What is Compulsory Licensing of Patents in India?

Patents in India are granted

to encourage inventions and to secure that it is worked on a commercial scale. The Indian
Patent Act ensures that a Patentee should not be able to enjoy a monopoly for the
importation of the patented article.
The Patent Act provides measures by way of
compulsory licensing (CL) to ensure that the patents do not impede the protection of public
health and nutrition and the Patent Rights are not abused by the Patentee. The CL
therefore serves to strike balance between two disparate objectives- rewarding patentees
for their invention and making the patented products, particularly pharmaceutical products,
available to large population in developing and under developed countries at a cheaper and
affordable price.
Grant of Compulsory License due to NonWorking/Unaffordable Prices of Patented Article (Section 84):
Section 84 of
Indian Patent Act pertains to the grant of Compulsory Licences.
Compulsory Licences
are granted in order to: 1.Prevent the abuse of patent as a monopoly;
2.Make a way
for commercial exploitation of the patented invention by an interested person; and
3.Address the public health concern in India.
Any person interested or already the
holder of the licence under the patent can make request to the Controller for grant of
Compulsory Licence on patent after three years from the date of grant of that patent, on
the following grounds:
1.reasonable requirements of public have not been satisfied; or
2.patented invention is not available to the public at affordable price; or
3.patented
invention is not worked in the territory of India.
The Controller takes following
aspects into consideration while granting Compulsory Licence:
1.Nature of the
invention, i.e complexity of the technology;
2.Time which has elapsed since the grant
of the patent i.e. despite of the best efforts by the patentee or licensee since the grant of
patent, it was difficult to work out the invention at commercial scale to its fullest before the
application of the compulsory licence was filed to the Patent Office;
3.The measures
already taken by the patentees or any licensee to make full use of the invention;
4.Ability of the applicant to work the invention to the public advantage;
5.Capacity of
the applicant to undertake the risk in providing capital and working the invention, if
application were granted;
6.Applicant has made full efforts to obtain a licence from the
patentee on reasonable terms and conditions and such efforts have not been successful
within a reasonable period construed as a period not ordinarily exceeding a period of 6
months. Grant of Compulsory License for the Export of Pharmaceutical Products:
Article 31(f) of the TRIPS agreement undermined the need for availability of
medicines to the countries having less or no manufacturing capacity through importation
from other countries. WTO adopted a mechanism to resolve this problem by implementing
para 6 of the Doha Declaration on the TRIPS Agreement and Public Health on August 30,
2003. Obligation under Art 31(f) of the TRIPS agreement was thus waived off in case of
export of pharmaceutical product to the countries having least or no manufacturing capacity
provided the eligible importing members has made a notification to the Council for TRIPS.
The Indian Patent Act was thus amended on January 1, 2005 and Section 92 (A) was
incorporated for grant of CL for export of pharmaceutical products in certain exceptional
circumstances.
The CL under the said section can only be granted if the importing
country has also granted CL or has, by notification or otherwise, allowed importation of the
patented pharmaceutical product from India. This condition is not applicable for least
developing countries (LCD) having no patent regime. The LCDs is only required to notify the
Council of WTO about their willingness to import the pharma product subject to para 6 of
Doha Declaration.
Indias First Compulsory License of Patent:
On March 9,
2012, Indias first compulsory license (CL) was granted by the Patent Office to Natco
Pharma Ltd. for producing generic version of Bayer Corporation's patented medicine
Nexavar, used in the treatment of Liver and Kidney cancer.
The Controller decided
against Bayer on all the three grounds enlisted in the Patents Act for the grant of CL
(reasonable requirements of the public not being satisfied; non-availability to the public at a

reasonably affordable price, and the patented invention not being worked in the territory of
India). While the multinational giant was selling the drug at INR 2.80 lakh for a month's
course, Natco promised to make available the same at a price of about 3 % (INR 8800) of
what was charged by Bayer. Natco was directed to pay 6 percent of the net sales of the drug
as royalty to Bayer. Among other important terms and condition of the non assignable, non
exclusive license were directions to Natco to manufacture the patented drug only at their
own manufacturing facility, selling the drug only within the Indian Territory and supplying
the patented drug to at least 600 needy and deserving patients per year free of cost.
Aggrieved by the Controllers decision, Bayer immediately moved to the Intellectual Property
Appellate Board (IPAB) alleging that the grant of CL was illegal and unsustainable. The
Board rejected Bayers appeal holding that if stay was granted, it would definitely jeopardize
the interest of the public who need the drug at the later stage of the disease. It further held
that the right of access to affordable medicine was as much a matter of right to dignity of
the patients and to grant stay at this juncture would really affect them.
The Boards
chief Prabha Sridevan in an open court on March 4, 2013 dictated the order upholding the
Controllers decision for grant of compulsory license on Bayers patented drug, Sorafenib
Tosylate.

VERSIONS RECORDINGS:

