Intellectual Property Rights 9789390395910, 9789390395996

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS Asha Vijay Durafe Assistant Professor Electronics Engineering Department Shah and Anchor Kutchhi Engineering College Chembur, Mumbai

Dhanashree K. Toradmalle Associate Professor Information Technology Department Shah and Anchor Kutchhi Engineering College Chembur, Mumbai

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Intellectual Property Rights Authors: Asha Vijay Durafe and Dhanashree Kaushik Toradmalle Published by Wiley India Pvt. Ltd., 4436/7, Ansari Road, Daryaganj, New Delhi-110002. Printed at: Yash Printographic First Edition ISBN: 978-93-90395-91-0 ISBN: 978-93-90395-99-6 (ebk) Copyright © 2021 by Wiley India Pvt. Ltd. Cover Image: © Shutterstock All rights reserved. No part of this book may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording or scanning without the written permission of the publisher. Limits of Liability: While the publisher and the authors have used their best efforts in preparing this book, Wiley and the authors make no representation or warranties with respect to the accuracy or completeness of the contents of this book, and specifically disclaim any implied warranties of merchantability or fitness for any particular purpose. There are no warranties which extend beyond the descriptions contained in this paragraph. No warranty may be created or extended by sales representatives or written sales materials. Disclaimer: The contents of this book have been checked for accuracy. Since deviations cannot be precluded entirely, Wiley or its authors cannot guarantee full agreement. As the book is intended for educational purpose, Wiley or its authors shall not be responsible for any errors, omissions or damages arising out of the use of the information contained in the book. This publication is designed to provide accurate and authoritative information with regard to the subject matter covered. It is sold on the understanding that the Publisher is not engaged in rendering professional services. Trademarks: All brand names and product names used in this book are trademarks, registered trademarks or trade names of their respective holders. Wiley is not associated with any product or vendor mentioned in this book. Other Wiley Editorial Offices: John Wiley & Sons, Inc. 111 River Street, Hoboken, NJ 07030, USA Wiley-VCH Verlag GmbH, Pappellaee 3, D-69469 Weinheim, Germany John Wiley & Sons Australia Ltd, 42 McDougall Street, Milton, Queensland 4064, Australia John Wiley & Sons (Asia) Pte Ltd, 1 Fusionpolis Walk #07-01 Solaris, South Tower Singapore 138628 John Wiley & Sons Canada Ltd, 22 Worcester Road, Etobicoke, Ontario, Canada, M9W ILI Edition: 2021 www.wileyindia.com

To My mother who has shared in all my joys and sorrows, my trials, achievements and my failures; and whose interest in all my ventures was never less than my own. This book is affectionately dedicated to her. 

—Asha Vijay Durafe

This book is dedicated to my dearest daughters & son, Mahek, Kavya and Siddhant. My biggest source of love and motivation for me to be a good human being!! 

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—Dhanashree K. Toradmalle

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Preface Intellectual property rights (IPR) have become important in the era of modern globalization, which is characterized by widespread competition, high innovation risks, short product cycle, need for rapid changes in technology, high investments in research and development (R&D), production and marketing as well as the need for highly skilled human resources. Regardless of what product an enterprise makes or what service it provides, it is likely that it is regularly using and creating a great deal of intellectual property. There is an emergent need for enterprises and professionals to systematically consider the steps required for protecting, managing and enforcing IPR to reap the best possible commercial results from its ownership. This book is intended to serve as an introductory course to the undergraduate and postgraduate students of Technology, Law, Management and to the aspirants preparing for IPRrelated competitive exams. This book is intended to serve as a ready reference platform for the industry professionals to understand the laws related to intellectual property and the administration of these laws. This book is a balance between IPR and knowledge management, which is essential for sustained growth and control of information explosion. The purpose of this book is to provide a good understanding of the various components of IPR along with the registration process of each one of them by systematically presenting all important aspects of the related Acts and Procedures. The book begins with the salient features of different types of IPR and the need to file these intangible assets in the face of changing trade environments. The book contains in-depth insights on the following important modules: importance of IPR in modern global economic environment, enforcement of IPR, emerging issues in IPR, basics of patents, patent filing and patent search, detailed insights on regulations and procedures for the registration of copyrights, trademarks, geographical indications, the protection of plant varieties and farmers’ rights, industrial design and semiconductor integrated circuits layout design. The contents of the book are organized in such a manner that they could be related and are easy to be navigated throughout the book which benefits both the starter to go in a sequential manner as well as the specialist in the subject who can refer to a particular topic immediately. We have made every possible effort to present the subject as easily comprehensible as possible.



Chapter Layout

Chapter 1: Components of IPR and Their Importance This chapter introduces the concepts and meaning of IPR, general principles and need of IPR and also discusses various categories of IPR like Patents, Copyrights, Trademarks, Trade secrets, Geographical Indications and Industrial designs. It further discusses the importance of IPR in modern economic environment, theories and philosophical aspects of IPR. This chapter acquaints the readers with the IP rights in the cyber world.

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PREFACE

Chapter 2: Enforcement of Intellectual Property Rights This chapter highlights the enforcement of IPR, key concerns of counterfeiting/piracy related to innovation and growth, environment, employment, FDI, trade, sales volume and price, brand values and firm reputation, royalties, investment as well as concerns related to health and safety. It also discusses international agreements and treaties like WIPO, GATT, TRIPS, WCT, PCT, Madrid and Hague agreements, Berne Convention and Paris Convention. International Laws related to cybercrimes as well as Indian scenario of IPR are explained in a lucid language in this chapter. Chapter 3: Emerging Issues in Intellectual Property Rights This chapter deals with the emerging issues in IPR and challenges for IP in digital economy. Topics like e-commerce, human genome, biodiversity and traditional knowledge are discussed for better understanding of the readers. It further explains the impact of Internet on IPR. Chapter 4: Basics of Patents This chapter aims to create an overall understanding on patents and its related laws and discusses conditions of patentability, dependent and independent claims, patentable and non-patentable inventions, types of patent applications, opposition to patents, contents of provisional and complete specifications and abuse on patent rights. Chapter 5: Patent Filing and Patent Search This chapter is inclined to establish a balance between complex legal terms in a simplified and clear language which will enable the reader to understand the laws and procedures related to patent filing and patent search. It discusses important topics of the filing procedures for national as well as international patent, e-filing of patents, rights of patentee and co-owners, surrender and revocation of patents, patent infringements and remedies, patent litigation, patent publication, time frame and cost and searching international patent databases. Chapter 6: Copyrights This chapter deals with the features of Indian Copyright Act, 1957, by explaining the process of filing copyright, assignment, licences and infringements, remedies and penalties, related or neighbouring rights. The chapter offers practical insight on the global platform of IPR with the help of various case studies. Chapter 7: Geographical Indications of Goods (Registration and Protection) Act, 1999 In this chapter, the law of Geographical Indications of India, procedure for GI registration, duration of protection, infringement and remedies of GI are discussed in detail. To strike a clear difference between GI and trademark, a distinction between the two is added in this chapter. Chapter 8: Protection of Plant Varieties and Farmers’ Rights Act, 2001: An Overview This chapter gives an overview to the Protection of Plant Varieties and Farmer’s Rights Act, 2001, and describes the procedure for registration and protection of plant variety. Chapter 9: Trademark This chapter highlights the Trademark Act in India, trademark offences and penalties, trademark for goods and services, protecting domain names as trademarks, registration of trademarks, service marks, refusal of trademarks and infringement actions.

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•   ix

PREFACE

Chapter 10: Industrial Design: The Designs Act, 2000 This chapter introduces the readers to the Industrial Design Act, 2000, registration of industrial designs, piracy of registered designs and remedies and cancellation of registration of designs. It further discusses the Semiconductor and Integrated Circuits Layout Design Act of India and procedure for registration of a semiconductor layout or integrated circuit. The difference between trademark, copyright and industrial design is also included in the end of the chapter.



Instructor Manual

The following resource is available for instructors at https://www.wileyindia.com/Instructor_Manuals/ Register/login.php/ 1. Chapter-wise PowerPoint Presentations (PPTs) Asha Vijay Durafe Dhanashree K. Toradmalle

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About the Authors Asha Vijay Durafe is an Assistant Professor in the Electronics and Computer Science Department of Shah & Anchor Kutchhi Engineering College, Chembur, Mumbai, India. Having 15+ years of experience in the field of education, she likes to explore in the areas of Intellectual Property Rights, Communication Networks and Cyber Security, Chaotic Encryption, Image Processing, Analog and Digital Communication and Power Electronics. She has been serving as a member of the IPR Cell and Research Cell of Shah & Anchor Kutchhi Engineering College. She is committed to provide full attention and expertise to interested students to help further their academic and professional goals. She is currently pursuing her Doctorate in Electronics and Communications. Dhanashree K. Toradmalle is an Associate Professor in the  Department of Information Technology at Shah & Anchor Kutchhi Engineering College. She has 18 years of rich and dynamic experience in the field of academics. She has been initiating new challenges to pave the path for a better learning system for the students. Her areas of interests are Computer Networks, Cryptography, Network and Information Security. Currently, she is pursuing her Doctorate in Computer Science Engineering with specialization in Information Security. She is an active member of the SAKEC-Research Cell and SAKEC-IPRC Cell and has a zest to explore the field of  Intellectual Property Rights.

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About the Authors

Editorial Team  s. Upasana Singh is a final year student who is currently pursuing her M Bachelor’s in Engineering (Information Technology) from Shah & Anchor Kutchhi Engineering College. She says her journey of learning started when she was working with the Institution Innovation Council (IIC SAKEC). A teammate with tremendous  potential, she has been a core member of the Research Cell of SAKEC. Her creative outlook to the tasks taken in hand got her to intern in the Creativity domain under the Research Cell of SAKEC. To add a feather in her cap, she has interned in the Research Project titled “Speed Ambulance: Give Way For Life” in collaboration with the Indian Development Foundation. She has seeked an offer as a Graduate Engineer Trainee at Larsen and Toubro Infotech (LTI).  s. Avani Haresh Ganatra is a final year student at Shah & Anchor Kutchhi M Engineering College who is currently pursuing her Bachelor’s in Engineering in Information Technology. She believes in “hard work, dedication to the job at hand, and the determination that whether we win or lose, we should apply the best of ourselves to the task”. To pursue a challenging career and enhance her knowledge, she started with an internship from Research Cell SAKEC entitled as “Speed Ambulance: Give Way For Life” in collaboration with the Indian Development Foundation. She took a step to organize an event named “Blind Coding” by utilizing her Leadership skills towards growth. For a boost, She took an opportunity to work in a team under the SAKEC Research Cell Student Chapter as a foremost member. Her enthusiasm took her to do a creativity internship under Research Cell SAKEC. She got an offer from Nucsoft Ltd. as a Software Engineer.  s. Anushka Kashyap is a final year student pursuing her Bachelor’s M in Engineering from SAKEC (Shah and Anchor Kutchhi Engineering College) in the field of Electronics Department. She says “Don’t Limit Your Challenges. Challenge Your Limits”. To elevate her skills, she joined SAKEC ISTE (Indian Society of Technical Education) and she has been a core member of SAKEC IIC (Institution Innovation Council). She has done an internship in “Board of Radiation and Isotope Technology” based on PLC programming. She has been an Event organizer for “Arduino for Beginners” under the ISTE student chapter. Her area of interest is in Designing. There are various events she has participated in, organised as well as coordinated. She is a great team player and has leadership qualities.

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About the Authors

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 s. Hiral Rajesh Nagda, a final year student, is pursuing her Bachelor’s M of Engineering in Information Technology from Shah and Anchor Kutchhi Engineering College, affiliated to University of Mumbai. She is a firm believer of “pushing one’s own limits” in order to succeed in any field. To boost her skill set, she developed projects targeting various fields of technology that bolstered her comprehension of tech. A wide gamut of industry pertinent hands-on experience elevated her interest in software development and Cloud domain. She accomplished a research project in the Information Security domain and later got copyright from Copyright Office, India for the same. She is a level-headed, optimistic and motivated individual. To augment her interests, she will be pursuing a Master’s of Science in Computer Systems Engineering degree from Northeastern University, Boston, USA.  s. Ritika Desai is a final year student pursuing her Bachelor’s of M Engineering in Electronics Engineering from Shah and Anchor Kutchhi Engineering College, affiliated to University of Mumbai. She does one thing every day consistently, challenges herself and pushes her limits. An avid reader and learner she loves exploring newer ideas and enjoys putting it into practice. She works with start-ups to design and maintain websites using PHP, HTML, CSS, etc. Ritika volunteers for social as well as college events and deploys her team-leading skills. She has successfully published a research paper “Steganography for Public  Security” in IJCRT after obtaining copyright (India Copyright Office). She’s ambitious, practical and loves traveling. To expand her skill set, she will be pursuing a Master of Science in Information Science from the University of Pittsburgh, USA.

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Acknowledgements My deep gratitude, praise and thanks to the God, the Almighty, for His showers of blessings throughout the journey of writing this book successfully. First and foremost I would like to thank my dear children Vishnupriya, Ishaan and Vivaan to show such a galvanic understanding at this young age and for allowing me to share the precious time over which they have more authority than anything else. Most of all I would like to thank my husband and soul mate Vijay – the best critic and person I know for his expert opinions, incredible heart and as in all things for his valuable support. I am extremely grateful to my parents for their love, prayers, caring me and the sacrifices for educating and preparing me for my future. Additionally my special thanks to my co-author Dhanashree K. Toradmalle for her timely suggestions and throughout support towards the completion of this book. I could not have done this without her help and passion in the field of IPR. My role model, my colleague and a passionate academician – Dr. Nilakshi Jain – who always guided and motivated me for reaching new heights in my professional career. I am grateful to you dear. Lots of blessings to you and your dear ones! I would like to acknowledge my friend and my colleague Dr. Kranti Ghag, Incharge-IPR Cell of our institute, who actually is the reason for my deep dive into the ocean of IPR field. Thank you dear for adding a new dimension to my life! I would like to mention my deep gratitude to Dr. Bhavesh Patel, Principal, Shah & Anchor Kutchhi Engineering College, for always motivating the staff members and helping them achieve their desired goals. I would like to thank my editorial team from Shah & Anchor Kutchhi Engineering College – Ritika, Hiral, Upasana, Avani and Anushka – whose assistance proved to be a milestone in the accomplishment of my end goal. You girls have always been the strong pillars behind this task of writing a book. Lots of love and blessings to you all girls for being so sincere and loyal for each and every task assigned to you. I am thankful to Ajinkya, Rupnarayan, Meenakshi Sehrawat and Syed Haroon (Wiley India) for providing us an opportunity and constant motivation for the successful completion of the book. Finally, my thanks go to all the people who have supported me directly or indirectly to complete the book satisfyingly. We are grateful to all those students who interacted with us in the classroom or outside during the teaching of this subject. This interaction has greatly influenced our style of teaching and writing to a large extent. Asha Vijay Durafe A grateful heart is loved by and is close to God and I would like to thank all the sources of love, support and motivation from all direct and indirect sources in my life who have been with me in my journey of writing this book. I would like to thank my children Kavya and Siddhant for being such beautiful souls and my shining angels who have demonstrated a deep sense of responsibility at such a young age, so that I could

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ACKNOWLEDGEMENTS

enjoy the process of writing this book. I would like to thank my husband Kaushik who believes that I have immense potential and has always been encouraging me in all my endeavours. My heartfelt gratitude to my father and mother who have always been my strong backbone and who I always bank on. My words are short to describe their sacrifices to educate me and instill the ethic-based values to make me the person I am today. Also, I would like to acknowledge my friend, colleague and the main author of the book Ms. Asha Durafe for being so supportive throughout our journey of writing this book together. The moments spent in discussions and edits will always be special to me. I feel a deep sense of thankfulness for my colleague Dr. Kranti Ghag, SAKEC-IPR-Cell Incharge who motivated me to explore the field of Intellectual Property Rights, which was my first step towards learning about a domain I was unaware of. I would like to mention my respect and regard to Dr. Bhavesh Patel, Principal – Shah & Anchor Kutchhi Engineering College, for giving me the needed freedom and responsibility of exploring the Intellectual Property Rights, an area very naïve to me. All my love, blessings and thankfulness to my editorial team of students from Shah & Anchor Kutchhi Engineering College – Avani, Anushka, Hiral, Ritika and Upasana who helped me put my plans, work in the way I exactly envisioned it. The team has demonstrated a high level of sincerity in delivering every aspect of the book. Proud that we a team of all women have done wonders!!! I am thankful to Ajinkya, Rupnarayan, Meenakshi Sehrawat and Syed Haroon (Wiley India) for providing us an opportunity and constant motivation for the successful completion of the book despite the pandemic of COVID-19 and helped and guided me throughout the publication process. Finally, my gratitude to the One Almighty whose blessings have always guided me to fulfill my wishes. Dhanashree K. Toradmalle

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Contents Preface About the Authors Acknowledgements

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Chapter 1  Components of IPR and Their Importance

1

1.1 Introduction 1.2 Concept and Meaning of IPR 1.3 General Principles of IPR 1.4 Need for Intellectual Property 1.5 Different Categories of IPR Instruments 1.5.1 Patents 1.5.2 Trademark 1.5.3 Copyright 1.5.4 Industrial Design 1.5.5 Plant Variety Protection 1.5.6 Trade Secrets 1.5.7 Geographical Indications 1.5.8 Transfer of Technology 1.6 Importance of IPR in Modern Economic Environment 1.6.1 Theories of IPR 1.6.2 Philosophical Aspects of IPR Laws 1.6.3 IPR: An Instrument of Development 1.6.4 Intellectual Property Rights as Human Rights 1.6.5 Intellectual Property Rights in the Cyber World

Chapter 2  Enforcement of Intellectual Property Rights 2.1 Introduction 2.2 Factors that Create and Sustain Counterfeiting/Piracy 2.2.1 Key Concerns of Counterfeiting/Piracy 2.2.2 Innovation and Growth Concerns of Counterfeiting/Piracy 2.2.3 Environment Concerns of Counterfeiting/Piracy 2.2.4 Employment Concerns of Counterfeiting/Piracy 2.2.5 Foreign Direct Investment (FDI) Concerns of Counterfeiting/Piracy 2.2.6 Trade Concerns of Counterfeiting/Piracy 2.2.7 Sales Volume and Price Concerns of Counterfeiting/Piracy 2.2.8 Brand Value and Firm Reputation Concerns of Counterfeiting/Piracy 2.2.9 Royalties Concerns of Counterfeiting/Piracy 2.2.10 Investment Concerns of Counterfeiting/Piracy

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1 1 3 4 4 4 5 8 9 9 9 10 10 10 10 12 15 16 17

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xviii  • 2.3 2.4

2.2.11 Cost of Combating Counterfeiting and Piracy 2.2.12 Scope of Operations Concerns of Counterfeiting/Piracy 2.2.13 Health and Safety Concerns of Counterfeiting/Piracy International Agreements/International Conventions, Treaties: WIPO 2.3.1 Introduction and Background 2.3.2 Main Purposes of WIPO International Treaties on IPR 2.4.1 History of the Paris Convention for the Protection of Industrial Property 2.4.2 The Berne Convention for the Protection of Literary and Artistic Works 2.4.3 The WIPO Copyright Treaty (WCT) 2.4.4 The Patent Cooperation Treaty (PCT) 2.4.5 The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods 2.4.6 The Hague Agreement Concerning the International Deposit of Industrial Designs 2.4.7 The Trademark Law Treaty 2.4.8 The Patent Law Treaty 2.5 International Treaties on Patent 2.6 International Treaties on Trademark 2.6.1 The Paris Convention 2.6.2 The Madrid Agreement 2.6.3 The Madrid Protocol 2.6.4 The CTM Regulation 2.7 International Treaties on Copyright and Related Rights 2.7.1 Berne Convention 2.8 International Treaties on Industrial Design and Integrated Circuit 2.8.1 Paris Convention for the Protection of Industrial Property, 1883 2.8.2 The Hague Agreement Concerning the International Deposit of Industrial Designs, 1925 2.8.3 Locarno Agreement Establishing an International Classification for Industrial Designs, 1968 2.8.4 TRIPS Agreement under WTOA 2.8.5 Berne Convention for the Protection of Literary and Artistic Works, 1886 2.8.6 Universal Copyright Convention, 1952 2.9 International Law Relating to Cybercrimes 2.9.1 Different Forms of Infringement of Trademark through Cyberspace 2.10 International Organizations Active in IPR Enforcement 2.10.1 WIPO 2.10.2 GATT 2.10.3 TRIPS 2.11 Introduction to Indian Scenario of IPR 2.11.1 Challenges in IPR: From Indian Perspective 2.11.2 History of IPR in India

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Contents

2.12 2.13 2.14 2.15 2.16

The Origins of IP 2.12.1 The Advent of Copyrights, Patents and Trademarks 2.12.2 Ownership Rights 2.12.3 IP in the Colonies 2.12.4 Global IP 2.12.5 History of Copyright Law 2.12.6 History of Patents Overview of IP Laws in India Indian IPR Administrative Machinery Major International Treaties Signed by India Enforcement of IPR at National Level

Chapter 3  Emerging Issues in Intellectual Property Rights 3.1 Introduction 3.2 Challenges for IP in Digital Economy 3.2.1 Protecting and Exploiting the Value of Data 3.2.2 Moving to Portfolio-Based IP 3.2.3 ‘In-Licensing’ and ‘Out-Licensing’: Needs and Opportunities 3.2.4 Understanding the True Cost of ‘Free’ Software 3.2.5 Managing Trade Secrets 3.2.6 Strategies for IP in the Digital Economy 3.3 Challenges for IP in E-Commerce 3.4 Challenges for IP in Human Genome 3.5 Challenges for IP in Biodiversity and Traditional Knowledge  3.5.1 Challenges for IP in Biodiversity 3.5.2 Challenges Faced by IP in TK 3.6 The Impact of the Internet on IPR 3.6.1 Beneficial Impacts of Internet on IP 3.6.2 Detrimental Impacts of Internet on IP 3.7 Abuse of IP

Chapter 4  Basics of Patents 4.1 Introduction 4.2 Definition of Patents 4.3 Scope of Patent Law 4.3.1 Independent and Dependent Claims 4.3.2 Reviewing the Scope of a Claim in an Infringement Action 4.4 Historical overview of the Patents Law in India 4.5 Conditions of Patentability 4.5.1 Novelty 4.5.2 Non-Obviousness (Inventive Steps) 4.5.3 Industrial Application 

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47 47 47 47 47 48 48 48 49 50 51

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xx  • 4.6 4.7 4.8 4.9 4.10 4.11 4.12 4.13

Contents

Patentable and Non-Patentable Inventions 4.6.1 Patentable Inventions 4.6.2 Non-Patentable Inventions Types of Patent Applications Process Patent and Product Patent Precautions while Patenting Types of Patent Specification 4.10.1 Filing Amendments to the Specification 4.10.2 Provisional Specification 4.10.3 Contents of Provisional Specification 4.10.4 Complete Specification Disclosures and Non-Disclosures Some Grounds for Opposition 4.12.1 Opposition to the Patent The Notion of ‘Abuse’ of Patent Rights

78 78 78 79 80 80 81 81 81 82 82 83 83 83 87

Chapter 5  Patent Filing and Patent Search

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5.1 Introduction 5.2 Procedure for Filing a Patent  5.2.1 Indian National Procedures for Filing a Patent 5.2.2 International Procedures for Filing a Patent 5.2.3 Procedure for Filing of a Patent Application 5.2.4 Patent Application Contents 5.2.5 The e-Filing of a Patent 5.2.6 Processing of Application 5.3 The Indian Patent Act, 1970 5.3.1 Patents Rules 5.3.2 Salient Features of Indian Patent Act, 1970 5.4 Patent Drafting and Its Components 5.4.1 Typical Components of Patent Drafting 5.4.2 Drafting of a Patent 5.5 Procedure of Granting Patents 5.5.1 Grant of Patents 5.5.2 Amendment of Patent Granted to Deceased Applicants 5.5.3 Date of Patent 5.5.4 Form, Extent and Effect of Patent 5.5.5 Grant of Patents to be Subject to Certain Conditions 5.6 Rights and Liabilities of Patentees 5.6.1 Rights of a Patentee 5.6.2 Rights of Co-Owners of Patents 5.6.3 Power of Controller to Give Directions to Co-Owners

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Contents

5.7 5.8 5.9 5.10 5.11 5.12 5.13 5.14

Restoration of Lapsed Patents 5.7.1 Applications for Restorations of Lapsed Patents 5.7.2 Procedure for Disposal of Applications for Restoration of Lapsed Patents 5.7.3 Rights of Patentees of Restored Lapsed-Patents Surrender and Revocation of Patents 5.8.1 Surrender of Patents 5.8.2 Revocation of Patents 5.8.3 Revocation of Patent in Public Interest Patent Infringement: Remedies  5.9.1 Remedies in the Case of Infringement Patent Litigation Patent Publication, Time Frame and Cost 5.11.1 Publication of Patent Application 5.11.2 Early Publication 5.11.3 Particular of Patent Publication 5.11.4 Effects of Patent Publication 5.11.5 Term of Patent 5.11.6 Fees 5.11.7 Duration of Patents Patent Licensing Patent Databases and Patent Search with Important Websites 5.13.1 Types of Search Using Patent Documentation Searching International Databases

Chapter 6  Copyright 6.1 Introduction 6.2 Copyright: An Overview 6.2.1 Features of Copyright Act, 1957 6.2.2 Type of Work Applicable for Copyright 6.2.3 Who Can Apply for Copyright? 6.2.4 Duration and Territory of Copyright 6.2.5 Ownership Rights 6.2.6 Ownership of Copyright 6.3 Indian Copyright Act, 1957 6.4 Process of Filing a Copyright 6.4.1 Step I: Filing the Application 6.4.2 Step II: Examination 6.5 Assignment and License 6.5.1 Assignment 6.5.2 Licenses

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102 102 102 103 103 103 103 105 105 107 108 109 109 109 109 110 110 110 111 111 113 113 115

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xxii  • 6.6 Infringement 6.6.1 Substantial Similarity and Fair Dealing 6.6.2 Types of Infringement 6.6.3 Copyright Cases w.r.t. Infringement 6.6.4 Remedies and Penalty 6.7 Related or Neighbouring Rights 6.7.1 Performer 6.7.2 Phonograms Producers 6.7.3 Broadcast Organizations 6.8 Copyright and Digital Media

Chapter 7 Geographical Indications of Goods (Registration and Protection) Act, 1999 7.1 Introduction 7.2 Historical Background of Law of GIs of India  7.3 Meaning/ Definition of GIs and GIs Act 7.3.1 GIs: Meaning and Definition 7.3.2 Geographical Indication Act 7.3.3 Procedure for GI Registration: An Overview 7.4 Duration of Protection: Penalties and Remedies 7.4.1 Duration of Protection 7.4.2 Infringement of GI 7.4.3 Remedies for Infringement of GIs 7.5 Distinction between GIs and Trademarks 

Chapter 8 Protection of Plant Varieties and Farmers’ Rights Act, 2001: An Overview 8.1 Introduction 8.2 Plant Varieties and Farmers’ Rights: Meaning and Definition 8.3 Registrable Varieties of Plants 8.4 Procedure for Registration 8.4.1 Application for Registration of a Variety 8.4.2 Registration Process of Farmers 8.5 Plant Varieties Protection

Chapter 9  Trademark 9.1 Introduction 9.2 Definition of Trademark 9.3 Trademark Act in India 9.4 Trademark Offences and Penalties

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Contents

9.5 Use of TM on Goods/Services and Advertisements 9.5.1 Trademark for Goods/Services 9.5.2 Trademark in Advertising 9.6 Protecting Domain Name as Trademarks 9.6.1 Trademark Rights in a Domain Name 9.6.2 Using Domain Names as Trademarks 9.7 Trademark for Services 9.8 Registration of Trademark for Goods/Services 9.9 Refusal of Trademark Registration and Passing Off: Absolute and Relative Grounds 9.9.1 Absolute Grounds for Refusal of Trademark 9.9.2 Relative Grounds for Refusal of Trademark 9.10 Infringement and Exceptions to Infringement Action

Chapter 10  Industrial Design: The Designs Act, 2000 10.1 Introduction 10.2 Introduction to Designs Law 10.2.1 Industrial Design Law 10.2.2 Benefits of Protecting Industrial Designs 10.3 Definitions, Registration of Designs and Procedure 10.3.1 Duration of Protection 10.3.2 Requirements for Protection 10.3.3 Application and Registration of Design 10.3.4 Procedure for Registration of Designs 10.4 Cancellation of Registration of Design  10.4.1 Procedure 10.5 Piracy of Registered Design and Remedies 10.6 Semiconductor Integrated Circuits Layout Design 10.6.1 Duration of Protection 10.6.2 Definitions 10.6.3 Procedure for Registration 10.6.4 Where to Apply? 10.6.5 Protection against Infringement 10.7 Overlapping between Designs, Copyrights and Trademark 10.7.1 Overlap between Designs and Copyright 10.7.2 Overlap between Trademarks and Designs

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170 170 171 171 172 172 172 173 175 175 175 176

181 181 181 182 182 183 183 183 184 184 185 185 186 187 187 187 187 188 188 188 188 188

Index193

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1

Components of IPR and Their Importance

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Understand the components of intellectual property rights (IPRs). • Understand the theories of IPR. • List and define the various types of IPR.

1.1

• Classify and explain the IPR. • Explain the need of IPR. • Explain the different theories of IPR.

Introduction

Intellectual property right (IPR) alludes to the legitimate rights given to the inventor or creator to secure his/her invention or creation for a specific timeframe. These are the exclusive rights provided to the inventor/creator/assignee to use the invention/creation for a given timeframe. IPR refer to the intangible assets owned by its inventor/creator/assignee which can prevent others from commercial exploitation of the same.

1.2

Concept and Meaning of IPR

Intellect is defined as (1) capacity for thinking and acquiring knowledge, especially of a high or complex order mental capacity; (2) a particular mind or intelligence, especially of a high order and (3) a person possessing a great capacity for thought and knowledge. An intellectual is a person who uses his or her intellect to work, study, reflect, speculate on, or ask and answer questions with regard to a variety of different ideas. An intellectual property (IP) is such a property which is not occurring in nature but an intangible creation of the human mind (intellect, skill and labour) such as inventions, literary and artistic works; symbols; names; images and designs used in commerce. An IP can be either registered or unregistered entity. 1. For unregistered IP, you are automatically entitled to legal rights over your creation. 2. Unregistered forms of IP include copyright, unregistered design rights, common law trademarks and database rights, privacy and trade secrets. 3. With registered IP, for your rights to be identified, you will have to apply for registration at the ‘intellectual property office’ in the respective country where you seek to have your IP registered. If you don’t do this, then others can exploit your creations freely. 4. Registered IP forms include patents, registered trademarks, copyrights and design rights.

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Intellectual property is divided into the following two major categories: 1. Industrial property: This includes inventions (patents), trademarks, industrial designs and geographic indications of source. 2. Copyright: This 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 programmes. Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. Intellectual property rights are legal monopolies intended to compensate the rights owner for an achievement in the development of the new product. Such monopolies are important in providing an opportunity for the owner of IP rights to profit from such an endeavour and also to get back the resources that were used to make such a development. India recognized the importance of intellectual property in 1856. The rights covered under IPR and protected under the domestic laws are as follows: 1. IPR related to trade, industry and commerce (industrial property) includes the attributes listed in the following: (a) Inventions (patents). (b) Trade marks. (c) Trade secrets. (d) Geographical indications. (e) Industrial designs. (f ) Layout designs of integrated circuits. (g) Plant varieties and farmer’s rights. (h) Protection of biodiversity. 2. IPR related to original thoughts and expression (copyright) includes the attributes listed in the following: (a) Copyrights and related rights. (b) All the IPR Laws are not administered by any single ministry. In India, the various rules and laws governing IPRs are listed in the following: (a) The Copyright Act, 1957 (administered by the Ministry of Human Resource Development) and The Copyright Rules, 1958. (b) The Trade Marks Act, 1999 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry) and The Trade Marks Rules, 2002. (c) The Design Act, 2000 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry) and The Design Rules, 2001. (d) The Patent Act, 1970 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry) and The Patents Rules, 2003. (e) The Geographical Indications of Goods Act, 1999 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry) and The Geographical Indications of Goods (Registration and Protection) Rules, 2002.

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(f ) The Protection of Plant Varieties and Farmers’ Rights Act, 2001 (administered by the Department of Agriculture and Cooperation under the Ministry of Agriculture) and The Protection of Plant varieties and Farmers’ Rights Rules, 2003. (g) The Semiconductor Integrated Circuits Layout Design Act 2000 (Administered by the Ministry of Communications and Information Technology) and The Semiconductor Integrated Circuits Layout-Design Rules, 2003. (h) The Biological Diversity Act, 2002 and The Biological Diversity Rules, 2004. The most legitimizations for IPRs can thus be summarized as follows: (a) (b) (c) (d)

IP rights are a motivating force for human imagination. It provides important trigger for modern research and development (R&D). IP acts as political, financial, economic and technological development tool. New innovation makes a difference for companies locally and globally to stay viable and competitive. (e) IP-based industries ultimately contribute to the global trade and (market-oriented) economies. (f ) IPR is a tool in the development of data technologies.

1.3

General Principles of IPR

Patent protection ensures fair practices among competitors by protecting individuals whose commercial well-being, moral right and intellectual integrity must be realized as necessary indices before any improvement in ordinary living is claimed. Patent protection also helps economies to determine their area of comparative advantage over other competing economies in the light of obtainable natural and human resources. A resulting increase from this often occurs not only on the value net per capita, but also on real income per capita. Also, patents encourage investment that galvanizes the wheels of development successively. Trademarks promote investment especially within the manufacturing sector. This is quite often possible only where institutional measures are put in place to ensure and assure investors that another competitor cannot trade or falsify their trademarks or goods that inspires the investor to have a way of security. An empirical research on less developed countries (LDCs) confirms a positive relationship between investment and also gross domestic product (GDP) growth. In fact, trademarks are a cipher in which investment is built through the promotion of a product which may be a beneficial investment which deserves protection as such, even though there is no misuse resulting from misrepresentations of either origin or nature. As a point of interest for economic growth, when secured, trademarks are a way of encouraging entrepreneurial talent, especially in the private sector, and of growing innovation and productivity, resulting in economic emancipation This may help to raise quality leaders with the right attitude in the ranks of the presidency, both for the individual and for the nation as a whole, and help to increase the standard of living per capita. This is because there is a detailed relationship between productivity and real income per worker and because a nation needs to produce more goods and services per worker to enjoy more goods and services, which implies a lack of demand for many non-agricultural goods on the domestic market, which could hinder industrialization and make it difficult for one country to compete favourably with another country.

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Protection of designs also promotes developments in technology and is one of the hallmarks of industrialization. In this scenario, technical developments include the event of the new and improved manufactured goods techniques focused on creativity and innovation. This suggests that there may well be no real industrialization in a country where adequate protection for material possession is lacking. It is also clear that this defence helps to ensure a fair return on investment and by encouraging fair competition and ethical trading practices it indirectly benefits customers and thus the general public. There is also no shred of doubt that creativity is encouraged by an honest and effective design protection system and that it promotes more aesthetically attractive products. The copyright industry represents the fastest-growing sector of economies, especially the developing ones, generating considerable job creation and having increased export output and potential. Additionally, this industry’s contribution to the gross national product (GNP) is likely to increase over the coming years, during a range of rapidly rising emerging economies, which are taking on both the new challenges and thus the new opportunities generated by the increasingly boundless dimension of trade and economy. The internationalization of socio-economic activities and therefore the fillip given to the data technology industry has made some developing economies active participants as agents and recipients of the change.

1.4

Need for Intellectual Property

In many organizations, intellectual property protects more than just an idea or a concept; it protects real business properties that can be vital to the core business services and long-term sustainability overall. Intellectual property can be composed of many different areas, from logos and corporate identity to products, services and processes that distinguish your business offering. It is when using those ideas without permission that an organization can suffer. There will always be people who will want to duplicate your success and sell your ideas as their own when you have a great idea for a product or service. You can use patents, trademarks or copyrights, depending on the individual circumstances. If you run a small business, it is important to protect any unique products or services you own as competitors can use your success to take away market share, resulting in slow growth or loss of revenue, is very important.

1.5

Different Categories of IPR Instruments

There are many categories exist in IPR instruments and let us discuss them in detail in this section.

1.5.1 Patents A patent is not granted for an idea or principle – it is an exclusive or statutory right granted by a country to the owner of an invention (i.e., product or a process that provides a new way of doing something, or offers a new technical solution to a problem) to make, use and manufacture; and market the invention, provided the invention satisfies certain conditions stipulated in the law. Patent protects commercial inventions (industrially useful inventions). Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available only for a limited period of time which is 20 years at present. 1. Tools to search a patent: Espacenet, Google Patents, PATENTSCOPE, The Lens, USPTO Database, Indian Patent Office (IPO) which is the patent search website.

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1.5 Different Categories of IPR Instruments

2. Some examples for patents: Light bulb, computer mouse, Xerox machine, scanner, mike, navigation system using satellites and passive ranging techniques, three-dimensional electrode device, Bluetooth, self-driving car, solar panel, mobile Internet access, virtual reality generator for displaying abstract information, three-dimensional printer.

1.5.2 Trademark A trademark is the signs, symbols, logos, name, figure, letter, words, sounds fragrances, colours, form or device adopted and used by the manufacturer or merchant or traders in order to designate the goods or services that he manufactures or sells and to distinguish them from those manufactured and sold by another to the end that they may be known in the market as his/her products, and thus enable him to secure such profits as result from a reputation for superior skill, industry or enterprise. Some examples of trademark are listed in Table 1.1. Table 1.1  Examples of Trademark

S. No. Feature

Trademark

1.

Letters and words.

Apple, Google, NETFLIX, IBM, NBC, ebay, and so on.

2.

Logo

McDonald’s: Double arches

NBC: Peacock design

Apple: An apple design with a leaf

Burger King: The name of the company inside a circle

(Continued )

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Table 1.1  Continued

S. No. Feature 3.

Drawings

Trademark Puma: Lion drawing with a name of the company

Owens Corning: Pink panther cartoon

Duke, the Java Mascot: A cartoon creation

Java: A drawing with the name of the product

Android: A cartoon creative design

4.

Combination of letters with a design

Royal Enfield

(Continued )

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Table 1.1  Continued

S. No. Feature

Trademark Honda

Sony

Best Buy

Samsung

Amazon

IBM

Lowe’s

5.

Slogans

McDonalds: I’m lovin’ it

(Continued )

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Table 1.1  Continued

S. No. Feature

Trademark Nike: Just do it

6.

Colour mark

Pink colour for Owens Corning’s fiberglass insulation.

7.

Product shape

Coca-Cola

Toblerone

1.5.3 Copyright It is an intellectual property which does not essentially grant an exclusive right over an idea but the expressions of ideas which makes it different from patent law. Copyright (or author’s right) is an exclusive right given by the law to the creator/originator/composer for their 1. literary works, 2. creativity in scientific works, 3. audio-visual works, 4. dramatic works, 5. musical works, 6. software/computer programme, 7. artistic works, 8. producers of cinematograph films, 9. sound recordings to reproduce, 10. communicate to the public and 11. adaptation and translation of the work

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for a definite period to stop others from copying the work. Rights protect persons, other than the creators, who are involved in the dissemination of copyrighted work. These are called ‘related rights’ or ‘neighbouring rights’. These neighbouring rights are different from copyright but related with it and are confined to three specific categories of persons: 1. Performers (such as actors, dancers and musicians) in their theatre. 2. Producers of phonograms (for example, compact discs) in their sound recordings. 3. Broadcasting organizations in their radio and television programmes. These economic rights have a time limit, (other than photographs) for the life of the author plus 50 years after the creator’s death. Some examples are listed in the following: 1. Literary works such as web content, novels or books, poems, plays, drama, reference works, newspapers and computer programmes; databases; films, musical compositions, lyrics to a song, sound recording and choreography. 2. Artistic works such as paintings, drawings, photographs and sculptures; architecture; and advertisements, maps and technical drawings such as a plan for a building.

1.5.4  Industrial Designs Industrial designs refer to creative activity, which result in the ornamental/drawings or formal appearance of a product or system/computer models. It consists only features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two-dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye. Design protection laws protected such designs from mala fide copying. Examples: Shape of gears, threading pattern, ornament design, design of shoes, coke contour bottle, Hasselblad 500C camera, rocking wheel chair, cipher drinking glass, Eames lounge chair, iPod/iPhone/ iPad, iMac, rising table, curl lamp, etc. 1.5.5  Plant Variety Protection Under the protection of Plant Varieties and Farmers’ Rights Act, 2001, plant breeders have rights to protect the new variety of plant/crop either in person or through any of the designates. Examples: hybrid wheat, lattice, papaya, etc. Initially, 12 crop species have been identified for registration, that is, rice, wheat, maize, sorghum, pearl millet, chickpea, green gram, black gram, lentil, kidney bean, etc. 1.5.6  Trade Secrets Trade secret protects confidential information/secret/process/formula/technique/method about a trade, business or enterprise having commercial value, which can be used in a mala fide way by others either against the concerned enterprise or to take unlawful advantage. Usually these are manufacturing or industrial secrets and commercial secrets. Contrary to patents, trade secrets are protected without registration. It can be protected for an unlimited period of time. The information in trade secret include sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes such as processes for converting raw materials into other usable materials, recipes for food

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or food products, methods of manufacturing consumer products, chemical formulae for cleaning products or other similar goods, technological processes such as computer programme processes or scripts. Examples: Google’s search algorithm, Kentucky Fried Chicken (KFC), Coca-Cola recipe, New York Times bestseller list, Krispy Kreme doughnuts, McDonald’s Big Mac special sauce.

1.5.7  Geographical Indications A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. It is an exclusive right given to a particular community; hence, the benefits of its registration are shared by all members of the community. Examples: Basmati rice, Darjeeling tea, Bikaneri Bhujia, Kanchipuram silk saree, Banaras sarees, Chanderi sarees, Kullu shawls, Swiss watch, German machinery, Assam tea, Agra petha, Nagpur oranges, Dutch chocolates, etc. 1.5.8  Transfer of Technology Technology transfer is the formal transfer of IP or other rights to any entity to use and commercialize new inventions. Typically, transfer technology is done after protecting the IPR (i.e., patents and copyrights). Technology transfer activities include the following: 1. 2. 3. 4. 5.

Evaluation/assessment of the invention. Protection of intellectual property relating to the technology. Finding the most suitable partner for licensing. Licensing to that entity. Demonstration of the working of technology.

Innovation plays an important role in driving economic growth and addressing socio-economic, social and environmental challenges. While innovation is not limited to the technology sector, technological advances greatly contribute to the global development and the improvement of the well-being of people. Examples: From new cancer treatments to faster gadgets, environmentally friendly devices, etc.

1.6

Importance of IPR in Modern Global Economic Environment

In the everchanging global economic environment, the significance of IPR is much more prevalent to protect an individual’s sanctitude. Many aspects of IPR is discussed in this section.

1.6.1  Theories of IPR Various theories involved in IPR are discussed in this subsection. Natural Theory In this theory, a work created by an individual represents their specific character as an individual; natural rights demand that we accept the resulting development as its creator’s exclusive property. It can be put in the words of an ancient aphorism, ‘to every cow its calf ’. The corollary of this is that

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copying the work of another person is usurping their land, which is similar to theft. It also represents an imposition on their personality. Copyright is the realization of that self-evident, ethical precept by the positive law.

Hegelian Philosophy (Personality Theory) 1. Intellectual property rights are important to create personal self-assertion. 2. As propounded by Hegel, it is believed that the work is the personal expression of the author’s or the inventor’s thoughts; so, he should be given the right to decide when and how his work may be produced or performed in public, and the right to prevent mutilations and changes. 3. Intellectual property laws are there to protect the author’s or the inventor’s manifestation of his personality. 4. It also safeguards the individual’s freedom of expression.

Lockes’ Theory of Property (Labour Theory/Natural Right Theory) According to John Locke, (1) everyone has a natural property right on his ideas – as a matter of fact, the creation comes from the effort and creativity of its author and (2) a person has a natural right to the fruits of his labour and that this should be recognized as her property, whether in tangible or intangible terms. Disadvantages of theory include the following: 1. It does not cope with the temporal limitation of intellectual property rights. It is true that temporal limitation is applicable to intellectual property. 2. Intellectual property is most of the time limited in time as to the protection accorded by law. 3. After lapse of a certain time, the work will be part of the public domain.

Social Contract Theory Social contract theory, nearly as old as philosophy itself, is the view that persons’ moral and/or political obligations are dependent upon a contract or agreement among them to form the society in which they live. Social Planning Theory This approach is similar to utilitarianism in its orientation, but dissimilar in its willingness to deploy visions of a desirable society richer than those of utilitarian social welfare. Incentive Theory The incentive theory builds on the interest of society in works of intellectual property, holding that legal protection for intellectual works serves as an incentive to produce more intellectual works that will ultimately benefit society. The incentive theory advocates promoting the creation of valuable intellectual works by granting copyright, patent, and trademark rights in such works. Reward Theory The theory of reward advocates rewarding individuals not only for their own labour, but also for the societal benefit of their effort (creative effort – in the context of intellectual property). The creator receives an exclusive right of intellectual property as a reward for the creative efforts.

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Prospect Theory Prospect theory suggests that losses and benefits are measured differently; making decisions based on expected gains rather than perceived losses. Also known as the ‘loss-aversion’ theory, the general concept is that if two choices are put before an individual, both equal, the one presented in terms of potential gains and the other in terms of possible losses, the former option will be chosen. Schumpeterian Theory The principle of creative destruction is typical of the Schumpeterian theory. Joseph Schumpeter explains that as a form of competition. It is competition that not only threatens the profit margins; it threatens the entire existence of the current form of enterprise. According to Schumpeter the fundamental impulse that forces the economic structures to be revolutionized from within by destroying the old one and creating a new one, comes from ‘the new consumers’ goods, the new methods of production or transportation, the new markets, the new forms of industrial organization’. And this is the revolutionary idea that raised innovations to play the lead role in the theory of economic growth. Economic Theory/Utilitarian Theory Utilitarian theory states that the industrial progress and cultural goods have a beneficial effect on society. Consequently, in order to promote the inventions and creations, the titular needs a guarantee that the outcome will be superior to the costs of his work. 1.6.2  Philosophical Aspects of IPR Laws The philosophical aspects of IPR laws and understanding of philosophical and legal concepts of intellectual property such as its importance, characteristics, features and impact are discussed in this subsection. Intellectual property rights are very broad in scope. The field includes legal concepts such as trademarks, patents, designs, and copyrights. Both of these legal principles deal with the security of the fruits of man’s creative efforts in one way or another. The man who thinks of a distinctive and original name, device or get-up to market his goods in order to make the goods easily recognizable or even more attractive to the average buyer, and who has obtained substantial goodwill for the name, device or get-up through the quality of his goods over a period of time, deserves some protection for that name, device or get-up and is, in fact, protected by that name. Patent law protects the man who spends money, energy, ingenuity and time in conducting research and inventing a new machine, discovering a new device or process. Also, creative is the man who designs a new shape for a motor car or settee, or designs a new textile pattern. It is protected by design law. The man who writes a new song, or story, or the architect designing a unique building are all creative. They are protected by copyright law, on their part. Intellectual property rights include copyright, patent, trademark, geographic designation of origin, industrial design, trade secrets, database protection laws, advertisement rights laws, plant variety protection laws, semiconductor chip protection laws (which store information for later retrieval), etc. There is a traditional way of classifying intellectual property as industrial property and as copyright. Industrial properties include inventions (patent), minor inventions (certificate of use model) and business interests (trademarks, brand names, geographical signs and industrial design), plant breeder rights, biodiversity, etc.

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Thus, intellectual property is knowledge, creative ideas, or expressions of the human mind that have commercial value and can be protected from imitation, infringement, and dilution under copyright, patent, service mark, trademark, or trade secret legislation. Intellectual property includes brand names, innovations, formulas, inventions, information, recorded designs, software designs, visual, literary, or musical works. It is among the digital marketplace’s most readily tradable assets.

Importance of IP Rights Following is the list that discusses the importance of IPR. 1. IPRs play a very important role in the advancement of society and its growth. 2. IPRs are essential for energy flow free for innovation and research enhancement. 3. IPRs provide the individuals with opportunities for new developments. 4. IPRs promote innovation and creativity by safeguarding author and artist rights. 5. IPRs provide for material intellectual property rewards. 6. IPRs ensure authentic and original goods are available. 7. IPRs, such as patents and copyrights, are an essential tool utilized by businesses to help protect their innovation investments. 8. IPRs help address global problems such as renewable energy sources, new products for farmers and low-cost drug production for poor people. 9. IPRs are needed to boost economic growth. 10. Protecting intellectual property rights is essential if economic growth is to continue. 11. They encourage fair trade that would contribute to social and economic development. Implementing intellectual property rights effectively is critical to sustaining economic growth across all industries globally. 12. Since IP will allow the owner to practice market value control, quality and research and development (R&D) the product can be marketed and with time the product can acquire the requisite goodwill from consumers and can be a serious business source for the owner or owners of those rights. 13. Intellectual property rights are crucial for the transfer of technology since they guarantee the owner of business monopoly rights for a period of your time. 14. A community is more likely to achieve marketing because ownership of such rights gives them an opportunity not only to regulate any business action associated with such innovation but also to produce a very important entry point for venture or partnership agreement in any Endeavour commercialization. 15. A community that has IP rights finds it easier to draw on investors or donors whose interest is also enhanced by a monopoly guarantee that can complete any additional costs incurred in enhancing the standard and marketing of the end product.

Importance of Protecting IP Rights Protecting the IP rights of an owner is as significant as protecting the individual rights of citizens of society. The various dealings of importance of protecting IP rights are listed in the following: 1. Since IP rights give monopoly, the owner is ready to control the market value. 2. It can be ready to impose mechanisms of internal control. 3. The IP rights owner may be ready to conduct research and development activities.

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Features of IP Rights 1. It promotes and safeguards creation of the intellectual and the artistic. 2. This promotes innovation in efforts to do research and development. 3. Assists in the advancement of social and financial matters. 4. Provides creators or inventors with the exclusive rights. 5. Encourages people to distribute and share information and data, rather than keeping it confidential. Impacts of IP Rights The impacts of intellectual property rights are as follows: 1. Motivating the individuals for new creations: Intellectual property rights encourage new inventions for individuals. IPR shall ensure that an individual’s exclusive inventions are not copied without authorization. 2. Providing due recognition to the creators and inventors: IPR provides the founder with complete control over a new creation and enables the name of the inventor to appear on the invention. 3. Ensuring material reward for intellectual property: IPR has recompensed an individual’s intellectual property. IPR provides the inventor with the facility to exercise the monopoly of his exclusive invention or production. 4. Ensuring the availability of the genuine and original products: IP rights make it easier for users or customers to get/buy the genuine and original products. 5. Maintaining differentiation: Trademark, logo, simple, etc. are common IPR elements ensure that products of an individual or organization are distinguished from products of the competitors. Customers can quickly distinguish the goods from the chosen source. 6. Financial incentive: The exclusive rights allow intellectual property owners to enjoy the benefits of the property they have created and provide a financial incentive for the creation of an intellectual property investment. 7. Economic growth: The World Intellectual Property Organization (WIPO) Treaty and other similar international agreements are focused around the premise that securing intellectual property rights is important to sustaining economic development. IPR drives individuals to develop technologies that will ensure that society gets new goods, services, concepts, theories that will improve economic growth. 8. To stop copying: IP rights restrict copying the design, idea, and product and conduct business of others by copying intellectual property of others. That varied to new creations.

Positive Impacts of IP Rights 1. IP rights encourage innovation amongst people. 2. It secures person’s IP Promote ability, work and profile of individuals. 3. It supports the monopoly business. 4. IP rights ensure long periods and maximum profits. 5. Performance maintenance. 6. Have original products guaranteed. 7. It helps identify the sources you want.

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Negative Impacts of IP Rights 1. High-price cause. 2. Affecting higher education of least developed countries. 3. Impacting the technological and medical development of the developing countries. 4. Centralization of new innovations. The positive impacts of IPRs are larger than negative ones.

1.6.3  IPR: An Instrument of Development Diverse new concepts, principles, inventions, and cultures emerged on Earth’s canvas with the development of the human race. One of them is the idea of intellectual property rights, which is born as a combined result of two time-growing societies, that is, the commoditization culture and the manufacturing society. In the 19th century, when industrialization was at its peak; great scientific advances and technological progress were taking place; distinctive forms of art, language and entertainment were emerging; and in all fields of knowledge specific new ideas were being developed. At that time, it was felt necessary for an international law or regulatory force (in the international arena) to promote such activities by protecting the rights of the persons concerned. The first International Convention for the Defence of Industrial Property was thus adopted in 1883, popularly known as the ‘Paris Convention’. Similarly, another International Convention was held in 1986, that is, The Berne Convention was introduced for the Defence of Literary and Artistic Works. This was the step of the initiative to recognize and protect intellectual property rights which paved the way for their further growth. In the Indian context, it is clear that Western countries have accepted the definition of intellectual property rights. There are various laws created in India to meet the expectations of international conventions and to harmonize them with their domestic requirements. Currently the concepts and conventional area of IPR (i.e., IPRS relevant to industrial property and copyright) have almost been developed. However, various new aspects and deranging dimensions of the concept of intellectual property rights are still emerging. It is possible to understand the entire history and development of IPR by analysing both aspects, that is, (1) international development and (2) IPR development in India. Intellectual property is a form of knowledge that societies have decided that particular property rights can be assigned. They have some similarity to Physical Property or Land ownership rights. Yet knowledge is much more than intellectual property. Intelligence is expressed in people, and in emerging technology in ways that have long been used as an engine of economic development. The above discussed aspects provide a widespread basis for the argument ‘A nation’s IP and growth go hand in hand’ and can be further elaborated: trade in knowledge-intensive high-tech products and services where IP security is most important and continues to be among the fastest growing in international trade. The developing countries, taken as a whole, are net technology importers, most of those are supplied by the developed countries. Within developing countries companies hold the vast proportion of patent rights worldwide. There is good evidence in developed countries that intellectual property is, and has been, important in promoting invention in some industrial sectors, although there is mixed evidence as to exactly how important it is in different sectors. Evidence indicates, for example, that the pharmaceutical, chemical, and petroleum industries predominated in realizing that the patent system was necessary for innovation. Today, biotechnology and certain information technology components would need to be added. Copyright for the music, film and publishing industries has also proved essential. Developing

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indigenous technological capability has proved to be a key determinant of economic growth and poverty reduction for developing countries, like the developed countries before them. This capacity defines to what degree international technology can be assimilated and implemented by these countries. In developed countries, and in a few of the more technologically advanced developing countries, research and development is of highly focused domain. Few developing countries developed strong indigenous technological capabilities. That means either developing their own technology, or assimilating (derive) technology from developed countries, is difficult for them.

