Intellectual Property Right

A Primer
 Concept
• Intellectual property (IP) refers to the creations
of the human mind like inventions, literary and
artistic works, symbols, names, images and
designs used in commerce.

• Intellectual property is divided into two

categories:
• 1. Industrial property, which includes inventions
(patents), trademarks, industrial designs, and
geographic indications of source; &
 Concept
• 2. Copyright, which includes literary and artistic works such
as novels, poems and plays, films, musical works, artistic
works such as drawings, paintings, photographs and
sculptures, and architectural designs.

• Rights related to copyright include those of performing

artists in their performances, producers of phonograms in
their recordings, and those of broadcasters in their radio
and television programs.

• Intellectual property rights protect the interests of creators

by giving them property rights over their creations.
 Concept
• Generally, IPR includes four separate and distinct types of
intangible property namely — patents, trademarks,
copyrights, and trade secrets, which collectively are referred
to as “intellectual property.”

• However, it is including newer emerging forms.

• In recent times, geographical indications, protection of plant

varieties, protection for semi-conductors and integrated
circuits, and undisclosed information have been brought
under the umbrella of intellectual property.
 Concept
• The World Intellectual Property Organization (1967) gives the
following list of the subject matter protected by intellectual
property rights:
o literary, artistic and scientific works;
o performances of performing artists, phonograms, and broadcasts;
o inventions in all fields of human endeavor;
o scientific discoveries;
o industrial designs;
o trademarks, service marks, and commercial names and
designations;
o protection against unfair competition; and
o “all other rights resulting from intellectual activity in the
industrial, scientific, literary or artistic fields.”
 WHAT COUNTS AS INTELLECTUAL
PROPERTY?
• Intellectual property is the property created or
recognized by the existing legal provision.
• Intellectual property is nonphysical property
which stems from, is identified as, and whose
value is based upon some idea or ideas
(novelty & unknown to anyone else)
 WHAT COUNTS AS INTELLECTUAL
PROPERTY?
• It is outcome of cognitive process and exist
privately known only to creator.
• The inputs for idea is community, education
nurturing the creativity.
• The most noticeable difference between
intellectual property and other forms of
property is That intellectual property is
intangible, that is, it cannot be defined or
identified by its own physical parameters.
 Concept
• The most noticeable difference between
intellectual property and other forms of
property is ;
• That intellectual property is intangible, that is,
it cannot be defined or identified by its own
physical parameters.
 Concept
• With the establishment of the world trade
Organization (WTO), the importance and role
of the intellectual property protection has
been crystallized in the Trade -Related
Intellectual Property Systems (TRIPS)
Agreement.
 Concept
• After India became a signatory to the TRIPS
agreement, the Patents Act, 1970 has been
amended in the year 1995, 1999, 2002 and 2005 to
meet its obligations under the TRIPS Agreement.
• The law of trademarks is also now modernized
under the Trademarks Act of 1999. Copyright Act,
1957 has been amended several times to keep
pace with the changing times.
• The most notable amendment was introduced in
1984 including “computer programmes” within the
definition of "literary work”.
 Concept
• India did not have a specific law governing geographical
indications of goods which could adequately protect the
interest of producers of such goods .
• This resulted into controversial cases like turmeric,
neem and basmati.
• To cover up such situations it became necessary to have
a comprehensive legislation for registration and for
providing adequate protection for geographical
indications and accordingly the Parliament has passed a
legislation, namely, the Geographical indication of
Goods (Registration and Protection) Act, 1999.
 Concept
• Geographical indications are defined, for the
purposes of the Agreement, as ;
• Indications which identify goods as originating
in the territory of a Member, or a region or
locality in that territory,;
• where a given quality, reputation or other
characteristic of the good is essentially
attributable to its geographical origin
 Concept
• The Protection of Plant Varieties and Farmers’
Rights Act 2001 was enacted in India to protect
the new plant varieties.

