. First, the person (or
company) seeking patent protection must file a patent application at the Patent Office.

Second, the Patent Office then performs a novelty search, which involves checking all the literature
available to it to find documents that describe the invention in part or in whole. In this search, only
documents that were published before the date of filing of the application are to be considered.

And third, an Examiner decides on the patentability of the invention in light of the report of the novelty
search. The applicant of course has the right to discuss the findings of the Examiner, to argue about
interpretation of the literature found, and to limit the scope of his patent if necessary. If, after that,
there is still an invention left, the applicant is granted a patent for it.

The patent application

The first step in getting a patent on an invention is writing a patent application. In this application,
the inventor must disclose the invention in sufficient detail for the average skilled person to be
able to reconstruct it. This way, anyone should be able to rebuild the invention and apply it
himself once the patent rights run out.

A patent application typically consists of six parts:

1. A statement identifying the field of the invention, or the type of apparatus, device, method or
other object it relates to.
2. An introductory portion, which describes what is known at the time of writing with respect to
this field, and which identifies a problem, disadvantage or need that exists therein.
3. A brief description of the invention, stating the measures taken in the apparatus or method
according to the invention, and the advantages or solutions it brings.
4. A detailed description, in the above-mentioned level of detail. This detailed description should
mention all aspects of the invention. In some countries it is even required to describe
the best way to practice the invention (the "best mode"). In any case, the description should fully
describe all aspects of the invention. The detailed description is almost always accompanied by a
number of figures. The figures are usually found at the end of the application, except for US
patent applications, where they are present at the beginning.

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 5. A number of claims. A claim can be regarded as a definition of what the inventor is trying to
claim as "his" invention. There are two types of claims. Independent claims stand on their own;
they provide a complete definition. If something else matches the definition of the independent
claim, it infringes on the patent. The dependent claims refer back to the independent claims, and
provide additional (optional) measures. Should an independent claim be declared invalid, the
dependent claims referring back to that claim can be used as a fallback position.Claims can be
defined in various categories, such as apparatus, arrangement, device, method, system, computer
program, medicine, and so on.
6. An abstract, which gives a short description of what the invention is about. The abstract is not
legally binding and does not serve to identify the scope in any way - that's what the claims are for.
The abstract is there to help readers quickly examine the relevance of the patent.

Writing a patent application is a tricky business, especially when it comes to claim writing. It is
common for an inventor to write a detailed description and figures himself, while the claims and
the brief description are written by a patent attorney based on the information in the detailed
description.

While the claims define the invention, they are to be interpreted in the light of the wording as
used in the rest of the application. So, for instance, if a claim uses the word "round", then
normally that means exclusively perfectly round. The description, however, might include a
phrase like "The shape does not have to be perfectly round", in which case a slight deviation is
permissible to still fall under the definition of the claim. The description might even say "The word
'round' is used here to mean any kind of geometrical shape, including but not limited to square,
rectangular, elliptical or curved in any other way", in which case almost any shape would be
considered to fall under the heading 'round'. Or, as a common saying goes, a patent drafter is his
own lexicographer. For more information regarding the scope of a patent and claim
interpretation, seeDetermining the scope of a patent.

The publication
A patent application is published 18 months after it has been filed (or 18 months after its priority
application, if any, has been filed). This way, the world is informed about the fact that a patent
can be expected on that particular invention. Someone else using the invention could then switch
to a different technology, or make reservations to pay for a license once the patent is granted. He
could also start looking for relevant prior art (for example, documents on his own use of the
invention before the filing date) to get the patent annulled if it is granted eventually.

Until November 2000, the US patent office did not publish applications, but instead only
published the granted patents. This meant that someone else using the invention would not have
any time to take preventive action. The reason for not publishing is that it robs the inventor from
the chance of withdrawing the application if it becomes apparent he will be unable to get a patent
on it. Once it has been published, the invention is there for all to see, and the inventor has lost
control. If the patent application is subsequently rejected, the inventor can't gain exclusivity
through his patent nor through keeping the invention a trade secret.

During the examination process, the applicant has the chance to modify his claims, and
sometimes part of the description. This means that the patent as granted might differ

25
 substantially from the patent application as published. The patent as granted is also published,
and the rights granted by a patent becomes effective upon publication.

The novelty search

In order to determine whether an invention is patentable, it must be compared against what was
known at the day before the day of filing of the application. This is known as the state of the art.
Documents that were not available until on the day of filing are to be disregarded because they
were not part of the state of the art at the day of filing (see When is something prior art against a
patent?).

Some countries, most notably the USA, have a so-called "grace period". Publications by the
inventor during the grace period, which can range to up to one year before the filing of the patent
application, are also not considered to be part of the state of the art. However, this of course only
applies to the patent application for the countries in which such a grace period exists. In other
countries, the document will be considered of part of the state of the art.

While in general the term "document" it used, in practice any revelation regarding the invention is
to be considered to be in the state of the art. So, if the invention was publicly shown at an
exhibition before the date of filing, then the presentation is considered to be part of the state of
the art. If the inventor told someone about the invention before filing a patent application, then
that oral disclosure is part of the state of the art. If such an exhibition or oral disclosure describe
all the features of the invention, then the invention is not novel with respect to the state of the
art. Proving that the inventor in fact did orally disclose the invention before the patent application
was found can be rather difficult, though.