1.6.4  Intellectual Property Rights as Human Rights The interpretation of intellectual property as a human right has received little attention. The human rights movement has ignored Article 27 of the UDHR (Universal Declaration of Human Rights) and Article 15 of the Covenant. The main exception was indigenous rights activists. However, it is evident that intellectual property conceived as universal human rights is profoundly different from its classification as an economic value under intellectual property law. There are some factors which are assumed to exist. Contrary to the individualism of intellectual property law, an approach to human rights often acknowledges that an author, artist, invention, or creator may be both a collective or a community and an individual. An orientation towards human rights recognizes that intellectual products have an intrinsic value as an expression of human dignity and creativity. Artistic and scientific plays, to put it another way, are not simply economic commodities whose worth is determined by their utility and economic price tag. An approach to human rights also takes the implicit balance within intellectual property paradigms between the rights of inventors and creators and the interests of the wider society, and makes it much more explicit and demanding. The centrality to upholding and preserving human dignity and the common good is predicated on a human-rights perspective. By default, the creator’s or author’s rights are conditional upon contributing to the society’s common good and welfare. Article 15’s wording is noteworthy: ‘States parties are directed to ensure that everybody can ‘benefit from the security of the moral and material interests resulting from any science, literary or artistic output of which he is the author’. This is far from vesting producers, writers, and inventors with complete and unrestricted rights to monopoly property. A human right approach also sets a different and often more exacting standard for assessing the appropriateness of granting protection of intellectual property to a specific artistic work, invention or knowledge set than those specified under the intellectual property legislation. Intellectual property law generally emphasizes originality as the basis for determining eligibility for copyright protection; in order for an invention or discovery to be eligible for patent protection, it must meet the criteria of novelty, utility and non-evidence. However, in order for intellectual property to fulfil the necessary conditions to be recognized as a universal human right, intellectual property regimes and the manner in which they are implemented must first and foremost be consistent with the realization of the other human rights, especially those enumerated in the covenant. An approach to human rights must be particularly sensitive to the interconnections between intellectual property and the rights ‘to participate in cultural life’ and ‘to enjoy the benefits of scientific progress and its applications’. In order to comply with the full provisions of Article 15, the form and degree of protection offered under any intellectual property regime must encourage and promote cultural engagement and scientific advancement and do so in a way that will support society’s members at both individual and collective level in a broad way. These considerations extend far beyond a simple economic calculus that often governs the law of intellectual property.

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1.6  Importance of IPR in Modern Global Economic Environment

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Furthermore, a human-rights strategy sets a condition for the State to protect its citizens from the adverse consequences of intellectual property. To do so, policymakers need to conduct a very detailed and disaggregated study of the possible effects of individual technologies, as well as an evaluation of potential reforms in paradigms of intellectual property, and use these data to ensure that the end result is non-discriminatory. This calls for special attention to the impact on those groups whose welfare appears to be excluded from the equation of decision-making on intellectual property when making choices and decisions: the poor, the vulnerable, the racial, ethnic and linguistic minorities, women, rural residents. The concept of human rights of self-determination as set out in Article 1(1) of the covenant and expressed in the civil and political rights established in the International Covenant on Civil and Political Rights emphasizes the right of all members of society to participate in a meaningful manner in their decision on their governance and their economic, social and cultural development. This translates into a right to societal decision-making on setting priorities for the development of intellectual property regimes and major decisions. To accomplish this in practice, transparent and democratic political institutions are needed which can adapt to technological change.

1.6.5  Intellectual Property Rights in the Cyber World Every new technological innovation experiences a range of threats. The web is one such threat, taking the physical marketplace and turning it into a virtual marketplace. The Internet has opened up a world of cultural and literary creative opportunities. Ease of transmission from creator to user, and retransmission from user to viewer, make the Internet a perfect platform for creative and academic creators to disseminate their work, and for commercial creators to reach wider audiences. Technology has provided people with the means to invent – along with the means of manipulating, changing, distorting and redistributing the phrases, sounds and pictures they encounter on the web. Of this purpose, writers may find their creations altered and posted in unexpected new locations, or simply re-posted. A maker usually wishes that others will value her work and not make unauthorized copies; she also needs to preserve the quality of her art by preventing others from modifying it or exploiting it. In order to safeguard business interest, creating an effective property management and protection mechanism is vital, bearing in mind the considerable amount of business and trade taking place in cyberspace. Developing an efficient and collaborative IP management system and security policy is critical for any company today. Thus, the ever-looming threats can be tracked and confined in the cybernetic environment. In order to better understand the value of ‘respect and integrity’ in defending online intellectual property, we should consider the many different ways in which protected images or writings can be abused in this medium, either legally or illegally. Here are a few examples: 1. A copier is permitted to carry off the work of an original creator as its own. 2. A copier can produce an on-line parody criticizing the original creator’s work, or alternatively, an on-line endorsement showing respect for the original creator. 3. A copier may reproduce an image accurately, slightly modify it or distort it until it is recognizable as the original. 4. A copier may replicate the style of the original creator and thus lead readers to assume, wrongly, that the original creators are his work.

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5. A copier may fail to credit the original creator for a distorted copy on its website, or may give the creator unwanted credit. 6. A copier may appropriate an image for financial gain, or may simply use it to make a declaration that is not for profit. Those who copy and retransmit may have several reasons to do so. Some produce new art pieces or render social commentaries. A few honours an esteemed artist or author. Others are pirating or attempting to make a financial gain. Whatever their reasons, those who alter and/or retransmit other people’s works on the Internet enter the core of copyright and trademark laws, whose doctrines are well explored but whose parameters on the Internet remain relatively untested. In providing a stable configuration against these cyberthreats, numerous strategies and legislations have been planned by lawmakers to upgrade the ante. However, it is the responsibility of the proprietor of intellectual property right (IPR) to invalidate and minimize these criminal mala fide actions by taking constructive steps.



Multiple Choice Questions

1. Intellectual property rights (IPR) protect the use of information and ideas that are of (a) ethical value. (b) moral value. (c) social value. (d) commercial value. 2. Intellectual property is mostly a type of (a) tangible property. (b) intangible property. (c) real property. (d) none of these. 3. What does an IP right entitle a person? (a) Right to file a suit in case of an infringement. (b) Right to exclude others. (c) Right to transfer. (d) All of these. 4. Which among the following stands for the term ‘WIPO’? (a) World Investment Policy Organization. (b) World Intellectual Property Organization. (c) Wildlife Investigation and Policing Organization. (d) World Institute for Prevention of Organized Crime.

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5. Which of the following is not an intellectual property law? (a) Copyright Act, 1957. (b) Trademark Act, 1999. (c) Patent Act, 1970. (d) Customs Act, 1962. 6. What protects the intellectual property created by inventors? (a) Copyright. (b) Geographical indications. (c) Patents. (d) Trademarks. 7. What protects the intellectual property created by designers? (a) Copyright. (b) Patents. (c) Registered designs. (d) Trademarks. 8. What protects the intellectual property created by artists? (a) Copyright. (b) Geographical indications. (c) Patents. (d) Registered designs.

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•  19

Frequently Asked Questions in Interviews

9. Geographical indication is (a) a private right. (b) a community right. (c) an intellectual property right. (d) both (b) and (c). 10. A company decides to use a logo that has the same shape as its competitor but with a



Frequently Asked Questions in Interviews

1. What is intellectual property? Answer Intellectual property (IP) is such a property not occurring in nature but an intangible creation of the human mind (intellect, skill and labour) like inventions, literary and artistic works, and symbols, names, images and designs used in commerce. 2. What are intellectual property rights? Answer Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. Intellectual property rights are legal monopolies intended to compensate the rights owner for an achievement in the development of the new product. Such monopolies are important in providing an opportunity for the owner of IP rights to profit from such an endeavour and also to get back the resources that were used to make such a development. 3. What are the rights covered under intellectual property rights? Answer India recognized the importance of intellectual property in 1856. The rights covered under intellectual property rights and protected under the domestic laws are discussed here. The IPRs related to trade, industry and

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different colour owns which of the following IPR? (a) Copyrights. (b) Trade mark. (c) Patent. (d) Industrial designs.

commerce (industrial property) include the following: (a) Inventions (patents). (b) Trade marks. (c) Trade secrets. (d) Geographical indications. (e) Industrial designs. (f ) Layout designs of integrated circuits. (g) Plant varieties and farmer’s rights. (h) Protection of biodiversity. The IPRs related to original thoughts and expression (copyright) include the copyrights and related rights. 4. Should I tell anyone about my invention before I apply to protect it? Answer No! It is very important that you do not tell anyone else about your invention before you apply to patent it. Telling others might make your patent invalid. 5. What are the characteristics of IP? Answer Compared with traditional property rights, IP rights are intangible in nature. Moreover, they are exclusive, territorial and timelimited. However, this is true only in a relative sense and does not mean that all types of IP rights have these characteristics. There are some exceptions. For example, as long as it is not disclosed, a trade secret can exist forever in theory, subject to no time limit.

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6. Does IP protection have a time limit? Answer IP is protected only for a limited period of time, beyond which it is no longer protected and falls into the public domain. When an IP right expires, everyone may use it with no restrictions from the right holder. This is not true for traditional or tangible property rights. As long as a piece of traditional property exists, it is always protected by law. A family heirloom, if not damaged or sold, may always be passed down to one’s descendants and enjoy legal protection 7. Will I own the intellectual property that I create? Answer The creator of an item of intellectual property usually owns it. There are however certain exceptions to this rule – for example, if IP is created during the course of a particular commissioned project it usually belongs to the commissioning company or academic institution. 8. What is a patent? Answer A patent is not granted for an idea or principle. A patent is an exclusive or statutory right granted by a country to the owner of an invention (i.e., product or a process that provides a new way of doing something, or offers a new technical solution to a problem) to make, use, manufacture and market the invention – provided the invention satisfies certain conditions stipulated in the law. Patent protects commercial inventions (industrially useful inventions). Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available only for a limited period of time which is 20 years at present. 9. Can inventions be protected only by patents?

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Answer The right holder of a technical creation may seek protection either through the trade secret (undisclosed information) system or through the patent system. Under patent law, right holders have to disclose their creations in exchange for protection, thus making contributions to society, and the invention becomes part of the public domain when the patent expires. The owners of trade secrets, on the other hand, keep their technical solutions confidential and therefore receive weaker protection than that afforded to patent holders. 10. What is patentable? Answer (a) New products. (b) Improved parts and features of products. (c) New or improved methods and processes. (a)  Methods of manufacturing. (b)  Test methods. (d) New uses of known things. (e) Software – this is only patentable if claiming a technical effect. 11. What is copyright and related rights? Answer Copyright (or author’s right) is an exclusive right given by the law to the creator/ originator/composer for their (a) literary works, (b) creativity in scientific works, (c) audio-visual works, (d) dramatic works, (e) musical works, (f ) software/computer programme and artistic works, (g) producers of cinematograph films and sound recordings to reproduce, (h) communicates to the public, (i) adaptation and translation of the work for a definite period, to stop others from copying the work.

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Answer Key

12. What is a trademark? Answer ‘A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise’ (as per World Intellectual Property Organization). 13. What is a geographical indication? Answer A geographical indication (GI) is any sign or symbol that identifies goods as emanating from any specific region or location of a country that gives the goods its known quality, reputation or characteristics that are essentially attributable to that region or locality. 14. Write about the new plant varieties act? Answer Under ‘The Protection of Plant Varieties and Farmers’ Rights Act, 2001’, plant breeders have rights to protect the new variety of plant/crop either in person or through any of the designates. The plant cannot be patented but only the process – which can be a new idea – can be patented. 15. What is a trade secret?



Answer A trade secret is any information which (a)  has been kept secret, (b)  has commercial value and (c) retains its commercial value as a result of the efforts to keep the information secret. 16. What constitutes an industrial design? Answer Any composition of lines or colours, any three-dimensional form or any material whether or not associated with lines or colours, is deemed to be an industrial design where such composition, form or material gives a special appearance to a product of industry or handicraft. 17. What is considered Layout Designs (Topographies) of Integrated Circuits? Answer This is synonymous with ‘topography’ and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the inter-connections of an integrated circuit, or such a threedimensional disposition prepared for an integrated circuit intended for manufacture.

Answer Key

Multiple Choice Questions 1. (d) 2. (b)

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3. (d) 4. (b)

5. (d) 6. (c)

7. (c) 8. (a)

9. (d) 10. (d)

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2

Enforcement of Intellectual Property Rights

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Understand the different international treaties for the enforcement of intellectual property rights (IPRs) in India. • Identify the factors that create and sustain counterfeiting. • Explain the international treaties in India for various IPR.

2.1

• Outline the roles of international organizations in enforcement of the IPR. • Summarize the history and Indian scenario for IPR.

Introduction

Intellectual property (IP) rights can be enforced by conveying actions to the civil courts or through criminal prosecution. India’s IP law has defined certain procedures for both civil and criminal proceedings. Criminal proceedings do not apply to patent and design infringements. To gain respect for one’s intellectual property rights, the individual holders must be handed over the rights by the World Trade Organization (WTO). There are existing provisions in the enforcement section of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement. It says that a guarantee must be offered to the holders so that they can be enforced to stop or to the least discourage violators. The process should enforce fair and reasonable ways of ensuring the guarantee without making it expensive to follow or complex to implement and the timelines must be reasonable as well. The mechanism must be in place where the affected can request reviews of any arbitrary or contrary decisions or make an appeal. Recourse to violations of the intellectual rights (IR) are available within the sections of the TRIPS Agreement, which allows for obtaining proof of violation, interim measures, injunctions, penalties and fines for any contraventions and all such enforcement rights are drawn out in the sole existing international agreement. Clear guidelines regarding rights, must be awarded under given circumstances, to the courts, to pass judgments towards violators and can order destruction of the property. The piracy of copyrights or intentional imitation of goods for commercial gains must be made a criminal offence. Provisions also ensure that the government agencies must be able to contain any import of such goods and materials that violate the intellectual property rights (IPRs) of holders. A detriment of common prosecution is that you are probably not going to recuperate enormous damages and reformatory damages against an infringer are uncommon. However, if you have an identified infringer, it may be advisable to launch civil litigation because if an interim injunction is granted

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the infringement can be halted pending the outcome of the case. Damages are routinely awarded in cases of copyright piracy and trade mark infringement, which come under criminal litigation, less so in patent cases. Over the years, however, decisions in favour of foreign companies against local infringers have demonstrated the judiciary’s impartial approach. The Indian Government brings actions in criminal cases, although in most cases actions follow complaints to magistrates or police authorities by rights owners. Criminal proceedings against infringers carry the prospect of much harsher remedies, including fines and imprisonment. Mediation or negotiation with an infringer can also be effective as an alternative form of dispute resolution. The Civil Procedure Code provides for a formal mediation process.

2.2

Factors that Create and Sustain Counterfeiting/Piracy

The two specific terms that have been used to explain IPR infringement – counterfeiting and piracy. The Organization for Economic Cooperation and Development (OECD) has been constantly focusing on the infringement or violations of the TRIPS that has been described in the WTO Agreement. Many related rights of the holders like trademarks, patents, designs rights, copyrights and such others, are part of the focused work by OECD.

2.2.1  Key Concerns of Counterfeiting/Piracy Counterfeiting and piracy are longstanding problems which are growing in scope and magnitude. They are of concern to governments because of 1. the negative impact that they can have on innovation, 2. the threat they pose to the welfare of consumers and 3. the substantial resources that they channel to criminal networks, organized crime and other groups that disrupt and corrupt society. They are of concern to business because of the impact that they have on 1. sales and licensing, 2. brand value and firm reputation and 3. the ability of firms to benefit from the breakthroughs they make in developing new products. They are of concern to consumers because of the significant health and safety risks that substandard counterfeit and pirated products could pose to those who consume the items.

2.2.2  Innovation and Growth Concerns of Counterfeiting/Piracy Innovation has long been recognized as a main driver of economic growth, through the development and exploitation of ideas for new products and processes. Innovators protect these ideas through patents, copyrights, design rights and trademarks. Without adequate protection of these IPRs, the motivation to develop new ideas and products would be reduced, thereby weakening the innovation process. The risks are seen as particularly high for those industries in which the research and development costs associated with the development of new products are high compared to the cost of producing the resulting products; pharmaceutical products for instance. Counterfeiting and piracy, to the extent that they weaken the efforts of innovators, can therefore have important adverse effects on research and, eventually, growth.

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2.2 Factors that Create and Sustain Counterfeiting/Piracy

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2.2.3  Environment Concerns of Counterfeiting/Piracy 1. The growing volume of seized goods raises environmental issues since destruction can be a costly process that creates considerable waste. In 2005, for example, the European Union (EU) alone seized 76 million articles. 2. Substandard counterfeit products can have environmentally damaging consequences. For example, the chemical industry, which has documented cases where the use of counterfeit fertilizers caused serious damage to the environment. The destruction of harvests in large areas in China, Russia, Ukraine and Italy has been cited as examples. 2.2.4  Employment Concerns of Counterfeiting/Piracy Counterfeiting and piracy affect the employment at two levels: (1) Economy-wide and (2) in affected sectors. Economy-wide, jobs shift from rights holders to infringing parties. The shift has repercussions for the welfare of employees as working conditions in clandestinely run illicit activities are often far poorer than those prevailing in recognized firms that value their employees higher and adhere to health, safety and other regulatory norms. The pharmaceutical industry provided compelling evidence of the appalling conditions under which some counterfeit products were being manufactured. At the sectoral level, statistics show that the jobs lost due to counterfeiting and piracy or, alternatively, the jobs that would be created if piracy levels declined. 2.2.5  Foreign Direct Investment (FDI) Concerns of Counterfeiting/Piracy The situation with respect to IPRs is one of many factors considered by firms who are investing abroad. For some industries, the level of counterfeiting and piracy may be relatively important, whereas in others it may be a minor consideration. 2.2.6  Trade Concerns of Counterfeiting/Piracy The relationships between counterfeiting and piracy and the volume and structure of international trade are examined econometrically. The results found no correlation with respect to trade volumes, but there were indications that counterfeiting and piracy influenced the types of goods imported and exported: economies with relatively high counterfeiting and piracy rates tended to export lower shares of products where health and safety concerns could be high. 2.2.7  Sales Volume and Price Concerns of Counterfeiting/Piracy Counterfeit and pirated products crowd genuine products out of the market, lowering the market share of the rights holder, putting downward pressures on prices. In the case of trademark and copyrightinfringing items, the loss in market share has the following two components: 1. Sales lost to consumers who purchase a counterfeit or pirated product believing it is genuine. 2. Sales lost to consumers who knowingly purchase a lower priced counterfeit or pirated product instead of a genuine article.

2.2.8  Brand Value and Firm Reputation Concerns of Counterfeiting/Piracy Counterfeit or pirated products may damage the brand image and reputation of firms over time. For instance, those consumers who believed they were buying a genuine article when in fact it was a fake, will be likely to blame the manufacturer of the genuine product if the fake does not fulfil expectation; thus,

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resulting in a loss of goodwill. If consumers never discover that they were deceived, they may be reluctant to buy another product from that manufacturer and may communicate dissatisfaction to other potential buyers. The proliferation of counterfeit versions of luxury goods can make the genuine articles less desirable to their traditional consumers. These effects were reflected in responses to the OECD industry questionnaire by respondents from the consumer electronics, information and computer, electrical equipment, food and drink, luxury goods, sportswear, automotive parts and accessories and pharmaceutical industries.

2.2.9  Royalties Concerns of Counterfeiting/Piracy Royalties are the proceeds gained by IPR holders for permitting other parties to exercise such rights. Infringement deprives the rights holders of these proceeds. 2.2.10  Investment Concerns of Counterfeiting/Piracy High levels of counterfeiting and piracy could reduce the incentive of some firms to invest in the development of new products and processes. However, only limited empirical work has been carried out on this. 2.2.11  Costs of Combating Counterfeiting and Piracy As indicated below, rights holders incur a variety of costs when combating counterfeiting and piracy. It should be noted that, because these costs are remedial in nature, these do not translate into higher quality products, product innovation or other enhancements and can therefore be considered pure social loss. 2.2.12  Scope of Operations Concerns of Counterfeiting/Piracy Counterfeiting and piracy can affect the scope of a firm’s activities. Respondents to the OECD industry survey mentioned instances where reduced profitability and losses in brand value had driven companies out of business or reduced their scale of operations. 2.2.13  Health and Safety Concerns of Counterfeiting/Piracy Counterfeiters and pirates have limited interest in ensuring the quality, safety or performance of their products. This increases the potential of negative effects on consumers. Concerns about this appear frequently in the responses to the OECD surveys. The industries, where health and safety effects tend to occur, include the following: (1) Automotives, (2) electrical components, (3) food and drink, (4) chemicals, (5) toiletry and household products, (6) pharmaceuticals and (7) tobacco products.



2.3

International Agreements/International Conventions, Treaties: WIPO

Various International agreements, international conventions, treaties addressed by the World Intellectual Property Organization (WIPO) are discussed in this section.

2.3.1  Introduction and Background The challenges that technologies posed in the new economy were also addressed by the WIPO bodies by issuing a set of guiding principles, certain ethical and ideal practices, recommendations and suggestive

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2.4  International Treaties on IPR

•   27

action points. The Berne Convention laid down the basis for such interpretation of these recommendations and guiding principles that concerned many matters related to satellite broadcasting, cable television rights, programs, databases, illegal and candid recordings of content, etc. They also set the rules for renting-out and went on to coin standards for distribution of such contents. The development of copyright is attributable to such guidance and terms laid down in the ‘guided development period’ leading to a positive outcome on the national legislation and had repercussions around the world. Since it was noticed in the late 80s that mere guidance would not suffice, GATT adopted the TRIPS Agreement and new norms in the WIPO were installed and intensified related to copyrights to deal with the challenges that were not addressed by the existing TRIPS Agreement. Post this, the WIPO Diplomatic Conference on Certain Copyrights and Related Rights Questions, two treaties, the WCT – WIPO Copyright Treaty and the WPPT – WIPO Performance and Phonograms Treaty, were adopted in 1996.

2.3.2  Main Purposes of WIPO 1. Worldwide promotion of protection of intellectual property (IP). 2. The unions that were established by these treaties and administered by WIPO should promote administrative cooperation within each other In addition to the performing of the two basic purposes or tasks, WIPO also undertakes the following actions: 1. Based on conclusion of international treaties, it sets the standards and norms for the effective enforcement of IPR. 2. Provide technical assistance as well as legal know-how to states in the matters of IPR. 3. Documentation, classification, standardization and other such activities among others involving industrial property office related to patents, trademarks and other such design documentation. 4. Registration of trademarks, filing procedures and activity for international applications for interventions, application of patents and other such services.

2.4

International Treaties on IPR

This section discusses on various international treaties on IPR.

2.4.1  History of the Paris Convention for the Protection of Industrial Property In 1883, the Paris Convention finally signed and approved the Protection of Industrial Property that was convened in a Diplomatic Conference. Eleven states including Belgium, Brazil, El Salvador, France, Guatemala, Italy, Portugal, Serbia, Spain, Switzerland and The Netherlands signed the document at this convention. The number of countries swelled to 14 after The Great Britain, Tunisia and Ecuador accepted the same when it came into effect on 7 July, 1884. There was an exodus of El Salvador, Guatemala and Ecuador denouncing the Paris Convention, but then later joined in the 1990s. The membership increased phenomenally during the early years of the 20th century and more so after World War II. Many revisions have been affected over the years from time to time since 1883 since the establishment of the Paris Convention. A revised act of the Paris Convention was adopted by the

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Brussels Convention on each of the revisions. Four such main categories were evolved out of provisions of the Paris Convention as provided in the following list: 1. Guarantee of a basic right, also called the right to national treatment in every member country was the first category of rules in the substantive law. 2. Right of priority as another basic right was established as the second category. 3. Rules and regulations concerning enacting legislation to be permitted by the member countries, as per rules laid down or defining of common rules in the matters of substantive law containing rules that establish rights and obligations of natural persons and legal entities, was the third category. 4. To deal with the administrative framework that was established to implement the Convention and also include the final clauses of the convention was the final and fourth category.

2.4.2  The Berne Convention for the Protection of Literary and Artistic Works Protection of works and the rights of the authors is handled by the Berne Convention. Three basic principles guide it and a number of provisions ensuring basic protection to be awarded is handled by Berne Convention. Also, it focuses on distinct provisions to be made available to developing countries that want to adopt them as well as protection of works and rights of the authors. The following are those principles: 1. Each of the contracting states must offer equal protection to the author for his works as the contracting state would offer to authors of its own nationality. 2. The protection must be by default and without any conditions or compliances that would be required to be fulfilled by the author. 3. Duration of protection by contracting state may be of a higher term that is offered by the originating state at the sole discretion of the contracting state. However, the contracting state may decide to withdraw the protection upon the expiration of protection in originating state. A moral right to the author to claim authorship of the work and also right to claim against any changes, modifications or any other damage arising out of mutilation or deformation that may be detrimental to the reputation or pride of the original author.

2.4.3  The WIPO Copyright Treaty (WCT) The Berne Convention established the exclusive agreement clauses in the WIPO Copyright Treaty that dealt with the protection of rights of the authors and their works in the digital world. Even a state, which is not bound by the Berne Convention and is a contracting party, is required to comply with the substantive provisions of the 1971 Paris Act that was part of the Berne Convention that offered Protection of Literary and Artistic Works established in 1886. Two more issues of copyright protection were part of the WCT irrespective the mode or form of the expression such as all computer programmes, databases that may be in any form, arranged or selection or arrangement of any material that constitute intellectual creations (if a database does not organize such material, the same cannot be under the scope of the treaty). The treaty grants other rights, in addition to the provisions of the Berne Convention which are listed as follows: 1. Distribution rights. 2. Rental rights. 3. Right to any other form of communication of such content to the public at large.

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Article 9(2) of the Berne Convention provided for a three-step test to establish limitations and exceptions extending the provisions to all the rights. This extension was applicable to the digital environment as well according to the agreed statement that was part of the WCT established under the national law under the Berne Convention. This extension was permissible only if the three step tests are met. Under the provisions minimum protection of 50 years is offered for all types of work.

2.4.4  The Patent Cooperation Treaty (PCT) Possibility of seeking protection for any patent of an invention, simultaneously in multiple countries by filing an international patent application is provided under the PCT. Any national or resident of any PCT contracting state can file such an application. The national or resident of such contracting state application can be filed at the patent office of the contracting state or at the WIPO International Bureau at Geneva. Simplification of processes to increase effectiveness as well as economize the process of administering it in the interest of the users of the patent systems as well as the Offices responsible against existing means of applying in many countries for patent protection for interventions is the main objective of the PCT. The PCT ensures the following features: 1. It establishes a system that only one application in one language having its effect in each of the countries party to the PCT where the applicant designates in the application. 2. It provides for the inspection of the application for international protection by only a single Patent office, designated as the receiving office. 3. It conducts an international search of each and every application to find out any prior relevant art that may be required to be considered while taking a decision whether the intervention is patentable based on documents published earlier. 4. Publication of centralized international applications with the respective international reports and their communication with the designated offices. 5. It provides for a report containing the opinion if the claimed intervention meets the stipulated international criteria for patentability based on the international preliminary inspection, to the applicant and offices that decide to issue a patent or not to issue a patent. Finally, the PCT 1. 2. 3. 4.

puts the several countries of the world within its fold; reduces severally the costs that were associated with international patent protection process; establishes a strong basis for decision on patents and allows the world’s major corporations and universities and research institutes easy access to the facilities of patent protection.

2.4.5  The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods As per this Madrid Agreement, all products with a deceiving sign of source, by which one of the contracting states or a place situated there is explicitly or implicitly a sign of being the place or country of origin, should be held on importation, or the importation should be banned or other actions or penalties should be applied in relation to this kind of importation. The agreement lays out the situations and methods in which seizure can be pursued and carried out. It forbids the use of any signs in the form of

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advertisements capable of deceiving the public as to the origins of the products, in connection with the selling, exhibition or offer for sale of any products. It is up to the courts of every contracting state to select which appellations (besides the regional appellations regarding the origin of products of the vine) do not, based on their generic character, are within the extent of the agreement. The agreement does not allow for the formation of a governing body, a union or a budget. The agreement, signed in 1891, was amended in Washington in 1911, in The Hague in 1925; in London in 1934; in Lisbon in 1958; and in Stockholm in 1967.

2.4.6  The Hague Agreement Concerning the International Deposit of Industrial Designs The Hague Agreement Concerning the International Deposit of Industrial Designs (referred as ‘The Hague Agreement’ henceforth) was adopted within the framework of the Paris Convention on November 6, 1925. The Agreement came into effect on 1 June, 1928 and was amended many times and reinforced. Applicants can register an industrial design by filing one application with the International Bureau (IB) of WIPO as per this agreement. This agreement allows the design owners to protect their design with least formalities in more than one country or region. It also streamlines the management of registration of the industrial design, making it possible to document consequent changes and to renew the international registration via a single procedural step. The Hague Agreement, which was signed in 1925, was amended in London in 1934 and in The Hague in 1960. It was completed by an additional act signed at Monaco in 1961 and by a complementary act signed at Stockholm in 1967, which was modified in 1979. A further act was adopted at Geneva in 1999 as stated above. The Hague Agreement established a union which has had an assembly since 1970. Every member of the union which has adhered to the Stockholm Complementary Act is an assembly member. The main task of the assembly is the adoption of the union’s biennial programme and budget along with the alterations of the implementing regulations, including the fixing of fees related to the use of The Hague system. 2.4.7  The Trademark Law Treaty The Trademark Law Treaty (TLT) was adopted on October 27, 1994 at a diplomatic conference in Geneva. The purpose of the TLT is to simplify and harmonize the administrative procedures in respect of national applications and the protection of marks. Individual countries may become parties to the Treaty as well as intergovernmental organizations, such as the EU and the African Intellectual Property. Organisation Africaine de la Propriété Intellectuelle (OAPI) maintains an office for the registration of trademarks having effects on the territory of their member states. The TLT seeks to standardize and streamline the processes for registering national and regional trademarks. This is accomplished by simplifying and harmonizing particular characteristics of the procedures hence making the applications and administration of registration of trademarks in a number of jurisdictions more anticipated and less complicated. The majority of the TLT provisions relate to proceedings before a trademark office which can be divided into three main phases: 1. Registration application. 2. Changes post registration. 3. Renewal. The guidelines for each step are built such that the criteria for an application or a particular request are well specified.

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2.4.8  The Patent Law Treaty At a diplomatic conference in Geneva on 1 June, 2000 the Patent Law Treaty (PLT) was adopted. The PLT aims at harmonizing and streamlining formal procedures with respect to national and regional patent applications and patents. Except for the filing date requirements, the PLT offers maximum requirements that the office of a contracting party may apply: No further formal requirements may be laid down by the office in respect of matters dealt with in this treaty. Any state party to The Paris Convention for The Protection of Industrial Property or a member of WIPO may become a member of the PLT. Additionally, any intergovernmental organization may become party to the PLT if the following criteria are met: 1. At least one of the member states is party to the Paris Convention or WIPO. 2. The organization, according to its internal procedures, was duly authorized to become a party to the treaty. 3. The organization is competent to grant patents with effect for its member states or has its own binding legislation on all its member states on matters covered by the treaty and has, or has appointed, a regional office to grant patents.

Advantages of PLT From inventors, applicants and patent attorneys’ point of view, standardization and simplification of formality requirements result in a reduced risk of formality errors, resulting in less frequent loss of rights and cost reductions. They may depend on a closely aligned set of patent formalities in all countries party to the PLT, as applicants and patent attorneys from many countries are aware of the PCT provisions on the form or content of an international application incorporated by reference into the PLT. Furthermore, due to the likelihood of correcting formality errors before the offices and the incorporation of various procedures to avoid loss of rights, they may face a reduced risk of loss of rights due to non-compliance with the requirements of formality. On the other hand, offices can operate more efficiently and thus reduce their costs by eliminating unnecessarily complicated procedures and revamping the entire process.

2.5

International Treaties on Patent

The PCT is an international treaty on patent law deduced in 1970. It offers a cohesive procedure for filing patent applications in each of its contracting states to protect inventions. A patent application filed under the PCT is referred to as an international application or PCT. The European Patent Office (EPO) or the African Regional Intellectual Property Organization or the African Intellectual Property Organization (OAPI) or the Eurasian Patent Office (EAPO) may be approached to file the international application in case the applicant is a permanent resident or carries nationality of a contracting state who in turn is a party to the European Patent Convention or the Eurasian Patent Convention or the Bangui Agreement or the Harare Protocol on Patents and Industrial Designs (Harare Protocol). The treaty sets out in detail the formal requirements which must be met by international applications. The application for a PCT shall have the effect of dynamically designating all contracting states obligated by the PCT at the international filing date. In each designated state the effect of the international application is the equivalent of a national patent application being filed with that state’s national patent office. An international search is under way for the international application. The search is implemented by one of the skilled International Searching Authorities (ISA) under the PCT and gives rise to an international search report which is a list of citations of published documents which could possibly

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affect the patentability of the invention claimed in the application. Additionally, a preliminary and non-binding written opinion is also issued on whether the invention seems to satisfy the patentability criteria based on the results of the search report. The applicant receives the international search report and written opinion. On evaluating their content, the applicant can choose to withdraw the application specially where the report and opinion suggests the unlikeness of the patent being granted or decide to modify the claims in the application. If an international application is not withdrawn, it shall be published by the International Bureau, together with an international search report. At the same time. the written opinion on PATENTSCOPE, which is a patent search database provided by WIPO for PCT applications, is made available. To avoid documents arising in the future that would render patenting unlikely, the applicant can seek the help of a Supplementary International Searching Authority (SISA) to specifically search for the documents in the language that the SISA specializes in. The ISA should be willing to offer the service of additional search of the relevant documentation as mentioned above. This would serve the purpose of the applicant of exploring documentation if any, in a different language than his own that may hamper the process of patenting. However, the applicant can do so before the end of 22 months from the priority date. By submitting the required fees to the local patent agents, the applicant can commence the national procedure before all of the designated office by submitting a translation, if required, into the official language. The applicant would have to decide within 30 months from priority date if he wishes to continue with the international application for national or regional patents. This would be applicable in most contracting states. An optional international preliminary examination may be requested in case the applicant wants to modify the application like address documents recognized in the search report and conclusions in the written opinion and have the possible patentability of the amended application reviewed. As a result of the preliminary examination, an international report on patentability is prepared by one of the experienced International Preliminary Examining Authorities (IPEA) under the PCT containing a preliminary and non-binding opinion on the patentability of the claimed invention. It offers the applicant a stronger basis for evaluating the likelihood of obtaining a patent and, if the report is in favour, providing a stronger basis for continuing the application before national and regional patent offices. If no international preliminary examination has been asked for, the IB shall establish, on the basis of the ISA’s written opinion, an international preliminary report on patentability and shall share this report with the designated offices. The procedure under the PCT has numerous advantages for applicants, patent offices and the general public, as listed in the following: 1. Applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of seeking protection in foreign countries, appoint local patent agents in each foreign country, prepare the necessary translations and pay national fees. 2. Applicants can rest assured that, if their international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any designated office during the national phase. 3. On the basis of the international search report and the written opinion, applicants can assess the possibility of their invention being patented with reasonable probability. 4. During the optional international preliminary examination, the applicants have the chances of amending the international application and thus putting it in order before the various patent offices process it. 5. Thanks to the international search report, the written opinion and, where appropriate, the international preliminary judgment on patentability conveyed to approved offices along with the

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foreign application, the search and analysis task of patent offices can be substantially reduced or removed. 6. Applicants are able to access fast-track examination procedures in the national phase in contracting states that have PCT–Patent Prosecution Highway (PCT–PPH) Agreements or similar arrangements. 7. Since each international application is published with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention and for applicants, international publication on PATENTSCOPE puts the world on notice of their applications, which can be an effective means of advertising and looking for potential licensees. A union consisting of an assembly is created by the PCT. Each state party to the PCT is a party to this assembly. Essential responsibilities of the assembly are listed as follows: 1. 2. 3. 4.

Budget of the union. Fixing certain fees connected with the use of the PCT system. Modification of the regulations issued under the treaty. Adoption of the biennial programme.

The various benefits were passed on by the assembly of the PCT Union, to several applicants, namely, the following ones: 1. The natural person resides in a state where the per capita Gross Domestic Product (GDP) is lower than USD25,000, calculated for the purpose at 10 years’ average of GDP at 2005 published rates of the USD by the United Nations. It is also required that the residents of such a state or nationals residing in such a state should have filed lower than 10 international applications in that year for every million of the population of the state or lower than 50 international applications in total. These figures must be as per the most recent 5-year average of application filings which have been published by the International Bureau. 2. A 90% fees reduction is to the applicants who are resident of such state that are listed as being classified as an LDC by the United Nations. Concluded in 1970, the PCT was amended in 1979, modified in 1984 and again in 2001. States that are party to the Paris Convention for the Protection of Industrial Property (1883) have access to it. Instruments of ratification or accession shall be deposited with the WIPO Director General.

2.6

International Treaties on Trademark

A trademark is in principle a purely national affair. Separate trademark registrations must be made in all the countries in which trademark protection is desired. To ease this situation somewhat, various international treaties have been established with which multiple trademark registrations can be obtained through a single procedure. For example, The Netherlands, Belgium and Luxembourg have a single trademark law. Any registrations under this law automatically results in a trademark that is valid in all three countries.

2.6.1  The Paris Convention The Paris Convention for the Protection of Industrial Property (1883) contains various important provisions for trademarks. The most important one is a priority right. This implies that in a country

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that is party to the Paris Convention, one may apply for a trademark and then file the corresponding applications in another member country and seek a priority date. The later registrations will then receive the registration date of the first registration. This can be a great benefit if in the meantime someone else had filed for the same trademark in those other countries. Furthermore, trademarks that are formally registered in the country of origin shall be accepted for filing and protected as is the case in other union countries. The only reasons under which the trademark offices of those other countries may refuse the registration is when the trademark infringes rights acquired by third parties in those countries, where the trademark is devoid of any distinctive character, or when the trademark is contrary to morality or public order or may deceive the public. Special protection is given to so-called well-known marks. It is prohibited to register or use a trademark that constitutes a duplication, impersonation or translation of a trademark that is considered well-known in a country. If the holder of the well-known mark finds that such another mark has been registered, he can request a cancellation of that registration within 5 years. If the registration of the other mark was done in bad faith, there is no restriction on the time in which the holder of the famous mark can request cancellation.

2.6.2  The Madrid Agreement The Madrid Agreement concerning the International Registration of Marks (1891) is a special treaty designed to ease the acquisition of trademark rights in various countries. After an initial registration in his own country, an applicant for a trademark can make a so-called international registration at the IB of the WIPO in Geneva, indicating the member countries in which he would like to have trademark protection. The IB then makes the registration and passes it on to all the designated member countries of the Madrid Agreement. These then have 1 year in which to refuse the registration in their country. The registrations that are a result of the international registration can be annulled if the original national registration is refused, annulled or dropped in the first 5 years after the first registration date. An annulment resulting from a legal action started after the original registration is more than 5-year old cannot affect the international registration. Therefore, if you want to get rid of an international mark established under the Madrid Agreement, you should try to get the original national registration annulled by starting a legal procedure to that end within 5 years after the first registration. This is known as a central attack on international registration. 2.6.3  The Madrid Protocol The protocol concerning the Madrid Agreement on the International Registration of Marks (1989) essentially contains relatively similar provisions as the Madrid Agreement itself. There are some important differences: 1. The difference is that not only the countries, but also geographical the regions, such as the European community, can be a member. This way, for example, a community trademark (or CTM) (see Subsection 2.6.4) can act as a first registration. 2. Under the protocol, one can ask for the international registration based on only the application of a trademark, rather than the registration. Registration often means that the trademark office has to accept the application. If this takes more than 6 months, it is no longer possible to use the Madrid Agreement to get an international registration for the trademark. 3. If the so-called central attack results in the annulment of the original trademark (or application) the holder of the international registration under the Protocol can in all of the countries ask for a

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conversion. The trademarks in question are then converted to national trademarks and treated as if they were applications filed on the filing date of the (rejected) national application. This way, the holder of the international registration still has a chance to get national trademark rights in at least some of these countries. If the country of origin is a member of both agreement and protocol, and the countries in which the international registration should have a fact is also a member of the agreement and the protocol, then the provisions of the agreement take precedence over the provisions of the Protocol in these countries.

2.6.4  The CTM Regulation As a result of Council Regulation 40/94 (1993) and Regulation 3288/94 (1994), it is now possible to obtain one single CTM that is valid in all countries of the European community. Applications for CTMs are handled by the Office for the Harmonization of the Internal Market (OHIM). A CTM is valid in the European community as a whole. It is not possible to limit the geographic scope of protection to certain member states, and as a consequence an invalidation, refusal or expiry of a CTM necessarily applies for the whole of the European community. Everyone is still free to apply for national trademarks instead of CTMs, and one can in theory even have CTMs and national trademarks for the same mark. What can be a CTM? In order to qualify as a CTM, a sign should be effective in being graphically represented, in specific words, including personal names, designs, letters, numerals, the shape of the products or their packaging, given that such signs are able to differentiate between the goods or services of one undertaking and those of another. The following are examples of CTMs: 1. 2. 3. 4. 5. 6.

Word marks including letters, numbers or combination of letters, numbers and words. Figurative marks, whether or not including words. Figurative marks in colour. Colours or combinations of colours. Three-dimensional marks. Sound marks.

It is worth noting that a CTM must be distinctive in all the member countries of the European Community (EC). With a national trademark, a Dutch company could, for example, use the descriptive word for the product he is selling in Spanish or Greek as his Dutch trademark. As neither Spanish nor Greek is a normal language in The Netherlands, such a mark could very well be distinctive. However, a CTM that is descriptive in Spanish or Greek cannot be distinctive and therefore is invalid. A CTM can be declared void by the OHIM or by any national court in the EC.

Examination of Trademark Applications The OHIM examines all trademark applications to see whether an absolute ground for refusal applies. An absolute ground for refusal means that the mark in question 1. is devoid of any distinctive character; 2. determines the type, quality, quantity, real purpose, value, geographical origin or time of manufacture of the products or services or other qualities of the goods or service;

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3. has become customary in the current language or in the bona fide and established practices of the trade; 4. contradictory to public policy or to agreed normative values; 5. is of such a nature as to mislead the public; for example, regarding the nature, quality or geographical origin of the products or services. For certain kinds of goods, there are some other absolute grounds for refusal. These relate to things like the shape of the goods, the origin of alcoholic beverages and certain official emblems. If, on one of the first three specific points, the OHIM rejects a trademark claim, instead the applicant may resolve the denial by proving that the trademark has become recognizable as a consequence of its use. Within 3 months after the trademark application has been published, anyone can start an opposition based on the so-called relative grounds for refusal. This can only be done by proprietors of earlier rights. The following constitutes an earlier right: 1. An earlier CTM or a CTM application. 2. An earlier national trade mark or a national trade mark application filed or registered in a member state of the EU. 3. An international registration under the Madrid Agreement or the Madrid Protocol with effect in a member state of the EU; 4. A non-registered mark or another sign used in the course of trade of more than mere local significance valid in a member state; 5. A trade mark which is well-known in a member state (within the meaning of Article 6 of the Paris Convention). The CTM application or the CTM will be refused on the basis of an earlier mark if 1. it is identical with the earlier trade mark, and the goods or services for which registration is sought are identical to those for which the earlier trade mark is protected; 2. because of its identity or similarity to the earlier trade mark and the identity of similarity to the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade mark; 3. it is identical or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier mark has a reputation and where that mark would suffer unfair advantage or detriments in respect of its distinctive character or its repute.

The Nice Agreement The International Classification of Goods and Services for the purpose of Registration of Marks (1957) or the Nice Agreement, is not a trademark treaty like the other treaties. Rather, it provides an internationally accepted definition of the various types of goods and services for which one might want to obtain trademarks. In a trademark application the applicant must indicate for which goods or services protection is desired. By referring to the class numbers as defined in the Nice Agreement, it is clear to everybody what the trademark protects. The Nice Agreement defines 34 main classes for goods and 11 classes for services. They may be accompanied by explanatory notes which describe in greater detail the type of product or service for which protection is desired. There is also an alphabetical list of goods and services, which comprises about 10,000 indications referring to goods and 1,000 indications referring to services that can be used

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for this purpose. This way, an applicant can indicate for example that his registration applies only to computer keyboards and not to mice or other peripherals.

2.7

International Treaties on Copyright and Related Rights

The different international treaties on copyright and related rights are discussed in this section.

2.7.1  Berne Convention It is a well-known fact that copyright is real in nature meaning the protection offered by a copyright law is available only in the country where the law is applicable. In order for the works to be protected outside the country of origin, it is essential for the country to include bilateral agreements with countries where the works are used. These same bilateral agreements were concluded between the European nations in the mid-19th century, but they were neither consistent nor comprehensive. Hence, the need for a homogeneous protection system, the 1st international agreement of protection of the rights of authors was finalized and implemented on 9 September, 1886 in Berne, Switzerland named The Berne Convention for the Protection of Literary and Artistic Works. The countries which implemented the Convention formed the Berne Union to ensure recognition and protection of authors’ rights in all member countries. WIPO administers the Berne Convention in Geneva, Switzerland. Owing to the rising awareness that copyright protection is an essential part of the new global trading system, accessions to the Berne Convention have grown significantly in recent years. Developed and developing countries have acknowledged their interest to offer intense protection of IPRs to participate in the advantages of such trade as the international trade in goods and services are protected by IPRs is thriving and global business. The TRIPS Agreement integrates fundamental provisions of the Paris Act of the Berne Convention and is a perfect proof of the significance now connected to the protection of IP by multiple countries of the world. Key Elements of the Protection Granted under Berne Convention Two basic elements of protection are offered under the Berne Convention: 1. The works originating in one of the member states must be protected in each member state in the same manner that these states protect the works of their own citizens. 2. Minimum levels of protection formed by the convention must be provided by the laws of the member states, that is, minimum rights.

Formality-Free Protection The Berne Convention provides that the protection of copyright may not be conditional on any formality, such as the registration or deposit of copies. Works Protected Article 2 includes an illustrative, non-exhaustive list of protected works, covering ‘any original production in the literary, scientific and artistic domain, whatever its style or form of expression may be’. Works based on other works are also protected, such as translations, adaptations, arrangements of music and other modifications of a literary or artistic work. Certain categories of works may be exempted from protection; therefore, member states may refuse protection to legislative, administrative and legal official texts, works of applied art, lectures, addresses and other oral works. It also allows states to require that works be rectified in some form of material in order to be protected. For instance,

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a choreographic job may only be covered in a nation with such a fixation condition if the actions were written down in dance notation or captured on videotape.

Owners of Rights The protection under the convention is to provide the author and his inheritors in title advantages of the convention. However, for certain categories of works, such as cinematographic works, copyright ownership is a matter for legislation in the country where protection is claimed; for example, member states offer that the original owner of rights in such works is the producer, rather than the director, screenwriter or other persons who contributed to the creation of the work. Eligibility for Protection Protection of authors who are citizens of a member state of the convention is provided but authors who are not citizens of such a country are protected only if they publish their works in a member state or at the same time publish in a non-member and a member state. Rights Protected Authors are granted exclusive economic rights, including the right of translation, reproduction of the works in any manner or form, right to the public performance of dramatics, dramatic-musical and or musical works, right to broadcast and or any form of communication to the public by wire or by rebroadcasting or by a loudspeaker or any such other analogous instrument, or the right to recitation in public, the right to adaptation, the right to make cinematographic adaptation or reproduction of the works, the right of distribution of the works that are adapted and reproduced. The droit de suite laws are applicable only in the case where both the countries recognize the laws. Moral Rights recognition provided in Article 6(b) is the right awarded to the author to object to any mutilation or modification, distortion, or any such derogatory act with respect to the author’s works that can be prejudicial to the authors repute or honour. Limitations In order to sustain an adequate balance between the interests of copyright owners and users of protected works, the Berne Convention permits specific restrictions on economic rights, i.e., cases in which protected works can be used without the authorization of the copyright owner and without compensation payments. These restrictions are frequently referred to as “free uses” of protected works and are set out in Articles 9(2) (reproduction in specific cases), 10 (quotations and use of works by way of illustration for teaching purposes), 10bis (reproduction of newspapers or similar articles and use of works for the purpose of reporting current events), and 11bis (3) (ephemeral recordings for broadcasting purposes). There are two cases in which the Berne Convention offers for the likelihood of non-voluntary licenses: in Articles 11bis (2) (with regard to the right to broadcast and communicate to the public by wire, by re-broadcasting or by loudspeaker or any other similar instrument in the broadcasting of the work) and in 13(1) (with regard to the right to record musical works by sound, recording which has already been authorized). The Convention’s Appendix to the Paris Act also allows developing countries to implement, in certain cases, non-voluntary works translation and reproduction licenses related to educational activities. Duration of Protection Article 7 provides for a minimum protection period that is the life of the author and 50 years after his death. For certain categories of works there are exceptions to this basic rule. For cinematographic

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works, the period may be 50 years after the work is released publicly, or, if not made available, 50 years after such a work has been made available. The minimum security period for photographic works and works of applied art is 25 years from the creation of the piece. With respect to human rights, the protection of moral rights will extend for at least as long as the length or protection of economic rights.

Related Rights The International Convention for the Protection of Performers, The Rome Convention – Producers of Phonograms and Broadcasting Organizations 1961, The Phonograms Convention known as Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms 1971, and also finally the Satellite Convention conducted in Brussels in 1974 concerning distribution of programme carrying signals transmitted by Satellites. Protection of performances for performers, broadcasts for broadcasting organizations and phonograms for phonogram producers is provided by the Rome Convention. 1. Performers such as singers, dancers, actors, musicians and those who perform artistic or literary works are provided protection against specific acts which have not been approved of by them, such as communication of a live performance to the public and broadcasting it, the fixation of a live performance, the duplication of the fixation if the original fixation was made without the performer’s approval or if the duplication was made for purposes different from those for which approval was given. 2. Phonograph producers are entitled to authorize or restrict the direct or indirect replication of their phonograms. In the Rome Convention, ‘phonograms’ implies any auditory fixations of a performance or certain signals that are purely aural. Where a phonogram written for commercial purposes contributes to secondary applications (such as broadcasting or communicating to the public in some form), the consumer may pay a single equal remuneration to the artists, to the phonogram manufacturers, or both. Nevertheless, contracting states are free not to apply this rule or to limit its application. 3. Fixation of the broadcasts, reproduction of such fixations, rebroadcasting of the broadcasts, reproduction of such fixation, communication to public of television broadcasts if such communication is made in places accessible to the public against payment of an entrance fee, are within the rights of broadcasting organization to authorize or prohibit certain acts. Exceptions and limitations to above rights in national laws concerning private use, using short excerpts in connection with reporting current events, ephemeral fixation by a broadcasting organization by means of own facilities as well as its broadcasts, or for the use of teaching or scientific research or in cases where national law provides for exceptions to copyright in literary and artistic works is allowed under the Rome Convention. The provisions on performer’s rights have no further application once the performer has consented to the incorporation of a performance in a visual or audio–visual fixation. The protection provided must last at the minimum until the end of a 20-year period calculated from the end of the year in for which 1. performance and phonograms in which the fixation was made; 2. the performances not incorporated in phonograms where performances took place; 3. the broadcast took place but national laws are providing a 50-year term for protection of at least phonograms and performances. WIPO is responsible for the administration of the Rome Convention, in cooperation with the International Labour Organization (ILO) and the United

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Nations Educational, Scientific and Cultural Organization (UNESCO). These three organizations constitute the Intergovernmental Committee Secretariat formed under the convention, consisting of the members of the 12 contracting states. The convention does not make provision for a union institution or a budget. It establishes an Intergovernmental Committee of contracting states, which considers issues relating to the convention.



2.8

International Treaties on Industrial Design and Integrated Circuit

Various international treaties on industrial design and integrated circuit are discussed in this section.

2.8.1  Paris Convention for the Protection of Industrial Property, 1883 Article 1 of the Paris Convention (Stockholm Act, 1967) stipulates that ‘the protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indication of source or appellations of origin, and the repression of unfair competition’. In Article 5, the convention conformingly provides that ‘industrial designs shall be protected in all the countries of the union’. However, the Paris Convention, not clearly providing a definition of industrial designs, leaves it to each individual country of the union to decide how to protect them under domestic law. Article 5(B) of the Convention provides that ‘the protection of industrial designs shall not, under any circumstances, be subject to any forfeiture, either by reason of failure to work or by reason of the importation of articles corresponding to those which are protected’. Thus, the Convention prohibits countries of the union from imposing sanctions which forfeit protection of an industrial design under domestic laws due to a failure to work or the importation of an article incorporating the industrial design which should be otherwise protected. 2.8.2  The Hague Agreement Concerning the International Deposit of Industrial Designs, 1925 Based on the provision of Article 19 of the Paris Convention, some of the countries of the union gathered in The Hague in 1925 to make a special arrangement for the protection of industrial designs. This is ‘The Hague Agreement Concerning the International Deposit of Industrial Designs’. As a result, the relations between contracting countries can be divided into the following three groups according to each act effectuated by The Hague Agreement. Group I    Countries for which only the London Act is effective. Group II   Countries for which only The Hague Act is effective. Group III  Countries for which both the London Act and Hague Act are effective. 1. London Act, 1934 (effective): The London Act is an arrangement mainly based on the principle of ‘a copyright-oriented approach’ for the protection of industrial designs. 2. Hague Act, 1960 (effective): The Hague Act was revised by coordinating each country’s wishes while trying to provide contracting countries, including those conducting novelty examinations with an opportunity to obtain more effective protection through an international deposit. This act came into effect on August 1, 1984. 3. Geneva Act, 1999 (not effective): This Geneva Act will not come into effect until and unless at least three countries that have more than 3000 applications annually under domestic laws join

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the act, and as of January 2003 the act has not become effective although some countries have ratified it.

