INTELLECTUAL PROPERTY RIGHTS

Human minds are creative. Different people create or invent useful things in different
fields of pursuits. Creations of human intellect constitute the intellectual property (IP). IP
is like any other tangible property. Any property, movable or immovable, is legally
protected to prevent it from being stolen or robbed. Similarly, an intellectual property
needs also to be protected to prevent its infringement. However, the common property
laws do not cover the IP. Therefore separate laws were necessary to protect the
intellectual property. The legal rights accrued on the intellectual property are termed
intellectual property rights (IPR). IPR is legal protection for IP given by the state
(country). It is intangible asset and IPR is tradable property.

Rights over property, whether tangible or intellectual, include possession or ownership,

enjoyment, application or usage, right to exclude non-owners, and power to transfer the
property. It is to be noted that property rights are not considered fundamental rights in
India. The Agreement on Trade Related Aspects of Intellectual Property Right (TRIPS)
of the World Trade Organization enlists the following important forms of IPR which
have trade values in the market – copyrights, trademarks, geographical indications,
industrial designs, patents (and plant variety right), layout design of integrated circuit and
undisclosed information (trade secret). TRIPS also gives the minimum standards to be
followed by the WTO Members, including India.

General Characteristics of IPR:

It is not totally correct to characterize all the IPRs with the same yardstick. Yet, with
exception, IPRs are exclusive (monopolistic) private rights legally reserved for the
owners. IPRs are heritable, assignable and transferable to other parties by licensing or
otherwise. They are tradable items. All IPRs are granted for limited periods, different
IPRs have different lives, on expiry of the term the IPR becomes part of public domain or
public property. All IPRs are governed by national laws, and therefore limited to the
national jurisdictions.

Three Broad Categories of IPR:

IPRs are broadly grouped into two categories: Copyright and related rights, and Industrial
property. Domain of copyright is mainly literally and artistic fields including dramatic
performances, radio and television broadcast, video and audio production. Computer
software is also copyrightable intellectual property. On the other hand industrial property
embraces patents, trademarks, industrial design and geographical indication. However,
some other forms of IPR, owing to their nature do not fit into this classification. They
make a class of themselves or unique they are referred to as Sui generis IPR. Plant
breeder’s right, layout design of semiconductors chips are of this category.

How protection is provided?

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IPRs are protected by national laws relating to that IPR. The national laws are generally
tuned with provisions and obligations of international treaties/ conventions. Some of the
international treaties for different IPRs are:

Subject of Treaty International treaty

Industrial property Paris Convention*
Copyright and related rights Berne Convention*
Intellectual property rights TRIPS Agreement*
Plant variety protection UPOV Convention
Biodiversity Convention on Biological Diversity*
Deposit of microorganisms for patenting Budapest Treaty*
International filing of patent application Patent Cooperation Treaty*
Broadcasting and performers’ rights Rome Convention*
Integrated circuit design Washington Treaty*
Industrial design Hague Agreement
Trademark Madrid Agreement
Geographical indication Lisbon Agreement
Farmers’ rights International Treaty on Plant Genetic
Resources for Food and Agriculture*
* India is Member

General Procedure for protection of intellectual property:

- Application in prescribed form with prescribed fee and supporting
documents to designated office
- Examination of application
- Official notification of application
- Opportunity for opposition
- Opportunity for defense by the applicant
- Final acceptance/rejection and official publication

TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement

TRIPS Agreement is one of the important agreements of WTO and it specifies the
minimum standards and requirements of the intellectual property rights. In respect of IPR
it defines two relations between Member nations while dealing in IPR. These are:
National Treatment: Each Member of WTO shall accord to the nationals of other
Members treatment no less favourable than that it accords to its own nationals with
regard to the protection of intellectual property, subject to the exceptions provided in the
international conventions.
Most-Favored-Nation Treatment: With regard to the protection of intellectual property,
any advantage, favour, privilege or immunity granted by a Member to the nationals of
any other Member country shall be accorded immediately and unconditionally to the
nationals of all other Members.
Article 27 of the TRIPS Agreement is worth-recalling as it tells about the requirements
for implementing patent rights.

