KPR INSTITUTE OF ENGINEERING AND TECHNOLOGY

(Autonomous Institution)

Arasur- 641407

(REGULATION-2017)

(For Sixth Semester B.E students)

Department of Mechanical Engineering

GE8075: INTELLECTUAL PROPERTY AND RIGHTS

PRERARED BY,

Balaji Devarajan
Assistant Professor - Department of Mechanical Engineering
Head – Center for IPR

Page 1
 KPR INSTITUTE OF ENGINEERING& TECHNOLOGY
DEPARTMENT OF MECHANICAL ENGINEERING

GE8075-INTELLECTUAL PROPERTY AND RIGHTS

ACADEMIC YEAR: 2019-2020

NAME: ---------------------------------------------------

REG. NO.: ----------------------------------------------------

YEAR/SEM: -----------------------------------------------------
 GE8075 - INTELLECTUAL PROPERTY RIGHTS

SYLLABUS

UNITI INTRODUCTION 9

Introduction to IPRs, Basic concepts and need for Intellectual Property – Patents, Copyrights,
Geographical Indications, IPR in India and Abroad – Genesis and Development – the way from
WTO to WIPO –TRIPS, Nature of Intellectual Property, Industrial Property, technological Research,
Inventions and Innovations – Important examples ofIPR.

UNITII REGISTRATION OF IPRs 10

Meaning and practical aspects of registration of Copy Rights, Trademarks, Patents, Geographical
Indications, Trade Secrets and Industrial Design registration in India and Abroad

UNITIII AGREEMENTS AND LEGISLATIONS 10

International Treaties and Conventions on IPRs, TRIPS Agreement, PCT Agreement, Patent Act of
India, Patent Amendment Act, Design Act, Trademark Act, Geographical Indication Act.

UNITIV DIGITAL PRODUCTS AND LAW 9

Digital Innovations and Developments as Knowledge Assets – IP Laws, Cyber Law and Digital
Content Protection – Unfair Competition – Meaning and Relationship between Unfair Competition
and IP Laws – Case Studies.

UNITV ENFORCEMENTOF IPRs 7

Infringement of IPRs, Enforcement Measures, Emerging issues – Case Studies.

TOTAL : 45 PERIODS
 OUTCOME:

 Ability to manage Intellectual Property portfolio to enhance the value of thefirm.

TEXT BOOKS:

V. Scople Vinod, Managing Intellectual Property, Prentice Hall of India pvt Ltd,2012
S. V. Satakar, ―Intellectual Property Rights and Copy Rights, Ess Ess Publications,New Delhi,2002
 UNIT I - INTRODUCTION

Introduction to IPRs, Basic concepts and need for Intellectual Property – Patents, Copyrights,
Geographical Indications, IPR in India and Abroad – Genesis and Development – the way from
WTO to WIPO –TRIPS, Nature of Intellectual Property, Industrial Property, technological Research,
Inventions and Innovations – Important examples ofIPR.

Introduction to IPRs
l Introduction Intellectual property (IP) is a term referring to creation of the intellect (the term
used in studies of the human mind) for which a monopoly (from greek word monos means
single polein to sell) is assigned to designated owners by law. Some common types of
intellectual property rights (IPR), in some foreign countries intellectual property rights is
referred to as industrial property, copyright, patent and trademarks, trade secrets all these
cover music, literature and other artistic works, discoveries and inventions and words,
phrases, symbols and designs. Intellectual Property Rights are themselves a form of property
called intangibleproperty.
l Although many of the legal principles governing IP and IPR have evolved over centuries, it
was not until the 19th century that the term intellectual property began to be used and not
until the late 20th century that it became commonplace in the majority of the world.
l Types of Intellectual Property The term intellectual property is usually thought of as
comprising four separate legal fields:

1. Trademarks
2. Copyrights
3. Patents
4. Tradesecrets

1. Trademarks and ServiceMarks:

l A trademark or service mark is a word, name, symbol, or device used to indicate the source,
quality and ownership of a product or service. A trademark is used in the marketing is
recognizable sign, design or expression which identifies products or service of a particular
source from those of others. The trademark owner can be an individual, business
organization, or any legal entity. A trademark may be located on a package, a label, a
voucher or on the product itself. For the sake of corporate identity trademarks are alsobeing.