Almost always, the searcher will only consider databases containing printed publications because
they are the easiest to search. Based on what he finds in those databases, he draws up a search
report which gets published next to the patent application. The applicant can than evaluate the
search results and decide whether there is anything patentable left. If so, the patent application
moves to the next stage: the examination.

The examination
In this stage, the patent application is compared against the state of the art by an Examiner, who
makes a determination whether the invention is novel and whether it involves an inventive step.
In order to accurately determine what the invention is, each patent application contains a number
of claims at the end of the application. These claims define the invention and indicate for what
patent protection is sought. So, the application may describe in very broad wording how the
apparatus according to the invention to be constructed, but if the claims described only one
specific example, than that specific example is considered to be the invention, regardless of the
rest of the application.

To determine whether the invention is novel and involves an inventive step, the Examiner only
looks at the claims. If all the elements that are mentioned in the claims are also found in a single
document that is part of the state of the art, then the invention is not novel. If the invention is
novel, but adding the missing features is considered to be obvious, then the invention lacks an
inventive step. The Examiner communicates his findings to the applicant, in the form of a so-
called Office Action or Communication.

26
 Generally, the applicant will disagree with the findings of the Examiner. He can then respond to
the Communication of the Examiner by pointing out the certain features of the claim are missing
in the state of the art, or that a combination of documents made by the Examiner is not proper.
He may also introduce additional features in claims, so as to distinguish the invention as claimed
from the state of the art.

Often, a claim is followed by a series of so-called dependent claims, which list additional features.
Adding a new feature to a claim is then often done by combining the first, independent claim with
one or more of the dependent claims. For example, the first claim may describe a method of
compressing an image that works by applying run-length encoding on continuous areas of the
image. A subsequent dependent claim could then give the additional feature of reducing the
number of colors in the color palette. If run-length encoding of continuous areas is found to be
present in the state of the art, then the first claim is rejected for lack of novelty. The applicant
could then combine the dependent claim and the independent claim to overcome this objection.

The Examiner then has to consider whether a method of compressing an image involving RLE
coding and palette adjusting is known in the state of the art. He could then, for example, locate
another document which explains that a good compression level is achieved by reducing the
number of colors in the palette, and use this document as an argument that the invention lacks an
inventive step. The applicant would then have to find a new feature to add to the independent
claim or withdraw his application. If the Examiner can find no such document and no such hint
anywhere in other documents, then the application apparently does involve an inventive step,
and the Examiner will grant a patent.

Of course, a patent is not immune after grant. It is possible to invalidate a patent at any moment
based on the fact that it is not novel or that it is obvious over the prior art, as long as the
appropriate evidence can be given.

Owning IPR- Ex. Patent

A patent gives its owner the right to exclude others from making, using or selling an invention. In most
countries this right only applies to commercial activities by others. And it is usually allowed to use a
patented invention for research purposes.

The scope of a patent is exclusively determined by the claims. Something infringes a patent only if it has
all the elements of a claim in the patent, or performs all the steps of a claim. As this could lead to unfair
situations, most countries have developed the so-called doctrine of equivalence. With this doctrine,
there can still be infringement if an element in the allegedly infringing product is an equivalent of an
element in the claim that does not occur literally in this product.

The rights granted by a patent

Using the invention

A patent gives its owner the right to exclude others from using an invention. Strictly
speaking, it does not grant its owner the right to use the invention himself, since there
may be other patents held by others that are necessary for that. For example, to build
a car you need an engine, a transmission and wheels. Each of these could be
protected by one or more patents held by different entities. This would mean that

27
 none of them could build a car without the permission of the others. However, any of
them could stop an outsider from building a car.

The rights to the invention held by the patent owner are typically formulated very
broadly. US law sums it up very nicely by granting the owner the right to "make, use
or sell" the invention.

Commercial and noncommercial use

In most European countries, the exclusive exploitation rights granted by a patent are
restricted to commercial exploitation. A private person who builds the patented
invention in his own home for his own personal goals cannot infringe on a patent. The
reasoning behind this is that such a situation cannot harm the patent holder.

US law is more strict. It forbids anyone from making, using or selling the invention,
even when the use is strictly personal. Of course, since patent infringement lawsuits
are very expensive, a private person is rarely if ever prosecuted for using the invention
in his own home. Such a situation could occur when a private person offers on his
website a piece of software that uses someone else's patented technology. The patent
holder may feel that the freely available software threatens his commercial product,
and then decide to use the patent to prevent the distribution of the free product.

Studying the invention

It is always permissible to use a patented invention for research purposes. Such study
may give new insights in possible uses of the invention, or possible alternatives to
what is described in the patent. This might even result in new patents for the
alternatives, or in workarounds.

Of course, the "research" should not simply be a commercial exploitation in disguise.

The scope of a patent

The claims
The scope of a patent is exclusively determined by the claims. The specification may
describe the invention quite broadly and mark almost everything as being optional,
but if the claims state the invention contains some element, then that element is
mandatory nonetheless.

Claim drafting and interpretation is an arcane art. Over the years courts have
interpreted claim language more strictly. In response, patent practitioners have taken
to using more generic terms and legally more secure phrasing. For instance patents
today more and more often use functional terms ("means for receiving an electrical
signal" rather than "an antenna").