The Copyright Amendment of 2012 moved the provisions

with respect to cover versions of sound recordings out of fair dealing provisions under Section
52, into a specific statutory license provision. Making version recordings, re-recording of prior
sound recordings, was earlier permitted under the Copyright Law, but codifying it as a statutory
license provision formalizes the said activity in many ways. Furthermore, Section 31C, which
deals with statutory licenses for cover versions clearly spells out specific conditions and
limitations for making version recordings.
The Section reads as follows:
31C. Statutory
licence for cover versions.
(1) Any person desirous of making a cover version, being a
sound recording in respect of any literary, dramatic or musical work, where sound recordings of
that work have been made by or with the licence or consent of the owner of the right in the work,
may do so subject to the provisions of this section: Provided that such sound recordings shall be
in the same medium as the last recording, unless the medium of the last recording is no longer
in current commercial use.
(2) The person making the sound recordings shall give prior
notice of his intention to make the sound recordings in the manner as may be prescribed, and
provide in advance copies of all covers or labels with which the sound recordings are to be sold,
and pay in advance, to the owner of rights in each work royalties in respect of all copies to be
made by him, at the rate fixed by the Copyright Board in this behalf:
Provided that such
sound recordings shall not be sold or issued in any form of packaging or with any cover or label
which is likely to mislead or confuse the public as to their identity, and in particular shall not
contain the name or depict in any way any performer of an earlier sound recording of the same
work or any cinematograph film in which such sound recording was incorporated and, further,
shall state on the cover that it is a cover version made under this section.
(3) The
person making such sound recordings shall not make any alteration in the literary or musical
work which has not been made previously by or with the consent of the owner of rights, or which
is not technically necessary for the purpose of making the sound recordings:
Provided that
such sound recordings shall not be made until the expiration of five calendar years after the end
of the year in which the first sound recordings of the work was made.
(4) One royalty in
respect of such sound recordings shall be paid for a minimum of fifty thousand copies of each
work during each calendar year in which copies of it are made:
Provided that the Copyright
Board may, by general order, fix a lower minimum in respect of works in a particular language or
dialect having regard to the potential circulation of such works.
(5) The person making such
sound recordings shall maintain such registers and books of account in respect thereof,
including full details of existing stock as may be prescribed and shall allow the owner of rights or

his duly authorised agent or representative to inspect all records and books of account relating
to such sound recording: Provided that if on a complaint brought before the Copyright Board
to the effect that the owner of rights has not been paid in full for any sound recordings
purporting to be made in pursuance of this section, the Copyright Board is, prima facie, satisfied
that the complaint is genuine, it may pass an order ex parte directing the person making the
sound recording to cease from making further copies and, after holding such inquiry as it
considers necessary, make such further order as it may deem fit, including an order for payment
of royalty.
Explanation.For the purposes of this section cover version means a sound
recording made in accordance with this section.
The first noteworthy change in the
provision is with respect to the medium of version recording. The proviso to clause (1)
specifically provides that a conversion can be made only into the same medium of the original
recording, unless the earlier recording is no longer in commercial use. For example, if the first
recording was made on a magnetic tape, the cover version must also be on a magnetic tape.
You cannot make a digital recording of the cover version.
The Section states that
payment for the cover versions must be made to the authors in advance, and for at least fifty
thousand copies in an year. The cover version must not mention the original singer or the name
of the film for which the recording was made earlier. Finally, although minuscule, protection for
producers has been incorporated.
Cover versions can be made only after five years of the
first sound recording. Also, clause (3) prohibits any derivative works like remixes without the
permission of the author, giving them an opportunity to bargain

WHAT IS THE DATABASE RIGHT?:

Irrespective of copyright protection, a
database may be protected by the database right. This is intended to protect and
reward investment in the creation and arrangement of databases. This protection can
apply to both paper and electronic databases.
** For copyright protection to
apply, the database must have originality in the selection or arrangement of the contents
For database right to apply, there must have been a substantial investment in
obtaining, verifying or presenting its contents
**It is possible that a database will
satisfy both these requirements so that both copyright and database right apply
There is no registration for database right - it is an automatic right like copyright and
commences as soon as the material that can be protected exists in a recorded
form. However, the term of protection under the database right is much shorter than
under copyright - it lasts for 15 years from making but, if published during this time, then
the term is 15 years from publication.
TRADITIONAL KNOWLEDGE Traditional knowledge (TK) is knowledge, know-how,
skills and practices that are developed, sustained and passed on from generation to
generation within a community, often forming part of its cultural or spiritual identity.

TK may be considered as:**knowledge, know how, skills, innovations or practices;

**that
are passed between generations;
**in a traditional context; and
**ithat form part of the
traditional lifestyle of indigenous and local communities who act as their guardian or custodian.
It can be, for example, agricultural, environmental or medicinal knowledge, or knowledge
associated with genetic resources. Examples include, among thousands of others:
**knowledge about traditional medicines;
**traditional hunting or fishing techniques;
**knowledge about animal migration patterns;
**knowledge about water management.
Sometimes, the term TK can also refer to more: it can include folklore or traditional cultural

expressions, even though WIPO formally makes a distinction between TK on the one hand, and
TCEs on the other.
WHAT IS A DOMAIN NAME?
Domain names are the human-friendly forms of Internet addresses, and are commonly used to
find web sites. For example, the domain name wipo.int is used to locate the WIPO web site at
http://www.wipo.int or the WIPO Arbitration and Mediation Center site at
http://www.wipo.int/amc/. A domain name also forms the basis of other methods or applications
on the Internet, such as file transfer (ftp) or email addresses - for example the email address
arbiter.mail@wipo.int is also based on the domain name wipo.int.
GENE FUND :The New Delhi meeting rejected the UPOV Convention as an
adequate model for sui generis plant variety protection. It urged the adoption of
alternative models, incorporating the same sort of provisions as it recommended for
national patent laws, and recommended the inclusion of a comprehensive code of
provisions protecting Farmers Rights. The establishment of a gene fund, derived
from fees and other levies on plant breeding and the seed industry was
recommended, to be used to support in-situ farmers conservation. The
consideration of new varieties for protection should include an environmental and
social impact assessment to ensure that they do not threaten agro-diversity and
community rights.
"deceptively similar" A geographical indication shall be deemed to be deceptively
similar to another geographical indication if it so nearly resembles that other
geographical indication as to be likely to deceive or cause confusion;

computer program means a set of instructions capable, when incorporated in a

machine-readable medium, of causing a machine having information-processing
capabilities to indicate, perform or achieve a particular function, task or result;
NATIONAL BIODIVERSITY AUTHORITY(1) With effect from such date as the Central
Government may, by notification in the Official Gazette, appoint, there shall be established by
the Central Government for the purposes of this Act, a body to be called the National
Biodiversity Authority. (2)The National Biodiversity Authority shall be a body corporate by the
name aforesaid, having perpetual succession and a common seal, with power to acquire, hold and
dispose of property, both movable and immovable, and to contract, and shall by the said name
sue and be sued. (3)The head office of the National Biodiversity Authority shall be at Chennai
and the National Biodiversity Authority may, with the previous approval of the Central
Government, establish offices at other places in India. (4)The National Biodiversity Authority
shall consist of the following members,
(a) a Chairperson, who shall be an eminent person
having adequate knowledge and experience in the conservation and sustainable use of biological
diversity and in matters relating to equitable sharing of benefits, to be appointed by the Central
Government;
(b) three ex officio members to be appointed by the Central Government, one
representing the Ministry dealing with Tribal Affairs and two representing the Ministry dealing