2.8.3  Locarno Agreement Establishing an International Classification for Industrial Designs, 1968 Revised in 1979 in Stockholm, this agreement sets forth an international classification for articles representing designs. It is composed of 1. main classes and subclasses and 2. an alphabetical list of articles. This classification does not bind the scope of protection granted by the domestic design laws of the contracting states. Japan has not joined the Locarno Agreement.

2.8.4  TRIPS Agreement under WTOA As a result of negotiations based on the GATT Uruguay Round talks, the ‘World Trade Organization Agreement (WTOA)’ was concluded on 25 December, 1993 in Geneva. In connection with this, a separate agreement regarding protection of IP called the ‘TRIPS Agreement’ was concluded. This agreement obligated its contracting states to provide a high level of protection and enforcement over a wide variety of areas of IP such as 1. 2. 3. 4. 5. 6. 7. 8.

copyright and related rights, trademarks, geographical indications, industrial designs, patents, layout-designs of integrated circuits, protection of undisclosed information, and control of anti-competitive practices in contractual licenses.

In Section 4 of part II, the TRIPS Agreement sets forth regulations concerning ‘industrial designs’.

2.8.5  Berne Convention for the Protection of Literary and Artistic Works, 1886 Berne Convention (Paris Act 1971) stipulates that ‘the expression “literary and artistic works” shall include every protection in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science’. According to the provisions of the Berne Convention, it is considered a principle to protect applied works and industrial designs equally. While leaving it to each member country to regulate detailed

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conditions for the protection, ‘this term shall last at least until the end of a period of 25 years from the making of such work’.

2.8.6  Universal Copyright Convention, 1952 This convention was concluded at a UNESCO meeting held in 1952 in Geneva to coordinate the Berne Convention with the Pan-American Convention. The Paris Act was concluded in 1971. The conclusion of this convention was intended to harmonize the two conflicting copyright conventions. At the same time, however, it was designed to prevent affecting the already existing conventions. Therefore, it does not cause any conflict between the two conventions. EU Design Directive – with regard to the design protection system in the EU, Directive 98/71 EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs became effective on 17 November 1999 and the contracting states had to establish their own design system on the basis of this Directive by 28 October 2001. Italy, France, Denmark and Britain had finished revising the laws, however, Germany had not. The EU member states have to provide for the design protection system in accordance with this directive, and EU Design Law is established pursuant to this directive.

2.9

International Law Relating to Cybercrimes

As IP is one of the significant resources of any individual, it ought to be secured at any expense since an individual puts his abilities and work for production of IP. On the other hand, there is an earnest requirement for the exacting laws in this field, so that these wrongdoings identified with IPR could be maintained a strategic distance from in future. The new space name question law ought to be expected to give trademark and administration mark proprietors legitimate cures against litigants who acquire area names ‘in dishonesty’ that are indistinguishable or confusingly like a trademark. It should go about as a significant weapon for trademark holders in securing their licensed innovation in the online world. In the United States, they have special legislation for prevention of cybersquatting, that is, ‘U.S. Anti-Cybersquatting Consumer Protection Act, 1999’ which protects the interest of owners of both registered and unregistered trademarks against use of their marks within domain names and likewise protects living people against utilization of their own name in specific situations. So, it is an ideal opportunity for India to sanction such a reasonable enactment which will ensure the privileges of copyright, trademark proprietors. The Information Innovation Act needs some place in regard to purview issues, cybercrimes identified with IPR, cyberstalking, cyber defamation etc. In similar manner, the Indian Trademark Act, 1999 and Copyright Act, 1957 are additionally quiet on issues emerging out of online trademark and copyright encroachment. Although personal computer (PC) programmes are secured under the copyright act, it does not give the solutions for online programming theft.

2.9.1  Different Forms of Infringement of Trademark through Cyberspace 1. Cybersquatting: Different sorts of domain names debates seek thought under the steady gaze of the courts all over the world. One of the most genuine sorts of debates has been about ‘cybersquatting’ which includes the utilization of a domain name by an individual with neither registration nor any natural rights to the name. Trademarks and domain names being comparable have been misused by certain individuals who register trademarks of others as domain names and sell those domain names back to the trademark proprietors or third parties at a high benefit. This is known

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as ‘cybersquatting’ which implies some individual sitting on the property of someone else. The act of cybersquatting is damaging whereby one person registers a domain name that incorporates the name or the trademarks of another. 2. Reverse domain name hijacking: It is otherwise called reverse cybersquatting. It happens when a trademark proprietor attempts to make sure about a domain name by making bogus cybersquatting claims against a domain name’s legitimate proprietor through lawful activity. Reverse cybersquatting is most generally done by bigger enterprises and well-known affluent people. 3. Meta tags: Meta tag is part of web pages that is also known as meta elements. Meta tags provide information about page descriptions, key words and other relevant data. Initially, meta tags were used in search engines to define what the page was about when the internet was in the early stages, meta tags were used to help place web pages in the correct categories. These days, individuals started mishandling meta labels to fabricate bogus page rankings for pages that were ineffectively developed.

2.10 International Organizations Active in IPR Enforcement The international organizations active in IPR enforcement; for example, WIPO, GATT, WTO, UNESCO, TRIPs Agreement, which are active in IPR enforcement (such as enforcement of industrial property, in general, enforcement of patent rights, and enforcement of copyright and related rights) are discussed in this section.

2.10.1 WIPO World Intellectual Property Organization; otherwise called WIPO, is a specialized agency of the United Nations, is an international agency that works for the protection of legal rights in artistic and literary works, inventions, trademarks, and other original creations. Such rights are known as IPRs. The organization works for the promotion of international agreements on copyright, patents, trademarks, and other original creations. It also provides technological information and other assistance to developing countries. WIPO has a membership of more than 110 countries. It is situated in Geneva, Switzerland. WIPO administers two treaties that were established in the 1880s. One protects copyright. The other protects patents, trademarks, and other original creations. Administrative agencies of the two treaties joined in 1893 and were replaced by that of WIPO when it was founded in 1967. The agency became part of the UN in 1974. WIPO plays a particularly important role in educating IP officials worldwide about the importance of establishing and implementing strong IP laws. The creative community looks to WIPO treaties to establish a basic standard of IP protection worldwide. This organization, and the new WIPO Copyright Treaty in particular, represent a fundamental step in promoting growth and protecting our nation’s precious technology assets in the new digital era. WIPO organized a conference in December 1996, inviting around 160 member countries, the agenda being modification of the existing norms and creation of new norms on IPRs so as to cope with the creation, adoption, transmission and distribution of proprietary works in the digital medium. Three draft treaties, prepared by WIPO, were discussed in detail, which are listed as follows: 1. Copyright of electronic records. 2. Protection of performers and producers of phonograms and 3. New form of sui-generis (of one’s own origin) protection of databases.

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2.10.2 GATT The General Agreement on Tariffs and Trade (GATT) is a multilateral agreement governing international trade. According to its preamble, its purpose is the ‘substantial reduction of tariffs and other trade barriers and the elimination of preferences, on a reciprocal and mutually advantageous basis’. The GATT was negotiated during the United Nations Trade and Employment Conference and was the result of the failure of the governments to negotiate the establishment of the International Trade Organization (ITO). GATT was signed in 1947 and lasted until 1993, when it was replaced by the World Trade Organization (WTO) in 1995. The original GATT text (GATT-1947) is still in effect under the WTO framework, subject to the modifications of GATT-1994. GATT held a total of eight rounds, during which countries exchanged tariff concessions and reduced tariffs. In 1993, the GATT was updated (GATT-1994) to include new obligations upon its signatories. One of the most significant changes was the creation of the WTO. The 75 existing GATT members and the European Communities became the founding members of the WTO on January 1, 1995. The other 52 GATT members re-joined the WTO in the following 2 years, the last being Congo in 1997. Since the founding of the WTO, 21 new non-GATT members have joined and 29 are currently negotiating membership. There is a total of 157 member countries in the WTO with Russia and Vanuatu being new members as of 2012. 2.10.3 TRIPS The TRIPS Agreement which came into effect January 1995 is the most detailed multilateral IP agreement till date. The sections regarding IP covered by it are listed as follows: 1. Copyright and related rights such as the rights of producers of sound recordings, performers and broadcasting organizations. 2. Trademarks as well as service marks. 3. GI including appellations of origin. 4. Industrial designs. 5. Patents including the protection of new plant varieties. 6. Layout designs of integrated circuits. 7. Trade secrets, test data and other such undisclosed data. The three main features of the agreement are listed in the following: 1. Standards: With respect to each of the major areas of IP covered by the TRIPS Agreement, the agreement outlines the basic standards of protection that each member must provide. 2. Enforcement: Domestic procedures and remedies to enforce IPR are dealt with by this set of provisions. The agreement sets out certain basic principles which extend to all compliance procedures for IPR. Additionally, it contains provisions on civil and administrative procedures and remedies, provisional measures, special requirements related to border measures and criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that must be available so that right holders can effectively enforce their rights. 3. Dispute settlement: The agreement makes disputes between WTO members on compliance with the TRIPS obligations subject to dispute settlement procedures in the WTO. Furthermore, the agreement lays down certain fundamental principles, such as national and mostfavoured-nation treatment, and specific general rules to guarantee that procedural difficulties in the acquisition or maintenance of IPRs do not nullify the substantive benefits that the agreement should

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2.11  Introduction to Indian Scenario of IPR

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provide. The commitments under the agreement would extend fairly to all member states but there will be a longer time for developing countries to step in. Unique transitional schemes were introduced where a developing country does not currently provide protection for a product patent in the pharmaceutical field. The TRIPS Agreement is a minimum standards agreement that enables members to offer, if they so wish, more substantial protection of IP. Members are freely allowed to find the suitable ways to implement the provisions of the Agreement according to their own legal system and practice. The WTO is a worldwide organization composed of 164 member countries concerned with the rules of trade between nations. Its goal is to ensure that trade flows as smoothly and predictably as possible. As part of his broader attempts to renegotiate the United States’ global trade deals, President Donald Trump has threatened to withdraw from the WTO, calling it a ‘disaster’. If the U.S. were to withdraw, trillions of dollars in global trade would be disrupted. The WTO is the only global international organization dealing with the rules of trade between nations. At its heart are the WTO agreements, negotiated and signed by the bulk of the world’s trading nations and ratified in their parliaments. The goal is to help producers of goods and services, exporters, and importers conduct their business. There are a number of ways of looking at the World Trade Organization. It is an organization for trade opening. It is a forum for governments to negotiate trade agreements. It is a place for them to settle trade disputes. It operates a system of trade rules. Essentially, the WTO is a place where member governments try to sort out the trade problems that they face with each other. The WTO is run by its member governments. All major decisions are made by the membership as a whole, either by ministers (who usually meet at least once every 2 years) or by their ambassadors or delegates (who meet regularly in Geneva).

2.11 Introduction to Indian Scenario of IPR In today’s intellectual era, India has shown a considerable growth in its research and development. The presence of well-established state of the art labs of Indian as well as multinational companies in the country has clearly proved the Indian IP status in the world. The rise in Indian economy is a clear impact of IP influence in the country. By setting up new technology, incubation centres in various parts of the country and providing financial aids to the technologist, the research and development (R&D) status of the country has been boosted up. India being a developing nation, has taken giant leaps in competing towards TRIPS Agreement and in compliance with the U.S. and European IPR structure. The 21st century can be referred to as the century of technology, knowledge and in fact the regime of intellect. The country’s ability to translate knowledge into innovation to gain wealth will determine its future. Thus, innovation is supposed to be the key to creating knowledge into wealth. Therefore, issues of generation, evaluation, protection and exploitation of IP would become critically important all over the world. Through this article, emphasis has been given on the IPRs impact in creating a strong backbone of the country. IPRs are provided as a protection and incentive to the creators, whose creativity could otherwise be freely used by others. The society expects the creators to make their work available in the market where this work can be bought and sold. However, while the society wishes to encourage creativity, it does not want to help the grooming of harmful market power and for this reason, certain limits are built in the rights granted to the creator, in terms of time and space, by the state. Rights are granted for a fixed period of time and protect only the fixation of creativity in material form.

2.11.1  Challenges in IPR: From Indian Perspective Today, IPR plays an important role in every sector and has become an important aspect of research for pharma and research-oriented industries. The continuous efforts of the government in policy

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establishment, IT protection, infrastructure, IPR search portals and manpower made this industry a step ahead. In consideration of all the achievements, our industry is still facing troublesome challenges not only at domestic level but also at international level. Firstly, in India IPR lacks its roots in remote areas, such areas are considered to be the hotbed of inventions. Many people are still unaware about IPR and their advantages in taking rights for their IP. In such cases, the government should promote the awareness of IPR in such remote areas. Large number of awareness camps and educational hubs has to be organized for the skilled impart of knowledge among the inventors. Secondly, a legal issue plays an important role in IPR situation in the country. Today various trademark and patent infringement matters are gaining their significance in the legal story of the country. In such an increase of IPR matter, a skilled team of law persons (such as judges and advocates) and IPR professionals are required. Apart from the above issues, TRIPS flexibility is yet another object to be discussed here. Earlier, when Indian patent system was not in compliance with TRIPS, there was a risk of a healthy Patent protection provision in India. But today the condition has totally changed. India is now a member of TRIPS agreement and our patent system is fully compliant with the TRIPS. Even though Indian Patent Act contains all the TRIPS flexibilities, the relevant provisions require fine tuning, especially of those related to the patent protection, compulsory license (CL) and government use.

2.11.2  History of IPR in India Earlier when IPR was in its preliminary stage, a lot of problems arose relating to its implementation, policies, acts/rules, financial and governmental support. Earlier, companies and inventors were also not aware of IPR; therefore, risk of infringement was at an alarming level without a healthy system, and companies were not interested to go for the R&D process in India. This resulted in the death of inventions, high risk of infringement, economic loss and decline of an intellectual era in the country. Keeping in view all the above problems, India has taken strong steps in strengthening IPR in the country. For example, the first Indian Patent Law came in 1856. Further, the same was modified from time to time by Indian patent system. New patent law was made after independence in the form of the Indian Patent Act, 1970. Later, it was amended in compliance with the TRIPS provision. Recently, in 2005, amendments were made in IPR. While the process of bringing out amendments was going on, India became a member of the Paris Convention, PCT, Budapest Treaty and finally signed the TRIPS Agreement to comply with the International and Indian standards. Recently, India signed the ‘Madrid Protocol’ which further enhances the applicability of Trademarks in 89 countries. Further, interest of Small and Medium Enterprises (SMEs), Indian industries, technologist, scientist and inventors are gaining in this field. More number of research-oriented persons are filing their inventions on a large scale. More number of foreign companies are now establishing their in-house R&D centres in India, which is a clear sign of IPR influence in the country. Apart from this, the country’s first CL against the Bayer cancer drug ‘NEXAVAR®’ highlights the Indian IPR regime on the international window. This CL gives a ray of hope to Indian Pharma INC which is not capable of producing lifesaving drugs and now can manufacture such drugs at a very low cost. Such nature of CL boosts up the health industry of the country. Due to this, high end drugs can be manufactured and supplied to the patients at a very nominal rate which is a sign of a disease-free society. According to a recent survey, it was estimated that the number of trademark and patent filings have increased 20 times as that of previous years. Keeping in view the above achievements, our IPR system is still in the enactment stage. The continuous efforts of Indian Government give pace to the intellectual regime but more efforts are to be taken in overcoming challenges which restrict IPR to reach the international standards. IP is a term that

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2.12 The Origins of IP

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refers to work or inventions that are created as a result of someone’s creativity. The person responsible for the creation is given rights to them in the form of patents, copyrights or trademarks. The concept of IP did not happen overnight. Instead, IP as we know it today, has evolved over time.

2.12 The Origins of IP The idea of IP dates all the way back to 500 BC. It came about because the Greek state of Sybaris allowed its citizens to obtain a patent for ‘any new refinement in luxury’. Since then, refinements have been made and laws regarding copyrights and trademarks have become more complicated. However, the intent of the laws has always remained the same. The laws are created to encourage people’s creativity and make it possible for inventors to reap the benefits of their original ideas.

2.12.1  The Advent of Copyrights, Patents and Trademarks IP is protected through the obtaining of copyrights, patents and trademarks. These entities were not mentioned in the early history of IP. The first statue involving any of these ideas did not occur until medieval times in Europe, when the Statute of Monopolies was initiated in 1623. During this time, various guilds controlled all major industries. Each guild held a significant amount of power, as the government endowed them to dictate which products and raw materials could be imported and how the items could be produced and sold. The guilds were also in charge of bringing new innovations to the marketplace. So, they had control over inventions, even if they did not create them themselves. 2.12.2  Ownership Rights The Statute of Monopolies made it possible for inventors to retain the rights of their creations, and monopolies were no longer granted. The law also guaranteed that inventors would be given a 14-year period of exclusive rights to govern how their inventions were used. Then, in 1710, another piece of legislation, The Statute of Anne, came into being. This statute provided 14 years of protection for an inventor. It also allowed inventors to renew their protection for another 14 years. It is important to note that this statute focused on copyrights for authors so they could have power over the recreation and distribution of their work. It protected inventors and their innovations and creations as well. 2.12.3  IP in the Colonies Twelve of the original colonies established their own systems for protecting its citizens’ IP. The only colony to not participate was Delaware. It soon became evident that having individual systems for each state was not the best idea. This discovery leads to the creation of federal laws that had precedence over state laws. 2.12.4  Global IP In 1883, the Paris Convention was created. This international agreement provided protection to inventors so their innovations were safe, even if they were used in other countries. Then, in 1886, the Berne Convention was initiated to provide international protection of all forms of writing, including songs, drawings, operas, sculptures and paintings. In 1891, trademarks gained wider protection with the establishment of the Madrid Agreement. Subsequently, the offices established by the Paris and Berne Conventions integrated to set up the United International Bureaus for the Protection of IP, which ultimately became the present WIPO office of the United Nations.

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2.12.5  History of Copyright Law Formal copyright laws began in the United States in 1790 with the introduction of the federal copyright law. This law established a 14-year period in which inventors and other creators had eminent rights to their creations. If, at the end of that time, the holder of the copyright was still alive, those rights extended another 14 years. Over the following 200 years, additional time was added to extend the copyright period. Currently, copyrights last for the inventor’s lifetime, plus an additional 70 years. The scope of the copyright law has also expanded over time. The law currently covers photographs and musical recordings, as well as written materials. 2.12.6  History of Patents During the 18th century, it started to become obvious that industrial inventions needed to be protected. This idea gave birth to patent laws. It took close to 100 years before patents began to be taken seriously. However, it was still difficult to be awarded a patent, as the decision was left mostly to the individual interpretations of patent officials and judges. By the mid-20th century, that changed, and there was a dramatic shift in favour of the inventors.

2.13 Overview of IP Laws in India Legal framework for IPRs in India and the concerned administrative ministries has been specified under The Government of India (allocation of business) Rules, 1962, which governs distribution of work amongst different ministries/departments of The Government of India. To provide a legal framework for protection of intellectual property rights in India, the Government of India has enacted various legislation dealing with IPRs. Some of these laws have been enacted prior to WTO coming into existence while some have been enacted after 1 January, 1995. Further, some of these legislations have been amended so as to align these acts with India’s commitment under TRIPS agreement. Not all IPR laws are administered by a single ministry. IPRs work on trademarks, industrial designs, patents and geographical indications is dealt with by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry being the Ministry of Administration. For remaining IPRs, the administrative ministries are The Ministry of Human Resources Development (for copyrights); Ministry of Information Technology (for layout designs of integrated circuits); Ministry of Agriculture (for protection of plants varieties). The various enactments governing IPRs in India are listed as follows: 1. Copyright Act, 1957 (administered by the Ministry of Human Resource Development). 2. Trademarks Act, 1999 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry). 3. Design Act, 2000 (Administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry). 4. Patent Act, 1970 (Administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry). 5. Geographical Indications of Goods Act, 1999 (Administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry). 6. Protection of Plant Varieties Farmers’ Rights Act, 2001 (Administered by the Department of Agriculture and Cooperation under the Ministry of Agriculture).

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2.14  Indian IPR Administrative Machinery

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7. Semiconductor Integrated Circuits Layout Design Act, 2000 (Administered by the Ministry of Communications and Information Technology),

2.14 Indian IPR Administrative Machinery 1. Patents, designs, trademarks and geographical indication of goods: The Ministry of Commerce and Industry’s Department of Industrial Policy and Promotion is responsible for IPR pertaining to trademarks, prototypes, Trademarks and geographical indication of goods, and manages the initiative to promote and protect them. These include policy outlining and implementing it through the Office of the Controller General for Patents, Designs and Trademarks. In conjunction with the WIPO and apex industry organizations, it creates awareness about the protection of intellectual property rights ingrained in industrial property other than similar initiatives involving regional industry associations. It also offers perspectives on different concerns relevant to the WTO-based intellectual property aspects arrangement (TRIPS) in these areas. The department seeks technical cooperation programmes with the WIPO, Geneva to modernize and upgrade intellectual property management related to patents, designs, trademarks and geographical indications, and to organize human resource development and awareness-raising activities in the country. 2. Copyrights: In the topic of copyright protection, the copyright office in the Ministry of Human Resource Development under the Department of Secondary and Higher Education offers all amenities including copyright registration and its neighbouring rights. This office has introduced numerous steps to improve copyright enforcement. This involves setting up a Copyright Policy Advisory Board, holding seminars/workshops to increase consciousness among enforcement personnel and the general public regarding copyright law, setting up joint management societies and setting up independent cells in the headquarters of state police. The states and the union territories of Assam, Goa, Gujarat, Haryana, Jammu and Kashmir, Karnataka, Kerala, Madhya Pradesh, Maharashtra, Meghalaya, Orissa, Rajasthan, Sikkim, Tamil Nadu, West Bengal, Andaman and Nicobar Islands, Chandigarh, Dadra and Nagar Haveli and Daman and Diu have either set up copyright enforcement cells or special cells in the Crime Branch to look after copyright offence cases. 3. Plant varieties and farmer rights: A separate Authority is established to offer establishment of an effective system for the protection of plant varieties, the rights of farmers and plant breeders and to promote the development of new plant varieties. India has signed the Intellectual Property Rights Trade Related Aspects Agreement which will make provision to give effect to the agreement. The Protection of Plant Varieties and Farmers’ Rights Act, 2001 was implemented in India to give effect to the above objectives. The Protection of Plant Varieties and Farmers’ Rights Authority was established for the sake of this act. 4. Integrated circuits layout designs: It protects semiconductor integrated circuits (IC) layout designs. India now has Semiconductor Integrated Circuits Layout Design Act, 2000 in place to protect IC layout design. The layout design involves a layout of transistors and other circuitry elements which involves lead wires that link these elements which are represented in a semiconductor IC in some format. Semiconductor IC is a product of transistors and other circuitry components that are inseparably built on a semiconductor material or insulating material or within the semiconductor material and built to fulfil the role of electronic circuitry. In the Information Technology Department under the Ministry of Information Technology, the Semiconductor Integrated Circuits Layout Design Registry (SICLDR) is in charge for receiving IPR applications and for granting registrations for cases that meet the criteria.

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5. Biodiversity: The National Biodiversity Authority (NBA) under the Ministry of Environment and Forests is the concerned Authority for the purpose of Biodiversity. India enacted the Biodiversity Act, 2002 to ensure that its biodiversity is maintained, sustained, and developed. The Act has unique provisions relating to the protection of intellectual property rights connected with biodiversity degradation. Before exploring biodiversity in India, industries must have the prior, informed approval of the National Biodiversity Authority. In the case of R&D based on biodiversity exploitation and related local knowledge, there is provision for sharing advantages of such work with the local community. No direct transfer of funds is required to the society; rather the government of the union would attain the rewards to the society through state governments. 6. Protection of undisclosed information: Undisclosed information, commonly known as trade secret/confidential information, includes the formula, pattern, compilation, program, device, method, technique or process. The protection of confidential knowledge is less understood and less spoken about by IPR participants, but it is probably the most critical method of protection for industries, R&D organizations and other entities that work with IPRs. Laws pertaining to all forms of IPR in India are at various stages of implementation, but there is no distinct and unique law to protect non-disclosed information/trade secret or confidential information. However, the Indian Contract Act, 1872 would encompass many aspects of trade secrets. 7. Other centres/cells: IPR cells have been started by multiple educational institutions, PSU and government departments. Prominent among the government departments/agencies are Department of Biotechnology, Ministry of Telecommunications and Information Technology, Indian Council of Medical Research, Indian Council of Agricultural Research, ISRO, Department of Atomic Energy, Defence Research and Development Organization and Indian Council of Forest Research. Under the Ministry of Science and Technology, an autonomous organization, the Technology Information, Forecasting and Assessment Council (TIFAC) aims at keeping a technological watch over global trends and formulating preferred technology options for India. 8. IITs at Mumbai, Kharagpur, Delhi and Roorkee have also organized their cells and developed their IPR policies. 9. Intellectual Property Appellate Board (IPAB): On 15 September 2003, the Central Government appealed to the Ministry of Commerce and Industry to hear appeals against the Registrar’s decisions under the Trade Marks Act, 1999 and the Geographical Indications of Goods Act, 1999 (Registration and Protection). The Board of Appeals for Intellectual Property has its headquarters at Chennai and will hold sessions at Chennai, Mumbai, Delhi, Kolkata and Ahmedabad. With respect to the Notifications No.12/15/2006-IPR-III dated 2/4/2007 released by the Ministry of Commerce and Industry, the terms of the Patent Amendment Act, 2002 and the Patents Amendment Act, 2005, pertaining to the IPAB have come into effect. Thus, all appeals currently awaiting before the different high courts are relocated to the IPAB. Similarly, fresh corrections will have to be filed before the Appellate Board under the Patents Act, 1970.

2.15 Major International Treaties Signed by India Some of the important international treaties related to intellectual property rights, of which India is a member, are as follows: 1. Berne Convention for the Protection of Literary and Artistic Works: Adopted on 9 September, 1886 at Berne and entered into force on 4 December, 1887. This copyright convention is based on three basic core values-national treatment, automatic protection and protection independence;

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2.16 Enforcement of IPR at National Level

2.

3.

4.

5.

6. 7.

8.

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it also involves a number of provisions setting out the minimum protection to be granted. It came into force in India on 1 April, 1928. Convention Establishing the WIPO: Adopted on 14 July, 1967 at Stockholm and entered into force on 26 April, 1970. Under this convention, WIPO was established with two main goalspromoting the protection of intellectual property worldwide and ensuring administrative cooperation between the intellectual property unions established by the treaties administered by WIPO. India became a member on 1 May, 1975. Agreement establishing the WTO: Adopted on 15 April, 1994 at Marrakesh and entered into force on 1 January, 1995. WTO was established to provide the common institutional framework for the conduct of trade relations among its members in matters related to the agreements and associated legal instruments. India became a member to this agreement on 1 January, 1995. WTO agreement on TRIPS Agreement: Adopted on 15 April, 1994 at Marrakesh and entered into force on 1 January, 1995. The TRIPS agreement covers various types of intellectual property and provides guidelines for minimum standards for protection, procedures and remedies for enforcement of IPR rights and for issues related to dispute settlement. India became a member on 1 January, 1995. Paris Convention for the Protection of Industrial Property: Adopted on 20 March, 1883 at Paris and entered into force on 7 July, 1884. It covers basic rules for the protection of industrial property (patents, utility models, industrial designs, trademarks, service marks, trade names, source or appellation of origin indications, and the suppression of unfair competition) and has important provisions for national treatment, priority right and common rules. This treaty came into force in India from 7 December, 1998. PCT: Adopted on 19 June, 1970 at Washington D.C. and entered into force on 24 January, 1978. It promotes patent protection for an invention in a significant number of countries at the same time; it came into force in India on 7 December, 1998. Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure: Adopted at Budapest on 28 April, 1977 and entered into force on 19 August, 1980. It sets standards for the deposition of micro-organisms for the intent of patent procedures with any ‘international depositary authority’. This treaty came into force in India from 17 December, 2001. Protocol related to the Madrid Agreement Concerning the International Registration of Marks: Adopted on 27 June, 1989 at Madrid and entered into force on 1 December, 1995. The Madrid Agreement facilitates the registration of trademarks outside India; it came into force in India from 8 July, 2013.

2.16 Enforcement of IPR at National Level IP rights are essentially private rights. The primary obligation of protecting IP rights is on the IPR owners who can seek legal remedies for enforcement of their rights. It is equally essential, in addition to having an appropriate framework for the protection of IP rights, to align public rights in a manner conducive to social and economic wellbeing and to avoid exploitation or violation of IP rights. There is a necessity to build respect for IPR among the common society and to raise awareness among IP inventors and creators regarding actions to safeguard and enforce their rights. At the same time, there is also a need to build the capacity of the enforcement agencies at various levels, including strengthening of IPR cells in state police forces.

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Measures to check counterfeiting and piracy also need to be identified and undertaken. In this regard, the definitions of ‘counterfeit trademark goods’ and ‘pirated copyright goods’ as referred to in the footnote of Article 51 of the TRIPS Agreement shall serve as the guiding principles. Regular IPR workshops/colloquia at judicial academies and other fora for judges would facilitate effective adjudication of IPR disputes. Multi-disciplinary IP courses/modules for other stakeholders are also needed. It would be desirable to adjudicate on IPR disputes through specialized commercial courts. Alternative dispute resolution mechanisms may also be explored. The steps to attain objectives are listed as follows: 1. Create awareness of the IP value and also respect for the IP cultures by (a) educating the youth and students and the general public on the ill effects of counterfeiting and piracy; (b) to create respect for IP rights for the authors, devise collaborative strategies and tools by engaging with all the levels of industry; (c) measures for protection and enforcement of the rights to creators of IP and sensitizing the inventors on this front. 2. Any attempt to treat generic drugs as spurious or counterfeit must be deterred by strong measures. 3. Misbranded, adulterated and spurious drugs sales and manufacture must be deterred by stringent measures. 4. To combat offline and online piracy, measures like public awareness and also legal and enforcement mechanism including technology-based measures must be employed. 5. Safeguarding the IP rights by support of IPR in ICT focus areas that are available through easy-touse portals for small technology firms. 6. DeitY’s Support for International Patent Protection in Electronics and IT (SIP-EIT) would enhance assistance to smaller firms in protecting their international IPRs misappropriation of TK. 7. GR and TCE in other countries must be pursued vigorously. 8. For protection of IP rights better, strengthen the enforcement mechanisms by (a) providing direction and guidance on strengthening enforcement measures by enhanced coordination between the various agencies; at an international and national levels coordinate and share intelligence and best practices; various levels IP violations extensive study; to examine the implications of jurisdictional difficulties within the enforcement authorities; to curb digital piracy by introducing appropriate technology-based solutions, (b) to establish of IP cells curbing IP offences, work closely with state governments, (c) building capabilities to check proliferation of digital crimes, improving infrastructure facilities and technological capabilities of the enforcement agencies as well as increasing manpower, (d) officials in the enforcement agencies should be trained regularly including refresher courses in their academies, (e) technology-based solutions in the enforcement of IP rights must be encouraged, (f ) to collaborate with stakeholders concerned and assess the extent of counterfeiting and piracy by initiating fact-finding studies to find the reasons behind it as well as measures to combat it and (g) counterfeit and pirated works and products of Indian origin to be taken up with countries abroad.

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Multiple Choice Questions

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9. Regulation of anti-competitive conduct must be addressed by appropriate measures by the Competitive Commission of India for licensing practices or conditions that could have an adverse effect on competition. 10. IP disputes must be effectively adjudicated via various measures that include the following: (a) Set up appropriate levels to adjudicate IP disputes through commercial courts. (b) Conduct regular IP workshops/symposiums at the judicial academies, and create case laws and IP modules for the benefit of judges who deal in IP. (c) Develop alternative dispute resolution (ADR) capabilities and skills in the field of IP and promote ADRs in resolution of IP cases through conciliation centres and strengthening mediation.



Multiple Choice Questions

1. What is the full form of WIPO? (a) World Investment Policy Organization. (b) World Intellectual Property Organization. (c) Wildlife Investigation and Policing organization. (d) World Institute for Prevention of Organized Crime. 2. Which are the objectives of WIPO? (a) Promote administrative cooperation within the unions established by the treaties WIPO administers. (b) Promotion of protection of intellectual property worldwide. (c) Both (a) and (b). (d) None of these. 3. Trademark law protects (a) words, symbols or devices that differentiate goods or services from one another. (b) only brand names. (c) names of specific people and places. (d) inventions that feature some sort of utility function. 4. When did the Paris convention come into effect? (a) 6 November, 1925. (b) 14 July, 1967. (c) 7 July, 1884. (d) 7 October, 1994.

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5. Which of the following is an international treaty on trademark? (a) PCT. (b) Berne Convention. (c) WIPO. (d) Nice Agreement. 6. When did the first patent law come in India? (a) 1970 (b) 1856 (c) 1947 (d) 1990 7. When did the Paris Convention come into force in India? (a) 1 January, 1999 (b) 1 May, 1975 (c) 1 December, 1998 (d) 17 December, 2001 8. What is the Madrid Agreement for? (a) Acquisition of trademarks. (b) Acquiring copyrights. (c) Filing patent. (d) None of these. 9. What is the full form of GATT? (a) Geographical Administration of Tariffs and Trade. (b) General Administration of Trade and Tariffs

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(c) Geographical Agreement on Trade and Tariffs. (d) General Agreement on Tariffs and Trade. 10. The board of appeals for intellectual property has its headquarters in which of the following cities?



Frequently Asked Questions in Interviews

1. What are the key concerns of counterfeiting/ piracy? Answer Counterfeiting and piracy are longstanding problems which are growing in scope and magnitude. They are of concern to governments because of (1) the negative impact that they can have on innovation, (2) the threat they pose to the welfare of consumers and (3) the substantial resources that they channel to criminal networks, organized crime and other groups that disrupt and corrupt society. (a) They are of concern to business because of the impact that they have on (1) sales and licensing, (2) brand value and firm reputation, and (3) the ability of firms to benefit from the breakthroughs they make in developing new products. (b) They are of concern to consumers because of the significant health and safety risks that substandard counterfeit and pirated products could pose to those who consume the items. 2. List the provisions of the Paris Convention. Answer (a) Guarantee of a basic right, which is also called the right to national treatment in every member country, is the first category of rules in the substantive law. (b) The right of priority as another basic right was established as the second category.

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(a) Kolkata (b) Mumbai (c) Chennai (d) Ahmedabad

(c) T  he rules and regulations concerning enacting legislation to be permitted by the member countries, as per rules laid down or defining of common rules in the matters of substantive law containing rules that establish rights and obligations of natural persons and legal entities, was the third category; (d) To deal with the administrative framework that was established to implement the Convention and also include the final clauses of the convention was the final and fourth category. 3. What are the principles of Berne Convention? Answer (a) Each of the contracting states must offer equal protection to the author for his works as the contracting state would offer to authors of its own nationality. (b) The protection must be by default and without any conditions or compliances that would be required to be fulfilled by the author. (c) Duration of protection by contracting state may be of a higher term that is offered by the originating state at the sole discretion of the contracting state. However, the contracting state may decide to withdraw the protection upon the expiration of protection in originating state. 4. What actions are taken by the PCT to meet its objectives?

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Frequently Asked Questions in Interviews

Answer The PCT ensures that (a) it establishes a system that only one application in one language having its effect in each of the countries party to the PCT where the applicant designates in the application, (b) it provides for the inspection of the application for international protection by only a single patent office, designated as the receiving office, (c) it conducts an international search of each and every application to find out any prior relevant art that may be required to be considered while taking a decision whether the intervention is patentable based on documents published earlier publication of centralized international applications with the respective international reports and their communication with the designated offices, (d) it provides for a report containing the opinion if the claimed intervention meets the stipulated international criteria for patentability based on the international preliminary inspection, to the applicant and offices that decide to issue a patent or not. Finally, the PCT (a) puts the several countries of the world within its fold. (b) reduces severally the costs that were associated with international patent protection process. (c) establishes a strong basis for decision on patents. (d) allows the world’s major corporations and universities and research institutes easy access to the facilities of patent protection. 5. Describe the history of The World Intellectual Property Organization (WIPO) in Brief.

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•   55

Answer The World Intellectual Property Organization (WIPO), which is a specialized agency of the United Nations, is an international agency that works for the protection of legal rights in artistic and literary works, inventions, trademarks, and other original creations. Such rights are known as Intellectual Property Rights (IPR). The organization works for the promotion of international agreements on copyright, patents, trademarks, and other original creations. It also provides technological information and other assistance to developing countries. WIPO has a membership of more than 110 countries. It is situated in Geneva, Switzerland. WIPO administers two treaties that were established in the 1880’s. One protects copyright. The other protects patents, trademarks, and other original creations. Administrative agencies of the two treaties joined in 1893 and were replaced by that of WIPO when it was founded in 1967. The agency became part of the UN in 1974. WIPO plays a particularly important role in educating intellectual property officials worldwide about the importance of establishing and implementing strong intellectual property laws. The creative community looks to WIPO treaties to establish a basic standard of intellectual property protection worldwide. This organization, and the new WIPO Copyright Treaty in particular, represent a fundamental step in promoting growth and protecting our nation’s precious technology assets in the new digital era. WIPO organized a conference in December 1996, inviting around 160member countries, the agenda being modification of the existing norms and creation of new norms on Intellectual property Rights, so as to cope with the creation, adoption, transmission and distribution of proprietary works in the digital medium.

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Three draft treaties, prepared by WIPO were discussed in detail namely, (a) copyright of electronic records, (b) protection of performers and producers of phonograms and (c) new form of Sui-generis (of one’s own origin) protection of databases. 6. List the international treaties and conventions on intellectual property signed by India. Answer (a) WIPO. (b) Berne Conventions on Copyright (BCC). (c) Nairobi Treaty on the Protection of Olympic Symbol (Nairobi Treaty). (d) Convention for the Protection of Phonograms and Against Unauthorized Duplication of Their Phonograms (Geneva, 1971). (e) Treaty on Intellectual Property in respect of Integrated Circuits (Washington, 1989). 7. Write about the Paris Convention for the Protection of Industrial Property. Answer The Paris Convention for the Protection of Industrial Property (1883) contains various important provisions for trademarks. The most important one is a priority right. This implies that in a country that is party to the Paris Convention, one may apply for a trademark and then file the corresponding applications in another member country and seek a priority date. The later registrations will then receive the registration date of the first registration. This can be a great benefit if in the meantime someone else had filed for the same trademark in those other countries. Furthermore, trademarks that are formally registered in the country of origin shall be accepted for filing and protected as is the case in other union countries. The only reasons under which the trademark offices of

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those other countries may refuse the registration is when the trademark infringes rights acquired by third parties in those countries, where the trademark is devoid of any distinctive character, or when the trademark is contrary to morality or public order or may deceive the public. Special protection is given to so-called well-known marks. It is prohibited to register or use a trademark that constitutes a duplication, impersonation or translation of a trademark that is considered well-known in a country. If the holder of the well-known mark finds that such another mark has been registered, he can request a cancellation of that registration within 5 years. If the registration of the other mark was done in bad faith, there is no restriction on the time in which the holder of the famous mark can request cancellation. 8. Explain in brief The Patent Cooperation Treaty (PCT). Answer The Treaty on Patent Cooperation (PCT) is an international treaty on patent law, deduced in 1970. It offers a cohesive procedure for filing patent applications in each of its contracting states to protect inventions. A patent application filed under the PCT is referred to as an international application, or PCT. Possibility of seeking protection for any patent of an invention, simultaneously in multiple countries by filing an international patent application is provided under the Patent Cooperation Treaty. Any national or resident of any PCT contracting state can file such an application. The national or resident of such contracting state application can be filed at the patent office of the Contracting state or at the WIPO IB at Geneva.   Simplification of processes to increase effectiveness as well as economize the process of administering it in the interest of the users of the patent systems as well as the Offices responsible against existing means of applying

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Answer Key

in many countries for patent protection for interventions is the main objective of the PCT. The treaty sets out in detail the formal requirements which must be met by international applications. The application for a PCT shall have the effect of dynamically designating all contracting states obligated by the PCT at the international filing date. In each designated state the effect of the international application is the equivalent of a national patent application being filed with that state’s national patent office. 9. List the various enactments governing IPRs in India. Answer (a) Copyright Act, 1957 (administered by the Ministry of Human Resource Development). (b) Trademarks Act, 1999 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry). (c) Design Act, 2000 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry). (d) Patent Act, 1970 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry).



(e) G  eographical Indications of Goods Act, 1999 (administered by the Department of Industrial Policy and Promotion under the Ministry of Commerce and Industry). (f ) Protection of Plant Varieties Farmers’ Rights Act, 2001 (administered by the Department of Agriculture and Cooperation under the Ministry of Agriculture). (g) Semiconductor Integrated Circuits Layout Design Act ,2000 (administered by the Ministry of Communications and Information Technology). 10. List the Indian IPR Administrative Machineries. Answer The various machineries present in India are listed as follows: (a) Patents, designs, trademarks and geographical indication of goods. (b) Copyrights. (c) Plant varieties and farmer rights. (d) Integrated circuits layout designs. (e) Biodiversity. (f ) Protection of undisclosed information. (g) Intellectual property appellate board.

Answer Key

Multiple Choice Questions 1. (b) 2. (c)

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3. (a) 4. (c)

5. (d) 6. (b)

7. (c) 8. (a)

9. (d) 10. (c)

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3

Emerging Issues in Intellectual Property Rights

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Understand the emerging issues related to intellectual property rights (IPRs). • Discuss the challenges for intellectual property (IP) in digital economy and e-commerce. • Discuss the challenges for IP in human genome.

3.1

• Discuss the challenges for IP in biodiversity and traditional knowledge. • Explain the impact of the Internet on IPR. • Describe the abuse of IP.

Introduction

As technological advances multiply around the globe, even intellectual property is facing multiple challenges related to inventions or creations with respect to human genome, biodiversity and traditional knowledge. Also, it has become important to understand the impact of technological developments on intellectual property (IP) protection in this Internet era. Furthermore, unauthorized use of IP is described to create awareness about defence for a suit of IP infringement.

3.2

Challenges for IP in Digital Economy

IP can have a serious impact on the digital economy. In this section, we discuss on some of the IP challenges of digital economy.

3.2.1  Protecting and Exploiting the Value of Data Massive amounts of data collected within organizations are retaining exponential increase. These data pose a threat to the IP regarding possible breaches of cybersecurity. Artificial intelligence (AI) algorithms are gaining importance as they accumulate and use training data to enhance precision. These proprietary and extensively qualified AI algorithms can be of great benefit in a digital economy, potentially contributing even a large portion of a firm’s worth. Hence, considering licensing the data to increase the revenue generated from the data might be more beneficial for businesses. Digital rights management is also important. 3.2.2  Moving to Portfolio-Based IP It is necessary to understand the strength of IP portfolios. In the example of the automotive industry, Internet of Things (IoT), AI, battery management and drone control that include electronics-based technologies that will be relevant to future vehicle production. Those who understand how to build

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broad, strategically focused IP portfolios covering multiple applicable, evolving, and converging technologies would be effective companies. If new competitors such as digital giants can achieve this effectively and early, they will be able to gain a competitive edge over large incumbents, who will find it difficult, if not impossible, to catch up and close the gap.

3.2.3  ‘In-Licensing’ and ‘Out-Licensing’: Needs and Opportunities Given the complicated and fragmented patent environment in the digital economy (with IP ownership distributed over numerous firms), it will be difficult for firms to own all the IPs required for smart device manufacture. As a result, companies would have to decide how best to obtain access rights for IP stakeholders. They would also need to sign licensing contracts before product launch to agree and prevent infringements. On the other hand, proprietary technology held by manufacturers may be of interest to other businesses who would pay for accessing these technologies. The development of licensing services, however, needs unique and scarce skills and capabilities in which businesses would need to invest if they wish to pursue this opportunity. 3.2.4  Understanding the True Cost of ‘Free’ Software Manufacturing companies develop in-house software components that are embedded into digital products, but can also use existing ‘free’ and open source software from leading technology platforms such as GitHub. Instead, we also use ‘free’ under other circumstances, such as allowing the user to build all software on an open source component that is accessible to society. For safety purposes, manufacturing companies will have to recognize and master the nature, complexities, and specifications of the various licensing types. At significant fees, some large consulting firms have already found a successful business model which provides compliance services to firms using open source software. 3.2.5  Managing Trade Secrets We are currently experiencing a widening of regulations around the company’s historically referred to as trade secret; particularly, valuable proprietary data, which may include well-trained AI algorithms too. This will allow companies to identify and control, protect and execute their most valuable know-how/ data (trade secrets) separately from their common data (such as customer records). 3.2.6  Strategies for IP in the Digital Economy In manufacturing companies to recognize for managing IP, there are three key pillars to be well equipped and ready to succeed in the digital economy: 1. The first one is about humans. Companies would need the IP understanding and IP management capabilities required to be successful in the digital economy, or access them. 2. The second relates to business goals and systems. Every effective and forward-thinking IP plan needs to suit organizational processes and business goals. This may require consolidation of existing IP management, which is often spread across multiple departments: for instance, while technology can be managed in patent departments, marketing departments can handle brands, legal team marks, procurement department contracts, and IT software and data. 3. The third is strategy based. Organizations need to establish their own systematic approach to Digital IP. This is likely to be substantially different from a traditional IP strategy: it will consider the various forms of IP, including software and data, and the company’s in- and out-licensing approach, and will include a portfolio approach that complements multiple IP assets.

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3.3  Challenges for IP in E-Commerce

1. Data: protect and monetize Exploiting value in big data and algorithms Cyber security is vital

2. Moving to portfolio-based IP Need strategic approach to IP Require skills and knowledge

3. Licensing In-licensing: acquiring usage rights Out-licensing: requires specifies capabilities

4. Real cost of ‘free’ software Ensure compliance, understanding licensing

5. Trade secrets Separate and protect most valuable know-how

Align IP with goals and structure

STRATEGY

Acquire IP skills and know-how

BUSINESS

PEOPLE

MANAGING IP Integrated digital IP portfolio

Figure 3.1  IP in digital economy: Five challenges and how to address them.

3.3

Challenges for IP in E-Commerce

There are many reasons why IP is important to e-commerce and vice versa. The e-commerce includes the selling of IP-based goods and services and its licensing. Music, images, videos, software, designs, training programs, systems, and so on. can all be exchanged via e-commerce, in which case IP is the major value portion of the transaction. Some of the elements and their usage in e-commerce and their challenges are discussed in the following: 1. Data: If you are using another company’s approved database, e-commerce system, search engine or other professional Internet resources, review the terms of the licensing agreement to see who owns the system. Make sure you have a written agreement and have it checked by an attorney before you sign it and before any design, custom work or site installation starts.

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2. Media: You will need written permission (also referred to as a warrant, approval or agreement) to use any photos, videos, songs, voices, artwork, or software, etc. that belong to someone else. Just because you get material on the Internet does not mean it is in the public domain. You may have to pay to use those materials for permission. In several countries, to get permission, you will need to interact with a collecting society or artists’ association. 3. Domain: In addition to trademarks, it is advisable to avoid domain names that contain certain other disputed words such as geographical terms (e.g., Champagne, Beaujolais), names of famous persons, common names of medicines, names of foreign organizations, and trade names (e.g., name of company of another person), that can conflict with the rights of others or international security systems. 4. Employee invention: If you are involved in e-commerce as your primary business, or as an important part of your business, you’ll need to decide whether patent protection for your employee inventions is a useful tool for your business, and if so, where to file the application. 5. Content distribution: Connectivity creates the problem because of the ease with which digital files can be downloaded; unauthorized copying of content has been a major problem causing the owners of these rights to lose millions of dollars in revenue. Therefore, technical means are required to secure content on the Internet by watermarking, encryption or by developing mechanisms for identification and monitoring. Company is proposing electronic copyright management systems. 6. Policy enforcement: It is also critical that E-Commerce companies ensure that employees do not obtain access to or maintain any unauthorized copies of software or other material in their own hands or on their systems. Your organization will have a program of prevention, awareness and surveillance to ensure workers don’t use unauthorized copies of software knowingly or unknowingly. 7. Global transactions: One of e-commerce’s most interesting aspects is that it occurs globally. In many countries IP can be used and licensed simultaneously. IP is influenced in a variety of ways by the global features of e-commerce firms. It complicates figuring the infringer and enforcing IP rights that are violated on the Internet. In the worst case it is possible to bring lawsuits against the e-commerce business or, conversely, your business. 8. Contracts: You will need to be careful with contracts in developing and maintaining your e-commerce company’s IP. Contracts go hand in hand along with IP. No contract is irrelevant for your company signs and everything needs to be reviewed to ensure you maximize IP assets and not damage them. That is because IP rights can be sold by contracts or licensed, or even given away. Bad contracts can lead to disputes and over-costing. 9. Impact of e-commerce on IP: The IP system is crucial to the orderly development of the digital exchange of information and knowledge. (a) IP as a key value factor for the goods and services exchanged online. (b) IP in the growth of digital technology. (c) IP and web marketing/branding. (d) Domain names, online advertising and websites. (e) Its purpose in e-commerce is patent protection and patent licensing.

3.4

Challenges for IP in Human Genome

Contemporary genome research is showing promise to be a valuable resource for health and medicine in the future. Genomic research has the ability to make the diagnosis more precise, more readily

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•   63

defined risks, and more efficient and cost-effective therapies. In this regard, the scope for developing countries is significant. However, although some excellent examples of research developments and the use of genomics for developing countries are known today, insufficient focus has not been placed on genetic research to address health problems in developing countries. There are also two major strategic issues, facing health practitioners and policy-makers today, as follows: 1. Are we moving towards a broad genomic divide which will replicate last century’s health inequities and health creation problems? 2. What specific interventions are needed to ensure that genomics’ potential is tapped to promote health in developing countries, rather than repeating the errors in the history of health development? The central issue for the future of both developed and developing countries in terms of public health and justice is creativity. With regard to genomics, several concerns over innovation and the future of public health have been expressed repeatedly. The two main issues that fuel the current debate on genomics, innovation and public health are as follows: 1. A general concern over the appropriateness of IP schemes for developing countries contrasted with a motive towards increased global patent policy standardisation. 2. More applicable to genomics, questions about the adequacy and appropriateness of existing national patent regimes to tackle deoxyribonucleic acid (DNA) patenting and human genome marketing problems in both developing and developed countries. Although patent protection is a significant aspect of encouraging genomic science health innovation, the types of genetic patents currently being granted and the related social and public health interests need greater international and public health scrutiny, contextualized in the wider issues of low to middle-income IP regimes. The trend towards standardization of regimes of IP must be reunited with public health and for all. At the same time, a concern for promoting research, development and innovation needs to balance the solutions.

3.5

Challenges for IP in Biodiversity and Traditional Knowledge

Throughout the world, there exists a vast reservoir of biological resources and traditional knowledge. Hence, it is of utmost important that IP rules should support and facilitate the conservation and sustainable use of these unique resources. However, there are specific challenges that need to be addressed to promote effective protection of IP rights of the biological resources and traditional knowledge.

3.5.1  Challenges for IP in Biodiversity ‘Biological diversity’ means the variation of living organisms from all sources and the ecological complexes of which they form part, which includes diversity within species or between species and ecosystems. IP is concerned with the creation of the human mind. IP is a cluster of legally recognized rights associated with innovation and creativity-the minds works as opposed to physical products, land and other tangible means. IP is often recognized as personal property, although it is intangible, to be sold and traded as other forms of property. 1. Plant breeders rights (PBRS): Plant breeders’ rights (PBRS) are privileges given to breeders of plants to exclude others from the marketing material of the plant varieties they produce. To be

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eligible for protection through PBRs, a plant variety needs to be clearly distinguished from other protected, uniform and stable (DUS) varieties. 2. Linkage among traditional knowledge (TK), IPR and biodiversity: Whether it is plants, animals or microorganisms, it will be useful to know the uses of the biological resources in question. Indigenous people are the source of virtually all our knowledge about plant and animal uses, and even about the micro-organisms in their localities. Many vested interest groups have unethically accessed this TK about the use of biological resources and have been protected through various forms of IPR leading to loss of agrobiodiversity, genetic erosion, loss of traditional varieties, etc.

Patentable Subjects in Biodiversity 1. Method for curative, prophylactic, diagnostic, medicinal or other plant care (to free them from diseases and plagues). 2. Process/method for the preparation of genetically modified organisms (GMOs) Vaccines were considered patentable as living beings of artificial origin such as micro-organisms. 3. Biological material such as recombinant DNA, plasmids and their manufacturing processes are patentable on condition that they are generated by substantial human intervention. 4. Gene sequences, DNA sequences are not patentable for lack of inventive step and industrial application without having discussed their functions. 5. Processes involving micro-organisms or creating chemical compounds using certain microorganisms are patentable.

Impact of IPR on Biodiversity The criteria for granting plant variety protection (PVP) laws allow breeders to protect varieties with very similar characteristics, which means the system tends to be driven by commercial considerations of product differentiation and planned obsolescence rather than genuine improvements in agronomic characteristics. Similarly, UPOV-type uniformity (and stability) requirements exclude local varieties developed by farmers who are more genetically heterogeneous, and less stable. However, these features are those that make them more adaptable and suited to the agro–ecological conditions on which most poor farmers live. 3.5.2  Challenges Faced by IP in TK People need protection of their properties anywhere in the world; tangible property can be protected but in the case of intangible property, successful measures such as patents, copyrights, labels, geographical indicators, etc. are needed. Local and indigenous people have a profound knowledge of their diverse habitats, plant and animal resources, and the methods of using them for centuries centred on living close to the nature. It applies to everything from agriculture and food storage to construction, medicines, and biological resource and environment conservation. These societies’ traditional laws and cultural taboos have long served to protect this knowledge and control its use. This information is a source of wealth when converted into a formal specification and can result in goods of high commercial value. However, increasing commercial exploitation of these resources beyond the traditional context means they are increasingly vulnerable to third-party misappropriation and misuse. That is why TK holders and numerous international policymakers are calling for new policies and legislation in this area.

