Intellectual Property Rights

Pratap K. J. Mohapatra
History
• India has complied with its obligations under the Agreement on Trade
Related Intellectual Property Rights (“TRIPS”) by enacting the necessary
statutes and amending the existing statues.
• The Trade and Merchandise Marks Act, 1958 has been replaced by the
Trade Marks Act, 1999,
• The Copyright Act, 1957 has been amended in 2012 to protect computer
programs as “literary work”;
• The Patents Act, 1970 has been amended by the Amendment Acts of 1999
and 2002 and 2005.
• The Designs Act of 1911 has been completely replaced by the Designs Act
of 2000.
Laws to Protect Other Species of Intellectual
Property in India
• The Geographical Indications of Goods (Registration and Protection)
Act, 1999;
• The Semiconductor Integrated Circuits Layout Design Act, 2000;
• The Protection of Plant Varieties and Farmers Rights Act, 2001;
• The Biological Diversity Act, 2002
• The Competition Act, 2002
Trademarks
• The Trade and Merchandise Marks Act, 1940 was amended in 1958 and in
1999).
• The 1999 amended act was called the Trade Marks Act, 1999 (TM Act,
1999) and came into effect in 2003.
• Statutory protection of trademark is administered by the Controller
General of Patents, Designs and Trade Marks, a government agency which
reports to the Department of Industrial Policy and Promotion (DIPP), under
the Ministry of Commerce and Industry.
• Trade Marks Registry (Head office: Mumbai, and Branch offices: Kolkata,
Delhi, Chennai, and Ahmedabad works under the charge of the Registrar of
Trademarks.)
Trademark and Mark defined in the TM Act
• “Trade mark means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others
and may include shape of goods, their packaging and combination of colours."
• ‘Mark’ includes ‘a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or, combination of colours, or any
combination thereof.’
• Any mark capable of being ‘graphically represented’ and indicative of a trade
connection with the proprietor can be registered as a trademark.
• Sound marks (unconventional) are also trademarks if they satisfy the ‘graphical
representation’ test and are not prohibited under Section 9 and 11 of the Act.
• A trademark may be described by way of “graphical representation”.
• The TM Act does not contemplate the form of submission of records of the
unconventional trademarks.
• Certification marks are given for compliance with defined standards,
but are not confined to any membership. “ISO 9000” quality standard
is an example of a widely recognized certification mark.
• Collective marks can be owned by any association. The members of
such associations will be allowed to use the collective mark to identify
themselves with a level of quality and other requirements and
standards set by the association. Examples of such associations would
be those representing accountants, engineers or architects.
Unconventional Mark – Sound Mark
• India’s Trade Mark Registry has begun to recognize “unconventional
trademarks” and has extended trademark protection to a sound
mark.
• On August 18, 2008, India’s first “sound mark” was granted to
Sunnyvale, California-based Internet firm Yahoo Inc.’s three-note
Yahoo Yodel by the Delhi branch of the Trademark Registry.
• It was registered in classes 35, 38 and 42 for a series of goods
including email, advertising and business services and managing
websites.
Graphical Representation
• “Graphical representation” is the representation of a trademark for goods
or services in paper form.
• Sound marks can be represented on paper either in descriptive form e.g.
kukelekuuuuu (registered as Dutch sound mark - onomatopoeia which
sounds like the call of a cock) or as traditional musical notations e.g. D#, E
etc.
• Other alternative methods for their visual representation have also
emerged like depictions by oscillogram; spectrum, spectrogram and
sonogram are now being accepted in other jurisdictions.
• In the case of Yahoo’s Yodel mark, they represented the mark using musical
notations.
• The graphical representations should be clear, precise, self-contained,
easily accessible, intelligible, durable and objective.
Classes of Trademark
• 45 classes of trademarks, out of which 35 – 45 are service marks.
• Class 35. Advertising, business management, business administration, office functions.
• Class 36. Insurance, financial affairs; monetary affairs; real estate affairs.
• Class 37. Building construction; repair; installation services.
• Class 38. Telecommunications.
• Class 39. Transport; packaging and storage of goods; travel arrangement.
• Class 40. Treatment of materials.
• Class 41. Education; providing of training; entertainment; sporting and cultural activities.
• Class 42. Scientific and technological services and research and design; industrial analysis and
research services; design and development of computer hardware and software.
• Class 43. Services for providing food and drink; temporary accommodation.
• Class 44. Medical services, veterinary services, hygienic and beauty care; agriculture, horticulture
and forestry services.
• Class 45. Legal services; security services for the protection of property and individuals; personal
and social services
Symbols
• Two symbols:
• ™ (the trademark symbol). It can be used with any common law
usage of a mark
and
• ® (the registered trademark symbol). It can only be used by the owner
of a mark following registration with the relevant national authority.
Who Can Apply
• Any person claiming to be the proprietor of a trademark that is
already in use or is proposed to be used can file an application for
registration.
• The application may be made in the name of the individual, partner
of a firm, a company, any government department, a trust, or even in
name of joint applicants.
• Domestic and international applicants are treated at par.
• An application can also be filed on behalf of a company that is about
to be incorporated or registered under the Companies Act, 1956.4
Term of Registration
• The registration is valid for 10 years
• It is renewable for a subsequent period of 10 years.
• Non-renewal leads to a lapse of registration. However, there is a
procedure whereby a lapsed registration can be restored.
License of Trademark
• Non-registered licensed use is allowed if such use is with the consent
of the proprietor as embodied in a written agreement and if such user
satisfies the prescribed conditions.
• Thus, owners of Indian registered trademarks, who are located
abroad having no presence in India, can use their trademarks in India
by granting licenses to the Indian parties.
Paris Convention
• Reciprocity for the purpose of claiming priority is allowed from the
applications originating from the Paris Convention countries if filed
within 6 months from the date of priority.
Rights Conferred by Registration
• The registration of a trademark gives the registered proprietor the
exclusive right to use the trademark in relation to the goods or
services for which it is registered and to obtain relief with respect to
infringement of the same.
• It acts as a public notice to others, informing them that they should
not use the trademarks which are registered or pending for
registration.
Infringement
• If mark used by someone else is identical or deceptively similar,
goods/services for which used are the same, and they must be
traded, and the mark is used like a trademark.
• Infringement is caused if also the trademark is used for a dissimilar
product/service but is likely to cause harm to the reputation of the
registered entity.
• The registered proprietor, his heirs and the registered user(s) can sue
for infringement. An assignee of a registered trademark can also sue
for infringement.
Passing Off
• The user of an unregistered trademark is barred from instituting an
infringement action.
• But if the mark in question has become well known in India, the user
of such a trademark may seek a remedy by means of a passing off
action.
• The purpose is to protect commercial goodwill (an asset) and to
ensure that one’s business reputation is not exploited.
• In a passing off action, the plaintiff must establish that the mark,
name or get-up is distinctive of his goods in the eyes of the public or
class of public and that his goods are identified in the market by a
particular mark or symbol.
Recognition of Foreign Well-Known Marks &
Trans-border Reputation
• The courts in India have recognized the trans-border reputation of
foreign trademarks and trade names and the importance of their
protection.
• Whirlpool, Volvo, etc. have retained their trademarks in India.
Domain Names
• Indian courts have held that “the domain name serves the same
function as a trade mark, and is not a mere address or like finding
number on the internet, and therefore, it is entitled to equal
protection as a trademark”.