• Strong intellectual property rights help consumers

make an educated choice about the safety,
reliability, and effectiveness of their purchases.
• Enforced intellectual property rights ensure that
products are authentic, and of the high-quality
that consumers recognize and expect
 Concept of Patent
• A patent is an exclusive right granted by a country
to the owner of an invention to make, use,
manufacture and market the invention, provided
the invention satisfies certain conditions stipulated
in the law.
• A patent is an official document given to an inventor
by the government allowing him to exclude anyone
else from commercially exploiting his invention for a
limited period which is 20 years at present.
 Patent Act, 1970
• The Patents Act, 1970 remained in force for about 24 years
without any change till December 1994.
• India was put under the contractual obligation to amend its
Patents Act in compliance with the provisions of TRIPS.
(1994,1995 &1999)
• The Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) is an international agreement
administered by the World Trade Organization (WTO) that
sets down minimum standards for many forms of intellectual
property (IP) regulation as applied to nationals of other WTO
Members.
• In 2002 comprehensive amendment.
 Duration of Patent
• Section 53 provides that the term of every patent
granted after the commencement of the Patents
(Amendment) Act, 2002 on the date of such
commencement,
• shall be twenty years from the date of filing of
application for the patent.
• The patentee has to pay renewal fee according to Sec
53 of the Indian Patent Act.
• Renewal fee or Maintenance fee is paid every year for
keeping a patent in force for the term of paten
 PATENTABLE SUBJECT MATTER
• A patent is granted for an invention which may be related to any process
or product.
New Invention
• “New invention” is defined as any invention or technology which has not
been anticipated by publication in any document

• or used in the country or elsewhere in the world before the date of filing
of patent application with complete specification;

• the subject matter has not fallen in public domain or that it does not
form part of the state of the art [Section 2(1)(l);

• Where, capable of industrial application, in relation to an invention,

means that the invention is capable of being made or used in an
industry [Section 2(1)(ac)].
 PATENTABLE SUBJECT MATTER
• In Raj Prakash vs. Mangat Ram Choudhary AIR 1978 Del.1,
it was held that invention, as is well known, is to
• find out some thing or discover some thing not found or
discovered by anyone before.
• It is not necessary that the invention should be any thing
complicated. The essential thing is that the inventor was
first to adopt it.
• The principal therefore, is that every simple invention that
is claimed, so long as it is something which is novel or new,
it would be an invention and the claims and specifications
have to be read in that light.
 Conditions of Patentability Patent
• Not all inventions are patentable. An invention
must fulfill certain requirements known as
conditions of patentability.
• The conditions of patentability are: a) novelty,
inventive step (non-obviousness) & industrial
• applicability (utility).
• The inventions that are not patentable have been
stipulated under Section 3 of the Patents Act.
 NOVELTY
• A novel invention is one, which has not been disclosed,
in the prior art where prior art means everything that
has been published, presented or otherwise disclosed
to the public on the date of patent.
• For an invention to be judged as novel, the disclosed
information should not be available in the 'prior art'.
This means that there should not be any prior
disclosure of any information contained in the
application for patent.
• (anywhere in the public domain, either written or in
any other form, or in any language) before the date on
which the application is first filed.
 NOVELTY
• In Ram Narain Kher v. M/s Ambassador Industries, AIR
1976 Del 87, the Delhi High Court has held that :
• At the time the patent is granted to a party it is essential
that the party claiming patent should specify what
particular features of his device distinguish it from those
which had gone before and show the nature of the
improvement which is said to constitute the invention.