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Some countries already have laws which protect traditional knowledge, including Costa Rica, Kenya, Peru and Zambia. Others specifically focused on protecting the genetic resources and at regional level, others have joined ranks to defend traditional knowledge. Although these developments are an important step in the right direction, such fragmented protection in today’s globalized world does not offer the custodians of TK an adequate level of protection. The development of new technologies and the use of TK pose a serious threat to those communities’ survival as follows: 1. Those who are unable to grow their own capital due to inadequacy and poverty. 2. Today the modern industries exploit indigenous knowledge with these communities without permission or profit sharing. 3. ‘Bio-piracy’ is more like exploiting a community’s resources which lack development. In comparison with relevant prior art, TK based products were granted patents even ignoring novelty and inventive steps. This use of TK as a basis for producing commercial value goods that are then licensed without sharing any profit with the TK’s source is called ‘bio-piracy’. Bio-piracy can be considered a double theft since (1) it allows creativity and innovation to be theft and (2) it establishes exclusive rights to stolen knowledge and steals economic options of indigenous communities’ day-to-day survival based on their common knowledge. Some of the cases relating to bio-piracy are as follows: (1) Case of turmeric (Curcuma longa), (2) case of neem (Azadirachta indica) and (3) case of ayahuasca (Banisteriopsis caapi). The term ‘prior art’ refers to any published work available in the public domain prior to the date of filing of a patent claim. TK which is orally transferred and preserved by generations may not be available in a systematic and organized document, normally before the grant of patents an extensive search for prior art is carried out by the patent offices concerned. Besides this, even though it is registered, it may be documented in the local language which may be difficult for the international patent offices to reach. Present IP systems only find recorded information to be a prior art. This paves the way for incorrect patents to be issued for consumer goods based on indigenous group awareness. TK is of a dynamic nature and changed according to the changes taking place in society. The process related to TK formation cannot be documented in a way that records scientific and technological information. This non-systematic way of recording was a big concern in giving TK recognition. Non-original innovations which are already a part of TK were granted patents. Current IP systems are inadequate for protecting TK, as indigenous knowledge is not an individual’s exclusive right; it is often shared among social groups. The current patent system is based on the principles of novelty, non-availability of evidences and industrial application and cannot therefore be invoked in order to provide TK with positive protection. TK is something that has developed over centuries and it lacks the novelty concept. TK is developed through trial and error. Also, TK as such may not have any commercial application, it indeed requires some modifications. Thus, we can see that the existing patent system is unable to provide TK with protection. A unique system which provides sustainable use and sharing of benefits is important for TK’s protection.

International Protection The impact of national and regional laws which protect TK is limited. For one thing, they have only legal effect in the country or countries they were enacted to. One way to extend the protection that they confer is by establishing bilateral or plurilateral agreements between countries sharing a common

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interest in protecting TK and having similar national legislation. The national and regional legislation shares several common goals: 1. Ensure the ownership of TK remains with local or indigenous communities. 2. Protect and preserve third parties from misappropriation and misuse. 3. Promoting the equal sharing of benefits.

International Negotiation While WIPO administers several international IP-related treaties, none of them tackles the issue of TK directly (although some do include safeguards for the analogous areas of traditional cultural expressions and their performances). National Law Existence However, national treatment is unlikely to help protect traditional knowledge, because it only applies where such national legislation exists. This means that the TK of an indigenous community in Peru will be preserved in Kenya and vice versa because the laws governing the protection of TK in these countries. But this does not apply in countries where there is no legislation in place to protect such knowledge. Sacred TK It is difficult to establish an international IP regime designed to protect traditional knowledge. TK, including sacred and hidden knowledge, does not fit neatly into the existing IP structure in many instances. For example, traditional values of knowledge established practice over originality and support the transmission of knowledge and indefinite protection across generations.

3.6

Impact of Internet on IPR

In the recent times, the protection of IPR has gotten a bit difficult in this rapidly developing Internet era. Since the Internet is not designed taking into consideration its effect on IPR, the Internet has shown transformative impacts on all forms of IP.

3.6.1  Beneficial Impacts of Internet on IP The Internet has driven a great many changes in the community of IP. As a tool for accessing data and resources, the Internet has broadened every user’s reach from localized, regional resources to true global access to information. The Internet was accordingly, the genesis of many new support industries. Because of its low access cost, inventors, businesses and governments were otherwise unable to compete with large-budget companies to leap-frog conventional growth curves, thereby creating an incentive to implement leadingedge information gathering, IP analysis and Intellectual Asset Management (IAM) methods. A short list of the benefits that the Internet has brought to the IP community substantially, or individually, is impressive which is provided as follows: 1. Raising access to resources for IP, globally. 2. Challenged the world to raise ‘patent quality’ standards. Find retroactively invalidating prior art via the Internet calls into focus the quality or validity of patents previously issued. 3. Raising awareness of the growing importance of all types of IP in business, politics and society.

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4. 5. 6. 7. 8.

Data access time shortened: days or weeks shortened to minutes or hours. Geometric increase in the number of data and collections accessible in relation to the IP. Provided access to more web-based software and IP management tools; Reducing reliance on third party data providers (cost reduction, increased speed of access). Provided a path for developing countries to catch up with world developments concerning access, management and access to IP data. 9. The capacity of government agencies to deliver resources to a greater number of their citizens has increased. 10. The spawning of new industries and technology segments (online Internet management tools, device tracking, technology transfers, new patent classifications and expanded legal sector activity, extended marketing time for new products and technologies).

3.6.2  Detrimental Impacts of Internet on IP Despite the positive impact that the Internet has had on the community of IP, it has created an alarming list of shortcomings at the same time. Although we can accept the benefits with complacency, we cannot allow unchecked continuation of the detrimental impacts. The first step to problem solving is to identify problems. The following list of Internet-related vulnerabilities or detrimental impacts does not follow any priority schedule – the targets may vary depending on region, goals, operations, budget and resources available: 1. Increased demands for Internet skills/Internet literacy, or loss of competitive place (inventors, IP professionals, corporate managers and government agencies influence this ‘self-improvement’ dictum to varying degrees). 2. Increased complexity of distilling relevant content from the billions of web pages available. The amount of data available outpaced our ability to effectively collect relevant citations. 3. Increased costs associated with collecting highly relevant information data. The economic efficiency of collecting relevant data is decreasing as data volumes are growing more rapidly than search technology. 4. Promotes a higher standard of practice regarding practitioners’ prior art searches. Although it appears to be a benefit, the impact is an increase in the cost of client legal services due to the increased time practitioners need to investigate the expanding universe of prior art data. 5. The poor patent quality exacerbated; provides means of discovering invalidating art. This has a negative impact on shareholder/stakeholder value, value of IP and the economy as a whole. 6. Requirements for patent office examiners to expand prior art searches increased. Examiners must search not only for the field where the invention is classified, but analogous arts as well. This impact (1) amplifies pendency, (2) reduces the time available to prosecute any given patent and (3) reduces the overall quality of the citations and the validity of IP. Following are global phenomena which affect each office of the patents. 1. New IP problems, possibilities for infringement and enforcement challenges (Napster, cybersquatting/cyber slandering, trademark infringement) have been created. 2. An ancillary industry has been created in data analysis tools that are still primitive; tools can provide a false sense of confidence in their ability to search and analyse relevant or applicable data and prior art citations.

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3. Increased costs and expedited implementation of the next generation patent database and IT infrastructure (USPTO, EPO, JPO and other government patent offices). In conjunction with the need to simplify web-based services, the unexpected rise in usage has increased costs and hastened timetables. Reactive solutions are proving to be short-lived and need to be scrapped when developing appropriate systems. 4. Increase in the volume of prior art lost. Many younger firms have filed patents on software or business methods, but many firms have not or will not survive their applications’ pendency. Many thousands of potentially useful references from prior art will be discarded, and eventually lost. This opens the door for future, less qualified ‘inventors’ to receive patents on inventions issued earlier. Correspondingly, the validity of these patents granted may later be questioned by the earlier inventors who request non-patent references included in the original but abandoned patents. 5. Increased database and content providers demand to serve expanding markets. This causes expansion of costly hardware/software infrastructure.

What the Internet Did NOT Do for the Protection of IP? 1. The technology transfer industry has struggled to live up to standards. 2. It has failed to bridge the gap between business and the creators of IP: It did not significantly increase the company’s adoption of IP (it did not streamline the IP marketing process).

3.7

Abuse of IP

Following are the measures to prevent misuse of rights of IP: 1. These measures prevent the abuse of IP rights by different countries under different laws (IP law, competition law or law of procedure, and so on). 2. In general, they are forfeiture of the patent, no enforcement of IP rights until the abuse has been purged (equitable defence), license endorsement and compulsory license. With the exception of forfeiture of the patent that is rarely used now, the other three measures are different forms of non-voluntary licenses. 3. Equal protection requires a conditional free non-voluntary license for the ‘infringer’ who is a defendant in the lawsuit. 4. An unconditional compulsory license that is not decided on a case-by-case basis. 5. This compulsory license is an ordinary non-voluntary license authorized by the government that is considered in accordance with patent law or competition law on its individual merits. Summary, the non-voluntary license is a key mechanism to discourage IP misuse. 6. One of the issues that generate substantial debate – whether IP rights holders deserve greater protection than owners of tangible assets – is the application of the rules on abuse of a dominant position. Gleklen is building up his argument for greater protection based on the idea that IP statutes guarantee an absolute right to exclusion. 7. It has been suggested that since the right to exclude a key attribute of all properties, there is no basis for treating a refusal to license IP in any other way. In the initial matter, this argument significantly simplifies the issue. Unlike the case of IP, in which the statutory right excludes absolute property, the right to exclude private property has never been absolute – even limited; for example, by the doctrine of common law.

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Multiple Choice Questions



Multiple Choice Questions

1. Local and indigenous communities are using traditional knowledge (TK) for (a) Agriculture and food storage. (b) Medicine. (c) Both (a) and (b). (d) None of these. 2. Which of the following statements is incorrect about TK? (a) TK is distinctly associated with an indigenous or local community, which preserves and transmits it from generation to generation. (b) TK is old and static. (c) TK is generated, preserved and transmitted in a traditional and intergenerational context. (d) TK is not limited to any specific technical field. 3. The e-commerce things that need to be considered with respect to IP are (a) data. (b) media. (c) contracts. (d) all of these. 4. Different challenges faced by IP, that is, IP are (a) biodiversity. (b) human genomics. (c) digital world. (d) Both (a) and (b). 5. Which of the following is IP challenges in a digital economy? (a) Protecting and exploiting the value of data. (b) Moving to portfolio-based IP. (c) ‘In-licensing’ and ‘out-licensing’: needs and opportunities. (d) All of these.

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6 A tightening of legislation around particularly important proprietary company knowledge, typically referred to as (a) trade secret. (b) company secret. (c) proprietary secret. (d) none of these. 7. A ____________ is an essential part of e-commerce business, as branding, customer recognition and good will. (a) watermark (b) trademark (c) logo (d) photo 8. The e-commerce businesses and Internet related businesses are based on (a) product or patent licensing. (b) only product. (c) only patent licensing. (d) none of these. 9. IP consists of new ideas, original expressions, distinctive names and appearance that make products (a) unique and valuable. (b) famous. (c) similar as others. (d) easy to sell in e-commerce. 10. The ____________ characteristic of e-commerce businesses affects IP in a number of ways. (a) global (b) national (c) industrial (d) none of these

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Frequently Asked Questions in Interviews

1. List the challenges to IP in the digital economy. Answer IP can seriously affect the digital economy. There are few IP challenges of digital economy which are listed as follows: (a) Protecting and exploiting the value of data. (b) Moving to portfolio-based IP. (c) ‘In-licensing’ and ‘out-licensing’. (d) Understanding the true cost of ‘free’ software. (e) Managing trade secrets. 2. What are the challenges to IP in e-commerce? Answer IP and e-commerce are important to each other, there are mutual dependencies affecting them. Multiple goods are traded using e-commerce out of which a large part is IP. Few of these IP elements are listed as follows: (a) Data (b) Media (c) Domain (d) Employee invention 3. Explain in brief about IP and human genomics. Answer Human genomics are a complete set of human DNA in which genes of the humans are included. An IP created can be either copyrighted or patented. There organizations such as Human Genome Organization (HUGO) are formed to boost the involvement of individuals as scientists to create human genome projects. The two main issues that concern the current debate on genomics, innovation and public health are listed as follows:

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(a) A  general concern over the appropriateness of IP schemes for developing countries contrasted with a motive towards increased global patent policy standardisation. (b) More applicable to genomics, questions about the adequacy and appropriateness of existing national patent regimes to tackle DNA patenting and human genome marketing problems in both developing and developed countries. 4. Explain in brief about IP and Biodiversity. Answer Biodiversity refers to all living organisms like plants, animals, bacteria, etc. Biodiversity is the variety of the living organism. Biodiversity and IP are co-linked together when certain modification is performed in particular living organisms. For example, to increase the yield of crops, a scientist performs modification in the plant’s gene. There are few animals genetically modified for research purposes. For example, the infamous ‘OncoMouse’ or ‘Harvard mouse’ is a genetically modified patented mouse used for treatment of cancer. Though the IP rights exist for a long time, involvement of IP in biodiversity was not in focus for a long time and came into picture in the 1930s with U.S. Plant Patent Act. Although this patent was initiated for the U.S., it motivated many other countries to expand protection to plant varieties. This protection was later extended to other living organisms as well. 5. Explain in brief the challenges faced by IP with respect to TK. Answer The need to preserve TK is more than just to earn and learn. They are somewhere connected to the culture of a particular area or a nation. To provide IP to traditional knowledge, the main aim is to provide positive

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Answer Key

protection (to provide rights to TK holders to seek or restrict any actions for misuse of TK) and defensive protection (to protect any kind of third parties exploiting any kind of



IPRs over TK). Bio-privacy is one of the most important challenges affecting TK severely. The cases of turmeric, neem and Ayahuasca are examples of the same.

Answer Key

Multiple Choice Questions 1. (c) 2. (b)

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3. (d) 4. (d)

5. (d) 6. (a)

7. (b) 8. (a)

9. (a) 10. (a)

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4

Basics of Patents

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • List and explain the types of patent • Understand the patent terminologies. applications. • Define patents and patent laws. • Outline the grounds of opposition and • Identify if an idea is patentable or non- explain abuse of patents. patentable.

4.1

Introduction

A patent is a techno-legal document which grants exclusive right to its inventors to prevent others from making, selling, using or importing their inventions for a limited time period. The Indian Patent Act, 1970 defines the rules and procedures for filing the patent applications as well as infringement suit which are described in this chapter.

4.2

Definition of Patents

Patents are often referred to as ‘monopolies’ but a patent does not give the inventor or proprietor of a patented invention the right to make, use or sell anything. The consequence of a patent grant is that the patented invention cannot be used in the country by anyone other than the proprietor of the patent unless the proprietor agrees to such exploitation. Thus, while the owner is not granted a statutory right to practice his invention, he has a statutory right to prevent others from exploiting his invention commercially, which is often referred to as the right to exclude others from making, using or selling the invention. The right to take action against any person exploiting the patented invention in the country without his/her consent constitutes the most important right of the patent proprietor, since it allows him/her to derive the material benefits to which he/she is entitled as a reward for his/her intellectual effort and work, and compensation for the expenses incurred by his/her research and experimentation leading to the invention. Patent is not granted for an idea or principle. A patent is an exclusive or statutory right granted by a country to the owner of an invention (i.e., product or a process that provides a new way of doing something, or offers a new technical solution to a problem) to make, use, manufacture and market the invention; provided the invention satisfies certain conditions stipulated in the law. 1. Patent protection: Patent protects commercial inventions (industrially useful inventions). 2. Exclusivity of right: This implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder.

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3. Duration of validity of patent: This right is available only for a limited period of time, which is 20 years, at present. 4. Tools to search a patent: Espacenet, Google Patents, PATENTSCOPE, The Lens, USPTO Database 5. Examples for which a patent can be created: Light bulb, computer mouse, Xerox machine, scanner, mike, navigation system using satellites and passive ranging techniques, Three-dimensional electrode device, Bluetooth, self-driving car, solar panel, mobile Internet access, virtual reality generator for displaying abstract information, 3D printer. 6. What kind of protection does a patent offer? In practice, the owner of the patent has the exclusive right to restrict or prohibit the commercial use of the patented invention by others. In other words, patent protection means the invention cannot be made, used, distributed, imported or sold commercially by others without the consent of the patent proprietor. 7. Is a patent valid in every country? Patents are territorial rights. In general, the exclusive rights extend only in the country or region where a patent has been filed and issued, in compliance with that country or region’s rule. 8. How long does a patent last? Protection shall be granted for a limited time period, generally 20 years from the application’s filing date.

4.3

Scope of Patent Law

When an inventor crafts the claims in their patent application, they will want to make sure that the claims capture the full breadth of their invention. Any patent granted will not protect anything that is outside the scope of the claims. If the patent proprietor later files a patent-based infringement lawsuit, they would need to prove that the defendant made, used, or marketed a product or method that actually duplicates one of the claims (in comparison, the defendant can escape responsibility for the infringement if he can show that his product or method does not conform to the definition of one of the claims). Many inventions improve existing inventions which are known in patent law as ‘prior art’. In order to receive patent protection an invention must have certain components in its area that are distinct from the prior art and are not apparent to the average individual in the area. If the invention requires several new features to differentiate it from existing inventions, a patent may provide relative narrow protection. If the invention only requires a few innovative features to distinguish it from current technologies, it will receive wider protection. In an infringement case an inventor who has earned fairly limited protection for his invention will more effectively enforce their patent rights. This is because a competitor will find it harder to achieve the same result without breaching the patent.

4.3.1  Independent and Dependent Claims The more general arguments of a patent are known as autonomous arguments. These are intended to secure the widest possible extent of protection for an invention. Related claims in the application match separate claims, and are fairly small. They are intended to cover specific variations that a competitor might conceive of. A claim is independent if it can stand on its own and does not rely on any other claim in the patent. A claim is dependent if it incorporates the language of another claim in the patent, which can be either an independent claim or another dependent claim. Independent claims usually lay out the overall elements of a product or process, while dependent claims tend to address one specific component of it.

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4.4 Historical overview of the Patents Law in India

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4.3.2  Reviewing the Scope of a Claim in an Infringement Action The essence of a patent infringement case involves matching the claims protected by the claimant’s patent to the product or method that the defendant has made, used or sold. The complainant will win if the court determines that an argument in the complainant’s patent entirely protects the product or method claimed to be infringing. In other words, the product or method of the defendant must have no feature other than the elements set out in one of the claims of the patent. Thus, a claim for a patent with many elements is less likely to be infringed, as a defendant can show more easily that their product or process is different. Generally, an infringement action is based on an independent claim. This is because a defendant’s product or process cannot infringe on a dependent claim unless it also infringes on the independent claim that forms the basis of the dependent claim. Scope of Patentability Invention means a new product or process involving an inventive step and capable of industrial application under the Patents Act [Section 2(1)(J)]. Invention must 1. 2. 3. 4.

relate to a process or product or both, be new (novel), involves an inventive step, be capable of industrial application, not fall under Sections 3 and 4, which guides that the invention must not be published in India or elsewhere in prior public knowledge or prior public use within India or claimed before in any specification in India.

4.4

Historical overview of the Patents Law in India

In India, the first legislation relating to patents was the 1856 Act VI. The aim of this legislation was to encourage new and useful manufacturing inventions and to induce inventors to disclose secrets of their inventions. The act was eventually repealed by Act IX of 1857, since it was passed without British Crown consent. In 1859, it adopted fresh legislation to grant ‘special rights’ as Act XV of 1859. This legislation included certain amendments to the previous legislation, namely the granting of exclusive privileges only for useful inventions and the extension of the priority period from 6 months to 12 months. This act ruled out importers from inventor definition. This act was based on the United Kingdom Act of 1852 with certain departures including allowing assigned persons to apply in India as well as prior public use or publication in India or the U.K. for the purpose of determining novelty. The 1859 Act was consolidated in 1872 to provide protection in respect of designs. Under Act XIII of 1872, it was renamed ‘The Patterns and Designs Protection Act’. The 1872 Act was further amended in 1883 (XVI of 1883) to introduce a provision to protect the invention’s novelty, which was disclosed on the Indian Exhibition prior to making applications for their protection. After the opening date of any show, a grace period of 6 months was given for filing these applications. This act remained in force for about 30 years without any change, but in the year 1883 in the U.K. certain modifications were made to the patent law and it was considered that those modifications should also be incorporated into Indian law. In 1888, in accordance with the amendments made in the U.K., a law was introduced to consolidate and amend the law relating to invention and designs. The 1911 Indian Patents and Designs Act (Act II of 1911) replaced all preceding acts. This act first placed patent administration under the control of the patent controller. In 1920, this act was further

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revised to enter into reciprocal agreements for gaining priority with the U.K. and other nations. In 1930, further amendments were made to incorporate provisions relating to the grant of secret patents, patent of addition, use of invention by government, the controller’s powers to rectify the patent register and to increase the term of the patent from 14 to 16 years. In 1945, an amendment was made to provide for the filing, within 9 months, of provisional specification and the submission of full specification. After independence, it was thought that the Indian Patents and Designs Act, 1911 did not achieve its objective. Due to substantial changes in the country’s political and economic conditions it was found desirable to enact comprehensive patent law. Accordingly, in 1949, under the chairmanship of Justice Dr. Bakshi Tek Chand, a retired Lahore High Court judge, the Government of India set up a committee to review the patent law in India to ensure that the patent system was conducive to the national interest. The reference terms included the following: 1. To survey and report on how the patent system works in India. 2. To review and make recommendations for improving current patent legislation in India, in particular with regard to the provisions on preventing misuse of patent rights. 3. To consider whether any special restrictions concerning food and medicine should be imposed on patents. 4. Recommend measures to ensure effective publicity of the patent system and patent literature, particularly in respect of patents obtained by Indian inventors. 5. To consider of the importance and feasibility of creating a National Patent Trust. 6. To consider the desirability or otherwise of governing patent agent career. 7. To evaluate the operation of the patent office and its services to the public, and to make necessary recommendations for improvement. 8. To report generally on any changes that the committee deems fit to recommend, by promoting innovation and commercial production and use of inventions, to allow the Indian Patent System to be more suitable for national interests. On 4 August, 1949 the committee submitted its interim report with suggestions for the avoidance of misuse or violation of patent law in India and proposed amendments to Sections 22, 23, 23A of the Patents and Designs Act, 1911 in accordance with the United Kingdom Acts 1919 and 1949. The committee also observed that there should be a clear indication in the Patents Act to ensure that food and medicine and surgical and curative devices are made available to the public at the cheapest price commensurate with the patentee being given reasonable compensation. The 1911 Act was revised in 1950 (Act XXXII of 1950) in relation to the functioning of inventions and mandatory license/revocation, on the basis of the committee’s recommendation above. Other provisions related to the patent being endorsed with the words ‘right license’ on a government application so that licenses could be granted by the controller. In 1952 (Act LXX of 1952) an amendment was made to grant compulsory licensing in respect of patents relating to food and drugs, insecticide, germicide or fungicide, and a drug manufacturing method or any invention relating to surgical or curative devices. The mandatory license was also available upon Central Government notification. A draft law was introduced in Parliament in 1953 (Bill No. 59 of 1953) based on the committee’s recommendations. Nevertheless, the government did not push for the bill to be debated, and was allowed to expire. The Government of India appointed Justice N. Rajagopala Ayyangar committee in 1957 to investigate the question of patent law reform and advise the Government accordingly. The committee’s report, which consisted of two sections, was tabled in September 1959. The first part dealt with general aspects of the patent law and the second part gave extensive notes on the various clauses of the 1953 bills which

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4.5  Conditions of Patentability

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had lapsed. The first part also addressed patent system evils and recommended solutions with regard to the law. Despite its shortcomings, the committee has recommended preservation of the patent scheme. The report proposed significant policy reforms that formed the basis for the implementation of the Patents Act, 1965. On 21 September, 1965 this bill was introduced in the Lok Sabha which; however, lapsed. An amended bill was again introduced in 1967, which was referred to a Joint Parliamentary Committee, and adopted on the committee’s final recommendation, the Patents Act, 1970. This act repealed and replaced the 1911 Act in so far as it concerned the patent law. However, the 1911 Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought into force on 20 April, 1972 with publication of the Patent Rules, 1972. This act remained in effect until December 1994 for nearly 24 years without any modification. On 31 December, 1994 an ordinance was issued affecting certain changes to the act which ceased to operate after 6 months. Subsequently, another ordinance was issued in 1999. Subsequently, this ordinance was replaced by the Patents (Amendment) Act, 1999 which came into force retrospectively from 1 January, 1995. The amended act allowed for the filing of product patent applications in the areas of medicines, pharmaceuticals and agrochemicals although such patents were not authorized. Such queries, however, were only to be investigated after 31 December , 2004. Meanwhile, Exclusive Marketing Rights (EMR) could allow applicants to sell or distribute these products in India, subject to certain conditions being fulfilled. The second amendment to the 1970 Act was introduced through the 2002 Patents (Amendment) Act (Act 38 of 2002). This act came into effect on 20 May, 2003 when the new Patent Rules 2003 were adopted, by replacing the earlier Patent Rules 1972. The third amendment to the Patents Act, 1970 was introduced, with effect from 1 January, 2005 through the Patents (Amendment) Ordinance, 2004. This Ordinance was later replaced on 4th April 2005 by the Patents (Amendment) Act 2005 (Act 15 of 2005), which came into force from 1 January, 2005.

Patents Rules Under the provisions of Section 159 of the Patents Act, 1970, the Central Government is empowered to lay down rules to enforce the act and control the administration of patents. Accordingly, from 20 April, 1972 the Patents Rules of 1972 were notified and brought into force. Such laws were amended from time to time by changing the 1972 laws until 20 May, 2003 when new Patent Regulations, 2003 came into effect. The Patent (Amendment) Law, 2005 and the Patents (Amendment) Law, 2006 further amended those rules. The last modifications take effect as of 5 May, 2006.

4.5

Conditions of Patentability

The various conditions regarding patentability is elaborated in this section.

4.5.1 Novelty Novelty is crucial for patent protection. A novel invention is one that was not disclosed before the first filing date of the application, that is, the ‘priority date’. The novelty is usually lost by (a) prior publication, (b) prior before use and (c) prior claim.

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Nevertheless, Sections 31 and 32 specify that if the disclosure is before a scientific body or an exhibition approved by the Government of the Union, then a patent application must be filed within 12 months from such publication or show. An experimental non-commercial use does not kill novelty. However, it is often easier to first apply for a patent and to publish or show the product after patent application. If such publication or display had occurred prior to the application, it is advisable that a patent attorney should be contacted immediately to know whether a request may be made in spite of the disclosure.

4.5.2  Non-Obviousness (Inventive Steps) In Section 2(1)(j) previously defined inventive step as ‘Inventive step means a feature which does not make the invention obvious to a person skilled in the art’. Such a definition has been replaced by Section 2(1)(ja) as ‘Inventive step means a feature of an invention involving technical advancement in comparison with existing knowledge or having economic significance or both, and making the invention unclear to a person skilled in the art’. 4.5.3  Industrial Applications An innovation can be used industrially if it satisfies three criteria, cumulatively, so that (a) it may be manufactured or produced, (b) it can be used within at least one activity field and (c) it can be reproduced as many times as necessary with the same features.

4.6

Patentable and Non-Patentable Inventions

Indian Patent Act, 1970 describes patentability criteria for an invention and also lists non-patentable inventions which cannot be granted patent under Section 3 of the act. Before an inventor files a patent the patentability and non-patentability criteria should be verified.

4.6.1  Patentable Inventions An innovation which can be connected to any method or product can be granted a patent. Under the 1970 Patents Act, the term ‘invention’ was established. ‘An invention shall mean a new product or method requiring an innovative phase and capable of industrial application’ [Section 2(1)(j))]. ‘New invention’ shall be defined as any innovation or technology not anticipated by publication in any document or used in the country or anywhere in the world before the date of filing of the patent application with complete specification, that is, the subject matter does not fall within the public domain or is not part of the state of the art; where, in relation to an invention, capable of industrial use implies that the invention is capable of being made or used in an industry [Section 2(1)(ac)]. Therefore, the criteria for an invention to be patentable are (1) novelty, (2) inventive step and (3) industrial application. 4.6.2  Non-Patentable Inventions Some products and processes exist in India that are not patentable. They can be classified according to the Patent Act into two the following categories: 1. Those which are not inventions (Section 3). 2. Atomic energy related invention (Section 4).

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Sections 3 and 4 of the Patents Act, 1970 enlists the inventions which are not patentable: 1. Section 3 reads as follows: ‘These are not inventions within the meaning of this act, an invention that is frivolous or that says something that explicitly contravenes well-established natural laws’. 2. An invention whose primary or intended use or commercial use may be contrary to public order or morality or cause serious harm to human, animal or plant life or to health or the environment. 3. The pure discovery of a scientific idea or the formulation of an abstract theory [or discovery of some living object or non-living material that exists in nature] (but the dividing line between innovation and discovery is quite thin, much will depend on the innovation’s projection); 4. The mere discovery of any new property or new use for a known substance or for the mere use of a known process, machine or apparatus, unless such known process results in a new product or employs at least one new reactant; explanation derivatives of the same substance, such as salts, esters, ethers, polymorphs, metabolites, new particle size and other derivatives of the known substance shall be considered – a substance produced by a pure admixture resulting solely in the aggregation of its component properties or in a method for the processing of that material; patentable is a synergistic mixture – if the mixture reveals new beneficial properties not disclosed by the individual ingredients, the same shall be patentable. 5. The simple arrangement or rearrangement or duplication of known devices which each act in a known manner independently of each other. 6. Method of farming or horticulture (chemical crop protection and new equipment used in horticultural agriculture are patentable). 7. Any process for the medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or other treatment of humans or any similar treatment of animals to render them disease-free or to increase their economic value or that of their products. 8. Whole or any part of plants and animals other than micro-organisms, but including seeds, varieties and species and essentially biological processes for plant and animal production or propagation – new plant varieties may be protected under different laws. 9. A mathematical or business method or a computer program or algorithms per se (but if the software is responsible for improving the technical effect or improving the efficiency of the existing device, then the technical or improved device may be patented). 10. A literature, dramatic, musical or creative work or any other aesthetic work, including cinematographic works and television productions, may be protected under the copyright laws. 11. A mere scheme or rule or method of mental acting or game-playing. 12. Informational presentation. 13. Integrated circuit topography (this may be protected under other legislation). 14. An innovation that is, in essence, new information or that constitutes an accumulation or replication of known properties of historically known components (but an improvement in traditional knowledge which fulfils the requirement of novelty, utility and non-obviousness may be patent subject). 15. Section 4: No patent shall be granted on an invention relating to nuclear energy falling within the scope of Subsection (1) of Section 20 of the Atomic Energy Act, 1962 (33 of 1962).

4.7

Types of Patent Applications

1. Ordinary application, that is, an application which has been filed directly in the Indian Patent Office without claiming priority of any foreign application.

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2. Convention application claiming the priority of a country which is a member to Paris Convention. 3. PCT National Phase Application. 4. Divisional application, that is, a further application divided out of the first-mentioned patent application. 5. Patent of addition, that is, a patent application for any improvement or modification of an invention for which the patent application has already been filed or for which a patent has been granted.

4.8

Process Patent and Product Patent

Section 5 of the Patent Act, 1970 had provided for only process patents to be granted in certain categories of inventions. It may be pointed out here that product and process patents could be issued and issued under the Patent Act, 1970, in all other areas. The Paris Convention left this matter to be dealt with in the laws of the States in a manner of its own choice. Pursuant to Article 27.1, the TRIPs Agreement stipulates that patents shall be valid for any invention, whether goods or processes in all fields of technology, except for the exclusion provided for in Article 27.2 and Article 27.3. The Patent Act, 1970, was amended in 2002 pursuant to the TRIPs agreement. Section 5 of the Patents Act, 1970 (as it stands after the 2002 amendments) states that, in the case of inventions alleged relating to food, medicine, drugs or chemical substances, only patents should be sought relating to the methods or manufacturing processes of these substances. An explanation attached to Section 5, provided that biochemical, biotechnological and microbiological processes are included in the ‘chemical process’. Subsequently, the Patents (Amendment ) Act, 2005, which came into force on 1 January, 2005 deleted Section 5 of the Patents Act, 1970; thus, paving the way for product patents. This deliberate strategy of denying pharmaceutical inventions product patent protection is traceable to the Ayyangar Committee Report, a report which formed the very foundation of the Patents Act, 1970. The committee found that between eighty and 90% of Indian patents were owned by foreigners, and that over ninety percent of these patents were not even employed in India. The committee concluded that multinationals were manipulating the system to gain monopolistic market dominance, especially in relation to critical industries such as food, chemicals and pharmaceuticals. In view of the development of technological capacity in India, the Patents Act has been amended, coupled with the need to integrate the system of intellectual property with international practices and intellectual property regimes. The amendments also aimed to make the act a modern, harmonized and user-friendly law to adequately protect national and public interests while fulfilling the international obligations of India at the same time.

4.9

Precautions while Patenting

The first system to file is employed in which a patent is granted first among people who have filed the same invention, and therefore a patent application should be filed promptly after the invention has been conceived. It is common experience that inventors act unknowingly and jeopardize the possibility of obtaining patents for their inventions through ignorance of the patent law. The most common of these indiscretions is to publish their inventions, before applying for patents, in newspapers or scientific and technical journals. Publication of an invention, even by the inventor himself, would constitute a bar for subsequent patenting of it (except in some rare circumstances). Similarly, a fatal objection to the grant of a patent for such invention would be the use of the invention in public, or the commercial use of the invention, prior to the date of filing of the patent application.

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4.10 Types of Patent Specification

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However, there is no objection confidentially to the secret working of the invention of 44 by way of reasonable trial or experiment, or to the disclosure of the invention to others. Another mistake that the inventors often make is to wait until their inventions are fully developed for commercial work, before applying for patents. Therefore, it is prudent to apply for a patent as soon as the concept of the inventor about the essence of the invention has taken a definite shape. A patent application followed by a ‘Provisional Specification’, which defines the invention, can be submitted. Therefore, the application may be made even before the complete working details of the invention are developed. The filing of a patent application disclosing the invention would secure the priority date of the invention, thus enabling the inventor to determine the practical details of the invention and to file complete specifications within 12 months of the date of filing of the provisional specification.

4.10 Types of Patent Specification The specification is a techno–legal document containing scientific and technical disclosure and invention claims which are the basis for a patent’s rights. Therefore, the specification is a crucial part of the patent application. ‘A specification may either be required to file as a provisional or complete specification’. The provisional or complete specification shall be submitted in Form 2, together with the Form 1 application and other documents accompanied by the prescribed fee as set out in the First Schedule. The first page of Form 2 shall contain 1. title of the invention, 2. name, address and nationality of each of the applicants for patent and 3. preamble to the description. If the provisional specification is filed, the preamble shall be as follows: ‘The following specification describes the invention’. If the complete specification is filed, the preamble shall be as under: ‘The following specification particularly describes the invention and the manner in which it is to be performed’.

4.10.1  Filing Amendments to the Specification 1. When amendments to a provisional or full specification or to any drawing accompanying it are made, the pages containing those modifications shall be re-typed and submitted as a continued document. 2. A marked copy shall also be filed clearly identifying the amendments made and a statement clearly indicating the portion (page number and line number) of the specification or drawing to be amended, together with the reason for the change. 3. Amendments shall not be made in the form of slips pasted on, or as footnotes, or in the margins of any of those documents. 4. The corresponding earlier page(s) shall be deemed to have been superseded and cancelled by the applicant when a retyped page or pages incorporating amendments are submitted. 4.10.2  Provisional Specification 1. When the applicant finds that his invention has reached a stage where it can be disclosed but has not reached the final stage, he may prepare a written description for disclosure of the invention and submit it to the patent office as a provisional specification.

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2. A provisional specification shall ensure a priority date for the request. 3. An application filed with a provisional specification shall be deemed to be abandoned if no complete specification has been filed within 12 months of the date of filing of the interim specification [Section 9(1)]. 4. Where, in the controller’s opinion, two or more provisional specifications submitted by the applicant are cognizant, or where one is a modification of the other, the applicant may submit one complete specification for all those provisional specifications. Such a full specification must be submitted within 12 months of the day the first provisional application is filed. In such cases, the filing date of the application shall be the date of filing of the earliest provisional specification and shall bear the number of that request [Section 9(2)]. 5. An applicant may request the controller to convert the complete specification thus filed to a provisional specification within 12 months of the filing of the complete specification (not being a convention application or a PCT national phase application). Accordingly, the applicant must apply a complete specification within 12 months from the first filing date [(Section 9(3)]. 6. Following the filing of the complete specification, the applicant may, at any time before the grant of the patent, order the controller to cancel the provisional specification [i.e., the one submitted directly to u/s 9(1) or the one converted from the complete specification [u/s 9(3)], the controller may cancel the provisional specification and post-date the application by the date of filing of the full specification.]

4.10.3  Contents of Provisional Specification Provisional specification is a techno–legal document that outlines the invention and a complete specification follows: 1. In fact, a provisional specification shall contain the title and description of the invention. It is advisable not to make claims in the provisional specification because the object of filing an interim specification is to assert a priority date and is intended solely to define the invention. 2. From the second page the description begins with the field of invention, the background of the invention, the subject matter of the invention and the statement of invention. 3. It is advisable to include in the provisional specification, at the time of filing, as much information as the applicant has. 4. It may be noted that, in the case of a Divisional, Convention or PCT National Phase Application, a provisional specification cannot be filed.

4.10.4  Complete Specification Complete specification is a techno-legal document that describes the invention fully and in particular, and discloses the best method of carrying out the invention. Since a complete specification is an important document in the patent proceedings, it is recommended that it be drawn up with utmost care without any confusion. On the part of the applicant, it is compulsory to disclose in full and, in particular, various features which constitute the invention. Invention disclosure in a complete specification must be such that a person with average ability and expertise in India should be able to conduct the invention on the basis of what is disclosed in the specification.

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Contents of Complete Specification Every complete specification shall 1. describe in full and specific terms the invention and its operation or use, and the process by which it is carried out, 2. disclose to the applicant for which he is entitled to claim protection the best method of carrying out the invention known, 3. end a claim or collection of claims specifying the nature of the alleged invention, 4. make reference, where applicable, to the depositing of biological material in an international depositary authority, 5. reveal the source and geographical origin of the stated biological material, 6. accompany with an abstract and exclude from title, description, claims and drawings any irrelevant or other matter which is not necessary for the elucidation of the invention, 7. in case of a specification for divisional application, shall contain specific reference to the number of original applications from which the divisional application is made and 8. in the case of a patent of addition specification, a specific reference shall be made, as the case may be, to the number of the main patent or application Section 10(4) 38 for patent and a definite statement that the invention comprises an improvement or modification of the invention claimed in the specification of the main patent granted or applied for.

4.11 Disclosures and Non-Disclosures An application shall 1. fully and particularly describe the invention and its operation or use and the method by which it is to be performed and 2. disclose the best method of performing the invention which is known to the applicant.

4.12 Some Grounds for Opposition The opposition procedures are organized to limit unfair practices of obtaining patents and asserting of the frivolous or insignificant inventions. Indian Patent Act facilitates opposition policies to deter the unlawful grant of patent. Under Indian Patent Act, there are two arrangements when opposition might be recorded either by means of pre-grant opposition or post-grant opposition relying on the phase of the patent.

4.12.1  Opposition to the Patent Pre-Grant opposition: Section 25(1) 1. Where a patent application has been published but a patent has not been granted, no person may, in writing, object to the patent grant on the ground by the controller (a) that the patent applicant or the person under or through whom he claims has wrongly obtained from him or from a person under or through whom he claims the invention or any part thereof and

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(b) that the invention was published before the priority date of the claim, to the extent claimed in any claim of the whole specification, (i) in any specification filed pursuant to a patent application submitted in India on or after 1 January 1912 or (ii) in India or elsewhere, in any other document: (iii) provided that the ground referred to in Sub-clause (ii) is not available where that publication does not constitute an anticipation of the invention shall apply to Subsection (2) or (3) of Section 29. (c) that the invention, in so far as it is stated in any claim of a complete specification, is asserted in a claim of a complete specification published on or after the priority date of the claim of the applicant and filed pursuant to a patent application in India, being a claim of which the priority date is earlier than that of the claim of the applicant, (d) that the invention was widely recognized or commonly used in India before the priority date of that claim, to the degree stated in any argument of a complete specification. Explanation: For the purposes of this provision, an invention relating to a process for which a patent is asserted shall be considered to have been already recognized or used in India prior to the priority date of the claim if a product made by that process had already been imported into India prior to that date, except where such importation was for the purpose of a fair trial or experiment only, (e) that, to the extent claimed in any claim of a complete specification, the invention is obvious and clearly does not involve any inventive step, having regard to the matter published as referred to in Clause (b) or having regard to what was used in India prior to the priority date of the claim of the applicant; (f ) that any claim of a complete specification is not, or is not patentable under this act, an invention within the meaning of this act, (g) that the invention or the method by which it is to be carried out is not sufficiently and clearly described in the full specification, (h) that the applicant has failed to disclose the information needed by Section 8 to the controller, or has given information which, in any particular content, was false to his knowledge, (i) in the case of a convention application, the application was not made by the applicant or a person from whom it derives its title within 12 months of the date of the first request for protection of the invention made in a convention country, (j) the complete specification does not disclose or incorrectly state the source or geographical origin of the biological material used for the invention, (k) that the invention is anticipated, in so far as it is claimed in any claim of a complete specification, having regard to the knowledge available, orally or otherwise, in any local or indigenous community in India or elsewhere, but on no other ground, and that the controller shall hear and dispose of such representation in such a manner and within such period, if requested to be heard by that person, Post-Grant opposition – Section 25(2) 2. Any person concerned may, at any time after the grant of a patent, but before the expiry of a period of one year from the date of publication of the grant of a patent, notify the controller in the manner prescribed for any of the following reasons, namely, (a) the patent proprietor or the person under or by whom he claims to have wrongly obtained the invention or any part thereof from him or from the person under or by whom he claims and

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(b) the invention to the extent claimed in any claim of a complete specification was published prior to the priority date of the claim (i) in any form filed pursuant to a patent application issued in India on or after 1 January, 1912 or (ii) in India or elsewhere, in any other document; given that the ground referred to in Subclause (ii) is not available where that publication does not constitute an expectation of the invention pursuant to Subparagraph (2) or Subparagraph (3) of Section 29. (c) that, to the extent claimed in any claim of a complete specification, the invention is claimed in a claim of a complete specification published on or after the priority date of the claim of the patent proprietor and filed pursuant to a patent application in India, the priority date of which is earlier than that of the claim of the patentee, (d) that the invention was widely recognized or commonly used in India before the priority date of that claim, to the degree stated in any assertion of a complete specification. Explanation: For the purposes of this provision, an invention relating to a process for which a patent is issued shall be deemed to have been already recognized or used in India prior to the priority date of the claim if the product created by that process had already been imported into India prior to that date, except where such importation was for the purpose of fair trial or experimentation on it, (e) that the invention as stated in any claim of a complete specification is obvious and clearly does not require any inventive move, having regard to the subject-matter published as referred to in Clause (b) or to what was used in India prior to the priority date of the claim, (f ) that any claim of a complete specification is not, or is not patentable under this Act, an invention within the meaning of this act, (g) that the invention or the method by which it is to be carried out is not sufficiently and clearly described in the full specification, (h) the patent proprietor has failed to disclose to the controller the information required by Section 8 or has provided the information which, to his knowledge, was false in any particular matter, (i) that, in the case of a patent granted on a convention application, the patent application was not made by the patent proprietor or the person from whom it derives its title within 12 months of the date of the first application for protection of the invention made in a convention country or in India, (j) that the complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention, (k) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground. 3. (a) Where any such notice of opposition is duly given under Subsection (2), the controller shall notify the patentee. (b) On receipt of such notice of opposition, the controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the controller. (c) Every Opposition Board constituted under Clause (b) shall conduct the examination in accordance with such procedure as may be prescribed.

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4. On receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the controller shall order either to maintain or to amend or to revoke the patent. 5. When passing an order under Subsection (4) in respect of the ground referred to in Clause (d) or Clause (e) of Subsection (2), the controller shall not take into account any personal or secret trial or use either. 6. Where the controller issues an order under Subsection (4) that the patent be maintained subject to modification of the specification or of any other document, the patent shall be amended accordingly. In cases of ‘obtaining’ controllers may treat the patent as the patent of the opponent. 1. (a) I n so far, as the invention claimed in any claim of a complete specification has been obtained from the opponent in the manner set out in Clause (a) of Subparagraph (2) of Section 25 and revokes the patent on that ground, the opponent may, on request of that opponent made in the specified manner, order that the patent be amended on behalf of the opponent and (b) a part of the invention described in the complete specification has been obtained from the opponent in such a way that it may pass an order requiring that the specification be amended by excluding that part. 2. Where an opponent has, before the date of the order of the controller requiring the amendment of a complete specification referred to in Clause (b) of Subsection (1), filed an application for a patent for an invention which includes the whole or a part of the invention held to have been obtained from him and such application is pending, the controller may treat such application and specification in so far as they relate to the invention held to have been obtained from him, as having been filed, for the purposes of this act relating to the priority dates of claims of the complete specification, on the date on which the corresponding document was or was deemed to have been filed by the patentee in the earlier application but for all other purposes the application of the opponent shall be proceeded with as an application for a patent under this act.

How to File Opposition? Any interested person may file an opposition notice (including written statement and evidence, if any) at any time after the grant of the patent but before the expiry of a period of one year from the date of publication of the patent in the Journal of the Patent Office. The notice referred to in Section 25(2) above should be filed on Form 7 together with a fee of `2400 to `12,000 for natural persons and others respectively. The grounds for opposition under Section 25(2) shall be the same as those set out before in the case of opposition before grant. The opposition to the post-grant shall be decided by an Opposition Board followed by a hearing and the controller’s reasoned decision. Mention of Inventor as such in Patent 1. If the controller is satisfied, upon a request or claim made in accordance with the provisions of this section (a) that the person to whom the application or claim is made is the inventor of an invention for which a patent application has been made or a significant part of that invention has been made and

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4.13 The Notion of ‘Abuse’ of Patent Rights

2. 3. 4. 5.

6.

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(b) if the patent application is a direct consequence of its being the inventor, the controller shall, subject to the provisions of this section, cause it to be listed as the inventor in any patent granted pursuant to the application in the complete specification and in the patent register: provided that the description of any person as the inventor pursuant to this section is not conferred on him or her or her under this section. A request that any person be referred to above may be made by the applicant for the patent in the manner prescribed or (where the person alleged to be the inventor is not the applicant or one of the applicants) by the applicant and that person. If any person other than a person in respect of whom a request relating to the request in question has been made pursuant to Subsection (2) wishes to be listed as aforesaid, he may, on that behalf, make a claim in the manner prescribed. An application or claim pursuant to the foregoing provisions of this section shall be submitted before the award of the patent. Where a claim is made pursuant to Subparagraph (3), the controller shall notify each applicant for the patent (not the applicant) and any other person to whom the controller may be interested; and before deciding on any request or claim made pursuant to Subsection (2) or Subsection (3), the controller shall, if appropriate, hear the person to whom the claim relates or to whom the claim relates and, in the case of a claim under Subsection (3), any person to whom notice of the claim has been given as aforesaid. Where any person has been identified as an inventor pursuant to this section, any other person accusing that he or she should not have been so mentioned may at any time apply to the controller for a certificate to that effect, and the controller may concern such a certificate after hearing, if necessary, to any person whom he or she may consider interested and, if he or she does so, rectify that speed.

4.13 The Notion of ‘Abuse’ of Patent Rights Patent abuse is primarily a defence on patent infringements. Different types of patent right abuse have been noted as described in the following: 1. Patent misuse: Many times, a patent proprietor improperly utilizes the patent outperforming its legal scope. Patent abuse is the unjustified utilization of the obtained patent rights. Instances of patent abuse incorporate unlawful tying of items and administrations to the licensed development, price fixing, deceitfully making the clients pay eminences on things the patent of which has lapsed, and so forth. 2. Patent trolls: Sometimes called as patent assertion entities (PAE) are organizations which will in general gain a fortune from pointless patent encroachment claims. While typical organizations utilize their licenses to shield their item from being forged and sold in the market, patent trolls frequently procure licenses economically from bankrupt organizations and, rather than utilizing such licenses in activities, these organizations charge powerful permitting expenses on different people or organizations which seem to encroach any of their gained licenses. So as to relieve the danger of patent troll suits, organizations can recruit ‘patent-following organizations’ on a yearly expense premise. They get data to find the conceivably questionable patent rights before they are obtained by patent trolls to be utilized against organizations.

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Multiple Choice Questions

1. A patent is 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) an exclusive right (b) an inclusive right (c) both (a) and (b) (d) none of these 2. Patent application can be filed in India by (a) true and first inventor. (b) assignee of the inventor. (c) legal representative of the inventor. (d) all of these. 3. The kinds of specifications involved in patent drafting are (a) non-provisional specification. (b) complete specifications. (c) provisional specification. (d) both (b) and (c). 4. Patent application contains (a) Form 1. (b) Form 2. (c) Both (a) and (b) (d) None of these. 5. Complete specification contains (a) title of invention. (b) description of invention. (c) claim. (d) all of these.



Frequently Asked Questions in Interviews

1. Who can file patent applications in India? Answer First and true inventor or his assignee or legal representative either alone or jointly. 2. As a resident of Ahmedabad, where will you patent application?

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6. What are the legally operative part of a patent application? (a) Patent claims. (b) Disclosures. (c) Both (a) and (b). (d) None of these. 7. The can be interpreted stand-alone without associating with any other claims. (a) dependent claims (b) independent claims (c) mutually dependent claims (d) none of these 8. The person entitled to apply for a patent shall be the (a) true and first inventor. (b) assignee of the inventor. (c) legal representative of the inventor. (d) all of these. 9. Patent of addition can be filed by (a) inventor. (b) patentee. (c) both (a) and (b). (d) none of these. 10. If you file provisional specification, the complete specification is required to be filed within (a) 10 months. (b) 12 months. (c) 18 months. (d) 24 months.

Answer Mumbai Patent Office. 3. Discuss the content of the patent application. Answer The content of patent application includes (1) application form, (2) complete

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Answer Key

specification, (3) declaration of inventorship and (4) foreign filing particulars, if any. 4. Discuss the content of complete specification. Answer The complete specification contains (1) title of invention, (2) object of invention, (3) statement of invention, (4) description, (5) description with drawing, (6) claim and (a) abstract. 5. Discuss the major steps involved to get a patent. Answer The major steps are (1) filing of application, (2) publication, (3) pre-grant opposition, (4)



examination, (5) acceptance, (6) publication, (7) post-grant opposition and (8) grant. 6. Who can file patents of addition in India? Answer Inventor or patentee. 7. How can the patent be infringed? Answer Patent can be infringed literally or by doctrine of equivalents (DOE). 8. Where can you file suit for patent infringement? Answer Patent infringement can be filed at minimum district having appropriate jurisdiction.

Answer Key

Multiple Choice Questions 1. (a) 2. (d)

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3. (d) 4. (c)

5. (d) 6. (a)

7. (c) 8. (d)

9. (c) 10. (b)

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5

Patent Filing and Patent Search

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Understand the patent filing and patent examination procedures. • Explain revocation of patents.

5.1

• Explain patent infringement and patent licensing. • List and explain patent search procedures.

Introduction

A patent is a techno–legal document and it must be drafted equally balancing the technical as well as legal aspects of the invention. The inventor has to fully demonstrate the invention to explain its novelty and usefulness. As an intangible asset patent can be sold or licenced. Permission to use the invention is granted to others when patents are assigned or licensed to them. Section 64 of the Indian Patent Act, 1970 describes the patent infringement and patent revocation procedures. It is always advisable to perform exclusive patent search before filing a patent application to ensure that the invention is novel and non-obvious.

5.2

Procedures for Filing a Patent

Patent rights with respect to any invention are created only upon grant of the patent by the patent office following the procedure established by the patents acts and the rules.

5.2.1  Indian National Procedures for Filing a Patent India follows a declarative system for patent rights. Following are the three types of applications that may be filed in the Indian Patent Office: 1. Regular application. 2. Convention application. India has published a list of convention countries under Section 133 of the Patents Act and is also a member of the Paris Convention. The application for the convention must be submitted within 1 year from the priority date and must specify the date on which the application for protection (first application) was requested, and the convention country. The application must be submitted with the priority paper.

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Patent Cooperation Treaty (PCT) National Phase Application A National Phase Application may be filed in India because India is a member of the PCT. Since December 2007, the Indian Patent Office has also been listed as one of several nominated by the World Intellectual Property Organization (WIPO) International Searching Authorities (ISA) and International Preliminary Inspecting Authorities (IPEA). In this capacity, the office is expected to commence operations soon. 5.2.2  International Procedures for Filing a Patent Any international application for a patent pertaining to the Patent Cooperation Treaty (PCT), as may be filed designating India, shall be considered to be an application pursuant to the act, if a similar application has also been filed before controller in India. The filing date of such an application and its complete specification processed as appointed office or elected office by the patent office shall be the international filing date issued under the PCT. Section 7(4) provides that each such application is accompanied by a provisional or complete specification, other than an application for a convention or an application filed under the PCT designating India. It should be remembered that patent acquisition can be a lengthy and expensive process. Fortunately, in 1970, several inventors decided to simplify the process for protecting patents worldwide by creating the PCT. Under this treaty on patent cooperation, inventors may submit only one international application which is valid in one or all of the more than 120 countries that are members of this treaty. Inventors may apply for a patent either in all of the PCT member countries or in selected country clusters. Also, inventors who are PCT member states citizens or residents could use this simpler method to file foreign patent applications. 5.2.3  Procedure for Filing of a Patent Application A patent application shall be filed on Form 1 alongside provisional/complete specification, with the prescribed fee as indicated in the First Schedule at an appropriate office. However, in the case of a Convention Submission, a provisional specification cannot be submitted (either directly or via PCT routes). Usual rate applies for applications of up to thirty pages in specification and up to 10 claims. Whether the specification exceeds 30 pages or if the number of claims reaches 10, additional fees shall be payable as set out in the First Schedule (of Section 7). 5.2.4  Patent Application Contents The patent application contents will include the following: 1. Application for grant of patent in Form 1. 2. Applicant has to obtain a proof of right to file the application from the inventor. The Proof of Right is either an endorsement at the end of the Application Form 1 or a separate assignment. 3. Provisional/complete specification in Form 2. 4. Statement and undertaking under Section 8 in Form 3, if applicable. An applicant must file Form 3 either along with the application or within 6 months from the date of application. 5. The inventor-ship declaration shall be submitted in the Applications form following a Full Specification or a Convention Application or a PCT Application designating India. However, if a request is made to the controller in Form 4, the controller may require the filing of Form 5 within a month from the date of filing of the application.

