IPR

UNIT - IV

M.SC, M.TECH, [PH.D]

SYLLABUS

 Patent Rights: Scope of Patent Rights.

 Licensing and Transfer of Technology.

 Patent information and databases.

 Geographical Indications.
 PATENT RIGHTS:
SCOPE OF PATENT RIGHTS
DETERMINING THE SCOPE OF A PATENT

 A patent gives its owner certain exclusive rights with respect to an

invention.
 In return for these rights, the patent must describe how to
construct the invention and how to use it.
 This way, once the patent rights run out, everyone can use the
invention and so more knowledge becomes available to society.
 The rights conferred by a patent need to be defined well, so that it
is clear to everyone what is and is not covered by the patent.
THE CLAIM

 The claims (typically found at the end of a patent document) provide a definition of
what the patent protects.
 Terms used in a claim may be defined by the whole document, but ultimately only
what is described in the claims is protected.
 The claims are used in a very similar manner when judging the validity of a patent
(or application).
 When prior art is found, it must be compared against the claims to determine if the
patent is new and nonobvious.
 Even if the "spirit of the invention" or the "general idea" is the same as in the prior
art, if the claims contain one feature that is not mentioned in the prior art, the
invention is new.
 If the one new feature is not obvious, then the claim is patentable.
An example: Patenting the BUTTON
https://www.iusmentis.com/patents/claims/

 Only cloaks WITHOUT fastening mechanisms exist.

 In patent-speak, the state of the art consists of cloaks
whose left and right sides cannot be connected together.
 Of course this makes using the cloak problematic, since it
keeps blowing open in bad weather, and rain can leak in
through the opening.
An example: Patenting the BUTTON

Cloak Fasteners
An example: Patenting the BUTTON
Mr. X, recognizes this problem and is the first to invent the fastener to
allow the sides of a cloak to be held together.
She applies for a patent and gets one granted, with the following claim:
A cloak with a front opening, with a row of fasteners down one
side of the front opening, and a row of holes at corresponding locations
down another side of the front opening into which the fasteners can be
inserted.

Mr. X, can now sue anyone who sells cloaks with buttons and holes in
which the buttons are to be inserted.
He can't sue people who sell traditional cloaks, since those don't have the
buttons and holes required by his patent claim.
An example: Patenting the BUTTON

Working independently on the same problem, Mr. Y, later invents a mechanism with
metallic hooks and receptacles into which the hooks are placed.
He obtains a patent with the following claim:
A cloak with a front opening, having at least one metallic hook at one side of
the front opening, and at least one receptacle for said hook at the other side.

Mr. Y, can now sue people who sell cloaks with metallic hooks and receptacles, but
not people who use wooden buttons and holes, even though a hole can be seen as a
receptacle.
A wooden button is not the same as a metallic hook. Mr. Y, can also sue people who
use a single metallic hook, as opposed to Mr. X, whose claim requires multiple buttons
and holes (since he uses "a row of fasteners", and a single fastener doesn't make a
row).
Mr. X Mr.Y
An example: Patenting the BUTTON

 Suppose one Mr. A comes along and manufacturers cloaks with

buttons. Mr. A must now take a license under Mr. X patent, or risk
getting sued by him for patent infringement. After all, Mr. A uses
buttons, and so his cloaks meet the definition of Mr. X claim because
he uses a row of fasteners down one side and a row of holes down the
other side.
 Mr. B produces cloaks with metallic hooks on one side of the front
opening, which are plugged into holes at the other side. Clearly Mr. B
must now take a license from Mr. Y, as his cloaks meet the definition
of Mr. Y claim. However, Mr. B must also pay Mr. X royalties, since
Mr. X claim is not restricted to traditional round buttons, but in fact
covers fasteners of all shapes, including metallic fasteners that are
hooked into holes.
An example: Patenting the BUTTON

Mr. C produces cloaks with fasteners, but instead of holes in the other side of
the cloak, he provides loops made of string through which rectangular wooden
buttons are to be put. Since he uses wooden buttons, he falls outside the scope
of Mr. Y patent claim. However, since Mr. C coat do not have a row of holes
down one side of the garment, but instead use loops made of string that are put
on top of the garment, he also falls outside the scope of Mr. X claim.