• Cases such as
• [Link] v. [Link]
• www. [Link] v. [Link]
• www. [Link] v. [Link].
Copyright
• The Copyright Act, 1957 (“Copyright Act”), supported by the Copyright
Rules, 1958 (“Copyright Rules”), was amended to bring out the Copyright
Act, 2012.
• A copyright subsists in an original literary, dramatic, musical or artistic
work, cinematograph films, and sound recordings.
• However, no copyright subsists in a cinematograph film if a substantial part
of the film is an infringement of the copyright in any other work or in a
sound recording, if in making the sound recording of a literary, dramatic or
musical work, copyright in such work is infringed.
• A computer programme is treated as a “literary work” and is protected as
such.
Is Registration Compulsory?
• Registration is not a prerequisite for acquiring a copyright in a work.
• A copyright in a work is created when the work is created and given a material
form, provided it is original.
• The Copyright Act provides for a copyright registration procedure.
• The Register of Copyright acts as prima facie evidence of the particulars entered
therein.
• The documents submitted and entries and extracts from the Register of the
Registrar of Copyright are admissible in evidence in all courts without further
proof of original.
• Thus, registration only raises a presumption that the person in the Register is the
actual author, owner or right holder.
• The presumption, however, is not conclusive.
The Berne Convention and Universal
Copyright Convention
• India is a member of the above conventions.
• The Government of India has passed the International Copyright
Order, 1958.
• According to this Order, any work first published in any country -
which is a member of any of the above conventions - is granted the
same treatment as if it was first published in India.
• A copyright grants protection to the creator and his representatives
for the works and prevents such works from being copied or
reproduced without his/their consent.
• The creator of a work can prohibit or authorize anyone to:

reproduce the work in any form, such as print, sound ,video, etc;
use the work for a public performance, such as a play or a musical work;
make copies/recordings of the work, such as via compact discs, cassettes,
etc.;
broadcast it in various forms; or
translate the same to other languages
The Term of Copyright
• The term of copyright is, in most cases, the lifetime of the author plus
60 years thereafter.
First Ownership of Copyright & ‘Work for Hire’
• The author of a work is usually the ‘first owner’ of such work.
• In certain circumstances, Section 17 of the Copyright Act determines who
may be regarded as the ‘first owner’ of a copyrighted work.
• In the case of a literary, dramatic or artistic work (which includes a
photograph, painting or a portrait) created during the course of
employment or, under a contract of service or apprenticeship, for the
purpose of publication in a newspaper, magazine or similar periodical, the
proprietor of such a publication shall, in the absence of a contract to the
contrary, be the first owner of copyright. However, such ownership shall
vest with the proprietor of the publication only for the limited purpose of
publishing the work or a reproduction of the work in a publication and, for
all other purposes, the copyright shall vest with the author of the work.
• If a photograph, painting or portrait has not been made for the
purposes of publication in a periodical but has been made for any
other purpose, then in the absence of a contract to the contrary, the
copyright in such work shall vest with the person at whose instance
the work was created.
• In the case of a cinematograph film, in the absence of a contract to
the contrary, the copyright in the cinematograph film shall vest with
the producer of the film i.e. the person at whose instance the film
was made for a valuable consideration
•
• In case of a work made during the course of employment or under a
contract of service or apprenticeship, (to which the instances given
under serial no. 1 do not apply), the employer shall, in the absence of
a contract to the contrary shall be the first owner of copyright.
• In case of a government work, in the absence of a contract to the
contrary, the copyright in the work shall vest with the government.
• The concept of ‘Work for Hire’ (Work-for-Hire Doctrine) is implied under
Section 17.
• The copyright in any work created on commissioned basis (meaning work
done by an independent contractor), shall vest with the person creating
such work, unless there is an agreement to the contrary.
• In order to vest the copyright with the person commissioning the work, an
assignment in writing shall be necessary.
• Here’s a list of the nine types of work done by independent contractors
that can be considered work-for-hire:
- a contribution to a collective work; a part of a motion picture or
other audio-visual work; a translation; a supplementary work; a
compilation; an instructional text; a test; answer material for a test;
or an atlas
Special Monetary Rights in Underlying Works
in a Cinematograph Film/Sound Recordings
• Authors of literary or musical works (i) incorporated in films; or (ii)
sound recordings (which are not part of films) have the right to
receive royalties equal to the royalties received by the assignee of
such rights for exploitation of their works (other than communication
to public of that film in cinema halls).
• These rights cannot be assigned or waived by the right holders
(except in favor of legal heirs and copyright societies).
• Any agreement that seeks to assign or waive the above rights shall be
void.
• Scriptwriters/screenplay writers are covered within the scope of these
provisions.
• No assignment of the copyright in any work to make a cinematograph
film or sound recording can affect the right of the author of the work
to claim royalties or any other consideration payable in case of
utilization of the work in any form other than as part of the
cinematograph film or sound recording.
• The business of issuing or granting license in respect of literary,
dramatic, musical and artistic works incorporated in a
cinematographic film or sound recordings post the amendment can
be carried out only through a copyright society duly registered under
the Act.
Assignment of Copyright (Section 19)
• No assignment of copyright shall be valid unless such assignment is in
writing and signed by the assignor and the assignee. Such assignment
ought to identify:

the work and the rights assigned,

the territorial extent and,
the duration of the assignment

• If not specified, the assignment extends to the territory of India and

the duration of assignment is for a period of five years respectively.
• The copyright in a future work can be assigned in accordance with
Section 19.
• However, such assignment shall come into effect only upon date of
creation of the work.
• No assignment shall be applied to any medium or mode of
exploitation of the work, which did not exist or was not in commercial
use at the time when the assignment was made, unless the
assignment specifically referred to such medium or mode of
exploitation of the work.
Moral Rights
• Section 57 of the Copyright Act grants an author “special rights,”
which exist independently of the author’s copyright, and subsists
even after the assignment (whole or partial) of the said copyright.
• The author has the right to (a) claim authorship of the work; and (b)
restrain or claim damages with respect to any distortion, mutilation,
modification, or other act in relation to the said work if such
distortion, mutilation, modification, or other act would be prejudicial
to his honor or repute.
• These special rights can be exercised by the legal representatives of
the author.
• Now, post death of the author, if he is not given credit for his work,
then even legal representatives, may be able to take necessary action
to remedy such breach.
• The right against distortion is available even after the expiry of the
term of copyright.
Rights Related to Copyright
• A. Performers’ Right