• A person claiming a patent has not only to allege the

improvement in art in the form but also that the
improvement effected a new and very useful addition to
the existing state of knowledge. The novelty or the
invention has to be succinctly stated in the claim.
 Application Process of Patent
• Application for a patent for an invention may be
made
• (a) by any person claiming to be the true and first
inventor of the invention;
• (b) by any person being the assignee of the person
claiming to be the true and first inventor in respect
of the right to make such an application;
• (c)by the legal representative of any deceased
• person who immediately before his death was
entitled to make such an application.
 Application Process of Patent
• Every application for a patent is to be made
for one invention only.
• Where the application is made by virtue
• of an assignment of the right to apply for a
patent for the invention,
• there shall be furnished with the application
proof of the right to make the application.
 Application Process of Patent
• For obtaining obtain a patent, an applicant must
fully and particularly describe the invention
claimed in a complete specification.
• The disclosure of the invention in a complete
specification must be such that a person skilled in
the art may be able to perform the invention.
• This is possible only when an applicant discloses
the invention fully and particularly including the
best method of performing the invention.
 IPR
• Where an application for a patent has been
published but a patent has not been granted;
• any person may in writing, represent by way
of opposition to the Controller against the
grant of patent on the grounds stipulated
therein;
• The Controller on request of such person shall
hear him and dispose of the representation in
the prescribed manner and specified time.
 IPR
• If an application for a patent has been found
to be in order for grant of the patent and is
not found to be in contravention of any of the
provisions of the Act, the patent shall be
granted as expeditiously as possible to the
applicant
 IPR
• The work relating to drafting of specifications,
making of application for a patent,
subsequent correspondence with the Patent
Office on the objections raised,
• representing the applicant’s case at the
hearings, filing opposition and defending
application against opposition, is entrusted to
a qualified Patent Agent.
 Copyright
• Introduction
• The idea of Copyright protection only began to
emerge with the invention of printing, which made it
for literary works to be duplicated by mechanical
processes instead of being copied by hand.
• This led to the grant of privileges, by authorities and
kings, entitling beneficiaries exclusive rights of
reproduction and distribution, for limited period, with
remedies in the form of fines, seizure, confiscation of
infringing copies and possibly damages.
 Copyright
• In India, the law relating to copyright is
governed by the Copyright Act, 1957 which has
been amended in 1983, 1984, 1985, 1991,
1992, 1994, 1999 and 2012 to meet with the
national and international requirements.
• In 1999, the Copyright Act, 1957 was further
amended to give effect to the provisions of the
TRIPs agreement providing for term of
protection to performers rights.
 Meaning of 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, rights of
reproduction, communication to the public,
adaptation and translation of the work.
• Unlike patent copyright protects the
expression and not the ideas.
Works in Which Copyright applies
• Original literary, dramatic, musical and artistic
works;
• Cinematograph films; and
• Sound recordings.
 Macmillan and Company Limited vs. K. & J.
Cooper, 1924
• It was held that the word ‘original’ does not mean that the work must
be the expression of original or inventive thought.
• Copyright Acts are not concerned with the origin of ideas, but with
the expression of thought; and in the case of ‘literary work, with the
expression of thought in print or writing.
• The originality which is required relates to the expression of the
thought; but the Act does not require that the expression must be in
an original or novel form, but that the work must not be copied from
another work—that it should originate from the author.
• What is the precise amount of the knowledge, labour, judgement or
literary skill or taste which the author of any book or other
compilation must bestow upon its composition in order to acquire
copyright in it within the meaning of the
 Artistic Work
It means :
• a painting, a sculpture, a drawing (including a
diagram, map, chart or plan), an engraving or
a photograph, whether or not any such work
possesses artistic quality;
• a work of architecture; and
• any other work of artistic craftsmanship.
 Copy
• A copy is one which is either a reproduction of the
original or a work which closely resembles the
original [Challenger Knitting Mills v. Kothari Hosery
Factory 2002.
• "Cinematograph film" means any work of visual
recording on any medium produced through a
process from which a moving image may be
produced by any means and includes a sound
recording accompanying such visual recording and
"cinematograph" shall be construed as including
any work produced by any process analogous to
cinematography including video films.
 Does performance of acting comes under
copyright
• The Bombay High Court in Fortune Films
International v. Dev Anand & Another 1979
Bom.17, has held that in view of the
definitions of “artistic work”, “dramatic work”
and cinematograph film”, it would appear that
• the Copyright Act, 1957 does not recognize
the performance of an actor as ‘work’ which is
protected by the Copyright Act.
 AUTHORSHIP AND OWNERSHIP
• Copyright protects the rights of authors.
• “Author” as per Section 2(d) of the Act means:
o In the case of a literary or dramatic work the author,
i.e., the person who creates the work.
o In the case of a musical work, the composer.
o In the case of a cinematograph film, the producer.
o In the case of a sound recording, the producer.
o In the case of a photograph, the photographer.
o In the case of any literary, dramatic, musical or artistic
work which is computer-generated, the person who
causes the work to be created.
 AUTHORSHIP AND OWNERSHIP
• In a musical sound recording there are many right holders.
For example, the lyricist who wrote the lyrics, the composer
who set the music, the singer who sang the song, the
musician (s) who performed the background music, and the
person or company who produced the sound recording.

• A sound recording generally comprises various rights. It is

necessary to obtain the licences from each and every right
owner in the sound recording. This would ,inter alia, include
the producer of the sound recording, the lyricist who wrote
the lyrics, and the musician who composed the music.
 AUTHORSHIP AND OWNERSHIP
• In the case of a literary, dramatic or artistic
work made by the author in the course of his
employment by the proprietor of a newspaper,
magazine or similar periodical under a
contract of service or apprenticeship, for the
purpose of publication in a newspaper,
magazine or similar periodical, the said
proprietor shall, in the absence of any
agreement to the contrary, be the first owner
of the copyright
 Term of Copyright
• Literary, dramatic, musical or artistic works
enjoy copyright protection for the life time of
the author plus 60 years beyond i.e. 60 years
after his death.
• In the case of joint authorship which implies
collaboration of two or more authors in the
production of the work, the term of copyright
is to be construed as a reference to the author
who dies last. (Essential to have permission
from all the authors.)
 Term of Copyright
• In the case of copyright in posthumous,
anonymous and pseudonymous works,
photographs, cinematograph films, sound
recordings, works of Government, public
undertaking and international organizations,
the term of protection is 60 years from the
beginning of the calendar year next following
the year in which the work has been first
published.
 Term of Copyright

• The Copyright (Amendment) Act, 1994 has given special right to

every broadcasting organization known as broadcast
reproduction right in respect of its broadcasts.