with Environment and Forests of whom one shall be the Additional Director General of Forests
or the Director General of Forests;
(c)seven ex officio members to be appointed by the
Central Government to represent respectively the Ministries of the Central Government dealing
with (i)Agricultural Research and Education; (ii)Biotechnology; (iii) Ocean Development;
(iv) Agriculture and Cooperation; (v) Indian Systems of Medicine and Homoeopathy; (vi)
Science and Technology; (vii) Scientific and Industrial Research; (d) five non-official members
to be appointed from amongst specialists and scientists having special knowledge of, or
experience in, matters relating to conservation of biological diversity, sustainable use of
biological resources and equitable sharing of benefits arising out of the use of biological
resources, representatives of industry, conservers, creators and know ledge-holders of biological
resources.
Conditions of service of Chairperson and members 9. The term of
office and conditions of service of the Chairperson and the other members other than ex officio
members of the National Biodiversity Authority shall be such as may be prescribed by the
Central Government. Chairperson to be Chief Executive of National Biodiversity Authority
10. The Chairperson shall be the Chief Executive of the National Biodiversity Authority and
shall exercise such powers and perform such duties, as may be prescribed. : 11. The Central
Government may remove from the National Biodiversity Authority any member who, in its
opinion, has
(a) been adjudged as an insolvent; or (b) been convicted of an offence which
involves moral turpitude; or (c) become physically or mentally incapable of acting
as a member; or (d)so abused his position as to render his continuance in office
detrimental to the public interest; or(e)acquired such financial or other interest as is
likely to affect prejudicially his functions as a member.
Meetings of
National Biodiversity Authority :
12. (1) The National Biodiversity
Authority shall meet at such time and place and shall observe such rules of
procedure in regard to the transaction of business at its meetings (including the
quorum at its meetings) as may be prescribed. (2) The Chairperson of the National
Biodiversity Authority shall preside at the meetings of the National Biodiversity
Authority. (3) If for any reason the Chairperson is unable to attend any meeting of
the National Biodiversity Authority, any member of the National Biodiversity
Authority chosen by the members present at the meeting shall preside at the
meeting. (4) All questions which come before any meeting of the National
Biodiversity Authority shall be decided by a majority of votes of the members
present and voting and in the event of equality of votes, the Chairperson or, in his
absence, the person presiding, shall have and exercise a second or casting vote. (5)
Every member who is in any way, whether directly, indirectly or personally,
concerned or interested in a matter to be decided at the meeting shall disclose the
nature of his concern or interest and after such disclosure, the member concerned
or interested shall not attend that meeting. (6) No act or proceeding of the National
Biodiversity Authority shall be invalidated merely by reason of
(a) any vacancy in, or any defect in the constitution of, the National Biodiversity
Authority; or (b)any defect in the appointment of a person acting as a member; or
(c) any irregularity in the procedure of the National Biodiversity Authority not
affecting the merits of the case.
Committees of National Biodiversity
Authority : 13. (1) The National Biodiversity Authority may constitute a committee

to deal with agro-biodiversity.

Explanation-For the purposes of this sub-section,
"agro-biodiversity" means biological diversity, of agriculture related species and
their wild relatives.
(2) Without prejudice to the provisions of sub-section (1), the
National Biodiversity Authority may constitute such number of committees as it
deems fit for the efficient discharge of its duties and performance of its functions
under this Act.
(3)A committee constituted under this section shall co-opt such
number of persons, who are not the members of the National Biodiversity Authority,
as it may think fit and the persons so co-opted shall have the right to attend the
meetings of the committee and take part in its proceedings but shall not have the
right to vote. (4) The persons appointed as members of the committee under subsection (2) shall be entitled to receive such allowances or fees for attending the
meetings of the committee as may be fixed by the Central Government.
Officers and employees of National Biodiversity Authority :
14.(1)
The National Biodiversity Authority may appoint such officers and other employees
as it considers necessary for the efficient discharge of its functions under this Act.
(2) The terms and conditions of service of such officers and other employees of the
National Biodiversity Authority shall be such as may be specified by regulations.
Authentication of orders and decisions of National Biodiversity Authority :
15. All orders and decisions of the National Biodiversity Authority shall be
authenticated by the signature of the Chairperson or any other member authorized
by the National Biodiversity Authority in this behalf and all other instruments
executed by the National Biodiversity Authority shall be authenticated by the
signature of an officer of the National Biodiversity Authority authorized by it in this
behalf.
Delegation of powers :
16. The National Biodiversity Authority
may, by general or special order in writing, delegate to any member, officer of the
National Biodiversity Authority or any other person subject to such conditions, if
any, as may be specified in the order, such of the powers and functions under this
Act (except the power to prefer an appeal under section 50 and the power to make
regulations under section 64) as it may deem necessary.
Expenses of
National Biodiversity Authority to be defrayed out of the Consolidated
Fund of India :
17. The salaries and allowances payable to the members
and the administrative expenses of the National Biodiversity Authority including
salaries, allowances and pension payable to, or in respect of, the officers and other
employees of the National Biodiversity Authority shall be defrayed out of the
Consolidated Fund of India.