When a performer (e.g., an actor or a musician) appears or engages in any

performance, he has this special right in relation to his performance.
A “Performer” in a cinematograph film whose performance is casual or incidental in
nature and is not acknowledged in the credits of the film shall not be treated as a
performer except for the purpose of attributing moral rights.
The term of this right is 50 years from the beginning of the calendar year following
the year of performance.
The “Performer’s Right” is stated to be the exclusive right subject to the provisions of
the Act, to do or authorize for doing any of the following acts in respect of the
performance or any substantial part thereof:
• to make a sound recording or a visual recording of the performance, including—
 reproduction in any material form including storing it in any medium by electronic or any
other means;
 issuance of copies of it to the public not being copies already in circulation;
 communication of it to the public;
 selling or giving it on commercial rental or offer for sale or for commercial rental of any copy
of the recording;
• to broadcast or communicate the performance to the public except where the
performance is already broadcast. Once a performer has by written agreement
consented to the incorporation of his performance in a cinematograph film he
shall not in the absence of any contract to the contrary object to the enjoyment
by the producer of the film of the performers rights in the same film. However,
the performer shall be entitled for royalties in case of making of the
performances for commercial use.
• B. Broadcast Reproduction Right

Every broadcasting organization has this right with respect to its broadcasts.
The term of this right is 25 years from the beginning of the calendar year
following the year in which the broadcast is made
Infringement of a Copyright
• A copyright is infringed if a person without an appropriate license does
anything that the owner of the copyright has an exclusive right to do.
• However, there are certain exceptions to the above rule (e.g., fair dealing).
• The Copyright Act provides for both civil and criminal remedies for
copyright infringement. When an infringement is proved, the copyright
owner is entitled to remedies by way of injunction, damages, and order for
seizure and destruction of infringing articles.
• Section 53: The owner of the copyright can make an application to the
Commissioner of Customs (or any other authorised officer) for seizing of
infringing copies of works that are imported into India.
Copyright Protection of Software
• Literary Work includes computer programmes, tables and compilations
including computer databases. The terms tables, compilations, and
computer database have not been defined in the Copyright Act.
• The owner of a computer programme (CP) has the exclusive right to do or
authorize third parties to do the following acts:
Reproduction of the CP,
Issue copies to public, perform/communicate it to public,
Make translation or adaptation of the work,
Sell or give on commercial rental or offer for sale or for commercial rental any copy
of the CP.
• However, the commercial rental provision does not apply if the CP itself is
not an essential part of the rental.
• Any violation of these exclusive rights amounts to an infringement.
• Section 52: If the lawful possessor of the CP makes copies or adaptation of
the CP in the following circumstances, they do not constitute infringement:
utilize the CP for the purpose for which it was supplied; or
make backup copies purely as a temporary protection against loss, destruction or
damage.
obtain information for operating inter-operability of an independently created the CP
with other the CP, provided such information is not readily available.
Observation, study or test of functioning of the CP to determine the ideas and
principles that underline any elements of the CP (while performing such acts
necessary for the function for which the CP is supplied).
Making of copies or adaptation of the CP from a personally legally obtained copy for
non-commercial personal use is also allowed.
• The fair dealing defense is not available in the case of a CP.
Registration
• For registration of CP, the first 25 and last 25 pages of the source code
are deposited with the Registrar of Copyright.
• Deposit of the CP in a safe deposit locker or posting of the CP to a
lawyer or one’s own address can be used to prove date of creation,
ownership of copyright, and other details with respect to the same.
• Further, maintenance of logbooks recording the details of the
development of CP could also act as proof of date of creation and
ownership.
Infringement
• Knowingly making use on a computer of an infringing copy of CP is a
punishable offence. The penalty for such an offence is imprisonment
(minimum of seven days and maximum of three years) and a fine
(minimum INR 50,000 and maximum INR 2,00,000). If the offender
proves that such use was not for gain in the course of trade or
business, the court may waive imprisonment and grant a fine up to
INR 50,000.
Compulsory Licenses and Statutory Licenses
• A compulsory license (CL) is an involuntary license issued for a copyrighted piece of work that the
copyright owner has to grant for the use of their rights in the work against payment as
established under law in case the Copyright Board concludes that the copyrighted piece of work is
withheld from the public.
• Under the Act, the CL provisions under Section 31 (in relation to published work) and 31A (in
relation to unpublished or anonymous work) anywhere in the world.
• The work may be made available under CL for the benefit of people suffering from disabilities.
• “Statutory license” in relation to published works: Any broadcasting organization, that proposes
to communicate a published work to the public by way of broadcast (including television and
radio) or a performance of any published musical/lyrical work and sound recording, may do so by
giving prior notice of its intention to the owners of the rights.
• Such prior notice has to state the duration and territorial coverage of the broadcast and pay
royalties for each work at the rate and manner fixed by the Copyright Board.. The names of the
author and the principal performer will have to be announced with the broadcast (unless
communicated by way of the performance itself). Records and books of accounts will have to be
maintained by the Broadcasting Organizations and reports will be required to be given to the
owners of the rights. The owners are also granted audit rights against the broadcasting
organizations.
Statutory License for Cover Versions
• Statutory licenses are granted for making “cover versions”.
• Cover version may be made only of such literary, dramatic or musical work, in relation to
which a sound recording has already been made by or with the license or consent of the
owner of the right in the work.
• Cover version can be made only after the expiration of five calendar years, after the end
of the year in which the first sound recordings of the original work was made.
• Cover version shall not contain any alteration in the literary or musical work, which has
not been made previously by or with the consent of the owner of rights, or which is not
technically necessary for the purpose of making the sound recordings.
• Cover version shall not be sold or issued in any form of packaging or with any cover or
label which is likely to mislead or confuse the public as to their identity, and in particular
shall not contain the name or depict in any way any performer of an earlier sound
recording of the same work or any was incorporated. Cover version should state on the
cover that it is a cover version made under Section 31C of Act.
Patents
Definition of “Patent” (WIPO)
• World Intellectual Property Organization (WIPO) defines patent as an
exclusive right granted for an invention, which is a product or a
process that provides, in general, a new way of doing something, or
offers a new technical solution to a problem.
What Is a Patent? (WIPO)
• A patent is an exclusive right granted for an invention.
• It is a patent is an exclusive right to a product or a process that generally
provides a new way of doing something, or offers a new technical solution
to a problem.
• To get a patent, technical information about the invention must be
disclosed to the public in a patent application.
• The patent owner may give permission to, or license, other parties to use
the invention on mutually agreed terms.
• The owner may also sell the right to the invention to someone else, who
will then become the new owner of the patent.
• Once a patent expires, the protection ends, and an invention enters the
public domain; that is, anyone can commercially exploit the invention
without infringing the patent.
What Right Does a Patent Provide? (WIPO)
• A patent owner has the right to decide who may – or may not – use
the patented invention for the period in which the invention is
protected.
• That is, the invention cannot be commercially made, used,
distributed, imported, or sold by others without the patent owner's
consent.
What Kinds of Invention Can Be Protected?
(WIPO)
• Patents may be granted for inventions in any field of technology, from
an everyday kitchen utensil to a nanotechnology chip.
• An invention can be a product – such as a chemical compound, or a
process, for example – or a process for producing a specific chemical
compound.
• Many products in fact contain a number of inventions. For example, a
laptop computer can involve hundreds of inventions, working
together.
How Long Does Patent Protection Last?
(WIPO)
• Patent protection is granted for a limited period, generally 20 years
from the filing date of the application.
Is a Patent Valid in Every Country? (WIPO)
• Patents are territorial rights. In general, the exclusive rights are only
applicable in the country or region in which a patent has been filed
and granted, in accordance with the law of that country or region.
How Are Patent Rights Enforced? (WIPO)
• Patent rights are usually enforced in a court on the initiative of the
right owner.
• In most systems a court of law has the authority to stop patent
infringement.
• However the main responsibility for monitoring, identifying, and
taking action against infringers of a patent lies with the patent owner.
What is “Licensing a Patent? (WIPO)
• Licensing a patent simply means that the patent owner grants
permission to another individual/organization to make, use, sell etc.
his/her patented invention in return for “royalty” payments or to get
another income stream (if licensed for manufacturing).
• Agreed terms and conditions define the amount and type of payment
to be made by the licensee to the licensor, the purpose of such
licensing, the territory where it is valid, and the period of validity.
• Unlike selling or transferring a patent to another party, the licensor
continue to have property rights over the patented invention.
• The Patents Act, 1970 (“Patents Act”) was amended first in 1999 the
Patents (Amendment) Act, 1999, and later in 2002 and in 2005.

