Part VI Other Business Legislations

Chapter 32
Intellectual Property Rights

© 2016 Cengage Learning India Pvt. Ltd. All rights reserved.

 Learning Objectives

• Intellectual Property
• Intellectual Property Rights:
 Patent
 Copyrights
 Industrial design rights
 Trademarks
 Trade dress
 In some jurisdictions, Trade secrets

© 2016 Cengage Learning India Pvt. Ltd.

All rights reserved.
 IP vs. IPRs

What is Intellectual Property (IP)?

 IP is the creation of human intellect.
 It encompasses ideas, knowledge, invention, innovation, creativity, and
research, all being the product of human mind and is similar to any
property, whether movable or immovable,
 Wherein the proprietor or owner may exclusively use his property at will
and has the right to prevent others from using it but with his permission.
 Intellectual Property is divided into two broad categories
 Industrial Property- inventions, industrial designs, trademarks, Geographical Indication of
source
 Copyright- Literary & artistic works like books, poems, plays, films, music, drawng,
painting etc.

What are Intellectual Property Rights (IPRs)?

 ‘IPRs’ are moral and legal claims or entitlements over intellectual property.
 Rational Objectives Behind
Intellectual/Property Protection
 Financial incentive:
 IPR allows owners to benefit from the property they have created.
 IPR acts as incentive for investment in creation of IP

 Economic growth
 Prevents counterfeiting
 Leads to formalizing of economy
 More investment by industry in R&D
 Categories of IPR

• Patents
• Copyright
• Industrial Design Right
• Trademarks
• Trade Dress
• Trade Secrets
 What is a Patent

“Patent” means a patent for any invention granted under the

Act. It can also be defined as a grant from government, which
confers on the grantee, for a limited term (usually 20 years),
the exclusive privilege of making, selling and using an
invention and also authorizing others to do so.
[Sec2(1)(m) of The Patents Act, 1970 ]
Requirements for an Invention to be Patentable
 Test of Novelty- The subject matter should be new
 Test of Utility- It should be useful
 Test of Vendibility-The subject matter should be capable of
being marketed for ‘commercial purpose’
 Working of Patent

• Inventions are granted for being used and not for hoarding
• It should not be granted to enable patentees to enjoy
monopoly
• Promotions of technological innovation
• Patent granted do not impede protection to public health
• Patent inventions should be available at reasonably
affordable prices
 Inventions not Patentable
• Frivolous inventions or which claims anything obvious or contrary to well
established natural laws
• Inventions contrary to public order or morality
• A discovery, scientific theory or mathematical method
• A mere discovery of a new property; process; new use of known
substance, use of known process
• A mere arrangement or re-arrangement of known devices, working
independently
• A method or process of testing during the process of manufacture
• Method of agriculture or horticulture
• Mathematical or business methods or a computer program
• A method or process for medicinal, surgical, curative, prophylactic or
other treatment of human beings, animals, plants
• Traditional Knowledge [Sec 3]
• Relating to atomic energy [Sec 4]
 Related Terms
• Patent Agent A person for the time being registered under
this act as a patent agent.
[Sec2(1)(n)]
• Patent Article & Patent process An article or process in
respect of which a patent is in force.
[Sec2(1)(o)]
• Patentee. The person for the time being entered on register
as the grantee or proprietor of the patent
[Sec2(1)(p)]
• Invention A new product or process involving an inventing
step and capable of industrial application.
[Sec2(1)(j)]
 Applications for Patent

A patent application can be addressed to the ‘Controller

General of Patents Design and Trademarks(CGPDT)’ and filed
by any of the following persons either alone or jointly:
a) True and first inventor
b) Assignee of (a)
c) The legal representative of (a) or (b) after their death.
Contd.
 Territorial Jurisdiction of
Appropriate Office for the
Applicants
Patent application can be submitted at the appropriate Patent Office under whose
jurisdiction the applicant normally resides or has his domicile or has a place of business or
the place from where the invention actually originated.
For the applicant, who is non-resident or has no domicile or has no place of business in
India, the address for service in India or place of business of his patent agent determines
the appropriate patent office where applications for patent can be filed.
Patent Office The States of Maharashtra, Gujarat, MP, Goa and
Branch,  Mumbai Chhattisgarh and the Union Territories of Daman and Diu &
Dadra and Nagar Haveli
Patent Office The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu,
Branch, Chennai the Union Territories of Pondicherry & Lakshadweep, and
Telangana.
Patent Office The States of Haryana, Himachal Pradesh, Jammu and
Branch, New Delhi Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi
and the Union Territory of Chandigarh.
Patent office, The rest of India.
Kolkata
 Publications and Examination of
Applications
– Every applications shall be published
– It shall be notified in the Official Gazette
– Publications shall include all particulars
– Examiner gives a detailed report
• If the applications are as relevant for defense purpose then
the publication of information will be prohibited
Opposition Proceedings to Grand Patent
 Before Patent is granted
 After granted but before the expiry of an year
 An Opposition Board is constituted
 Grants of Patents and Rights
conferred Thereby
• Grant of Patent
• Date of Patent
• Rights of Patentee
• Term of Patent
Restoration of Lapsed Patents
An application should be made within 18 months
Surrender and Revocation of Patents
• A patentee can offer to surrender his patent after giving a notice to:
• Controller
• Appellate Board
• Court
• The Central Government
 What is Copyright?