General Logos:

The Trademark RegistrationLogo

l In addition to words, trademarks can also consist of slogans, design, or sounds. Trademark
provides guarantee of quality and consistency of the product or service they identify.
Companies expend a great deal of time, effort and money/ in establishing consumer
recognition of and confidence in their marks.

l IP is divided into two categories for ease ofunderstanding:

1. IndustrialProperty
2. Copyright
l Industrial property, which includes inventions (patents), trademarks, industrial designs, and
geographic indications of source;and
l Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in their
radio and televisionprograms.
l Intellectual property shall include the right relatingto:
i. Literary, artistic and scientificworks;
ii. Performance of performingartists;
iii. Inventions in all fields of humanendeavor;
iv. Scientificdiscoveries;
v. Industrialdesigns;
 vi. Trademarks, service marks and etc;
vii. Protection against unfaircompetition.

l Intellectual property protection is critical to fostering innovation. Without protectionof ideas,

businesses and individuals would not reap the full benefits of their inventions and would
focus less on research and development. Similarly, artists would not be fully compensated for
their creations and cultural vitality would suffer as aresult.

What is a property?
l Property designates those things that are commonly recognized as being the possessions of
An individual or a group. A right of ownership is associated with property that establishes the
good as being "one's own thing" in relation to other individuals or groups, assuring the owner
the right to dispense with the property in a manner he or she deems fit, whether to use or not
use, exclude others from using, or to transferownership.
l Properties are of two types - tangible property and intangible property i.e. one that is
physically present and the other which is not in any physical form. Building, land, house,
cash, jewellery are few examples of tangible properties which can be seen and feltphysically.
l On the other hand there is a kind of valuable property that cannot be felt physically as it does
not have a physical form. Intellectual property is one of the forms of intangible property
which commands a material value which can also be higher than the value of a tangible asset
orproperty.
l Rights protected under Intellectual Property
l The different types of Intellectual Property Rightsare:
i. Patents
ii. Copyrights
iii. Trademarks
iv. Industrialdesigns
v. Protection of Integrated Circuits layoutdesign
vi. Geographical indications ofgoods
vii. Biologicaldiversity
viii. Plant varieties and farmers rights
ix. Undisclosedinformation

Patents

l A patent for an invention is the grant of a property right to the inventor, issued by the United
States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the
date on which the application for the patent was filed in the United States or, in special cases,
from the date an earlier related application was filed, subject to the payment of maintenance
fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S.
possessions. Under certain circumstances, patent term extensions or adjustments may be
available.
l The right conferred by the patent grant is, in the language of the statute and of the grant itself,
“the right to exclude others from making, using, offering for sale, or selling” the invention in
the United States or Importing the invention into the UnitedStates.
 l What is granted is not the right to make, use,offer,forsale, sell or import, but the right to
exclude others from making, using, offering for sale, selling or importing theinvention.
l Once a patent is issued, the patentee must enforce the patent without aid of theUSPTO.
l There are three types ofpatents:
l Utility patents may be granted to anyone who invents or discovers any new and useful
process, machine, article of manufacture, or composition of matter, or any new and useful
improvementthereof;
l Design patents may be granted to anyone who invents a new, original, and ornamental
design for an article of manufacture;and
l Plant patents may be granted to anyone who invents or discovers and asexually reproduces
any distinct and new variety ofplant.

Copyrights

l Copyright is a form of protection provided by U.S. law (17 U.S.C 101 et seq) to the authors
of "original works of authorship" fixed in any tangible medium ofexpression.
l The manner and medium of fixation are virtually unlimited. Creative expression may be
captured in words, numbers, notes, sounds, pictures, or any other graphic or symbolic media.
The subject matter of copyright is extremely broad, including literary, dramatic, musical,
artistic, audiovisual, and architectural works.
l Copyright protection is available to both published and unpublished works. Copyright
protection is available for more than merely serious works of fiction or art. Marketing
materials, advertising copy and cartoons are also protectable.
l Copyright is available for original working protectable by copyright, such as titles, names,
short phrases, or lists of ingredients. Similarly, ideas methods and processes are not
protectable by copyright, although the expression of those ideasis.
l Copyright protection exists automatically from the time a work is created in fixedform.
l The owner of a copyright has the right to reproduce the work, prepare derivative works based
on the original work (such as a sequel to the original), distribute copies of the work, and to
perform and display the work. Violations of such rights are protectable by infringement
actions.
l Nevertheless, some uses of copyrighted works are considered “fair use” and do not constitute
infringement, such as use of an insignificant portion of a work for noncommercial purposes
or parody of a copyrightedwork.
l Definition: General Definition of copyright “Copyright owner”, with respect to any one of
the exclusive rights comprised in a copyright, refers to the owner of that particularright.