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6. Authority power in Form 26 for which filed through a Patent Agent. In the event of a general authority having already been filed in another case, the IPR L&P (IPR law and practice) Agent can file a self-authorized copy of the same. In the event that the original general authority is filed in another jurisdiction, that fact can also be mentioned in the self-authorized copy. 7. Priority document is required in the following cases: (a) Convention application (under Paris Convention). (b) PCT National Phase Application wherein requirements of Rule 17.1 [(a) or (b)] of regulations made under the PCT have not been fulfilled. 8. The priority document may be submitted in accordance with the request or before the expiry of 18 months from the priority date, in order to allow the request to be made public. The priority paper shall be submitted before/along with any request in the case of a request for early release. 9. That application shall bear the applicant’s or approved person/patent agent’s signature along with the name and date given in the forms in the correct space. 10. The specification shall be signed on the last page of the specification by the officer/applicant with date. The drawing sheets in the bottom right hand corner will bear the signature of an applicant or his agent. 11. Where the application relates to a biological material acquired from India, the applicant must request the permission of the National Biodiversity Authority at any time before the patent is issued. This will, however, suffice if the National Biodiversity Authority’s approval is requested before the patent is granted. 12. The application form shall also clearly indicate where appropriate the source of geographical origin of any biological material used in the specification. [Section 7, Rules 8, 12, 13 and 15. Also, Section 6 of the Biological Diversity Act, 2002 and Rule 17.1 of Regulations made under the PCT].

5.2.5  The e-Filing of a Patent 1. The Patent Office provides the facility for filing a patent application electronically via e-filing from the applicant’s or agent’s (agent of the applicant) native location. 2. Applicant/agent must have a digital signature for e-filing. Applicant/agent must first register as a new user, and login ID and password must be generated on the Patent Office’s website (details regarding procedure for e-filing are available at http://www.ipindia.nic.in). 5.2.6  Processing of Application Application process includes various steps to follow, which are discussed in the following. Initial Processing 1. The office assigns application a date and serial number upon receipt of a submission. PCT national phase applications and non-PCT applications are identified by separate serial numbers. 2. All applications and other documents are digitized, checked, reviewed, assessed and submitted to the office’s internal server. 3. Patent applications and other documents are stored in a file wrapper and the bibliographic sheet is prepared and pasted on the file cover so that the files move on to the compactors for storage.

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4. The application is screened for the following features: (a) (b) (c) (d)

International patent classification. Technical field of invention for allocation to an examiner in the respective field. Relevance to defence or atomic energy. If required, right/complete the abstract. When found to be unacceptable, the presentation will be recast accordingly, and third parties can be better educated. These amendments, however, do not contribute to any alteration in the essence of the invention. 5. Requests for examination are also accorded a separate serial number.

Scrutiny of Application 1. The office checks whether the application has been submitted in the relevant jurisdiction. Where the jurisdiction is not relevant, the request shall not be registered and the applicant shall be notified accordingly. 2. The office reviews the document for evidence of right to file. If the proof of right is not submitted along with the request, it shall be filed within a span of 6 months from the filing date of the application; otherwise, a petition under Rule 137/138 shall be filed by the applicant along with the same. 3. The office checks whether the application and other documents have been filed in the prescribed format, i.e., prescribed forms, request, petitions, assignment deeds, translation, etc. Further, the office checks if (a) the documents are prepared on a proper sized paper, typed in appropriate font with proper spacing, (b) the documents are duly signed, (c) the abstract, drawings (if any) have been filed in proper format, (d) the meaningful claim(s) are present in a complete specification, (e) the Power of Attorney or attested copy of General Power of Attorney (if any) is filed, (f ) Form 5 has been filed (along with complete after Provisional or for filing PCT-NP/ Convention Application), (g) invention has been assigned to another person and Form 6 has been duly filed. If the right is assigned from an individual to a legal entity, the legal entity is invited to pay the balance fees.

Secrecy Directions and Consequences Thereof 1. Upon initial processing and review by the patent office of the applications, if, in the view of the controller, an invention relates to an issue appropriate for defence purposes as informed by the central government, the controller shall issue a secrecy directive prohibiting the application to the applicant, and refers the matter to the Central Government for consideration as to whether the request is harmful to India’s security. 2. After considering the merits of the direction of secrecy, the Central Government may send the controller notice as to whether or not the direction of secrecy should be continued. 3. The Central Government reviews the matter at 6 months’ intervals. The applicant may request a reconsideration of the course of secrecy and, where the controller deems the same fair, may request a clarification from the Central Government.

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5.2  Procedures for Filing a Patent

Filing of the application

On the date the application is filed, it is numbered

Meeting procedural objections

Generally within a month of filing the application, the patent office sends a preliminary objection letter, which has to be complied with within a specified time limit

Publication of the application

The application is published in the official gazette and is open to public after eighteen months from the date of filing of application, whichever is earlier. An application for earlier publication could be filed by the applicant

Request for examination

Pre-grant opposition

A request for examination to be filed by the applicant or any other interested person within 36 months from the date of priority or filing of the patent application, whichever is earlier.

Within 3 months from the date of publication or before the grant of patent whichever is later – any person may file opposition on limited grounds. Opposition is considered only when request for examination is filed.

First examination report

The examiner of patents is required to issue a first examination report, within one month but not exceeding three months from the date of reference. This report raises various substantive and procedural objections.

Meeting the official objections

The applicant has to comply with the objections to put the application in order for acceptance within 6 months from the date of the report. This period could be extended by another three months by filing an application to that effect.

Grant of the patent

If the Applicant complies with objections raised in the first statement of objections within 6 months (extendable by 3 months) from the date of first statement. Else the application is deemed to have been abandoned.

Post-grant opposition

Within 1 year from the date of publication of grant of a patent, any person interested may file an opposition on the grounds enlisted in Section 25(3).

Figure 5.1  Patent examination process.

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4. When the Central Government is of the opinion that an invention for which the controller has not placed a course of secrecy and is important for defence purposes, it may inform the controller to that effect at any time prior to the grant of the patent. The controller thereupon invokes Section 35(1) rules. 5. The controller shall not take a decision on the grant/refusal of the application so long as any directives under Section 35 are in effect [Sections 35, 36, 37 and 38].

5.3

The Indian Patent Act, 1970

The Patents Act, 1970 remained in effect until December 1994 for about 24 years, without any modification. As a milestone in India’s industrial growth, the basic principle of the act is that patents are issued in order to promote innovations and ensure that such innovations are produced on a commercial scale without unnecessary delay; and patents are granted not simply to allow the patent proprietor to enjoy a monopoly on the import of the patented item into the country. The said philosophy is being implemented by compulsory licensing, registration of only process patents for food, medicine or drug, pesticides and substances produced by chemical processes which, apart from normally understood chemical substances, also include items such as alloys, optical glass, semiconductors, intermetallic compounds, etc. However, it may be noted that products vital to our economy such as products from agriculture and horticulture, inventions from atomic energy and all living things are not patentable. Therefore, it was expected that the Patents Act, 1970 would provide a fair balance between, on the one hand, sufficient and efficient patent protection, and, on the other, technological growth, public interest, and country specific needs. The Uruguayan General Agreement on Tariffs and Trade (GATT) round paved the way for WTO negotiations. Hence, India has been put under the contractual obligation to amend its Patents Act in compliance with TRIPS provisions. On 1 January, 1995 India was required to fulfil the first collection of specifications. Accordingly, on 31 December, 1994 an ordinance was issued affecting some improvements to the act, which ceased to exist after 6 months. A further ordinance was subsequently issued in 1999. Subsequently, this ordinance was replaced by the Patents (Amendment) Act, 1999 which came into effect retrospectively from 1 January, 1995. The amended act provided for the filing of product patent applications in the areas of drugs, pharmaceuticals and agrochemicals although such patents were not permitted. However, such applications were to be examined only after 31 December, 2004. Meanwhile, Exclusive Marketing Rights (EMR) will require applicants to sell or distribute such products in India, subject to certain conditions being fulfilled. India re-amended its Patents Act in 2002 by means of the Patents (Amendment) Act, 2002 extending the patent term to 20 years for all inventions, removing the presumption of evidence, mandatory licenses etc. This act came into force on 20 May, 2003 by replacing the earlier Patent Rules, 1972, with the introduction of the new Patent Rules, 2003. The third amendment to the Patent Act, 1970 was introduced by the Patents (Amendment) Ordinance, 2004, with effect from 1 January, 2005 incorporating provisions for the grant of product patents in all fields of technology, including chemicals, food, drugs and agrochemicals. This ordinance was later replaced by the Patents (Amendment) Act, 2005 on 4 April, 2005 which is in force now having effect from 1 January, 2005.

5.3.1  Patents Rules Under the terms of Section 159 of the Patents Act, 1970, the Central Government is empowered to lay down rules to enforce the act and control the administration of patents. Accordingly, from 20.4.1972 the Patents Rules of 1972 were notified and put into effect. These Regulations were revised from time

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to time until 20 May 2003 with the entry into force of new Patent Regulations 2003 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 were made effective from 5 May, 2006. There are four schedules to the Patents (Amendment) Rules, 2005: 1. The first schedule prescribes the fees to be paid. 2. The second schedule specifies the list of forms and the texts of various forms required in connection with various activities under the patents act. These forms are to be used wherever required and if needed, they can be modified with the consent of the controller. 3. The third schedule prescribes a form of patent to be issued on grant of the patent. 4. The fourth schedule prescribes costs to be awarded in various proceedings before the controller under the act.

5.3.2  Salient Features of Indian Patent Act, 1970 1. A patent is an exclusive right issued to the owner of an invention by a country to produce, use, manufacture and sell the invention, provided that the invention meets certain requirements laid down by law. 2. Exclusivity of right means that no one else can make, use, create or sell the invention without the patent holder’s permission. The right is only available for a limited time span. Nevertheless, other laws of the country which granted the patent affect the use or use of a patent. 3. Such laws may apply to health, safety, food, safety, etc. Additionally, existing patents can also come in the way in a specific field. A patent is a property right in the law, and can therefore be gifted, inherited, assigned, sold or licensed. 4. Since the right is granted by the state, the state may revoke it in very specific circumstances, even if the patent has been sold or approved or manufactured. 5. The patent right is of a territorial nature and inventors/their delegates may have to file separate patent applications in countries of their interest, along with the fees required to secure patents in those countries. A patent is an official document issued by the government to an inventor that allows him to exclude anyone else from commercial exploitation of his invention for a limited period of time of 20 years at present. 6. According to the Supreme Court, the purpose of patent law is to promote scientific research, new technology and industrial advancement. Granting exclusive rights to possess use or sell the process or product patented for a limited period of time, encourages new commercial utility developments. The price of the monopoly award is the declaration of the invention to the patent office; which, after the expiry of the fixed period of the monopoly, passes into the public domain. 7. By granting an exclusive right, patents provide individuals with opportunities and give them recognition of their creativity and material compensation for marketable innovations. The inventor needs to properly reveal the patented invention to the public in exchange for the exclusive right, so that others can obtain the new knowledge and further improve the technology. The disclosure of the invention is thus an essential consideration in any patent granting procedure.

5.4

Patent Drafting and Its Components

A patent applicant memorizes the agreement which results in the issuance of a patent between the inventor and the government bureau. Consequently, a patent application is like a contract in many

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respects. It is important to write a high-quality patent application, because it sets out clearly the terms by which the patent owner and others will be bound. Drafting a patent application in that sense is different from writing a scientific paper. Since the patent document includes technical subject-matter, it also has some similarities with a scientific or technical paper, although it does not usually need to rise to the level of a blueprint for making the invention protected by the patent. Government authorities such as patent examiners and judges, as well as business associates, will review the granted patent over the years. Therefore, the patent application should be drafted with these important audiences in mind. The parts of the patent application typically include the background, summary, detailed description and drawings, claims and abstract. The patent agent is unlikely to draft the patent application in this order and should ordinarily draft the claims first. This is because the claims are the heart of a patent. In reading a patent application, 1. Background section sets the stage for what is to come; 2. Summary section mirrors the claims; 3. Detailed description and drawings enable the claims by providing a sufficient technical disclosure of the invention; 4. Claims define the scope of exclusive protection and 5. Abstract is primarily an aid for patent searchers and normally receives very little substantive review.

5.4.1  Typical Components of Patent Drafting 1. Claims: One of the first things to do is plan for the invention’s claims. The claims are the legal part of a patent application; all concerns the claims. 2. Detailed description or specification: The detailed summary section, often referred to as the ‘preferred embodiment of invention’ section, or the ‘disclosed embodiment of invention’ section, breathes life into the claims and provides a sufficient explanation of the invention for a common person skilled in the art to create and comprehend the invention. In some jurisdictions, apart from the explanation and context parts of the application, the term ‘specification’ is also used to refer to the description; it is enough to assume that ‘detailed description’ and ‘specification’ are essentially the same for patent drafting purposes. 3. Drawings: The drawings after the claims represent the most important aspect of the patent application. Some patent laws require that a drawing shows every claimed element. Wherever possible, the drawings should explain the invention in sufficient detail that reading the section on the detailed description merely confirms the information given in the drawings in words. For all the inventions, it would not be necessary. 4. Background: In some patent systems the background section serves to reveal to the public the closest prior art applied during examination against the patent application. Typically, the background section is considered by the inventor as disclosed prior art. Therefore, if the applicant’s own inventive disclosure ends in the background section, the patent examiner may invoke this section in the refusal of the applicant’s claims. Many patent offices’ take a quite tough line on innovative declarations in context pages, which is one of the reasons why patents should be carefully drafted. If the patent ever engages in litigation, they are likely to be subject to even greater scrutiny than they did during the initial prosecution.

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5. Abstract: The abstract of the patent should very clearly describe the invention in the fewest words possible. The patent could use as the abstract a version of the first paragraph of the section summing up the invention. 6. Summary: The final portion of the patent drafting process is summary. When planning the description of the parts of the invention, one should avoid presenting any form of “big picture” overview, which in some way goes beyond the claims. There are also drawbacks to presenting such a summary.

5.4.2  Drafting of a Patent 1. First step: Information/document required from inventor, invention disclosure form which should include all information. 2. Second step: Prepare strategy for drafting and figure out the relevant method of drafting such problem-solution, could-would, teaching suggestion motivation, etc. 3. Third step: Confirm your understanding with the inventor. 4. Fourth step: Prepare claims of the specification and confirm the scope and technical disclosure with inventors. 5. Fifth step: Draft the description, abstract, drawing(s) of the specification. 6. Sixth step: Share the full petition with the inventor to confirm. 7. Seventh step: File a patent application based on the drafted patent specification.

5.5

Procedure of Granting Patents

The steps followed in granting patents are discussed

5.5.1  Grant of Patents 1. Where it has been found that a patent application is for grant, and either (a) the controller has not refused the application by virtue of any authority vested upon him under this act or (b) the application was not found to contravene any of the provisions of this act; the patent shall be granted as quickly as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted. 2. If the patent is granted, the controller shall announce the fact that the patent has been issued, and then the submission, specification and other relevant documents shall be available for public inspection. 5.5.2  Amendment of Patent Granted to Deceased Applicants Where the controller is satisfied at any time after a patent has been granted pertaining to an application under this act that the person to whom the patent was granted had died or had ceased to exist in the case of a corporate entity before the patent was granted, the controller may amend the patent by substituting for the name of that person the name of the person to whom the patent was to be granted, and the patent shall have effect and shall, accordingly, always be deemed to have had effect.

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5.5.3  Date of Patent 1. Subject to the other provisions contained in this act, every patent shall be dated as of the date on which the application for patent was filed. 2. The date of every patent shall be entered in the register. 3. Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before the date of publication of the application. 5.5.4  Form, Extent and Effect of Patent 1. All patents shall be in the prescribed form and shall have effect in all of India. 2. For one invention, only one patent shall be granted: provided that it is not competent for any person in a suit or other proceeding to object to a patent on the ground that it was granted for more than one invention. 5.5.5  Grant of Patents to be Subject to Certain Conditions The grant of a patent under this act shall be subject to the following conditions: 1. Any machine, apparatus or other article in respect of which the patent is granted or any article made using a process in respect of which the patent is granted may be imported or made for the sole purpose of its own use by or on behalf of the government. 2. Any process for which the patent is granted may be used, for the sole purpose of its own use, by or on behalf of the government. 3. Any machine, device or other article in respect of which the patent is granted, or any article in respect of which the method in respect of which the patent is granted is used, may be used or rendered and any method in respect of which the patent is granted may be used by any person solely for the purpose of experimentation or study, including instruction to pupils. 4. In the case of a patent for any medicinal product or drug, the medicinal product or drug may be imported by the government for the sole purpose of its own use or for distribution to any dispensary, hospital or other medical establishment maintained by or on behalf of the government or any other dispensary, hospital or medical institution renders, specify in this behalf by notification in the official gazette.

5.6

Rights and Liabilities of Patentees

The rights and liabilities of a patentee are discussed in this section.

5.6.1  Rights of a Patentee Subject to the other provisions of this Act and the conditions laid down in Section 47, the patent granted under this act shall be conferred on the patentee 1. where the subject matter of the patent is a product, the exclusive right to prohibit third parties not consenting to the manufacture, use, offer for sale, distribution or import of that product in India for those purposes;

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2. where the subject matter of the patent is a process, the exclusive right to prohibit third parties who do not have his permission from using that process and from using, offering for sale, selling or importing the product directly produced by that process in India for those purposes. Patent rights that are not infringed when used on foreign vessels, etc., temporarily or accidentally, in India 1. where a vessel or aircraft registered in a foreign country or a land vehicle owned by a person ordinarily residing in that country only arrives temporarily or accidentally in India (including its territorial waters), the rights conferred for an invention by a patent shall not be deemed to be infringed by the use of the invention (a) in the vessel’s body or in its machinery, tackle, equipment or other devices insofar as the technology is used on board the vessel and exclusively for its specific needs; (b) in the construction or operation, as the case may be, of an aircraft or a land vehicle, or of its accessories. 2. where this section shall not extend to vessels, aircraft or ground vehicles owned by persons ordinarily residing in a foreign country whose laws do not confer corresponding rights with regard to the use of inventions in vessels, aircraft or ground vehicles owned by persons ordinarily residing in India, in ports or in the territorial waters of that foreign country or otherwise within that country’s jurisdiction.

5.6.2  Rights of Co-Owners of Patents 1. Where a patent is granted to two or more persons, each of those persons shall be entitled to an equal undivided share of the patent, except where an agreement to the contrary is in force. 2. Subject to the provisions contained in this section and in Section 51, if two or more persons are registered as the grantor or proprietor of a patent, each of those persons shall be entitled, by himself or his agents, to the rights granted by Section 48 for his own gain without accounting to the other person or persons, unless such agreement is in force. 3. Subject to the provisions contained in this section and in Section 51 and to any agreement in effect for the time being where two or more persons are registered as patent proprietors or patent proprietors, a license under the patent shall not be granted and a share in the patent shall not be allocated by one of those persons except with the consent of the other person or persons. 4. Where one of two or more persons registered as the grantor or proprietor of a patent sells a patented article, the purchaser and any person claiming through him shall be entitled to deal with the article in the same manner as if the article had been sold by a sole patent proprietor. 5. Subject to the provisions of this section, the principles of law applicable to the possession and transfer of mobile property usually apply to patents; and nothing in Subsection (1) or Subsection (2) affects the shared rights or obligations of trustees or legal representatives of the deceased or their rights or obligations as such. 6. Nothing in this section shall affect the rights of the assignees of a partial interest in a patent created before the commencement of this act. 5.6.3  Power of Controller to Give Directions to Co-Owners 1. Where two or more persons are registered as the grantor or the proprietor of a patent, the controller may, upon application by any of those persons in the prescribed manner, give such directions

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as to the sale or lease of the patent or any interest therein, the grant of licenses under the patent or the exercise of any right under section 50 in connection with it thereto, as he thinks fit. 2. If, within 14 days of being requested in writing by any of the other persons so registered, any person registered as the grantor or proprietor of a patent fails to execute any instrument or to do any other thing required for the execution of any direction given under this section, the controller may, upon application by any such person in the prescribed manner, do so give instructions for any person to execute or do that in the name and on behalf of the default person. 3. The Controller shall give an opportunity to be heard before giving any direction to pursue an application under this section (a) in the case of an application referred to in Subsection (1) to the other person or persons identified as the patent proprietor or the grantor; (b) in the case of a request referred to in Subsection (2), to the default individual. 4. Under this section, no direction shall be given to affect the shared rights or obligations of trustees or legal representatives of a deceased person or of their rights or obligations as such, or to be incompatible with the terms of any arrangement between persons registered as the grantor or patent proprietor.

5.7

Restoration of Lapsed Patents

Restoring lapsed patents can be done with certain steps which is discussed in this section.

5.7.1  Applications for Restorations of Lapsed Patents 1. Where a patent has ceased to be effective on the grounds of failure to pay any renewal fee within the period prescribed by section 53 or within the period permitted under section 142 of Subsection (4), the patent proprietor or his legal representative and the patent has been held jointly by two or more persons may, with the controller’s leave, have one or more of them without joining the others, may apply for restorations of the patent within 18 months of the date on which the patent ceased to come into force. 2. An application shall be subject to this section shall contain a statement, verified in the manner prescribed, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the controller may require further evidence from the applicant as he may deem necessary. 5.7.2  Procedure for Disposal of Applications for Restoration of Lapsed Patents 1. Unless, after hearing the applicant in cases where the applicant so wishes or the controller finds it reasonable, the controller is prima facie satisfied that the failure to pay the renewal fee was accidental and that there was no unreasonable delay in submitting the application, the controller shall publish the application as prescribed. Any person may, within the prescribed period, notify the controller of the opposition on either or both of the grounds (a) that either the non-payment of the renewal fee was not accidental or (b) an unnecessary delay in filing the application occurred. 2. If notice of opposition is issued within the aforementioned period, the controller shall notify the applicant and give him and the opponent the opportunity to be heard before deciding the case.

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3. If no notice of opposition is given during the specified time or if, in the case of opposition, the controller’s decision is in support of the applicant, the controller shall, upon payment of any unpaid renewal fee and any additional fee as may be prescribed, restore the patent and any additional patent specified in the application that has ceased to have effect on the terminator of the patent application. 4. The controller may, if it considers fit as a condition for the restoration of the patent, require that any document or matter which is to be entered in the register under the provisions of this act but which has not been entered in that way be entered in the register.

5.7.3  Rights of Patentees of Restored Lapsed-Patents 1. Where a patent is restored, the rights of the patentee shall be subject to such provisions as may be prescribed and to such other provisions as the controller considers fit to impose for the protection or compensation of persons who, by contract or otherwise, may have begun to avail themselves of, or have taken definite steps, the patented invention occurs between the date on which the patent ceased to take effect and the date on which the patent was issued. 2. No suit or other proceeding shall be initiated or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to come into force and the date on which the patent application was published for restoration.

5.8

Surrender and Revocation of Patents

Steps followed in surrendering the patents and revocation of patents are discussed in this section.

5.8.1  Surrender of Patents 1. A patent proprietor may agree to surrender his patent at any time by giving notice to the controller in the prescribed manner. 2. When such an offer is made, the controller shall publish the offer in the manner specified and notify any person other than the patent proprietor whose name appears in the register as having an interest in the patent as well. 3. Any interested individual may notify the controller of opposition to the surrender within the specified time after such surrender, and where such notice is given the controller shall notify the patentee. 4. If, after hearing the patentee and any opponent, the controller is satisfied that the patent may be properly surrendered, he may accept the offer and revoke the patent by order. 5.8.2  Revocation of Patents 1. Subject to the provisions of this act, a patent, whether granted before or after the beginning of this act, may be revoked by the Appellate Board at the request of any interested person or of the Central Government or at the request of the High Court for infringement of the patent on any of the following grounds (a) that the invention was claimed in a legitimate claim of an earlier priority date found in the complete specification of another patent issued in India, in so far as it was stated in any claim of a complete specification;

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(b) that the patent was granted in respect of a person not entitled to apply under the provisions of this act; (c) that the patent was improperly obtained in contravention of the rights of the petitioner or of any person under or by whom he claims; (d) that any argument relating to the complete specification is not an invention within the scope of this act; (e) that the invention as claimed in any claim of the complete specification is not new in view of what was publicly known or publicly used in India prior to the priority date of the claim or what was published in India or elsewhere in any of the claims, (f ) that the invention as stated in any claim of the complete specification is obvious or involves no inventive move, having regard to what was already known or used in India or published in India or elsewhere prior to the priority date of the claim; (g) that the invention, so far as claimed in any claim of the complete specification, is not useful; (h) that the complete specification does not define properly and reasonably the invention and the process by which it is to be carried out, that is to say, that the description of the method or instructions for the operation of the invention as contained in the complete specification alone is not sufficient to allow a person in India with average knowledge of the art to which the invention relates to the operation of the invention, or that it does not disclose the best method of executing the patent known to the applicant and for which he had the right to claim protection; (i) that the scope of any claim of the complete specification is not adequately and clearly specified or that any claim of the full specification is not reasonably based on the matter stated in the specification; (j) that the patent was gained on the basis of a false claim or representation; (k) the subject-matter of any claim of a complete specification is not patentable under this act; (l) that the invention to the extent claimed in any claim of the complete specification was used secretly in India, other than as referred to in Subsection (3), before the priority date of the claim; (m) that the applicant for a patent has failed to disclose to the controller the information needed by Section 8 or has given information which was false to his knowledge in any particular material; (n) that the applicant contravened any direction of confidentiality passed under Section 35 or made or induced a request for the grant of a patent outside India in violation of Section 39; (o) that leave to amend the complete specification pursuant to Section 57 or Section 58 has been obtained by fraud; (p) that the complete specification does not disclose or incorrectly indicate the source or geographical origin of the biological material used in the invention; (q) that the invention to the extent claimed in any claim of a complete specification was anticipated in view of the knowledge available, orally or otherwise, within any local or indigenous community in India or anywhere else. 2. For the purposes of Clauses (e) and (f ) of Subsection (1), (a) no personal document or secret trial or any secret use shall be taken into account; and (b) where a patent is for a process or a product as a result of a process defined or claimed, the importation of a product made abroad by that process into India shall constitute the

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knowledge or use of the invention on the date of importation, except where that importation was for the purpose of fair testing or experimentation only. 3. For the purpose of Clause (1) of Subsection (1), no account shall be taken of any use of the invention (a) for reasonable trial or experiment purposes only or (b) by the government or by any person authorized by the government or by a government undertaking as a result of the patent applicant or any person from whom it derives its title having communicated or disclosed the invention directly or indirectly to the government or authorized person or to the government undertaking referred to above or (c) any other person who has conveyed or revealed the invention as a consequence of the patent applicant or any person from whom it derives its title and without the permission or approval of the applicant or any person from whom it derives its title. 4. Without prejudice to the provisions of Subsection (1), a patent may be revoked by the High Court on a Central Government petition if the High Court is satisfied that the patentee has failed to comply with the Central Government’s request to make, use or exercise the patented invention for the purposes of the Government without fair cause, within the meaning of Section 99 upon reasonable terms. 5. Every request for revocation of a patent under this section shall be notified to all persons appearing in the register to be the proprietors of that patent or to have shares or interests therein and no other person shall be notified. Revocation of patent or amendment of complete specification on directions from the government in cases relating to atomic energy is listed in the following: 1. Where, at any time after the grant of a patent, the Central Government is satisfied that a patent is for an invention relating to atomic energy for which no patent may be granted pursuant to Subsection (1) of Section 20 of the Atomic Energy Act, 1962 (33 of 1962), it may direct the controller to revoke the patent and the controller, after notification, to the patent proprietor and to any other person whom the patent is granted. 2. Under any proceedings pursuant to Subsection (1), the controller may require the patentee  to amend the complete specification in such a manner as he considers appropriate rather than revoking the patent.

5.8.3  Revocation of Patent in Public Interest Where the Central Government is of the opinion that a patent or manner in which it is exercised is mischievous to the state or generally prejudicial to the public, it may, after giving the patentee the opportunity to be heard, make a declaration to that effect in the official gazette and the patent shall be deemed to be revoked thereupon.

5.9

Patent Infringement: Remedies

A patent proprietor is entitled to exclude all others from using the patented invention, and anyone who practices the invention without the consent of the proprietor infringes his rights. By following exactly the details as revealed in a patent, you would infringe a patent unless what you are doing is exempted as an experimental or research use. However, copying from a patent is not the only way a business can

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Features a+b+c+d Invention A

Features a+b+c+d+e Invention B

You infringe my patent

Patent Owner

Infringer

A prohibited space defined by one of the claims in a patent

Figure 5.2  Patent infringement. (Courtesy: WIPO archives.) breach a patent. Indeed, whether you have knowingly or unknowingly incorporated a patented invention or have practiced or incorporated an invention that is sufficiently similar to a patented invention, you may also be considered a patent infringement. A patent proprietor will legally prohibit the use of the patent by your company and even sue for damages. For certain cases, an injunction can be just as costly as or more costly than the future penalties that a court may in due course incur. This can occur when you have a large inventory to remove and the retooling costs to change your manufacturing process. Technically speaking, infringement of the patent means that others have entered a prohibited space that is defined by one of the claims in your patent. As discussed above, a patent grants its owner the right to prevent or prevent others from making, using, selling or importing the patented product without the authorisation of the owner for a period of 20 years calculated from the date of filing of the earliest relevant product/patent application. Hence, in a patent, the original patent owner or his assignee may enforce his right. If a product in question has or executes physically all of the elements contained in the broadest claim of your patent, it would infringe your patent and you could take legal action against its manufacturer or distributor or retailer. Let us discuss an easy case. If the accused invention has all the elements of the patent claims, it falls within the scope of the infringement. Since the elements described in the claims are organically combined, where some of the elements of the claims are missing in the accused invention, the infringement is basically not recognized. Example: Let us suppose that your patented product is A and your competitor’s product is B, and a, b, c and d indicate the elements of a patented claim. Refer to Fig. 5.2. 1. Case 1: As shown in Fig. 5.3, Product A has features covered by a claim having elements a + b + c + d. Product B has features covered by elements a + b + c. In this case, product B does not infringe A because B does not include element d of the claim of the patent covering product A.

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5.9 Patent Infringement: Remedies

A patented claim A=a+b+c+d

An accused product B=a+b+c

Figure 5.3  Case 1 of patent infringement example. 2. Case 2: As shown in Fig. 5.4, product A has features covered by a claim having elements a + b + c + d. Product B has features covered by the elements a + b + c + d + e. In this case, product B would infringe patent covering product A because B has features that are covered by all the elements of the patent protecting product A, even though it has an additional element e.

An accused product B=a+b+c+d+e

A patented claim A=a+b+c+d

Figure 5.4  Case 2 of patent infringement example.

5.9.1  Remedies in the Case of Infringement In the case of an Indian patent infringement, the patent proprietor may file a complaint before the appropriate court, which may be a District Court or a High Court. In the event that a patent infringement suit is filed in a district court and a defendant files a counterclaim, the infringement suit is transferred to a High Court. The plaintiff may seek injunction and damages in the infringement suit, or order an account for profits from the potential infringer of the patent. Where the defendant proves that he was not aware of the patent at the time of the infringement and had no reasonable grounds to believe that it existed, an order for damages or a profit account is not granted.

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Hence, the patentee should take steps to communicate that his product or process is patented to the general public. In an infringement suit it is possible to seize, surrender or destroy the infringing products, supplies, and equipment used for their production. The courts may appoint someone or, at the request of a party to the suit, scientific advisors to assist the court or to send a report on a particular question. In the case of patent infringement, the patents act does not allow for civil proceedings. The remedies that a patent owner needs to take include the following: 1. Injunction: The most useful and commonly used preliminary remedy is the injunction, the principal object of which is generally defined as maintaining the status quo before the main case is heard. Although maintaining the status quo as it was when applying is usually the most reasonable order, this is not the main concern of the interlocutory injunction. A court order that allows any person to cease to do any act. An injunction can mean for a company an order to stop selling its product that is deemed to be infringing. 2. Damages: Damages are typically based on lost profits or royalties, but in no event are they less than a reasonable royalty for the use of the patented invention by the infringers.

5.10 Patent Litigation One important feature of the patent system is the power of patent rights holders to enforce their intangible property rights when those rights are infringed. If right holders are unable to enforce their patent rights the value of patents will decrease. Patent disputes have generated news headlines over the last decade and attracted considerable attention from both practitioners and policy-makers. This is due in part to widely publicized, protracted litigation among well-known technology firms; most notably litigation involving Apple, Huawei, Samsung and Qualcomm. For example, Apple and Samsung had settled their patent disputes in 2018 after 7 years of litigation. The main purpose of patent litigation is to allow patent proprietors to enforce their claims against alleged infringers. As in any type of litigation, the judicial system deals with disputes that cannot be settled out-of-court by the parties and that thus require adjudication. Although the structure of the patent litigation in court is similar across jurisdictions, there are nevertheless some important differences. One of the major differences between the different jurisdictions of patent litigation systems is whether they follow a unified or a bifurcated system. In a unified system, infringement and invalidity are dealt with in the same proceedings, where invalidity is usually raised by the complainant as a defence against the complainant’s infringement claim. The judge will simultaneously assess both claims which imply that a patent found to be invalid cannot be infringed. 1. In a bifurcated system, separate infringement and invalidity proceedings are held at different venues. In this scheme, invalidity is usually not an admissible defence to a lawsuit for an infringement. The defendant must rely on a case against non-infringement when at the qualified court possibly attempting to invalidate the patent in turn. Since the issue of validity directly affects the infringement proceedings, the courts have the option to stay the infringement proceedings until validity is decided. 2. Patent litigation is complex and expensive and it could take years to resolve. The decision to enforce or challenge a patent is an important one and has to take into account the overall business objectives and strategies of the company. A company wishing to enforce a patent should consider a number of issues in addition to whether there is an infringement, including the nature of the remedies available for the infringement, the costs of pursuing the infringement versus the costs of not

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5.11 Patent Publication, Time Frame and Cost

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pursuing the infringement and the possible counterclaims that could be raised by the defendant. A company facing a potential patent lawsuit has a similar list of issues that need to be considered when determining how to respond to that claim. Either way, early participation of patent litigation counsel is essential for informed decision-making.

5.11 Patent Publication, Time Frame and Cost Further significant elements such as patent publication, time frame and cost regarding a patent are discussed in this section.

5.11.1  Publication of Patent Application 1. A patent application shall not be available to the public before the expiry of 18 months from the filing date or the priority date, whichever is earlier. 2. The application is published in the official journal at the end of the period as indicated in (a) above, except in cases where: (a) Secrecy direction u/s 35 is in force. (b) Application is abandoned u/s 9(1) (i.e., complete specification not filed within 12 months from the date of filing of provisional specification). (c) Application is withdrawn 3 months prior to the due date of publication, that is, before the end of 15th month from the date of filing or priority, whichever is earlier. 3. The Patent Office publishes applications in the official e-Journal, usually within a month from the date of expiry of the contract as stated in item (a) mentioned above in this list. 4. Where a direction of secrecy has been given, the application shall be published after the expiry of the period referred to the item (a) mentioned above or when the direction of secrecy has ceased to operate, whichever is later. 5. The publication of the application pursuant to Subsections (2) and (5) of Section 11(A) shall be identified by the letter A along with the application number.

5.11.2  Early Publication 1. An application for early publication with the required fee can be made in Form 9. 2. Such a request shall only be considered if the complete specification has been filed in the immediate case. 3. Furthermore, a patent application shall not be considered for early publication if an invention relates to matters relevant for the purpose of defence. 4. The application shall be released within a month of the date of such request. 5.11.3  Particular of Patent Publication The Journal of the Patent Office is published on every Friday with the following application details: 1. Application number. 2. Country. 3. Date of filing.

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Publication date. Title of invention. International patent classification. Priority details such as priority document number, priority date, priority country, international application number and filing date, etc. Name and address of the applicant. Name of the inventor(s). Reference in respect of patent of addition shall be the application number and filing date of the main application. Reference in respect of divisional application shall be the application number and filing date of the first mentioned application. Abstract. Number of pages. Number of claims.

5.11.4  Effects of Patent Publication 1. Upon publication, the Patent Office shall make available to the public on its website the specification (complete as well as provisional, if any), abstracts, drawings and any other documents submitted in connection with the application, and copies thereof, upon payment of the specified fee as set out in the First Schedule of Patent Rules, 2003 (as amended), where such a request is filed. 2. Upon publication of the patent application, the depositary institution shall make available to the public the biological material referred to in the specification. 3. The applicant shall have the same privileges and rights as if a patent for the invention had been granted on the date of publication of the application and from the date of publication of the patent application and until the date of grant of the patent in respect of that application. Provided that the applicant has no right to initiate any infringement proceedings until the patent is granted. 4. No patent shall be issued before the date of publication of the application expires within 6 months. 5.11.5  Term of Patent The term of the patent shall be 20 years from the date of filing of the application for all the patents, including those for which the term had not expired on 20 May, 2003, when the 2002 Patent (Amendment) Act came into force, provided that the renewal fee is paid annually before the due date or during the extended period (maximum 6 months). 5.11.6 Fees 1. Fees as may be prescribed by the central government shall be paid in respect of the grant of patents and applications therefor and in respect of other matters relating to the grant of patents under this act. 2. Where a fee is payable by the controller in respect of the carrying out of an act, the controller shall not do so until the fee is paid. 3. Where a fee is payable for filing a document at the patent office, the fee shall be paid in conjunction with the document or within the prescribed time and the document shall be deemed not to have been filed at the office if the fee has not been paid in that time.

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5.12 Patent Licensing

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4. Where a principal patent is issued no later than 2 years from the date of filing of the application, fees due in the meantime may be charged within a period of 3 months from the date of registration of the patent in the registry or no later than 9 months from the date of registration.

5.11.7  Duration of Patents Section 53 provides that the term of each patent granted after the beginning of the Patents (Amendment) Act, 2002 and the term of each patent which has not expired and which has not ceased to have effect on the date of such commencement shall be 20 years from the date of filing of the patent application. Explanation to Section 53(1) clarifies that the patent term for international applications filed under the PCT designating India is 20 years from the foreign filing date issued under the Patent Cooperation Treaty. A patent shall cease to have effect upon the expiry of the period prescribed for the payment of any renewal fee, unless that fee is paid within the specified period or within the extended period specified for. Further on the cessation of the patent right due to the non-payment of the renewal fee or the expiry of the patent term, no protection shall be granted to the subject-matter covered by said patent. Rule 80 requires that, in order to maintain a patent in force, the renewal fees set out in the first schedule should be paid at the expiry of the second year from the date of the patent or any subsequent year, and the same fees should be remitted to the patent office before the expiry of the second or subsequent year. Sub-rule (1A) introduced by Patents (Amendment) Regulations, 2005 specifies that the period for payment of renewal fees may be extended to no more than 6 months if the request for such extension of time is made in Form 4 with the fee set out in the First Schedule. While paying the renewal fee, it is required to quote the number and date of the patent in question and the year in respect of which the fee is paid. The annual renewal fees due for 2 years or more may be paid in advance.

5.12 Patent Licensing The compulsory licences are discussed in this section. The arrangements for compulsory licenses are made to avoid patent infringement as a monopoly and to provide a way for an interested person to use the invention commercially. According to Section 84, any interested person can, for any of the following purposes, apply for a compulsory license for a patent after 3 years from the date of approval of that patent on any of the following grounds: 1. that the reasonable requirements of the public with respect to the patented invention have not been satisfied or 2. that the patented invention is not available to the public at a reasonably affordable price or 3. that the patented invention does not work in the territory of India. An application for compulsory licence may be made by any person notwithstanding that he is already the holder of a licence under the patent and no person shall be stopped from alleging that the reasonable requirements of the public with respect to the patented invention are not satisfied or that the patented invention is not worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price by reason of any admission made by him, whether in such a licence or otherwise or by reason of his having accepted such a licence. Subsection (3) requires every application for compulsory licence to contain a statement setting out the nature of the applicant’s interest together with such particulars as may be prescribed and the facts upon which the application is based.

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In the event that the controller is satisfied that the fair requirements of the public regarding the patented invention have not been met or that the patented invention has not been worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price, it may issue a license on such terms as it may find necessary. In considering the application of compulsory licence, the controller is required to take into account the following items: 1. The nature of the invention, the time elapsed since the patent was sealed, and the measures already taken by the patent proprietor or by any licensee to make full use of the invention; 2. The applicant’s ability to work the invention to the public benefit; 3. The applicant’s willingness to take the risk in the procurement of resources and in the functioning of the innovation, if the request was granted; 4. Whether the applicant has made efforts to obtain a patent proprietor’s license on reasonable terms and conditions, and whether such efforts have not been successful within a reasonable period as the controller may deem appropriate. However, there is no obligation on the controller to take matters into account after the application has been made. It has been explained that the appropriate duration is to be defined as a duration not usually reaching a 6-month period. It has been clarified in this context that the reasonable public requirements are deemed not to have been met if 1. by reason of the refusal of the patentee to grant a licence or license on reasonable terms such as (a) an existing trade or industry or the development thereof or the establishment of any new trade or industry in India or the trade or industry in India or the trade or industry of any person or class of persons trading or manufacturing in India is prejudiced or (b) the demand for the patented article has not been met to an adequate extent or on reasonable terms or (c) a market for export of the patented article manufactured in India is not being supplied or developed or (d) the establishment or development of commercial activities in India is prejudiced. 2. The production, use or sale of materials not covered by the patent or the establishment or development of any trade or industry in India shall be prejudiced by the conditions placed by the patent proprietor on the grant of licenses under the patent or on the purchase, employ or use of the patented item or process or 3. The patent’s proprietor imposes a condition on the licensing of the patent to grant exclusive reimbursement, to prevent challenges to the validity of the patent or to obtain coercive package licensing or 4. The patented invention is not being practiced commercially in the territory of India or is not being practiced to the fullest degree that is fairly practicable; or 5. The commercial functioning of the patented invention in the territory of India is hindered or impeded by the import of the patented article from abroad (a) The patentee or persons claiming under him or (b) Persons directly or indirectly purchasing from him or (c) Other persons against whom the patentee is not taking or has not taken proceedings for infringement.

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5.13 Patent Databases and Patent Search with Important Websites

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5.13 Patent Databases and Patent Search with Important Websites Carrying out a patent search is an important step before filing a patent application. Even as businesses must practice due diligence before pursuing any business venture, patent proprietors must also take due diligence before filing a patent application. A patent quest is a quest carried out both in patent databases and in the available literature to verify if there is already an invention identical to the invention for which a patent is to be sought. In other words, it assesses the likelihood of the inventor winning a patent award. Thus, instead of continuing with the filing, if one performs the quest for patentability, one can get a good idea of the patentability of the invention; whether the application should be filed and the strengths and limitations of his invention. Before filing an application, it is advisable to perform a patentability quest, as patenting is an expensive method. Although there is an additional expense associated with carrying out a patent search, it could potentially save the inventor’s money down the road. Knowledge about patents is made accessible to the public through a number of repositories. Each database is composed of a specific set of patent documents. Currently no database has full coverage of all patent documents that have ever been published worldwide. Therefore, you may need to consult multiple databases to find and then access patent documents that are relevant to your interests. CD-ROM Information technology repositories allow patent data to be viewed on CD-ROM in text and image form. CD-ROM databases are ideal for documentary searches. Users do not need external connections, and can simply work with a CD-ROM driver plus a computer. However, CD-ROM databases do have some disadvantages. One problem is to update them. As online databases can be updated easily on a regular basis, CD-ROM information quickly becomes out of date, at least for certain types of analysis. The easy use of CD-ROM databases to compile statistical series is also an issue; therefore, they are still not suitable for statistical applications. Databases based on the Internet are online databases. Anyone who has access to the Internet can use free databases or commercial databases to browse the full text of published patent documents. Because access to such databases is not restricted across national borders, users around the world can easily access patent documents from an Internet-connected computer. Several national and regional patent offices also give free online access to their own collections of patents as well as selected patent documents from other offices.

5.13.1  Types of Search Using Patent Documentation In practice, there are various more or less typical reasons for conducting searches in patent document collections, each of which requires a slightly different approach to the search method used. Some search types are essentially concerned with technological information as such, while others are aimed at processing patent applications or are relevant to the legal state of a new technology. In general, inventor-led searches are not typically as rigorous as patent office searches by professionals. However, such insights into patent documents are often very useful for the inventor to determine whether a similar invention has already been patented or to obtain relevant information about other patents in the same category as his invention. Pre-Application Search (PAS) An invention is merely an idea, at first. Many specifics are not even recognised as related pieces, or remembered. The patent application process is difficult, time consuming and expensive; therefore, prior to filling out a patent application, the inventor should conduct a ‘pre-application search’ (PAS).

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In  this search the inventor should search for any printed publications, public knowledge or patents already issued in his or her country or a foreign country that may relate to the particular invention.

State-of-the-Art Search This type of search, also known as ‘informative search’, is conducted to determine the general state of the art for solving a particular technical problem as background information for R&D activities and to determine which patent publications already exist in the field of technology or research. Other reasons for conducting such a search may be the need to find new technologies that could substitute established technology or evaluate a particular technology that is being offered for licensing or considered for acquisition. State-of-the-art searches are particularly useful for purposes of technology development or technology transfer. Novelty Search The aim of a ‘novelty search’ is to determine the novelty or lack of novelty of the invention claimed in a patent application or patent already granted, or of an invention for which no request has yet been filed. The search is aimed at the discovery of relevant prior art. An early search for new patents is typically a disadvantage. Normally, the basic inventive ideas are formulated in such an unspecified manner that this broad description will be applied to many publications. Depending on the outcome of the search for novelty, the next decision will be whether the invention should be stopped or continued. If nothing relevant has been found, then it is easy and you should go ahead. When one or more relevant documents have been found, decision becomes more difficult. Most importantly, the search should be restricted to the correct area. This can be achieved by finding an appropriate position or places in the IPC for the search subject. Patentability or Validity Search A ‘patentability or validity search’ is conducted to locate documents relevant to the determination of novelty as well as other patentability criteria, such as the presence or absence of an inventive step (i.e., the alleged invention is or is not obvious) or the achievement of useful results or technical advances. This type of search should cover all the technical fields where material relevant to the invention may be present. Novelty and patentability searches are carried out mainly by the offices of industrial property during the examination of patent applications. Name Search These are searches to locate information about published patent documents involving specific companies or individuals, such as applicants, assigned parties, patent proprietors or inventors. Technological Activity Search They are to be interpreted as searches for the discovery of companies and/or inventors involved in a particular technical area. These searches are also suitable for identifying countries in which a certain technology is patented in order to find out where to go to obtain specific information in a given technology field. Infringement Search An ‘infringement hunt’ aims at finding patents and published patent applications that may be infringed by a given industrial operation. In this form of search, the purpose is to decide if an existing patent gives exclusive rights to that or any part of that industrial activity.

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5.14  Searching International Databases

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Patent Family Search This kind of search is carried out to identify a member of a ‘patent family’. Patent family searches are used to 1. 2. 3. 4.

find the countries in which a given patent application has been filed (if published); find a ‘patent family member’ that is written in a desired language; obtain a list of prior art documents or ‘references cited’; estimate the importance of the invention (by number of patent documents relating to the same invention and being published in different countries or by industrial property organisations).

Legal Status Search A request for this type of investigation is undertaken to obtain information on the validity (status) of a patent or a published patent application in compliance with applicable patent law in one or more countries on a given date. Such information can help; for example, in making decisions on exporting, or in negotiating license agreements. It can also give guidance on the value attached to a particular patent by the patentee.

5.14 Searching International Databases For example, the Full-Text and Full-Page Image Database of the United States Patent and Trademark Office (USPTO) is one of the earliest and free online patent information services. Another major online-free patent database is Espacenet, provided by the European Patent Organization through the European Patent Office (EPO) and the national offices of its member states. Espacenet offers free access to more than 80 million patent documents worldwide, containing information about inventions and technical developments from 1836 to today. An extensive list of national patent databases can be found at www.wipo.int/patentscope/endbsearch/national_databases.html. WIPO offers free online access to all international patent applications within the framework of the PCT and their related documents and patent collections from national and regional offices through its PATENTSCOPE search service (http://patentscope.wipo.int/search). International Patent Classification (IPC) is a hierarchical classification system used primarily to classify and search patent documents (patent applications, specifications of granted patents, utility models, etc.) according to the technical fields they pertain. It therefore serves as an instrument for an orderly arrangement of the patent documents, a basis for selective dissemination of information and a basis for investigating the state of the art in given fields of technology. IBM Intellectual Property Network (free searching and full text and front-page display), Intellectual Property Network (IPN) is a free IBM patent site provided by International Business Machines (IBM) Corporation. The database contains the following: 1. United States patents (US): From 1971 to present and updated weekly. 2. European patents applications (EP-A): From 1979 to present, updated weekly. 3. European patents issued (EP-B): From 1980 to present and updated weekly (front page and claims/full images). 4. WIPO PCT publications (WO): From 1990 to present and updated weekly (front page and claims/full images). 5. Patent Abstracts of Japan (JP): From 1976 to present and updated weekly (front page and claims/representative image).

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Chapter 5/Patent Filing and Patent Search

A number of commercial and non-profit providers also offer online databases of free patent information. Some commercial providers have established fee-paying value-added access services including translations of patent information and additional systematic classification; for example, by chemical structures and reactions or biological sequences. Additionally, there are professional search services that can conduct prior art searches on behalf of potential patent applicants and may be useful if an initial search does not yield desired results. While free online patent databases are available, and anyone can access such databases, it is still important that the task should be given to a person skilled in conducting searches. The reason for this is that patent searches involve tedious, repeated searches via various patent and non-patent literatures. An unqualified person will not be able to do justice to the vast amount of literature that needs to be searched. In addition, a professional person knows the value of patent claims. The claims of a patent are of paramount significance when there is a similar patent to your invention; in such a situation, to assess the degree of similarity between the two, one needs to examine the claims of the patent. In addition, a skilled person would be able to advise on the strength of your patent or on refining your patent so as not to breach other existing art.



Multiple Choice Questions

1. Patent filed is available for a limited time period of (a) 10 years (b) 20 years (c) 15 years (d) 25 years 2. Patent agents are required to submit documents by electronic transmission as well as original documents for patent drafting within (a) 10 days (b) 15 days (c) 20 days (d) 30 days 3. A party may seek a compulsory license, after _______ of the grant of a patent. (a) 2 years (b) 3 years (c) 4 years (d) 5 years 4. Patent can be infringed (a) directly. (b) indirectly. (c) both (a) and (b). (d) none of these.

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5. Indian patent system has (a) pre-grant opposition. (b) post-grant opposition. (c) both (a) and (b). (d) none of these. 6. Patent can be revoked in India. (a) Yes (b) No (c) Yes, in some cases. (d) Only after 20 years of grant. 7. Tools to search for a patent are (a) Google patents (b) PATENTSCOPE (c) The Lens (d) All of these 8. Which one of the following describes the nature of a patent in terms of property? (a) A patent is a form of intangible real property. (b) A patent is a form of personal property, being a thing in action. (c) A patent is a real chose in action. (d) A patent is a form of personal property but is not a thing in action.

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Frequently Asked Questions in Interviews

9. The first legislation in India relating to patents was enacted in (a) 1912 (b) 1856 (c) 1970 (d) 2007 10. The owner of a patent can grant licenses



Frequently Asked Questions in Interviews

1. How do you find out if your idea is already patented? Answer There are three steps to be completed to discover whether an idea is been patented already: (a) Go to the official website of the Patent and Trademark Office. (b) Use the ‘Full-Text and Image Database’ search to verify any present patent applications and pictures. (c) You can find filed applications and pictures for patents filed after 1975. 2. Give the format of a claim. Answer Each claim has the following three parts: (a) Preamble: This is what the invention is about; if the invention can be used for other purposes and not just the preferred purpose, then think about broadening the preamble. (b) Transitional phrase: It is relevant from an infringement point of view. There are two types:  Open = ‘comprising’ – used 99% of the time.  Closed = ‘consisting’ – rarely used. (c) Body: The body follows the transitional phrase.  It is usually a list of features of the invention glued together with words to make it one sentence.

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(a) only to registered companies. (b) to anyone. (c) only to the governments. (d) to anyone, but only after taking permission from the Controller General of Patents, Designs and Trademarks.

 The body cannot be a list of parts. The relationship between parts must be explained. The structure of the body is dependent on the nature of the invention.  Usually the first feature in the body is the core of the product that other components depend on.  To be valid, an independent claim must include at least one novel and inventive feature or combination of features.  The claim does not need to recite all features of the product, only enough features to ensure that the novel features are put in context.  The preamble is the statement of the prior art, the transition is a phrase such as ‘characterized by’ and the body provides the novelty. 3. List the objectives of patent claims. Answer The patent claim is the most important part of the patent because it describes patent holder’s legal rights. The objectives of patent claims are listed as follows: (a) To define clearly and precisely, the exclusive right (monopoly) required, (b) To define the scope of the invention, (c) To define various necessary, preferred and optional features of the invention, (d) To limit and not to extend the monopoly being granted beyond this inventive field.

