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INTELLECTUAL PROPERTY RIGHTS legal rights (ownership interests- right to use and sell; prevent others from using

g and selling) over work which results from intellectual activity in the industrial, scientific, literary and artistic fields. rights of creators in their creations Intellectual property rights safeguard creators and other producers of intellectual goods and services by granting them certain time-limited rights to control the use of those productions IPRs promote creativity, dissemination and application of intellectual goods and encourage fair-trading in them. They reward creativity by giving exclusive rights to the creator for a limited time. IPRs are time limited rights granted for a term. On expiry of the term the intellectual property is released (disseminated) into the public domain IPR laws, thus contribute to economic and social development.

IPR (Types)    PATENTS ACT, 1970 ( AMENDED in 2004) COPYRIGHTS ACT, 1957 ( AMENDED In 1999) NEW ACTS ENACTED AS A SIGNATORY TO GATT TO COMPLY WITH NEW ARRANGEMENT OF PROTECTION OF INTELLECTUAL PROPERTY RIGHTS. TRADEMARKS ACT, 1999 (substituted in place of Trade Marks and Merchandise Marks Act 1958) DESIGNS ACT, 1999 GEOGRAPHICAL INDICATIONS ACT, 1999

 

TYPES OF PATENTS 1. PRODUCT PATENT 2. PROCESS PATENT


Patent means a patent for any invention granted under the Patents Act (S.2)

Invention means a new product or process involving an inventive step and capable of industrial application. inventive step means a step which is new and non-obvious to a person skilled in the art. Industrial application includes useful machines and processes Patent is an exclusive right granted by the government to an inventor for a limited period for exclusive use of his invention.

Sec. 2(1)(j): Invention means a new product or process involving an inventive step & capable of industrial application 1. Process, method or manner of manufacture, 2. Machine, apparatus or other article, 3. Substance produced by manufacture, And includes any new & useful improvement of any of them. Requirements of an Invention (s.3) NEW: that no other inventor has obtained a patent for the same invention. NON-OBVIOUS that the subject matter of an invention was not obvious at the time the invention was made to a person having ordinary skill in the art to which the said subject matter pertains. USEFUL :that the machine, product, or process is one that can be used in industry or commerce. Novelty Non-Obviousness (an inventive step) Utility (Capable of industrial application)

NOT INVENTIONS (S.3):

1. An invention which claims anything contrary to existing natural laws. 2. The mere discovery of a scientific principle or the formulation of an abstract theory.

3. Discovery of a new process or property unless it results in a new reactant. 4. A substance obtained by mere admixture 5. Arrangement or rearrangement in a new way. 6. 6. A method of agriculture or horticulture, seeds, etc.. 7. 7. Any process of medicinal, surgical application on human beings or animals to render them free of disease. 8. 8. Inventions that involve essentially biological processes for the production of plants or animals. NOT PATENTABLE Atomic energy 1962(S.4) Traditional knowledge Scientific principle Abstract theory Discovery of natural substances Methods of agriculture New form of a known substance Mixture of known compounds

DURATION  The WTO s Agreement on Trade-Related Aspects of Intellectual Property Rights requires that term of a patent be not less than 20 years. It is 20 years in India (S.53)

PROCEDURE FOR REGISTRATION  An application has to be submitted to Controller of Patents. The application is published within 18 months of filing The application is then referred to Examiner within 48 months of filing. Examiner checks its authenticity, about its registration . If there are discrepancies in application , objections are raised which must be answered . Else it is notified in the Official Gazette that new Patent is registered. Patentee can sell or assign his patent to other persons. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if any) and details of best method of its working. The complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought

     

Indian patent law follows first to file system. Provisional specification describes the nature of the invention to have the priority date of filing of the application in which the inventive idea has been disclosed. It must be followed by a complete specification describing the details of the invention along with a statement of claims within 12 months after filing of the provisional application. If the complete specification is not filed within the prescribed period, the application is treated as abandoned Prior art Prior art ( state of the art) is all information that has been disclosed to the public in any form about an invention before a given date. Prior art includes things like any patents related to your invention, any published articles about your invention, and any public demonstrations. If an invention has been described in prior art, a patent on that invention is not valid.

