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Intellectual Property

- Shesadev Nayak, Ph.D.

Introduction
Intellectual Property is a valuable
resource for a business as it may
provide a competitive advantage.
It must be

Developed
Acquired
Maintained, and
Protected

For large firms, stringent IP laws is a


protection against imitition.

IP Laws in India cover the


following:

Trademarks
Copyrights
Patents
Geographical Indication of Goods
Designs
Others, including semiconductor
designs, plants and farmer rights,
and biological diversities

Trademarks
A trademark is a

Word
Figure
Numeral
Design
Or a combination of any of these

It is used to identify and distinguish the


goods or services of a business from
those marketed by others.
It establishes the relationship between
the goods and the manufacturers. It can
relate to both products and services.

Some Interesting
Trademarks

Numbers
Symbols
Letters
Colors
Sound (Roar of the Lion, MGM)
Aroma (Sumitomo tyres has
registered a rose-like smell as a
trademark)

Process of Registration of a
Trademark
Trademark search
Application for Registration
Receipt (with an official no) and
examination (Absolute acceptance,
Acceptance with modification and
refusal)
Acceptance, Advertisement (in
Trademark Journal) and Opposition
(within three months)

Trademarks
Certification marks (ISI, ISO),
Collective Marks (CA, CII etc)
Cancellation (If there is no bona fide
use of the trademark for 5 years or if
it is wrongly registered)
Rights conferred by Registration
Exclusive right to use
Infringement of Trademarks (Identical
or deceptively similar)

COPYRIGHT
(The Copyright Act 1957 along with the Copyright
Rules, 1958)

Kinds of Intellectual Property


Literary Works
Dramatic Works
Musical Works
Artistic Works
Cinematographic Films & Sound
Recordings

Registration of Copyright
Though the Indian Copyright Act provides for a
procedure for registration of copyright,
registration is not necessary for acquiring a
copyright.
In Indian laws, a copyright is created when the
original work is created and registering it does
not confer any special rights.
The particulars with the Registrar of copyrights
will serve as evidence of existence of the work
on the date of registration. If not registered, the
creator of original work use other methods to
prove existence of their work on a particular
date.

Copyright Protection
Idea Vs Expression : Copyright applies
only to the expression and not on the idea.
Originality : it is important to establish
that the work originates from the author
and is not a copied work.
Fixation : Copyright can exist only if the
work is represented in material form.
Fair Use: Copyright holders are deemed to
consent to fair use of their work by others.

Copyright terms
In most cases, the term copyright is
the lifetime of the author plus 60
years thereafter.
There are some exceptions:
The term is 25 years for broadcasting.
The term is 50 years for performances.
For posthumous publications, the rights
stand for a period of 60 years after the
publication.

Infringement of Copyright
A copyright grants protection to the creator of
an original work and prevents such work from
being copied or reproduced without consent.
The creator of a work can prohibit anyone
from
Reproducing the work in any form such as print,
sound, video etc.
Recording the work in CDs, Cassettes etc.
Broadcasting it in any form
Translating it into other languages, and
Using the work for a public performance, such as a
stage drama or musical performances.

Infringement of copyright
A copyright is infringed when someone,
without the permission of the copyright
holder, does any of the above, which only the
copyright holder has the exclusive right to do.
The Copyright Act provides for both civil and
criminal remedies for infringement of
copyright.
Remedy includes injunctions and orders for
seizures & destruction, paying damages
RoC has the power to prevent import of
infringing copies.

Copyright Protection for


Computer Programs
In 1994, the definition of the term literary
work in the Copyright Act was amended to
include computer programs, tables and
compilations, including computer databases.
Knowingly making use of an infringing copy of
a computer program is a punishable offence.
The penalty for such an offence is
imprisonment (7 days to 3 years) and a fine
(from Rs. 50,000/- to Rs.2,00,000).

PATENTS
A patent confers monopoly rights on the
inventor for a limited period of time.
The rights are supposed to act as
incentives for promoting development
of new products.
Being a party to the WTO, India is under
an obligation to keep its patent laws in
conformity with the TRIPS provisions.

Criteria for Patentability


A patent does not protect an idea but
it protects the invention, which is the
manifestation of the idea.
The term invention is defined as a
new product or process involving an
inventive step and capable of
industrial application.
The three criteria for patentability :
novelty, utility and inventive step.

Novelty
Patents are not granted for inventions
that are well known to the public.
Example : no one has a patent for a
wheel but it does not mean that
someone can apply and get a patent
for that.
For an invention to be patentable, it
has to be new at the time of
invention by its original inventor.

Utility
The invention should have the
potential to be of benefit to
someone.
The invention must be capable of
industrial replication

Inventive step
The invention must be a significant
technical advancement
If the difference between the new
invention and the existing alternatives is
not substantial, the patent may not be
awarded.
The Indian Patent Act lists all innovations
that are not classified as innovations
within the provisions of the act, and
hence are not patentable.

The following are not classified as


inventions
Inventions that are frivolous or contrary to established
natural laws.
Inventions whose primary users are contrary to
morality or can cause harm to humans or the
environment.
The mere discovery of a scientific principle without
manifesting it in a product.
Discovery of a new use of an existing substance.
A new method of agriculture.
A business method.
A manufacturing process : process patents were
available, but India has moved product patent regime.

Applying for a patent


right
1. Filing application (numbered)
2. Meeting Procedural Objections
3. Publication of the Application in the official gazette os
open to public, after 18 months of filing the
application.
4. Request for examination (by the applicant or any other
person within 36 months from the date of application).
5. Pre-grant opposition (within 3 months or till the grant)
6. First Examination Report is issued. It raises various
substantive procedural objections.
7. Meeting the official Objections
8. Grant of the patent
9. Post-grant opposition

STAGES - FILING TO GRANT OF


PATENT
FILING OF APPLICATION
PROVNL. / COMPLETE

IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS

PUBLICATION OF APPLICATION

PROMPTLY AFTER 18 MONTHS FROM P.D.