• The legislation is supported by the Patents Rule, 2003.

Invention
• “Invention” is defined under Section 2(1) (j) of the Patents Act as

“a new product or process involving an inventive step and

capable of industrial application.”

• The traditional aspects of novelty, non-obviousness, and utility have

been specifically included in the definition.
Novelty
• If the invention was known or used by any other person, or used or sold by the
applicant to any person in India and/or outside India, then the applicant would
not be entitled to the grant of a patent.
• Public use or publication of the invention will affect the validity of an application
in India.
• The application must be submitted within one year of public sale or use of the
invention. (US rule. Not valid for India)
• If the applicant has himself/herself use the invention publicly or describe it on e-
mail, at a conference, or in published form for more than one year before the
application is made, then the patent is not granted. (US rule. Not valid for India)
• A combination of known things is not patentable, unless it confers a novel, non-
obvious benefit.
• Naturally occurring objects, entities, laws, phenomena, and abstract ideas are not
patentable.
• The patent application must be filed prior to any publication or public
use.
• Patent rights are essentially territorial in nature, but the criteria of
novelty and non-obviousness are to be considered on/compared with
prior arts on a worldwide basis.

Any earlier patent, earlier publication, document published in any

country, earlier product disclosing the same invention, or earlier
disclosure or use by the inventor will prevent the granting of a
patent in India.
Non-Obviousness
• It is based on a subjective judgment of the patent examiner.

• Tests:

 No one has thought of it earlier.

 One with ordinary skill will not be able to develop it.
Utility
• Any useful machine, process, composition of matter, or improvement
may be patented, provided that it is not disclosed in the “prior art.”