Geographical Indications

l Geographical Indications of Goods are defined as that aspect of industrial property which
refers to the geographical indication referring to a country or to a place situated therein as
being the country or place of origin of thatproduct.
 What is a GeographicalIndication?

l It is anindication
l It originates from a definite geographicalterritory.
l It is used to identify agricultural, natural or manufacturedgoods
l The manufactured goods should be produced or processed or prepared in thatterritory.
l It should have a special quality or reputation or othercharacteristics

Examples of Indian Geographical Indications –

l ➢SolapurChaddar
l ➢ Solapur TerryTowel
l ➢ BasmatiRice
l ➢ DarjeelingTea
l ➢ Kanchipuram SilkSaree
l ➢ AlphansoMango
l ➢ NagpurOrange

Laws relating to Geographical Indication of Goods;

l Geographical Indications of Goods (Registration and Protection) Act, 1999 and The
Geographical Indications of Goods (Registration and Protection) Rules, 2002 deal with
registration and better protection of geographical indications relating togoods.
l The primary purpose of this Act is to provide legal protection to Indian Geographical
Indications which in turn boost exports.
l Registration of Geographical indication promotes economic prosperity of producers of goods
produced in a geographicalterritory.
l According to the Act, the term 'geographical indication' (in relation to goods) means "an
indication which identifies such goods as agricultural goods, natural goods or manufactured
goods as originating, or manufactured in the territory of a country, or a region or locality in
that territory, where a given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in case where such goods are
manufactured goods, one of the activities of either the production or of processing or
preparation of the goods concerned takes place in such territory, region or locality, as the
case maybe".

IPR in India and Abroad

l India is a member of almost all internationalconventions.
l The obligation of the member state arising out of the conventions can be enforced on the basis
of reciprocityonly.
l No right or obligation is enforceableunilaterally.
 l Therefore to pass own laws on Intellectual property is in the interest of every country. In
1999, a considerate passage of major legislations with regard to protection of Intellectual
property rights in harmony with international practices and in compliance with India’s
obligations under TRIPS. These include,

1. The Patents (Amendment) Act, 1999 to amend the patents act of 1970 that provides for
establishment of a mailbox system to file patents and accords exclusive marketing rights for
fiveyears.
2. The Trade marks Act, 1999 which repealed the Trade and Merchandise Act,1958
3. The Copyrights (Amendment) Act,1999.
4. A sui generis legislation for the protection of geographical indications called the
Geographical Indications of Goods (Registration and protection) Act,1999.
5. The Industrial Designs Act, 2000 which replaced the Designs act,1911.
6. The patents (Second Amendment), 1999 further to amend the Patents Act,1970.

l This was a beginning of a new era in the field of Intellectualproperty.

l To streamline and strengthen the Intellectual property administration system in the country
the government has taken several measures. Projects relating to the modernization of patent
information services and trademarks registry have been implemented with the help from
WIPO/UNDP.
l The government has implemented projects for upgrading of patent office’s incorporating
several components such as human resource development, recruiting additional examiners,
infrastructure support and strengthening by the way of computerization and re-engineering
work practices and eliminating backlog of patent applications, an amendment to the patent
rules also was notified to simplify the procedural aspects.
l The first Indian patent laws were first promulgated in 1856. From time to time these were
modified. New patent laws Indian Patent Act 1970 were made after theindependence.
l The Act has now been radically amended to become fully compliant with the provisions of
TRIPS. The most recent amendment was made in 2005 which were preceded by the
amendments in 2000 and2003.

