4711 (Cologne

)

Intellectual Property Law Dr. Tabrez Ahmad
Website: www.site.technolexindia.com Blog: http://iplexindia.blogspot.com
http://www.authorstream.com/User-Presentations/tabrezahmad/
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y All rights and IPRs in the e-contents of various power

point presentation slides/syllabus/pages are reserved in favour of Dr. Tabrez Ahmad and any violation will result in prosecution."Prior Written Affirmative Permission" is required before dealing with or using of any part of the e-contents in any manner whatsoever.©

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Must do before starting the course
y Collect IPR syllabus from KLS Library y Purchase an IPL Bare Act y Get membership

http://groups.google.co.in/group/iprkls

y Become follower of the Blog:

http://iplexindia.blogspot.com

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Agenda
1. 2. 3. 4. 5. 6.

CONCEPT OF PROPERTY & INTELLECTUAL PROPERTY IP UBIQUITOUS IN LIFE RATIONALE BEHIND IP PROTECTION OF IP BY PRIVATE AND PUBLIC DEBATE NATURE OF IPRs MAIN IP INSTRUMENTS

7. STRATEGIC ELEMENTS 8. INTERNATIONAL FRAMEWORK 9. NATIONAL REGIME 10. RECENT WIPO CASE of Mahindra & Mahindra v. Zach Segal.

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CONCEPT OF PROPERTY INTELLECTUAL PROPERTY 
Natural object becomes a resource when it

satisfies a human want 
A resource possessed and owned becomes a

property 
Traditional property have bundle of legal rights

linked to ownership and possession of an item  (Tangible: related to physical objects) Intellectual Property is intangible property
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CONCEPT OF INTELLECTUAL PROPERTY Cont

Concept of Private Property and Freedom of contract
y Private property and contract y Right to property and Indian constitution y Freedom of Contract

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CONCEPT OF INTELLECTUAL PROPERTY
It is the PROPERTY CREATED BY APPLICATION OF HUMAN MIND and Investment of money, labour and judgment. 

Intangible (non-physical) in nature- derives

value from ideas 
There is no uniform definition of IP  In knowledge age, IP is a key to techno-

economic growth
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2. IP UBIQUITOUS IN LIFE 
Articles of food, furniture, clothing, textiles,

cosmetics, pharmaceuticals, entertainment gadgets, machinery, books, etc. are all IP protected. 
Domain of IP is ever expanding with advent

of Technology and Globalization : GI, IC topography are new additions, Traditional Knowledge/Biodiversity are likely additions
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3.

RATIONALE BEHIND IP

y The creative activity culminating in IP is necessary

for socio-economic progress creative activity

y Material incentives and rewards encourage greater y IP rights grant monopoly through contract with the

Govt. to ensure rewards

y The interests of owner and society are balanced by

limiting periods of monopoly with obligation to disclose and remedies against abuse of rights

y Disclosure brings knowledge in public domain
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4. PROTECTION OF IP BY PRIVATE AND PUBLIC DEBATE
y Why govt. is required to protect IP y Whether govt. is really able to protect IPRs y Whether we require IPR govt. offices. y Why not only Private Protection

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5. Nature of IPRs
a. Key issues b. Balancing of Interests

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5. NATURE OF IPRs
y Essentially negative rights to stop others from

copying or counterfeiting

y In patents, being first with an invention pre-empts any

right of another making same invention independently.
y In copyrights, the right is diluted as right is over the form

of expression and not over idea.

y IPRs being statutory rights are legally enforceable. y They are territorial in nature.

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5.a. Key issue : Ownership of Knowledge
versus Knowledge Piracy

IPR plays a decisive role
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5.b Balancing of Interests

Private Producer Industrialized Economies Monopoly

Public Consumer Developing Economies Competition

³Private Interest Must Yield Public Good´
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5.b Balancing of Interests

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5.b. Balancing of Interests cont .

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5.b Balancing of Interests
cont . Controlling Counterfeiting
.A never ending challenge

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.6 MAIN IP INSTRUMENTS
1. 2. 3. 4. 5. 6. 7. 8.