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118  • 4. List the grounds on which a party may seek for a compulsory license of a patent? Answer A party may seek a compulsory license, after 3 years of the grant of a patent, on any of the following grounds: (a) The reasonable requirements of the public with respect to the patented invention have not been met. (b) The patented invention has not been worked in the country. (c) The patented invention is not available to the public at a reasonably affordable price. Prior to applying for a compulsory license, the applicant must first seek a license from the patentee, and only if reasonable efforts to obtain a license fail can the applicant approach the controller for a compulsory license. 5. What do you mean by infringement of a process patent? Answer For a process patent, an unauthorized act of using that process, or using, offering for sale, selling or importing for those purposes, a product directly obtained from the patented process may constitute infringement of the patent. 6. What do you mean by infringement of a product patent? Answer For a product patent, an unauthorized act of making, using, selling, offering for sale or Importing for those purposes may constitute infringement of the patent. 7. Explain the Indian patenting process timeline with a neat diagram. Answer Steps to be followed for Indian patenting process timeline is listed in the following (the given figure depicts it clearly):

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Chapter 5/Patent Filing and Patent Search

Step 1:  Filing a patent application in the Indian Patent Office is the first step towards securing a patent to your invention in India. To file a patent application, a set of forms has to be submitted to the patent office. Step 2:  File an early publication request. Filing an early publication request is an optional step. This request is filed to have your patent application published early. Filing an early publication request helps in expediting the patent examination process. Step 3:  If you file an early publication request, then your patent application will be published by the IPO, generally, within 1  week from the date of receiving the request. Step 4:  If the early publication request is not filed, then the IPO publishes your patent application after 18 months from the priority date (priority date is the date of filing of the first patent application for your invention.) Step 5:  File a request for examination. This request can be filed within 48 months from the priority date. Note that the IPO will not examine your patent application, unless this request is filed. Hence, if you wish to expedite the patent process, early filing of the examination request is advised. Step 6:  Once the IPO receives your request for examination, the IPO puts your application in queue for examination. Subsequently, your patent application will be examined by the IPO. In light of the examination, if the IPO is of the opinion that your patent application satisfies all the requirements of patentability, then a patent is granted to your invention. Step 7:  On the other hand, after examining your application, if the IPO is of the opinion that the requirements of patentability are not met, then a First Examination Report (FER) is issued.

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Frequently Asked Questions in Interviews

Step 8:  You will have to respond to the FER within 6 months from the date of the FER. However, it is advisable to respond as early as possible. By responding early, you provide an opportunity to the IPO to issue another examination report if the IPO is not convinced by your response to issue a patent.

The issuance of subsequent examination reports by the IPO and responding to the same by the applicant can occur within 12 months from the date of the FER. Steps 9 and 10:  In light of the communication with the IPO, the IPO can either grant a patent or reject granting of a patent.

Establish priority date of the patent application

File patent application in India step 1

Request early pubilication (optional) step 2

18 months

48 months

YES Early publication requested? Publish patent application step 3

NO Publish patent application step 4

Request examination step 5

Examine patent application step 6

Is the patent application in order for grant? NO YES

Issue examination report step 7

Respond to examination report step 8

Patent granted step 9

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6 months

Patent not granted step 10

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120  • 8. Draft eight claims for a gel pen and title it. Answer (a) An aqueous gel ink-filled ball point pen in which the ball point pen having a ball with a diameter of 0.3 to 2.0 mm at a tip point thereof is charged with an aqueous gel ink having a viscosity ratio [a value of (viscosity at 10 rpm)/(viscosity at 50 rpm) measured by means of an e-type rotational viscometer] of 1.1 to 4.0 and an ink lay down value according to JIS Standard S6053 is controlled to 50 to 200 mg/100 m. (b) The aqueous gel ink-filled ball point pen charged with an aqueous gel ink as claimed in Claim 1, wherein said aqueous gel ink comprises an aqueous medium comprising a water-soluble organic solvent. (c) The aqueous gel ink-filled ball point pen charged with an aqueous gel ink as claimed in Claim 2, wherein said water soluble organic solvent comprises a compound selected from the group consisting of alkylene glycols, polyalkylene glycols, triols, glycerols, thiodiethanol, N-methyl2-pyrrolidone and 1,3-dimethyl-2- imidazolidinone. (d) The aqueous gel ink-filled ball point pen charged with an aqueous gel ink as claimed in Claim 3, wherein the watersoluble organic solvent comprises propylene glycol. (e) The aqueous gel ink-filled ball point pen charged with an aqueous gel ink as claimed in Claim 1, said aqueous gel ink further comprising a pseudo-plasticizer selected from natural resins consisting of xanthan gum, tamarind gum, carrageenan gum, tragacanth gum, locust bean gum, gum arabic, guar gum, curdlan, pectin, agar, gelatin, mannans, and cellulose, and from acrylic synthetic polymers, urethane synthetic polymers, smectite, and montmorillonite.

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(f ) The aqueous gel ink-filled ball point pen charged with an aqueous gel ink as claimed in Claim 5, wherein said pseudoplasticizer is a cellulose selected from the group consisting of methyl cellulose, ethyl cellulose and carboxymethyl cellulose. (g) The aqueous gel ink-filled ball point pen charged with an aqueous gel ink as claimed in Claim 6, wherein said cellulose is carboxymethyl cellulose. (h) The aqueous gel ink-filled ball point pen charged with an aqueous gel ink as claimed in Claim 5, wherein said resins are selected from the group consisting of carboxymethyl cellulose and xanthan gum. 9. What do you mean by patent infringement? Discuss the types of patent infringement? Answer The various types of patent infringement occur when a person or business uses parts of a patented idea, method, or device without permission. Patent infringement is also known as patent violation or even stolen ideas. It could involve either using or selling the patented invention or idea. Sometimes, the end-user is not even aware that he or she is using a patented item unlawfully. Other times, there are too many people using the item to sue all of them. Rather than suing end-users, it might be best to sue those who are knowingly trying to infringe on a patent. The following are the types of patent infringements: (a) Direct infringement: Making, using, selling, trying to sell, or importing something without obtaining a license from the patent holder is considered direct patent infringement. The offender must complete this act wilfully and within the national boundaries. (b) Indirect infringement: Indirect infringement includes contributory infringement and inducement to infringe a patent.

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Frequently Asked Questions in Interviews

Under these terms, even if a company is not the one that originally infringed on the patent, that company can still be held accountable for patent infringement. (c) Contributory infringement: This type of infringement involves the purchase or importation of a part that aids in creating a patented item. To prove contributory infringement, one must show that the component’s main use would be to create a patented item. A generic item that has other uses usually does not qualify in proving contributory infringement. (d) Induced infringement: This occurs when a person or company aids in patent infringement by providing components or helping to make a patented product. It occurs through offering instructions, preparing instructions, or licensing plans or processes. (e) Wilful infringement: This exists when a person demonstrates complete disregard for someone else’s patent. Wilful infringement is especially damaging to defendants in a civil suit. The penalties are much higher, and typically defendants must pay all attorneys and court costs if they are found guilty. (f ) Literal infringement: To prove literal infringement, there must be a direct correspondence between the infringing device or process and the patented device or process. (g) Doctrine of equivalents: Even if the device or method does not exactly infringe a patent, a judge might find in favour of the patent holder. If the device does basically the same thing and produces the same results, it could be an infringement. 10. Discuss the patent drafting procedure in detail? Answer Patent drafting is a process of writing a detailed application comprising patent

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•   121

description and claims. It is the very first step for patenting your invention. Typically, these validity challenges allege (a) an insufficient disclosure by the patent; (b) preclusion of the claims by the prior art; (c) some type of misconduct by the applicant during prosecution of the application before the PTO. All of these potential validity challenges must be kept in mind when drafting a patent application. The procedure undertaken to obtain a utility patent can be readily summarized: (1) Search prior art, (2) draft and file the application and (3) prosecute the patent application in the PTO. (a) Search prior art: A patent application should be drafted with an eye toward avoiding and distinguishing prior art. Anticipation and obviousness are the most common grounds for rejection of claims by the Patent Office. In deciding if a claim is obvious based upon prior art, a patent examiner must undertake an analysis of the following four factors:  the scope and content of the prior art;  differences between the claims and the prior art;  the level of ordinary skill in the pertinent art; and  secondary considerations of non-obviousness. In particular, the application, especially the claims, should distinguish the current invention from what is contained in prior art references. At the same time, the attorney should be trying to obtain for the client the broadest patent coverage available. (b) Draft and file the application: Drafting a patent application is a collaborative process between an attorney and the inventors. As an initial step, a patent attorney will have an inventor

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122  • complete an invention disclosure form. Once the initial information is provided to the attorney and the attorney has sufficient information to understand the invention, the attorney will typically begin drafting a patent application by drafting claims that set forth his or her understanding of the invention. Includes filing details such as name, place, sketches, drawings, abstracts etc.  First, the written description and the drawings must appropriately disclose whatever is described in the claims.  Secondly, for a patent to be valid it must teach (enable) others having reasonable skill in the relevant art how to make or use the invention.  Thirdly, the patent application must disclose the best mode for making or using the invention (c) Prosecuting the patent application: ‘Patent prosecution’ refers to a process of interaction between an applicant/ representative and a patent office with respect to the patent. Patent prosecution process involves a high level of negotiation with the patent office and therefore has high-impact value for the client. The preparation of responses during the prosecution phase requires an in-depth analysis of the invention along with the prior arts taking into consideration the patentability criterions. 11. Explain Indian perspective on patent licensing. Answer Patents are monopoly rights and intangible by nature. Section 48 of the Indian patents act, 1970 deals exclusively with the rights of patentees which prevents the third parties, who do not have the consent of the patentee,

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Chapter 5/Patent Filing and Patent Search

from the act of making, using, offering for sale, selling or importing for those purposes the patented product in India. In certain cases, the patentee may not have enough resources or technical know-how for carrying out one’s invention. In such cases licensing offers the patentee to authorize the person whom the license has been given to exercise the patent rights under certain circumstances. Licensing is considered as a lucrative way of raising finances. Licensing is also referred to as technology transfer. The terms and conditions for licensing may be followed as laid in the licensing agreement which should take into account the interest of both the parties. Advantages of a license (a) A doormat project may be converted into a revenue generating product. (b) Most of the licensee’s believe that it is more beneficial to have a license than to own a patent as they enjoy full commercial advantage of the patent. (c) An already generated product is available without an upfront investment. (d) Numerous distribution channels are available thus the targeted consumers are huge in number. (e) Enhanced product pipelines. (f ) With more licensees the better the competition. Disadvantages of a license (a) In case of an exclusive license the patent owner tends to lose the hold on one’s invention. (b) The chance of making the licensee a competitor is manifold. (c) As the product is sold under the licensee’s brand name, dilution of quality could be a major issue. (d) Sharing may also lead to conflict of interest between the licensee and the licensor.

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Frequently Asked Questions in Interviews

(e) L  icensing is accompanied by uncertainty as it involves two or more parties. (f ) Licensing may be broadly classified as exclusive, and non-exclusive. Exclusive licensing, literally, puts the licensee in the shoes of the patent owner. The licensee is entitled to exclude all other persons inclusive of the patentee from the right to use the invention. Upon grant of the exclusive license even the patentee cannot sell the goods in the territory where the licensee has acquired exclusive license. Non-exclusive license gives the same right to more than one licensee. This implies that one licensee may exploit the invention but along with him others who have been given the license for the same product may be eligible for equal exploitation. 12. Describe Indian patent litigation scenario in brief? Answer The recognition and enforcement of patent rights in India is principally governed by the Patents Act, 1970 and the rules issued under the act. The act has been amended several times. Court decisions: Court decisions are a relevant source of patent law in India. Indian courts also rely on decisions of both European and U.S. courts as sources of patent law. India is party to the following international treaties: (a) TRIPs, which India ratified in 1995. (b) WIPO Paris Convention for the Protection of Industrial Property 1883, which India ratified on 7 December, 1998. (c) Patent Cooperation Treaty 1970, which India ratified on 7 December, 1998. (d) Budapest Treaty on the International Recognition of the Deposit of Microorganisms, (e) Convention on Biological Diversity, 1992,

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•   123

(f ) W  ashington Treaty on Intellectual Property in Respect of Integrated Circuits, 1989. Parties who can sue for patent infringement: (a) Patent holder: The patent holder can bring an action for infringement. (b) Exclusive licensee: The rights of the exclusive licensee to sue for infringement are equivalent to that of the patent holder. The exclusive licensee must make the patent holder a party to the proceedings, either as a claimant or defendant. (c) Non-exclusive license: Under section 110 of the Patents Act, 1970, a licensee is entitled to put the patentee on notice of the infringement and call on him/her to start proceedings to prevent infringement. (d) Distributor: A distributor cannot sue for patent infringement in India, unless it is a patentee or an exclusive licensee. 13. Write short note on: Patent search databases. Answer A patent is an exclusive right granted by the government for an invention. It provides protection for the invention to the owner of the patent for a limited period which varies from country to country. Patent is also a property right granted to a person or legal entity (e.g., a corporation) by the Patent and Trademark Office. The right conferred is ‘the right to exclude others from making, using, offering for sale or selling’ the patented invention in any country or from importing the invention into the country. A patent search is a search of issued patents and published patent applications for inventions that might be considered important ‘prior art’ references when applying for a patent. The prior art is anything in the public domain, patented or not patented, that may determine whether an invention is novel or not.

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Patent Information is commonly not available in developing countries. There are significant obstacles to identifying the patent status of any particular product even in rich countries. There are many patents filed on various products. Patent applications may be easily searchable. Some patent databases are listed as follows: (a) Patent scope (WIPO). (b) EKASWA. (c) EPIDOS-INPADOC. (d) Canadian patents database (CIPO).



(e) Google patents. Despite the advantages of patent documents as an information source, they are still an underutilized information source for research and development, particularly in non-industry settings. During the last decade, commercialization of research and scholarly work in the sciences has been increasing significantly. Therefore, the library needs to adopt a more systematic approach to patent information support to the users.

Answer Key

Multiple Choice Questions 1. (a) 2. (b)

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3. (c) 4. (c)

5. (c) 6. (c)

7. (d) 8. (a)

9. (b) 10. (b)

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6

Copyright

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Outline the copyright law and rules in India. • Explain the procedure for registration of copyright in India.

6.1

• Describe copyright infringements. • Explain related or neighbouring rights.

Introduction

Copyright is one of many intellectual property rights, a term nowadays people are very much aware of. According to the handbook provided by the government, Hand Book of Copyright Law, the copyright is defined as follows: 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. In fact, 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. Simply put together, copyright is an ownership right given to the creator of literary, dramatic, musical and artistic work to protect the creator from the exploitation of the rights assigned to them. Copyright is a right that can be claimed as soon as it is created. Copyrights are meant to provide numerous rights to acknowledge to the creator the work of their intellectual input, but it also has an objective to disseminate the knowledge. Even though this protection began with the acknowledgement of rights of authors in their books, however, modern technology has significantly changed the idea of work and its mode of exploitation. The different types of work that can be copyrighted is explained in this chapter. It has been observed that exacting utilization of the fundamental protections of copyright tampers the economic and cultural development of society. This is why the copyright laws are instituted with fundamental special cases and restrictions to guarantee the equalization to be kept between the interests of the creators and of the community. India’s first copyright Act after independence was applicable from 21 January, 1958. Before 21 January, 1958 the Indian Copyright Act, 1914 was applicable for work created before Indian Copyright Regulations, 1957 was applicable.

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6.2

Chapter 6/Copyright

Copyright: An Overview

6.2.1  Features of Copyright Act, 1957 1. Authorship and ownership: One of the main and essential features of copyright is the authorship and ownership of copyright. There are different types of ownership for a work which is explained later. It empowers the author or owner of the copyright, to claim its authorship and ownership to its work. 2. Ownership rights: There are certain rights assigned to the author or owner of the copyrighted work. These rights may vary depending on the type of work of the author or owner. Every author and owner of the work can utilize these rights to claim their ownership on the work. They can even use a few ownership rights called economic rights to earn royalties. 3. International copyright: The purpose of copyright is to inspire the authors to create, claim and earn royalties from their work as well as to disseminate the knowledge. To spread this knowledge with a broad audience, India is a member of the Berne Convention. This helps Indian authors to claim their copyrights in a foreign country and even a foreign work will be protected as any other work. Note that this foreign country MUST be a member of Berne convention. 4. Duration of copyright: As said earlier, India is a member of the Berne Convention. According to the Berne Convention, the minimum duration of a copyright is 50 years after the death of the author. Thus, the duration of the copyrights in India is 60 years after the subsequent year of death of the author. 5. Assignment and license: A person can transfer ownership rights to someone else in return of royalty. In the assignment, an author can transfer ownership of the interested person, whereas, in license selected predefined rights can be accessed by the interested person. This is explained in detail later in this chapter. 6. Infringement: Infringement is a process of using any kind of copyrights without the copyright owner’s consent. The common slang for infringement is piracy. Due to infringement, creative people are not getting the financial earnings as they should. There are certain exceptions to the infringement mentioned in the act. 7. Related/neighbouring rights: These rights are not actually copyrights, but they revolve around the copyrighted work. The purpose of these rights is to protect such individuals or entities who legally contribute to providing work to the public. 6.2.2  Type of Work Applicable for Copyright According to the Section 13 of Copyright Act, 1957 all original literary, artistic, musical or dramatic, cinematograph and sound recording work applicable for copyright, even books, computer programmes are protected under this act as literary works. The ‘literary works’ also includes computer programmes, tables and compilations including computer  databases according to Section 2(O) of Copyright Act, 1957. However, commonly known facts, slogans, titles, names, ideas, concepts, methods, symbols and short phrases cannot be applied for copyright. The works like designs are not eligible for copyright act and are registered under a special act named the Designs Act, 2000. 6.2.3  Who Can Apply for Copyright? Regarding who can apply for copyright, only the author of a work or somebody who has acquired rights through the author can enrol for copyright. Even a minor can register for the copyright. If a work is created by more than one person, then they will become joint owners of the work. Even though it said

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•   127

that the creator or author of a work becomes the owner of a work, there is an exception in this rule. If an employee creates a work in the course and scope of employment, the employee becomes the owner of the copyright. This is called ‘work made for hire’.

6.2.4  Duration and Territory of Copyright Duration of the copyright depends on the type of work or author. For original literary, dramatic, musical and artistic works, the duration of copyright is the lifetime of the author of the copyright and 60 years from the year after the death of the author. Concerning the cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations, duration of copyright protection is for 60 years from the year after the work was first published. 6.2.5  Ownership Rights The copyright owner has been assigned several ownership rights. These rules are imposed so that the author can claim its rights over the work, avoid its misuse, have control over its usage and, if possible, earn from the work. Although, ‘fair use/fair dealing’ and ‘non-voluntary/compulsory license’ take some of the owner’s control over its work. This step is introduced so that an owner of the work cannot misuse the work and rights associated with it. This step also helps in disseminating the knowledge. To understand these rights easily, ownership rights are categorized first into 1. Economic rights: The rights that maintain the economic value of the work. 2. Moral rights: The rights protect the moral interest of the owner of the work.

Economic Rights Economic rights are those rights that give the author the benefit of their work and thus helping them earn financially. Section 14 of the Copyright Act, 1957 states economic rights that an owner of a work can use according to his work. It is an exclusive right of the owner whether to perform them or give an authority/prohibition to someone else to perform them. All economic rights of the owner of the work can be exercised according to the work they own. The copyright owner may allow or prohibit the acts of the work which are listed as follows: (1) Reproduction of the work, (2) distribution of duplicates of the work, (3) adaption and translation of the work and (4) public performance of the work. 1. Reproduction right: This right allows or prohibits copying or reproducing the work. It is one of the oldest and most fundamental rights. This right is included in almost all types of work that is described in the Copyright Act, though the terminology used is different and therefore changing the scope of the right. In the right to reproduction of literary work, storing the work in electronics form is also included. With the help of this right, the copyright owner can legally take action against the person reproducing the work. 2. Distribution right: This right allows the copyright owner to have control who can distribute the work. This right gives control to put off the copies on the owner’s work into the commercial market. The scope of right varies with the work with which it is associated. 3. Adaptation right: This right allows the copyright owner to decide if their work can be used as an adaptation and who can use it. This right plays an important role in the creative industry, as many creative works are an adaptation of someone else’s work. Example: A book turned into ballet or a play.

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Chapter 6/Copyright

4. Translation right: This right allows the copyright owner to have control over who can translate your work. A person who translated the work without the permission or license of the performing translation might face legal formality. The process for obtaining a license is given in Section 32 of the copyright act. 5. Right to communicate to the public: This right allows the copyright owner to have control over who can use the work for communicating it to the public or perform the work publicly. Example: An author can allow or prohibit the use of his own script in a play.

Moral Rights Moral rights are those rights that protect the ownership as well as the integrity of the work. Under Section 57 of the Copyright Act, 1957, defines the moral rights of an author. The moral rights are listed as follows: 1. Paternity rights: These rights give the author the right to claim its authorship of work. This right gives the author to protect the link of their work by imitating certain action. 2. Integrity rights: These rights give power to the author to oppose changes to their work that harm his reputation and if such an act is committed then the author can ask for restraining or claim damages. Though the author cannot restrain or claim damages if the change in the work is the adaptation of a computer programme. The legal representative of the author can use the rights given to the author of work else than the right to claim authorship.

Rights Associated with the Type of Work The owner(s) of the original work are assigned ownership rights as soon as the work is created without the registration of the same. As discussed earlier, the owners have the moral and economic right. Though moral rights are provided to an author regardless of the type of work performed by the author. However, scenarios with economic rights are different from moral rights. According to the type of work, they claim their economic rights. Table 6.1 lists the type of work and the rights associated with the work. 6.2.6  Ownership of Copyright Ownership of the work begins with the work being created by the author. Note that, this author may not always be the one who is physically creating the work. Example: The employee can make the changes in the work let us assume a design of the jewellery; an employee makes changes to the design but most changes observed in the design made by the employee instructed and authorized by the employer. There are different types of ownership with reference to the copyright as discussed in the following: 1. First owner and initial ownership: The copyrights are first conferred to the first owner of the work. The first owner of a work is the originator or creator of the work except in case of ‘work for hire’. This first owner is also called the author of the work. As said in Copyright Act, 1957, author of a literary or dramatic work is author of the work, whereas, in relation to a cinematograph film or sound recording, the producer will be the author of the work. (a) ‘Work for hire’ rule: It is a special case where a person who created the work, will probably not get the copyrights. According to ‘work for hire’, if an employee creates work under the duration of the employment, then the employee will be the author of the work unless there is a contract to the contrary. This is applicable for employees as well as the specially commissioned work working under an employer or an organization.

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Table 6.1  Type of Work and the Rights Associated with the Work

S. No. Type of Work

Rights Associated with the Work

1.

Literary, dramatic 1.  Reproduction rights. or musical work. 2.  Distribution rights. 3.  Communication to the public rights. 4.  Translation and adaptation rights

2.

Computer programme.

1. All rights assigned to literary, dramatic or musical work. 2. Rights to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme.

3.

Artistic work.

1. Reproduction rights (converting 2-dimensional work to 3-dimensional work is included for artistic work in reproduction rights). 2. Distribution rights. 3.  Communication to the public rights. 4.  Translation and adaptation rights.

4.

Cinematograph film.

1.  Rights to make a copy of the film. 2. Rights to sell or give on commercial rental or offer for sale or for such rental, any copy of the film.

5.

Sound recording.

1. Rights to make any other sound recording embodying it. 2. Rights to sell or give on commercial rental or offer for sale or for such rental, any copy of the sound recording. 3.  Communication to the public rights.

Example: Microsoft hired multiple programmers to develop their operating system though it was credited to Microsoft Corporation whereas Adobe Systems in their credits include many of the developers. (b) Joint authorship: Joint authorship means the work created by the ‘joint authors’ is a collectively produced work where two or more authors have joined together and the work is a joint contribution of all the authors. In this type of work, contribution of one person will not be distinguished from the other author(s). The joint authors of copyright can utilize the copyright jointly but cannot do the same individually. Due to this, a joint author as an individual is prohibited from executing any copyright, such as assigning work to someone without the content of the joint owner(s). Example: article having more than one author. Note that the ownership and the rights of an assignee will be described in the assignment and will be decided mutually by both assignee and assignor. However, one thing is more certain that the assignee will not get more rights than the author of the copyrighted work.

6.3

Indian Copyright Act, 1957

The Copyright Act, 1957, latest amended as the ‘Copyright Amendment Act, 2012’, administers the subject of copyright law in India. The act is applicable from 21 January, 1958. Prior to 21 January, 1958 the Indian Copyright Regulations, 1914 was applicable in India the Copyright Act, 1914 which

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was essentially the extension of the British Copyright Act, 1911. The Copyright Act, 1914 still suitable for works created before 21 January, 1958. This act contains 15 chapters and 15 forms so that people can take advantage of this act. According to the Copyright Act, 1957 the following types of work can be applied by an author to claim a copyright: 1. Original literary, artistic, dramatic and musical works. 2. Sound recording. 3. Cinematograph films. As stated by the Copyright Act, 1957 Section 2(l), the work is said to be an ‘Indian work’ if the author is Indian or the work was first published in India. With respect to foreign work and protection associated with work, there is no direct inclusion defining what a foreign work is, but it is assumed as any ‘work’ that does not fit under Indian work, is a foreign work. According to the Copyright Act, 1957, the foreign works are provided with the same protection in India to which Indian citizens are entitled under the Act. The purpose of copyright is to encourage people to share their knowledge as well as motivate them for their intellectual input. Needless to say, a copyright will be used as well as misused. The ownership rights are to avoid such misuse. The right to ownership is one of the most important rights in the act. The right of ownership is different for the type of work that is associated with it. These rights are conferred on the owner so that he can protect and earn from his intellectual property. Such rights protect the copyright under two categories, economical rights (under Section 14) and moral rights (under Section 57) of the author. Economical rights that are most commonly utilized are rights to distribute, rights to reproduce and right to communicate to the public. The owner of the copyrighted work can earn by using these rights. For example, using the distribution right, a book makes a profit that goes into the pocket of the author or the owner of the work. These rights give the owner of the copyrighted work a way to earn it using these rights. The moral rights allow the owner to claim and protect their work. The moral rights of an owner can be distributed as paternity rights and integrity rights. Moral rights are the basic rights of an author of a work. An author can transfer a few rights to someone else in return for economic benefits. To transfer rights to an interested person, the assignment and license of work were included in the copyright. The purpose of the assignment of copyright to transfer ownership of the copyright to an interested individual (assignee). Assignment of work gives the assignee the ownership rights related to the copyrighted work. The Copyright Act has explained assignment (Section 18), modes of assignments (Section 19) as well as the rules needed to be followed if any dispute occurs due to assignment of copyright [Section 19(A)]. But in some cases, handing over your copyright to someone can reduce your credit and share royalties. For example, suppose an author decides to assign his work to a publisher since they have more resources to print and distribute their copies which will lead to more sales and thus earning the book economic benefits. However, when the writer does so, he loses creative control over his work and at the same time receives a minimal amount of credibility and royalties for his work. For example, the decision for the book to be turned into a movie will be in the hands of the publisher. In such cases, licenses are beneficial, maintaining your credibility with the creative control over your work. There are voluntary as well as compulsory licenses available to the people. The purpose of the compulsory license is that the owner must not misuse the copyrights owned by him. There are multiple types of license available in copyright act providing certain rights including translation rights, reproduction rights and even broadcast rights. The inclusion of Internet broadcasting in broadcasting rights [Section 31(D)] remains unclear till date. Chapter VI of the Copyright Act is solely about the license. The modes of licensing and assignment are the same and hence the territorial extension and default

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duration of both the agreements (since territorial extent and duration are included in the modes of the assignment as well as the license). One of the major issues faced by the owner of the copyright is infringement, commonly known as piracy. Copyright infringement occurs when a person tries to exploit the rights of the copyright owner. Every kind of industry let it be a creative industry or software industry face losses of revenue due to copyright infringement. Thus, the need for copyright protection is increased. In the Copyright Act under Chapter XI, it is defined what act can be affecting copyright with infringement and what act can be considered as an exception to copyright infringement. The Copyright Act also includes three types of remedies for copyright infringement, namely, Administrative [Section 5], Civil [Section 55(1)], and criminal (Section 63). Punishment for infringement might be fine, not less than `50,000 with a maximum fine as `200,000 or imprisonment not less than 6 months with maximum imprisonment up to 3 years or both. A group of rights are found around copyright which have developed over the last few decades. Though these rights are not included in copyrights, they are affected by the copyrighted work. These rights are called related or neighbouring rights since the existence of such rights are somewhat ‘related’ to or ‘neighbouring’ to copyright. It is generally stated that there are three types of related or neighbouring rights, namely, performer’s rights, rights of producers of phonograms and broadcasting rights. However, in the Copyright Act, only performer’s rights and broadcast rights are mentioned. Under Chapter VIII of the Copyright Act, are related rights assigned to performers and broadcast rights. These specify Broadcast reproduction rights, performer’s rights, exclusive and moral right of performers. There are rules under Section 39 of Chapter VIII in the Copyright Act which list few acts as fair dealing, thus anyone who performs such acts would not be infringing the broadcasting rights or performer’s right.

6.4

Process of Filing a Copyright

As stated earlier, to claim a copyright a person need not register for the same. Copyright exists as soon as a work is initiated without a need to follow any kind of formality to claim a copyright. Though registration of copyright of the work will be considered as admissible evidence whenever a dispute regarding the ownership of the work will be observed, one must know that registration of copyright does not allot any kind of rights. An application can be made by applying physically in the copyright office. A person can also apply online or by posting it to the copyright office. The Copyright Office has been set up at New Delhi is headed by a Registrar of Copyrights, to provide registration facilities to all types of works. Online registration is provided through ‘e-filing facility’ for the applicants to file applications at the time and place chosen by them. To get a copyright, a person should follow the particular procedure and pay the respective fees which are listed in Table 6.2. This fee varies from `500 to `40,000 depending upon the type of work associated with it. The procedure to get a copyright registration is listed as follows: (1) Application, (2) examination and (3) registration. Copyright registration flow chart is shown in Fig. 6.1.

6.4.1  Step I: Filing the Application The application for copyright can be filed by the applicant himself or via his authorized legal representative. The application can be applied by physically presenting oneself in the copyright office or by posting the application to the copyright office. A person can also utilize the online facility available at the official website of the copyright office (http://www.copyright.gov.in/). There ought to be a single application per work. Every application should be filled with correct information about the applicant

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as well as the work to be claimed by the applicant. Each application must contain the fee (as listed in Table 6.2) depending on the type of work. According to copyright FAQs, the applicant must fulfil the following list of things before applying for the application: 1. The application for registration is to be made on Form XIV as included in the first schedule to the rules (including statement of particulars and statement of further particulars). 2. Each work ought to have a separate registration application. 3. Every application ought to be joined by the requisite fee recommended in the second schedule (Table 6.2) to the rules. 4. The applications ought to be signed by the candidate/applicant. The ‘power of attorney’ signed by the party and acknowledged by the advocate should also be enclosed, if applicable. 5. The fee must be paid as either by demand draft (DD) or Indian postal order (IPO) which should be favouring ‘Registrar of Copyrights Payable at New Delhi’ or can also be paid by using e-payment every column of the ‘Statement of Particulars and Statement of Further Particulars’ ought to be answered explicitly.

6.4.2  Step II: Examination There are at least 30 days for documenting and exploring any objections that may face the copyright application. During this period, the diary number is received as soon as the application is filled. Within these 30-days, the application has to go through the process of objections and scrutinization (discrepancy comes within it). If any discrepancy is found, the applicant is allowed 45 days to eliminate the equivalent. 1. Objection: After an application is filed and a diary number is received, there are 30 days waiting time so that if any person having any issue with the copyright can apply for objection. A hearing is conducted to resolve the objection. (a) Objections found: During these 30 days of waiting period if objections are found, then the authorities convey letters to the two concerned parties, attempting to persuade them to clarify the conflict. If in the hearing the objection is rejected, the application is then sent to scrutinization and discrepancy to verify its originality. In case, the objection is sustained, the application is rejected. The applicant will receive the rejection letter thus ending the copyright registration procedure. (b) No-objection found: After the application gets a pass on objections, it goes through a process called scrutinization. 2. Scrutinization and discrepancy: In the context of copyright, scrutinizing is a process where the claims declared by the applicant are verified. During scrutinization, the discrepancy of the work is verified. (a) Discrepancy found: A letter of the discrepancy is generated and sent to the applicant. The registrar leads a hearing of the supposed discrepancy depending on the answer to be received from the applicant. In the hearing process, after resolving discrepancies comparable extracts are sent to the applicant for his/her to register the copyright. (b) Discrepancy not found: This would suggest that the copyright application fulfils all premise requirements for the copyright. The applicant is then approved to continue with the registration.

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6.4 Process of Filing a Copyright

Step III: Registration As can be seen, from the previously mentioned in advance, the registration exclusively relies upon the registrar. When everything is cleared from the registrar’s end, the applicant receives the copyright and can legitimately practice all rights that accompany the owner/proprietor of that copyright. Filling of application along with fee(DD/IPO) Issue of diary No 30 days mandatory waiting for objections

Objection made(Y/N)?

NO

YES

Sending letter to both parties Reply from both parties Hearing from Registrar

YES

Application accepted(Y/N)?

YES

NO

Discrepancy letter issued to applicant Reply from applicant Hearing by Registrar due to rejection

NO

Registration approved(Y/N)? (Dy. Registrar)

Objection sustained

Discrepancy(Y/N)?

Application Accepted Objection Rejected

Application rejected

Scrutinization by examiner

NO

YES Application approved

Application rejected

Sending extracts from register to the applicant

Sending rejection letter to the applicant End Flow

Figure 6.1  Copyright registration workflow: A flow chart.

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Table 6.2  Fee Details Listed as Second Schedule Under Amended Indian Copyright Act, 2013

S. No. Item

Fee

1.

For a license to republish a literary, dramatic, musical or artistic work [Sections 31, 31(A), 31(B) and 32(A)].

`5000 per work.

2.

For a license to communicate an any work to the public by Broadcast [Section 31(1)(b)].

`40,000 per

3.

For license to republish a cinematograph film (Section 31).

`15,000 per work.

4.

For a license to republish a sound recording (Section 31).

`10,000 per work.

5.

For a license to perform any work in public (Section 31).

`5000 per work.

6.

For a license to publish or communicate to the public the work or translation [Section 31(A)]

`5000 per work.

7.

For a license to publish any work in any format useful for person with disability [Section 31(B)].

`2000 per work.

8.

For an application for a license to produce and publish a translation of a literary or dramatic work in any language [Sections 32 and 32(A)]

`5000 per work.

9.

For an application for registration or copyright in

10.

applicant/per station.

(a)  a literary, dramatic, musical or artistic work,

`500 per work.

(b) provided that in respect of a literary or artistic work which is used or is capable of being used in relation to any goods or services (Section 45).

`2000 per work.

For an application for changes in particulars of copyright entered in the register of copyrights in respect of (a)  a literary, dramatic, musical or artistic work,

`200 per work.

(b) provided that in respect of a literary or artistic work which is used or is capable of being used in relation to any goods or services (Section 45).

`1000 per work.

11.

For an application for registration of copyright in a cinematograph film (Section 45).

`5000 per work.

12.

For an application for registration of changes in particulars of copyright entered in the register of copyrights in respect of cinematograph film (Section 45).

`2000 per work.

13.

For an application for registration of copyright in a sound recording (Section 45).

`2000 per work.

14.

For an application for registration of changes in particulars of copyright entered in the register of copyrights in respect of sound recording (Section 45).

`1000 per work.

15.

For taking extracts from the indexes (Section 47).

`500 per work.

16.

For taking extracts from the register of copyrights (Section 47).

`500 per work.

(Continued )

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6.5 Assignment and License

Table 6.2  Continued

S. No. Item

Fee

17.

For a certified copy of an extract from the register of copyrights of the indexes (Section 47).

`500 per copy.

18.

For a certified copy of any other public document in the custody of the register of copyright or secretary of the copyright board.

`500 per copy.

19.

For an application for prevention of importation of infringing copies (Section 53) per place of entry.

`1200 per work.

6.5

Assignment and License

Copyright issues are quite common, especially in creative industries. A movie may be claimed by multiple people such as lyrics, singer, record label company, etc. Many offer their intellectual input and therefore there are multiple claims for copyright. This will create several complications for the producer. Many individuals either assign or licence their right to the producer in exchange of economic benefits. However, it is not as easy as it is assumed to be. Many drawbacks and loopholes come into the picture at the time of the process of the same. Copyright must protect the interest of the author of the work coupled with the circulation of knowledge. In Section 14 of Chapter III of Copyright Act, 1957 multiple rights of the author are identified concerning the nature of copyrighted work. As per the section, the author of the copyrighted work can achieve wealth by utilising the right of the copyrighted work which will also benefit the other individuals. This can be achieved by way of assignment or licensing of copyright.

6.5.1 Assignment As stated earlier, copyright provides different rights according to the type of work created by the author. Under copyright law, few rights included are the right to reproduction, adaption, translation, and communication of the work to the public. But these rights are given to the author/first owner of the work. The author of a work is commonly considered as the primary owner of the copyright under the Copyright Act, 1957. In any case, an intrigued individual can get a part of these rights if the author is keen about doing all things considered. This process of transferring ownership of a copyright to a third party is called an assignment. If a person owns the copyright of the work, the author can give the rights to someone else because he has the right to assign the copyright to someone. The effect of the assignment is that intrigued individuals (assignee) will be eligible for the rights identified for the work entrusted with the copyright as soon as the process of assignment is completed. This allows the assignee the rights to distribute, reproduce, translate, etc. without infringing a work. Although copyright is a term well aware by the people nowadays, the assignment of copyright is still a new concept for the general public. To make the process of the assignment understandable, let us give you an example: Let us consider an example such as making a complete movie. The creative people with their idea turned into works which they assign to producers with the rights in return of royalty. A complete movie or film is summarized to frame using these works. The procedure is not simple

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and includes numerous inquiries that emerge both at the time of assignment and particularly after it. According to the Copyright Act 1957, Chapter IV, the assignment has three sections: 1. Section 18 (assignment), 2. Section 19 (modes of assignment) and 3. Section 19A (disputes with respect to the assignment of copyright). Section 18 consists of three subsections. The first subsection states that the owner can assign its copyright of the work to any person, but the assignment will be valid only if the work is completed. The owner (in this process called the assignor) can decide how much of the rights will be given to this person called the assignee. The second subsection states that, where the assignee of copyright gets qualified for any right included in the copyright, he will be treated as the owner of the copyright concerning those rights. Concerning unassigned rights of the copyrighted work, the assignor shall also be treated as the owner of the copyright. The third and the final subsection states that the term ‘assignee’ includes the legal representative of the assignee as well, so if in a given scenario, the assignee dies before the work comes into existence, the legal representative of the assignee can take the privileges of an assignee. Section 19 of the Copyright Act, 1957, specifies modes of the assignment. Simply put forward, these are the basic requirements to be specified in the assignment. The process of assignment is a bit complicated and must be dealt with precautions and clarity considering all the loopholes. Assigning copyright to a publisher can sometimes be not so advantageous for you like you may only receive a portion to get the copyright. There are 10 subsections under Section 19 out of which later few are amended in 2012. Section 19 of the copyright act states that the assignment must be in written form signed by the assignor or his duly authorized agent; else it will not be considered as valid. The assignment of a copyright in a work ought to recognize the work and indicate the sort of rights assigned. The assignment must also indicate the duration and territorial extent of such an assignment. Further, during the extension of an assignment, the amount of royalty payable if any to the author or his legal heirs must be determined and the assignment will be reliant upon revision, extension, or termination on terms generally settled upon by the parties. On the off, chance that the period of assignment is not expressed, it will be considered to be 5 years from the date of the assignment. If not stated the territorial extent of such assignment, it will be taken as pertinent in the entire of India. Keep in mind that, according to Section 19(8) the assignment of copyright work against the terms and conditions on which rights have been assigned to a specific copyright society where the author of the work is a part will be void. Further, Section 19(9) and Section 19(10) declare that the assignment of copyright for making cinematograph film or sound recording will not influence the right of the author to guarantee an equivalent portion of the royalties and consideration payable as for utilization of his ensured work. Regarding the assignment of copyright, there might be certain disputes that might come into the picture even after the assignment of copyright is completed. To clear the disputes satisfying both parties and trying to resolve the matter within the time-bound Section 19(A) states few clauses. As per Section 19(a), the Appellate Board on receiving a complaint from the assignor as well as holding an inquiry as necessary can revoke the assignment if the assignee fails to use the rights assigned to them, and this failure is attributable to any act or omission of the assignor. If there must arise an occurrence of a dispute as for the assignment of copyright, the appellate board may pass an appropriate order on getting a complaint from the aggrieved party and after holding such inquiry as it considers necessary including a request for the recovery of any royalty payable. Efforts are made to pass the final order regarding the complaint received under Section 19(A) Subsection 2

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within 6 months from the date of receipt of the complaint, and any delay in concurrence of the same, the Appellate Board shall record the reason of the occurrence of the concerning delay. Note that every complaint received under Section 19 Subsection 2 will be dealt with by Appellate Board.

A Case Study w.r.t. Assignment Case name: Sajeev Pillai Vs. Venu Kunnapalli and Ors Plaintiff: Sajeev Pillai Defendant: Venu Kunnapalli and Ors  Thirunavaya is a small village situated in Malappuram District of Kerala which was famous for the ‘Mamankam festival’. This grand festival was held once in 12 years from the 14th century to the 19th century, which became extinct by the end of 1776. The plaintiff, Sajeev Pillai, claimed to have prepared the script of the film after researching about the festival since 1999. Pillai met the first defendant Venu Kunnapalli while searching for a producer. Kunnapalli was envious of taking a film and marked a memorandum of understanding (MoU) on 13 September, 2017.  Believing that the same was entered with M/s. Kavya film company, a company enlisted under the company’s act, later. It was later discovered that the MoU was entered with a non-existent entity. This was the first fraud committed by the defendant. Later, after completing two schedules, the service of the plaintiff as director of the film was terminated and another person was appointed as the new director. The film’s shooting was completed, while the script was revised to such an extent that it mutilated, distorted and modified the original script. The plaintiff being the author of the film filed a case against the defendant seeking relief. He also filed an interim injunction restricting the defendant to release, publish, distribute and exploit the film and all modes of dissemination to the public and pre-release publicity without providing adequate authorship credits to the appellant as per film industry standards.  The defendant argued that M/s. Kavya film company is a partnership firm. MoU is valid unless otherwise stated by the court. The defendant also said that the plaintiff sold his authorship for a sale for `3,00,000 and thus according to them, the plaintiff is not designated to claim authorship rights. Outcome: The case declared that even after the process of assignment; the author has authorship right towards its work. But since the defendant was prepared for his movie to be released on 12 December, 2019 and the damages will be huge if delayed, the film was released with two conditions out of which one was that the movie will be released without anyone’s name as the scriptwriter or writer of the screenplay of the film till the disposal of the suit. This case tells us that even after the assignment of work, the author does not lose his rights/ownership rights.

6.5.2 Licenses The term license is used as an authorization to use a licensed product. Concerning copyright, the license indicates as an authorization from the copyright owner that certain acts can be performed without committing an act of infringement or piracy. The owner of the work has the right to grant a license under the copyright act to allow a third party to use as well as distribute the work in exchange for a royalty. Although both assignment and license involve transferring the rights to exploit the work, both are distinct considering their features. As stated earlier, the assignment transfers the ownership rights to the

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interested person thus allowing the assignee to be an owner of the assigned work, whereas, the license is nothing but just an authorization to use the copyrighted work. A license does not transfer ownership of the work. Regarding the mode of the license, it is similar as of the modes of the assignment. The license agreement must contain the following details to be imposed: 1. 2. 3. 4. 5. 6.

Identification of the work Rights to be licensed. Duration of the license. Territorial extent of the license. Royalty to be payable. Conditions related to revision, extension and/or termination of the license.

According to the Copyright Act, 1957, there is a whole chapter, Chapter VI, explaining license and the rights associated with the license. There are three sections and seven sub-sections under them in Chapter VI of the act. These sections and subsections explain the different types of licenses available for different situations and different types of work. There are multiple copyright licenses. To simply the classification of the license, it is generally classified as follows: (1) Voluntary license and (2) compulsory license.

Voluntary License Section 30 of the Copyright Act, states the definition of voluntary license. The owner of the copyright in a work or the owner of future work may grant a license in writing by him or by his duly authorized agent. Note that the license will come in force after the work comes into existence. If a situation comes into existence where the licensee dies before the work comes into existence then the legal representative of the licensee will be legally entitled to get the benefits of the license, provided nothing to the contrary is found. Compulsory License The main objective of compulsory licensing is to guarantee the accessibility of copyrighted material for the general public. The Copyright Act aims to protect the work but dissemination of knowledge is also very important. Thus, few works must be available to access for ‘fair use’ for other individuals. Thus sometimes, despite the copyright owner’s denial, it is ensured that the work is shared for ‘fair use’ without infringing the rights of the owner. Compulsory license related to an ‘Indian work’ may be granted by Appellate Board under the circumstances listed below if the owner of the ‘Indian work’ who has published or performance in public, 1. refuses to republish the work; 2. does not allow republishing the work; 3. refuses to perform in public the reason is held back from the public. Refuses to allow ‘communication in the public’ by the broadcast, or in case of sound recording the work recorded in such record on reasonable terms. The ‘Indian work’ described above includes 1. a work whose author is a citizen of India; 2. a Cinematographic film or sound recording created in India.

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A Case Study w.r.t. License Case name: Tips Industries Vs. Wynk Music Plaintiff: Tips industries Defendant: Wynk Music  Nowadays, where the number of Internet users is increasing rapidly, the demand for the number of services has also increased manifold. With this increase in demand for various services, one of the most popular in demand is online music streaming apps.  The plaintiff granted the license to the defendant, which was granted by the Copyright Society for approximately 25,000 songs. After the expiry of this license, both the parties tried to negotiate for renewal of the license, but all hard work went in vain when they both could not agree with any terms. The defendant was asked to deactivate the repertoire of songs, yet they did not consent to it. Even when the plaintiff sent them the legal notice, the defendant claimed themselves as a broadcasting organization entitled for statutory licensing under Section 31(D). This act committed by the defendant made the plaintiff fill the suit against the defendant concerning the claims the defendant claimed using Section 31(D). Plaintiff also filed for infringement towards their copyrights in sound recording furthermore violating their exclusive rights of sound recording. Outcome: After hearing both sides, the court concluded that plaintiff ’s claim of infringement stated that Wynk committed direct infringement on two accounts; first, they allowed the users to download and listen to plaintiff ’s work offline and second, for using it to communicate plaintiff ’s work for an online streaming service. The court also cleared the misconception regarding online streaming falling under the scope of Section 31(D). Bombay High Court stated that download/purchase of copyrighted work is not covered in Section 31(D) of the Copyright Act. Wynk Music allowing users to download as well as store the song was established as a ‘sale’, not ‘communication to the public’; thus, contradicting the very definition stated under the Copyright Act of ‘broadcasting’. Also, there is no clarity on inclusion Internet broadcasting under Section 31(D).

6.6

Infringement

The term infringement refers to violation of law, agreement or right. To keep it simple, the term ‘copyright infringement’, we can portray as a ‘violation of a right that is given to a person who is the owner of the copyrighted work’. There are bundles of rights given to the owner of the copyrighted work, among which ‘reproducing rights’, and ‘performing rights’ are very crucial, especially regarding infringement. Performing rights and reproduction rights are the main copyrights that are usually affected due to infringement. These infringements economically affect the owner and even affect their creativity. Copyright infringement affects creative people badly, thus sometimes even demotivating them. According to the Copyright Act, 1957 Act of Infringement is said to be performed when any person copyright infringement happens if 1. exercising ownership copyrights without their permission or authorization for a whole or substantial part of the work; 2. communicating the work to the public to generate money.

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6.6.1  Substantial Similarity and Fair Dealing It is observed that whenever a case of infringement is filed, the first thing verified is whether the person claiming the infringement, that is, plaintiff is the original owner of the work. Only after its verification, the case will be processed. The registration of the copyright of the work will be checked. Though registering the copyright is not essential, it will give an upper hand to the plaintiff in cases related to infringement. After this procedure, the defendant’s duplication will be examined and confirmed whether it is a substantial copy of the work. If the content of the defendant is found to be similar to the plaintiff ’s work, the next thing will be done is it confirms whether it is fair use or not. The test of substantial copying or substantial taking is very essential for the case. Not just the quantity but also the quality of copying is also observed. For example, about the quantity of substantial taking, if one of every six lines is almost similar then the chances of copying performed are more. In terms of quality, if a person takes the same example or the same quote as included in the plaintiff ’s work, this too may be considered as copying. However, it will not be sufficient to declare or confirm that duplication is executed. Whenever a plaintiff brings a case related to primary infringement, the plaintiff has to prove that the defendant violated their owner’s copyrights. Many times, the plaintiff can convince the court about the defendant’s infringement by proving that defendant had access as well as had opportunity to learn about the plaintiff ’s work. The plaintiff doesn’t have to show that the defendant copied his work on purpose or with ill-intention. The court will favour the plaintiff unless the defendant gives a clear or satisfactory explanation against what the plaintiff has proved. For a case related to secondary infringement the defendant’s knowledge of the infringement being committed, the motive behind the crime, how much of the defendant’s work is copied, is it copying substantially enough to be said that the plaintiff will be affected in any manner and more such questions will arise. The answers to such questions make the case much easier to be solved. For example, the defendant can refer to the plaintiff ’s work as a source of information and ideas but cannot claim it to be their own. For example, if a work has been copied by the defendant but the judgement, skill and labour involved of the defendant stand out, the plaintiff work will just become a reference thus concluding that the infringement did not happen. The knowledge of the nature of the defendant’s work as well as the plaintiff ’s work also plays a crucial role. If there is a chance of competition between plaintiff ’s and defendant’s work, it becomes a significant factor to the case. Sometimes, even if the infringement is proved, the defendant can claim that the infringement performed is for fair dealing. Now the question arises to what extent the term ‘fair dealing’ can be used so that the infringement can be resolved. Fair dealing or fair use is an exception so that one can within limits use the copyrighted work without the permission of the author/owner of the copyright. In general terms, fair dealing is limited to copying the copyrighted work sometimes for ‘transformative’ purposes like for parody or satire. Thus, fair dealing is generally one of the defences against copyright infringement. However, one must remember the line where fair dealing ends and the infringement begins. In India, there is no guideline about the restriction of how much of the content can be used that can be considered as fair dealing. The decision whether the copying of copyrighted content falls under fair dealing or infringement falls under the court and their judgement. The judgement also depends if the extracted content affects the substantial interest of the author of the copyright. The court will also consider four primary factors to determine whether the content is fair or it is not fair, which are listed as follows: 1. 2. 3. 4.

The purpose and character of the copy. The nature of the work copied. The amount and substantiality of the segment taken. The effect of the use of the work on the original.

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Under Section 52 of Copyright Act, 1957 certain acts are considered as an exception to infringement with literary, dramatic, musical or artistic work (excluding computer programmes). According to the United States copyright law criticism, commentary, parody, search engines, news reporting, non-profit educational use, research are treated as fair use. Note that the term ‘fair use’ is used in U.S. law whereas; in Indian as well as British law the term used is fair dealing, though the meaning of both the terms is the same.

6.6.2  Types of Infringement There are two different types of infringement as listed in the following: 1. Primary infringement, which is also known as direct infringement. 2. Secondary infringement, which is also called indirect infringement. About primary infringement, it is committed even if the claimed infringer was not aware of the violation of his act. Primary infringement is said to be an infringement performed concerning ‘copying’. Whereas, for secondary infringement, are claimed to be committed only if the claimed infringer is proved to be aware of the act of infringement. Primary infringement is said to be an infringement performed concerning ‘trading’.

Primary Infringement The primary infringement ‘does not require the knowledge or intent that causes the violation’, the act of infringement committed by the violator is sufficient to be proven. Primary infringement is said to be ‘the act of copying’. Copyright of work might be infringed by 1. copying it, 2. issuing the copies of the duplicate to the public and 3. making an adaption. About copying a work, where the work was considered as literary, musical, dramatic or artistic copyright, copyright was described as ‘reproducing the work in a material form’ by British act 1911, where the material form is referred as any form of storage. Examples of a primary infringement: 1. Converting the author’s book into a movie or a ballet. 2. Converting a photograph from a sculpture. 3. Converting 2-dimensional work of artistic work of the owner in 3-dimensional. Regarding primary infringement, the court will try to find out whether it is a case of substantial taking or just a causal connection of both the work. To verify this situation, the test of substantial similarity is performed, where the quantity, as well as the quality of substantial similarity, is checked. However, this test alone is not enough, if the defendant is proved to be having access to the plaintiff ’s work, then the case becomes stronger for the plaintiff.

Secondary Infringement As stated earlier concerning second infringement, the act of infringement is executed only when it is proved that the claimed infringer is aware of his act of infringement. However, to prove that he was aware of this infringement is not as convenient as it sounds. It is then necessary to prove that he has notice of the facts such as would suggest to a reasonable person that ‘copyrights have been infringed’, thus the probability of his crime being committed increases. Secondary infringement vaguely revolves

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around providing a place for copyright infringement and selling or distributing or importing infringing copies. Note that providing a place for infringement must be for ‘economic profit’, only then the act will be considered as an act of infringement. There are two types of secondary infringement that can be performed by an infringer: 1. Contributory infringement. 2. Vicarious Infringement. Contributory infringement is said to be performed even if the person does not directly engage himself in such an infringing act. If a person is found out to be performing the listed activities, the chances of the person infringing are most likely. 1. Knowledge of the infringement. 2. Direct contact with the primary infringer. 3. Material or content contributed to the infringement. The one, who is aware of the infringement and also has materially contributed to the act of copyright infringement, whether or not infringed directly, has still infringed. Vicarious Infringement is said to commit if the person could control the act of infringement as well as they had financial interest regarding the infringing act. If a person is found doing the listed act, it is more likely that the person performing the infringement. 1. 2. 3. 4.

Knowledge of the infringement. Direct contact with the primary infringer. Had authority and ability to supervise the infringer. Probability of infringement giving a financial benefit.