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Article 27.1: Patent shall be available for inventions (products or processes) without
discrimination as to the place of invention, the field of technology, whether products are
imported or locally produced.
Article 27.2: Members may exclude from patentability of invention to protect public
order, morality, human, animal and plant health and life, and the environment.
Article 27.3: Members may exclude from patentability
(a) diagnostic, therapeutic and surgical methods for treatment of human and animals,
(b) plants and animals other than microorganisms, essentially biological processes
other than microbiological and non-biological processes.
However, Members shall provide patents or effective sui generis system or combination
of both for plant variety protection.
To comply with the requirements of TRIPS Agreement India has already put in place the
requisite legislations on different IPR or amended the existing laws as mentioned earlier.
(Where is the HQ of WTO located? How many Members are there?)

Why to protect intellectual property?

IPR promotes knowledge and economic development. Once protected, IP becomes
tradable commodity.
- IPR gives incentives to inventor/ innovator and thus encourages
development of newer and better technology.
- Once protected, new knowledge is open to public scrutiny. Openness
encourages competition and criticism which leads to improvement of the
technology.
- Real scientific and technological progress has taken place only in
countries that provided effective IPR protection.
- IPR should be looked as recognition for invention/ innovation and not
only as monopoly right.
- Due to lack of protection traditional knowledge becomes confined to
closed circuit and vulnerable to loss for ever.
- Economic progress depends on developments in science and technology
and IPR protection is essential for sustaining economic progress.
- IPR protection facilitates transfer of technology and its commercialization.
- IPR protection saves IP from unauthorized exploitation – due to lack of
protection there were cases of biopiracy – the classic examples are that of
Basmati, Neem, Turmeric, which are traditional knowledge based products of
India, once patented by European and American companies.
(Oxford English Dictionary: Biopiracy: (noun) bioprospecting, regarded as a form
of exploitation of developing countries.)

Indian legislations on IPR

Copyright: The Copyright Act 1957 (Amended 1983, 1984, 1992, 1994, 1999)
Trademark: The Trademarks Act, 1999
Industrial Design: The Designs Act, 2000
Geographical Indication: The Geographical Indications of Goods (Registration and
Protection) Act, 1999
Patent: The Patents Act, 1970 (Amended 1999, 2002, 2005)

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Layout Designs of Integrated Circuits: The Semiconductor Integrated Circuits Layout
Design Act, 2000
Plant Breeder’s Right: The Protection of Plant Varieties and Farmers’ Rights Act 2001
Trade secret: No separate Act is provided for trade secret, as the existing civil laws can
protect it.

Copyright
The exclusive legal right given to the creator on his/her original works for a fixed number
of years to print, publish, perform, film, or record literary, artistic, or musical material,
and to authorize others to do the same. The copyright protects only the form of
expression of ideas, not the ideas themselves. Copyright law protects the rights of owner
in artistic works against those who “copy”. The Berne Convention (1971) and the
International Copyright Order (1999) govern the copyright protection internationally.
Copyright is automatic, i.e. registration of copyright is not essential. In India, the
Copyright Act, 1957 governs copyright. Copyright is given for life time plus 60 years
after his/her death. In case of broadcasting it is 25 years from the date of first broadcast.
The head office of Indian copyrights is located in New Delhi under the Department of
Higher Education in the Ministry of Human Resource Development.

