Origin and Development of Intellectual Property Rights (IPR)

Meaning and Importance

Intellectual Property Rights (IPR) refer to legal protections granted to creators and inventors over
their intellectual creations such as inventions, literary and artistic works, symbols, designs, and
trade names.
These rights encourage innovation and creativity by ensuring that creators can benefit
economically and morally from their work, preventing unauthorised use or reproduction.

I. History of Intellectual Property Rights in the World

1. Early Beginnings in Europe

(a) Patents:

● The earliest form of patent protection dates back to 1331, when King Edward III of
England granted a “letter patent” to John Kemp, a Flemish weaver, for a new weaving
method.

● Initially, patents were granted by monarchs to raise revenue, but this led to monopolies
and public discontent.

● The Statute of Monopolies (1624) became a turning point. It restricted the Crown’s
power and allowed patents only for new inventions for a limited duration.

● This statute is regarded as the foundation of modern patent law.

(b) Copyrights:

● Emerged with the invention of the printing press in the 15th century.

● The Stationers’ Company (1556) was given exclusive rights to print books, primarily
benefiting publishers, not authors.

● The Statute of Anne (1710) was the first copyright law, recognising authors’ rights for
a limited period (14 years, renewable once).
 ● It laid the foundation for modern copyright protection, ensuring authors’ control over
their works.

2. Evolution of Trademark Law

● Trademarks have existed since medieval times when guilds used marks to identify the
origin and quality of goods.

● The first modern trademark law was enacted in France (1857), followed by the UK
Merchandise Marks Act (1862).

● In the United States, the Lanham Act (1946) became the cornerstone of trademark law,
preventing unfair competition and protecting brands.

3. International Development of IPR

As global trade expanded, the need for international IPR protection emerged, leading to various
treaties:

● Paris Convention (1883): Protected industrial property (patents, trademarks, designs).

Introduced national treatment and priority rights.

● Berne Convention (1886): Protected literary and artistic works. Advocated automatic
protection and authors’ rights globally.

● Madrid Agreement (1891): Established an international system for trademark

registration through one application.

● Formation of WIPO (1967): The World Intellectual Property Organisation was

created to promote and coordinate international IPR protection. It became a UN agency in
1974.

II. History of Intellectual Property Rights in Ancient India

 ● Although modern IPR laws were absent, ancient India valued knowledge and
innovation deeply.

● Texts like Kautilya’s Arthashastra discussed the importance of protecting creators and
inventors from misuse of their work.

● Guilds and artisans informally recognised ownership and originality, ensuring respect for
creative works even without formal laws.

III. Colonial Era: Introduction of IPR Laws in India

British rule introduced formal IPR systems modelled after English laws.

1. Patents

● Act VI of 1856: India’s first patent law, modelled on the British Patent Law of 1852.
Granted inventors exclusive rights for 14 years but was annulled due to procedural flaws.

● Act XV of 1859: Revised law extending protection to manufacture, use, and sale of
inventions.

● Patents and Designs Protection Act, 1872, later replaced by the Indian Patents and
Designs Act, 1911, which consolidated patent and design protection.

2. Copyright

● The first copyright law came in 1847, modelled on the British Copyright Act, 1842.

● Replaced by the Indian Copyright Act, 1914, aligned with the British Copyright Act,
1911.

● Extended protection to books, music, and art and introduced criminal penalties for
infringement.

● Laid the foundation for the Copyright Act of 1957 (post-independence).

3. Trademarks
 ● Before 1940, trademarks were protected under common law principles (doctrine of
passing off).

● The first statutory law was the Trade Marks Act, 1940, based on the British Act of
1938.

● Provided for registration and protection of marks used in trade.

IV. Post-Independence Developments in IPR

After independence (1947), India developed its own IPR framework reflecting national priorities
and international obligations.

1. Patents

● The Patents Act, 1970 replaced colonial laws and was based on the Ayyangar
Committee Report (1957).

● Excluded pharmaceutical product patents, allowing only process patents to ensure

affordable medicines.

● Introduced compulsory licensing and reduced patent duration to 14 years.

● TRIPS Agreement (1995) led to amendments in 1999, 2002, and 2005, reintroducing
product patents, extending the term to 20 years, and aligning India with global
standards.

2. Copyright

● The Copyright Act, 1957 consolidated all prior laws and aligned with the Berne
Convention.

● Amendments in 1983, 1984, 1992, 1994, 1999, and 2012 expanded protection to digital
and electronic works.

● The 2012 Amendment harmonised Indian law with WIPO Copyright Treaty, provided
performer’s rights, and addressed digital piracy.
3. Trademarks

● The Trade Marks Act, 1999 replaced the 1958 Act to comply with TRIPS. Trade-
Related Aspects of Intellectual Property Rights

● Introduced service marks, well-known trademarks, and collective marks.

● Simplified registration and improved enforcement mechanisms.

4. Geographical Indications

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

protects goods linked to specific locations, like Darjeeling Tea, Basmati Rice,
Kanchipuram Silk.

● Prevents unauthorised use and preserves product reputation.

V. Role of International Agreements in India’s IPR Development

● India’s IPR laws have been shaped by participation in international treaties:

○ Paris Convention (1883) – Industrial property

○ Berne Convention (1886) – Literary and artistic works

○ TRIPS Agreement (1995) – Comprehensive global standards under WTO

○ Madrid Protocol – Simplified international trademark registration

● These treaties ensured uniform global protection and encouraged foreign investment in
innovation.

VI. Challenges and the Way Forward

● Persistent issues: Piracy, counterfeiting, and misappropriation of traditional knowledge.

 ● Need for stronger enforcement, better public awareness, and simplified registration
systems.

● National IPR Policy (2016) focuses on promoting innovation, strengthening

enforcement, and encouraging start-ups and MSMEs to use IPR protection.

● Future direction: Balance between innovation and public access, especially in health,
education, and technology.

Nature, Scope and Concept of Intellectual Property Rights (IPRs)

Concept of Intellectual Property Rights (IPRs)

Intellectual Property Rights (IPRs) refer to the legal rights granted to individuals or organizations
over their intellectual creations. These creations may include inventions, literary and artistic
works, designs, symbols, names, and images used in commerce. The idea behind IPRs is to
protect intangible creations of the human mind, just as tangible property like land or goods is
protected under law. Intellectual property thus represents the ownership of ideas and expressions
rather than physical objects. The purpose of granting such rights is to encourage innovation,
creativity, and the dissemination of knowledge by ensuring that the creators are rewarded for
their intellectual efforts and investment.

The term “intellectual property” covers a wide range of rights, such as patents, copyrights,
trademarks, geographical indications, industrial designs, and trade secrets. These rights
collectively form the legal framework that safeguards the interests of creators and inventors,
ensuring that their creations are not exploited without their consent. Therefore, the concept of
IPR reflects the balance between individual rights and societal benefit, as it aims to promote
innovation while allowing eventual access to knowledge by the public.

Nature of Intellectual Property Rights

The nature of IPRs lies in their intangible and exclusive character. Unlike physical property,
intellectual property cannot be touched or possessed physically; it exists in the form of ideas,
expressions, inventions, or symbols. However, once recognized by law, these rights provide the
creator with exclusive ownership over the use, production, or distribution of their intellectual
creation.
 1. Intangible Nature:
Intellectual property exists in the realm of ideas, creativity, and innovation. For example,
a book’s copyright does not protect the physical book itself but the creative expression of
the author contained within it.

2. Exclusive Right:
IPRs grant the owner the exclusive right to use, make, sell, or license their intellectual
creation. Any unauthorized use constitutes an infringement, allowing the owner to take
legal action.

3. Territorial Character:
Intellectual property rights are territorial in nature, meaning they are enforceable only
within the jurisdiction of the country where protection has been granted. For instance, a
patent granted in India will not automatically be valid in another country.

4. Time-Bound Protection:
IPRs are granted for a specific duration. After the expiry of this period, the creation
enters the public domain, becoming freely available for public use. This ensures a
balance between rewarding the creator and promoting public access to knowledge.

5. Transferable and Licensable Rights:

Intellectual property can be assigned, licensed, or transferred just like any other form
of property. This allows creators to commercialize their creations and derive economic
benefits from them.

6. Statutory Creation:
IPRs are not natural rights but statutory rights, created and regulated by law. Their
existence and enforcement depend on national legislation, such as the Patents Act, 1970
or the Copyright Act, 1957 in India.

Thus, the nature of IPRs combines exclusivity, temporariness, and statutory protection, forming
the foundation for a modern knowledge-based economy.

Scope of Intellectual Property Rights

The scope of IPRs extends across various fields of human creativity and innovation. It
encompasses different categories of intellectual property, each protecting a distinct type of
creation or idea. The major forms include:
 1. Patents:
Protect inventions that are new, useful, and non-obvious. Patents grant the inventor
exclusive rights to make, use, or sell the invention for a specified period (usually 20
years). Example: Pharmaceutical formulations, machinery, or technological innovations.

2. Copyright:
Protects original literary, artistic, musical, and dramatic works, as well as cinematograph
films and sound recordings. It safeguards the expression of ideas rather than the idea
itself. Example: Novels, movies, software, and artworks.

3. Trademarks:
Protect distinctive signs, logos, symbols, or words that distinguish one company’s goods
or services from another. Example: The Nike “swoosh” logo or the word “Apple” for
electronics.

4. Industrial Designs:
Protect the aesthetic or ornamental aspects of articles, such as shape, configuration,
pattern, or colour combination. Example: The unique design of a Coca-Cola bottle.

5. Geographical Indications (GIs):

Identify goods originating from a specific geographical region possessing unique
qualities or reputation due to that origin. Example: Darjeeling Tea, Kanchipuram Silk, or
Basmati Rice.