It is one of the common laws, that if such an act is performed within the scope and nature of the employee’s employment, it makes the employer legally responsible for an employee’s acts.

6.6.3  Copyright Cases w.r.t. Infringement To understand an act like infringement, let us understand infringement through certain famous cases. Case name: Rogers Vs. Koons Plaintiff: Art Rogers Defendant: Jeff Koons  This case focuses on plagiarism. This case was regarding a photograph recreated by an international artist named Jeff Koons. In 1980, Artist–photographer, Art Rogers, photographed his acquaintance, Jim Scanlon, with his wife and their eight new German shepherd puppies in 1980 naming this as ‘puppies’. He later uses this photo in multiple exhibitions. He licensed ‘puppies’ with his few other works to a company named Museum Graphics.  During the initial period of preparation for his exhibition, Koon came across a postcard that was created by Museum Graphics. This postcard contained the photograph shot by Art Rogers ‘puppies’. Jeff later created a few sculptures based on this photograph. These sculptures, ‘String of Puppies’, became quite a success. Koon sold three of them, earning himself a substantial amount of $367,000. When Rogers found out about the recreation of his work without his authority, he

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sued Koon. Koon’s statement for this scenario was, though he did use the photograph as a reference constituting unauthorized copying, it was a ‘fair use’ of for parody, thus not infringed.  Outcome: The court established that both the images were ‘substantially similar’. The similarity was recognizable even by an average layman. Further, Jeff also had access to the image. Jeff having access to the image and his work has such a high amount of similarity lead to the same conclusion by any person about his infringement. As for using Rogers’s work by Koon as a parody, he neither commented nor criticized his work, thus ruling out the possibility of using his work as a parody or satire. Hence, his statement regarding the fair use of Rogers’s image for parody was nullified by the court. The reason for ruling out the ‘fair use’ claim was the substantial similarity which could have been avoided. However, later Koons and Rogers reached a confidential settlement. This case became a reference case. There is a thin line between fair use and piracy or infringement of a work. Every country tries to make exceptions to be fair to every individual. Case name: Sony Corp. of America Vs. Universal City Studios, Inc. Plaintiff: Universal City Studios, Inc. Defendant: Sony Corp  This case is based on fair use. The defendant developed Betamax, a video tape recorder (VTR) which was an analogue form of the storage device.  The plaintiff filed a lawsuit against Sony and its distributors in California District Court in 1976 claiming that the device could be used for copyright infringement since few of the VTR owners recorded some of the plaintiff ’s copyrighted work which was telecasted/screened on commercially sponsored television. Thus, stating that Sony performed a contributory infringement thus is accountable for money damages. The defendant also wanted a share of the profits, they even insisted on a prohibition against the manufacture and marketing of VTRs.  Outcome: After litigation of 3 years, the court concluded that the copyright owner cannot hold a monopoly power over the individual recording a copy for his private non-commercial use in his home, because no law was established regarding the same in either ‘The Copyright Act of 1909’, the earlier Act or ‘The revised Act of 1976’, the latest act. However, whether taping was prohibited from television was not cleared. Even the question of whether using the recording outside the home was a crime was not clarified. Though the court declared that even if home taping would be prohibited, the plaintiff would not be presumed to have committed direct or contributory infringement.

6.6.4  Remedies and Penalty According to the Copyright Act, 1957, there are three types of remedies available concerning infringement, such as the ones listed in the following: 1. Administrative remedies: According to Section 53 of the act, using administrative remedies, the importing infringing copies can be boycotted. 2. Civil remedies: According to Section 55(1) of the act, civil remedies include the damages to infringement, the account of profits and injunction. 3. Criminal remedies: According to Section 63 of the act, criminal remedies include imprisonment along with fine. The infringed goods if found will be seized.

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Note that civil remedies cannot substitute criminal remedies though both can be claimed together by the copyright owner. The goods taken during the remedies of the infringement are forwarded to the owner of the work. The penalty as a fine for the infringement will not be less than `50,000 with a maximum fine as `200,000. Also, the punishment of imprisonment under Indian law may not be less than 6 months with maximum imprisonment extending to 3 years. The author may also try to claim the lawyer’s fees and costs, but it is up to the court’s discretion whether such a claim will be met. Though the possibility of success regarding such a claim is thin, there have been certain cases where the author was able to claim the lawyer’s fee and costs with the infringing damages.

6.7

Related or Neighbouring Rights

Few rights are present in the world where the rights are ‘related to’ or ‘neighbouring on’ one of the intellectual property rights called copyright. These rights are affected by copyrights. According to World Intellectual Property Organization (WIPO), related rights protect the legal interest few individuals and/or legal organizations that contribute either 1. communicating the work to the public or 2. produce subject matter that does not qualify as ‘works’, but express creativity or technical and organizational skill sufficient to justify recognition of a copyright-like property right. The related rights are considered quite similar to copyright though they are quite limited and are of a quite short lifetime. The purpose of the related right is to protect those who assist the creator of intellectual property and make their works accessible to the public at large. The rationale of copyright is to provide a balance between author’s rights over their work and dissemination of knowledge. To ensure this balance, both the author of the work and the audience of the work are provided certain rights. Under copyright act, there are few laws which help an author to claim their ownership of the work and there are few laws that help the dissemination of knowledge like ‘compulsory license’ and ‘fair dealing’ Related rights help the copyrighted work to disseminate knowledge. However, due to beneficiaries of related rights, communication of a work to the public is more widespread. The beneficiaries of related or neighbouring rights are as follows: (1) Performers, (2) phonograms producers and (3) broadcast organizations. The rights of these beneficiaries are internationally protected by the Rome convention for the protection of performers, producers of phonograms and broadcasting organizations.

6.7.1 Performer According to international law, the definition of performer is ‘actors, singers, musicians, dancers, and other persons who act, sing, deliver, declaim, play in, or otherwise perform literary or artistic works’. For the definition of performer in Indian Copyright Act, under Section 2(q), ‘performer includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance’. The performers are the sole beneficiaries under related rights who are granted moral rights. Note that a performer can be an individual, group of individuals and an organized group for business purposes. Rights of Performer Performers are provided with morals rights as well as economic rights. The moral rights of a performer give them the right to claim as the performer of the work. The performer also has the right to object towards any kind of change that might affect the reputation of the performer. The economic rights of

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a performer decided with keeping the type performance the performer performs. Performance is of two types, live and fixed. Therefore, majority rights assigned to a performer revolve around it. The basic rights of a performer as observed over major legislations are rights to control the live performance’s fixation and its broadcasting (or communication to the public) as well as right to have control over subsequent reproductions of the first fixation and its broadcasting (or communication to the public). Note that right to ‘control the subsequent reproductions of the first fixation’ can be exercised, only if the reproduction is for a different purpose, and the artists have given their consent for a different purpose. According to the Copyright Act, 1957, moral as well as exclusive rights are provided to performers under Chapter VIII.

Duration or Term of Performer’s Right The minimum term of performer’s right is 50 years from the year’s end when the performer was first performed. The term of protection right for performers in India is 50 years. 6.7.2  Phonograms Producers In Rome convention, ‘phonograms’ are said to be any exclusively aural fixation of the sounds of a performance or of the other sounds. Earlier, phonograms were referred to just for recording a sound or music. As with the growth of technology, the definition as well as the need of phonograms has changed. With the growth of storage and digital media, phonograms have different requirements to be fulfilled with passing decades. Rights of Phonograms Producers As for the rights, phonograms are provided economic rights only. These rights include the following fundamentals: 1. Right of reproduction: This right allows the phonograms producers to authorize reproduction of phonographs, let the reproduction be in any direct or indirect form. 2. Right of distribution: This right allows the phonograms producers to authorize distribution of the original and copies of the phonograph to the public via transferring ownership or through sales. 3. Right of rental: This right allows the phonograms Producers to authorize to set the commercial rates of the original and copies of the phonogram, as defined in the National Law of the Contracting Parties. Note that this law does not apply for those countries who have already mentioned in their system rights for equitable remuneration of such rental. 4. Right for communication in the public: This right allows the phonograms producers to authorize making a phonogram available to public through wired or wireless means in a way that the members of public can access the phonogram place and time as per their choice as an individual. This right covers the communication to the public through the Internet (on demand).

Duration or Term of Phonograms Producers’ Right The minimum term of phonograms producers’ rights are 20 years from the year’s end when the phonograph was first published. Copyright Act, 1957 of India lacks such laws. 6.7.3  Broadcast Organizations The beneficiaries of related rights try to provide dissemination of the knowledge. Broadcast Organizations have much more range of contacts as well as can reach a higher number of people. They need authorization

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from the government to operate. Thus, their communication to the government is more compared to the performers or phonogram producers. If history is observed, involvement of broadcasting organizations in the communication to the public have a wide range of public as compared in their absence.

Rights of Broadcast Organizations Broadcast organizations are also provided as just economic rights. The rights of broadcasting organization that are followed in majority legislatures are listed as follows: 1. 2. 3. 4.

Rebroadcasting of the broadcast. Communication to the public on payment of any royalty. Broadcast fixation. Reproduction of such fixation.

As per Copyright Act, 1957 these rights are followed under Broadcast reproduction right provided under Section 37 of the act.

Duration or Term of Broadcast Organizations’ Right The minimum term of broadcast organizations to access right of authorizing the rights of a broadcasting organization is 20 years. According to Copyright Act, 1957 the term is up to 25 years. Table 6.3  Related Rights Versus Copyrights

S. No. Parameters

Copyrights

Related Rights

1.

Beneficiaries

Author and owner of artistic, musical, dramatic, sound recording and cinematograph film work.

Performers, producers of sound recordings and broadcasting organizations.

2.

Moral rights

Provided to all type of author.

Only to performer.

3.

Scope of rights More scope.

Less scope.

4.

Term

25 years for broadcasting organizations and 50 years for performer.

6.8

Minimum 60 years in India (longer than related right).

Copyright and Digital Media

The use of digital media has spread across the world. The world now has turned digital; thus, the demand for having everything in digital copy. Even the many copyright works are stored in digital form in this digital world. This involvement of digital media in our life has made things more accessible to the public. The purpose of digital media helps people to spread knowledge. But with every proof a matter, there is a con. Sometimes even the pros become the con. The accessibility and availability of knowledge even helps multiple people to gain knowledge, but the originality and reliability of such media are often questioned. Thus, the need for copyright in digital media begins. The intellectual property has embedded itself in the digital media both as contextual as well as the substantial manner. The need for copyright for an author is to use its copyrights, and many times these copyrights are used to prove its originality. This need is more serious in digital media because the availability and access to content are severely higher than in a world without digital media. Thus, the need for protection of intellectual property has increased exponentially.

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Multiple Choice Questions

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The Government of India has tried to update the copyright act with the changes and gradation of technology to maintain the aim of copyright i.e. to protect the intellectual property as well as disseminate the knowledge. The threats posed by digital media are more severe than the normal course of the physical world. Thus, these increasing threads create the need to keep the digital media in check. There are certain techniques followed by a few countries to avoid infringement while trying to provide information to the public. There are many techniques to avoid infringement like access control, view control, copy control, encryption schemes, digital watermarking, restricted licensing, etc. These techniques are combined to create a systemic approach to protect the copyright of digital media called ‘Digital Rights Management’.

Digital Rights Management (DRM) Digital Rights Management is a systemic approach in which multiple techniques such as access control, view control, copy control, encryption schemes, digital watermarking, restricted licensing, etc are combined to provide copyright to digital media. Multiple companies provide CRM products like windows media DRM. The DRM technologies try to control the use, alteration and distribution of copyrighted work available in digital content. Digital rights management authorizes a person to 1. Keep a control or restriction on the author’s content avoiding changes to be performed by the users. 2. Keep a control or restriction from printing author’s content. 3. Forbid the users to take a screenshot of the author’s content. 4. Keep a control or restriction of your work to be communicated to the public. 5. Limited access to the users and time. 6. Digital watermarks to establish ownership. There are International conventions who try to provide adequate legal protection as well as remedies for infringement for the digital work. India has amended its copyright laws in 2012 to be updated with such developments. Although few Digital Rights Management provisions were included in the Indian copyright act after some amendments but compared to American laws, Indian laws are not as broad and comprehensive as theirs.



Multiple Choice Questions

1. Among the following, copyright protects (a) expression (b) idea (c) both of these (d) none of these 2. Among the following, the one that includes under transfer of rights is (a) assignment (b) license (c) both of these (d) none of these

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3. Among the following, what is fair dealing? (a) Commentary and critics (b) Parody and satire (c) Research and academic (d) All of these 4. The duration of a copyright for literary work is (a) author’s life + 40 years (b) author’s life + 50 years (c) author’s life + 60 years (d) author’s life + 70 years

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5. The duration of a copyright for dramatic and musical work is (a) author’s life + 40 years (b) author’s life + 50 years (c) author’s life + 60 years (d) author’s life + 70 years 6. The duration of a copyright for dramatic and musical work is (a) 40 years from the year after the work is first published. (b) 50 years from the year after the work is first published. (c) 60 years from the year after the work is first published. (d) 70 years from the year after the work is first published. 7. Which one of the following is not a type of copyright infringement? (a) Direct infringement (b) Indirect infringement



Frequently Asked Questions in Interviews

1. What is a work? Answer The term work in reference to copyright is considered as an intellectual creation; for example, novel, music, painting, etc. 2. What are the essential conditions that need to be confirmed before claiming copyright? Answer The work must be original and in its tangible form. 3. What is copyright? Answer Copyrights are rights that are conferred to the creator of the original work. 4. What can be protected using copyright? Answer Works that can be protected under Copyright Act, 1957 are (1) literary work, (2) artistic

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(c) Compulsory infringement (d) Vicarious infringement 8. Which of the following is not a type of copyright work? (a) Literary work (b) Utility work (c) Musical work (d) Artistic work 9. Which of the following is not a type of license? (a) Compulsory license (b) Reproduction license (c) Statutory license (d) Voluntary license 10. What among the following is not the economic right of an author? (a) Translation right (b) Adaptation right (c) Integrity right (d) Reproduction right

work, (3) musical work, (4) sound recordings and (5) cinematograph films. Note that works like computer programmes, databases, compilations, etc. are included in literary work. 5. Is it compulsory to register for a copyright? Answer No, it is not compulsory to register for a copyright to use copyrights. The existence of copyright starts as soon as the work is created. The creator of the work can use the copyright as soon as the work is created. However, the certificate of registration of copyright serves as an essential evidence in a court of law when a dispute related to ownership of the copyright of the work arises. 6. What rights does the copyright holder/owner get after claiming for copyright?

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Frequently Asked Questions in Interviews

Answer Copyrights are of the following two types: (a) Moral rights: Protect the moral rights of the copyright holder/owner. (b) Economic rights: Allows the copyright holder/owner to earn financially using their work. Moral rights are of two types, paternity rights which help the author to claim its authorship to the work and integrity rights which gives power to the author to forbid anyone to commit any kind of changes in the work which may damage the reputation of the author. The economic rights can be allowed or restricted by the author of the work. The rights that fall under economic rights are (1)  reproduction rights, (2) publication rights, (3) adaptation rights, (4) translation rights, (5) broadcasting rights and (5) communication to the public. 7. For how long can a copyright protect a work? Answer For original literary, dramatic, musical and artistic works, the duration of copyright is the lifetime of the author of the copyright and 60 years from the year after the death of the author. Concerning the cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations, duration of copyright protection is for 60 years from the year after the work was first published. 8. Can software be registered for a copyright? Answer Yes, any computer software and programme can be copyrighted. This can come under literary work, but the programme (‘source code’ and ‘object code’) must be put in some form of tangible medium so that the software or app can obtain the copyright. 9. What is the assignment regarding copyright? Answer An assignment is a process where a copyright owner transfers the ownership right related

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to a copyrighted work to someone else. A copyright holder/owner can assign the copyright wholly or with restrictions. 10. What is the license regarding copyright? Answer A license is transfer of certain rights of copyright. This feature is added in the rule so that the owner can achieve royalty for providing the license and the licensee can use the rights specified in the license. 11. How long will a person have to wait to get the work to get registered by the Copyright office? Answer It can take from 1 month to 3 months. This depends on the objections received as well as discrepancies removed if found. 12. If a person creates a work whilst in employment, who is the copyright holder/owner? Answer Generally, the creator of the work is the first owner of the copyright. Although, if a person creates a work under an employer than due to ‘work for hire’ rule, the employer becomes the first owner of the work unless there is a contract to the contrary. 13. Can an author relinquish copyright and, if so, how? Answer Yes, a person keen to relinquish all or any copyright can give notice to the Registrar of Copyright in Form 1 as stated under Section 21(1) of Copyright Act, 1957. 14. Can a copyrighted work be protected internationally? Answer Only if the country is a member of the Berne Union. The countries that are members of the Berne Union will provide copyright protection to all the foreign nationals/citizens. The foreign nationals/citizens can deed the same rights as the domestic copyright holder/ owner.

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Answer Key

Multiple Choice Questions 1. (a) 2. (c)

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3. (d) 4. (c)

5. (c) 6. (c)

7. (c) 8. (b)

9. (b) 10. (c)

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7

Geographical Indications of Goods (Registration and Protection) Act, 1999

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Outline the law of geographical indications of India. • Explain the meaning and definition of geographical indications.

7.1

• Explain the procedure for registration of geographical indications. • Compare geographical indications and trademarks.

Introduction

A Geographical Indication (GI) is a sign used on goods which have distinct geographical origin and hold all the features of that particular origin. GI protection promotes business and also leverages the value of geographically unique products.

7.2

Historical Background of Law of GIs of India

India instituted a single security scheme for Geographical Indications (GIs) with the enactment of a law dealing exclusively with the defence of GIs. The laws managing GI protection in India are the ‘Geographic Indications of products (Registration and Protection) Act, 1999’ (GI Act) and thus the ‘Geographic Indications of products (Registration and Protection) Rules, 2002’ (GI rules). India enacted its GI laws for the country to enforce national laws on property in compliance with India’s Trade-Related Aspects of Intellectual Property Rights (TRIPS) obligations. Under the GI Act, which came into force in accordance with the GI Laws, with effect from 15 September, 2003 the Central Government created a Geographical Indications Registry in Chennai, where right holders can register their GI. It absolutely was left to the Central Government’s discretion to see which goods would lean higher rates of protection. The drafters of the Indian Act have consciously taken this approach with the intention of providing GI of Indian descent with rigorous protection as guaranteed under the TRIPS Agreement. Certain WTO members, however, are not required to supply all Indian GI with immunity under Article 23, thus leaving space for his or her misappropriation within the international arena. The meaning of GI found in Section 1(3)(e) of the Indian GI Act clarifies that, for the requirements of this provision, any name that’s not the name of a nation, region or locality of that nation shall even be considered as a GI if it relates to a particular geographical region and is used, because the case is also, on or in relevancy some products originating in this country, region or locality. This clause requires symbols apart from geographical names to be covered, like ‘Basmati’.

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7.3

Chapter 7/Geographical Indications of Goods Act, 1999

Meaning/Definition of GIs and GIs Act

A GI is a name given to some distinct products corresponding to specific geographical region which can be a town, a region or a country. In India, the GI Act came into force from September 2003 and Article 22(1) of the TRIPS agreement has defined the GI as a geographical tag on certain goods.

7.3.1  GIs: Meaning and Definition Geographical indications have emerged in recent years jointly of the foremost effective tools for shielding ‘the price, reputation or other character of products which are essentially owing to their geographical roots. ‘Geographical signatures are a kind of useful tool too’. This can be a ‘source recognition’ and a ‘price measure or indicator of quality’. It helps to push products of a given region or nation and ‘worthy for relief from infringement and/or unfair competition’. ‘Darjeeling Tea’ was the primary GI recorded under the GI Act, within the Indian sense. This GI is licensed on behalf of India’s Tea Board that also holds GI registrations for ‘Nilgiris Tea’ and ‘Assam Tea’. Likewise, ‘Malabar Coffee’ incorporates a subsisting registration with the Coffee Board (under the Ministry of Commerce and Industry). Also, popular are ‘Kashmiri Pashmina’, ‘Mysore Silk’, ‘Lucknow Chicken Craft’ and ‘Feni’. On 15 September, 2003 came into force the Geographical Indications of Products (Registration and Protection) Act, 1999. The Act was passed with the target of providing protection, as a GI, for any agricultural, human, or manufactured products, or for any handicraft or industrial goods, including foodstuffs. 7.3.2  Geographical Indication Act Section 2(e) of the Geographical Indications of Products (Registration and Protection) Act, 1999 defines ‘GIs in relevancy goods as an indication identifying goods such as agricultural goods, natural goods or produced goods originating in, or produced in, the territory of a country or an area or locality in that territory where the interest, reputation or other characteristics of the goods have been formed or determined’. These products are generally because of their geographical origin and, where these goods are made, one in all the activities of manufacture or processing or preparation of the products concerned occurs in this area, region or locality, as the case may be. Explanation: For the needs of the above definition, any name which is not the name of the country, region or locality of that country shall even be considered GIs if it relates to a particular geographic region and is employed, because the case is also, on or in relevancy particular products originating in this land, region or locality. Section 2(f ) of the act describes ‘products’ as meaning any 1. 2. 3. 4.

agricultural goods or natural goods or industrial goods or artisanal products and foodstuffs.

The description set out above is not exhaustive but merely illustrative. Under Section 2(g), the word indications have also been established to include 1. any name or 2. geographical or figurative representation or 3. any combination or implication of the geographical origin or products to which it relates.

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7.3  Meaning/Definition of GIs and GIs Act

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7.3.3  Procedure for GI Registration: An Overview Before filing an application for GI, it is necessary to check that whether the indication comes within the scope of the GI definition as mentioned under section 2(1)(e) of GI Act. Registration of GI prevents the unauthorised use of registered GI by others, provides better legal protection and can facilitate an action for infringement. Application Procedure for GI Registration Either a group of people, or a group of producers, or anybody or agency set up by or under any law representing the interests of the producers of the products concerned can apply for registration (see Fig. 7.1 for a flowchart on GI registration process). Step-by-step procedure for registration of GI is listed in the following: 1. Step 1(a) – Filing of application (a) The GI registration form shall be submitted in triplicate. (b) The application must then be signed together with the statement of case by the applicant or his agent and must be submitted along with the desired form GI-1. (c) A single application for various classes of products is charged, and costs payable for every of these classes of products. (d) An affidavit must be submitted by the group of people, companies, organisations or agencies representing the producers’ interest in such products and whether the applicant appears to be representing their interest. 2. Step 1(b) – Contents of the application (a) Firstly, it should state how the GI helps to spot the products as originating within the country or area or localities concerned, because the case is also, with reference to quality requirements, reputation, characteristics which are solely because of certain environmental conditions with natural or human inheritance factors regarding the territory. (b) It should also include the category of products to which the GI refers. (c) The geographical map of the territory of the country or region or the position of the country within which the products are produced or assembled. (d) Information of the presence of geographical signs on whether it consists of words or figurative elements or both. (e) Statement containing the applicant’s information including the names, addresses and other information which can be stated from time to time. 3. Steps 2 and 3 – Preliminary scrutiny and examination (a) The reviewer must review the document for any defects and inconsistencies. (b) In the event of any shortcomings and inconsistencies, the applicant is anticipated to rectify the identical with a 1-month span of its correspondence. (c) The accuracy and validity of the substance of the statement made by the claimant shall then be evaluated by the registrar in consultation with a panel of experts. (d) The investigation report will only be published after sufficient review and analysis. 4. Step 4 – Issue of show cause notice (a) If the registrar has any objection about the submission, the applicant shall be told of the identical.

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(b) The applicant must respond within 2 months of receiving the notice or he may request a hearing. (c) The registrar was entrusted with the proper to withdraw the appliance after allowing the applicant a good opportunity to be heard if he’s of the opinion that there was a mistake on the applicant’s part and also the same was communicated to him. (d) If aggrieved, an appeal is lodged within a span of 1 month following the choice of the registrar. 5. Step 5 – Publication in the geographical indications journal: Any application for the registration of a geographical indication which has been approved fully or subject to conditions or restrictions shall be published within the geographical indications journal within 3 months of its approval. 6. Step 6 – Opposition to registration (a) Any individual may lodge an opposition notice within 3 months (extendable by another month for the asking to be lodged before 3 months) against the GI application published in triplicate within the journal along with the GI-2 form. (b) The registrar shall serve a replica or duplicate of the notice to the applicant for registration and also the applicant shall submit the hardcopy of the counter statement specifying the grounds on which he relies on his application to the registrar within a period of 2 months from the date of receipt of such notice; failure to try to do so will lead to the abandonment of his application. (c) Upon receipt by the applicant of the counter argument, the registrar shall supply the person giving the notice of opposition with a replica of the identical. (d) The claimant and also the opponent must present to the registrar some facts on which they depend, as is also recommended by the registrar from time to time. (e) The registrar shall allow the parties ample time to be heard. After hearing all the parties and considering all the facts, the registrar shall determine whether to grant the request with or without restrictions or conditions. (f ) When it involves the registrar’s notice that either the applicant or the person giving the notice of opposition is neither residing nor carrying on the business in India, the registrar may request that he give the protection for the prices of the proceedings before him and, within the event of any failure to supply such protection, may treat the appliance or the opposition as abandoned because the case is also. (g) On request, the registrar can let in the notice of opposition or counter-statement to create any correction or modification of a slip. 7. Step 7 – Corrections and amendments: The registrar may from time to time permit the correction of any error or a modification of the appliance, subject to certain terms and conditions, either before or after acceptance of the appliance. 8. Step 8 – Registration (a) The registrar shall register the geographic indication for the identical upon approval of the appliance. (b) If the appliance is registered, the date of filing is known as the date of registration. (c) The registrar shall then issue a certificate with the seal of the registry of the GI in Form 2 pursuant to Rule 55 of ‘The Registration and Security Rules for Geographical Indications of Products, 2002’.

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7.3  Meaning/Definition of GIs and GIs Act

Filing an application

Examination

Appeal to IPAB

Objection

Opportunity for hearing

Refused

Acceptance

Advertise in the GI journal Opposition if any

Appeal to IPAB

Allowed or Refused

Acceptance of GI

Entered in the GI register

Registration certificate issued

Particular of regd. GI entered in Part A of the register

Particulars of regd. authorised user entered in Part B of the register

Figure 7.1  Flowchart of the GI registration process.

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9. Step 9 – Duration, Renewal and Restoration (a) A licensed GI is valid for 10 years and may be extended upon renewal fee payment. (b) The registrar shall, at the time before the expiry of the last registration of the GI, give the notice, because the case is also, to the registered proprietor or approved consumer concerning the expiry date and also the conditions for payment of fees and upon renewal of which registration is obtained. (c) Failure to try to do so may lead to the loss of GIs. (d) Where a GI has been withdrawn by the registrar on grounds of non-payment of the renewal fees, the GI is also reinstated for a period of 10 years after the expiry of the last registration of the GI on a specified application and after payment of the desired fees. 10. Step 10 – Appeal to the Appellate Board: Any person grieved by a registrar’s order or decision under the act or the principles laid down therein may prefer an appeal to the Intellectual Property Appellate Board (IPAB) within 3 months of the date on which the order or decision sought to be appealed.

7.4

Duration of Protection: Penalties and Remedies

Although the registration of GI is fixed for a specific time duration, it may be renewed from time to time according to the provisions made in GI Act. Unauthorized use of registered GI is subjected to penalties and the remedies for infringement of GI are more or less similar to the trademark infringement remedies.

7.4.1  Duration of Protection A GI is registered for a 10-year period, and the registration can be extended from time to time for a 10-year period. 7.4.2  Infringement of GI A person who is not a registered owner or authorized purchaser violates a registered GI, uses such an illustration on the goods or shows that those goods exist in some other geographical vicinity, which confuses someone other than the precise area of public goods. A GI of the mark additionally infringes any use which constitutes an ‘unfair competition’ act, distinct rationalization of 1 and a pair of segments 2(b). This clause seeks to allow impact to Article 22(2)(b) of the TRIPS Agreement, which permits members to ‘offer criminal way for stakeholders to keep away from any use of the Paris Conference (1967). A GI is moreover infringed with the aid of someone who is not always a registered proprietor or legal patron, who uses some other GI for the product is actually legitimate on region, or place from which the goods originated, and who publicly misrepresents the products originating in a locality, or area to which those registered geographical warning signs belong. Article 22(4) of the TRIPS settlement specifies that the safety of a hallmark’s GI ought to be observed except whilst the GI. 7.4.3  Remedies for Infringement of GIs Remedies associated with infringement of geographical signs are near remedies associated with infringement of a trademark. Similarly, falsification of a GI under the (Indian) Geographical

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Indications Products (Registration and Protection) Act, 1999 remedies are available for the protection of geographical signs and can be divided loosely into the following two categories: 1. Civil remedies (a) Injunction: Injunction contains, temporary injunction and final injunction. In addition, the court may order an expert injunction for • the discovery of records or • the protection of infringing products, records or other facts relating to the subject of the suit or • Restraining the defendant to dispose with or go with his properties in approaches and that could adversely affect the right of the claimant to get damages, expenses or different pecuniary reimbursement so that it will eventually be granted to the claimant. The aforementioned injunction remedy is greater a success and might save the claimant from experiencing an extra damage. (b) Damages: Harm compensation or benefit plan within the kind of general damages is critical so as to discourage infringers from infringing. Damages (other than minor losses) or income accounts should be removed if the defendant assured the court that he was unaware and there was no fair basis for this assuming the claimant’s GI was registered when he was engaged in using it, and he stopped using it when he became attentive to the presence and purpose of the GI. (c) Delivery of the infringing labels and indications of containing products: Ordering the infringer to submit infringing labels and signs for destruction by taking into consideration the precise circumstances may or might not order the court for such remedy is at the discretion of the court. Also, all the remedies listed are available for the passing off action. Passing off measures are taken against violation of unregistered GI. 2. Criminal remedies: Criminal remedies are simpler than civil remedies, because the former will be easily disposed of case pendency does not warrant a suspension of criminal proceedings concerning the identical subject. Since criminal proceedings threaten the reputation and social standing of the violator directly. He drops out of court in some cases to resolve the touch to save their reputation. The act includes punitive provisions for violation of varied provisions concerning GIs which are discussed in the following: (a) To falsify the products and to apply GIs incorrectly. (b) Selling goods which are subject to false GIs. (c) Misrepresentation of a registered GI. (d) A position of the geographically linked business indication registry is incorrectly defined. (e) Forgery of entries in register. The punishment imposed for the above offenses ranges from 6 months to 3 years imprisonment and a fine of `50,000 which may touch two `200,000. However, the court can impose lesser punishment for appropriate and specific reasons in writing. The act also sets out increased provisions for second or subsequent convictions. For these cases, the amount of incarceration shall not be but 1 year which can extend up to 3 years and therefore the fine of not but `100,000 which can extend up to `200,000. The courts have the facility to impose a lesser punishment after appropriate and specific reasons for granting that lesser punishment are reported within the judgment. No cognisance of any arrest made before the start of this law is taken. The crime is cognizable under the act.

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7.5

Chapter 7/Geographical Indications of Goods Act, 1999

Distinction between GIs and Trademarks

1. GIs classify a good as having originated from a specific location. A trademark, by contrast, marks a product or service as originating in a specific business. 2. Also, a trademark is a fanciful or meaningless symbol. Conversely, the name used as a GI is typically decided by a geographical area name. 3. Finally, anyone, anywhere in the world, can be granted or licensed a trademark because it is connected to a specific business and not to a particular location. In comparison, any person in the region of origin who produces the good in compliance with specified requirements can use a GI, but because of its connection with the place of origin, a GI cannot be issued or licensed to anyone outside that place or who does not belong to the community of approved producers.



Multiple Choice Questions

1. The term ‘geographical indications’ could be used for (a) agricultural goods. (b) natural goods. (c) manufactured goods. (d) all of these. 2. A GI is a (a) private right. (b) community right. (c) intellectual property right. (d) both (b) and (c). 3. GIs are used to indicate (a) a geographical place. (b) a link between some characteristic of the good and the particular region where it is produced. (c) the place where the goods are manufactured/produced. (d) the origin of goods. 4. The sign used for a GI may be (a) a name of a geographical place. (b) a symbol. (c) a map. (d) all of these. 5. Who can apply for registration of a GI? (a) An association of persons. (b) An organization of producers.

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(c) An individual. (d) Only (a) and (b). 6. Who can be considered a ‘producer’ in relation to goods under the Geographical Indications of Goods Act? (a) A person who produces, processes or packages agricultural goods. (b) A person who uses natural goods in making or manufacturing products. (c) A person who makes or manufactures handicrafts or industrial goods. (d) All of these. 7. What is the term period of ‘geographical indication protection’? (a) Unlimited period. (b) Twenty years but may be renewed from time to time for an unlimited period. (c) Fifteen years but may be renewed from time to time for an unlimited period. (d) Ten years but may be renewed from time to time for an unlimited period. 8. Who can initiate an action for the infringement of a GI? (a) The government. (b) The registered proprietor. (c) The authorized user. (d) Only (b) and (c).

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Frequently Asked Questions in Interviews

9. A GI can be licensed. (a) Yes (b) No (c) Yes, but in some cases only. (d) Yes, but with stringent quality control.



Frequently Asked Questions in Interviews

1. What is a geographical indication? Answer A geographical indication (GI) is a symbol used for goods of a specific geographical origin and of quality or a reputation due to that origin. A sign must mark a commodity as originating at a given place in order to act as a GI. Additionally, the product’s qualities, characteristics or reputation should be due in essence to the place of origin. Since the qualities depend on the geographical location of production, a clear link exists between the product and its original place of production. 2. What is Geographical Indication of Goods Act, 1999? Answer The Geographical Indications of Products (Registration and Protection) Act, 1999 is defines ‘GIs in relevancy goods as an indication identifying goods like agricultural goods, natural goods or Produced goods originating in, or produced in, the territory of a country or an area or locality in that territory where the interest, reputation or other characteristics of the goods have been formed or determined’. Those products are generally because of their geographical origin and, where these goods are made, one in all the activities of manufacture or processing or preparation of the products concerned occurs in this area, region or locality, because the case is also. 3. For which types of products can GIs be used under Section 2(f ) of GI Act?

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10. Select the correct remedies for infringement of GIs. (a) Criminal remedies. (b) Civil remedies. (c) Both (a) and (b). (d) None of these.

Answer Section 2(f ) of the GI act describes ‘products’ as meaning any (1) agricultural goods or (2) natural goods or (3) industrial goods or (4) artisanal products and foodstuffs. 4. Who can apply for the registration of a GIs? Answer Either any group of people or (2) any group of producers or (3) any organizational body or agency set up by or under any law representing the interests of the producers of the products concerned. 5. Who is a registered proprietor of a GI? Answer (a) A registered proprietor may be any group of individuals, owners, entity or authority founded by or under the law (b) Their name should be entered as registered proprietor in the Register of Geographical Indication for the GI that has been applied for. 6. Who is an authorised user? Answer (a) A goods producer may apply to be registered as an authorized user. (b) It must be in respect of a GI registered. (c) In the prescribed form he should apply in writing along with prescribed fee. 7. What is the duration of GI? Answer A GI is registered for a 10-year period, and the registration can be extended from time to time for a 10-year period.

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8. Can a registered GI be assigned, transmitted, etc.? Answer A registered GI cannot be assigned, transmitted, etc. (a) A GI is a public property which belongs to the producers of the goods concerned. (b) It shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or such other agreement. (c) Nevertheless, when a person who is authorized dies, his right devolves in title to his successor. 9. When is a registered GI said to be infringed? Answer (a) When an unauthorized consumer makes use of a GI implying or suggesting that such goods originate in a geographical region other than the true place of origin of such goods in a way that misleads the public as to the geographical origin of such goods. (b) If the use of GI leads to unfair competition, including passing of the GI registered. (c) Where the use of another GI results in the public being misrepresented that



products originate in a region for which a registered GI relates. 10. What is the difference between a GI and a trademark? Answer (a) Geographical indications (GIs) classify a good as having originated from a specific location. A trademark, by contrast, marks a product or service as originating in a specific business. (b) Also, a trademark is a fanciful or meaningless symbol. Conversely, the name used as a geographical indication is typically decided by a geographical area name. (c) Finally, anyone, anywhere in the world, can be granted or licensed a trademark because it is connected to a specific business and not to a particular location. In comparison, any person in the region of origin who produces the good in compliance with specified requirements can use a GI, but because of its connection with the place of origin, a GI cannot be issued or licensed to anyone outside that place or who does not belong to the community of approved producers.

Answer Key

Multiple Choice Questions 1. (d) 2. (d)

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3. (b) 4. (d)

5. (d) 6. (d)

7. (d) 8. (d)

9. (b) 10. (c)

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8

Protection of Plant Varieties and Farmers’ Rights Act, 2001: An Overview

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Outline the law of plant varieties and farmers’ rights. • Explain the meaning and definition of plant varieties and farmers’ rights.

8.1

• Explain the registrable varieties of plant varieties and farmers’ rights. • Explain the procedure for registration of plant varieties and farmers’ rights.

Introduction

The Plant Varieties Protection and Farmer’s Rights Act, 2001 safeguards the rights of farmers to save, use, sell and exchange the farm produce. It also assures that the seeds which the farmers buy are of good quality. It is applicable to all farmers in India and around 12 crop species are included in the ambit of this act.

8.2

Plant Varieties and Farmers’ Rights: Meaning and Definition

In order to accommodate the foundation of a powerful system for the protection of plant assortments, the privileges of breeders and plant breeders and to encourage the production of new assortments of plants considered essential for the perception and assurance of breeders’ privileges with regard to their commitments when rationing, improving and making available plant hereditary activities assets for the advancement of new plant assortments, the Government of India approved ‘Protection of Plant Varieties and Farmers’ Rights (PPVFR) Act, 2001’. Indian law is not only identical to the 1978 International Union for the Protection of New Varieties of Plants (UPOV) but also has appropriate provisions for safeguarding the rights of open segment rearing foundations and ranchers. The statute perceives the obligations of both business plant reproducers and breeders in the movement of plant rearing and also provides for the execution of the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in such a way as to enhance the specific financial interests of the considerable number of partners, including private, open segments and research establishments, just as asset-obligated breeders. The act includes the following basics: 1. Variety security developed through research from both public and private sectors. 2. Protection of varieties produced and maintained by farmers and traditional societies, granting them the legal right to save, use, grow, re-sow, trade, share or sell their farm seed, even if farmers are not entitled to sell labelled seed of a variety covered under this act.

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3. Encouraging plant breeders and researchers to grow new varieties and enhance the new techniques. 4. Establishment of the ‘Plant Varieties Protection and Farmers’ Rights Authority (PPVFRA)’ for the identification of new varieties and the determination of claims for the sharing of benefits to these varieties. 5. Provision of civil and criminal remedies for the violation of protected plant varieties and their transition. 6. Provisions for issuing mandatory licenses in situations where increasing public standards have not been met.

8.3

Registrable Varieties of Plants

1. Under this act, a new variety of plant shall be licensed if it meets with the standards of uniqueness, distinctiveness, uniformity and stability. 2. An extant variety shall be registered in accordance with this act within a specified period if it meets the specificity, uniformity and stability criteria specified in the regulations. 3. For the purposes of Subsections (1) and (2), as the case may be, a new variety shall be regarded to be considered for the following elements: (a) Novel: If the propagating or harvested material of that variety was not sold or otherwise disposed off for the purposes of production of that variety by or with the permission of its breeder or his successor at the date of filing of the application for defence registration,   in India, earlier than 1 year or  outside India for trees or vines older than 6 years or in any other case, less than four years before the date of registration of such vines: because a trial of a new variety that is not sold or otherwise disposed off does not affect the right to protection, Furthermore, provided that the fact that, on the date of filing of the application for registration, the propagating or collected material of such variety has become a matter of common knowledge rather than the aforementioned method does not affect the criteria for novelty of such variety. (b) Distinct: If at least one significant feature whose existence is a matter of common knowledge in any country at the time the application is filed is easily distinguishable from any other variety. (c) Uniform: Where its essential characteristics are sufficiently consistent, subject to the variation expected from the particular characteristics of its propagation. (d) Stable: In the case of a particular propagation cycle, whether its fundamental characteristics remain unchanged after repeated propagation or at the end of each of those cycles. 4. Varieties of farmers are known as varieties traditionally grown and developed by farmers in their fields, or as varieties of any variety of which farmers have common knowledge of a wild relative or land race. 5. Essentially derived variety which is any variety derived from a new or present variety registered under the act. The act also mandates that if an effectively generated variety is produced by a variety of farmers, permission must be obtained from the farmers’ or farmers’ association concerned.

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8.4 Procedure for Registration

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Procedure for Registration

According to 2001 Act, a farmer who applies for the registration of a plant variety is recognized as a plant breeder or innovator. Most farmers and farming communities are encouraged to register under this act by various organizations such as G.B. Pant Agricultural University, M.S. Swaminathan Research Foundation (MSSRF), National Innovation Foundation, Govt. of Odisha.

8.4.1  Application for Registration of a Variety Application for registration of a variety can be done by 1. any person claiming to be variety breeder or 2. any successor to the breeder of the variety; or any person claiming to be the variety’s assignee or breeder in relation to the right to make such a request or 3. any farmer or agricultural group or farming community that claims to be a breeder of the variety or 4. any individual approved to apply on behalf of the farmers or 5. any university or publicly financed agricultural institution claiming to be a breeder of the variety.

8.4.2  Registration Process of Farmers The right to register recognizes the farmer’s position as plant breeder and innovator. Under the act, the operationalization of this right was intended to serve as a crucial means of protecting the farmer from exposure to a full patent regime characterized by full privatization of intellectual property rights. An application passes through two phases before the enrolment periods. 1. Firstly, all applications that the authority receives are collected and released on its website. 2. In the second level, only those varieties whose applications have been approved for ‘distinctness, uniformity and stability (DUS)’ testing will subsequently be published in the Plant Variety Journal of India – the authority’s journal. 3. Any objections to registration may be brought up for consideration at this stage. Once approved for registration, the details of an application are reported in the Plant Variety Journal of India. 4. This publication has the sole objective of ensuring that there is no resistance to the applicant’s argument to the particular variety. Each request requires processing time of between 8 and 20 months. Registration is provided based on the denomination which is sometimes referred to as the ‘name or term’ of a variety. 5. When a variety is registered it is again marketed in the Plant Variety Journal of India as a registered variety. 6. For annual crop varieties the breeder then has the exclusive right to market and harvest the crop for a period of 15 years, and for 18 years for trees and vines. In addition, the act specifies that where derived varieties are grown from the varieties of farmers, permission to cultivate them must be obtained from the community of farmers or individual farmers prior to commercial production. Figure 8.1 shows the flowchart of the procedure for registration of plant varieties protection.

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Reception To receive application and allot PVP number. Coupon to be issued to applicant. Only completed application with all enclosures, registration fee (non-refundable), wilh the requisite quantity of seeds in officially sealed packing will be accepted. Vegetative propagated planting material has to be submitted to respective crop specific DUS centre as per details available on website within 10 days of submitting the application with an exception in case of perennial crops as listed on the website where testing will be on site and no propagating material to be enclosed.

PVP application number Updating of records, PVP application number and printing of acknowledgement.

For application received by hand at HQ/branch offices before noon, acknowledgement can be collected between 5:00 to 5:30 pm in exchange of coupon. For application received in the afternoon. acknowledgement can be collected on next working day between 10:00 to 10:30 am.

Acknowledgement Application transferred to concerned Registrar

For applications received through post/courier acknowledgment shall be posted latest by next working day by dispatch section.

Examination of application Queries raised by Registrar to be issued within 7 days to the applicant for compliance within 15 days. Within next 7 days, the Registrar shall examine the reply and if acceptable, ask for depositing DUS testing fee. If fee not received in 15 days application with seed shall be returned to the applicant.

Allotment of registration (REG) number If the application is accepted, the REG number of the variety shall be informed to the applicant and published in PVJ. REG number shall be the reference number of the variety.

Dispatch of seed to DUS centre Registrar to dispatch seed (in case of vegetative propagated planting material, specific instructions) to concerned DUS centre at least 15 days before the sowing season with the instructions on reference variety/ies based on database.

DUS Testing DUS centres will test the candidate variety as per DUS guidelines. If, at the end of first season, it is noted that an essential trait is expressing significant distinctiveness between the locations, then Registrar/nominee along with a representative of the applicant has to visit the sites for consensus decisions during season.

DUS Testing for EDVs For testing of EDV hybrid/variety DIJS characterization is done along with original hybrid/variety (initial hybrid/variety) and in case of hybrid EDV, essentially derived parent(s) and original parent(s) for one year at two locations.

Data analysis After DUS testing, tabulated and certified pooled data from the centres will be submitted to registry by the PI within 4 months after harvest. Registrars to take final decision within next 15 working days on the, candidate variety.

Pre-grant opposition Published in PVJ for inviting pre-grant opposition. If no pre-grant opposition received within stipulated time as per Section 21 checklist will be prepared by registry within 2 weeks and registration certificate will be issued to the applicant.

Figure 8.1  Procedure for registration of plant varieties protection.

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8.5 Multiple Choice Questions

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Plant Varieties Protection

In November 2005, the PPVFRA was formed for the registration of new varieties and the determination of benefit sharing claims for those varieties. The administration is based in New Delhi. The comprehensive rules and regulations and crop specific guidelines for obtaining this protection has already been established by this authority. PPVFR has set up a National Register of Plant Varieties under the Ministry of Agriculture of the Union ministry of agriculture to register crop varieties. As provided for in Section 24 of the Plant Variety Protection Act, the total registration validity period for an application shall not exceed 1. 18 years-in case of trees and vines; 2. 15 years in case of extant varieties; 3. 15 years-in any other case. The certificate of registration issued for trees and vines will be valid for 9 years, and for other crops for 6 years. It may be reviewed and renewed in lieu of paying maintenance fees for the remaining period, provided that the accumulated validity period for trees and vines.



Multiple Choice Questions

1. Variety of plants means (a) taxon level lowest. (b) taxon top grade. (c) in all ranks. (d) not for taxon. 2. Varieties of plants need protection (a) to produce greater yield. (b) to obtain more plant resistant to paste. (c) foster research and development. (d) all of these. 3. Farmer can be considered as breeder. (a) Yes (b) No (c) Yes, but in some cases. (d) It may be considered. 4. The requirements needed to register a plant variety include (a) new one. (b) distinct one. (c) uniform one. (d) all of these.

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5. UPOV is (a) the convention for plant variety. (b) a patent of United States. (c) the convention for patent. (d) none of these. 6. The certificate of registration issued for trees and vines will be valid for (a) 9 years (b) 10 years (c) 11 years (d) 12 years 7. Breeders has the exclusive right to market and harvest the crop for a period of (a) 13 years (b) 15 years (c) 17 years (d) 10 years 8. The plant variety protected in India include (a) extant variety. (b) essentially derived variety. (c) farmer’s variety. (d) all of the these.

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9. The total registration validity period (for trees and wines) an application shall not exceed (a) 12 years (b) 14 years (c) 16 years (d) 18 years



Frequently Asked Questions in Interviews

1. Why has protection of plant varieties become an important issue? Answer The propagation and development of new varieties are the deciding factors for the increase of rural income and their overall economic growth. Given that the cycle of plant breeding is long and costly, it is necessary to have an efficient plant variety protection system with the goal of promoting the production of new plant varieties for the benefit of society. 2. What are the farmers’ rights? Answer (a) Farmers who have bred or developed a new variety shall be entitled, in the same manner as a breeder of a variety, to registration and other protection under the PPVFR Act, 2001. Farmers engaged in the conservation and enhancement of the genetic resources of soil breeds and wild relatives of economic plants by selection and preservation shall be entitled to ‘Gene Fund’ recognition and compensation in the specified manner, provided that such selected and preserved material has been used as donors of genes in the varieties registered under this act. (b) Farmers shall be entitled to save, use, sow, re-sow, trade and distribute or sell their agricultural goods, including seed of a variety protected under this act, in

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10. Is it necessary to submit the seed/propagating material before registration? (a) No (b) Yes (c) Sometimes (d) It may be necessary.

the same manner as they were entitled to before this act came into force, except that the farmer is not entitled to sell the branded seed of a variety protected under this act. 3. What is the duration of protection of a registered plant variety? Answer The duration of protection of registered varieties is different for different crops which are as follows: (a) For trees and vines: 18 years. (b) For other crops: 15 years. (c) For extant varieties: 15 years from the date of notification of that variety by the Central Government under Section 5 of the Seeds Act, 1966. 4. Who can apply for the registration of a plant variety? Answer Application for registration of a variety can be made by (a) any person claiming to be a variety breeder or (b) any successor to the breeder of the variety or (c) any person claiming to be the variety’s assignee or breeder in relation to the right to make such a request or (d) any farmer or agricultural group or farming community that claims to be a breeder of the variety or

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Answer Key

(e) a ny individual approved to apply on behalf of the farmers or (f ) any university or publicly financed agricultural institution claiming to be a breeder of the variety. 5. Address the conditions for registering variety breeders in India. Answer A new variety is licensed under this act if it meets the requirements of novelty, distinctiveness, uniformity and stability. 6. Can a person apply for registration of a variety which is already in the market? Answer Any variety that is already on the market but has not been on the market for more than a year can be listed as a new variety. Many older varieties can be registered as extant variety. 7. What are the acts of infringement of the rights provided to the registered breeder under the act? Answer Following acts may be a case of infringement under the PPVFR Act, 2001: (a) If a person who is not a breeder of a variety registered under this act or a registered agent or a registered licensee of that variety sells, exports, imports or manufactures that variety without the permission of its breeder or within the jurisdiction of a registered license or registered agency without their permission from the registered license or registered agent. (b) If a person uses, sells, exports , imports or produces any other variety that gives such variety, the denomination is



identical with or deceptively similar to the denomination of a variety that has already been registered under this act in such a way that it creates confusion in the minds of the general people in identifying the variety. 8. If any individual falsely represents a variety as a registered variety, is there any punishment? Answer If any person falsely represents a variety as a registered variety, he shall be punished with imprisonment for a period not less than 6 months that may be extended up to 3 years or with a fine not less than one lakh that may be increased to five or both lakhs. 9. Can the term be extended for variety protection? Answer In the case of trees and vines, an initial registration certificate shall be valid for a period of nine years, for other crops it shall be 6 years. The term can be extended for an additional period that cannot exceed 18 years from the date of registration in the case of trees and vines, 15 years in the case of other varieties. 10. What are the rights of the owner of protected plant variety? Answer The owner of the protected plant variety has the following rights to (a) produce the protected variety, (b) sell the variety, (c) market the variety, (d) distribute the variety, (e) import the variety and (f ) export the variety.

Answer Key

Multiple Choice Questions 1. (a) 2. (d)

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3. (a) 4. (d)

5. (a) 6. (a)

7. (b) 8. (d)

9. (d) 10. (b)

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9

Trademark

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Outline the laws of trademark act in India. • Explain the meaning and definition of trademark.

9.1

• Explain the procedure for registration of trademark in India. • Discuss infringement issues and remedies related to trademark.

Introduction

A trademark (TM) is the name, symbol, figure, letter, form or device adopted and used by the manufacturer or merchant in order to designate the goods that he manufactures or sells, and to distinguish them from those manufactured and sold by another, to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry or enterprise. This chapter discusses the laws of trademark act in India, explains the meaning and definition of trademark and the procedure for registration of trademark in India. Also discussed in this chapter are the infringement issues and remedies related to trademark.

9.2

Definition of Trademark

A trademark may be a word, symbol, logo, slogan, or any combination of it used to identify and distinguish the goods or services of one person from the goods or services of another, and act as an indicator of the source of the goods or services. Trademark is a distinctive sign of some sort that an organization uses to identify itself and its products and services to consumers in a unique way, and to distinguish the organization and its products or services from those of other organizations. A trademark is a type of industrial property, unlike other types of intellectual property. A trademark conventionally involves a name, term, expression, logo, emblem, design, image, or a combination of those elements. There are also a range of non-conventional trademarks that include marks that do not fall within these standard categories.

9.3

Trademark Act in India

The Trademarks Act, 1999 (TMA) protects the trademarks, and a passing off or/and infringement action may challenge their breach. The act covers the remedies through the well-known passing off principles of common law. At the same time, it is in line with the universal norms and standards accepted by the Trade-Related Aspects of Intellectual Property Rights (TRIPS). The security afforded under the act is therefore reliable and safe.

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The act protects a trademark in respect of goods or services on the basis of either use or registration or both elements. A trademark registration is often granted only for a fixed period of time, although it can be extended without time restriction. A trademark may therefore be protected indefinitely. The TMA protects the following as trademarks: 1. Any name (including the applicant’s or predecessor’s personal or surname in business or the person’s signature) which is not unusual for trade to adopt as a mark. 2. An invented word or other arbitrary dictionary term or terms that are not specifically defining the essence or quality of the goods/services. 3. Letters or numerals, or any of their variations. 4. Tools such as fancy apps or monogram symbols. 5. Colour combination or even a single colour in combination with a word or device. The shape or packaging of the goods. 6. Marks which constitute a sign of three-dimensions. 7. Sound marks when represented by being graphically depicted in traditional notation or defined in words.

9.4

Trademark Offences and Penalties

There are mainly two classes of trademark offences: 1. Falsification of trademark: The punishment for the above offences shall be not less than 6 months of imprisonment which may extend to three years and a fine which shall not be less than `50,000, but may extend to `200,000. The court can propose a lower punishment than the minimum, only after recording adequate and special reasons for the same. 2. Falsely applying the trademark to goods or services: Imprisonment of not less than 1 year which may extend to three years and a fine which shall not be less than `100,000 but it may extend to `200,000. The court can propose a lower punishment than the minimum, only after recording adequate and special reasons for the same.

9.5

Use of TM on Goods/Services and Advertisements

A trademark can be recognised as an advertisement whereas an advertisement cannot be regarded as a trademark. Trademark and advertisements are effective tools in the promotion of a successful business and in turn better sells.