Now shirt manufacturer Mr. D comes along and notices that Mr. X buttons
would also be very useful for his shirts. He uses the very same buttons that Mr.
X uses, but puts them on shirts and not on cloaks. Since Mr. X claim is
restricted to "cloaks", Mr. D doesn't infringe on her patent.
 The Doctrine of Equivalence.
 Using this doctrine, someone infringes on a patent even if he doesn't
use all the measures of a claim, as long as the measures he
substituted are regarded as "equivalent" of the measures in the claim.
 When and how something is an equivalent of a term in a patent claim
is a matter of national patent law. The scope of equivalence varies from
country to country, and even within one country it can vary with time.
 "Festo" decision : According to this decision, an element of a patent
claim cannot be infringed by an equivalent measure if that element was
"amended for reasons of patentability" during the prosecution of the
patent application.
LICENSING AND TRANSFER
OF TECHNOLOGY.
TECHNOLOGY TRANSFER

 Technology transfer is the process of sharing of skills,

knowledge, technologies, methods of manufacturing, samples of
manufacturing and facilities among governments and other
institutions to ensure that scientific and technological
developments are accessible to a wider range of users who can
then further develop and exploit the technology into new
products, processes, applications, materials or services.
TECHNOLOGY TRANSFER

 Technology Transfer Agreement Generally, there are two ways of

acquiring technology.
 It can be developed through own research and development or it can
be purchased through indigenous or imported sources.
 India has opted for a judicious mix of indigenous and imported
technology. Purchase of technology is commonly called 'Technology
Transfer' and it is generally covered by a technology transfer
agreement.
TECHNOLOGY TRANSFER

 Universities worldwide play a leading role in advancing the frontiers

of science and technology.
 In recent years, a key concern for policy-makers has been how to
ensure that the wealth of knowledge generated within universities can
be transferred to industry so that society in general, and local
businesses in particular, can benefit from university scientific and
technological expertise.
 Intellectual property rights have been identified in many countries as
a mechanism that provides the necessary incentives for the
commercialization of university research results.
TECHNOLOGY TRANSFER

 Data from a number of Asian countries show a marked increase in the

number of patent applications filed by universities.
 National governments have enacted policies to promote university-industry
technology transfer, and various Asian universities have adopted formal
intellectual property policies and established technology transfer offices to
manage their intellectual property rights.
 It is only in recent years that Indian industry has really started collaborative
programs with universities. Indian success in the software sector is
remarkable.
 The market share for India in the global IT service business is now 4.4%.
 Major global IT companies have outsourced some part of their operations to
India and have established R&D centers there as well.
TECHNOLOGY TRANSFER

 Indian IT engineers are working in many industrialized countries and

contributing to the advancement of information technology.
 A few world-famous universities like Indian Institute of Technology have
made this success possible. But overall, few Indian industries are
supporting research projects within universities.
 Most of the collaboration is in the form of consultancies, which typically do
not involve large-scale projects.
 Indian universities are not fully aware of the importance of intellectual
property rights (IPRs) and lack the resources to manage them.
 Both sides need to reach out if U-I collaboration is to flourish.
TECHNOLOGY TRANSFER

 In India, science and technology policy is determined by the general

direction set out in Science Policy 2003 and its implementation plan.
 The responsibility of administering S&T policy is spread out over many
government ministries and their departments, each one of which has
jurisdiction over a particular field, such as environment, agriculture, health,
information technology and water.
 The Department of S&T (DST) in the Ministry of S&T is the central body
that deals with the promotion of S&T.
 The Department of Scientific & Industrial Research (DSIR) was created
in 1985, with a mandate to oversee indigenous technology promotion,
development and transfer. DSIR is also responsible for coordinating the
activities of the CSIR.
TECHNOLOGY TRANSFER

