Intellectual Property Rights and Cyber Law

UNIT-1
Property, an object of legal rights, which embraces possessions or wealth
collectively, frequently with strong connotations of individual ownership.

Intellectual property rights (IPR) refers to the legal rights given to the inventor or
creator to protect his invention or creation for a certain period of time
WHAT IS PATENT?

Patents were one of the first types of intellectual property to be recognized in modern
legal systems. Today, patented inventions pervade every aspect of life, from electric
lighting (patents held by Edison and Swan) to the iPhone (patents held by Apple).

Patents are a form of IP used to protect a product or process that is new, involves an
inventive step and has some form of industrial utility.

Patents are concerned with the protection of an invention.

 PATENT
• Patent is a statutory right granted for an invention to the inventor
or his assignee for a limited period of time, excluding others from
making, using, offering for sale, selling or importing any product covered
by a patent or, if a patent is for a process, then from using the process or a
product obtained by that process, for the above actions.

For this purpose, an invention is defined as a new product or

process involving an Inventive Step and capable of Industrial
application
 Criteria for Patentable invention :
• Novelty - An invention should not form a part of the state of the art

• Inventive Step –Feature(s) of the invention that involves technical

advance as compared to existing knowledge or has economic
significance or both and that makes the invention not obvious to a
person skilled in the art
• Capable of industrial application – The invention is capable of
being made or used in any kind of industry.
• Valid for 20 years from the date of filing or priority date
 Early Patents
The early English patent was granted by Henry VI in 1449 to John of Utynam, a glass-
maker, so that he could share his technological secrets with his apprentices without
fear of competition from them. [ Ref: EPO Publication-Protect your ideas}
- Granted for making stained glass for windows of Eton College, the process
previously unknown in England. The King commanded that none of his subjects
could use such arts for a term of twenty years without the consent of John,
since his art of making colored glass had never been practiced in England and
because he intended to instruct various subjects of the King in many arts.
- Duration of the patent was 20 years; In return, he was required to teach the
process to English glass makers.

Thus, the patent ensured the transfer of knowledge, whilst protecting the
inventor for a set period of time.
The first Italian patent was awarded by the Republic of Florence in
1421 to architect Filippo Brunelleschi who found some difficulty in
bringing the heavy stones over the River Arno into Florence for his
work of construction of massive dome of the cathedral in Florence.

He invented a new kind of boat in which such loads could be

effectively hauled over the river. He refused to make his invention
public for fear that "the fruits of his genius" be taken by another
without his consent.
• The first account of a formal patent law dates back to 1474 AD,
when the senate of Venetian republic of Italy introduced a patent
law.

• The aim of this patent law was to promote innovation and protect
the honour of inventors. Venice is believed to have issued about
600 patents (approximately 5 patents per year) from 1474 to 1594.

• It provided that an inventor might be entitled to an exclusive license

for a certain period and that a patent would be cancelled if it were
not actively exploited.

Invention : new to the world

Incentive : to innovate
Requiremen : share knowledge
 Galeleo Galilei patent request

Under Venetian Patent Act of 1474 , Galeleo Galilei obtained a patent

for irrigation pump in 1594. His request for the patent coincides with
the theme of modern patent laws.
Venetian Senate awarded him a patent for a device for Raising water. The
patent reads as follows:

“ That by the authority of this Council is granted to Mr. Galileo Galilei

that for the space of the next twenty years others than him or his
agents are not allowed in the city or any place in our state to make,
have made, or, if made elsewhere, to use the device invented by him
for raising water and irrigating fields, by which with the motion of only
one horse twenty buckets of water that are contained in it run out
continuously;
U.K. : Statute of Monopolies, 1623-24U.K. : Statute of Monopolies, 1623-24

 The issuance of letters patent in England was a royal prerogative.