Global Intellectual Property Trends

l With over 3 million applications filed per year, trademark protection is the most sought after
form of IP worldwide with growth rates of a similar magnitude as those forpatents.
l In 2009, one quarter of all trademark applications were filed at the China Trademark Office.
When combined with the shares held by India, the Republic of Korea and Japan, these four
offices located in Asia accounted for 37 percent of total trademark applications. India showed
the highest five-year growth (13.5%) from 2005 to 2009, whereas China had one of the
highest annual growth rates (20.8%) from 2008 to 2009.
l In 2009, China accounted for 50 percent of total industrial design filing activitywhile
growing by 12.3 percent from 2008 to 2009. India was in the 9th place.
l In 2009, 1,41,943 trademark applications were filed, 34,287 patent applications were filed
and 6,092 Industrial designs applications werefiled.
 WTO to WIPO
l World Intellectual Property Organization (WIPO) was founded in 1883 and is specialized
agency of the United Nations whose purposes are to promote intellectual property throughout
the world and to administer 23 treaties (Present 26 treaties) dealing with intellectual property.
WIPO is one of the 17 specialized agencies of the UnitedNations.
l It was created in 1967, to encourage creative activity, to promote the protection of
Intellectual Property throughout the world. More than 175 (Present 188) nations are members
ofWIPO.
l Its headquarters in Geneva, Switzerland, current Director General of WIPO is Francis Gurry
took charge on October 1, 2008. The predecessor to WIPO was the BIRPI [Bureaux for the
Protection of Intellectual Property] it was established in 1893.
l WIPO was formally created by the convention (meeting) establishing the world intellectual
Property organization which entered into force on April 261970.

TRIPs

l Trade-Related aspects of Intellectual Property Rights (TRIPs) is an international agreement

administered by the World Trade Organization (WTO) that sets down minimum standards for
many forms of intellectual property (IP) regulation as applied to nationals of other WTO
Members.
l It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and
Trade (GATT) in1994.
l The Doha declaration is a WTO statement that clarifies the scope of TRIPS, stating for
example that TRIPS can and should be interpreted in light of the goal "to promote access to
medicines forall."
l Specifically, TRIPS requires WTO members to provide copyright rights, covering content
producers including performers, producers of sound recordings and broadcasting
organizations; geographical indications, including appellations of origin; industrial designs;
integrated circuit layout-designs; patents; new plant varieties; trademarks; trade dress; and
undisclosed or confidential information. TRIPS also specify enforcement procedures,
remedies, and dispute resolution procedures.

Nature of Intellectual Property

Intellectual properties have their own peculiar features. These features of intellectual properties may
serve to identify intellectual properties from other types of properties. Thus, we will discuss them in
brief.
 Territorial
Any intellectual property issued should be resolved by national laws. Why is it an issue? Because
intellectual property rights have one characteristic which other national rights do not have. In
ownership of intellectual property of immovable properties, issues of cross borders are not probable.
But in intellectual properties, it is common. A film made in Hollywood can be seen in other countries.
The market is not only the local one but also international. If a design in China is imitated by another
person in France which law would be applicable?
 Giving an exclusive right to the owner
It means others, who are not owners, are prohibited from using the right. Most intellectual property
rights cannot be implemented in practice as soon as the owner got exclusive rights. Most of them
need to be tested by some public laws. The creator or author of an intellectual property enjoys rights
inherent in his work to the exclusion of anybody else.
 Assignable
Since they are rights, they can obviously be assigned (licensed). It is possible to put a dichotomy
between intellectual property rights and the material object in which the work is embodied.
Intellectual property can be bought, sold, or licensed or hired or attached.
 Independence
Different intellectual property rights subsist in the same kind of object. Most intellectual property
rights are likely to be embodied in objects.
 Subject to Public Policy
They are vulnerable to the deep embodiment of public policy. Intellectual property attempts to
preserve and find adequate reconciliation between two competing interests. On the one hand, the
intellectual property rights holders require adequate remuneration and on the other hand, consumers
try to consume works without much inconvenience. Is limitation unique for intellectual property?
 Divisible (Fragmentation)
Several persons may have legally protected interests evolved from a single original work without
affecting the interest of other right holders on that same item. Because of the nature of indivisibility,
intellectual property is an inexhaustible resource. This nature of intellectual property derives from
intellectual property’s territorial nature. For example, an inventor who registered his invention in
Ethiopia can use the patent himself in Ethiopia and License it in Germany and assign it in France.
Also, copyright is made up of different rights. Those rights may be divided into different persons:
publishers, adaptors, translators, etc.