WHAT IS A WELL-KNOWN MARK?: A regime for the protection of well-known marks was first
introduced by the Paris Convention in Article 6bis:(1) The countries of the Union undertake, ex
officio if their legislation so permits, or at the request of an interested party,to refuse or to cancel
the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an
imitation, or a translation, liable to create confusion, of a mark considered by the competent

authority of the country of registration or use to be well known in that country as being already
the mark of a person entitled to the benefits of this Convention and used for identical or similar
goods. These provisions shall also apply when the essential part of the mark constitutes a
reproduction of any such well-known mark or an imitation liable to create confusion therewith.
Subsequently, during drafting of the TRIPs Agreement, provisions to accommodate protection of
well-known marks as envisaged by Article 6bis of the Paris Convention were incorporated as
TRIPs Articles 16.2 and 16.3: 16.2Article 6bis of the Paris Convention (1967) shall apply,
mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall
take account of the knowledge of the trademark in the relevant sector of the public, including
knowledge in the Member concerned which has been obtained as a result of the promotion of
the trademark.
16.3Article 6bis of the Paris Convention (1967) shall apply, mutatis
mutandis, to goods or services which are not similar to those in respect of which a trademark is
registered, provided that use of that trademark in relation to those goods or services would
indicate a connection between those goods or services and the owner of the registered
trademark and provided that the interests of the owner of the registered trademark are likely to
be damaged by such use. The provisions addressing protection of well-known marks evolved
somewhat from the Paris Convention to the TRIPs Agreement. The Paris Convention deals with
well-known marks in respect of goods alone, and provides protection only against use in
connection with identical or similar goods. The TRIPs Agreement mandated that protection be
extended by Member Countries to registered trademarks against use in connection with goods
and services; it also covers dissimilar goods and services to the extent the disputed third-party
use is found to indicate a connection between such dissimilar goods or services and the owner
of the registered mark, which is likely to harm the owners interests. Notably, both conventions
do not define what constitutes a well known mark, thereby leaving its definition to the individual
Member States. It is also of significance here that although the expression used in the Paris
Convention and the TRIPs Agreement is well known mark, different jurisdictions use different
expressions to denote marks falling into the category of well-known marks such as famous
marks, marks having a reputation, or notorious marks. Under the TM Act, while there is a
definition of well-known mark, the expressions well-known marks and [a] registered mark
[that] has a reputation are also used.
PROTECTION OF WELL-KNOWN
MARKS UNDER THE OLD INDIAN TRADE MARK STATUTE:
Before the enactment of the
TM Act, the statute governing trademarks in India was the TMM Act. The TM Act came into force
in September 2003. Prior to that date, well-known marks were protected under Section 47 of the
TMM Act, which provided for defensive registration of well-known marks as well as passing off
actions. Section 47(1) of the TMM Act read: 47(1)Defensive registration of well-known trade
marksWhere a trade mark consisting of any invented word has become so well-known as
respects any goods in relation to which it is registered and has been used, that the use thereof
in relation to other goods would be likely to be taken as indicating a connection in the course of
trade between those goods and a person entitled to use the trade mark in relation to the first
mentioned goods, then, notwithstanding that the proprietor registered in respect of the firstmentioned goods does not use or propose to use the trade mark in relation to those other goods
and notwithstanding anything in Section 46, the mark may, on application in the prescribed
manner by such proprietor, be registered in his name in respect of those other goods as a
defensive trade mark and while so registered, shall not be liable to be taken off the register in
respect of those goods under the said section. The test for eligibility for defensive registration of
a well-known mark under Section 47(1) was whether the use of the mark in connection with
goods other than the registered goods or goods in use would likely be perceived as indicating a
connection in the course of trade between such goods and the well-known marks proprietor. In
other words, likelihood of deception was the decisive factor in determining whether a well-known
mark was eligible for registration under this section. Owners of well-known marks often availed
themselves of this provision by registering their marks either in all classes or in selected classes

of interest. However, even without a defensive registration, Indian courts have upheld rights in
several well-known marks asserted by trademark owners through passing-off actions. These
court decisions and Indias international obligations to implement protection of well-known
marks led to the codification of the well-known marks provisions under the TM Act. Before
examining the TM Act, it is important to review some of the court decisions under the old statute,
the TMM Act, which are considered milestones in the evolution of Indian case law on wellknown marks and paved the way for its codification under the new statute.

Open Source:Generally

speaking, open-source software refers to

software for which the source code (underlying programming code) is made
freely available for use, reading the code, changing it or developing further
versions of the software, including adding amendments to it. Open source
software is often used as a general expression for many forms of nonproprietary software, which differ principally in respect of the licensing terms
under which changed versions of the source code may be further distributed.
Proprietary software, on the other hand, is usually understood to be software in
respect of which exclusive rights are maintained, such as those flowing from
copyright or patents. These rights allow to refuse access to the source code by
third parties for the purpose of copying or modifying the software, or at least to
control the use of the source code. Without going into the details here, there is a
difference between open source software and free software, on which more
details can be found through some of the hyperlinks
NON-CONVENTIONALTRADEMARK:A non-conventional trademark, also known
aS nontraditional trademark, is any new type of trademark which does not belong
to a preExisting, conventional category of trade mark, and which is often difficult to
register, but which may nevertheless fulfill the essential trademark function of
uniquely identifying the commercial origin of products or services. The term is
broadly inclusive as it encompasses marks which do not fall into the conventional
set of marks (e.g. those consisting of letters, numerals, words, logos, pictures,
symbols, or combinations of one or more of these elements), and therefore includes
marks based on appearance, shape, sound, smell, taste and texture.
Nonconventional trademarks may therefore be visible signs (e.g. colors, shapes, moving
images, holograms, positions), ornon-visible signs (e.g. sounds, scents, tastes,
textures). In recent years, trade mark registries and courts have grappled with applications for
silhouettes, shapes, scents, textures, short cartoons, single colors, body movements etc as
trademarks. This invasion of the unconventional is due to the abstract nature of the legal definition of
a trademark. On one hand the trade mark law has embraced an open- ended definition that
emphasis the functional, rather than the ontological status of a sign. Any sign which does the
communicative work of a trade mark, distinguishing goods or services on the basis of trade origin,
can be registered as one. On the other hand, the trade mark registration systems have historically
developed around paradigmatic subject matter: a conventional or traditional trade mark that is visual
and consists of words, devices or a combination of the two