Something infringes a patent if it has all the elements of a claim in the patent, or
performs all the steps of a claim. It does not have to match all the claims, a single one
will do. However, it is important that it matches all elements in that single claim. Most
patent courts take this requirement quite strictly and will not easily ignore an element
in a claim unless it is clearly irrelevant. One often-heard argument against ignoring an

28
element is that patent writers are aware of the strict interpretation and so would not
put in an element unless necessary. Therefore, an element that is present in the claim
must have been deemed necessary and so may not be ignored.

Infringement through equivalence

In practice, claim infringement determination is not quite as simple as this. Often
elements in the claim are not literally the same as in the allegedly infringing product.
As this could lead to unfair situations, most countries have developed the so-called
doctrine of equivalence. When using this doctrine, the courts determine if the feature
in the allegedly infringing product is an equivalent of the element in the claim. When
something is an equivalent is something that strongly depends on the wording of the
patent and the state of the case law at the time. For example, if the patent clearly
states "The word 'water' in this specification should be read as meaning any fluid with
property X", then any fluid with property X is seen as an equivalent of 'water' for the
purpose of determining infringement.

The more well-known it is that certain elements have equivalents, the less likely it is
that a court will accept infringement under the doctrine of equivalence. For example,
everyone knows a nail is equivalent to a screw, and that the accepted general term is
'fastening means'. If a claim then nevertheless mentions the use of a nail to connect
two elements, the chance that a court will rule the use of a screw to be equivalent is
small. After all, when the patent does not use the general term, the author must have
had a reason to use the specific term.

Unfortunately, the concept of equivalence and how it is applied varies greatly from
country to country and from patent to patent. Sometimes new laws or case law
significantly change the scope of a patent.

Other relevant factors

Another complicating factor is that often during the prosecution at the various patent
offices, the applicant will present arguments showing that the elements in the claim
are different from those in the prior art, to overcome an objection that the claimed
invention is not novel. So, for example, the applicant may argue that, in this invention,
'nail' should be read specifically as a nail, which makes it different from the prior art
which uses a screw. If this is successful, he will be granted a patent that mentions
'nail' as an element in the claim.

However, he should not be able to then prosecute an infringer who uses screws
instead of nails. This is referred to as 'file wrapper estoppel' or 'prosecution history
estoppel'. In practice, it means that you have to study the correspondence between
applicant and patent office to determine if any such arguments have been made.

There are also more specialist issues, such as the priority date of the patent and the
individual claims. However, these are very difficult.

29
TRIPS

Overview: the TRIPS Agreement

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive
multilateral agreement on intellectual property.

The areas of intellectual property that it covers are: copyright and related rights (i.e. the rights of
performers, producers of sound recordings and broadcasting organizations); trademarks including service
marks;geographical indications including appellations of origin; industrial designs;patents including the
protection of new varieties of plants; the layout-designs of integrated circuits; and undisclosed
information including trade secrets and test data.

The three main features of the Agreement are:

 Standards. In respect of each of the main areas of intellectual property covered by the TRIPS
Agreement, the Agreement sets out the minimum standards of protection to be provided by each
Member. Each of the main elements of protection is defined, namely the subject-matter to be
protected, the rights to be conferred and permissible exceptions to those rights, and the minimum
duration of protection. The Agreement sets these standards by requiring, first, that the substantive
obligations of the main conventions of the WIPO, the Paris Convention for the Protection of
Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and
Artistic Works (Berne Convention) in their most recent versions, must be complied with. With the
exception of the provisions of the Berne Convention on moral rights, all the main substantive
provisions of these conventions are incorporated by reference and thus become obligations under
the TRIPS Agreement between TRIPS Member countries. The relevant provisions are to be found in
Articles 2.1 and 9.1 of the TRIPS Agreement, which relate, respectively, to the Paris Convention and
to the Berne Convention. Secondly, the TRIPS Agreement adds a substantial number of additional
obligations on matters where the pre-existing conventions are silent or were seen as being
inadequate. The TRIPS Agreement is thus sometimes referred to as a Berne and Paris-plus
agreement.

 Enforcement. The second main set of provisions deals with domestic procedures and remedies for
the enforcement of intellectual property rights. The Agreement lays down certain general principles
applicable to all IPR enforcement procedures. In addition, it contains provisions on civil and
administrative procedures and remedies, provisional measures, special requirements related to
border measures and criminal procedures, which specify, in a certain amount of detail, the
procedures and remedies that must be available so that right holders can effectively enforce their
rights.

 Dispute settlement. The Agreement makes disputes between WTO Members about the respect of
the TRIPS obligations subject to the WTO's dispute settlement procedures.

30
Origins: into the rule-based trade system.... 

Ideas and knowledge are an increasingly important part of trade. Most of the value of new medicines and other
high technology products lies in the amount of invention, innovation, research, design and testing involved.  
Films, music recordings, books, computer software and on-line services are bought and sold because of the
information and creativity they contain, not usually because of the plastic, metal or paper used to make them.
Many products that used to be traded as low-technology goods or commodities now contain a higher
proportion of invention and design in their value — for example brandnamed clothing or new varieties of
plants.