How can one find out that an invention is already patented? A preliminary search can be made on:

1. Patent Office website in the Indian patent data base of granted patents, or 2. Patent Office journal published every week, or

3. Search in the documents kept in the Patent Office Search and Reference Room, which contains Indian patents arranged according to international patent classification system. 4. One can also make a request for information regarding any patent under section 153 of the Act

Patent-Infringement Jurisdiction-District Court (S.104) If the defendant makes a counter claim for revocation of the patent, the case is transferred to the High Court Burden of Proof (104-A): If the patentee first proves that the product is identical then if the subject matter is a process, the court may direct the defendant to prove that the process used by him to obtain the product was different.

Relief in Suits for Infringement (S 108) Injunction Either damages or an account of profits , at the option of the plaintiff Seizure, forfeiture or destruction of infringing goods, as the Court deems fit

[Infringement of patent is not an offence. No criminal action is possible] FOREIGN PATENTS Patent Co-operation Treaty has made the process of grant of Patent in various countries a simple one.

An inventor/assignee can file an application for grant of Patent via PCT route in his own home country (called International Application) and after search and examination of his invention for novelty, patentability etc., he can file his application for grant of Patent in other countries (called entry into National Phase PCT Patent Application), provided both the countries are convention countries. There are more than 180 convention countries with whom India has reciprocal relations. The list is given in the Act Patent Cooperation Treaty Adopted in Washington in 1974, revised in 1979, 84 and 2001 Simplifies and renders more economical the obtaining of protection for inventions where protection is sought in several countries,

COPYRIGHTS  Copyright:

Right in an original intellectual creation in the fields of art, literature, music, films, dramatic performances, broadcasts, software, etc.  Copyright Protection: Limited to an author s particular expression of an idea, and concept.. Copyright-Definition (S.14) Copyright is the exclusive right of the author of a literary, dramatic, musical or artistic work or a computer program, cinematograph film or sound recording or a broadcaster or a performer to issue copies of the work or communicate the work to the public. The right is for a limited period. In the case of a computer program, cinematograph film and sound recording, copyright includes the right to give a copy on commercial rental

Copyright means the exclusive right: 1. In the case of a literary, dramatic or musical work, not being a computer program: To reproduce the work or to store by electronic means To issue copies of the work to the public, not being copies already in circulation To perform the work in public To communicate the work to the public. To make cinematograph film or sound recording in respect of the work To make any translation of the work To make any adaptation of the work.

2. In the case of a computer program, cinematograph film or sound recording, to make a copy or communicate or to give a copy on commercial rental 3. In the case of an artistic work to reproduce the work in any material form including depiction in three dimensions of a two dimensional work

Works in which Copyright subsists (S. 13) A work means any of the following , namely:

1 Literary, 2. Dramatic, 3. Musical or 4. Artistic work, 5 6 Cinematograph film, Broadcast,

7. Performance, 8. Phonogram (sound recording) or 9. Work of architecture located in India. Copyright of web-site A web-site contains several works such as literary works, artistic works (photographs etc.), sound recordings, video clips, cinematograph films and broadcastings and computer software. Therefore, a separate application has to be filed for registration of all these works.

Term of Copyright (S. 22-29) Copyright in literary, dramatic, musical or artistic work (other than a photograph), published within the lifetime of the author, subsists for 60 years from the beginning of the calendar year next following the year in which the author dies. Copyright in photographs, cinematograph films, sound recordings subsists for 60 years from the beginning of the year next following the year of publication Broadcast Reproduction Right-25years from the beginning of the calendar year next following the year in which the broadcast is made Performer s Right- 50 years from the beginning of the calendar year next following the year in which the performance is made

Copyright Infringements (S. 51) Making infringing copies for sale or hire or selling or letting them for hire; Permitting, for profit, any place for the performance of works in public where such performance constitutes infringement of copyright; Distribution or Public exhibition of infringing copies for the purpose of trade; and Import of infringing copies into India.