Revenue engineering: The Traditional IP Revenue Methods Traditionally, there are three main
ways to make money from IP: 1. Exploit it. Simple enough, this means you use your IP to
create a product, and then sell it yourself. 2. License it. Let someone else pay you to use your IP,
such as a patent. They'll either pay you a one-time fee or you could earn a royalty on every sale.
3. Sell it off. Sometimes, it makes more sense to sell full ownership of your IP to a third party for
a one-time fee. This works especially well if the idea is risky, or if it will take more capital than
you can pull together in order to fully exploit it.
Non-Traditional IP Revenue Methods :
Beyond these three traditional avenues, individuals can quickly and easily benefit from their IP
by taking it in several additional directions. 1. Look at it askew. Sometimes all it takes to create
new IP is to take your previous IP and make a slight tweak. With patents, you can often make
subtle (or not-so-subtle) improvements to your original and file what is known as an
Improvement Patent, which builds upon a previous idea or invention and turns it into something
new. Bingo, your new patent is ready for its own exploitation or licensing.
2. Document and
share your original research. Think about how your IP was created in the first place. What
made it possible for you to successfully create it? What research did you conduct? What
processes and procedures did you have in place? What makes your IP unique? Once you've
answered these questions, ask yourself one more: Can others learn from your actions? If so, try
writing articles about your success or your techniques. Trade magazines in your industry want to
hear your ideas, and can often pay well for you to tell your story.
3. Talk about it. You did
the research, and you created the IP, which means that you know the subject better than anyone
else. So start talking about it.
Conferences, local technical meetings, professional societies,
and other events are always looking for interesting and effective speakers. Speaking
engagements are a great way to engage your audience, share your success, brand your company,
and earn speaking fees at the same time

Biological Diversity Act,2002:Biological = Relating to Biology or living

organisms. Biology = the scientific study of living organism. Organism = a)
an individual, animal, plant or single celled life form. B) a whole made up of
parts whichare dependent on each other. Biological Diversity encompasses
the variety of all life on earth. With only 2.5 percent of the land area, India
already accounts for 7 to 8 per cent of the recorded species of the world.
India is equally rich in traditional and indigenous knowledge, both coded and
informal.
The stake holders in Bio diversity include the Central Govt.,
The State Govt., Institutions like local self Govt., scientific and technical
institutions, non govt., organizations, industry etc., Communities are not
stake holders in the Bio diversity.
The object of the Act is to A)
regulate access to biological resources of the country with the purpose of
securing equitable share in benefits arising out of the use of (1) Biological
resources and (2) associated knowledge relating to biological resources.
What are Biological resources? : Biological resources means plants,
animals and micro-organisms or parts thereof, their genetic (relating to
genes or heredity ) material and by products, excluding value added

products with actual or potential use of value, BUT DOES NOT INCLUDE
HUMAN GENETIC MATERIAL.
B) To conserve and sustainable use of
Biological Diversity. Biological Diversity means variability among living
organisms from all sources and the ecological complexes of which they are
part and includes diversity within species or between species and of eco
systems.
C) To respect and protect KNOWLEDGE OF LOCAL
COMMUNITIES related to Bio Diversity.
D) To secure sharing of benefits
with local people as conservers of biological resources and holdersof
knowledge and information relating to the use of biological resources.
E) Conservation and development of areas important from the standpoint of
biological diversity by declaring them as Biological diversity heritage sites.
F) Protection and rehabilitation of threatened species.
G) Involvement
of institutions of self govt. in the broad scheme of the implementation of the
Act through constitution of committees.
Under this Act, no
foreigner or an Indian who is Non-resident or an Indian in association with the
Foreigner can get any Indian biological resource without permission. It
virtually creates a ban on transport across the border any Indian biological
resource. This ban and regulation is restricted to the use of Indian biological
resource by others for research or for commercial utilization or for bio survey
and bio-utilization. Collaborative research projects are exempted if such
collaborative research projects are approved by the Central Govt. and are
drawn up as per the policy guidelines specified by the Central Govt.
What is bio prospecting?:Bio prospecting means exploration of wild plants
and animals for commercially viable genetic and bio Chemical resources.
What is Bio Piracy?:Bio piracy means misappropriation of folk wisdom of
indigenous people by corporate/pirates to locate and understand the use of
medical plants and use this knowledge commercially and exploit it while the
indigenous people who made it all possible receive little or nothing in return.
UN Convention on Bio diversity 1992 (held in Rio de janerio) is a land mark in
the environment and development field as it takes for the first time a
comprehensive rather than sectoral approach to the conservation of Earths
Bio diversity and sustainable use of biological resources. Different Boards
under the Bio diversity Act, 2002:- 1) National Bio diversity Authority(NBA),
a body corporate with a perpetual succession. S.19 provides for approval by
NBA for undertaking certain activities, namely -for obtaining any biological
resource occurring in India.
-for applying for patent or any other form
of intellectual property protection.
2) State Biodiversity
Authority(SBA)
3) Bio diversity management Committees
(BMCs)MBAs and SBAs are required to consult the concerned BMCs on
matters related to use of BiologicalResources and associated knowledge

within their jurisdiction.