6. Trade Secrets:
Protect confidential business information that gives a company a competitive edge.
Example: The recipe for Coca-Cola or the formula for a particular chemical product.

7. Plant Varieties and Traditional Knowledge:

Protection has been extended to new plant varieties and traditional knowledge to ensure
that indigenous innovations are not misused or patented without consent.

The scope of IPRs has expanded over time, especially with the growth of technology, digital
media, and globalization. International treaties such as the TRIPS Agreement (1995) and the
establishment of WIPO (World Intellectual Property Organization) have harmonized
standards and broadened protection globally.

Significance of IPRs
The growing importance of IPRs can be understood in terms of their economic, cultural, and
social impact. They promote innovation by granting financial rewards to inventors, protect brand
identity and creativity, and contribute significantly to trade and industrial growth. For developing
countries like India, a strong IPR regime encourages foreign investment, technology transfer, and
innovation-driven industries. At the same time, IPRs ensure a balance between private ownership
and public welfare by eventually transferring knowledge into the public domain.

JUSTIFICATION OF PROTECTION AND THEORIES OF IPRs

Introduction

Intellectual Property Rights (IPRs) are legal rights given to creators for their intellectual
creations such as inventions, artistic works, symbols, or designs. These rights protect the
products of human intellect in the same way physical property is protected. The justification for
protecting IPRs lies in promoting creativity, innovation, and fair economic reward for one’s
intellectual labour.
Philosophers and jurists have developed several theories to explain why intellectual creations
deserve protection. These theories reflect moral, social, and economic justifications for IPRs.

1. Natural Rights Theory

Origin: Based on John Locke’s philosophy of property rights.

Core Idea: Every individual has a natural right over the fruits of their labour. When a person
mixes their labour with something from nature, they acquire ownership over it.
Application to IPR:
A creator’s intellectual effort results in a creation—thus, he naturally deserves ownership and
the right to control its use. It extends to both tangible and intangible properties. Unauthorized use
or copying of one’s intellectual creation is therefore considered a violation of natural rights.

Criticisms:

● Locke’s theory cannot apply fully to ideas because ideas are abstract and can exist in
multiple minds at once.

● Unlike physical property, IPRs are limited in time, whereas natural rights are perpetual.

● Granting ownership over an idea could restrict others’ creativity (e.g., if someone owned
the idea of making lemon juice, others couldn’t make it).
Relevance:
Though limited, this theory influences copyright and patent law, where the creator is given
ownership over the expression or invention, not the abstract idea.

2. Utilitarian (or Incentive) Theory

Origin: Based on Jeremy Bentham and John Stuart Mill’s principle of “the greatest good for
the greatest number.”
Core Idea: IPRs encourage innovation and creation by providing incentives. When inventors
are rewarded with exclusive rights, society benefits through technological progress and creative
enrichment.

Justification:
IPRs serve as tools to maximize social welfare — innovation leads to progress, which benefits
society. Protection motivates individuals to invest time and effort in research and creativity.

Criticisms:

● Exclusive rights may limit public access and delay the sharing of knowledge.

● The social benefits may not always outweigh the monopolistic disadvantages.

Relevance:
This is the most accepted modern justification for IPRs. Patent and copyright systems globally
are built on this utilitarian framework, balancing incentive and public benefit.

3. Deterrence Theory

Core Idea: The deterrence theory focuses on discouraging immoral or unfair commercial
behaviour, such as theft or misappropriation of another’s creation.
Application:
Primarily reflected in trade secret laws—it prevents individuals or corporations from stealing
or unfairly using confidential information or creative work belonging to others.

Justification:
By penalizing infringement or misuse, society promotes ethical commercial practices and
respects creativity.
Criticism:
It does not necessarily promote innovation directly—it mainly prevents wrongful conduct rather
than encouraging creation.

Relevance:
Provides the moral and legal foundation for anti-piracy, trade secret, and unfair competition
laws.

4. Ethic and Reward Theory

Core Idea: The theory recognizes that creators deserve ethical recognition and reward for
their contribution to society.
The exclusive rights granted by IPRs act as a form of gratitude or validation for their hard work
and originality.

Explanation:
“Ethic” symbolizes fairness, while “reward” represents compensation or acknowledgment of
creative labour. Thus, this theory morally justifies giving inventors and artists exclusive control
and economic benefit from their creations.

Criticisms:

● Some argue that creators are already compensated through their economic profits and that
further monopoly rights are excessive.

● Raises the question: Does every creator truly deserve exclusive reward for societal
benefit?

Relevance:
This theory aligns with copyright and patent laws, which treat protection as both a moral right
and an incentive.

5. Personhood Theory

Origin: Developed by Immanuel Kant and G.W.F. Hegel.

Core Idea: A creator’s work reflects their personality and individuality. Hence, protecting
intellectual property is equivalent to protecting the creator’s personal identity.
Explanation:
A creative work is seen as an extension of the self. Unauthorized use of it without consent
amounts to violating the creator’s personhood.

Criticisms:

● Personality cannot always be tied to every creation, especially in corporate or mass

production contexts.

● Public perception and usage also shape the value of creative work, not just the creator’s
personal identity.

Relevance:
This theory supports moral rights under copyright law—like the right to be identified as the
author and the right to object to distortion or mutilation of one’s work.

6. (Supplementary) Social Planning / Economic Theory

Social Planning Theory:

Suggests IPRs should help build a just and creative society. It aims to balance individual reward
with social development.

Economic Theory:
Focuses on market efficiency — IPRs help allocate resources efficiently by creating a market
for ideas and innovation.

INTERNATIONAL CONVENTIONS AND TREATIES ON INTELLECTUAL

PROPERTY RIGHTS

1. PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY,

1883

Introduction:
The Paris Convention, signed in 1883, is the first major international treaty to protect industrial
property such as patents, trademarks, industrial designs, utility models, geographical
indications, and trade names. It laid the foundation for international IPR protection.

Objectives:
 1. To protect inventors and industrial property owners in all member states.

2. To harmonize national IP laws across countries.

3. To ensure equal treatment of foreign and domestic applicants.

Key Principles:

● (a) National Treatment:

Each contracting country must give the same IP protection to foreigners as it gives to its
own citizens.
Example: An Indian inventor filing a patent in France must get the same rights as a
French inventor.

● (b) Right of Priority:

Once an applicant files an IP application in one member country, they can claim
that same filing date in other member countries within a specific period —
→ 12 months for patents and utility models,
→ 6 months for industrial designs and trademarks.
This ensures protection against others filing similar applications during that period.

● (c) Common Rules:

○ Patents: Each country’s patents are independent of others.

○ Trademarks: Registration in one country does not affect registration in another.

○ Industrial Designs: Must be protected in all member states.

○ Trade Names: Protected without registration.

○ Unfair Competition: Member states must prevent acts that mislead or deceive
consumers.

Significance:
The Paris Convention marked the beginning of international cooperation in industrial
property and serves as a foundation for later agreements like the TRIPS Agreement.
2. BERNE CONVENTION FOR THE PROTECTION OF LITERARY AND ARTISTIC
WORKS, 1886

Introduction:
Adopted in 1886, the Berne Convention protects the rights of authors, writers, musicians,
artists, and other creators. It ensures international recognition and protection of copyrights.

Members:
Initially signed by 8 countries; India joined in 1928.

Key Principles:

● (a) National Treatment:

Each member country must provide the same copyright protection to foreign authors as it
provides to its own.

● (b) Automatic Protection:

Protection is granted automatically, without any formal registration or legal procedure.

● (c) Independence of Protection:

Protection in one country does not depend on whether it exists in the author’s home
country.

● (d) Minimum Standards of Protection:

Member countries must provide a minimum level of rights such as:

○ Right of translation

○ Right of reproduction

○ Right of public performance

○ Right of broadcasting and communication

○ Right of adaptation or arrangement

● (e) Moral Rights:

Authors have the right to claim authorship and object to any distortion, mutilation, or
modification that harms their reputation.
Significance:
The Berne Convention introduced the concept of moral rights and ensured that copyright
protection becomes global and automatic across member countries.

3. WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO), 1967

Establishment:

● Signed at Stockholm in 1967, came into force in 1970.

● Became a specialized agency of the United Nations in 1974.

● Headquarters: Geneva, Switzerland.

Objectives:

1. To promote the protection of intellectual property worldwide.

2. To ensure cooperation among member states in the field of IPRs.

3. To harmonize international IP laws.

4. To encourage innovation and creative economic development.

Functions of WIPO:

● Administrative: Administers over 25 international IP treaties including the Paris, Berne,

Madrid, and Patent Cooperation Treaties.

● Normative: Helps in drafting and updating international IP standards.

● Filing Systems:

○ PCT (Patent Cooperation Treaty) – International patent filing system.

○ Madrid System – International trademark registration.

○ Hague System – International design registration.

 ● Dispute Resolution: Provides arbitration and mediation services for IP disputes.

● Capacity Building: Conducts IP training, awareness, and assistance programs globally.

● Policy Development: Researches IP trends and publishes reports on innovation and

creativity.

Goals of WIPO:

1. Encourage global IP protection.

2. Facilitate administrative cooperation among countries.

3. Support transfer of technology and knowledge to developing countries.

Significance:
WIPO acts as the central global body for coordinating and promoting intellectual property
protection and ensures that IP laws evolve with technology and global trade.

4. TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)

AGREEMENT, 1994

Introduction:

● TRIPS is the most comprehensive multilateral agreement on intellectual property.

● It was negotiated during the Uruguay Round (1986–1994) and came into force on
January 1, 1995 under the World Trade Organization (WTO).