Power of police to seize Infringing Copies (S.64) Any police officer, not below the rank of a sub inspector, may, if he is satisfied that an offence in respect of the infringement of copyright in any work has been, is being, or is likely to be committed, seize without warrant, all copies of the work and all plates used for the purpose of making infringing copies of the work, wherever found, and all copies and plates so seized shall, as soon as practicable be produced before a Magistrate. Civil Remedies For Copyright Infringement Injunctions, Damages and Accounts for profits. District Court has the jurisdiction Offence of Infringement of Copyright (S.63) Any person who knowingly infringes or abets the infringement of copyright in a work shall be punishable with imprisonment of 6 months to 3 years and fine of Rs 50,000 to Rs 2 lakh. Where infringement has not been made for gain in the course of trade or business, court may give lesser punishment for reasons to be recorded.

 

EXCEPTIONS TO COPYRIGHT INFRINGEMENT Common uses that do not constitute an infringement of a copyright : -Use of the idea only and not the particular expression Use in a court or administrative proceeding Use by the police if the material (such as a portrait) is needed to maintain public safety Use for instructional purposes in schools

Use for a purely private purpose Use in extended quotations of newsworthy

speeches or political commentaries UNCOPYRIGHTABLE STUFF Ideas and principles (R.G Anand v. Delux Films- Hum Hindustani film, Delhi High Court- UK s Copyright Act 1911) Copyright does not ordinarily protect titles by themselves or names, short word combinations, slogans, short phrases, methods, plots or factual information. White pages listings of telephone directories Ledger sheets and blank forms Rules and recipes Facts and theories (although particular expressions of facts or theories are copyrightable) Methods of operation/processes News (However, there is copyright over the way in which a news item is reported)

International Copyright (S. 40-43) Central Govt. may, by order published in Official Gazette, direct that all or any provisions of the Copyright Act 1957 shall apply to foreign works as they apply to Indian works if India has entered into a treaty with that foreign country, or if that foreign country has extended , or has undertaken to extend, reciprocal copyright protection to Indian works in that foreign country. Works of such international organizations of which sovereign governments are members as the Central Govt. may declare shall have copyright protection in India (e.g. UN, ILO, etc)

International Copyright Order 1999 The following counties are covered by Indian Copyright Act Berne Convention Countries (1971)(144 countries) Universal Copyright Convention Countries (1971) ( 94 countries) Phonogram Convention Countries (1971) (62 countries) World Trade Organization Countries ( Countries which have ratified TRIPS Agreement 1994) ( 137 countries)

TRADEMARKS  Trademarks: any word, name, symbol, or device that merchants and others use to identify themselves and their products Acquiring Trademarks By use  Famous foreign trademarks will be protected to prevent confusion in the minds of local consumers

By registration

Trade Mark is a mark which is capable of being represented graphically (visually), and is capable of distinguishing goods or services of one person from those of others. It may include shape of goods, their packaging and combination of colours

Some More Definitions Well-known Trade Mark: means a mark well known to a substantial segment of the public using such goods or services, if the use of such mark in relation to other goods or services would be taken as indicating a connection with that well-known trade mark.[ S. 2(zg)], eg. Wal-Mart , Marks and Spencer , Xerox Collective Mark: a Trade Mark distinguishing the goods and services of members of an association of persons. Collective Mark is owned by an association of persons (not being a partnership within the meaning of Indian Partnership Act, 1932) [S. 2(g)] ; eg. ASSOCHAM, FICCI Certification Mark: means a mark capable of distinguishing goods or services which the proprietor of the mark certifies in respect of origin, material, quality, accuracy, ingredients or other characteristics, etc. e.g. Agmark, ISI mark [S. 2(e)]

Term of Trade Mark  WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights sets that the initial registration of a trademark shall be for a minimum term of 7 years. In India the term of trade mark is 10 years Registration may be renewed indefinitely. Trade mark rights are, thus, in perpetuity.