How can traditional knowledge be
protected? Protection of Traditional knowledge can be effected by
protecting them under the heads of Intellectual Property law like copyright,
patents, Trademarks, Industrial design protection, Geographical indication
and appellation(formal name or title) of origin and through the laws of unfair
competition.
Trade secrets:- What are Trade secrets?:
Any information which is of commercial importance in which skill and labour
are involved for development AND which is not ordinarily available to the
public at large is broadly denoted as confidential information, meaning
confidential information is also known as trade secrets. Confidential
information is characterized by the obligation on the recipient of the
information than by any INHERENT right attaching to the information or the
owner of the information. Examples:- Chemical formulae, manufacturing
process, financial information, machinery, devices,Computer programmes,
source codes, strategic plans, designs, customer lists, discounts given to
Customers, compilation of information, supplier information, business
development strategies etc.,
In India, there is no legislation to protect
Trade secrets.
Basis for protection of confidential
information:-Courts have regarded confidentiality as an attribute of
ingenuity, skill and labour and have condemned those who have reaped what
they have not not sown or try to misuse the information given to them in
confidence. What is regarded as secret is not so much the end product, but
the skill and labour, time andeffort that is involved in its evolution or
development.
Trade secret and Patent, how different?
- patent is for an invention which is useful and non-obvious to those in that
field of art. only after
Disclosure to Govt., that a patent is granted.
Confidential information is primarily founded on non-disclosure and on an
obligation to keep information received confidential.
- Confidential
Information, unlike patent, need not be novel or new in its strict terms to
qualify as protectable Confidential information. All that is required is that the
information must not be known to those in business, should have commercial
value and be maintained as a secret with an obligation on the recipient to
keep it secret.
- While patents fall in public domain after a certain
period (20 years), there are instances, wherein trade secrets have been
maintained secret for several years, example, COKE FORMULA.
When Trade secret route is used?:Trade secret route is used, when:-Patents are unavailable(ie the invention is not patentable)
-Pending grant
of Patent
-Patent enforcing mechanisms are weak.
-Part of
technology can easily be kept secret.
-Trade secrets or Confidential
information can be used together with patents or in isolation.
What are

the strategies to protect and maintain trade secrets:- nondisclosure agreement

- However, mere paper contracts are not sufficient
because it must be proved that efforts were taken
keep the information
confidential.

originality in copyright ; Original Expression. Originality relating to

EXPRESSION OF THOUGHT. Thus, a work not copied from another work is
original ie it should originate from the author. It does not mean the
expression of Original or Inventive thought.
A person who possesses
Copyright of a literary work can, inter alia, do the following in respect of a
work or a substantial part thereof, namely:a) Reproduce the work in any
material form including storing of it in any medium by electronic means.
b) Issue copies of the work to the public not being copies already in
circulation. c) make any translation of the work or d) make any adaptation
of the work. Adaptation includes any use of the work involving its
rearrangement or alteration.
Geographical indications of goods(Registration and protection)Act,
1999.: - In order to protect the interest of both the consumers and
producers, the TRIPS agreement has enjoined a duty on all member states to
enact
a
legislation
to
protect
the
geographical
indications.
-Geographical Indication in relation to goods (goods means any
agricultural, natural or manufactured goods
or any goods of handicraft or
of industry and includes foodstuff) means an INDICATION which identifies
such goods as agricultural goods, natural goods or manufactured goods or
originating or manufactured in the territory of a country or a region or
locality in that territory
where a given quality, reputation or other
characteristic of such goods is essentially attributable to its geographical
orgin and in case where such goods are manufactured goods, one of the
activities of either the production or of processing or preparation of the
goods concerned TAKES PLACE IN SUCH TERRITORY, REGION OR LOCALITY

as the case may be.

Indication:- It includes (ie it is an inclusive definition)
any name, geographical or figurative representation or any combination of
them conveying or suggesting the geographical origin of goods to which it
applies.
There is a register of Geographical Indications(GI). It is in two
parts, namely, Part A ,containing particulars of registration of GIs and Part B
containing particulars relating to registration of Authorized users.
Application for registration of a GI:- S.11 of the Act.

Geographical indications of goods(Registration and protection)Act,

1999.: - In order to protect the interest of both the consumers and
producers, the TRIPS agreement has enjoined a duty on all member states to
enact
a
legislation
to
protect
the
geographical
indications.
-Geographical Indication in relation to goods (goods means any
agricultural, natural or manufactured goods
or any goods of handicraft or
of industry and includes foodstuff) means an INDICATION which identifies
such goods as agricultural goods, natural goods or manufactured goods or
originating or manufactured in the territory of a country or a region or
locality in that territory
where a given quality, reputation or other
characteristic of such goods is essentially attributable to its geographical
orgin and in case where such goods are manufactured goods, one of the
activities of either the production or of processing or preparation of the
goods concerned TAKES PLACE IN SUCH TERRITORY, REGION OR LOCALITY
as the case may be.
Indication:- It includes (ie it is an inclusive definition)
any name, geographical or figurative representation or any combination of
them conveying or suggesting the geographical origin of goods to which it
applies.
There is a register of Geographical Indications(GI). It is in two
parts, namely, Part A ,containing particulars of registration of GIs and Part B
containing particulars relating to registration of Authorized users.
Application for registration of a GI:- S.11 of the Act.
Who shall apply?:
Any association of persons or producers or any organization or authority
established by or under any law for the time being in force representing the
interest of the producers of the concerned goods, who are
desirous of
registering a geographical indication in relation to such goods shall apply in
writing to the Registrar in a prescribed form with the prescribed fees.
Prohibition of Registration:- Section 9 of the Act.
The following GIs
will be prohibited from registration, namely:- -that which would deceive or
cause confusion
-the use of which is contrary to law
-that which
contains scandalous or obscene matters
-that which would hurt religious
susceptibilities.
The Registration procedure is enumerated in Ss.11 to 14,
consisting of application, advertisement of the
application, opposition to
the registration, actual registration.
Once the GI is registered, an
interested person can apply for registration as the Authorised user of the GI