 Copyright is a right given by the law to creators of literary,

dramatic, musical and artistic works and producers of
cinematograph films and sound recordings.
 It is a bundle of rights including, inter alia, rights of
reproduction, communication to the public, adaptation and
translation of the work.
 There could be slight variations in the composition of the
rights depending on the work.
 Copyright does not cover the ideas and information
themselves, only the form or manner in which they are
expressed
 Covered under Indian Copyright Act, 1957, amended in 1999
Application of Copyright Act
Copyright subsists throughout India in the following classes of works:
– Original literary, dramatic, musical and artistic works;
– Cinematograph films; and
– Sound recordings.
In the case of a literary work copyright means the exclusive right
To reproduce the work
To issue copies of the work to the public
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.
 Exemptions to Copyright

Uses of the work

– for the purpose of research or private study,
– for criticism or review,
– for reporting current events,
– in connection with judicial proceeding,
– performance by an amateur club or society if the
performance is given to a non-paying audience, and
– the making of sound recordings of literary, dramatic or
musical works under certain conditions.
 Procedure for registration of a Work
under the Copyright Act, 1957
• Copyright comes into existence as soon as a work is created
and no formality is required to be completed for acquiring
copyright.
• However, facilities exist for having the work registered in the
Register of Copyrights maintained in the Copyright Office of the
Department of Education. The entries made in the Register of
Copyrights serve as prima-facie evidence in the court of law.
The Copyright Office has been set up to provide registration
facilities to all types of works and is headed by a Registrar of
Copyrights and is located at:
B.2/W.3, C.R. Barracks,
Kasturba Gandhi Marg,
New Delhi- 110 003 (Tel: 338 4387)
 What is a Trade Mark?

A Trade Mark is a visual symbol in the form of a word , a device

,or a label applied to articles of commerce with a view to
indicate to the purchasing  public that is a good manufactured
or other wise dealt in by a particular person as distinguished
from similar goods dealt or manufacture by other persons.
Trademarks can include: brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, combination
of colours
Trademarks can be owned or licensed
 Functions of a Trademark

1. It identifies the product of its

origin 
2. It guaranties its unchanged
quality
3. It advertises the products &
4. It creates an image for
products.
 Trademarks Management

Trademark is a major asset of any company. Hence ' trademarks

management ' in an enterprise comprises two aspects:
• Trademark policy is a marketing function. (the marketing
personnel of an organization will take care of this trademark
policy known as ' Brand Management '. )
• Trademark Registration: gives exclusive proprietary rights to the
mark’s owner
• Trademark protection: is a legal function
 Absolute Ground for Refusal of
Registration (Section 9)
A mark shall not be registered as a trade mark if –
a) It is of such nature as to deceive the public or cause confusion;
b) It contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India;
c) It comprises or contains scandalous or obscene matter;
d) It’s use is prohibited under the Emblems and Names
(Prevention of Improper Use) Act,1950.

Relative Grounds for Refusal of Registration

1. Its identity with an earlier trademark and similarity of goods or

services covered by the trademark.
2. Its similarity to an earlier trademark.
 Limitations as to Colour

a) A trade mark may be limited wholly or in part to any

combination of colours and any such limitation shall be taken in
to consideration by a tribunal having to decide on the distinctive
character of the trade mark.
b) So far as a trade mark is registered without limitation of colour,
it shall be deemed to be registered for all colours.
 Trade Dress/ Trade Secrets
Trade Dress
•Refers to the visual appearance of the product, its
packaging that signify the source of product to the
consumers
•It includes- distinctive appearance, color, design, shape,
packaging, aroma
Trade Secrets
•Any confidential business information which provides an
enterprise a competitive edge
•Formula, practice, business process, desing, device,
compilation of information which are generally not known to
public
•Unauthorised use by anyone other than the holder is
prohibited