• Prior Art means State-of-the-Art.

Inventions That are Not “Inventions”
• Section 3 of the Patents Act excludes the following from the definition
although they may fall within the definition of the expression
“invention”:

a method of agriculture or horticulture;

a process for the medicinal or other treatment of human beings and animals;
a mere discovery of any new property, or new use for a known substance,
a 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); and
an invention which is frivolous or which claims anything obviously contrary to
well-established natural laws.
• the following are innovations but are not inventions within the meaning of
the Patents Act:
plants and animals in whole or any part thereof other than micro-organisms but
including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals;
a mathematical or business method or a computer program per se or algorithms;
a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions;
a mere scheme or rule or method of performing mental act or method of playing
game;
a presentation of information;
a topography of integrated circuits;
an invention which, in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components.”
• Interesting omissions are those of business methods and computer
programs per se.
Business Method Patents
• In India, business methods are not included in the patentable
inventions and hence cannot be patented.
Computer Programs (CP) Per Se
• “Computer programs per se” is not an “invention”
• But, CP, in its technical application to industry and CP in combination
with hardware are identified as patentable inventions.
• This law is now under consideration.
Pharma and Agro-Chemical Patents
• Product patents for pharmaceutical substances are allowed in India.
• “Section 3 (d) does not allow the following as invention: and reads as
follows:
The mere discovery of a new form of a known substance which does not result in the
enhancement of known efficacy of that substance or the mere discovery of any new
property or new use for a known substance or that 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: For the purposes of this clause, salts, esters, ethers,
polymorphs, metabolites, pure form, practical size, isomers, and mixtures
of isomers, complexes, combinations and other derivatives of a known
substance shall be considered the same substance, unless they differ
significantly in properties with regard to efficacy.”
Who can be the Applicant?
• India grants patent right on a first-to-apply basis.
• The application can be made by either (i) the inventor or (ii) the
assignee or legal representative of the inventor.
• Foreign applicants are given national treatment.
What is the term of a Patent?
• Every patent granted under the Act shall be dated as of the date on
which the complete specification was filed.
• The term is a period of 20 years from the date of filing the patent
application in India.
• There is no provision for an extension of the patent term.
Can the Patent be Surrendered?
• A patentee may surrender his/her patent under Section 63 at any
time by giving notice to the Controller in the prescribed manner.
Assignment/Mortgage/License of Patent
• An assignment of a patent or a share in a patent, a mortgage, license,
or the creation of any other interest in a patent is only valid if the
following conditions are satisfied:

There is a written agreement embodying all the terms and conditions

governing rights and obligations of parties; and,
The agreement is registered by filing Form 16 under the Patents Rules, 2003
with the patent office that has granted the patent.

• Registration can be done at any time after the assignment is done.

Working of a Patent
• It is mandatory to file a statement as to the extent of commercial
working in the Indian territory of a patent granted by Indian Patent
Office.
• The statement embodied in Form 27 of the Patents Rules, 2003 is
required to be filed in respect of every calendar year within three
months of the end of each year (i.e. before March 31st of every year).
• Non-compliance with this requirement may invite penalty of
imprisonment which may extend to six months, or with fine, or with
both, as provided under Section 122(1) (b) of the Patents Act.
Compulsory Licensing
• The grounds on which a compulsory license can be granted are:

Reasonable requirements of the public with respect to the patented invention have
not been satisfied; or,
The patented invention is not available to the public at a reasonably affordable price;
or,
The patented invention is not worked (i.e. not used or performed) in the territory of
India.
Required in cases of "national emergency" or "extreme urgency" or in cases of
"public non-commercial use".

Compulsory licenses are authorizations given to a third-party by the Controller General

to make, use or sell a particular product or use a particular process which has been
patented, without the need of the permission of the patent owner.
Rights of the Applicant Post Publication
• From the date of publication of the application until the date of the
grant of a patent, the applicant has the rights as if a patent for the
invention has been granted on the date of publication of the
application.
• However, the applicant is not entitled to institute any proceedings for
infringement until the patent has been granted.
Infringement
• In the case of a product patent, the following actions would amount
to infringement:
making, using, offering for sale, selling, or importing for these purposes,
the product in India without the permission of the patentee.