under section 17. Any person claiming to be the producer of the goods in
respect of which a GI has been registered under S.16, may apply in writing
to the Registrar for registering him as the Authorised User of such GI. The
procedure for registration of a GI also applies for registration an Authorised
user of a GI.
Duration and the rights conferred by the Registration:The Registration is for a period of Ten (10) years AND it can be renewed from
time to time (ie it is a perpetual right). Registration of an authorized user is
for a period of Ten (10) years or till the registration of GI(of which he is the
Authorised user) expires, whichever is EARLIER . If at the expiration of the
time prescribed in that behalf, those conditions are not complied with, the
registrar may remove a geographical indication or the Authorised user as the
case may be from the Register.
Prohibition of Assignment:- Section
24 of the Act.: The right to GI cannot be assigned, transmitted, licensed,
pledged or mortgaged. However, the right of the Authorized User devolves
on his successor in title.
Infringement and Action for infringement.
Section 22 of the Act.:- An Unauthorised user using a registered GI a) by
any means in the designation or presentation of goods suggesting that such
goods originate in a geographical area OTHER THAN THE TRUE PLACE OF
ORIGIN. b) in such a manner which constitutes an act of unfair competition
including passing off in respect of registered GI. Proceedings can be
instituted to prevent or to recover damages for the infringement of a
registered GI.
Protection of Plant varieties and Farmers Rights
Act, 2000.:Protection of Plant varieties either by patents or by an effective
sui generis (of its own kind, unique) system or any combination thereof.
Objectives:1) To protect and benefit the breeders of new plant varieties.
2) To protect and benefit the farmers as cultivators and conservers of
traditional local plant varieties which may be used in the development of
new varieties
and
3) To encourage the growth of seed industry
through domestic and foreign investments so as to ensure supply of high
quality seeds and planting materials to farmers.
How the right of
breeders are protected? :
The rights of the breeders are protected by
granting them a monopoly to use and sell the seeds and planting materials
of the new plant varieties evolved by them through a system by which they
are granted registration. Such a registration is equivalent to a patent granted
to the inventor in respect of manufactured goods. Those who use the new
plant varieties for purposes of business ie for the production and sale of
seeds and other planting material have to take a license from the breeder by
paying him fees which may be treated as Royalty. Who is a
breeder?:Breeder means a person or group of persons or a farmer or group
of persons or any institution which has bred, evolved or developed any
variety.
Who can make an application for registration under
the Act?:Section 16 of the Act gives the types of persons who can make an
application for registration under the Act, namely, -Breeder, successor or
assignee of breeder- any farmer or group of farmers or community of
farmers-any University or Publicly funded institution.
Criteria for making
an application under the Act:-1) Novelty:- Such a variety has not been sold or

disposed off.
2) Distinctiveness:- clearly distinguishable by at least
one essential characteristics from any other variety.
3) Uniformity:Uniformity in its essential characteristics(subject to variation that may be
expected from
the peculiar features of its propagation).
4)
Stability:- ie its essential characteristics remains unchanged after repeated or
in the case of a particular cycle of propagation, at the end of such cycle.
Tenure:- The certificate of registration shall be valid for - Nine(9)years in
case of trees and vines. Six(6)years in case of other crops may be reviewed
and renewed further, on payment of such fees, as may be fixed by the rules
so that the total period of protection will not be more than 18 years in case
of trees and wines and 15 years in case of other crops.
Semiconductor
Integrated
circuits
layout-Design
Act,
2002
[SICLD
ACT,2002]Semiconductor Integrated Circuits or Semiconductor IC.:
What is the object of the Act?:It provides protection to Semiconductor IC
Layout designs and matters connected therewith or incidental thereto.
What is a semi conductor IC?:Semiconductor IC means a product having
transistors and other circuitry elements which are inseparably formed on a
semi conductor material or an insulating material or inside the semi
conductor material or an insulating material or inside the semi-conductor
material and designed to perform an electronic circuitry function. Every IC
has a number.
What is a transistor?:It is a semi conductor device with
three connections capable of amplification in addition to rectification. In
normal room (lower temperature), semiconductor acts as an insulator. If you
increase the temperature, it will conduct electricity. Semiconductor is an
element like Gold, Germanium (a grey crystalline element with semi
conducting properties resembling silicon) and silicon are main components
of semi conductor.
Layout design:- what is a Layout design?
Layout means a) the way in which something, esp., a page is laid out and b)
a thing set out in a particular way. Lay out design means a layout of
transistors and other circuitry elements and includes lead wires connecting
such elements and expressed in any manner in a semiconductor integrated
circuit.
What are the rights conferred on the registered
proprietor of the Lay-out design?:
The SICLD Act gives to the
registered proprietor of the layout-design, the exclusive right to use the
layout design and obtain relief in respect of infringement. It may be
noted here that the registration of a layout design does not give monopoly
rights but gives right to prevent infringement of the registered layout during
the period of registration
What constitutes infringement under
the Act?:Reproducing, 4.importing, selling, distributing the IC layout design
for commercial purposes only constitutes infringement
What are
requirements to get protection under the Act?:
-originality-should
not be commercially exploited-distinct from the others already existing in the
market.
What is meant by commercial exploitation in relation to
semi conductor integrated circuits layout design?:
Commercial
exploitation in relation to semiconductor integrated circuits layout-design
implies acts such as sell, lease, offer or exhibit for sale or otherwise

distribute such semiconductor integrated circuit for any commercial purpose.

Note:- A design not exploited commercially for more than 2 years from the
date of
registration of application shall be treated as commercially
exploited for the purpose of this Act.
What is the justification for
protection of Semiconductor integrated circuits?:ICs are the base of
electronic revolution. Lot of investment and R&D is required for creation of
new layout. This high investment and risk associated, forms a barrier for new
entrant. However, when it comes to copying, it is the easiest job in the world.
It can be copied by merely taking photograph of each layer of integrated
circuits.
Duration:- The term for an IC layout design protection is
ten(10)years from the date of filing. The registration of a layout design shall
be only for a period of ten years counted from the date of filing of an
application for registration or from the date of first commercial exploitation
anywhere in India or any country, WHICHEVER IS EARLIER.
.Who is
the Authority under the Act?:The Central Govt., may, by notification in
the official gazette appoint a person to be known as the Registrar of
Semiconductor integrated circuits layout design. There shall be established a
registry which shall be knownas the Semi-Conductor Integrated Circuit Lay
out design registry.
Who can obtain protection of Lay-out designs
under the SICLD Act,2000?:
Any person who
a) claims to be the
creator of a layout design who desires to register it
b) is an Indian
national or national of a country outside India, which accords to citizens of
India similar
privileges as granted to its own citizens in respect of
registration and protection of layout-designs and
c) has principal place
of business in India or if he does not carry out business in India, has place of
service in India can apply for protection of layout-designs under the SICLD
Act, 2000