Purpose:
To harmonize IP protection globally by linking IPRs with international trade. It sets minimum
standards for IP protection and enforcement for all WTO members.

Coverage:
TRIPS covers all forms of intellectual property, including:
Patents, Trademarks, Copyright, Industrial Designs, Geographical Indications, Trade Secrets,
Layout Designs of Integrated Circuits, and Plant Varieties.

Key Features:
 ● (a) Minimum Standards of Protection:
Member countries must provide a uniform minimum level of protection for all forms of
IPRs.

● (b) National Treatment and MFN (Most Favoured Nation):

Foreign nationals must receive the same treatment as domestic ones, and any advantage
given to one WTO member must be extended to all.

● (c) Enforcement Measures:

Each country must provide effective procedures for enforcement of IPRs, including civil,
administrative, and criminal remedies.

● (d) Dispute Settlement:

Disputes regarding TRIPS obligations are resolved through the WTO Dispute
Settlement Body (DSB).

● (e) Transitional Arrangements:

Developing countries were given a transition period to amend and implement their
national IP laws.

● (f) Balance Between Protection and Public Interest:

TRIPS seeks to maintain a balance between the rights of IP owners and the public’s right
to access technology and essential goods (e.g., medicines).

Significance:
TRIPS made IPRs an integral part of international trade law, compelling all WTO members
to bring their domestic laws in line with global IP standards.
It also laid the foundation for modern IP enforcement mechanisms across the world.

UNIT II

Copyright is a vital branch of intellectual property law that aims to protect the creations of
human intellect in the same manner as tangible property is protected. It provides legal
recognition to the efforts, skills, and creativity of authors, artists, composers, and other creators
by granting them exclusive rights over their original works. These rights allow creators to control
how their creations are used, reproduced, distributed, or adapted, thereby preventing
unauthorized exploitation.
The concept of copyright is rooted in the idea that when a person invests labour, intellect, and
creativity into producing a work, they deserve to enjoy the fruits of their efforts. The protection
given under copyright not only safeguards the creator’s moral and economic interests but also
encourages further innovation and creativity, contributing to the overall progress of art, culture,
literature, and science in society.

In India, copyright law is primarily governed by the Copyright Act, 1957, which provides
protection to literary, artistic, musical, and dramatic works, along with cinematograph films and
sound recordings. The Act recognizes the importance of balancing the creator’s rights with the
public’s interest by ensuring that, after a certain period, the work enters the public domain for
wider access and benefit.

Thus, copyright serves as both a reward and a stimulus — it rewards the creator for their
intellectual labour and stimulates the creation of more knowledge and cultural wealth for the
benefit of society as a whole.

The Doctrine of Idea–Expression Dichotomy in India

1. Introduction

The Idea–Expression Dichotomy is a central doctrine in copyright law that differentiates between
an idea and its expression.
Copyright protects only the original expression of ideas, not the ideas themselves — no matter
how novel or original the idea may be.
This principle ensures that creativity and innovation remain open to all and prevents the creation
of monopolies over basic ideas.
The doctrine originated in the U.S. Supreme Court case Baker v. Selden (1879), which
established that copyright covers only the form in which ideas are expressed, not the underlying
ideas or systems.
In India, this concept has been judicially recognized in cases like R.G. Anand v. Delux Films
(1978) and later reaffirmed in multiple judgments.

2. History and Purpose

The foundation of the doctrine was laid in Baker v. Selden, where the U.S. Supreme Court held
that a bookkeeping system could not be copyrighted — only the book explaining it could.
The purpose was to prevent monopolization of ideas and promote free competition and
creativity.
 Judge Learned Hand in Nichols v. Universal Pictures Corp (1930) explained that as one moves
toward more general levels of abstraction, protection weakens, and beyond a certain point, only
the expression remains protected.
Thus, the doctrine encourages creativity by protecting how ideas are expressed, not the ideas
themselves.

3. Defining “Idea”

An idea is a conception or mental formulation — a thought or abstract notion existing in the

creator’s mind.
It can range from simple daily concepts to complex literary plots.
In copyright terms, an idea represents the intellectual conception behind a work, not the work
itself.
Justice Yates once described ideas as being “free as birds” until expressed.
Ideas form the foundation of intellectual property but cannot be protected until expressed in a
tangible form.
Hence, ideas remain common property unless expressed in a fixed, perceivable form.

4. Defining “Expression”

Expression refers to the tangible form in which an idea is represented — through writing, music,
art, film, or any other medium.
Under Section 13 of the Copyright Act, 1957, protection is granted to works that are expressed
in a concrete form such as literary, artistic, musical, or dramatic works.
It includes words, phrases, images, designs, or digital content where an idea is materialized.
Thus, expression is the external embodiment of the internal thought process.

5. Defining “Dichotomy”

The term dichotomy means division or distinction.

In this doctrine, it signifies the clear line separating ideas from expressions.
While an idea is abstract and unprotectable, its expression — the concrete, creative
manifestation — is protected under copyright law.
This distinction ensures that the same idea can be expressed in multiple forms by different
creators, fostering creativity rather than restricting it.
6. Idea and Expression: Protection of Copyright

Copyright law under the Copyright Act, 1957 grants protection only to the expression of an
idea — not the idea itself.
Sections 13 and 14 specify that copyright exists in original literary, musical, artistic, dramatic
works, cinematograph films, and sound recordings.
Section 16 clarifies that no copyright exists outside the scope of the Act.
Thus, multiple individuals can have the same idea, but only those who express it creatively
in a fixed form gain copyright protection.
This system protects creativity while allowing the free exchange of ideas, ensuring that
innovation does not stagnate.

7. Severing Idea and Expression – The Distinction

While distinguishing between an idea and its expression, courts often face challenges because
ideas and their expressions are closely intertwined.
The main test is whether the substantial part copied relates to the idea or the expression.
If the similarity lies only in the idea or theme, it is not copyright infringement.
But if the defendant copies the unique expression (like structure, characters, dialogue, or
detailed storyline), it amounts to infringement.
This distinction was elaborated in R.G. Anand v. Delux Films (1978), which remains the
landmark Indian judgment on the subject.

Introduction

 This case examines the alleged copyright infringement of a popular Hindi play, “Hum
Hindustani”, by the film “New Delhi”.

Facts

 The plaintiff (appellant), K.R. Ramnath, was an architect, playwright and producer of
stage plays.

 In 1953, he wrote a Hindi play called "Hum Hindustani" which was first enacted in
February 1954 in New Delhi. The play was popular and restaged multiple times.

 In November 1954, second defendant Mohan Sehgal contacted the plaintiff expressing
interest in potentially making a film based on the play.

o The second defendant, , was described as a film director and the proprietor of
Delux Films.
  In January 1955, the plaintiff met with the defendant and narrated the entire play to him.
The second defendant did not make any commitment but said he would inform the
plaintiff of his reaction later.

 In May 1955, the second defendant announced production of a film called "New
Delhi" under Delux films.

 The plaintiff wrote to, the second defendant expressing concern about adaptation of his
play, but he denied any connection.

 The film "New Delhi" was released in September 1956. After viewing it, the plaintiff felt
it was based entirely on his play.

o The plaintiff filed a suit for damages, accounts of profits, and permanent
injunction against the defendants for copyright infringement.

 The defendants denied copying the play and claimed the film was different in content,
spirit and climax. They argued similarities were due to the common theme of
provincialism.

 The trial court and Delhi High Court dismissed the plaintiff's suit, finding no
copyright infringement.

 The plaintiff appealed to the Supreme Court.

Issues Involved

 Whether the defendants' film "New Delhi" infringed the copyright of the plaintiff's play
"Hum Hindustani"?

 What are the legal tests and principles to determine copyright infringement in such
cases?

Observations

The Supreme Court dismissed the appeal and upheld the lower courts' findings of no copyright
infringement, based on the following reasons:

 There were substantial differences between the play and film in treatment of the theme
and presentation.

 The similarities were trivial and related to common ideas not protected by copyright.

 The dissimilarities outweighed the similarities.

  Viewing the works as a whole, the film could not be considered a substantial or material
copy of the play.

 The Court was reluctant to interfere with concurrent findings of fact by two lower courts.

8. Tools to Segregate Idea and Expression (Judicial Tests)

Courts have used several tests to differentiate between ideas and expressions:

● Lay Observer Test:

If an average viewer feels that one work is a copy of another, infringement is presumed.
This test checks overall similarity from a common person’s perspective.

● Extraction Test:
Introduced in Shamoil Ahmed Khan v. Falguni Shah (2020) by the Bombay High
Court.
It involves “extracting” the unprotectable idea from the protected expression to
determine if infringement exists.

● Substantial Similarity Test:

Checks if the copied portion constitutes a material part of the original work.

These tools help courts judge whether the copied part is the core idea (which is free) or its
unique expression (which is protected).

9. Landmark Cases

1. Baker v. Selden (1879, U.S.) – Established the doctrine; held that ideas and systems are
not copyrightable, only their expression is.

2. Nichols v. Universal Pictures Corp (1930) – Distinguished between abstract ideas and
detailed expressions in plays and scripts.

3. R.G. Anand v. Delux Films (1978, SC India) – The Indian Supreme Court adopted the
doctrine; held that copying an idea is not infringement unless the expression is copied.
 4. Mansoob Haider v. Yashraj Films Pvt. Ltd. (2014) – Reaffirmed that copying
fundamental elements of expression amounts to infringement.

5. Shamoil Ahmed Khan v. Falguni Shah (2020) – Introduced the Extraction Test in India
to separate ideas from expressions.

6. Barbara Taylor Bradford v. Sahara Media Entertainment Ltd. (Calcutta HC) –

Held that copyright protects originality in expression, not in ideas.