Trademark
Trademark is any sign, or any combination of signs, capable of distinguishing the goods
or services of one undertaking (company) from those of other undertakings (companies).
Such signs, in particular words including personal names, letters, numerals, figurative
elements and combinations of colours as well as any combination of such signs are
eligible for registration as trademarks. Trademark in common terms is known as brand.
Brand or trademark is a powerful force for sales promotion in a competitive market.
The owner of a registered trademark have the exclusive right to prevent third parties from
using signs which are identical or similar to the registered trademark without consent of
the owner. A trademark is an identification symbol, which is used in the course of trade
to enable the public to distinguish one trader’s goods or service from similar goods or
service of other traders. In India, the Trademarks Act, 1999 governs trademarks. In India,
trademark is registered for 10 years and it can be renewed perpetually. The head office of
trademark registration is Mumbai with branch offices at Kolkata, Delhi, Chennai and
Ahmedabad. The Controller-General of Patents, Designs and Trademarks administers
trademarks.

Industrial Design
Design refers to aesthetic aspects; it is external appearance of the finished product. These
aspects may be: shape, configuration, pattern and ornamentation, compositions of lines or
colors applied to any article. Design in the finished article appeals to and are judged
solely by the eye. Examples: Designs as applied to shoes, TV, textiles. Design increases
value of products.

In India, the designs are registered under the Designs Act, 2000. The term of registered
design is 10 years, which can be further renewed for 5 years. The head office of design
registration is in Kolkata with branch offices at Mumbai, Delhi, and Chennai with

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territorial jurisdictions. The Controller-General of Patents, Designs and Trademarks
administers industrial designs.

Geographical Indication
Geographical indication (GI) like trademark means a name, mark or symbol or indication
for agricultural, natural or manufactured goods originating from a geographical region,
and such goods has a reputation in the market for its quality or other characteristic
because it is produced in that particular geographical region. In case of 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.
Geographical indication is a community right for traditional goods. An association of
individuals or producers or any organization or authority established under the existing
law can apply for registration of geographical indication. In these respects geographical
indication is exceptional to other IPRs. The registration of a geographical indication gives
exclusive right to the use of the geographical indication of the goods for which it is
registered. The individual producer/ manufacturer of the goods of that locality have also
to register in the Geographical Indication Office to use the registered GI. The registered
proprietor of GI and the authorized users obtain relief in respect of infringement of the
GI.
Examples of GI (registered) are Muga silk of Assam, Assam Orthodox tea, Darjeeling
tea, Naga Mirch, Champagne wine, Scotch whiskey.

In India, GI is registered under the Geographical Indications of Goods (Registration and

Protection) Act, 1999. The Controller-General of Patents, Designs and Trademarks is the
Registrar of Geographical Indications. Duration of protection is 10 years which is
renewable perpetually. The registry office of Geographical Indications is at Chennai. So
far 195 goods have been registered. (http://ipindia.nic.in/girindia/)

Patent
A patent is a government-granted legal authority given in the form of a certificate for an
invention to a person conferring exclusive right for a limited period to make or use or sell
the invention in exchange of full disclosure of his/ her invention. Invention means “a new
product or process involving an inventive step and also capable of being made or used in
the industry”.
Invention can be product or process. Process/ method or manner of manufacture of a
product could be invention. New machines, apparatus and substances produced by
manufacture could make eligible for product patent. New useful improvement of any of
the processes or products could also be inventions eligible for patents.
In India, patents are granted under the Patent Act, 1970 (amend. 1999, 2002, 2005). The
Department of Industrial Policy & Promotion, Ministry of Commerce & Industry
administers patents. The head office of Indian patents is located in Kolkata. Delhi,
Mumbai, and Chennai have Branches offices with territorial jurisdictions. Patent is
granted for 20 years from the date of filing of patent application with complete
specification.

What are not inventions under the Indian patent law?