Patents Act, 1970 :Earlier there was only PROCESS PATENT and no
PRODUCT PATENT for drugs, foods and chemicals. Now product patent has
also come into existence for drugs, foods and chemicals. The Product patent
protection already exists IN ALL OTHER FIELDS. A patent is a right granted to
a person who has invented a new and useful article or an improvement of an
existing article or a new process of making an article. A Patent is not
granted for an idea or principle as such, but for some article or the
process of making some article applying the idea.
Application for
Patent:- :Who can apply for patent?: 1) Any person claiming to be the true
and first inventor of the invention;
2) by any person being the assignee
of the person claiming to be the true and first inventor in respect of the right
to make such an application;
3) by the legal representative of any
deceased person who immediately before his death was entitled to make
such an application. The application as above may be made by any of the
persons mentioned above either alone or jointly with any other person for
ONE INVENTION ONLY before the patent office. Every application for a patent

shall be accompanied by a SPECIFICATION describing the invention and shall

begin with a title sufficiently indicating the subject matter to which the
invention relates. A PATENT SPECIFICATION is the heart and soul of a patent.
What after application for a patent?:An application for patent shall not
ordinarily be open to public for a prescribed period. If the applicant so
desires, the application may be published before the prescribed period by
the Controller general of Patents, designs and Trade marks. On the expiry of
the prescribed period as stated above, the application for patent shall be
published. Upon publication, the Biological materials, specifications,
drawings etc., shall be available to the public.
A patent is valid for a
period of twenty(20) years FROM THE DATE OF PUBLICATION OF THE
APPLICATION FOR A PATENT.
Why validity of a patent is twenty
years from the date of PUBLICATION OF THE APPLICATION?:
This
is because, on and from the date of publication of the application for patent
and until the grant of patent in respect of such application, the applicant
shall have the like privileges and rights as if a patent for the investigation
has been granted on the date of the publication of the application. However,
the applicant shall not be entitled to institute any 2.proceedings for
infringement until the patent has been granted.On a request by the
applicant for the patent or any other interested person, for an EXAMINATION
of an APPLICATION, the application and specification and other documents
related thereto shall be referred at the earliest by the controller general of
Patents, designs and Trade marks to an EXAMINER for making a report to
him(ie to he Controller) regarding the following matters, namely:1)
whether the application, the specification and other documents relating
thereto are according to the
requirements of this Act and the rules
thereunder.2) Whether there is any lawful ground of objection to the grant of
the patent under the Act in pursuance of the application. 3) A report of the
Examiner, after investigation, for the purpose of ascertaining whether a) the
invention claimed has been anticipated by a publication made before this
application or b) the invention is claimed in any claim of completed
specification published after this application but the application for which is
made before this application in question. Where an application for a patent
has been published but a patent has not been granted, any person may, in
writing, represent by way of opposition to the controller against the grant
of that patent, on the ground, inter alia, that the applicant for the patent
wrongfully obtained the invention or any part thereof from him. On receipt
of the report of the Examiner, the Controller may either grant the patent or
may require the applicant to make necessary amendments after giving the
applicant an opportunity of being heard. Some general information on
PATENTS:-The three standard requirements for a patent to be registered
are novelty, utility and inventive steps/non obviousness. It should be new,
new steps and should be commercially exploitable.
-During the term of
the patent, the owner of the patent, ie, the patentee can prevent any other
person from using the patented invention. After the expiry of the duration
of the patent, anybody can make use of the invention, since it becomes a

public domain.
-A patent is a creation of STATUTE and is therefore
territorial in Extent. Thus, a patent granted in one country cannot be
enforced in another country UNLESS the invention concerned is patented in
that country also.
What is infringement?: Infringement of patent
consists in the violation of any exclusive rights of the patentee, namely, to
make, use, exercise, sell or distribute the invention in India. Where the
invention claimed is an article or substance, the rights of the patentee are
infringed by any one who makes or supplies that article or substance
commercially for use by others. Where the patent is for a process, the right
of patentee is infringed by one who uses or exercises that method or process
in India.
Where to file relief for infringement?:Action for infringement of a
patent must be instituted by filing a suit in the Court having jurisdiction not
inferior to that of a District Court. The right to sue for infringement belongs
to the patentee. A person who threatens to infringe may also be sued. The
burden of establishing infringement is on the plaintiff , ie who has filed a suit.
What are the reliefs available?:It includes an injunction AND at the option of
the plaintiff, either damages or an account of profits. The limitation period for
taking action for infringement is three years from the date of infringement.
-APPLICATION FOR PATENT ABROAD:- For applying ABROAD, one has to first
apply in India and after six weeks to apply abroad.
-A Patent is a
Monopoly right.
- In case of an invention in the Research and
Development(R&D) Dept. of a Company, the application for a patent should
be made both by the Employer and the employee to avoid future
complication in the event of the employee in the R&D department resigns.
What is Para IV filing?In case of Para IV filing, the generic manufacturer
claims that either his product does not infringe the patent and /or the patent
itself is invalid. A successful patent challenge allows the challenger, a 180
days exclusivity in which no other company can launch a generic version.
What is Evergreening of a patent?:When a patent is ending its tenure
of Twenty years, there is a natural tendency on the part of the patent holder
to extend the patent by applying some cosmetic touches to the patent and
then apply to the patent authority to extend the same. In this way he can
prevent it from becoming generic. However, IndianPatent Law, under
Section 3(d) of the Patents Act, 1970, provides that the mere discovery of a
new form of a known substance which does not result in the enhancement
of the known efficacy of that substance or the mere discovery of any new
property or new use for a known substance or of the mere use of a known
process, machine or apparatus does not entitle a person for a patent or the
extension of the patent.