10. Understanding the Tool of Extraction – (Shamoil Ahmed Case)

In this case, the Bombay High Court dealt with the Urdu short story “Singaardaan”.
The plaintiff claimed the defendants copied his story’s plot, characters, and title for a web series.
After applying the Extraction Test, the court found that while ideas could overlap, the
expression of the story (its structure, dialogue, and scenes) was copied.
Thus, the court ruled in favor of the plaintiff and emphasized the need to extract the
unprotectable idea before assessing infringement.

Subject Matter of Copyright

Introduction

Copyright is a part of Intellectual Property Rights (IPR), which protects creations of the
human mind just like tangible property is protected under general law. It grants exclusive rights
to authors or creators to print, publish, reproduce, and sell their original work for a specified
period. The main purpose of copyright is to safeguard creators from unauthorized
reproduction or misuse of their original creations.

Copyright covers both literary and artistic works, including writings, music, paintings,
sculptures, and even modern digital creations like computer programs and electronic databases.

The Copyright Act, 1957 in India is largely based on international conventions such as the
Berne Convention (1886) and the Universal Copyright Convention, which India adopted
through amendments in 1999, 2002, and 2012. India is also a member of the WIPO (World
Intellectual Property Organization) and UNESCO, ensuring compliance with global copyright
standards.
Historically, copyright law began in England in 1557, with the Statute of Anne (1710) being
the first formal copyright legislation. This Act established the concept of an author’s right over
their work and inspired similar laws in other countries, including the U.S. Copyright Act of
1790. Later, the Berne Convention of 1886 unified international copyright protection, forming
the foundation of modern copyright law worldwide.

Meaning and Subject Matter of Copyright

The subject matter of copyright refers to all kinds of works protected under the Copyright
Act, 1957. According to Section 13, copyright exists in the following six categories of works:

1. Original Literary Works

2. Original Dramatic Works

3. Original Musical Works

4. Cinematograph Films

5. Original Artistic Works

6. Sound Recordings

1. Original Musical Work

A musical work consists of music, including any graphical notation of the composition, but it
does not include lyrics or words intended to be sung or performed.

● A typical song combines both literary work (lyrics) and musical work (tune).

● The lyricist is the author of the literary work, while the composer is the author of the
musical work.

● Therefore, a single song can have two separate copyrights — one for the lyrics and
another for the tune.
 ● The 2012 Amendment introduced a statutory license for cover versions, allowing the
creation of new renditions under certain conditions.

2. Original Literary Work

A literary work includes written or printed materials such as books, poems, tables, computer
programs, compilations, and databases.

● The work does not need to have literary merit — what matters is originality and
expression in a tangible form.

● Even football fixture lists, mathematical tables, or tombola tickets can qualify as
literary works.

● However, phrases, names, slogans, and short invented words are not protected by
copyright. For example, slogans like “Yeh Dil Maange More” (Pepsi) are protected under
trademark law, not copyright.

● Derivative works such as translations, adaptations, abridgements, and compilations

can also receive copyright if sufficient creativity and effort are involved.

● For computer programs, the source code is protected as a literary work.

3. Original Dramatic Work

A dramatic work includes recitations, choreographic works, pantomimes (silent performances),

or any form of acting fixed in writing or recorded form.
It does not include cinematograph films.

The principles of literary work apply to dramatic work as well. The author is the person who
composes or fixes the performance in a tangible medium such as a script or choreography notes.

4. Cinematograph Films
A cinematograph film means any work of visual recording accompanied by sound recording,
including films or videos produced by any process analogous to cinematography.
The producer of the film is considered the author.
These works combine multiple copyright elements (scripts, dialogues, background scores,
performances) but are treated as a single unified work under the Act.

5. Original Artistic Work

An artistic work includes:

● Paintings, sculptures, drawings (including diagrams, maps, charts, and plans)

● Engravings, photographs

● Works of architecture or artistic craftsmanship

The author is the artist, except in the case of photographs, where the person taking the
photograph is regarded as the author.

Interestingly, in a famous case about a “monkey selfie”, the court held that only human beings
can be recognized as authors under intellectual property law, reaffirming that copyright protects
human creativity only.

6. Sound Recordings

A sound recording means a recording of sounds from which such sounds can be reproduced,
regardless of the recording medium.
The author is the producer, not the musician or singer.
Sound recordings may include performances, music, or voices but the person who takes the
initiative and responsibility for recording and publishing is recognized as the copyright owner.

Term of Copyright

The duration of copyright protection depends on the nature of the work:

 ● For literary, dramatic, musical, and artistic works: Life of the author + 60 years after
death.

● For posthumous works: 60 years from the year of first publication.

● For cinematograph films, sound recordings, government works, and works of

international organizations: 60 years from the year of first publication.

Ownership of Copyright

Ownership can vary depending on circumstances:

● If a work is created by an employee during employment, the employer owns the

copyright.

● If created by an independent contractor under a “work-for-hire” agreement, the

commissioning party owns the copyright.

● If the creator assigns the copyright through a legal agreement, the assignee becomes the
new owner.

Important Case Laws

1. Eastern Book Company v. Navin J. Desai (2001 IVAD Delhi 612)

The issue was whether there is copyright in court judgments.
The Delhi High Court held that judgments and orders of courts are government works and no
one can claim copyright over them.
Reproduction of judgments is not infringement under Section 52(1)(q) of the Copyright Act.
However, commentaries or analyses involving originality, interpretation, or research may
enjoy copyright protection.

2. Godrej Soaps (P) Ltd v. Dora Cosmetics Co. (2001 VAD Delhi 17)
The court held that if a carton design is created by an employee in the course of employment,
the employer is the legal owner of the copyright.
Hence, the plaintiff company was the rightful owner of the carton design and logo created by its
employee
Rights of Owner of a Copyright under Copyright Act, 1957

1. Introduction

The principle of ‘ownership of copyrights’ is central to understanding copyright law. Copyright

is a statutory right vested in the person who owns the copyright in a work. It is crucial to
distinguish between “ownership” and “authorship” of copyrights. Although these terms sound
similar, like ownership and possession, the law treats them differently.

Ownership implies legal rights over the work, whereas authorship refers to the person who
originally creates the work. The Copyright Act, 1957, under Section 17, clearly outlines the
conditions for acquiring ownership of a copyright and establishes what constitutes the first
ownership.

Not all works initiated or created by a person automatically grant ownership. For instance, in the
landmark case Eastern Book Co. v. Navin J. Desai, the issue was whether the reporting of
judgments by a court could be copyrighted. The Delhi High Court clarified that reproducing
judgments or orders of a court does not amount to infringement, as such works are government
works and are in the public domain.

2. Section 17 of the Copyright Act, 1957

Section 17 lays down the statutory conditions to determine ownership of copyright. The
provisions are as follows:

● Literary, dramatic, or artistic works: The author who creates the work is the first
owner of the copyright.

● Works performed under contractual employment: If the work is created during the
course of employment under a contract, ownership lies with the employer, not the
individual employee.

● Photographs shot for cinematographic films: Ownership lies with the person at whose
instance the photograph was taken.

● Works done for monetary consideration: The person who pays for the work owns the
copyright.
 ● Public speeches: The individual who delivers the speech owns the copyright in it.

● Speech delivered on behalf of another person: The person who assigns the speech to
be delivered owns the copyright.

● Works published or orders passed by the government or an organization: Ownership

lies with the government or the organization that publishes them.

Section 17 ensures that ownership is clearly defined and avoids disputes over rights between
creators, employers, and commissioning parties.

3. Rights of the Owner of a Copyright

The owner of a copyright enjoys both economic rights and moral rights, which are recognized
under the Copyright Act, 1957, and international conventions like TRIPS and the Berne
Convention.

3.1 Economic Rights of a Copyright Owner

Economic rights are those rights that provide monetary benefits to the copyright owner. These
are primarily mentioned under Section 14 of the Copyright Act and include the following:

1. Right to reproduce the work:

○ This involves copying, either completely or partially, or creating derivative

versions by editing, modifying, or adapting the work.

○ Only the copyright owner has the exclusive right to reproduce the work.

○ The concept of substantial and material copying is recognized. Even copying a

part of the work may amount to infringement.

○ Reproduction applies to books, music, compact discs, and other tangible and
digital formats.

2. Right to distribute the work in the market:

○ Distribution refers to selling, lending, gifting, or renting the work.

 ○ The rule of exhaustion applies in some cases, such as books: after the first sale,
the copyright owner’s distribution right is exhausted, allowing the buyer to resell.

○ However, if the owner establishes a library and charges for rental, the exhaustion
rule does not apply.

3. Right to communicate the work to the public:

○ This involves broadcasting, simulcasting, webcasting, or making the work

available online.

○ Unauthorized public communication constitutes infringement.

○ Case reference: Indian Performing Right Society Ltd. v. Aditya Pandey (Delhi
HC) – the court restrained unauthorized public performance or communication of
copyrighted works.

4. Right of adaptation:

○ Adaptation means altering, converting, transcribing, or rearranging a

copyrighted work.

○ This right applies only to musical, literary, or dramatic works and does not
extend to computer programs.

○ Case reference: Macmillan and Company Ltd. v. K. and J. Cooper (Privy Council)
– adaptation must maintain originality; works adapted from non-copyrighted
sources may not be protected.

5. Right to translate:

○ The owner may translate the work into any language.

○ Case reference: Academy of General Edu., Manipal & ANR v. B. Malini Mallya –
mere adaptation of an idea without substantial copying does not constitute
infringement.

3.2 Moral Rights of a Copyright Owner

Moral rights go beyond economic benefits. They protect the dignity, uniqueness, and
reputation of the work. These rights are enshrined under Section 57 of the Copyright Act and
include three main rights:

1. Right of Paternity:

○ The owner has the right to claim authorship and prevent others from claiming it.