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 a. A frivolous invention contrary to well established natural laws;
b. Primary use or commercial exploitation of which would be contrary to public
order or morality or which causes serious prejudice to human, animal or plant life
or health or to the environment;
c. The mere discovery or the formulation of an abstract theory or discovery of any
living thing or non-living substance occurring in nature;
d. 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 unless such known
process results in a new product or employs at least one new reactant;
e. A substance obtained by a mere admixture;
f. The mere arrangement or re-arrangement or duplication of known devices;
g. A method of agriculture or horticulture;
h. Any process for the medicinal, surgical, curative, prophylactic or other treatment
of human beings or any process for a similar treatment of animals to render them
free of disease or to increase their economic value or that of their products.
i. Plants and animals in whole or any part thereof other than microorganism but
including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals;
j. A mathematical or business method or computer program per se or algorithms;
k. A literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions;
l. A mere scheme or rule or method of performing mental act or method of playing
game;
m. A presentation of information;
n. Topography of integrated circuits;
o. An invention which in effect is a traditional knowledge or which is an aggregation
or duplication of known properties of traditionally known component or
components. 

Types of patent applications:

- Ordinary application accompanied by provisional or complete specification
- Addition application (for an improvement of an invention granted)
- Convention application (applied in a convention country)
- PCT application (it is an international application for grant of patent in a number of
designated convention countries as per provisions of the Patent Cooperation Treaty.

Plant Variety Protection

Plant Breeder’s Right: The right granted by the State to the breeder or his successor or
his agent or his licensee to exclude others from producing, offering for sale, selling,
marketing, distributing, exporting or importing the propagating material of the variety for
a specified period in lieu of the registration of the variety.

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The Protection of Plant Varieties and Farmers’ Rights Act, 2001 provides for not only
plant breeder’s rights but also farmers’ rights. It is administered by an independent
national authority called as Protection of Plant Varieties and Farmers’ Rights Authority
under the Ministry of Agriculture of the Central Government with head office in New
Delhi.
Registration of plant varieties for plant breeder’s right: There is a national register of
plant varieties maintained by the Registrar-General. Registration is done for new
varieties, extant varieties (varieties under cultivation, recommended and notified varieties
and farmers’ varieties, and any other variety in common knowledge or public domain),
and for essentially derived varieties.
- All varieties are to satisfy DUS criteria and the new varieties to satisfy the Novelty
criterion too.
- All varieties must be denominated (named).
- For registered varieties breeder’s rights are given for 15 years in case of annuals and 18
years in case of trees and vines.
The Act allows researcher’s right so that researchers and breeders can freely use
registered varieties for research and in variety development.
The varieties that are likely to violate public order, morality, and that may cause injury to
human, animal and plant life and health or prejudice to the environment will not be
registered. Varieties that contain terminator gene or GURT (genetic use restriction
technology) will not be registered.
Farmers’ Right: The farmers will enjoy the right to use the planting material of
registered varieties for sowing, re-sowing, exchanging and even selling except for
commercialization as branded seeds.
Community Right: When a variety is submitted for registration, if a
ny person or organization who doubts on possible use of an extant variety or farmers’
variety in the pedigree of the variety under registration and that such use is admitted or
not, can make a claim on behalf of the local community or institution for a share of the
royalty. When such claim is proved and admitted, the concerned breeder is required to
pay compensation to be deposited in the National Gene Fund.
Essential requirements for grant of PBR
(a) NOVEL: If, at the date of filing of application for registration for protection, the
propagating or harvested material of such variety has not been sold or otherwise disposed
of by or with the consent of the breeder or his successor for the purposes of exploitation
of such variety (i) in India, earlier than one year; or (ii) outside India, in the case of trees
and vines six years, or in any other case, earlier than four years before the date of filing
such application.
(b) DISTINCT:
It is clearly distinguishable by at least one essential characteristic from any other variety
whose existence is a matter of common knowledge in any country at the time of filing of
the application.

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Essential characteristic is a heritable trait, which is determined by one or more genes or
other heritable determinants that contribute to the principal features, performance or
value of the plant variety.
(c) UNIFORM:
If it is sufficiently uniform in its essential characteristics, subject to the variation that may
be expected from the particular features of its propagation; (due to the specific nature of
the reproduction: e.g. vegetative, self- or cross-pollinated).
Hybrids are treated like self-pollinated plants.
(d) STABLE:
If it’s essential characteristics remain unchanged after repeated propagation or in the case
of a particular cycle of propagation, at the end of such cycle.