• This right is to be enjoyed by every broadcasting organization for

a period of twenty-five years from the beginning of the calendar
year next following the year in which the broadcast is made.

• In terms of Copyright (Amendment) Act, 1999 if any performer

appears or engages in any performance, he has a special right in
relation to such performance called performers right to be
enjoyed for a period of fifty years.
 Copyright Board
• Section 11 of the Act provides for the establishment
of the Copyright Board and empowers the Central
Government to constitute the same consisting of a
Chairman and not less than two, but not more than
fourteen members.
• Chairman of the Board should be a sitting or retired
judge of the High Court or a person qualified to be
appointed as judge of the High Court.
• The Registrar of Copyright to act as Secretary of the
Copyright Board.
 Functions of the Copyright Board
• 1. Settlement of disputes as to whether copies of any literary, dramatic or artistic
work or records are issued to the public in sufficient numbers.
• 2. Settlement of disputes as to whether the term of copyright for any work is
shorter in any other country than that provided for that work under the Act.
• 3. Settlement of disputes with respect to assignment of copyright as dealt with in
Section 19A.
• 4. Granting of compulsory licences in respect of Indian works withheld from public.
• 5. Granting of compulsory licence to publish unpublished Indian works.
• 6. Granting of compulsory licence to produce and publish translation of literary and
dramatic works.
• 7. Granting of compulsory licence to reproduce and publish literary, scientific or
artistic works for certain purposes.
• 8. Determination of royalties payable to the owner of copyright.
• 9. Determination of objection lodged by any person as to the fees charged by
Performing Rights Societies.
• 10. Rectification of Register on the application of the Registrar of Copyright or of
any person aggrieved.
 Assignment of Copyright
• The owner of the copyright in an existing work or
the prospective owner of the copyright in a future
work may assign to any person the copyright.
• Section 18 of the Copyright Act provides for the
assignment of copyright in an existing work as well
as future work.
• In both the cases an assignment may be made of
the copyright either wholly or partially and
generally or subject to limitations and that too for
the whole period of copyright or part thereof.
 Assignment of Copyright
• If a work is done by an author for a
consideration for a publisher, the copyright in
it would normally vest in the publisher subject
to any contract to the contrary, as is provided
by Section 17 of the said Act.
• Secondly as provided by Section 18, the
copyright could be assigned, and if it is so
done it would be vested in the purchaser.
 Mode of Assignment

• Section 19 of the Act provides that an

assignment of copyright should be in writing
signed by the owner of the copyright or his duly
authorized agent.
• Mere acceptance of remuneration or delivery of
manuscript does not constitute an assignment
of copyright.
• Oral assignment is invalid and it is
impermissible in law
 Registration of Copyright
• The registration of the work under the
Copyright Act is not compulsory and is not a
condition precedent for maintaining a suit for
damages, if somebody infringes the copyright.
 Moral Rights — Author’s Special Right
• Apart from remedies for infringement of copyright,
the Act expressly provides for the protection of
special rights of the author known as moral rights.
• Under Section 57 of the Act an author of copyright
work can restrain or claim damages in respect of any
distortion or mutilation of the work or any other
action in relation to the said work which would be
prejudicial to his honour or reputation.
• These rights can be exercised even after the
assignment of the copyright. They can be enforced by
an action for breach of contract or confidence, a suit
for defamation, or passing off, as the case may be
Rupendra Kashyap v. Jiwan Publishing House

• It was held that CBSE is a public undertaking;

examination papers are literary work made
under the direction and control of CBSE and
CBSE is the first owner of the copyright in the
examination papers on which examinations
are conducted by it.
• In another case Allahabad high Court has held that the
copyright in the question papers set for the High School
and Intermediate examinations belongs to the paper-
setters.

• Since this copyright neither belonged to nor has been

assigned to the Board, the notification which declares that
‘copyright of the question papers set at the examinations
conducted by Board shall vest in the Board’ is clearly bad.
• Simply by issuing a notification under the Intermediate
Education Act, the State Government could not arrogate
to itself or to the Board a right which neither of them
possessed under the law relating to copyright