○ Case reference: Sholay Media Entertainment and Pvt. Ltd. v. Parag M. Sanghavi
– prevented the defendant from using a deceptively similar movie title that could
damage the reputation of “Sholay.”

2. Right of Integrity:

○ The owner can prevent distortion, mutilation, or misuse of their work that would
harm its reputation.

○ Case reference: Sajeev Pillai v. Venu Kunnapalli & Ors – restrained unauthorized
pre-release publicity that would damage the exclusivity and reputation of the
movie.

3. Right to Retraction:

○ Allows the author to withdraw a work from publication to protect its dignity or
integrity.

○ The author can waive rights temporarily or permanently to preserve reputation.

○ Case reference: Amarnath Sehgal v. Union of India – court recognized the right to
retract work that was derogatory or damaged its artistic and market value.

Facts: Amarnath Sehgal, a well-known sculptor, was commissioned to prepare a mural by the
Indian Government for the Vigyan Bhavan. The mural was created over a period of 5 years and
was displayed in 1962. The Government decided to remove the murals installed on the walls of
Vigyan Bhavan and store the said mural in a storage space of the building due to ongoing
renovations and failed to notify or seek authorization from Amarnath. The mural was also
slightly damaged due to mishandling and negligence. Amarnath sued the Government over the
mistreatment of his mural, claiming it to be a violation of his moral rights.

Issues: Whether the author had rights over the display of his work post-sale under moral rights
provisions?

Law Involved: Section 57 of the Copyrights Act, 1957.

Analysis: While holding that moral rights form the soul of an author's work, the Court clarified
that these could not be taken away from the author regardless of the work’s sale. The destruction
and mutilation of work were held to be an infringement of the author’s moral rights.
The Government argued that once the sale was complete and due consideration had been paid, it
had the power to utilize the work as it deemed fit, including its decision to remove the work from
public display. However, the Court did not accept this argument and emphasized that the
mutilation and part destruction of the mural was prejudicial to the reputation of the author itself,
regardless of who is the owner. Therefore, the author was awarded a compensation of
Rs.5,00,000/- and ordered that the remains of the mural be delivered to Amarnath for the purpose
of restoration and further, sale.

Conclusion: This case formed the basis for how moral rights were to be interpreted. The Court
further allowed special reliefs which were not witnessed prior to this case, such as returning the
copyrighted work back to the author. This reiterated and set the tone for future interpretations of
moral rights and the residuary rights of an author.

4. Conclusion

The rights of a copyright owner under the Copyright Act, 1957, encompass both economic and
moral dimensions, highlighting the importance of protecting both monetary benefits and
personal dignity.

● Economic rights ensure that the author can control reproduction, adaptation,
translation, distribution, and public communication, thereby benefiting financially.

● Moral rights safeguard the author’s reputation, integrity, and ownership claims over
the work.

● Indian legislation, through the Copyright Act and its amendments, has continually
strengthened these rights, ensuring that creators, performers, and broadcasters can protect
their works from infringement while maintaining dignity and recognition.

1. Eastern Book Co. v. Navin J. Desai (2001 IVAD Delhi 612)

Facts:
Eastern Book Company (EBC) had published law reports of court judgments. Navin J. Desai
reproduced these judgments and published them in his own compilation. EBC claimed copyright
infringement.
Legal Issue:
Can a person claim copyright over judgments of courts, which have been compiled and
published in law reports by a private publisher?

Court’s Reasoning:
The Delhi High Court held that judgments and orders passed by courts are government works
under Section 2(k) of the Copyright Act. Section 52(q) provides that reproduction of such works
does not constitute infringement. Therefore, anyone is free to reproduce or publish court
judgments. However, the court distinguished this from commentaries or critical analysis—if
someone adds original commentary based on skill, judgment, and effort, that part can be
copyrighted.

Principle:

● Government works, including court judgments, are public domain.

● Copyright protection does not extend to mere reproduction of government works.

● Original commentary or editorial additions can be protected.

2. Indian Performing Right Society Ltd. v. Aditya Pandey (2011 Delhi)

Facts:
The plaintiff (IPRS) manages the rights of music composers and lyricists. The defendant played
copyrighted music in a public performance without obtaining a license from IPRS.

Legal Issue:
Does playing music publicly without authorization constitute infringement of the right to
communicate the work to the public?

Court’s Reasoning:
The court held that communicating a copyrighted work to the public includes public
performance, broadcasting, or online dissemination. Unauthorized performance of copyrighted
music violates the owner’s economic rights under Section 14. The defendant was restrained
from performing the works without obtaining proper authorization or license.

Principle:

● Public communication or performance of copyrighted work requires permission.

 ● Economic rights protect owners from unauthorized use of their work in public
performances.

Authorship vs Ownership of Copyright in India

Introduction

Many people assume that the creator of a work—like a music composer, artist, or director—is
automatically the owner of the copyright arising from that work. However, in copyright law,
authorship and ownership are distinct concepts. The law recognizes that while the author
creates the work, ownership may sometimes belong to someone else, especially in cases of
commissioned works, employment, or government assignments.

Understanding this distinction is essential because it determines who can exercise the rights
over the work, both moral and economic. The Copyright Act, 1957 provides detailed guidance,
particularly under Section 17, which outlines exceptions to the general rule that the author is the
first owner.

Basics of Copyright

Copyright is a type of intellectual property that gives the creator of a work exclusive rights to
prevent unauthorized copying or use of their work. The Copyright Act, 1957 governs copyright
law in India. Its objectives include:

1. Protecting creators: Authors, artists, composers, and designers are rewarded for their
time, effort, and investment in creating original work.

2. Encouraging creativity: By safeguarding creators’ rights, the law incentivizes further

creation of original works.

Key Points:

● Copyright applies only to original works.

● Reproduction, adaptation, translation, or public communication of copyrighted work

requires permission from the owner.
 ● Both published and unpublished works are protected. For unpublished works, the
author must be an Indian citizen or domiciled in India at the time of creation.

Who is an Author?

An author is the person who creates or composes a work, either individually or under
direction. The law recognizes the intellectual effort involved in creation, granting the authors
certain rights over the work, regardless of who owns it.

Under the Copyright Act, 1957:

● Section 2(d) defines “author” for different types of works:

○ Literary or dramatic work → the writer is the author

○ Musical work → the composer is the author

○ Artistic work → the artist is the author

○ Photograph → the photographer is the author

○ Cinematographic film → the producer is the author

○ Sound recording → the producer is the author

○ Computer-generated work → the person who causes the work to be created is

the author

Authorship confers moral rights, like claiming the work as one’s own and preventing
distortion, but does not automatically determine ownership.

Who is an Owner?

Ownership refers to who holds the copyright legally and can exercise economic rights, such as
reproducing, distributing, or licensing the work. While the general rule is that the author is the
first owner, Section 17 of the Copyright Act provides exceptions.
Illustration:

● If ‘A’ hires ‘B’ (a painter) to paint a portrait for payment, ‘B’ is the author (creator), but
‘A’ (who paid) becomes the first owner of the copyright.

Ownership can depend on:

1. Commissioned works

2. Employment contracts

3. Assignments by government or public undertakings

Case Example: Thomas v. Manorama

● Held that a former employer does not own copyrights for works created after
employment ends. The creator retains first ownership for subsequent works.

Statutory Exceptions: Section 17 of the Copyright Act, 1957

Section 17 lists situations where the author is not the first owner. The first owner in such
cases is usually the employer, commissioner, or government.

Section 17(a): Literary, Dramatic, Artistic Works

● If an author creates such works under employment or under a contract with a

publisher (e.g., newspaper, magazine), the employer or publisher is the first owner,
unless there’s an agreement stating otherwise.

Illustration:

● ‘A’ writes an article for Mirror Now. ‘A’ is the author, but Mirror Now owns the
copyright.

Section 17(b): Photograph, Painting, Engraving, Cinematographic Film

 ● If a work is created on commission (painting, photograph, film), the person causing the
work to be created becomes the first owner.

Illustration:

● Artist ‘X’ paints a portrait for ‘Y’. ‘X’ is the author; ‘Y’ owns the copyright unless a
different agreement exists.

Section 17(c): Work Made During Employment

● Work created in the course of employment is owned by the employer, unless there’s an
agreement otherwise.

Illustration:

● Programmer ‘M’ works at XYZ Company. All software code created during employment
belongs to XYZ Company as the first owner.

Section 17(cc): Lectures Delivered in Public on Behalf of Another

● If a person delivers a lecture on behalf of someone else, the person on whose behalf the
lecture is delivered becomes the first owner of the copyright.

Illustration:

● Spokesperson ‘A’ delivers a speech for political leader ‘B’. ‘A’ is the author; ‘B’ owns
the copyright.

Section 17(d): Work Assigned by Government

● Works created on government assignment belong to the government, unless otherwise

agreed.
Illustration:

● Sculptor ‘A’ creates a statue commissioned by the State Government. The government
owns the copyright.

Section 17(dd): Work for Public Undertaking

● Copyrightable work created for a public undertaking becomes the property of the
undertaking.

Section 17(dd) + Section 41: Works for International Organizations

● If an international organization commissions work, it becomes the first owner, not the
author.

Aspect Authorship Ownership

Definition Refers to the creator of the Refers to the legal holder of copyright,
work, the person who exercises the person/entity who can exercise
intellectual effort to produce the economic rights over the work.
work.

Legal Basis Defined under Section 2(d) of Governed by Section 17 of the

the Copyright Act, 1957. Copyright Act, 1957 and other statutory
provisions.