Source:- [Link]
nature-of-intellectual-property-rights

Industrial Property

Technological Research

Inventions and Innovations

Important examples of IPR

 UNIT II - REGISTRATION OF IPRs

Meaning and practical aspects of registration of Copy Rights, Trademarks, Patents, Geographical
Indications, Trade Secrets and Industrial Design registration in India and Abroad

Copyright Registration

l A work is “created” when it is fixed in a copy or phonorecord for the firsttime.

l Although not required to provide copyright protection for a work, registration of copyright
with the Copyright Office in expensive, easy and provides several advantages, chiefly, that
registration is a condition precedent for bringing an infringement suit for works of USorigin.
l To register a work, the applicant must sent the following three elements to the Copyright
Office: a properly completed application form, a filing fee, and a deposit of the work being
registered. Registration may be made at any time within the life of thecopyright.

The Application for Copyright Registration

l The following persons are entitled to submit an application for registration of copyright: the
author (either the person who actually created the work or, if the work is one made for hire,
the employer or commissioningparty)
l The copyright claimant (either the author or a person or organization that has obtained
ownership of all of the rights under the copyright originally belonging to the author, such as a
transferee)
l The owner of exclusive right, such as the transferee of any of the exclusive rights of
copyright ownership (for example, one who prepares a movie based on an earlier book may
file an application for the newly created derivative work, the movie);and
l The duly authorized agent of the author, claimant, or owner of exclusive rights (such as an
attorney, trustee, or anyone authorized to act on behalf of suchparties)

Application Forms

l The Copyright Office provides forms for application for copyrightregistration.

l Each form is one 8 ½ by 11” (inchs) sheet, printed front andback.
l An applicant may use photocopies offorms.
l The Copyright Office receives more than 6,00,000 applications each year, each application
must use a similar format to ease the burden ofexamination.
l The type of form used is dictated by the type of work that is the subject ofcopyright..
l For example: One form is used for literary works, while another is used for sound recording.
Following are the forms used for copyrightapplication.
o Form TX (Literary works, essays, poetry, textbooks, reference works, catalogs,
advertising copy, compilations of information, and computerprograms)
o Form PA (Pantomimes, choreographic works, operas, motion pictures and other
audiovisual works, musical compositions andsongs.
 o Form VA (Puzzles, greeting cards, jewelry designs, maps, original prints,
photographs, posters, sculptures, drawings, architectural plans andblueprints.
o Form SR (Sound recording)
o Form SE (periodicals, newspapers magazines, newsletter, annuals and [Link].

Notice of copyright
l Since March 1, 1989 (the date of adherence by the United States to the Berne Convention),
use of a notice of copyright (usually the symbol © together with the year of first publication
and copyright owner’s name) is no longer mandatory, although it is recommended and offers
someadvantages.
l Works published before January 1, 1978, are governed by the 1909 copyrightAct.
l Under that act, if a work was published under the copyright owner’s authority without
aproper notice of copyright, all copyright protection for that work was permanently lost in
the United States.
l With regard to works published between January 1, 1978, and March 1, 1989, omission of
a notice was generally excused if the notice was omitted from a smaller number of copies,
registration was made within five years of publication, and a reasonable effort was made to
add the notice after discovery of itsomission.

International Copyright Law

l Developments in technology create new industries and opportunities for reproduction
anddissemination of works ofauthorship.
l A number of new issues have arisen relating to the growth of electronic
publishing,distribution, and viewing of copyrightedworks.
l Along with new and expanded markets for works comes the ever-increasing challenge
ofprotecting works form piracy orinfringement.