• In the case of a process patent, the following would amount to

infringement:
using, offering for sale, selling, or importing for these purposes
the product obtained directly by that process in India without the permission
of the patentee.
What acts do not Constitute Infringement?
• Any act of making, constructing, using, selling or importing a patented
invention solely for uses reasonably related to the development and
submission of information required under any Indian law, or law of a
country other than India, that regulates the manufacture,
construction, use, sale or import of any product;
• The import of patented products by any person from a person who is
duly authorized by the patentee under the law to produce and sell or
distribute the products.
• Bolar Provision: It allows manufacturers to begin the research and
development process in time to ensure that affordable equivalent
generic medicines can be brought to market immediately upon the
expiry of the product patent.
• Parallel Imports: A machine, though patented in India, can be
imported (without the consent of the patentee) from the patentee’s
agent, say, in China, who manufactures it at a lower cost with the
consent of the patentee.
Reversal of Burden of Proof
• In any suit for infringement of a process patent, the defendant may be
directed to prove that the process used by him to obtain the product that is
identical to the product of the patented process, is different from the
patented process. Such direction may be passed by the court, if:
the subject matter of the patent is a process for obtaining a new product; or,
there is a substantial likelihood that the identical product is made by the process,
and the patentee or a person deriving title or interest in the patent from him, has
been unable through reasonable efforts to determine the process actually used.
• However, before obtaining such a direction, the plaintiff (claimant) has to
prove that the product is identical to the product directly obtained by the
patented process.
Patent Linkage
• Internationally recognized patent linkage is a process by which the
drug regulatory authority (the Drug Controller) delays or refuses to
grant marketing approval to a generic manufacturer to manufacture
and sell the drug, if the drug is patented.
• In effect it links the marketing approval to the lifetime of the patent.
• Such a system would require the generic manufacturer to
demonstrate before the Drug Controller that the drug for which the
marketing approval is sought for is not covered by a patent.
Protecting Your IP
• Record all your ideas in a bound workbook with numbered pages or
use software that is designed to securely record and manage
disclosures during the invention process.
• When dealing with third parties, a simple nondisclosure agreement
(NDA) or confidentiality agreement (CA) should be drawn up and
signed by any person with whom the ideas are discussed, before any
substantive conversation takes place.
• You can record your ideas with the patent office inexpensively to
create a formal document using the Provisional Document Program
(Valid in US, Is it valid in India?)
Can An Idea Be Protected?
• Answer: No, but it is a prerequisite for an invention.
• Invention is:
Find a Problem.
Have an idea to solve it.
Develop idea with enough specificity to provide a new solution.
• Patent law requires one to describe the invention, so that others
make and use it. Prove your concept on paper (does not have to
develop a prototype)
Designs
• Industrial designs in India are protected under the Designs Act, 2000
(“Designs Act”), which replaced the Designs Act, 1911.
• The Designs Act has been in effect since May 11, 2001.
• The Designs Rules, 2001 have been framed under the Designs Act.
• The Designs Act incorporates the minimum standards for the
protection of industrial designs, in accordance with the TRIPS
agreement.
• It provides for the introduction of an international system of
classification, as per the Locarno Classification
What is the Meaning “Design” Within the Scope of
the Designs Act?
• As per the Designs Act, “design” means only the 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.
• However, “design” does not include any mode or principle of construction, or
anything which is in substance a mere mechanical device, and does not include
any trademark (as defined in section 2(1) (v) of the Trade and Merchandise Marks
Act, 1958), or property mark (as defined in section 479 of the Indian Penal Code),
or any artistic work (as defined in Section 2 (c) of the Copyright Act, 1957).
• In order to obtain registration under the Designs Act, the design must be applied
to an article. In other words, a mere painting of a natural scene or its
presentation on paper is not entitled for registration under the Designs Act.
Who can Apply for Registration of a Design?
• Any person claiming to be the “proprietor of any new or original
design” not previously published in any country and is not contrary to
public order or morality can apply for the registration of the design.
• The term “original,” with respect to design, means a design
originating from the author of such a design and includes the cases
that, although old in themselves, are new in their application.
What are the Rights Conferred by Registration?
• Registration of a design confers upon the registered proprietor a
“copyright” with respect to the design.
• Under the Designs Act, the word “copyright” refers to the exclusive
right to apply the design to any article in any class in which the design
has been registered.
• The first term of registration is ten years after which it can be
renewed for an additional five-year period.
• An assignment can be made to another person by way of mortgage or
license. But it has to be registered.
• The copyright in any design, which is capable of being registered
under the Designs Act, but is not, will lose its copyright as soon as the
design has been reproduced 50 times by an industrial process by
either the owner of the copyright or his licensee.
• Paris Convention: Reciprocity for claiming priority is allowed for
applications originating from the Paris Convention countries
Piracy
• The following amount to piracy of the registered design:
• Any application of the registered design for the purpose of sale during the
existence of the copyright in the design without a license or the express
consent of the registered proprietor;
• The importation for sale without the consent of the registered proprietor
of any article belonging to the class in which the design has been registered
and having applied to it the design or any fraudulent or obvious imitation;