Trademarks, Trade Names & Services Marks Geographical Indications Trade Secrets and Confidential Information Patents Industrial Designs Layout-designs of Integrated Circuits Plant Varieties Copyrights And Related Rights

First seven are also called as Industrial Property Rights
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7. STRATEGIC ELEMENTS
Protection Offered By Each One Of The Tools  Period Of Validity  Geographical Limits  Enforcement Features  Licensing Issues, Benefit Sharing  Other Legal Implications 

A clear appreciation of these«. Imperative for all IPR players
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7. STRATEGIC ELEMENTS
y Options available to the IPR Holder
y Exploit the IPR himself y License the IPR to another party (s) with mutually y y y y y y

negotiated benefit sharing arrangements Cross License for mutually independent working and / or collaborative working Assign the IPR to another party (s) for an appropriate return Barter rights Establish a franchise system involving other parties Take action against those who infringe his rights Let the rights selectively lapse in certain countries
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7. STRATEGIC ELEMENTS Cont..
y Realising Value
y Valuation of Knowledge and IPR y Licensing of IPR y IPR Insurance y IPR as a collateral

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7. STRATEGIC ELEMENTS Cont.. How does one realise the value of one s intellectual assets

A structured audit is necessary
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7. STRATEGIC ELEMENTS Cont
y IPR Strategies
y Effective use of International Conventions y Strategic options in the statutory provisions

e.g. divisional applications, continuation, and continuation in part y Extending life of an invention y Joint IPR y IPR Leveraging y IPR Litigation as a strategy
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Beware !!!!

Seek usage clearance

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7. STRATEGIC ELEMENTS Cont...
Institutional Imperatives
Institutional IPR Policy  Integrating IPR into business strategy & project management  Effective Use of IPR information  Identifying areas of possible infringements  Licensing strategy  Policing of institutional IP assets  Litigation strategy  IPR audit  Effective utilisation of International Conventions. 

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8. INTERNATIONAL FRAMEWORK
y Paris Convention 1883- Industrial Property y Berne Convention 1886- Copyright y BIRPI was based on Berne , Switzerland with a staff of seven y Madrid Agreement is one of the special arrangement created to standardize the provisions related to Trademarks, approximately thirty nations , the USA not being one of them are party to Madrid Agreement y The agreement was completed at the Madrid revision conference of the Paris convention in 1890, and later revised at Stockholm in 1967. y (Paris Convention + Berne Convention) Merged in 1893 = United International Bureau for the Protection of Intellectual Property ( BIRPI)= WIPO in 1970
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y 1974 WIPO became a specialized agency of the

United Nations system of organisations, with a mandate to administer Intellectual Property matters recognised by the member states of the UN. y Today all international applications go to the WIPO which forwards the applications to the designated countries for examination persuant to national law.

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y The agreements of the WTO system encompasses

trade in goods and services. y other areas include Agreements relating to protection of IP and dispute settlement y The Trade Related Intellectual Property subjects ( TRIPS Agreements) sets out inter alia, the legal regime governing Patents, Trade marks, Industrial Designs, Copyright, Computer Programmes, Micro Organisms, and Micro Biological Processes.

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The IPR regime is managed by many conventions and agreements, in the world and the TRIPS agreements is the last one in the series of agreement. They are
1. 2. 3. 4. 5. 6. 7. 8. 9. 10.

Paris Convention for the protection of Industrial Property, 1983 ( revised in 1967 and 1979 Berne Convention for the protection of Literary and Artistic works, 1886 ( last revised in 1971) Madrid Agreement, 1891 Universal Copyright convention 1952 Lisbon Agreement, 1891 Rome convention 1961 Convention establishing the WIPO, 1967 Geneva Convention Treaty on Intellectual Property in respect of Integrated circuits, 1989 and The TRIPs Agreement 1995.
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9. National Regime
Patent Amendment Act 2005 Trademarks Act, 1999 Design Act 2000 Copyright ( Amendment) Act, 1999 Protection of Plant Varieties and Farmers Rights Act, 2001 6. Geographical Indications of Goods ( Registration and Protection) Act, 1999 7. Biological Diversity Act 2002 8. Semiconductor Integrated Circuits Layout Design Act 2000
1. 2. 3. 4. 5.
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10. Recent WIPO Case
y Mahindra & Mahindra v. Zach Segal, www.wipo.int,

August, 12 , 2009.

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