REQUEST FOR EXAMINATION

WITHIN 48 MONTHS FROM F.D.

EXAMINATION-ISSUE OF FER

GRANT OF PATENT
WITHIN 12 MONTHS

3rd Party Representation


ALL OBJECTIONS TO BE COMPLIED WITHIN 12
MONTHS

OPPOSITION

Decision of
Controller
Appeal

Appellate Board

Revocation/Amendment

Infringement
Infringement of patent rights can result
from making, using, selling, or importing
for these purposes, the product without
the permission of the patent holder.
On infringement of his/her rights, a
patent holder can file for an injunction or
for damages on account of profits lost.
Infringement in India does not lead to
filing of criminal charges.

Licensing of Patents
Patents can be licensed to another
person / party with a written
agreement between the parties.

Competitive Advantage for


Entrepreneurs
Patent can be used to secure technological
lead.
The technological lead provided by the
patent can be used by the entrepreneur to
establish a trademark. In such a case,
even if the product goes off patent, the
trademark remains. (3Ms patented sticky
adhesives Post-it trademark).
By licensing, it is possible to create
significant wealth.

Geographical Indication of
goods

The Geographical Indication of goods Act, 1999,


came into effect in September 2003.
A geographical Indication identifies a product as
originating from a place that has a quality,
reputation or other characteristic attributable to
its place of origin.
Ex : Sparkling wine from Champagne in France can
be called Champagne; that originating from
elsewhere is called bubbly or sparkling wine.
In India there are certain quality associated with
Darjeeling Tea, Banarasi Saree and Lucknowi
Chikkan

To qualify as a GI
The GI should pertain to a defined territory.
A given quality or reputation should be
attributable to goods originating from that
region.
Registration of a GI confers the
following rights:
Right to use the GI in relation to goods for
which GI is registered.
Right to obtain relief in case of
infringement
GI rights can not be assigned, transferred
or licensed.

DESIGNS
Designs are protected under Design
Act,2000.
In order to be protected, a design has to
satisfy the following criteria:
The design has to be original.
It can be applied to an article of manufacture of
any substance, and include any part of an article
capable of being made and sold separately.
The elements of the design must be capable of
existence separate from the article on which it is
applied.
The design must be of a distinctive nature and
must appeal to people.

The following Designs will


not qualify
Methods or principles of
constructions
Features dictated by function
A mechanical device
A trademark
Designs that can be considered as
immoral

Other laws in India related


to IPR

The Protection of Plant and Varieties and


Farmer Rights Act, 2001, seek to protect any
Intellectual Property connected with Indias
biological resources (promotes new varieties
of plants)
Biological Diversity Act, 2002, protects Indian
biological resources by allowing fair access to
all Indians.
Semiconductor Integrated Circuits Layout Act,
2000 (was enacted to comply to the TRIPS
guidelines and to protect the layout of ICs)

Trade Secrets
A trade secret is a formula, practice, process,
design, instrument, pattern, or compilation of
information which is not generally known or
reasonably ascertainable, by which a business
can obtain an economic advantage over
competitors or customers.
Since trade secret protection does not convey
exclusive rights like Patent, it can be easily
destroyed.
For example, a trade secret can be lost through
independent discovery, reverse engineering, or
accidental disclosure.

Legislative Framework of IP
Department of IP &P covers
Administration

The Patents Act, 1970 (as amended in


2005)
The Patents Rules, 2003 (as amended in
2006)

The Designs Act, 2000


The Designs Rules, 2001 (as amended in 2008)

The Trade Marks Act 1999


The Trade Marks Rules 2002

The Geographical Indications of Goods


(Registration & Protection) Act, 1999
The Geographical Indications of Goods
(Registration & Protection) Rules, 2002,

Department of Education covers


The Copyrights Act 1957 (amended in
1999)

CONTROLLER GENERAL OF PATENTS, DESIGNS


AND TRADEMARKS

(CGPDTM)
PATENT OFFICE

Head Office
KOLKATA
Branch
DELHI

IPTI ,NIIPM,
T M REGISTRY
P.I.S. Nagpur

DESIGN OFFICE

KOLKATA

Head Office
MUMBAI

DELHI

Branch
CHENNAI

KOLKATA

Branch
MUMBAI

CHENNAI

ABAD

G.I. REGISTRY

CHENNAI

Accidental Discovery of
Rasgulla
In the early 20th century, the yummy, sticky rasgulla did
not exist.
A sweet shop owner left a kadhai of bubbling, hot syrup in
the care of his bumbling assistant and went out for a
while.
Next to the khadai were some paneer balls meant to made
jalebis in.
In the kind of cross connection that changes the world for
better, (sometimes), the assistant poured all the paneer
balls into the khadai.
The owner came back and, after getting over his initial
shock tasted the new concoction and pronounced it
delicious!
Rasgullas were born that day and Ganguram, the owner
went on to become a millionaire!

Edible Spoon?
(US 6,320,461 issued 201204-12)
The Eco-spoon removes the need
for non-biodegradable disposable
plastic spoons.
It is 100% natural, made entirely
of corn. It is 100% biodegradable
and 100% edible.
The recipe contains all-organic
ingredients, namely: corn flour,
whole wheat flour, baking
powder, sugar, salt, eggs,
separated milk, spices and herbs.
This means that the spoon is not
just Edible, but also Good for you.