 Council of Scientific and Industrial Research (CSIR) and two public

enterprises, namely National Research Development Corporation
(NRDC) and Central Electronics Limited (CEL).
 The NRDC provides consulting service to academia and industry for
the protection of their IPRs and the transfer of technologies.
 This function of the NRDC is central to supporting and facilitating
effective industry-academia collaboration that result in the
commercialization of technologies
TECHNOLOGY TRANSFER

 The Department of S&T (DST) issued general guidelines regarding the ownership of
IPRs that resulted from DST funding.
 This guideline leaves the question of ownership to the contract made between the
inventor and the enterprise.
 On the other hand, inventions from projects funded by the Department of Ocean
Development can be owned entirely by the institutions.
 Guidelines from other government departments are yet to be formulated, as their
IPR Policies are still being made.
 Generally speaking, the concept of IPR policy in Indian academic institutions is still
incipient with only a small number of institutions announcing their policies.
 Most universities just deal with IPR on a case by case basis.
TECHNOLOGY TRANSFER
 In India, most of the R&D funding comes from government ministries.
 In the year 2001-2, universities accounted for 51% of the total projects in number, but
only about 28% in terms of funding. The national laboratories spend 38% of the total
funding.
 It is possible that universities undertake more basic research, which is less expensive,
while national labs conduct research at more advanced stages, which tends to be more
expensive.
 Like many other Asian countries, engineering and life sciences (biotechnology and
medical sciences) are the two biggest fields for national research funding.
 In addition to general funding, some government departments, such as the Department
of Scientific and Industrial Research administer specific programs for collaboration with
the private sector at various stages of development.
 Among them, the University Grant Commission (UGC) provides seed funds on condition
that the outcome is patented.
TECHNOLOGY TRANSFER DOCUMENTS

 Inventor Assignment Agreement

 Confidentiality Agreements
 License Agreements
 Patents
 Provisional applications
 PCT applications
 National applications
 Issued patents
 Drawings and Specification, Machinery and components list, etc.,
DISPUTES IN TECHNOLOGY TRANSFERS

 Disputes relating payment of royalty and fees

 Delay in completion of the projects
 Passing of unapproved technology
 Technology up gradation and incomplete data and drawings
 Licensor is competing with licensee with the latest models in India
 After sales service and backup
 Intellectual Property Rights (IPR) issues like of trade mark
 Quality and cost of production,
 Delay and supply of inferior raw materials and components
TECHNOLOGY LICENSING

 This text focuses on licensing as a means of exploiting intellectual

property (IP).
 Before examining the licensing process it is important to consider the
context in which licensing may occur
 A business may acquire IP for defensive purposes – using the IP to
prevent copying of the businesses products or service or to assert in
response to an IP challenge from another party
 An introduction to successful technology licensing may be
summarized by six fundamental and simple ideas.
TECHNOLOGY LICENSING

 First: Technology licensing only occurs when one of the parties owns
valuable intangible assets, known as Intellectual Property (IP),
 Second: There are different kinds of technology licenses.
 Third: Technology licensing occurs in the context of a business relationship
in which other agreements are often important
 Fourth: Technology licensing negotiations, like all negotiations, have sides
(parties) whose interests are different, but must coincide in some ways.
 Fifth: Technology licensing involves reaching agreement on a complex set of
terms,
 Sixth: Technology licensing is not necessarily synonymous with technology
transfer
PREPARATION FOR NEGOTIATION

 Preparation for technology licensing negotiation begins with the parties asking
themselves a series of questions.
 These questions must be answered whether the party is the licensor (the one who
owns the IP and gives the license) or the licensee (the one who wants to use the IP
and wishes to receive the license).
 How will this license agreement make money for each party?
 What must each party gain in order for this agreement to be worthwhile?
 What is the best result that can be obtained for each party?
 What outcome does each party want to avoid?
PATENT INFORMATION
AND DATABASES.
PATENT INFORMATION