LEGAL REQUIREMENTS FOR REGISTERING TM: The selected mark, brand, label, name, signature or abbreviation, etc should be : 1. Capable of being represented graphically (in the paper form). 2. Capable of being used in relation to goods or services 3. Capable of distinguishing the goods or services of one undertaking from those of others 4. Capable of indicating the connection, in the course of trade, between the goods or services on the one hand and their proprietor or permitted user on the other PROCEDURE FOR REGISTRATION a) Filing b) Examination c) Acceptance and advertisement of application d) Opposition, if any, within three months of advertisement e) Registration Renewal (S.25,26) An application for renewal (for ten years) should be made six months before the expiry of the registration with the prescribed renewal fee Registrar may remove the trade mark from the register, after giving notice, if the trade mark is not renewed. Registrar may restore the trade mark on application and payment of fee within one year from the expiration Where a trade mark is removed from the register for non payment of renewal fee, that trade mark will be freezed for one year ( Will not be allocated to another applicant for one year).

Non-Use of Trade Mark A registered Trade Mark may be taken off the register (removed from the register) if there is no bonafide use of the trade mark for a continuous period of five years (S.47)

INFRINGEMENT OF TM A registered TM is infringed by a person who, without the permission of the proprietor,  uses in the course of trade an identical or a deceptively similar TM in relation to goods or services for which the TM is registered; or  Uses a mark which because of its identity or similarity with the regd. TM and the identity or similarity of the goods/services covered by it is likely to cause confusion on the part of the public. (S.29) No action for infringement can be taken in respect of unregistered Trade Mark . However, action can be taken for passing off goods/services as those of another person (S. 27) Suit for infringement can be filed in the District Court (s.134) Relief available in Suits for Infringement (S. 135):

1. Injunction, and 2. Either damages or an account of profits, at the option of the plaintiff, 3. Destruction or erasure of infringing labels and marks TRIPS Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) sets down minimum standards for intellectual property (IP) regulations negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994

TRIPS contains requirements that nations' laws must meet for : 1. Copy rights, including the rights of performers, producers of sound recordings and broadcasting organizations 2. Patents 3. Trade marks 4. Geographical indications 5. Industrial Designs 6. Integrated Circuit layout designs & Also specifies enforcement procedures, remedies, and dispute resolution procedures

WTO The TRIPS Agreement is Annex 1C of the Marrakesh Agreement establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994. ... WTO deals with the rules of trade between nations It is a negotiating forum It has 153 members It has a General council, Council For Trade Related IPRs, Council for Trade in Goods, Council for Trade in Services

WIPO The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. It is a standard setting body. WIPO was established by the WIPO Convention in 1967

Berne Convention For protection of literary rights and artistic works Adopted in 1886 in Paris Completed in Berne in 1914, and Revised from time to time

Communal Trademark System A Community Trade Mark (CTM) is any trademark which is pending registration or has been registered in the European Union as a whole (rather than on a national level within the EU). The CTM system creates a unified trademark registration system in Europe, whereby one registration provides protection in all member states of the EU. The CTM system is unitary in character. Although an objection against a CTM application in any member state can defeat the entire application, a CTM registration is enforceable in all member states. The CTM system is administered by the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), which is located in Alicante, Spain

FOREIGN TRADEMARKS FOLLOWING TREATIES ARE RELEVANT

1. Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994 : 2. The Madrid system for the international registration of marks :

3. Trademark Law Treaty 1994: . The Communal Trademark System : Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office (members of the Madrid Union available in PDF). An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step. Further countries may be designated subsequently. Trademark Law Treaty 1994 The aim of the Trademark Law Treaty (TLT) is to approximate and streamline national and regional trademark registration procedures. This is achieved through the simplification and harmonization of certain features of those procedures, thus making trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable. The great majority of the provisions of the TLT concern the procedure before the trademark office which can be divided into three main phases: application for registration, changes after registration and renewal.

Trade Secrets means information, including a formula, pattern, compilation, program device, method, technique, or process, that derives independent economic value, actual or potential, from not being available to others who can obtain economic value from its disclosure or use Integrated Circuit- A product in which interconnections are integrally formed on a piece of material, intended to perform an electronic function Layout Design- A three-dimensional disposition of the elements composing an integrated circuit