Creators can be given the right to prevent others from using their inventions, designs or other creations — and
to use that right to negotiate payment in return for others using them. These are “intellectual property rights”.
They take a number of forms. For example books, paintings and films come under copyright; inventions can be
patented; brandnames and product logos can be registered as trademarks; and so on. Governments and
parliaments have given creators these rights as an incentive to produce ideas that will benefit society as a
whole.

The extent of protection and enforcement of these rights varied widely around the world; and as intellectual
property became more important in trade, these differences became a source of tension in international
economic relations. New internationally-agreed trade rules for intellectual property rights were seen as a way
to introduce more order and predictability, and for disputes to be settled more systematically.

The Uruguay Round achieved that. The WTO’s TRIPS Agreement is an attempt to narrow the gaps in the way
these rights are protected around the world, and to bring them under common international rules. It
establishes minimum levels of protection that each government has to give to the intellectual property of
fellow WTO members. In doing so, it strikes a balance between the long term benefits and possible short term
costs to society. Society benefits in the long term when intellectual property protection encourages creation
and invention, especially when the period of protection expires and the creations and inventions enter the
public domain. Governments are allowed to reduce any short term costs through various exceptions, for
example to tackle public health problems. And, when there are trade disputes over intellectual property rights,
the WTO’s dispute settlement system is now available.

The agreement covers five broad issues:

  how basic principles of the trading system and other international intellectual property agreements should
be applied
  how to give adequate protection to intellectual property rights
  how countries should enforce those rights adequately in their own territories
  how to settle disputes on intellectual property between members of the WTO
  special transitional arrangements during the period when the new system is being introduced.

Basic principles: national treatment, MFN, and balanced protection

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As in GATT and GATS, the starting point of the intellectual property agreement is basic principles. And as in the
two other agreements, non-discrimination features prominently: national treatment (treating one’s own
nationals and foreigners equally), and most-favoured-nation treatment (equal treatment for nationals of all
trading partners in the WTO). National treatment is also a key principle in other intellectual property
agreements outside the WTO.

The TRIPS Agreement has an additional important principle: intellectual property protection should contribute
to technical innovation and the transfer of technology. Both producers and users should benefit, and economic
and social welfare should be enhanced, the agreement says.

How to protect intellectual property: common ground-rules 

The second part of the TRIPS agreement looks at different kinds of intellectual property rights and how to
protect them. The purpose is to ensure that adequate standards of protection exist in all member countries.
Here the starting point is the obligations of the main international agreements of the World Intellectual
Property Organization (WIPO) that already existed before the WTO was created:

  the Paris Convention for the Protection of Industrial Property (patents, industrial designs, etc)
  the Berne Convention for the Protection of Literary and Artistic Works(copyright).

Some areas are not covered by these conventions. In some cases, the standards of protection prescribed were
thought inadequate. So the TRIPS agreement adds a significant number of new or higher standards.

Copyright

The TRIPS agreement ensures that computer programs will be protected as literary works under the Berne
Convention and outlines how databases should be protected.

It also expands international copyright rules to cover rental rights. Authors of computer programs and
producers of sound recordings must have the right to prohibit the commercial rental of their works to the
public. A similar exclusive right applies to films where commercial rental has led to widespread copying,
affecting copyright-owners’ potential earnings from their films.

The agreement says performers must also have the right to prevent unauthorized recording, reproduction and
broadcast of live performances (bootlegging) for no less than 50 years. Producers of sound recordings must
have the right to prevent the unauthorized reproduction of recordings for a period of 50 years.

Trademarks 

The agreement defines what types of signs must be eligible for protection as trademarks, and what the

32
minimum rights conferred on their owners must be. It says that service marks must be protected in the same
way as trademarks used for goods. Marks that have become well-known in a particular country enjoy additional
protection.

Geographical indications  A place name is sometimes used to identify a product. This “geographical indication”
does not only say where the product was made. More importantly, it identifies the product’s special
characteristics, which are the result of the product’s origins.

Well-known examples include “Champagne”, “Scotch”, “Tequila”, and “Roquefort” cheese. Wine and spirits
makers are particularly concerned about the use of place-names to identify products, and the TRIPS Agreement
contains special provisions for these products. But the issue is also important for other types of goods.

Using the place name when the product was made elsewhere or when it does not have the usual
characteristics can mislead consumers, and it can lead to unfair competition. The TRIPS Agreement says
countries have to prevent this misuse of place names.

For wines and spirits, the agreement provides higher levels of protection, i.e. even where there is no danger of
the public being misled.

Some exceptions are allowed, for example if the name is already protected as a trademark or if it has become a
generic term. For example, “cheddar” now refers to a particular type of cheese not necessarily made in
Cheddar, in the UK. But any country wanting to make an exception for these reasons must be willing to
negotiate with the country which wants to protect the geographical indication in question.

The agreement provides for further negotiations in the WTO to establish a multilateral system of notification
and registration of geographical indications for wines. These are now part of the Doha Development Agenda
and they include spirits. Also debated in the WTO is whether to negotiate extending this higher level of
protection beyond wines and spirits.

Industrial designs  Under the TRIPS Agreement, industrial designs must be protected for at least 10 years.
Owners of protected designs must be able to prevent the manufacture, sale or importation of articles bearing
or embodying a design which is a copy of the protected design.