• Knowing that the design, or a fraudulent or obvious imitation has been
applied to any article in any class of articles in which the design is
registered, published, or exposed for sale, without the consent of the
registered proprietor of such an article.
Confidential Information &
Trade Secrets
• Valuable information not shared with general public, but valuable to the
success of an entrepreneurial entity, is referred to as trade secrets.
• A trade secret constitutes any form of information that, by way of secrecy,
yields its user potential or actual economic value and competitive
advantage over others.
• Among the many forms trade secrets take are formula, pattern, device,
process, and even customer list.
• There is no time limit for validity of trade secret. Coca Cola has kept its
trade secret intact for more than 100 years.
• Confidential information and trade secrets are protected under the
common law and contractual obligations and there are no statutes that
specifically govern the protection of the same.
• In order to protect trade secrets and confidential information, watertight
agreements should be agreed upon, and they should be supported by
sound policies and procedures.
Protection of Confidential Information in the
Hands of Employees
• A business should protects its new formula, product, technology, customer
lists, or future business plans.
• In the global marketplace, Indian corporations are often required to comply
with foreign laws and are likely to be exposed to liabilities for violation of
confidential information or trade secrets of their business partners or third
parties.
• For example, the U.S. Economic Espionage Act, 1996 imposes criminal
liability (including fines and prison sentences) on any person who
intentionally or knowingly steals a trade secret, knowingly receives, or
purchases a wrongfully obtained trade secret.
• A constant factor is the presence of a corporate culture im bued with
information protection values.
Non-Disclosure Agreements
• Disclose the secret to as less number of individuals as possible.
• Sound and concise company policies and non-disclosure agreements with
the employees protecting confidential information and trade secrets are
recommended so as to provide contractual remedy in addition to the one
under the common law.
• Such agreements should define “confidential information” and the
exceptions to confidentiality.
• Agreements should have clauses negating a grant of an implied license,
restrictions on disclosure, use and copy; restriction on use of confidential
information upon termination of the employment, return of information
upon termination and right to withhold salary and emoluments till such
return.
• In order to ensure that the rights of third parties are not violated, the
non-disclosure/employment agreement should clearly impose an
obligation on the employee not to integrate into the organization’s
data or intellectual property, any confidential information of a third
party.
• Employees should be required to indemnify the organization in case
of violation of this clause. If the organization has not executed such
agreements at the time of employment, subsequently executed
agreements should expressly cover the confidential information
obtained by the employee from the date of his employment.
Internal Processes
• Strong internal controls and processes to protect confidential information should be
in place.
• Employees should be educated to identify information that is confidential or in the
nature of a trade secret, to enable them to make an informed decision.
• They should have a clear understanding of their responsibilities to protect
confidential matter and treat this as an on-going process that is integral to their work.
• Data that is confidential should be clearly indicated as such in all communications.
• Appropriate security procedures must be established and followed by the company
and access to specific sensitive areas of workplace restricted or limited to certain
senior employees only.
• Third-party interaction and disclosures should be channelled only through specified
personnel.
• Wherever feasible, confidential information should only be shared with those
employees who have a legitimate need to know such information, thus enabling the
employees to perform the assigned tasks.
An Exit-Interview
• During such an interview, an employee should be reminded of his
obligations with respect to the company’s confidential information
and trade secrets and should be asked to sign a document reaffirming
his obligations.
• If an employment agreement was signed, the document to be signed
upon termination should be attached.
• A copy of the signed exit-interview form, including the employment
agreement, must be given to the employee.
• Such an interview not only serves as a meaningful reminder but can
also be valuable evidence of employee’s knowledge of such
obligations.
Geographical Indications of
Goods (Registration and
Protection) Act, 1999
• Geographical Indications (“GI”) are those, which identify a good as
originating in a place where a given quality, reputation, or other
characteristic of the good is essentially attributable to its geographical
origin.
• Some better-known examples of GI are “Champagne,” a famous wine
of France, ‘Darjeeling Tea’, ‘Nilgiri Tea’, ‘Assam Tea’, Malabar Coffee.
‘Kashmiri Pashmina’, ‘Mysore Silk’, ‘Lucknow Chicken Craft’.
• The Act applies to any agricultural, natural, or manufactured goods,
or to any goods of handicraft or industry, including foodstuffs.
• An application for registration can be filed by
An organisation of persons or producers, or
An organisation or authority established by or under any law

• To qualify as a GI, two requirements must be satisfied:

the territorial aspect i.e. as to how the GI serves to designate the goods
originating from the concerned territory, and
a given quality, reputation, or other characteristic should be essentially
attributable to the geographical origin.
• GI registration is valid for a period of 10 years, and may be renewed
thereafter from time to time.
Rights Conferred by Registration
• Registration of a GI confers the following rights on the registered
proprietor and the authorized users:
Right to obtain relief in respect of the infringement of the GI; and
Exclusive right to use the GI in relation to the goods for which GI is registered

• Two or more authorized users of a registered GI shall have co-equal

rights.
• Assignment is not possible here.
• Therefore, the Act prohibits the assignment, transmission, licensing,
pledge, or mortgage or any such other agreement in respect of a GI.
• Infringement is challenged under common laws.