1. Copyright protection for computerprograms

2. Copyright protection for Automated Databases
3. Copyright in the ElectronicAge
4. The Digital Millennium CopyrightAct

TRADEMARK REGISTRATION PROCESSES

Preparing the application
l Once a mark has been selected and evaluated for use and registrability, an application for
federal registration of the /mark should be prepared andfiled.
l An application is provided byPTO
o The name of theapplicant
o The citizenship of theapplicant
o The address of theapplicant
o The address of theapplicant
o An identification of the goods and or services offered under themark
o A drawing of themark
 o A verification or declaration signed by the applicant or agent orattorney
l The application is based on actual use of the mark or the owner’s intent to use themark.
l The process of moving an application through the PTO is called prosecution [(law) the
institution and conduct of legal proceedings against a defendant for criminalbehavior]
l The application must be inEnglish.
l Electronically filed application are provided by thePTO
l Self application is also be prepared as the letter size (namely 8 ½ inches by 11 inches) paper,
typewriter, double-spaced, with margins of at least 1 ½ inches at the left and top of thepages.
l The application should be written on only one side of thepaper.
l The filing and prosecution of trademark application are governed by the TMEP [Trademark
Manual of ExaminationProcedure]
l The PTO introduced on electronic filing system in1998.
l The Trademark Electronic Application System [TEAS]. Permits applicants to file numerous
documentselectronically.
l PTO considers the electronically filed document aftertransmission.

The applicant
l The mark can be made only by the owner of the mark or, in the case of intent –to-use
application, by a person who has a bonafide to use the mark incommerce.
l Application may be natural persons or business entities such as corporation, partnership,
association, unions or otherorganization.
l Government entities such as nations, states municipalities and other governmental bodies.
The applicant name must be in correct legalform.
l A mark should be identified in the application by the name set forth in its articlesof
incorporation.
l Clients often make mistakes in their corporate names or in thepunctuation.
l The certificate of registration will issue in the name of the application as set forth in the
application.
l If the application is a person or business that conducts business under a fictitious [fake]
business name, the application will berejected.
l The applicant is a partnership For example: “Balboa Gardens Partnership”, the application
should be made by the partnership itself and the state in which the partnership wasorganized.
l A trademark or service mark application is usually filed in the name of oneparty.
l The PTO has been reluctant [unwilling] to accept application by joint applicants. A joint
venture or a partnership cannot be jointapplicants.

Registration
l A registration will issue about twelve weeks after publication in the officialgazette .
l If no notice of opposition is filed to theapplication.
l For an ITU [Intent-to-Use] application registration will occur after publication in the official
Gazette.
l The PTO will issue a certificate of registration for themark.
l The term of the registration is presently ten years from the date the mark is registered
[forregistration issued before November 16, 1989, the term is twenty years] “TM” for
Trademark & SM for servicemark.
Patent Application Process

Overview of the Application Process

l The process of preparing, filing, and shepherding a patent application through the PTO
towards issuance is called “prosecution”.
l An application may be filed by the inventor himself or herself or, as is more usual, by a
patentattorney.
l Only 20% of all applications are filed by inventors without the assistance ofattorneys.
l The application is filled with PTO, it will be assigned to one of more than 3500 patent
examiners having experience in the area of technology related to the invention who will
review the application and conduct a search of patent records to ensure the application
complies with the statutory requirements forpatents.
l The process may continue for severalrounds.
l A Notice of Allowance will be sent to the applicant, which specifies an issue fee that must
be paid to the PTO in order for the patent to begranted.
l Until 2000 all patent application were maintained in confidence, but after November 2000
they werepublished.
l It takes one to three years to prosecute a patent, and costs and fees can range from $5000 to
more than $30000 with fee generally ranging for $10000 to$12000.
Patent Practice
l While preparing trademark and copyright applications is relatively straightforward,
preparing a patent application requires skillful drafting as well as knowledge in the relevant
fields, whether that is biotechnology, chemistry, mechanical engineering, physics, computers,
pharmacology, electrical engineering, and soforth.
l They are divided into different groups, such as a mechanical group, a biotech group, and an
electricalgroup.
l Many patent attorneys possess both a law degree and an advanced degree inengineering,
physics, chemistry, or thelike.
l To represent patent applicants before the PTO, an attorney must be registered topractice
with thePTO.
l An attorney must pass the Patent Bar, which requires the attorney to demonstrate
background in science orengineering.
l The examination is very difficult it is a multiple choice questions, and the pass rate tends to
hover aroundone-third.
l A list of attorneys and agents registered to practice before the PTO is available from the
Government Printing Office located in Washington, DC, Alternatively, the PTO web site
([Link] provides an index to the more than
18000 attorneys and agents who are licensed to practice before thePTO.