Basic requirements for a patent

33
If an invention is considered to be in a permissible field of endeavor, it still must pass a substantive
examination before a patent can be granted for it. There are three important requirements that an
invention must satisfy: the invention must be novel, the invention must be inventive, and the invention
must have industrial applications. When assessing the novelty and inventiveness of an invention, only
documents published before the day of filing (or day of filing of the priority application, if there is one)
are to be taken into account. These documents are often referred to as "the state of the art" or "the
prior art".

Novelty
The first requirement for any invention is that it is novel in the absolute sense. That is, it was not
available to the public in any way before the filing date of the patent, and was not described in
any publication before that date either (see When is something prior art against a patent?). Some
countries, most notably the USA, have a so-called "grace period". Publications by the inventor
during the grace period, which can range to up to one year before the filing of the patent
application, are not regarded when determining the novelty of the invention.

The novelty requirement is fairly strict: the complete invention must be described in one single
document for that document to be considered novelty-destroying. To take the canonical example,
if the invention describes that something is connected to a wall with a nail, and the publication
describes the very same system except with the use of a screw instead of a nail, then the
invention is novel with respect to that publication.

In some cases, the determination of novelty can get extremely picky. For example, if a publication
describes a chemical process involving the use of between 5 and 15% of a specific substance, and
the invention lies in the use of exactly 10% of that substance, then the invention is novel because
the value of 10% was not mentioned in the publication. On the other hand, if the invention lies in
the use of exactly 15% of that substance, then the invention is not novel.

Of course, a skilled person will generally understand that a nail can easily be replaced by a screw
or that he could choose, for example, a value of 10% in the method. However, in patent law, is it
considered to be a matter of obviousness, and not of novelty. In some cases, this distinction can
be very important.

Obviousness
Even if an invention is found to be novel in the strict sense, it may still be unpatentable because it
is considered to be obvious to a person skilled in the art. It should be stressed that the term
obvious is a legal term of art, and is used in a sense quite different from the ordinary meaning of
the word. Further, the legal interpretation of the term obviousness varies from country to
country.

In general, it can be said that something is obvious if it can be demonstrated that the literature at
the time of the invention contains a suggestion or a hint to apply that measure in a situation in
which it was applied in the invention. It is not permitted to use hindsight when assessing
obviousness. The invention could lie in the insight that several measures are to be combined, and
in hindsight the combination could then appear obvious. But it was only obvious after the
inventor made the combination!

34
 So, for example, something is obvious when it is mentioned in a standard text book, or when a
document explicitly refers to another document, which other document completely describes the
additional measure. It is, however, in general not obvious merely when was in fact described in a
publication. It must be demonstrated that the skilled person would be led to that publication and
would apply it in a situation as it occurred in the patent.

The European Patent Office has a slightly more strict interpretation of this requirement, and uses
the term "inventive step" to stress this. An invention involves an inventive step if it provides a
solution to a technical problem which can be found in the state of the art, and this solution is not
obvious for a person skilled in the art. If no technical problem can be found, there is no inventive
step. How this works in practice is discussed in more detail in When is an invention obvious?.

The requirement for an inventive step is also present in the Patent Cooperation Treaty (PCT) but a
footnote remarks that the term "inventive step" may be read as "not being obvious".

Industrial application
The third requirement for patent protection mainly aims to distinguish between aesthetical and
scientific inventions. The term "industry" should be interpreted very broadly; it also includes
agriculture. It does exclude methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practice on the human or animal body. Perpetual motion
machines also fail to meet this requirement.

In the US, the third requirement is referred to as "utility"; however, interpretation and scope of
this term is generally the same as that of the industrial application. International patent treaties
often use "utility" and "industrial application" as synonyms.

Introduction to Biotechnological Patents

Research and development in the life sciences is extremely costly and time-consuming. The
pharmaceutical industry provides a good example of the time-scales and funding one needs in order to
bring a drug or biological product to market, and most academic or other research programmes do not
have these resources available.

However, in order to leverage funding or to recoup your investment in research, there is usually one
prerequisite required by private and, increasingly, public funders - a clearly defined patent right to the
invention. Consequently, without patent protection for usable inventions, investments in science
diminish.
Background to Biotechnological Patents

The patent system has evolved over the past four centuries to afford patent monopolies to certain
individuals who have invested effort and ingenuity in devising new or better solutions to existing
problems. Patent monopolies are granted to such individuals as an incentive for them to exploit their
patented inventions without having to fend off unfair competition. As a consequence of this, the patent
system stimulates further innovation, as competitors advance the field while attempting to find
alternative ways of solving the same or similar problems. Far from stifling innovation, patents have been
instrumental in fostering advances in technology.

35
How can I obtain patent protection for my life sciences invention?

As you will see from our enclosed patent brochure, all inventions must be novel, inventive and useful in
order to be eligible for patent protection. Biotechnological or life sciences inventions are no exception,
but it is the manner in which these requirements are addressed that can curb or extend the patent
protection you acquire. Certain sections of local and foreign patent legislation deal specifically with
inventions relating to biological processes or products and these requirements must be adhered to.
Furthermore, only inventions and not mere discoveries are eligible for patent protection - an invention
goes further than a mere discovery, as it provides a practical application of the discovery in order to
provide a solution to a problem.
Examples of life science inventions which may be eligible for patent protection:

Listed below are examples of life sciences inventions that may be eligible for patent protection. These
patent examples should not be considered exhaustive or complete, but serve merely as a guide as to
what may possibly be patented in your discipline. Your invention may, of course, encompass several of
these artificial classifications and you eventual patent application will most likely be a mosaic covering
several aspects of each of these patent classes.