 Patent information includes not only the content of published patent documents but also
bibliographic and other information concerning patents for inventions, inventors’ certificates,
utility certificates and utility models. It is the largest, well-classified and most up-to-date
collection of technical documents on new and innovative technologies.
 Patent applications are filed in accordance with the requirements of national or regional
patent laws. An applicant may be a public and private company, government agency,
researcher in a university or in a research and development institution, or even individual
inventors.
 So far, around the world some 40 million patents have been published, and that too in all
possible technical fields. To these, some one million additional patent documents are added
every year.
 A patent document contains, in a standardized form, a wealth of information about the state-
of-the-art, adjudged in the international context, in technological developments in that area of
technology. As a first step, it is essential to grasp clearly the basic concepts of the patent
system so as to appreciate better the practical usefulness of patent information.
https://patentscope.wipo.int/search/en/search.jsf
http://www.pfc.org.in/db/db.htm
GEOGRAPHICAL
INDICATIONS
DEFINITION

 A geographical indication is a sign used on goods that have a specific

geographical origin and possess qualities or a reputation due to that place of
origin.
 Most commonly, a geographical indication consists of the name of the place
of origin of the goods.
 Agricultural products typically have qualities that derive from their place of
production and are influenced by specific local geographical factors, such as
climate and soil.
 Ex. Tirupathi Laddu, Mysore Silk, Kakinada Kaja…
DEFINITION

 The use of geographical indications is not limited to agricultural

products.
 They may also highlight specific qualities of a product that are due to
human factors found in the product’s place of origin, such as specific
manufacturing skills and traditions.
 The place of origin may be a village or town, a region or a country.
 An example of the latter is “Switzerland” or “Swiss”, perceived as a
geographical indication in many countries for products made in
Switzerland esp. for watches. Ex. Swiss Watches
 WHY DO GEOGRAPHICAL INDICATIONS NEED PROTECTION?

 Geographical indications are understood by consumers to denote the origin

and quality of products.
 Many of them have acquired valuable reputations which, if not adequately
protected, may be misrepresented by commercial operators.
 False use of geographical indications by unauthorized parties, for example
“Darjeeling” for tea that was not grown in the tea gardens of Darjeeling, is
detrimental to consumers and legitimate producers.
 The former are deceived into believing they are buying a genuine product
with specific qualities and characteristics, and the latter are deprived of
valuable business and suffer damage to the established reputation of their
products.
 WHAT IS THE DIFFERENCE BETWEEN
A GEOGRAPHICAL INDICATION AND A TRADEMARK?

 A trademark is a sign used by a company to distinguish its goods and

services from those produced by others. It gives its owner the right to
prevent others from using the trademark.
 A geographical indication guarantees to consumers that a product
was produced in a certain place and has certain characteristics that
are due to that place of production.
 It may be used by all producers who make products that share certain
qualities in the place designated by a geographical indication.
WHAT IS A “GENERIC” GEOGRAPHICAL INDICATION?

 If the name of a place is used to designate a particular type of

product, rather than to indicate its place of origin, the term no longer
functions as a geographical indication.
 For example, “Dijon mustard”, a kind of mustard that originated many
years ago in the French town of Dijon, has, over time, come to denote
mustard of that kind made in many places.
 Hence, “Dijon mustard” is now a generic indication and refers to a
type of product, rather than a place.
HOW ARE GEOGRAPHICAL INDICATIONS PROTECTED?

 Geographical indications are protected in accordance with national

laws and under a wide range of concepts, such as laws against unfair
competition, consumer protection laws, laws for the protection of
certification marks or special laws for the protection of geographical
indications or appellations of origin.
 In essence, unauthorized parties may not use geographical indications
if such use is likely to mislead the public as to the true origin of the
product. Applicable sanctions range from court injunctions preventing
unauthorized use to the payment of damages and fines or, in serious
cases, imprisonment.
 WHAT IS WIPO’S ROLE IN THE PROTECTION OF
GEOGRAPHICAL INDICATIONS?

 WIPO administers a number of international agreements that deal

partly or entirely with the protection of geographical indications (in
particular, the Paris Convention and the Lisbon Agreement).
 WIPO meetings offer Member States and other interested parties the
opportunity to explore new ways of enhancing the international
protection of geographical indications.
Plant a TREE… SAVE the Planet

47
THANK
YOU
!!!