9.5.1  Trademark for Goods/Services It is important to get a trademark or service mark to protect your brand’s intellectual property in relation to the goods and services you provide. In conjunction with your products and services, trademarking the brand grants you exclusive rights to use the name and logo in connection with certain goods and services. This may include words, names, symbols, and designs or a combination of those things identifying your brand. The key components of the goods and services description are as follows: 1. International class number: Such classifications are provided in the Nice Agreement on the Universal Classification of Products and Services for the Registration of Marks Purposes, 10th edition, 2011. There are 45 different class codes, in which you can identify your submission. Of those

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9.6 Protecting Domain Name as Trademarks

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classes, 34 are for goods and 11 are for services. There are more than 11,000 listed goods and services under those groups. Choosing the international class number which best describes your product or service is crucial. 2. Goods and services description: You may need to describe your products and services with a detailed explanation of what you are covering under your application in connection with your brand. Using the Acceptable Identification of Goods and Services Manual, you can look for acceptable goods and services. Goods and services belonging to more than one class can be included on a single application, so you would then have to have several classes on your application. This will result in higher fees for applications. Trademarking products and services is significant since it offers a few advantages: 1. Notice to the media: The filing for a trademark is a matter of public record, and the fact that you are the trademark owner is transparent and open to everyone. 2. Legal presumption of ownership nationwide: Your mark gives you ownership of the trademark rights in all states.

9.5.2  Trademark in Advertising There are certain circumstances when you can use a trademark of another in advertising and it will be considered a fair use, an affirmative defence to the infringement of the mark. Comparative advertising is one thing. It is a ‘nominative use’ form. This happens when one party uses the mark of another party to refer to the proprietor of the mark or its products or services. In order to identify the mark owner or the goods and services, the use of the mark must be necessary. The user of the trademark cannot imply or suggest sponsorship, endorsement or affiliation by the mark owner. Essentially, if you use a third-party’s mark in comparative advertising in a way that does not confuse or mislead consumers and the user only uses as much of the mark as necessary for identification (for example, use of the words but not use of the same font or graphics), then this will be considered fair use. Another common example of ‘nominative use’ is where a distributor or retailer describes what the goods are that they are offering for sale. A second circumstance where, under the doctrine of fair use, one may use another trademark in advertising is the use of a term in a descriptive way. The implementation must be in good faith and used with the term’s primary sense. The term/trademark must be used in a way that does not function as a trademark and does not cause confusion on the part of consumers. In advertising, another controversial area is the use of trademarks as keywords. A keyword is a concept used by the party performing an Internet search to create a query for the purpose of producing information on the subject matter being queried. Keyword advertisement is such that when a search engine is charged by an advertiser to show advertisements in response to a search engine query containing keywords chosen by that advertiser.

9.6

Protecting Domain Name as Trademarks

The rapid increase in online business and advertising prompted a growing demand for domain names (Internet addresses) that are linked to particular businesses, goods or services. The scramble to reserve domain names has caused several disputes regarding trademark infringement. For example, some businesses that wished to use their established trademark as a domain name discovered that it had already been taken. Once a domain name has been chosen, the holder might be

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able to obtain trademark protection in order to prevent others from using the name. However, trademark rights in commercial domain names are more limited than trademark rights in other areas.

9.6.1  Trademark Rights in a Domain Name Because a ‘domain name’ acts as the primary indication of what is to be found on the web on a given website, it is highly desirable to have a distinctive or memorable domain name. In fact, the holder of the domain name may choose to trademark the domain name to prohibit anyone from using it. The ability to trademark a domain name is however limited. For determining whether a domain name should receive a trademark, two threshold requirements are required which are listed as follows: 1. The domain name must be used as a trademark. 2. The domain name must be distinctive. If neither is true, the domain name is merely an Internet address, and it is not entitled to the protection of a trademark.

9.6.2  Using Domain Names as Trademarks It must be used as a trademark in order to obtain a trademark for a domain name. The domain name itself, in other words, must also function as the actual source identifier. Amazon.com, for example, describes the source as Amazon.com (or Amazon books). On the other hand, suppose a law firm, ‘rwb. com’, is merely an address on the Internet, and is therefore not entitled to the protection of trademarks. Anyone else may therefore use the letters r, w and b within their own domain names, in that order. Distinctness of a ‘domain name’ under trademark laws, in general, any term, any expression, any emblem or design or combination thereof must be ‘distinctive’ from any other in order to be entitled to trademark protection. The same goes for domain names. For products, services or domain names, various types of marks exist including: 1. Fanciful marks: Words created without a dictionary definition (e.g., app: chumbo.com). 2. Arbitrary marks: Common terms used for unrelated products (e.g., software and computers: apple.com). 3. Suggestive marks: Terms suggest the underlying product (e.g., a magazine’s salon.com). 4. Descriptive marks: Terms define the product (e.g., for health information: healthanswers.com). 5. Generic marks: Popular names for an object (e.g., coffee.com). As far as the domain names are concerned, fanciful, random and suggestive marks are usually regarded as intrinsically distinctive; for example, Amazon.com, serves as a source code, and is arbitrary as distinctive. However, if a domain name uses surnames, geographical names or other common ‘descriptive’ terms, it is unlikely that trademark protection will be afforded, unless the owner has a special and unique distinction to show. Generic marks are never distinctive, and may never be protected by trademarks.

9.7

Trademark for Services

A service mark is the same type of device as a trademark, but service marks distinguish one company’s services from another supplier’s. Service marks often represent slogans. For example, a plumber’s service mark may be ‘The Leak Fixers’, with or without a distinguishing logo.

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9.8 Registration of Trademark for Goods/Services

•   173

Often, contract labels are confusing, as many of the items are bundled with services. Purchasing a vehicle; for example, may also mean you are purchasing facilities, such as maintenance or roadside assistance. Is McDonald’s, for instance, a service or a product? The enterprise McDonald’s is a service. Within that service, ‘delivering fast food’, the company could have other branded items as well. The ‘Big Mac®’ is a trademarked product. The National Archives suggests that considering the customer is one way to distinguish between a product or a service. If the client asks, ‘what can you make for me?’, this is probably a product (they also note that digital products are included). If the customer asks, ‘what can you do for me?’, this is probably a service. These include consulting, delivering specialized category counselling, training and education.

9.8

Registration of Trademark for Goods/Services

The various steps involved in registration of trademark for goods/services are discussed in this section. Step 1 – Trademark search: Many entrepreneurs fail to understand the value of a quest for a name. Bearing in mind a distinctive brand name is not a sufficient excuse enough to stop a search for a trademark. Trademark quest also allows you to know whether similar trademarks are valid, so it gives you a fair image of where your trademark stands; often it also gives you a forewarning of the possibility of a trademark action. Why waste your money later on time-consuming trademark litigation when you can opt to stop it first? Step 2 – Filing trademark application in India: Once you are confident that the brand name or logo you have chosen is not specified in Trademark Registry India, you can choose to register the same. The first step is to file a trademark application form at the Trademark Office, India. The offices for Indian trademarks are located in Chennai, Delhi, Mumbai and Kolkata. Filing is mainly performed online today. Once the application has been received, an official receipt for future reference shall be given immediately. Moreover, you can see your application’s trademark status immediately online. Step 3 – TM examination: Once a trademark claim is filed, any inconsistencies are reviewed by the examiner. The exam could take about 12–18 months to complete. The examiner may absolutely, conditionally or objectively accept the trademark. The trademark shall be published in trademark journal if accepted unconditionally. If unconditionally agreed, the conditions to be met or the objections would be stated in the examination report and a month’s time would be granted to satisfy the conditions or response to the objections. Once that response is accepted, the mark will be published in the trademark journal. If the response is not accepted, then a hearing may be requested. When the judge agrees that the trademark will be allowed to be licensed in the hearing, it applies to the trademark journal for publication. Step 4 – TM publication: In the trademark registration process, the publication stage is integrated so that anyone who objects to the trademark registration has the opportunity to challenge the same. If no opposition is registered after 3–4 months of publication, the trademark shall proceed for registration. In case there is opposition; the registrar gives a fair hearing and a verdict. Step 5 – Registration certificate: Following publication in trademark journal, if the application continues for trademark registration, a certificate of registration is issued under the seal of the trademark office. Step 6 – Trademark renewal: After every 10 years, the trademark can be continuously renewed. Therefore, your registration of a logo or brand name can be protected forever.

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Filing of application with / without priority

Examination report

1 month

Filing of reply

Accepted

Hearing

Publication in the journal

Refused / Abandoned

6 months

4 months

Wait for opposition

2 months

Reply of notice / hearing

Opposition disallowed

Registration of trademark

Figure 9.5  Flowchart for the process for registration of trademark.

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9.9 Refusal of Trademark Registration and Passing Off



9.9

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Refusal of Trademark Registration and Passing Off: Absolute and Relative Grounds

Both absolute and relative grounds of refusal of registration and passing off are discussed in this section.

9.9.1  Absolute Grounds for Refusal of Trademark 1. These trademarks are incapable of distinguishing the applicant’s goods/services from those of others; or may serve in trade to designate type, quality, purpose, value, geographical origin; or have been commonly used in the current language or established commercial practices shall not be registered. Exception: If, before the date of application, the mark has acquired a distinctive character by use or is a well-known mark, it shall be registered as such. 2. A mark shall not be registered as a trademark if it causes confusion or misrepresentation of the public, or it harms the religious susceptibility of the class/section of Indian citizens, or it contains scandalous/obscene matter contrary to public morality, or it is prohibited under the Emblems and Names Act, 1950. 3. Three-dimensional label or form of goods – these can be registered as a trademark. However, the act notes that a trademark shall not be registered as a trademark where it consists exclusively of the shape of the goods themselves or the shape of the goods necessary to obtain a technical result or the shape which adds substantial value to the goods – the shape should have a visual appeal for added value and should not be of a functional nature within the competence of this provision. 4. Chemical element compound: No term that is the name of a chemical element/compound (not a mixture) or that is licensed by the World Health Organization and notified by the trademark registrar as an international non-proprietary name/deceptively identical to those names shall be registered as a trademark. However, though the aforementioned term has gained distinction as a trademark, it cannot still be licensed as a trademark. 9.9.2  Relative Grounds for Refusal of Trademark Except for honest concurrent use, a trademark shall not be registered if: there is a likelihood of confusion for the public because the mark being applied for is identical to an earlier mark and the goods/ services of both marks are similar; or the mark being applied for is similar to an earlier mark and the goods/services of both marks are identical. 1. Passing off or copyright infringement: A trademark shall not be licensed if its use is precluded by the rule of Passing off or Copyright Law. 2. Earlier trademark: For the purposes of ‘relative grounds for denial of registration’ by the Indian Trademark Office, the word ‘earlier trademark’ applies to a registered mark or to an application for a convention (from a citizen of a country/group of countries with which India has a treaty/ agreement) for which the date of application was earlier than the trademark sought. 3. Living or recently deceased: If a registration application relates to a trademark that falsely suggests a connection with a living person or a person who died within 20 years of the date of application, the trademark registrar may require the applicant to give written consent to that living person before proceeding with the application; or a legal representative. If that consent is not given, the registrar will refuse to proceed with the application.

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9.10 Infringement and Exceptions to Infringement Action Trademark Infringement and Remedies: A trademark infringement involves infringement of the exclusive rights attached to a registered trademark without the proper permission of the trademark owner or the licensees involved, provided that such permission has been granted within the scope of the license. Infringement may occur when the infringer uses a mark identical to a registered mark owned by another person that the infringer uses a mark confusingly similar to that mark. The owner of such a registered mark may launch legal action against such an infringer. No infringement proceedings can be brought against a label which is not marked as such, as it cannot be infringed. Instead, the owner may initiate proceedings under common law for a dismissal or misrepresentation suit, or the legislation prohibiting unfair business practices. For certain countries, the violation of fair dress can also be enforceable. The declaration that the infringing mark is identical or deceptively similar to the registered mark is sufficient to determine the infringement of a registered mark, and no further proof is needed. The following remedies are available to a trademark owner for unauthorized third-party use of its imitation: 1. A passing action for an unregistered trademark. 2. An infringement action for a registered trademark. Both of these actions differ considerably from each other. The infringement case is a contractual remedy while a dismissal case is a common law remedy. Note: Only a criminal case can be lodged in the event of a trademark infringement/passing off. Cognisable the offenses under the Trademarks Act, 1999, and thus the police have the power to register a FIR and directly prosecute the offenders. Following are some of the civil remedies in trademark: 1. 2. 3. 4.

Injunction/stay against the use of the trademark. Damages can be claimed. Accounts and handing over of profits. Appointment of local commissioner by the court for custody/sealing of infringing material/ accounts. 5. Application under Order 39, Rules 1 and 2 of the Civil Procedure Code (CPC) for grant of temporary/ad-interim ex-parte injunction. The courts may grant injunction and also, may direct the relevant authorities to hold back the infringing material or its shipment, or it may suppress its disposal in any other manner so as to protect the interest of the owners of the relevant intellectual property rights.



Multiple Choice Questions

1. Trademark law protects (a) words, symbols or devices that differentiate goods or services from one another. (b) only brand names. (c) names of specific people and places.

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(d) inventions that feature some sort of utility function. 2. Which statement is correct about trademarks? (a) reduces search cost.

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Frequently Asked Questions in Interviews

(b) increases search cost. (c) Increases experience cost (d) None of the above 3. A trademark is represented by several key characteristics. Which of the following is one of them? (a) A trademark identifies a product’s origin. (b) Slogans are not covered under trademark law. (c) Trademarks are never an indicator of quality. (d) Trademarks are ‘shorthand’ for retailers to use in determining pricing strategy. 4. The following cannot be exploited by assigning or by licensing the rights to others. (a) Patents. (b) Designs. (c) Trademark. (d) All of these. 5. Trademark can be used as domain name. (a) Yes. (b) No. (c) Yes, but in some cases. (d) None of these. 6. A company wishes to ensure that no one else can use their logo? (a) Copyrights (b) Trademark (c) Patent (d) Industrial designs



Frequently Asked Questions in Interviews

1. What is a trademark? Answer A trademark (popularly known as brand name) is a visual symbol which may be a word signature, name, device, label, numerals

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7. Which of the following principles is applicable to trademarks? (a) A trademark should be distinctive. (b) A trademark should be capable of distinguishing goods or services. (c) A trademark should not cause confusion with previous trademarks. (d) All of these. 8. The trademark is registered and can be renewed every time for a period of (a) 5 years (b) 10 years (c) 15 years (d) 20 years 9. Imagine a footballer sets up his own company to sell his own range of clothes. What type of intellectual property can he use to show that the clothes are made by his company? (a) Copyright (b) Geographical indications (c) Patents (d) Trademarks 10. What is the full form of TRIPS? (a) Tariff-Related Aspects of Intellectual Properties. (b) Trade-Related Aspects of Intellectual Property Rights. (c) Trade-Related Aspects of Intellectual Property Science. (d) The Registration of Intellectual Property.

or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

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178  • 2. What is the function of a trademark? Answer Under modern business condition, a trademark performs the following four functions: (a) It recognizes the goods/or services and its origin. (b) It guarantees its unchanged quality. (c) It publicizes the goods/services. (d) It produces an image for the goods/ services. 3. What are the differences between a trademark and a trade name? Answer A trade name is used to differentiate one business from another. A trademark is a sign used on goods or services to distinguish them from those of other businesses. Both trade names and trademarks are signs to identify businesses, but not necessarily the goods or services they offer. 4. What is trademark use? Answer A trademark is a sign used to identify the source of goods. Trademark use means the use of a trademark in places where it can identify the source of goods, such as on the goods themselves; for example, packages, containers, advertisements, and so on. 5. What are different types of trademarks that may be registered in India? Answer (a) Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark. (b) An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service. (c) Letters or numerals or any combination thereof. (d) The right to proprietorship of a trademark may be acquired by either regis-

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Chapter 9/Trademark

tration under the act or by use in relation to particular goods or service. (e) Devices that includes fancy devices or symbols. (f ) Monograms. (g) Combination of colours or even a single colour in combination with a word or device. (h) Shape of goods or their packaging. (i) Marks constituting a three-dimensional sign. (j) Sound marks when represented in conventional notation or described in words by being graphically represented. 6. What are the legal requirements to register a trademark? Answer The legal requirements to register a trademark under the act are listed as follows: (a) The selected mark should be capable of being represented graphically (that is in the paper form). (b) It should be capable of distinguishing the goods or services of one undertaking from those of others. (c) It should be used or proposed to be used as a mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person has the right to use the mark with or without the identity of that person. 7. Who can apply for a trademark and how? Answer (a) Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of

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Answer Key

use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office. (b) The applications can be submitted personally at the Front Office Counter of the respective office or can be sent by post. These can also be filed online through the e-filing gateway available at the official website. 8. Who benefits from a trademark? Answer (a) The registered proprietor of a trademark can create, establish and protect the goodwill of his products or services, he can stop other traders from unlawfully using his trademark, sue for damages and secure destruction of infringing goods and or labels. (b) The government earns revenue as a fee for registration and protection of registration of trademarks. (c) The legal professionals render services to the entrepreneurs regarding selection registration and protection of trademarks and get remunerations for the same. (d) The purchaser and ultimately consumers of goods and services get options to choose the best. 9. What are the benefits of registering a trademark? Answer The registration of a trademark confers upon the owner the exclusive right to use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol, ®, and seek the relief of infringement in appropriate courts in the country. The exclusive right is



however subject to any conditions entered on the register such as limitation of area of use, etc. Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other. 10. How long is the term of protection of trademarks? Answer The TRIPS Agreement stipulates that the term of protection of a trademark should not be less than seven years; most commonly, the term of registration is 10 years. In addition, a registered trademark can be renewed indefinitely. Although both patents and trademarks are industrial property, trademarks are renewable, while patents are not renewable. 11. Must all goods be protected by registered trademarks? Answer The registration of a trademark is not a condition for its use. However, using unregistered trademarks carries significant legal risks. In many countries, trademark rights are granted pursuant to the first-to-file rule. That is to say, whoever applies first will be granted the exclusive right to a trademark, regardless of whether it has been in use. 12. Why is compulsory licensing not applicable to trademarks? Answer Compulsory or statutory licensing applies to invention and utility model patents and copyright, but not to trademarks. This is because the subject matters of compulsory licensing should be intellectual creations, while a trademark is in essence a business sign.

Answer Key

Multiple Choice Questions 1. (a) 2. (a)

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3. (a) 4. (c)

5. (a) 6. (b)

7. (b) 8. (b)

9. (d) 10. (b)

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10

Industrial Design: The Designs Act, 2000

LEARNING OBJECTIVES After reading this chapter, the reader will be able to • Outline the laws for industrial design. • Explain the meaning and definition of industrial design. • Explain the procedure for registration of industrial design.

• Explain semiconductor integrated circuits layout design. • Discuss the overlapping between designs, copyrights and trademark.

10.1 Introduction Due to the immense progress made by India in the field of science and technology in the past few decades, the earlier Designs Act, 1911 was amended in 2000 to promote design element in an article of production. Few amendments were made again in 2008 add more protection to registered designs.

10.2 Introduction to Designs Law In accordance with Section 2(d) of the Designs Act, 2000, ‘design’ means only the composition of lines, pattern or colour, features of shape or configuration or ornament or combination thereof applied to any article whether two-dimensional (2D) or three-dimensional (3D) or in both dimensions, by any industrial process, whether manual, chemical or mechanical, merged or separated, which does not include any method, fundamentals, construction or anything which is in substance a mere mechanical device, and does not include any trade mark, but in the finished state appeals to and are judged only by the eye, as defined in Clause (v) of Subsection (1) of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957. Industrial designs are a part of intellectual property. Industrial designs refer to creative activity, which result in the formal or decorative image of the product. Design rights refer to the rights offered to the owner of a genuinely registered original design. However, it does not include any method, fundamentals, construction or anything which is in substance a mere mechanical device. This aspect may depend on the shape, pattern or colour of the article. In a legal sense, industrial design refers to the right granted in many countries, pursuant to a registration system, to protect the original, decorative and non-functional features of a product that result from design activity. Industrial designs can generally be protected if they are new and original, but in contrast to copyright, the article must be useful and able to be reproduced by industrial means. In most industrial design laws, designs that are dictated solely by the article’s function are excluded from protection (e.g., a screw). Industrial design registration protects against unauthorized exploitation of the design in industrial articles. It typically

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grants the owner of the design the exclusive right to make, import, sell, hire or offer for sale articles to which the design is applied or in which the design is embodied. The term for an industrial design right varies from country to country. In India, The Designs Act, 2000 replaced the Designs Act, 1911. In the light of considerable progress achieved in the field of science and technology, a requirement for a more efficient legal system for the protection of industrial designs so as to achieve effective protection for registered designs, and to promote design activity and design elements in an article. In this backdrop, the Designs Act, 2000 has been passed specially for balancing these interests and ensuring the effective protection of what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs. The new act complies with the requirements of Trade-Related Aspects of Intellectual Property Rights (TRIPS) and hence is directly relevant for international trade.

10.2.1  Industrial Design Law Industrial design law deals with the aesthetics or the original design of an industrial product. An industrial product usually contains elements of both art and craft, that is to say artistic as well as functional elements. The design law excludes from its purview the functioning features of an article and grants protection only to those which have an aesthetic appeal. For example, the design of a teacup must have a hollow receptacle for holding tea and a handle to hold the cup. These are functional features that cannot be registered. However, a fancy shape or ornamentation on it would be registrable. Similarly, a table, for example, would have a flat surface on which other objects can be placed. This is its functional element. However, its shape, colour or the way it is supported by legs or otherwise, are all elements of design or artistic elements and therefore, registrable if unique and novel. 10.2.2  Benefits of Protecting Industrial Designs Today, industrial design has become an integral part of consumer culture where rival articles compete for consumer’s attention. It has become important therefore, to grant to an original industrial design an adequate protection. It is not always easy to separate aesthetics of a finished article from its function. Law, however, requires that it is only the aesthetics or the design element which can be registered and protected. For example, while designing furniture whether for export or otherwise, when one copies designs from a catalogue, one has to ascertain that somebody else does not have a design right in that particular design. Particularly, while exporting furniture, it is necessary to be sure that the design of the furniture is not registered either as a patent or design in the country of export. Otherwise, the exporter may get involved in unnecessary litigation and may face claims for damages. Conversely, if furniture of ethnic design is being exported, and the design is an original design complying with the requirements of the definition of ‘design’ under the Designs Act, it would be worthwhile having it registered in the country to which the product is being exported so that others may not imitate it and deprive the inventor of that design of the commercial benefits of his design. As stated in the definition of the design, a design does not include in any of the following: 1. As defined in Section 479 of the Indian Penal Code, 1860 (for property mark). 2. As defined in Section 2(c) of the Copyright Act, 1957 (for artistic work). 3. As defined in Section 2(zb) of the Trademarks Act, 1999 (for trademark). Artistic work does mean any of the following: 1. Whether or not any work possesses artistic qualities such as an engraving, drawing (including a diagram, map, chart or plan), sculpture, photograph or a painting,

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2. Any building or structure having an artistic character or any method or design for such building or structure or any similar work of architecture. 3. Any work of artistic craftsmanship (Section 2(c)of Copyright Act). An illustrative list of non-registrable designs is as follows: 1. 2. 3. 4. 5. 6. 7. 8. 9.

Book jackets, calendars, certificates, forms and other documents. Dress making patterns, leaflets, plan cards, greeting cards and maps. Medals, stamps and postcards. Tokens, labels, cards and cartoons. Any principle or mode of construction of an article. Mere workshop alterations of components of an assembly. Mere change in size of article. Signs of any country, flags or emblems. Layout designs of integrated circuits.

10.3 Definitions, Registration of Designs and Procedure Definition: In general terms, a design consists of a shape, configuration and/or ornamentation (1) applied to an article (2) with features that are judged visually. It does not matter whether or not the design has any aesthetic quality. To be valid, a design must be (1) new and/or (2) original (i.e., independently created) and (sometimes) have individual character. If a user’s perception of the design differs from the perception of a public design then that design is said to have an individual character. It may not involve a method or principle of construction, and any feature that is necessitated solely by the function that the article is intended to perform is not entitled to design protection. Industrial designs belong to the aesthetic field, but also intended to serve as design for the manufacture of products of industry/handicraft. An industrial design is the attractive or creative aspect of an article, which must appeal to the eye and may consist of the colour and/or shape and/or pattern of the article. An industrial design to be protected must be new and original.

10.3.1  Duration of Protection As per Indian Law, under the Design Act of 2000, industrial design protection is for a period which usually lasts for 10 years. They can further be renewed once for an additional period of 5 years. 10.3.2  Requirements for Protection 1. Novelty: A design that has not been revealed to the society, anywhere in the world (by publication or by use or in any other way) before the filing date or priority date, is considered to be a new design. A unique design which is different from the registered designs or a mixture of registered designs is considered a new design. 2. Originality: Original, in relation to a design, means any of the following: (a) Originating from the author of design. (b) Includes the cases, which are old but new in their application; for instance, the figure of Taj Mahal is centuries old. However, if a person conceives for the first time, the idea of making a

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flower vase or an ashtray in the form of the figure of Taj Mahal, then that may be an original design and shall be registrable.

10.3.3  Application and Registration of Design Section 5 provides that the controller may register the design under the act, on the appeal of any person claiming to be the proprietor of any new or original design not already published in any country and which is not opposing the public order or morality. All applications for registration are needed to be in the suggested manner and accompanied by the fees. A design is registered as on the date of the application. In accordance with Section 7, the controller shall publish the particulars of the design to be published in the suggested manner and the design to be open to public review as soon as the design is registered. The proprietor is awarded a certificate of registration by the controller on registration of the design, according to Section 9 of the design act. The main purpose of design registration is to see that the artisan, creator or originator of a design having an artistic look is not deprived of his legitimate reward by others applying it to their products. 10.3.4  Procedure for Registration of Designs The various steps involved in registration of designs is discussed in this subsection. Registration Design rights are usually dependent upon registration and, in that regard, are similar to patent rights. As a result, infringement of a design right differs from copyright infringement: copyright infringement requires that the second (infringing) work must have been derived (copied) from the other, while this is not required in the case of design infringement – the only issue is one of similarity, irrespective of independent creation. Some systems recognize unregistered design rights, but the term of protection is substantially shorter than that of registered design rights. A design is capable of being registered only if it is new or original. Where to Apply? An application for registration of a design shall be addressed to the controller of designs, the Patent Office at Kolkata, or at any of its branch offices at New Delhi, Mumbai and Chennai. A proprietor may be from India or from a Convention Country. Type of Applications 1. Ordinary application: An ordinary application does not claim priority. 2. Reciprocity application: A reciprocity application claims priority of an application filed formerly in a convention country. This type of application should be filed in India within 6 months from the date of filing in the Convention Country. The period of 6 months is fixed. Protection Rights Article 26.1 requires members to grant the owner of a protected industrial design the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.

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Article 26.2 allows members to provide limited exceptions to the protection of industrial designs, provided that such exceptions do not clash with the misuse of the protected industrial designs and do not prejudice the legitimate interests of the owner of the protected design, taking into consideration interests of third parties.

10.4 Cancellation of Registration of Design 1. Once the design is registered, it can be cancelled anytime on a petition for cancellation in Form 8, along with the fees. 2. These petitions can be filed at any of the four patent offices. Petitions filed in the offices other than Kolkata, are transmitted to the Kolkata Patent Office. However, at present, all further proceedings of cancellation take place only at Patent Office, Kolkata and hence all communications relating to cancellation petitions are required to be communicated to the Kolkata office. 3. Any of the following grounds can be considered for filing a petition to cancel the registered design (a) that the design has been formerly registered in India; (b) that it has been published in India or in any other country prior to the date of registration; (c) that the design is not a new or original; (d) that the design is not registrable under the Designs Act; (e) that it is not a design as defined under Section 2(d) of the Designs Act.

10.4.1 Procedure 1. A statement and evidence setting out the facts based upon which the petition is filed should support the petition for cancellation. The statement shall also express the nature of the applicant’s interest so as to decide, whether the petitioner is a person interested. 2. The filing of a petition for cancellation of registration of a design is published in the Official Journal. 3. The controller should send a copy of the petition as well as the statement and evidence to the registered proprietor at the earliest, on acceptance of a petition for cancellation. 4. If the registered proprietor desires to oppose the petition, he should file at Patent Office, Kolkata. With a counter statement and evidence, if any, setting out fully the grounds upon which he intends to oppose the petition, within 1 month from the date of notice by the controller, and deliver a copy to the petitioner, simultaneously. This period of 1 month can be extended by at the most 3 months, by filing a petition for extension with the required fee. 5. Once the counter statement and evidence is received from the registered proprietor, the petitioner can file their reply statement and evidence in the form of affidavits within 1 month from the counter statement filing. Reply evidence of the petitioner shall be strictly within the scope of matters in the evidence of the registered proprietor. This period of 1 month can be extended to at the most 3 months, by filing a petition for extension with the required fee. The registered proprietor should be receiving a copy of the reply statement and evidence from the petitioner, simultaneously. 6. No further evidence should be delivered by either party, except with the leave or direction of the controller. 7. A translation should be provided whenever a document is not in English and is referred to in any statement or evidence.

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8. A minimum of 10 days’ notice should be given by the controller on the completion of statement and evidence filing by petitioner and registered proprietor. 9. If either party wants to be heard, a notice intended to take part in the hearing should be filed in form 20 on the receipt of the notice of hearing. 10. If any such notice and fees are not given, the controller has the right to refuse to hear that party. 11. At the hearing, if either party wants to rely on some publication that is not already mentioned in the petition for cancellation, statement or evidence, he should give to the other party and to the controller a notice of his intention to do so, along with details of that publication. This notice should be given minimum 5 days’ in advance. 12. After hearing the parties, or if neither party desires to be heard, then without a hearing, the controller should decide on the speaking order and issue. controller’s decision should be reported to the parties and published in the Official Journal. 13. Subsequent entries are to be made in the Design Register wherever necessary.

10.5 Piracy of Registered Design and Remedies Piracy of a design means the application of a design or it’s reproduction to any article belonging to the class of articles in which the design is licensed for the purpose of selling or importing those articles without the licensed proprietor’s written consent. Publishing or exposing these articles for sale with knowledge of the unauthorized application of the design to them often entails the piracy of the design. The design owner is solely entitled to submit the design in a class in which the design is added to the document. Other individuals are forbidden from using the design during the lifetime of copyright over any design without or with the permission of the proprietor, its licensee or assignor. The following activities are considered to be infringement: 1. To apply for the purpose of selling the design or any fraudulent replica thereof to any article of any type in which the design is registered; 2. Any object to which the design or fraudulent or apparent imitation of it was presented for sale; 3. To publish or show for sale knowing that the design, or any fraudulent or apparent imitation thereof, has been applied to it.

Penalties A registered owner can bring an injunction claim and recover damages against any person engaging in registered design piracy. Such legal proceedings may be instituted from the date of registration and until the copyright expires. However, in the case of a proposal for reciprocity, the registered proprietor can claim damages only from the actual date of registration of the design in India. Where a person commits the piracy of a registered design as specified in Section 22, he shall be liable to pay an amount not exceeding `25,000 recoverable as contract dues. Nevertheless, for any one design, the gross recoverable amount shall not exceed `50,000. The injunction/damages action shall not be initiated in any Jurisdiction outside the Court of District Judge. In a case involving Ampro Food Products Vs. Ashok Biscuit Works, AIR 1973 AP 17, the appellant manufactured biscuits with letters AP embossed on them. The respondent also manufactured biscuits with identical design except that letters AB were embossed on them, in place of AP. The suit sought an injunction which brought a charge of design piracy. In granting a provisional injunction,

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the court ruled that in these cases the defendant could not contend that the licensed design of the appellant was neither new nor original because no earlier action had been taken to request cancellation of the design’s registration.

10.6 Semiconductor Integrated Circuits Layout Design (SICLD) Circuits: Layout designs of integrated circuits are not considered to be industrial designs under the laws providing for the registration of industrial designs. This is because they do not determine the external appearance of integrated circuits, but rather the physical location, within the integrated circuit, of each element with an electronic function. Moreover, layout designs of integrated circuits are not normally patentable inventions, because their creation usually does not involve an inventive step. Uncertainty surrounding the protection of layout designs led to the adoption of the Treaty on Intellectual Property in Respect of Integrated Circuits under WIPO’s auspices on 26 May, 1989. While the Treaty has not entered into force, a number of its substantive provisions have been incorporated by reference in the TRIPS Agreement (Article 35). A separate legislation is offered by Indian Government to protect semiconductor integrated circuits layout design under The Semiconductor Integrated Circuits Layout Design (SICLD) Act, 2000.

10.6.1  Duration of Protection The minimum period of protection for layout designs under the TRIPS Agreement as well as under Indian act is 10 years, and is counted from the date of filing an application for registration or from ‘first commercial exploitation wherever in the world it occurs’ depending on national laws. 10.6.2 Definitions The SICLD Act defines semiconductor integrated circuit as a product having transistors or other circuitry elements, which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function. Layout-design is defined as a layout of transistors, and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit. Commercial exploitation with reference to the SICLD means to sell, lease, offer or exhibit for sale or otherwise distribute such semiconductor integrated circuits for any commercial use. 10.6.3  Procedure for Registration 1. Filing of application in writing to the registrar in the office of SICLD registry in a prescribed form along with three sets of drawings produced to the plotter which describes the layout design and three sets of photograph of masks used for the fabrication of the semiconductor integrated circuits by using of the layout design or drawings which describes the pattern of such masks. 2. Acceptance of the application with acknowledgement by way of returning one copy of the application. The registrar can also withdraw the acceptance if the application is found to be prohibited for registration. 3. The application is advertised in a prescribed manner within 14 days of acceptance of layout design application. If any opposition is found to the registration, then a notice is sent to the registrar in the prescribed manner within 3 months from the date of advertisement. The registrar can call for evidence to be produced by both the parties and finally give his decision.

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4. If the application is not opposed or the opposition has been decided in favour of the applicant, the registrar shall register the said layout design in the register of layout design and also issue a certificate sealed with the seal of the SICLD Registry.

10.6.4  Where to Apply? The application can be filed online at http://sicldr.gov.in/ or can be submitted to SICLD Registry at New Delhi, India. 10.6.5  Protection against Infringement Infringement with respect to SICLD means the act of reproducing, selling, importing and distributing integrated circuit layout design for commercial purposes. If the act is performed for the purposes of scientific evaluation, analysis, research or teaching purpose then it will not be counted under infringement. Any person who commits infringement shall be punishable with imprisonment for a term, which may extend to 3 years, or with fine which shall not be less than `50,000 but which may extend to `1000,000 or with both.

10.7 Overlapping between Designs, Copyrights and Trademark Industrial design registrations do not only protect luxury goods but also spare parts and the identical. They may also be protected by criminal sanctions but, once again, this is (except in those countries that criminalize patent infringement) not done as a rule. The main problem with these rights is the lack of an acceptable international definition of what an ‘industrial design’ is. On the other hand, the infringement of an industrial design is relatively easily established because infringing designs are usually carbon copies of the registered design. Fortunately, there is often an overlap (in many countries) between copyright protection and the protection of industrial designs: most designs are automatically protected by copyright. Furthermore, some designs may have trademark significance and can be protected as such.

10.7.1  Overlap between Designs and Copyright Many works that are entitled to design rights are, simultaneously, entitled to copyright, as recognized in the Community Designs Regulation. This has given rise to practical problems, because it means, for instance, that spare or body parts of motor vehicles may be protected for a minimum of 50 or 70 years, something many laws consider to be unacceptable. The law in Singapore, for example, states that the making of any useful article in three dimensions does not infringe the copyright in an artistic work if, when the useful article or reproduction is made, the artistic work has been industrially applied at any time before the useful article or reproduction is made. An artistic work is applied industrially if, for instance, more than 50 reproductions in three dimensions are made of it, for the purposes of sale or hire. A ‘useful article’ means an article has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. 10.7.2  Overlap between Trademarks and Designs Because trademarks may consist of, for instance, shapes or containers, there is necessarily some overlap between the two areas. Because the term of protection of a trademark may be renewed indefinitely, while the term of protection of a design may not, they have different commercial values. The point is, however, that a trademark may destroy the novelty of a design.

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Multiple Choice Questions



Multiple Choice Questions

1. What is the duration of a design registered under the Design Act, 2000? (a) 2 years. (b) 10 years. (c) 5 years. (d) Depends on the commercial value of infringement. 2. The definition of a design for the purposes of registered design protection (a) Includes internal and external features of a product. (b) Can include features that are only visible when the product is turned on. (c) Includes colours, textures and sounds. (d) Covers only industrially manufactured products. 3. Which section of Design Act, 2000 defines the term ‘design’? (a) Section 4.0 (b) Section 3.0 (c) Section 1.0 (d) Section 2.0 4. What is encompassed in design as per intellectual property law? (a) Configuration. (b) Features of shape. (c) Pattern. (d) All of these. 5. A design has individual character if (a) It appeals to the eye of the ordinary consumer. (b) It gives a different overall impression, when compared with prior design, to someone who is an interested consumer for the products in question. (c) It stands out from other designs in the field when viewed by the ordinary consumer. (d) The differences over previous designs are not trivial.

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6. What does the term novelty refer to, under registered designs? (a) That prior disclosures by the designer do not count. (b) The same as it does in patent law. (c) That obscure prior disclosures are unlikely to destroy novelty. (d) That novelty is judged on a European Union (EU) wide, rather than a worldwide basis. 7. Which of the following are considered infringement? (a) To apply for the purpose of selling the design or any fraudulent replica thereof to any article of any type in which the design is registered. (b) Any object to which the design or fraudulent or apparent imitation of it was presented for sale. (c) To publish or show for sale knowing that the design, or any fraudulent or apparent imitation thereof, has been applied to it. (d) All of these. 8. If a person commits piracy of a registered design, he is liable to (a) Pay an amount of 25,000. (b) Pay an amount of 50,000. (c) Imprisonment. (d) None of these. 9. What is the minimum period of protection for layout designs under the TRIPS Agreement? (a) 5 years (b) 15 years (c) 10 years (d) 2 years 10. In India, the SICLD act was implemented for the first time in the year (a) 1970 (b) 1957 (c) 2000 (d) 2005

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Frequently Asked Questions in Interviews

1. What is meant by ‘design’ under the Designs Act, 2000? Answer In accordance with Section 2(d) of the Designs Act, 2000, Design means only the composition of lines, pattern or colour, features of shape or configuration or ornament or combination thereof applied to any article whether two-dimensional (2D) or three-dimensional (3D) or in both dimensions, by any industrial process, whether manual, chemical or mechanical, merged or separated, which does not include any method, fundamentals, construction or anything which is in substance a mere mechanical device, and does not include any trade mark, but in the finished state appeals to and are judged only by the eye, as define in Clause (v) of sub-section of Section 2 of the Trade and Merchandise Marks Act, 1958, property mark or artistic works as defined under Section 2(c) of the Copyright Act, 1957. 2. What is the duration of the registration of a design? Can it be extended? Answer The duration of the registration of a design is initially 10 years from the date of registration, but in cases where claim to priority has been allowed the duration is 10 years from the priority date. This initial period of registration may be extended by a further period of 5 years on an application made in Form 3 accompanied by prescribed fees to the controller before the expiry of the said initial period of 10 years. The proprietor of a design may make an application for such extension even as soon as the design is registered. 3. What is meant by artistic works? Answer (a) Whether or not any work possesses artistic qualities such as an engraving,

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drawing (including a diagram, map, chart or plan), sculpture, photograph or a painting. (b) Any building or structure having an artistic character or any method or design for such building or structure or any similar work of architecture. (c) Any work of artistic craftsmanship [Section 2(c)]. 4. What are the non-registrable designs? Answer (a) Book jackets, calendars, certificates, forms and other documents. (b) Dress making patterns, leaflets, plan cards, greeting cards and maps. (c) Medals, stamps and postcards. (d) Tokens, labels, cards and cartoons. (e) Any principle or mode of construction of an article. (f ) Mere workshop alterations of components of an assembly. (g) Mere change in size of article. (h) Signs of any country, flags or emblems. (i) Layout designs of integrated circuits. 5. What is novelty and originality? Answer (a) Novelty: A design that has not been revealed to the society, anywhere in the world (by publication or by use or in any other way) before the filing date or priority date, is considered to be a new design. A unique design which is different from the registered designs or a mixture of registered designs is considered a new design. (b) Originality: Original in relation to a design, means (1) originating from the author of design and (2) Includes the cases, which are old but new in their application.

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Frequently Asked Questions in Interviews

6. What is the purpose of registering a design? Answer The main purpose of design registration is to see that the artisan, creator, originator of a design having artistic look is not deprived of his legitimate reward by others applying it to their products. 7. Describe registration of a design? Answer Design rights are usually dependent upon registration and, in that regard, are similar to patent rights. As a result, infringement of a design right differs from copyright infringement: copyright infringement requires that the second (infringing) work must have been derived (copied) from the other, while this is not required in the case of design infringement – the only issue is one of similarity, irrespective of independent creation. Some systems recognize unregistered design rights, but the term of protection is substantially shorter than that of registered design rights. A design is capable of being registered only if it is new or original. 8. Where to apply for the registration of a design? Answer An application for registration of a design shall be addressed to the Controller of Designs, the Patent Office at Kolkata, or at any of its branch offices at New Delhi, Mumbai and Chennai. A proprietor may be from India or from a Convention Country. 9. What are the types of applications? Answer (a) Ordinary application: An ordinary application does not claim priority (b) Reciprocity application: A reciprocity application claims priority of an application filed formerly in a convention country. This type of application should be filed in India within 6 months from the date of filing in the Convention Country. The period of 6 months is fixed.

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10. What are the grounds for cancellation of a registered design? Answer Any of the following grounds can be considered for filing a petition to cancel the registered design: (a) The designs that has been formerly registered in India. (b) It has been published in India or in any other country prior to the date of registration. (c) The design is not a new or original. (d) The design is not registrable under the Designs Act. (e) The one which is not a design as defined under Section 2(d). 11. What is considered piracy of a registered design? Answer Piracy of a design means the application of a design or its reproduction to any article belonging to the class of articles in which the design is licensed for the purpose of selling or importing those articles without the licensed proprietor’s written consent Publishing or exposing these articles for sale with knowledge of the unauthorized application of the design to them often entails the piracy of the design. The design owner is solely entitled to submit the design in a class in which the design is added to the document. Other individuals are forbidden from using the design during the lifetime of copyright over any design without or with the permission of the proprietor, its licensee or assignor. 12. What are the penalties for the piracy of a registered design? Answer A registered owner can bring an injunction claim and recover damages against any person engaging in registered design piracy. Such legal proceedings may be instituted from the date of registration and until the copyright expires.

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Chapter 10/Industrial Design: The Designs Act, 2000

However, in the case of a proposal for reciprocity, the registered proprietor can claim damages only from the actual date of registration of the design in India. Where a person commits the piracy of a registered design as specified in Section 22, he shall be liable to pay an amount not exceeding `25,000 recoverable as contract dues. Nevertheless, for any one design, the gross recoverable amount shall not exceed `50,000. 13. Explain overlap between designs and copyrights. Answer Many works that are entitled to design rights are, simultaneously, entitled to copyright, something recognized in the Community Designs Regulation. This has given rise to practical problems, because it means, for instance, that spare or body parts of motor vehicles may be protected for a minimum of 50 or 70 years, something many laws consider to be unacceptable. 14. Explain overlap between designs and trademarks. Answer Because trademarks may consist of, for instance, shapes or containers, there is necessarily some overlap between the two areas. Because the term of protection of a trademark may be renewed indefinitely, while the term of protection of a design may not, they have different commercial values. The point is, however, that a trademark may destroy the novelty of a design. 15. Discuss briefly the registration procedure for a semiconductor layout/IC related invention under SICLD act.



Answer Following steps are involved in the procedure for registration: (a) Filing of application in writing to the registrar in the office of SICLD registry in a prescribed form along with 3 sets of drawings produced to the plotter which describes the layout design and 3 sets of photograph of masks used for the fabrication of the semiconductor integrated circuits by using of the layout design or drawings which describes the pattern of such masks. (b) Acceptance of the application with acknowledgement by way of returning one copy of the application. The registrar can also withdraw the acceptance if the application is found to be prohibited for registration. (c) The application is advertised in a prescribed manner within 14 days of acceptance of layout design application. If any opposition is found to the registration, then a notice is sent to the registrar in the prescribed manner within 3 months from the date of advertisement. The registrar can call for evidence to be produced by both the parties and finally give his decision. (d) If the application is not opposed or the opposition has been decided in favour of the applicant, the registrar shall register the said layout design in the register of layout design and also issue a certificate sealed with the seal of the SICLD Registry.

Answer Key

Multiple Choice Questions 1. (b) 2. (b)

Chapter 10_181-192.indd 192

3. (d) 4. (d)

5. (b) 6. (c)

7. (d) 8. (a)

9. (c) 10. (c)

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Index

A African Intellectual Property Organization (OAPI), 31 artificial intelligence (AI) algorithms, 59 artistic works, 9 autonomous arguments, 74 B Berne Convention, 15, 28–29, 50–51 duration of protection, 38–39 elements of protection under, 37 eligibility for protection, 38 formality-free protection, 37 limitations, 38 owner of rights, 38 for Protection of Literary and Artistic Works, 28, 41–42 rights protected, 38–40 works protected, 37–38 Biodiversity Act, 2002, 50 Biological Diversity Act, 2002, 3 Biological Diversity Rules, 2004, 3 bio-piracy, 65 Broadcast Organizations, 145–146 duration or term of, 146 rights of, 146 Budapest Treaty, 51 C contributory infringement, 142 co-owners of patents, 101–102 Copyright Act, 1957, 2, 42, 48, 126, 129–131, 139, 141 copyrights, 2, 4, 8–9, 49, 125 advent of, 47 assignment of, 135–137 duration and territory of, 127 economic rights of owner, 127–128 infringement of, 139–144 international treaties on, 37–40 laws of, 48 licenses related to, 137–139

Index_193-196.indd 193

moral rights of owner, 128 overlap between designs and, 188 ownership of, 128–129 persons entitled to apply for, 126–127 process of filing, 131–135 remedies for infringement of, 143–144 work applicable for, 126 counterfeiting/piracy, 24 brand value and firm reputation concerns of, 25–26 costs of combating, 26 employment concerns of, 25 environment concerns of, 25 foreign direct investment (FDI) concerns of, 25 health and safety concerns of, 26 innovation and growth concerns of, 24 investment concerns of, 26 royalties concerns of, 26 sales volume and price concerns of, 25 scope of operations, 26 trade concerns of, 25 CTM Regulation, 35 cybercrimes, international laws relating to, 42–43 cybersquatting, 42–43 reverse, 43

D Design Act, 2000, 2, 48, 181–182 design rights, 181 designs protection, 4 digital economy ‘in-licensing’ and ‘out-licensing,’ 60 protecting and exploiting value of data, 59 strategies for IP in, 60–61 digital media, 146–147 digital rights management, 59 Digital Rights Management (DRM), 147 E e-commerce, 61–62 e-filing of patent, 93

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194  • Eurasian Patent Office (EAPO), 31 exclusive marketing rights (EMR), 77 exclusivity of right, 4

F fair dealing, 140–141 ‘free’ and open source software, 60 G General Agreement on Tariffs and Trade (GATT), 27, 44, 96 Geneva Act, 1999, 40–41 Geographical Indication (GI), 151 distinction between trademark and, 158 duration of protection, 156 of India, 151 infringement of, 156 meaning/definition of, 152 registration, 153–156 remedies for infringement of, 156–157 geographical indication (GI), 10 Geographical Indications of Goods Act, 1999, 2, 48, 50 Geographical Indications of Goods (Registration and Protection) Rules, 2002, 2 Geographical Indications of Products (Registration and Protection) Act, 1999, 152, 156–157 gross national product (GNP), 4 H Hague Act, 1960, 40 Hague Agreement Concerning the International Deposit of Industrial Designs, 30, 40–41 Hand Book of Copyright Law, 125 I IBM Intellectual Property Network, 115 Indian Patents and Designs Act, 1911, 75–76 Indian Trademark Act, 1999, 42 industrial design application and registration of design, 184 benefits of protecting, 182–183 cancellation of registration of design, 185–186 duration of protection, 183 procedure for registration of design, 184–185 requirements for protection, 183–184 industrial design law, 182

Index_193-196.indd 194

INDEX

industrial designs, 9 international treaties on, 40–42 industrial property, 2 informative search, 114 infringement search, 114 integrated circuits international treaties on, 40–42 layout designs, 49 intellect, definition of, 1 intellectual, definition of, 1 Intellectual Property Appellate Board (IPAB), 50 intellectual property (IP), 1 abuse of, 68 administrative machinery, 49–50 in biodiversity, 63–64 in e-commerce, 61–62 global, 47 in human genome, 62–63 laws in India, 48–49 need for, 4 origins of, 47–48 portfolio-based, 59–60 in traditional knowledge, 64–66 Intellectual Property Network (IPN), 115 intellectual property rights (IPR), 2 centres/cells, 50 in cyber world, 17–18 enforcement of, 43–45, 51–53 features of, 14 general principles, 3–4 as human rights, 16–17 impact of Internet on, 66–68 impacts of, 14–15 importance of, 13 Indian scenario of, 45–47 instruments, 4–10 international treaties on, 27–31 international treaties related to, 50–51 legitimizations for, 3 to original thoughts and expression, 2 philosophical aspects of, 12–13 of trade, industry and commerce, 2 International Preliminary Examining Authorities (IPEA), 32 International Union for the Protection of New Varieties of Plants (UPOV), 161 invention, 75

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INDEX

L lapsed patents, restoration of, 102–104 legal status search, 115 literary works, 9 Locarno Agreement, 41 London Act, 1934, 40 M Madrid Agreement, 29–30, 34, 47, 51 Madrid Protocol, 34–35 meta tags, 43 N name search, 114 neighbouring rights, 9 NEXAVAR®, 46 Nice Agreement, 36–37 non-patentable inventions, 78–79 novelty search, 114 O Organization for Economic Cooperation and Development (OECD), 24 ownership rights, 47 P Paris Convention, 15, 31, 33–34 for protection of industrial property, 27–28, 51 for Protection of Industrial Property, 1883, 40 patentability, conditions of industrial applications, 78 non-obviousness (inventive steps), 78 novelty, 77–78 patentability or validity search, 114 patentable inventions, 78 Patent Act, 1970, 2, 48, 96–97 Patent (Amendment) Law, 2005, 77 Patent Cooperation Treaty (PCT), 29, 31–32, 92 advantages, 32–33 patentees, rights and liabilities of, 100–102 of restored lapsed-patents, 103 patent family search, 115 patent infringement, 105–108 patent law disclosures and non-disclosures, 83 independent and dependent claims, 74–75 in India, 75–77

Index_193-196.indd 195

•   195

in infringement case, 75 opposition procedures, 83–87 precautions while patenting, 80–81 Patent Law Treaty (PLT), 31 patent misuse, 87 patent protection, 3 patent rights, abuse of, 87 patent(s), 4–5, 49 advent of, 47 application contents, 92–93 application process, 93–96 applications of, 79–80 in biodiversity, 64 databases, 113 definition of, 73–74 documentation, 113 drafting of, 97–99 duration of, 111 examples for, 5 fees, 110–111 granting of, 99–100 history of, 48 Indian national procedures for filing, 91–92 international procedures for filing, 92 international treaties on, 31–33 licensing, 111–112 litigation, 108–109 process, 80 product, 80 publication, 109–110 revocation of, 103–105 specifications, 81–83 surrender of, 103 term of, 110 tools for searching, 4, 74 Patents Act, 1970, 77 Patents (Amendment) Act, 1999, 77 Patents (Amendment) Law, 2006, 77 PATENTSCOPE search service, 115 Patents Rules of 1972, 77 patent trolls, 87 performer definition of, 144 rights of, 144–145 term of protection right for, 145 phonograms producers, 145 duration or term of, 145 rights of, 145

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196  • piracy of registered design, 186–187 plant breeders’ rights (PBRS), 63–64 plant varieties definition of, 161–162 procedure for registration, 163–164 protection of, 165 registrable varieties of, 162 portfolio-based IP, 59–60 pre-application search (PAS), 113–114 prior art, 65, 74 Protection of Industrial Property, 1883, 40 Protection of Plant Varieties Farmers’ Rights Act, 2001, 3, 9, 48–49, 161

R registered entity, 1 related rights, 9, 144 reverse cybersquatting, 43 S Semiconductor Integrated Circuits Layout Design Act, 2000, 3, 49 Semiconductor Integrated Circuits Layout Design Registry (SICLDR), 49 Semiconductor Integrated Circuits Layout Design (SICLD) definitions, 187 duration of protection, 187 procedure for registration, 187–188 protection against infringement, 188 state-of-the-art search, 114 Stockholm Complementary Act, 30 substantial copying, 140 Supplementary International Searching Authority (SISA), 32 T technological activity search, 114 technology transfer, 10 theories of IPR, 10–12 economic theory/utilitarian theory, 12 Hegelian philosophy (personality theory), 11 incentive theory, 11 Lockes’ theory of property (labour theory/ natural right theory), 11 natural theory, 10–11 prospect theory, 12

Index_193-196.indd 196

INDEX

reward theory, 11 Schumpeterian theory, 12 social contract theory, 11 social planning theory, 11 Trademark Law Treaty (TLT), 30 trademarks, 3, 5–8, 42, 49 advent of, 47 in advertising, 171 applications, 35–36 definition of, 169 distinction between GI and, 158 for goods/services, 170–171, 173–174 grounds for refusal of, 175 infringementt of, 176 international treaties on, 33–37 offences and penalties, 170 overlap between designs and, 188 protecting domain name as, 171–172 for services, 172–173 Trade Marks Act, 1999, 2, 48, 50, 169–170 Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 23, 41, 44–46, 49, 51, 156, 161, 169, 182 main features of, 44 trade secrets, 9–10, 60 traditional knowledge, protection of, 64–66

U undisclosed information, protection of, 50 United States Patent and Trademark Office (USPTO), 115 Universal Copyright Convention, 1952, 42 unregistered entity, 1 U.S. Anti-Cybersquatting Consumer Protection Act, 1999, 42 V vicarious Infringement, 142 W WIPO Copyright Treaty (WCT), 28–29 World Intellectual Property Organization (WIPO), 26–27, 43, 49, 51, 92, 144 purposes of, 27 World Trade Organization (WTO), 44–45, 48–49, 51

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PRELIMS

7.1” x 9.25”