Genetic engineering patents

Isolated DNA sequences, proteins to which functions have been ascribed, and other metabolites are
usually viewed in patent terms as chemical compounds, much like a new organic drug molecule. The
unique sequence of the nucleotides or amino acids that you have uncovered constitutes a novel
biological molecule (much like a novel chemical molecule) and may thus be patentable. In addition,
vectors containing your nucleotide sequence and cells containing the vector/DNA may also be patented,
provided they are new.

Microbiological sciences patents

South African patent law provides specifically for the patenting of microbiological processes (such as
fermentation or brewing) and the products derived therefrom. This would obviously include genetically
modified organisms used in such processes, which may also be eligible for patent protection. In addition,
new microbes that you have isolated, purified and cultured are generally considered patentable,
provided they can fulfill the usefulness patent requirement described above. There are, however,
certain preconditions for patent applications regarding the depositing of sample materials that have to
be met - this is discussed below.

Plant and Animal sciences patents

According to the patent laws of several countries, one cannot obtain patent protection for plant or
animal varieties, or essentially biological processes for the production of plants or animals. However, as
there has been no South African case law addressing this aspect of patent law, one has to look further
afield to European and UK patent court decisions. It appears from the European Biotech Directive and
the UK Patent Office practice manual that patent claims to a genetically modified plant per se (and not
to a plant variety) are allowable in a patent application. While this difference may seem pedantic, it
represents the difference between a patent application that may be considered valid and one that is
invalid. The term "essentially biological processes" for plant or animal production refer generally to the
process of obtaining new varieties by traditional breeding methods - plants or animals obtained in this
way are not considered patentable. Should you have originated a new plant variety by conventional
breeding, however, this may be protected by way of a Plant Breeders' Rights application in South Africa,
and not a patent. The USA is the exception to this and issues so-called Plant Patents. Please let us know

36
should you require patent assistance in this regard.

Similarly, patent claims to animals obtained by traditional breeding methods are not allowable at most
Patent Offices, but a genetically modified animal is considered patentable in the UK, Europe and USA.
There is currently no equivalent in the animal sciences field to the protection offered by Plant Breeders'
Rights.

Diagnostics patents
Primers used for diagnostic purposes may be protected by way of patents, as well as kits containing such
primers. Single nucleotide polymorphisms and expressed sequence tags may under certain strict
conditions be considered patentable and of use in diagnostics, but they may fall foul of the utility patent
requirement discussed above. In addition, novel antigens and receptors that you have located may also
be protected by way of a patent, provided you have ascribed a function to them. Novel monoclonal
antibodies and immunological tests (such as ELISA tests) using novel antibodies are also worthy of
patent protection. In addition, other novel diagnostic tests may also be patentable.

Pharmaceutical and chemical sciences patents

Novel purified chemical or pharmaceutical compounds are patentable, as well as their pharmaceutically
acceptable isomers and salts. Crude extracts in which a compound is enriched may also be patentable,
depending on the level of enrichment relative to the natural, unfractionated state. Importantly, novel
pharmaceutical carriers may also be patented. Patent protection may also be obtained for
pharmaceutical compositions containing your novel pharmaceutical compound.

Method of treatment patents

South African, British and European patent laws specifically exclude from patentability methods of
treatment by surgery, diagnosis, or therapy, if practised on the human or animal body. However, the
following may under certain circumstances be included in a patent application and may be used to
address the restriction on therapeutic treatments in patents:

 A substance or composition for use in a method of treatment; and

 The use of a substance in the manufacture of a medicament to treat a disease.

Medical sciences patents

Due to the patent restriction on methods of treatment, diagnosis or surgery mentioned above, surgical
techniques are specifically excluded from patent protection in these regions. However, instruments for
use in surgery, diagnosis or therapy may be patented. In addition, diagnosis based upon a sample
obtained from the body is allowable and should, accordingly, be limited to in vitro applications in a
patent application.
Further notes pertaining to biotechnological inventions and patents

With the great increase in biotechnological patent filings based upon new and advanced sequencing and
fractionation technologies, foreign examining Patent Offices have introduced more onerous
requirements on patent applicants filing patent applications for technologies relating to this field, in
order to counter the granting of overbroad patents. The patent examiners' objections relate particularly
to the patent requirements for inventiveness, utility and sufficiency of disclosure. We require a full
disclosure of your invention in order to fully and clearly describe the invention in sufficient detail in the

37
patent application. Although South Africa no longer requires patent applicants to disclose the best
method of performing an invention in the patent specification, this patent requirement is still required
by the Patent Offices of numerous foreign jurisdictions and it is a requirement that persons skilled in the
field of your technology be able to replicate your results by following the instructions in the patent
specification without undue experimentation. Similarly, one cannot obtain general patent protection for
DNA sequences of a novel gene in a number of species if one has only sequenced a single vertebrate or
invertebrate example. Description of the species usually does not allow protection for the genus in
patents in the biosciences. We can only protect what you have invented at the time of filing the patent
application and cannot artificially extend your patent rights to protect aspects that you have not shown
experimentally in the patent application.