Who qualifies The person who writes, Usually the author by default, but may
composes, paints, clicks, or be the employer, commissioner,
produces the work (e.g., author, government, public undertaking, or
composer, artist, photographer, international organization depending
producer). on circumstances.

Rights Moral rights: right to claim Economic rights: right to reproduce,

authorship, integrity of work, distribute, communicate, adapt,
 conferred and retraction of work (Sections translate, and monetize the work
57, etc.). (Section 14).

First Owner By default, the author is the first May differ from the author in cases of
Rule owner. commissioned work, employment,
government assignment, or
international organization
assignment.

Exceptions / Authorship remains with Ownership may transfer to employer,

Section 17 creator even if ownership is commissioner, government, public
transferred. undertaking, or international
organization.

Illustration A painter creates a portrait; If the portrait is commissioned by a

Example painter is the author. client, the client becomes the owner,
even though painter retains authorship.

Scope Protects dignity, recognition, Protects economic benefits and

and integrity of the creator. control over the work.

International Authorship rights are recognized Ownership may depend on contracts,

Perspective universally, regardless of employment agreements, or statutory
nationality. provisions in India.

Case - Sholay Media Entertainment v. - Eastern Book Co. v. Navin J. Desai

References Parag M. Sanghavi (Government ownership)
(Paternity/right to claim
authorship) - Thomas v. Manorama (Ownership
post-employment)
- Amarnath Sehgal v. Union of
India (Moral rights) - Section 17 illustrations (Employer,
commissioned work, government
assignments)

Term of Copyright in India

Definition:
The term of copyright refers to the duration for which copyright protection is granted to the
owner/author under the Copyright Act, 1957. Once this period expires, the work enters the
public domain, allowing anyone to use it freely without permission or payment.

The term of copyright varies depending on the type of work and the circumstances of
authorship.

1. Literary, Dramatic, Musical, and Artistic Works

● Duration: Lifetime of the author plus 60 years from the beginning of the calendar year
following the author’s death.

● Explanation:

○ The author is entitled to protection during their lifetime.

○ After death, the copyright continues for 60 years to protect the heirs and legal
successors, ensuring economic and moral rights.

● Example: If an author dies in 2020, the copyright will expire on 31st December 2080.

2. Cinematographic Films, Sound Recordings, Photographs, Posthumous Works,

Anonymous or Pseudonymous Works

● Cinematographic films & sound recordings: 60 years from the beginning of the
calendar year following publication.

● Photographs: 60 years from the beginning of the calendar year following the year of
publication.

● Posthumous works (published after author’s death): 60 years from the beginning of
the calendar year following publication.

● Anonymous or pseudonymous works: 60 years from the beginning of the calendar year
following publication, unless the identity of the author becomes known.
3. Government and International Organization Works

● Works prepared by or under the direction of the Government or created for certain
international organizations are protected for 60 years from the beginning of the
calendar year following publication.

● Example: A report or a photograph commissioned by the Government will be

copyrighted for 60 years after publication.

4. Termination of Copyright and Public Domain

● After the expiry of the copyright term, the work enters the public domain.

● Once in the public domain:

○ Anyone can reproduce, adapt, distribute, or perform the work without seeking
permission.

○ Moral rights may still be recognized in some cases, such as paternity and
integrity of the work.

5. Key Points to Remember

1. The author’s lifetime + 60 years is the standard duration for most works created by
individuals.

2. For corporate, government, or commissioned works, the term is 60 years from

publication.

3. The term ensures that authors and their successors benefit economically from their
creative work.

4. Once the term expires, the work becomes freely accessible to the public.
Relevant Sections under Copyright Act, 1957

● Section 22: Duration of copyright in general works.

● Section 23: Special provisions for government works.

● Section 24: Special provisions for cinematograph films, sound recordings, photographs,
and posthumous works.

● Section 14 & 57: Economic and moral rights remain enforceable during the term

Assignment and Licensing of Copyright in India

1. Introduction

● Intellectual Property (IP): Product of human intellect like literary, musical works,
inventions, etc.; intangible but capable of sale, purchase, mortgage.

● Copyright: Protects creators for their intellectual input; ensures economic and moral
rights.

● Economic Rights: Owner can earn from exploitation of their work.

● Legal Basis: Section 14 of the Copyright Act, 1957 recognizes the exclusive rights of
copyright owners.

2. Assignment of Copyright (Section 18)

● Definition: Transfer of copyright by the owner to another person.

● Effect: The assignee becomes entitled to all rights assigned; the assignor retains rights
over unassigned portions.
 ● Mere Publishing Right ≠ Assignment: Granting only the right to publish/sell
is not an assignment.

Key Points:

1. Assignment can be partial or complete.

2. Legal representatives of the assignee inherit rights if assignee dies before work is
created.

Illustrative Case:

● Video Master v. Nishi Production: Assignment of video rights did not include satellite
broadcast rights. Each mode of public communication has separate copyrights,
assignable separately.

3. Mode of Assignment (Section 19)

● Must be in writing and signed by assignor or authorized agent.

● Should specify:

○ Work assigned

○ Rights assigned

○ Duration

○ Territorial extent

○ Royalty payable (if any)

○ Terms of revision, extension, termination

● Default Rules:

○ If period not specified → 5 years

 ○ If territory not specified → whole of India

● Section 19(8–10):

○ Assignment cannot violate copyright society terms.

○ Author retains right to royalty for cinematograph or sound recordings.

Case Example:

● Saregama India Ltd v. Suresh Jindal: Copyright in future works can be assigned,
wholly or partially; assignee is treated as owner.

4. Licensing of Copyright

● Definition: Owner permits another person to exercise certain rights without transferring
ownership.

● Can be granted for existing or future works.

● Must be in writing and signed (Section 30).

Key Elements in License Deed:

1. Duration of license

2. Rights licensed

3. Territorial extent

4. Quantum of royalty

5. Terms for revision, extension, termination

5. Types of Voluntary Licenses (Section 30A)

 1. Exclusive License: Licensee (and authorized persons) can use work to the exclusion of
all others, including the owner.

2. Non-Exclusive License: Owner can license work to multiple persons.

3. Co-Exclusive License: License given to a limited group of licensees.

4. Sole License: Only the owner and one licensee can use the work.

5. Implied License: Owner permits use without formal deed, e.g., by not objecting to
usage.

6. Compulsory Licenses

● Issued when owner unreasonably withholds work or fails to make it accessible.

● Categories:

1. Works unreasonably withheld from the public

2. Orphan works

3. Works for differently-abled persons

4. Translations

5. Reproduction/sale of works unavailable in India

● Purpose: Balancing owner rights with public access.

7. Statutory Licenses

● Blanket licenses granted without examining owner conduct.

● Examples:
 1. Cover version recording license (Section 31C)

2. Broadcasting license (Section 31D, post-2012 amendment)

● Purpose: Facilitate mass licensing for broad classes of works.

8. Difference Between Assignment and License

Feature Assignment License

Definition Transfer of ownership of copyright Permission to use copyright

Ownership Assignee becomes owner Owner retains copyright

Scope Can be whole or partial, perpetual or Only specified rights granted

limited

Transferability Can be reassigned Non-transferable unless

stated

Economic Fully transferred Remain with owner

Rights

What is copyright infringement?

Copyright infringement = any unauthorised exercise of one or more of the exclusive statutory
rights of the copyright owner under the Copyright Act, 1957 (e.g., reproduction, adaptation,
distribution, public performance, broadcasting, translation, communication to the public). It can
be deliberate or inadvertent.
Core idea

● Copyright protects expression, not ideas. Infringement arises where someone copies —
wholly or substantially — the expression of a protected work without permission.

2. Types / Categories of infringement

1. Primary (Direct) Infringement

○ Direct copying or doing an act reserved to the owner (e.g., printing & selling
books, streaming a film).

2. Secondary (Indirect) Infringement

○ Aiding/abetting/permitting infringement (e.g., manufacturing pirated CDs,

distributing devices that enable infringing activity).

3. Civil v Criminal

○ Same acts may attract both civil remedies (injunctions, damages) and criminal
sanctions (fines, imprisonment).

4. Online / Intermediary-facilitated infringement

○ Uploading, streaming, linking to infringing content; intermediaries can be

involved and takedown & safe harbour issues arise.

3. Elements the plaintiff must prove (typical civil suit)

1. Copyright subsists in the plaintiff’s work (originality, fixation; in India: Section 13).

2. Plaintiff is owner / entitled to sue (authorship/assignment; Section 17).

3. Defendant copied (direct evidence or inference from access + similarity).

4. The part copied is substantial/material (qualitative or quantitative significance).

 5. No defence applies (fair dealing, statutory exceptions, licence).

Proof of copying:

● Direct evidence (admission, documents, emails) OR

● Circumstantial: access to plaintiff’s work + marked similarity (lay observer test /

“ordinary observer” approach).

4. Defences / Exceptions

A. Fair Dealing (Section 52, Copyright Act)

● Permitted acts include private use, criticism/review, reporting current events, quotation
for review, educational use, library reproduction, ephemeral recordings, etc. (statute lists
categories).

● No definitive formula — courts apply a contextual, fact-driven test (see Hubbard v.

Vosper approach): number/extent of extracts, purpose (criticism, review, research),
proportion of extracts vs new material, market impact.

B. Statutory Exceptions in Section 52 (list of permitted uses)

● Private use for research, criticism & review, reporting of current events, judicial
proceedings, publication by legislature secretariat, educational uses, etc.

C. Licence / Assignment / Authorization

● If defendant had a valid licence or consent, not infringement.

D. Independent Creation

● Defendant independently created similar expression without copying.