Confidentiality of Application Process and Publication of Patent Application

 More than 200 years, all patent applications filed with the PTO were maintained in strict
confidence throughout the entire applicationprocess.
 Only when the patent issued was the file wrapper open to publicinspection.
  Under the American Inventors Protection Act (AIPA) of 1999, however, which took
effect in November of 2000, the PTO now publishes utility and plant applications
eighteen months after theirfiling.
 If the applicant later decides to apply for a patent in a foreign country, the applicant must
provide notice of this foreign filing to the PTO within forty-five days or the application
will be regarded asabandoned.
 The intent of the new law is to harmonize U.S. patent procedures with those of other
countries, almost all of which publish patent applications after an initial period of
confidentiality.
 The new act protects inventors from having their inventions infringed by providing that
patentees can obtain reasonable royalties if others make, used, or sell the invention during
the period between publication and actual grant of thepatent.

Preparing the Application

 Title
 Cross-references to relatedapplications
 Background
 Summary ofinvention
 Brief description ofdrawing
 Detailed description of theinvention
 Claims

Registration of Geographical Indication

l The registration of a geographical indication is not compulsory; however, it offers better
legal protection to facilitate an action for infringement. The registered proprietor and
authorized users can initiate infringement actions. The authorized users can exercise the
exclusive right to use the geographicalindication.
l The registration of a geographical indication is valid for a period of 10 years. It can be
renewed from time to time for further period of 10 years each. If a registered geographical
indication is not renewed it is liable to be removed from theregister.

Procedure for Filing application for registration of Geographical Indication

I. Form and signing ofapplication

o Every application for the registration of a geographical indication should be made in the
prescribed form (GI-1A to ID) accompanied by the prescribed fee(Rs.5,000).
o It should be signed by the applicant or hisagent.
o It must be made in triplicate along with three copies of a Statement of Case accompanied
by five additionalrepresentations.
II. Fees
o Fees may be paid in cash or sent by money order or by a bank draft or by acheque.
o Bank Drafts or cheques should be crossed and be made payable to the Registrar at the
appropriate office of the Geographical IndicationRegistry.
 o It should be drawn by a scheduled bank at the place where the appropriate office of the
Geographical Indications Registry issituated.
o Where a document is filed without fee or with insufficient fee such document will be
deemed to have not beenfiled.
III. Sizes
o All applications should be typewritten, lithographed or printed in Hindi or inEnglish.
o It should in large and legible characters with deep permanent ink upon strong paper, on
one sideonly.
o The size should be approximately 33 cms by 20 cms and shall have on the left and part
thereof a margin of not less than 4centimeters.
IV. Signing ofdocuments
o In case of-
 An association of persons or producers shall be signed by the authorized
signatory.
 A body corporate or any organization or any authority established by or under
any law for the time being in force shall be signed by the Chief Executive, or the
Managing Director or the secretary or other principalofficer.
 In case of partnership it shall be signed by at least one of thepartners.
o The capacity in which an individual signs a document should be stated below his
signature.
o Signatures should be accompanied by the name of the signatory in English or in Hindi
and in capitalletters.
V. Principal place of business inIndia
o Every application for registration of a G.I should state the principal place of business in
India.
o A body corporate should state the full name and nationality of the Board ofDirectors.
o Foreign applicants and persons having principal place of business, in their home country
should furnish an address for service inIndia.
o In the case of a body corporate or any organization or authority established by or under
any law for the time being in force, the country of incorporation or the nature of
registration, if any as the case may be should begiven.
VI. Convention Application should contain thefollowing
o 1. A ce rtificate by the Registry or competent authority of the Geographical Indications
Office Of the conventioncountry.
o 2. The particulars of the geographical indication, the country and the date or dates of
filing of the firstapplication.
o 3. The application must be the applicants’ first application in a convention country for the
same geographical indications and for all or some of thegoods.
o 4. The application must include a statement indicating the filing date of the foreign
application, the convention country where it was filed, the serial number, ifavailable.
VII. Statement of user inapplications
o An application to register a geographical indication should contain a statement of user
along with anaffidavit.
VIII. Content ofApplication
o Every application should be made in the prescribed forms and shall contain thefollowing
:
o A statement as to how the geographical indication serves to designate the goods as
originating from the concerned territory in respect of specific quality, reputation or other
characteristics.
o The three certified copies of class of goods to which the geographical indicationrelates.
 o The geographical map of theterritory.
o The particulars of the appearance of the geographical indication words or figurative
elements orboth;
o A statement containing such particulars of the producers of the concerned goods
proposed to be initially resisted. Including a collective reference to all the producers of
the goods in respect of which the application ismade.
o The statement contained in the application should also include thefollowing:
o An affidavit as to how the applicant claim to represent the interest of the association of
persons or producers or any organization or authority established under anylaw;