The Crown of England (i.e. the King or Queen) granted diverse
monopolies, not just for inventions, but also in respect of all sorts of
common goods such as salt, playing cards etc.
 Thus, the power used to be widely abused and was also used to
raise money for the crown. As patents of such undue monopoly
became very numerous in England after 1560, the abuses led to
increasing public discontent.
 In 1624 Statute of Monopolies was enacted which declared that that
the monopolies were only to be given for 'projects of new invention‘.
 the English Parliament declared monopolies granted by the Crown to
be void except those based on patents for inventions, on the grounds
that the extensive monopolies were against the public interest.
 The Statute restricted the crown's power explicitly so that the King
could only issue letters patent to the inventors or introducers of original
inventions for a fixed number of years.
UNITED STATES OF AMERICA

Under United States law, a patent is a right granted to the inventor of a process, machine,
article of manufacture, or composition of matter, that is new, useful, and non-obvious. A
patent is the right to exclude others, for a limited time (usually, 20 years) from profiting of
a patented technology without the consent of the patent-holder. Specifically, it is the right
to exclude others from: making, using, selling, offering for sale, importing, inducing others
to infringe, applying for an FDA approval, and/or offering a product specially adapted for
practice of the patent.
INDIA- IPR Evolution and
Developments
History of Indian Patent System
Cont...
Patents Rules

Under the provisions of section 159 of the Patents Act,

1970 the Central Government is empowered to make rules for implementing
the Act and regulating patent administration.
Accordingly, the Patents Rules, 1972 were notified and brought into force
w.e.f. 20.4.1972.
These Rules were amended from time to time till 20 May 2003 when new
Patents Rules, 2003 were brought into force by replacing the 1972 rules.
These rules were further amended by the Patents (Amendment) Rules, 2005
and the Patents (Amendment) Rules, 2006.
The last amendments are made effective from 5 th May 2006.
Main features of patent rights

• Exclusive right to stop others from making, using or selling the invented product or
process
• In the nature of a property right
– may be sold or licensed
• Only available for new inventions in a field of technology
– but small improvements can be enough
• Geographically limited under national patent laws
– but there are regional and international treaties
• Must file a patent application to obtain rights
– fully describing invention
– description is published
• Limited duration, 20 years from filing date
• Annual renewal or maintenance fees (increasing with time)
Evolution of IPR in India - Milestones
Legislative Framework of IP Administration

Department of IP &P covers

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)
 Law and Regulations
• Patents Act, 1970
– Amended in
• 1999
• 2002
• 2005
• Patents Rules, 2003
– Amended in
• 2005
• 2006
 Evolution of IPR Laws in India
PATENT
YEAR HIGHLIGHTS
British implemented the first patent statute in India “On Protections of
1856 Inventions, provided certain exclusive privileges to inventors for a 14-year term.

Inventions and Designs Act introduced to consolidate and amend previous

1888 legislations- 1872 Act for designs and 1883 Act for patents in conformity
with amendments in the UK law.
Enactment of the Indian Patents and Designs Act, 1911 . Establishment of Patent
1911 Office & The Controller of Patents; Increase in term of patent from 14 years to
16 years; Product Patents in all fields of technologies.
Patents Act 1970; only Process patents for food, drugs, agrochemicals, alloys. 7
1970 years term for food, drug and 14 years term for others; Compulsory license
provisions.
TRIPS Obligations; Filing of application for Product Patents in areas of drugs, pharma
1999 and agro-chemicals allowed as mailbox applications; EMR.

Introduction of 18 months’ Publication; Examination of applications by request;

2002 Establishment of Intellectual Property Appellate Board; Uniform term of 20
years irrespective of the field of invention.
Product patents introduced in areas of drugs, pharmaceuticals and
2005 agrochemicals; Pre/Post- grant Opposition system.
Patent- Post Independence Developments

Feeling that the Indian Patents & Designs Act, 1911 was not fulfilling its
objective, the Government of India constituted a Patents Enquiry
Committee (PEC) in 1949 under the Chairmanship of Justice (Dr.) Bakshi
Tek Chand, a retired Judge of Lahore High Court, to review the patent law
in India.
Based on the recommendations of the Committee’s report dated 4th
August, 1949, a bill was introduced in the Parliament in 1953 . The bill
lapsed on dissolution of the Lok Sabha.
However,the 1911 Act was amended in relation to working of inventions
and compulsory licence/revocation in 1950 and, subsequently, for
compulsory licence in relation to patents in food , medicines, insecticides,
germicides and fungicides, in 1952. Compulsory licence was also made
available on notification by the Central Government .
Patents Act 1970
Salient features of the Patents Act, 1970