E. Functionality / Idea-Expression Dichotomy

 ● If disputed features are ideas, methods, or scènes à faire they may be unprotectable.

5. Civil Remedies — detailed

A. Interlocutory (Interim) Injunctions

● Purpose: stop ongoing infringement immediately (pre-trial) — very commonly sought

and often decisive.

● Test: (traditional tripartite)

1. Prima facie case — plaintiff shows reasonable likelihood of success; not

necessarily proof beyond doubt.

2. Balance of convenience — which party suffers greater harm if injunction

granted/refused.

3. Irreparable injury — injury not adequately compensable by damages (loss of

goodwill, reputation, market share).

● Evidence required: affidavit, copies of original work + allegedly infringing work, proof
of ownership (registration helpful but not conclusive), evidence on access.

● Relief often sought in prayer: ex parte interim injunction → if granted, later court
hearing on inter partes stay/continuation.

Practical points

● Courts often require security/undertaking from plaintiff.

● Interlocutory orders may include Anton Piller / search & seizure directions.

B. Permanent Injunction
 ● Final relief at trial if plaintiff succeeds. Permanently restrains defendant from infringing
acts.

C. Anton Piller Order (Order for inspection & discovery)

● Nature: an ex parte order permitting plaintiff’s lawyers to enter defendant’s premises to

search and seize evidence (copies, machines, documents).

● Purpose: prevent destruction/ concealment of evidence.

● Strict safeguards:

○ Very strong prima facie case;

○ Serious question to be tried;

○ Damage would be very serious;

○ High risk of evidence being destroyed;

○ Independent solicitor and/or court officer usually present;

○ Detailed inventory & sealed custody procedures;

○ Court-imposed undertakings by plaintiff (monetary/other) for misuse.

● Use with caution — courts scrutinize to avoid abuse of process.

D. Mareva Injunction (Freezing Order)

● Purpose: prevent dissipation/transfer of assets by defendant to frustrate any future

pecuniary relief.

● Requirements: strong prima facie case; evidence of risk of asset dissipation; court will
require security/undertaking.
 ● Effect: defendant restrained from removing assets from jurisdiction/alienating them.

E. Norwich Pharmacal Order (Third-party disclosure)

● Purpose: compel third parties (banks, intermediaries, ISPs, platforms, registrars,

payment processors) to disclose information necessary to identify wrongdoers, suppliers,
or customers.

● Typical use: identify operators of infringing websites, purchasers of pirated copies,

domain registrants, payment trail.

● Test: wrongdoer’s wrong, innocent third party mixed up in the wrongdoing and
disclosure necessary to enable action.

F. Search & Seizure under Copyright provisions

● Copyright Act provides for measures to search for and seize infringing copies (statute +
civil process & sometimes criminal search/seizure under CrPC on complaint).

● Courts may order seizure of infringing goods; police/customs can act on criminal
complaints and search warrants.

G. Pecuniary Remedies (Money reliefs)

1. Account of Profits

○ Defendant must account for profits earned from infringement; disgorgement to

plaintiff.

○ Focus on actual profits traceable to infringement (gross receipts less legitimate

costs/expenses attributable to the infringing activity).

○ Court may order detailed accounting; forensic accounting may be required.

 2. Compensatory Damages

○ Compensate plaintiff for losses suffered (lost sales, lost licensing fees,
reputational harm).

○ Calculation methods: actual loss, hypothetical licence (what plaintiff would have
charged), market value approach.

3. Conversion / Statutory Damages

○ Value of goods seized (conversion) / other statutory heads.

4. Pre-judgment & Post-judgment Interest, costs and attorneys’ fees (where court
permits).

Principles for quantification

● Proof burden on plaintiff for actual loss; where difficult, courts may use reasonable
royalty approach or account of profits as alternative remedy.

● Courts may award both account of profits and damages only in limited cases; they
generally prefer account of profits OR damages to avoid double recovery.

H. Delivery up / Destruction

● Defendant may be ordered to deliver up or destroy infringing copies, plates, masters, or

instruments used for copying.

I. Declaratory Relief

● Court declaration that plaintiff owns copyright and defendant infringed.

6. Criminal remedies — detailed

 ● Statutory provisions: Copyright Act (see criminal sections). (Earlier amendments added
Sections 63, 63A, 63B etc.)

● Usual punishments:

○ Imprisonment: minimum 6 months up to 3 years (repeat offenders may face

higher minimums).

○ Fine: ₹50,000 to ₹2,00,000 normally (higher for repeat offenders).

○ Search & seizure, seizure of premises & goods, arrest under criminal
procedure.

○ Confiscation / delivery up of infringing goods to owner.

● Offences include willful infringement, large-scale commercial piracy, circulation of

infringing copies, use of illegal copies of software (specific section for computer
programs).

● Procedure: complaint to police / FIR → investigation → charge sheet → trial in

criminal court.

● Burden of proof: prosecution must prove guilt beyond reasonable doubt.

● Effect: criminal conviction can bolster civil remedies (moral vindication and deterrence).

FAIR USE / FAIR DEALING EXCEPTION TO COPYRIGHT

1. Definition

Fair use (known as fair dealing in India) is a legal defense against copyright infringement. It
allows a person to use a copyrighted work without obtaining permission from the copyright
owner, under certain conditions, without paying royalties, if the use is deemed “fair.”
 ● Scope: It applies to all types of works including literary works, musical works, artistic
works, dramatic works, cinematographic works, sound recordings, and more.

● Purpose: It seeks to balance the exclusive rights of the copyright owner with societal
needs such as education, research, criticism, commentary, news reporting, and archival
purposes.

● Indian law: This is codified under Section 52 of the Copyright Act, 1957, which
specifically mentions exceptions for fair dealing, including purposes such as private or
personal use, criticism or review, reporting of current events, teaching or research,
and judicial proceedings.

The idea is that copyright should not completely restrict access to knowledge and culture, and
fair dealing/fair use provides a limited window for socially beneficial uses.

2. Purpose of Fair Use / Fair Dealing

The main objectives of fair use/fair dealing include:

1. Promotes Creativity: Ensures that copyright law does not stifle the creation of new
works. For example, a scholar may quote excerpts from a book to produce a new work of
criticism or commentary.

2. Supports Public Interest: Enables teachers, students, journalists, and researchers to use
copyrighted material to further learning, scholarship, and public knowledge.

3. Balances Rights: Protects copyright owners’ rights while allowing others to benefit from
copyrighted works in socially constructive ways.

In comparison, U.S. copyright law under Section 107 is more flexible, providing broader
interpretation of fair use, whereas India’s fair dealing is more specific and enumerated, though
Indian courts also apply a case-by-case assessment inspired by global practices.

3. Factors for Determining Fair Use

Courts determine whether a use is “fair” by analyzing four main factors. Each factor is weighed
on a case-by-case basis, as there is no absolute rule.
Factor 1: Purpose and Character of the Use

● Considers whether the use is commercial or nonprofit/educational. Nonprofit uses

generally favor fair use.

● Transformative use: Use that adds new expression, meaning, or purpose, rather than
simply replacing the original work.

○ Example: Criticism, commentary, parody, review, or educational annotation.

● Even commercial use may be fair if it is transformative. Courts evaluate whether the
new work supersedes the original or adds a new perspective.

Factor 2: Nature of the Copyrighted Work

● Creative vs factual: Highly creative works (novels, films, artworks) receive stronger
protection. Factual or informational works (data, news, research) are more likely to allow
fair use.

● Published vs unpublished: Using unpublished works is generally less likely to be fair.

● Example: Quoting an excerpt from a newspaper article for analysis is more acceptable
than quoting the central plot of a novel.

Factor 3: Amount and Substantiality of the Portion Used

● Quantitative: How much of the copyrighted work is used? Smaller portions favor fair
use.

● Qualitative: Whether the portion used represents the “heart” of the work. Even small but
essential parts may weigh against fair use.

● Courts evaluate the portion in relation to the copyrighted work as a whole, not relative
to the infringing work.
 ● Using an entire work is generally disfavored unless justified for educational, research, or
transformative purposes.

Factor 4: Effect on the Potential Market

● Examines whether the use affects the current or potential market for the original work.

● Considers whether widespread use would reduce sales, royalties, or demand for
derivative works.

● Courts may also assess future potential markets, not just immediate impact.

● Historically, this was considered the most important factor, but in recent cases,
transformative use under Factor 1 has gained more weight.

4. Practical Applications of Fair Use / Fair Dealing

Common real-world applications include:

1. Education and Research: Copying small portions of textbooks, articles, or data for
classroom teaching, assignments, or academic research.

2. Commentary / Criticism: Using excerpts from books, movies, music, or artworks for
reviews, critique, or analysis.

3. News Reporting: Short quotations or excerpts for reporting current events.

4. Parody / Satire: Repurposing existing works humorously or critically.

5. Libraries / Archives: Preservation, digitalization, or providing access for research and

study.
NEIGHBORING RIGHTS IN INDIA

1. Definition and Concept

Neighboring Rights, also known as Related Rights or Secondary Rights, are legal protections
granted to those who help communicate, disseminate, or publicize the creative works of authors,
musicians, performers, and artists. Unlike copyright, which protects the original creator of a
work, neighboring rights recognize the contribution of intermediaries whose efforts ensure that
the work reaches the public.

The main purpose of these rights is to ensure that performers, producers, and broadcasters
receive recognition and protection for their role in the creative ecosystem. For example, a
poet’s work may not reach or be appreciated by the public if it is not sung by a singer like Arijit
Singh or broadcasted by a music channel. These contributors add their skills—artistic, technical,
or promotional—to the work, which makes their protection under law necessary.