l The standard benchmark for the use of the geographical indication or the industry standard as
regards the production, exploitation, making or manufacture of the goods having specific quality,
reputation or other characteristic of such goods that is essentially attributable to its geographical
origin with the detailed description of the human creativity involved, if any or other
characteristic;
l The particulars of the mechanism to ensure that the standards, quality, integrity and consistency
or other special characteristic are maintained by the producers, or manufacturers of thegoods;
l Three certified copies of the map of the territory, region orlocality;
l The particulars of special human skill involved or the uniqueness of the geographical
environment or other inherent characteristics associated with the geographicalindication;
l The full name and address of the association of persons or organization or authority representing
the interest of the producers of the concernedgoods;
l Particulars of the inspectionstructure;
l In case of a homonymous indication, the material factors differentiating the application from the
registered geographical indications and particulars of protective measuresadopted.

IX. Acknowledgement of receipt ofapplication:

l Every application of the registration of a geographical indication in respect of any goods shall, on
receipt be acknowledged by theRegistrar.
l The acknowledgement will be by way of return of one of the additional representations with the
official number of the application duly enteredthereon

Trade Secrets:
l The type of information that must be kept confidential in order to retain its competitiveadvantage
is generally called a “TradeSecret”.
l A trade secret is any information that can be used in the operation of a business or other 
enterprise that is sufficiently valuable and secret to afford an actual or potential economic
advantage overothers.
l Restatement (Third) of Unfair Competition § 39(1995).
l A recipe, a formula, a method of conducting business, a customer list, a price list, marketing
plans, financial projection, and a list of targets for a potential acquisition can all constitute trade
secrets.
o Generally, to qualify for trade secret protection, informationmust
o bevaluable;
o not be publicly known;and
o be the subject of reasonable efforts to maintain itssecrecy
l The rapid pace of technology advances the ease with which information can now berapidly
disseminated and the mobility of employees require businesses to devote significant effort to
protecting their tradesecrets.
l If trade secrets were not legally protectable, companies would have no incentive for investing
time money and effort in research and development that ultimately benefits the public atlarge.
l Trade secrets law not only provides an incentive for companies to develop new methods and
processes of doing business but also, by punishing wrongdoers, discourages improper conduct in
the businessenvironment.

Protection of Trade Secrets:

 Although trademarks, copyrights and patents are all subject to extensive statutory scheme
for their protection, application and registration, there is no federal law relating to trade
secrets and no formalities are required to obtain rights to tradesecrets.
 Trade secrets are protectable under various state statutes and cases and by contractual
agreements betweenparties.
 For Example: Employers often require employees to sign confidentiality agreements in
which employees agree not to disclose proprietary information owned by the employer. If
properly protected, trade secrets may last forever.
 On the other hand, if companies fail to take reasonable measures to maintain the secrecy
of the information, trade secret protection may belost.
 Thus, disclosure of the information should be limited to those with a “need to know” it so
as to perform their duties, confidential information should be kept in secure or restricted
areas, and employees with access to proprietary information should sign nondisclosure
agreements.
 If such measures are taken, a trade secret can be protected in perpetuity. Another method
by which companies protect valuable information is by requiring employee to sign
agreements promising not to compete with the employer after leaving thejob.
 Such covenants are strictly scrutinized by courts, but generally, if they are reasonable in
regard to time, scope and subject matter, they areenforceable.
 UNIT III -AGREEMENTS AND LEGISLATIONS

International Treaties and Conventions on IPRs, TRIPS Agreement, PCT Agreement, Patent Act of
India, Patent Amendment Act, Design Act, Trademark Act, Geographical Indication Act.