• Industrial Designs was separated from The Act

• Elaborate definition of invention
• No product patents available for food, drugs and medicines
including the product of chemical processes
• Modification of certain inventions as non-patentable
• Mandatory furnishing of information regarding foreign applications
• Adoption of absolute Novelty criteria in case of publication
• Expansion of the grounds for opposition to the grant of a patent
• Exemption from anticipation in respect of certain categories of
prior publication, prior communication and prior use
• Provisions for secrecy of inventions relevant for defence purposes
• Provision for use of inventions for the purpose of Government or
for research
 Term of patent reduced from 16 years to 14 years
Term of patent for the processes for drugs/foods maximum 7 years
Provision for non-working as ground for compulsory licences,
licences of right, and revocation of patents
• Government empowered to use inventions for its own use
• Prevention of abuse of patent rights by making restrictive
conditions
in licence agreements/contract as void
• Provision for appeal to High Court on decisions of Controller
• Provision for opening of branches of the Patent Office.
• Endorsement of ‘LICENSE OF RIGHT’ to the patents related to drugs,
foods and products of chemical reaction
OBJECT OF THE PATENT LAW- Supreme Court

Hon’ble Supreme Court while deciding the appeal in “Bishwanath Prasad

Radhey Shyam v. H.M. Industries” in respect of infringement of the patent
entitled, "Means for holding utensils for turning purposes” (13 December,
1978) [Ref. A.I.R. 1982 S.C. 1444 at paragraph 17] , has, interalia, stated:

“The object of the patent law is to encourage scientific research, new

technology and industrial progress. Grant of exclusive privilege to
own, use or sell the method or the product patented for the limited
period, stimulates new inventions of commercial utility. The
price of the grant of the monopoly is the disclosure of the invention
at the Patent Office, which after the expiry of the fixed period of the
monopoly passes into public domain.”
This is the most important case in the patent jurisprudence in India, decided by
the Apex court as early as in 1978. The principles laid down in the case are
followed even today and have been codified in the Indian Patent Act.
Brief about Indian Patent System

•The first legislation in India relating to patents was the Act VI of 1856.
•The objective of this legislation was to encourage inventions of new and
useful manufactures and to induce inventors to disclose secret of their
inventions.
•The Act was subsequently repealed by Act IX of 1857 since it had been
enacted without the approval of the British Crown.
• Fresh legislation for granting ‘exclusive privileges’ was introduced in 1859
as Act XV of 1859. This legislation contained certain modifications of the
earlier legislation, namely, grant of exclusive privileges to useful
inventions only and extension of priority period from 6 months to 12
months.
•This Act excluded importers from the definition of inventor. This Act was
based on the United Kingdom Act of 1852 with certain departures which
include allowing assignees to make application in India and also taking
prior public use or publication in India or United Kingdom for the purpose
Cont...
•In 1872, the Act of 1859 was consolidated to provide protection
relating to designs. It was renamed as “The Patterns and Designs
Protection Act” under Act XIII of 1872.
•The Act of 1872 was further amended in 1883 (XVI of 1883) to
introduce a provision to protect novelty of the invention, which prior
to making application for their protection were disclosed in the
Exhibition of India. A grace period of 6 months was provided for
filing such applications after the date of the opening of such
Exhibition.
•This Act remained in force for about 30 years without any change
but in the year 1883, certain modifications in the patent law were
made in United Kingdom and it was considered that those
modifications should also be incorporated in the Indian law.
•In 1888, an Act was introduced to consolidate and amend the law
relating to invention and designs in conformity with the
Cont...

•The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all the
previous Acts.
•This Act brought patent administration under the management of
Controller of Patents for the first time.
• This Act was further amended in 1920 to enter into reciprocal
arrangements with UK and other countries for securing priority.
•In 1930, further amendments were made to incorporate, inter-alia,
provisions relating to grant of secret patents, patent of addition, use of
invention by Government, powers of the Controller to rectify register of
patent and increase of term of the patent from 14 years to 16 years. In
1945, an amendment was made to provide for filing of provisional
specification and submission of complete specification within nine
months.
After Independence, it was felt that the Indian Patents & Designs Act,
1911 was not fulfilling its objective. It was found desirable to enact
comprehensive patent law owing to substantial changes in political and
economic conditions in the country. Accordingly, the Government of
India constituted a committee under the Chairmanship of Justice (Dr.)
Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 t o
review the patent law in India in order to ensure that the patent system
is conducive to the national interest.
The terms of reference included —
•To survey and report on the working of the patent system in India;
•To examine the existing patent legislation in India and to make
recommendations for improving it, particularly with reference to the provisions
concerned with the prevention of abuse of patent rights;
•To consider whether any special restrictions should be imposed on patent
regarding food and medicine;
•To suggest steps for ensuring effective publicity to the patent system and to
patent literature, particularly as regards patents obtained by Indian inventors;
•To consider the necessity and feasibility of setting up a National Patents Trust;
•To consider the desirability or otherwise of regulating the profession of patent
agents
•To examine the working of the Patent Office and the services rendered by it to
the public and make suitable recommendations for improvement; and
• The Indian Patent System to be more conducive to national interest by
encouraging invention and the commercial development and use of inventions.
The committee submitted its interim report on 4th August, 1949 with
recommendations for prevention of misuse or abuse of patent right in India
and suggested amendments to sections 22, 23 & 23A of the Patents & Designs
Act, 1911 on the lines of the United Kingdom Acts 1919 and 1949.