Also, DNA sequences for which no function has been demonstrated are generally not considered
patentable any longer. On-line motif shopping is not enough and experimental results confirming the
predicted function(s) are increasingly being called for by foreign examining patent offices.
Micro-organisms and sufficiency of description in patent applications

As stated above, it is a requirement of patent law that the invention be sufficiently described in the
patent application. In the complex field of biotechnology, it is not always possible to fully describe a
microorganism in terms of physical, chemical and genetic characteristics in a patent specification. South
Africa is a signatory to the Budapest Treaty which provides a solution to this patent problem - patent
applicants may deposit a sample of the organism (as claimed in the patent specification) at a recognised
patent depository and in doing so may overcome patent examiners' arguments as regards insufficiency
of description of the microorganism in the patent application. The deposit number of the sample must
be reflected in the patent specification and the deposit must have been made before or at the time of
filing the patent application. Please feel free to contact us regarding the depositing of microbiological
samples for your patent applications.
Does obtaining patent protection preclude me from publishing my results?

No - however, you must always first file a provisional patent application before publishing your results,
should you wish to protect your patent rights. You may publish your results immediately following the
filing of your provisional patent application - you need not wait two or three years until your patent is
granted. However, if you publish your results following the filing of your provisional patent application
then you are committed to obtaining final patent protection in South Africa and any other foreign
countries where you require protection. If your patent application lapses or is not completed timeously
then you will lose all patent rights to your invention. As you have by then most likely published the
results (and subsequently lost your patent rights), competitors may be free to copy your research
without fear of prosecution. Your patent strategy and timelines should thus be seen as integral to your
research planning.

38
A biological patent is a patent relating to an invention or discovery in biology. It can be a composition of
matter, a method for obtaining or using one or more thereof, or a product combining such things. Even
when a natural biological substance itself is patented (apart from any associated process or usage), this
has been permitted in the United States as long as they are sufficiently "isolated" from their naturally-
occurring states. Prominent historical examples of such patents on isolated products of nature include
adrenaline, insulin, vitamin B12, and unmodified genes (the latter becoming its own notable controversy
as of late).

ISSUES

The 1970s marked the first time when scientists patented methods on their biotechnological inventions
with recombinant DNA. It wasn’t until 1980 that patents for whole-scale living organisms were
permitted. In Diamond v. Chakrabarty, the U.S. Supreme Court established the patentability of living
matter, provided it was truly "man-made." The subject for this particular case was a genetically-
engineered bacterium that was specifically modified to help clean up and degrade oil spills.

Since that 1980 court case, there has been much patenting of biological matter. Companies and
organizations, like the University of California, have patented entire genomes.[1] In 1998, the U.S. Patent
and Trademark Office (PTO) issued a broad patent claiming primate (including human) embryonic stem
cells, entitled "Primate Embryonic Stem Cells" (Patent 5,843,780). On 13 March 2001, a second patent
(6,200,806) was issued with the same title but focused on human embryonic stem cells.

Recently, there has been a slowdown and backlash against patenting biological material worldwide.
[edit]Controversy

Some believe that natural occurrences are not invented and thus should not be patentable. This is
especially true if the biological matter being patented can be found in humans, such as sequences
of DNA, which invokes a range of political and ethical arguments. The legal reasons for the controversy
can vary by different countries' standards for patentability. In the US, an invention must have some
"utility" but not necessarily an identified industrial application. According to Nielson and Whittaker
(2002), the “notion of ‘utility’ is less specific, it means it is useful” [2]. Beyond utility/usefulness, the US
also requires that inventions be new/novel and non-obvious.

Many outside the United States feel that the patenting of stem cells was rash and are seeking to reverse
patent rulings. In December 2006, Germany made an important precedent when it annulled the validity
of a stem cell patent. The German Federal Patent Court declared that anything made from human tissue
cannot be patented. The European Patent Office has ruled that certain stem cell lines, derived from
destruction of human embryos, were not to be granted a European patent. [3] Worldwide, people are
questioning the validity of stem cell patents. Wisconsin Alumni Research Foundation has sought to gain
approval for its US patent in Europe without success.

39
The backlash against stem cell patents is also occurring in the United States, but to a lesser degree.
Currently, an appeal against the patents is being processed by two non-profit organizations: The
Foundation for Taxpayer & Consumer Rights and Public Patent Foundation along with molecular
biologist Jeanne Loring of the Burnham Institute. They are fighting the validity of the patents by arguing
that two of the patents cover a technique published in 1992, already patented by an Australian scientist.
Another claim is that the techniques tied up with the patents are rendered obvious under a 1990 paper
and two textbooks.

Advocates who speak against biological patents suggest that the techniques and processes associated
with the discovery could be patentable but not the actual biological matter itself. For example, an
advocate against biological patents would suggest that a gene associated with cancer should not be
patented, but the test used to detect the gene could be.