Layout Designs of Semiconductor Integrated Circuits

The scope of protection under the Semiconductor Integrated Circuits Layout Design Act
2000 and the SICLD Rules 2001 not only includes the protected layout designs of
integrated circuits (chips) but also the articles incorporating it. The term of protection is
10 years. The registry office in India is located in New Delhi with all-India jurisdiction
under the Department of Information Technology, Ministry of Communication and
Information Technology, Govt. of India. The Act provides for registration and protection
of new IC layout designs. Website of the Registry is: http://sicldr.gov.in/index.html

Undisclosed Information (Trade Secret)

No separate law is given for trade secret. Civil laws protect trade secrets from illegal
acquisition of a trade secret of a person or institution without consent of the owner. Trade
secrets are very important for commercial success of individuals or companies. Here the
techniques or technologies are maintained by secrecy and not open to public. However,
once the secrecy is leaked the competitive advantage is immediately lost.

HISTORY OF IPR SYSTEM

Concept and legal principles governing intellectual property have evolved over centuries.
The term intellectual property began to be used from the 19th century. Intellectual
property did not enter into popular usage in USA until passage of the Bayh-Dole Act in
1980.

The British Statute of Anne 1710 and the Statute of Monopolies1623 are now seen as the
origin of copyright and patent law, respectively. Patent system evolved from royal
prerogative as in Great Britain to common-law doctrine. Queen Elizabeth I (1558-1603)
granted monopoly privileges for inventions and discoveries. Approximately 200 years
after Elizabeth's reign, a patent represents a legal right obtained by an inventor having
exclusive control over production and sale of his mechanical or scientific invention.

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International Organizations
Modern usage of the term intellectual property goes back to 1888 with the founding of
the Swiss Federal Office for Intellectual Property in Berne. The Administrative
Secretariats established by the Paris Convention (1883) and the Berne Convention (1886)
merged in 1893, and became the United International Bureaux for Protection of
Intellectual Property with HQ in Berne. The organisation was relocated to Geneva in
1960, and was succeeded in 1967 with the establishment of the World Intellectual
Property Organization (WIPO) as an agency of the United Nations.

The Bayh-Dole Act, 1980

Also called University and Small Business Patent Procedures Act, the Bayh-Dole Act
deals with intellectual property arising from federal govt funded research. The Act was
sponsored by two senators, Birch Bayh of Indiana and Bob Dole of Kansas. It was
enacted by the US Congress on December 12, 1980. Bayh-Dole Act permits a university,
small business, or non-profit institution to pursue ownership of an invention in preference
to the government coming from research funded by the government.

History of Indian patent system

1856 Protection of inventions based on the British patent law of 1852. Certain exclusive
privileges were granted to inventors of new manufactures for 14 years.
1859 Modified patent monopolies called exclusive privileges (making, selling and
using inventions and authorizing others to do so for 14 years from date of filing
specification).
1872 The Patents & Designs Protection Act was passed.
1883 The Protection of Inventions Act was given.
1888 Consolidated as the Inventions & Designs Act.
1911 The Indian Patents & Designs Act was passed and replaced previous Act.
1970 The Patents Act (Act 39 Of 1970) came into force on 20th April 1972.
1999 Patents (Amendment) Act, (1999) came into force from 01-01-1995.
2002 The Patents (Amendment) Act 2002 came into force from 20th May 2003
2005 The Patents (Amendment) Act 2005 effective from 1st January 2005

History of copyright in India

Copyright Act of 1914 followed the British Copyright Act 1911. The present Copyright
Act, 1957 was framed by borrowing concepts extensively from the Copyright Act of the
UK 1956.  The Copyright Act today is compliant with most international conventions
particularly the Berne Convention (1886, 1971) and the TRIPS Agreement. The

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Copyright Act 1957 has been amended in 1983, 1984, 1992, 1994 and 1999. The last
amendment incorporated the provisions of TRIPS Agreement.

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