The committee also observed that the Patents Act should contain clear
indication to ensure that food and medicine and surgical and curative devices
are made available to the public at the cheapest price commensurate with
giving reasonable compensation to the patentee
In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar
Committee to examine the question of revision of the Patent Law and advise
government accordingly.
The report of the Committee, which comprised of two parts, was submitted in
September, 1959. The
This report recommended major changes in the law which formed the basis of
the introduction of the Patents Bill, 1965. This bill was introduced in the Lok
Sabha on 21st September, 1965, which however lapsed. In 1967, again an
amended bill was introduced which was referred to a Joint Parliamentary
Committee and on the final recommendation of the Committee, the Patents Act,
1970 was passed. This Act repealed and replaced the 1911 Act so far as the
patents law was concerned. However, the 1911 Act continued to be applicable
to designs. Most of the provisions of the 1970 Act were brought into force on 20
th April 1972 with publication of the Patent Rules, 1972
This Act remained in force for about 24 years without any change till December
1994. An ordinance effecting certain changes in the Act was issued on 31 st
December 1994, which ceased to operate after six months.

Subsequently, another ordinance was issued in 1999. This ordinance was

subsequently replaced by t he Patents (Amendment) Act, 1999 that was brought
into force retrospectively from 1 st January, 1995.

The amended Act provided for filing of applications for product patents in the
areas of drugs, pharmaceuticals and agro chemicals though such patents were
not allowed. However, such applications were to be examined only after 31-12-
2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights
(EMR) to sell or distribute these products in India, subject to fulfilment of certain
conditions.
•The second amendment to the 1970 Act was made through the Patents
(Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20 th
May 2003 with the introduction of the new Patent Rules, 2003 by replacing
the earlier Patents Rules, 1972

•The third amendment to the Patents Act 1970 was introduced through the
Patents (Amendment) Ordinance, 2004 w.e.f. 1 st January, 2005. This
Ordinance was later replaced by the Patents (Amendment) Act 2005 (Act 15 Of
2005 ) on 4 th April, 2005 which was brought into force from 1-1-2005.
 TRIPS Era –Salient Features

Trade Related Aspects of Intellectual Property Right (TRIPS)

• Protection of IPR in various countries
• Different laws different countries
• Filing in one country eroded novelty in all other countries
• 1873 (Vienna) – The Empire of Austria-Hungary invited
other countries to-
 participate in an international exhibition of inventions
 Inventors Refused – temporary protection
granted for exhibition period
 The Paris Convention is an international convention devised
to facilitate protection of industrial property simultaneously in
the
member countries without any loss in the priority date.

• 1880 (Paris) -Diplomatic conference in Paris in 1880

• Paris Convention signed in 1883 by 11 countries
• From 1900 to 1979 the treaty saw many revisions
• Final amendment made on September 28, 1979 many
provisions applicable today.
• During second world war number of signatories
increased
• Today there are 174 convention countries
National Treatment under the Paris convention:

 Provide equal treatment to applicants from member countries,

and not to differentiate between the nationals of member
countries, for the purpose of grant and protection of industrial
property

 Similarly, the applicants from member countries shall have the

same protection after grant and identical legal remedies against
any infringement.