There is some political and ethical controversy over whether these patents advance technology by
providing scientists at companies and universitieswith an incentive to create, or if they hinder basic
bench research via litigation or threat of litigation. The case that there are negative effects on basic
research appears to be mostly driven by academic law professors, and not by practicing university
scientists. See for example this page at The Hastings Center's website and this document at the journal,
Academic Medicine. There is data showing that gene patents have little to no effect on basic university
research provided at the Science Progress Blog.

There is also some controversy over whether and to what extent companies controlling gene patents
hinder clinical research and practice. One of the points raised in the 2009 Myriad case, was that Myriad
allegedly made efforts to prevent clinical trials to explore just how good their test was[citation needed] and that
Myriad's enforcement of its patent rights has prevented patients from receiving second opinions
regarding their test results.

Finally, the general controversy over the price of medical treatments comes into play. By strictly
enforcing its patent rights, Myriad has been able to charge a premium price for BRCA testing. [4]

While there is some controversy concerning the patenting of isolated genes and the way those patents
are used, and there is controversy concerning patents on the diagnostic uses of genes (the real source of
dispute in the Myriad court case), it is difficult to find controversy surrounding patents on genes that are
used to manufacture therapeutic proteins (for an example of patents on therapeutic proteins, the drug
candidate that is the subject of the early part of the movie 'Extraordinary Measures' was covered in part
by a classic gene patent, US Patent 6,770,468.[2]) There is also little controversy concerning the role of
gene patents in the chemical industry—for instance in the manufacture of enzymes used in consumer

40
products or industrial processes.[3] In descriptions of the controversy over "gene patents", it is rare to
find references to these everyday uses of genes and gene patents. [citation needed]

In September 2010 in Australia, Melissa Parke, a member of Parliament, announced that she intends to
make a motion calling for amendments to the Patents Act so gene patents would no longer be
recognized for reasons similar to those in the Myriad case, discussed below. A news article on this
is here.
[edit]

Current Issues:

Gene patents ruled invalid by a U.S. federal court; ruling being appealed

A complaint against Myriad Genetics and the U.S. Patent and Trademark Office filed in 2009 by
professional medical organizations, doctors, and patients, all represented by theAmerican Civil Liberties
Union, sought to invalidate and discontinue all patents for naturally-occurring genes, which have thus
far been issued on the grounds that such genes are "isolated and purified" to a non-naturally-occurring
state. Myriad owns some of its patents; some were licensed from University of Utah. Specific claims, but
not all claims, in seven of Myriad's 23 patents on BRCA1 and BRCA2 were challenged in the complaint.
The challenged claims covered the isolated genes as well as diagnostic methods.

Many people working in the patent field had predicted that the courts would throw out this case. [3]

However, the case was accepted, and all the challenged claims were ruled invalid on March 29, 2010
by United States District Court Judge Robert W. Sweet, a judge in the U.S. District Court for the Southern
District of New York.[2][3]

The claims that had not been challenged still stand. [3][5]

Judge Sweet's 152–page decision ruled that the challenged claims to the isolated gene sequences had
been "improperly granted" because they claimed unpatentable subject matter; the claims to the
diagnostic methods were found invalid under the recent In re Bilski decision.[3] Because the case could
be decided with patent law, Judge Sweet did not look at the challenge on First Amendment grounds and
dismissed them without prejudice.[3][5] In his decision handed down March 29, 2010, the judge rejected
the legal equivalency between 'chemical compositions' like purified adrenaline and DNA. In his
opinion [4] Judge Sweet said: "The information encoded in DNA is not information about its own
molecular structure incidental to its biological function, as is the case with adrenaline or other chemicals
found in the body...this informational quality (of DNA) is unique among the chemical compounds found
in our bodies, and it would be erroneous to view DNA as 'no different' than other chemicals previously
the subject of patents....DNA, in particular the ordering of its nucleotides, therefore serves as the

41
physical embodiment of laws of nature - those that define the construction of the human body…the
preservation of this defining characteristic of DNA in its native and isolated forms mandates the
conclusion that the challenged composition claims are to unpatentable products of nature."

The decision could prove far-reaching for the biotechnology field.[6][7]

However, on March 30, 2010, Myriad announced that it will appeal the decision. [8] On June 16, 2010,
Myriad filed its Notice of Appeal.

On October 29, 2010 the United States Department of Justice filed an amicus brief in this case.

The U.S. amicus brief supports Judge Sweet's decision on gene patents in some respects, and argues
against it in others. The amicus brief makes a distinction, on the one hand, between DNA that is isolated
and altered, and on the other hand, DNA that has simply been isolated. It argues that isolated and
altered DNA should be patentable, whereas DNA that is simply isolated should not be patentable. It
reads: "...the district court erroneously cast doubt on the patent-eligibility of a broad range of manmade
compositions of matter whose value derives from the information encoding capacity of DNA. Such
compositions—e.g., cDNAs, vectors, recombinant plasmids, and chimeric proteins, as well as countless
industrial products, such as vaccines and genetically modified crops, created with the aid of such
molecules—are in every meaningful sense the fruits of human ingenuity and thus qualify as "'human-
made inventions'" eligible for patent protection.... The district court therefore erred in invalidating the
challenged composition claims, such as claim 2 of the '282 patent, that are directed solely to cDNAs. The
district court correctly held, however, that genomic DNA that has merely been isolated from the human
body, without further alteration or manipulation, is not patent-eligible." [9]

ISSUES Contd.,

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