 No requirement as to domicile or establishment in the country

where protection is claimed, may be imposed.
 WTO and TRIPS Agreement

• After 1994 Uruguay Round of the General Agreement on Tariffs and

Trade, the World Trade Organization (WTO) was created . TRIPS (Trade
Related Aspects of Intellectual Property Rights) Agreement was
adopted along with WTO agreement in 1994 and entered into force on
January 1, 1995.
• India became a member and became obligated to amend its domestic
intellectual property laws in order to come into compliance with the
TRIPS Agreement.
 Trade-Related Aspects of Intellectual Property Rights
(TRIPS)
 TRIPS applies basic international trade principles to member
states regarding intellectual property, including national
treatment and most-favoured-nation treatment.
 TRIPS establishes standards for the availability,
minimum scope, forms of intellectual
and use trademarks,
copyrights, of sevengeographical property: indications,
designs, patents, layout designs for integrated circuits,
industrial
and undisclosed information (trade secrets).
 It spells out permissible limitations and exceptions in order to
balance the interests of intellectual property with interests in
other areas, such as public health and economic development.
 Relationship between the Paris Convention and the
TRIPS Agreement

 TRIPS Agreement is an offshoot of a series of negotiations

going on around the world since the inception of the Paris
Convention in the year 1883.
 It has been made mandatory for the member countries of
the TRIPS Agreement to comply with the Article 1 to 12 and
Article 19 of the Paris Convention.
 TRIPS Agreement
Part I: General Provisions and Basic Principles
Part II: Standards Concerning the Availability, Scope
and Use of Intellectual Property
Part III: Rights
Enforcement of Intellectual Property Rights
1. General Obligations
2. Civil and Administrative Procedures
and Remedies
3. Provisional Measures
4. Special Requirements Related to Border
Measures
5. Criminal Procedures
Part IV: Acquisition and Maintenance of Intellectual Property
Rights and Related Inter-Partes Procedures
Part V: Dispute Prevention and Settlement
Part VI: Transitional Arrangements
Part VII: Institutional Arrangements; Final Provisions
 Legislative Measures -Patents

• From 1.1.1995
– Mail-Box for pharmaceutical and agrochemicals products
– Exclusive Marketing Rights
• From 1.1.2000
– Patent term increased to 20 years
– Definition of invention – inclusion of inventive step
– Reversal of burden of proof – on the infringer
– Mandatory compulsory licence provision for food, drugs and
chemicals removed
– Right of patentee (importation also included)
• From 1.1.2005
– Product patents for food, chemical and pharmaceutical

We have met our international commitments

 Patent Law - Salient Features
• Both product and process patent provided
• Term of patent – 20 years
• Examination on request
• Both pre-grant and post-grant opposition
• Fast track mechanism for disposal of appeals
• Provision for protection of bio-diversity and
traditional knowledge
• Publication of applications after 18 months with
facility for early publication
• Substantially reduced time-lines
 Objective behind Patent law:

To gain commercial advantages

Encourage the inventors to invest for R&D
Encourage scientific research, new technology and industrial
progress
To protect fair competition in the field of science and technology
Legislative PROVISIONS REGULATING Patents:

The Indian Patent Act, 1970

The Patent Rules, 2003

The Indian Patent Act was amended in 2005

The Patent Rules were amended in 2005 and 2006

Patentable Inventions:

Patent is given to an invention “Technical advancement”

Criteria of Patentability defined by existing law
Section 2(1)(j) of patents Act, 1970
The Patent Rules, 2003, rule 2(c)
Section 2(1), Patents (Amendment) Act, 2005
Intangibles are not patentable
Patentable combination is the one in which the component
elements are so combined to produce new result or arrive old result
in new form
Patents which are not patentable under the Act:

Section 3 and 4 of Indian patents act – 1970 gives details

Anything against natural laws

Which causes serious prejudice to human, plant, animal life or health
or to environment

Method of agriculture, horticulture

Method of medicinal treatment

Business method, etc.

Inventions relating to atomic energy not patentable

Procedure for obtaining Patent

Submission of applications

Publication and examination of applications

 Opposition to grant of patent to the applicant

Grant and sealing of patent

Procedure for obtaining Patent in INDIA
General economic effects

• Are patents a pre-condition for innovation?

• Can patents encourage innovation?

• Do economists agree on the economic effects?

• Do economically successful countries have or develop strong

patent systems?
A strategic tool for enterprises

• Can patents aid commercial success?

• Do many innovative enterprises use patents?

• Do (potential) investors like patents?

• Do patents guarantee profits?