Neighboring rights were first internationally recognized under the Rome Convention of 1961,
which initially provided 20 years of protection, later extendable up to 50 years by national
legislations. These rights are classified into three main categories:

1. Rights of Performers – Actors, musicians, singers, dancers, and others who perform
literary or artistic works.

2. Rights of Producers of Phonograms – Individuals or entities producing sound

recordings.

3. Rights of Broadcasting Organizations – Media entities that transmit or retransmit

audio-visual works to the public.

2. Neighboring Rights in Indian Law

Initially, the Indian Copyright Act, 1957 did not recognize neighboring rights. These were later
incorporated through amendments to align Indian law with international standards.

● 1994 Amendment:
 ○ Introduced Chapter VIII specifically for neighboring rights.

○ Section 37: Protection of Broadcasting Organizations.

○ Section 38: Performers’ rights.

○ Sections 13 & 14: Protection extended to producers of phonograms under sound

recording provisions.

○ Section 39: Specifies acts that do not constitute infringement for performers
and broadcasters.

● 2012 Amendment:

○ Introduced exclusive and moral rights of performers through Sections 38A and
38B.

○ Section 39A: Additional provisions applicable to performers’ rights and

broadcasters’ reproduction rights.

These amendments ensured that performers, producers, and broadcasters were provided both
economic and moral protection, similar to the protection afforded to authors under copyright
law.

3. Rights of Producers of Phonograms

Phonograms are defined as aural fixations of sounds on storage devices, such as CDs, tapes, or
digital files.

● Producers of phonograms are protected under Sections 13 and 14 of the Copyright Act.

○ Section 13(1)(c): Grants copyright subsistence in sound recordings.

○ Section 14(e): Grants exclusive rights to producers, covering reproduction,

distribution, and commercial use of sound recordings.

Key points:
 ● Producers enjoy economic rights (control over use, reproduction, and distribution) and
moral rights (right to claim authorship and prevent distortion).

● Their protection is essential because sound recordings are often disseminated widely
without the author’s direct control.

4. Rights of Broadcasting Organizations

Broadcasting Organizations are entities that communicate works to the public through wireless
or wired means. Section 2(dd) of the Copyright Act defines “broadcast” to include any
transmission or retransmission of signs, sounds, or visual images.

● Broadcast Reproduction Rights: Section 37 grants broadcasters the exclusive right to

control rebroadcasting, public performance, commercial rental, or reproduction of their
broadcast for 25 years.

● Broadcasters can take legal action against unauthorized rebroadcast, commercial

exploitation, or duplication of their transmission.

Exceptions under Section 39:

● Personal or private use, research, and teaching.

● Reporting of current events, reviews, or bona fide educational activities.

● Acts that do not amount to infringement under Section 52 of the Act.

5. Rights of Performers

Performers include actors, singers, musicians, dancers, and other individuals performing live
presentations of works. Section 2(qq) defines performers, and Section 2(q) defines
“performance” as any visual or acoustic presentation made live.

● Performers have exclusive rights over their performance, including:

○ Right to authorize or prohibit recording or broadcasting.

 ○ Right to control commercial exploitation, including sale or rental.

● Protection begins automatically at the time of performance, with no registration

required.

● Economic rights are provided for 50 years from the date of performance.

Exceptions under Section 39 (similar to broadcasters):

● Recordings for personal use, research, or teaching.

● Reporting current events, reviews, or educational purposes.

● Acts not considered infringement under Section 52 of the Act.

6. Moral Rights of Performers

Moral rights are inalienable rights that protect the personal and reputational interests of
performers.

● Section 38B provides two key moral rights:

1. Right to claim authorship – Performers can insist on being identified in their

performance.

2. Right to prevent distortion – Performers can prevent or seek damages for any
modification, mutilation, or distortion that harms their reputation.

These rights ensure that performers maintain recognition and control over how their
performances are used and presented to the public.

INDUSTRIAL DESIGN: NATURE AND CONCEPT

1. Definition of Industrial Design

Industrial Design is a form of Intellectual Property Right (IPR) that protects the aesthetic or
visual features of a product. These features include shape, color, pattern, ornamentation,
lines, or composition, and can apply to both two-dimensional (2D) and three-dimensional
(3D) aspects of a product.

● The primary purpose is to protect the uniqueness and originality of a design while
giving the designer exclusive rights to prevent copying or commercial exploitation.

● Industrial Design emphasizes visual appeal rather than functionality. Functional aspects
of a product are covered under patent law, not design law.

● In India, protection is granted under the Designs Act, 2000, which replaced the Patents
and Designs Act, 1911.

Legal Definition (Section 2(d), Designs Act, 2000):

Design refers to the features of shape, configuration, pattern, ornament, or composition of
lines/colors applied to any article through any industrial process. However, it excludes modes of
construction, mere mechanical devices, trademarks, or artistic works covered by other acts.

2. Historical Evolution of Industrial Design in India

Pre-Industrial Revolution:

● Craftsmen created handmade items like pottery, furniture, and textile designs, influenced
by local culture and available resources.

● Mass production was absent, and designs were mostly unique to individual craftsmen.

Industrial Revolution (18th–19th century):

● Introduction of machines and factories enabled mass production and uniformity in

designs.

● This led to challenges in distinguishing products from different manufacturers.

● Legal protection for designs was lacking, increasing the risk of imitation.

British Colonial Period:

 ● Patents and Designs Act, 1911: The first legal framework in India to protect industrial
designs.

● Allowed registration and exclusive rights, primarily benefiting British industries, while
providing limited protection for local innovations.

Post-Independence Era:

● There was a growing need to modernize intellectual property laws.

● Designs Act, 2000 was enacted to encourage innovation, creativity, and protect the
visual uniqueness of industrial products.

3. Legal Framework

Designs Act, 2000:

● Protects the aesthetic appearance of new, original, and unique designs.

● Provides exclusive rights for 10 years, renewable for another 5 years.

● Administered by the Office of Patents and Trademarks.

Designs Rules, 2001:

● Details the procedure, documentation, and classification of designs for registration.

International Treaties:

● TRIPS Agreement (WTO): Sets minimum standards for design protection, including
a 10-year protection term.

● Hague Agreement: Allows international registration of designs in multiple countries

with a single application.

● Paris Convention (1833): Ensures member countries protect foreign designs like
national designs.
 ● Locarno Agreement (2019): Standardizes design classification, supervised by WIPO.

4. Objectives of the Designs Act, 2000

● Provide rules and regulations for design registration.

● Protect designs from infringement or piracy.

● Assist consumers in differentiating between brands and products.

● Reward creators for their innovation and originality.

5. Essentials of an Industrial Design

● Novelty: The design must be new and original, not previously published or publicly
available.

● Visibility: The design must be discernible visually to the eye.

● Non-Contravention: Should not violate public morality or disrupt public order.

● Industrial Applicability: Must be produced through an industrial process.

Key Elements:

1. Aesthetic Appeal: Visual attractiveness (color, pattern, shape, texture) is crucial for
consumer engagement and brand recognition.

2. New and Original: Design must be distinct from prior works and demonstrate
creativity and innovation.

3. Functionality: Industrial Design protects appearance only, not function or utility, which
falls under patent law.
6. Importance in Business

● Brand Identity: Distinctive designs help build a brand’s image (e.g., Apple, Coca-Cola).

● Consumer Appeal: Aesthetic design influences buying decisions and loyalty.

● Market Differentiation: Unique designs allow products to stand out in competitive

markets.

● Protection Against Counterfeiting: Registration prevents unauthorized imitation of

designs.

● Economic Incentive: Registered designs are intangible assets that can be licensed or
sold.

● Exclusive Rights: Provides protection for 10–15 years, ensuring fair competition and
remedies against piracy.

7. Challenges in Protecting Industrial Designs

● Counterfeiting: Imitation of products damages brand reputation and revenue, especially

in e-commerce.

● Enforcement Costs: High legal costs make protecting designs challenging for small
businesses.

● Overlap with Other IPR: Some artistic elements may qualify for copyright, causing
legal complexities.

8. Leading Case Laws

Whirlpool India vs Videocon Industries (2014):

● Issue: Whether Videocon copied Whirlpool’s washing machine designs.

 ● Decision: Bombay High Court held that Videocon imitated Whirlpool, affirming the
novelty and originality of Whirlpool’s designs.

Bharat Glass Tube Limited vs Gopal Glass Works Limited (2008):

● Issue: Whether Gopal Glass’s registered design was novel.

● Decision: Supreme Court held the design was novel and original, and plaintiff failed to
prove prior publication.

International Conventions on Industrial Designs

Industrial designs are a form of intellectual property that protect the visual or aesthetic features
of products, such as shape, pattern, color, and ornamentation. While countries have their
national laws for protecting industrial designs, international conventions harmonize standards
and provide cross-border protection. The main international conventions include TRIPS
Agreement, Hague Agreement, Paris Convention, Locarno Agreement, and related treaties.

1. TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights)

● Administered by: World Trade Organization (WTO)

● Adopted in: 1994, as part of the Uruguay Round of trade negotiations

● Purpose:
TRIPS sets minimum standards for intellectual property protection, including
industrial designs, for WTO member countries. Its goal is to encourage innovation and
fair competition while ensuring international trade is not distorted by inadequate IP
protection.

● Key Provisions for Industrial Designs:

1. Protection Duration: Minimum of 10 years from registration.

 2. Exclusive Rights: Design owners can prevent unauthorized copying, selling, or
commercial exploitation.

3. National Treatment: Foreign nationals are treated the same as domestic

designers in member countries.

4. Enforcement: Countries must provide legal remedies and civil/criminal

procedures for infringement.

● Significance:
TRIPS ensures that industrial design rights are respected globally, enabling designers to
protect their products across multiple markets.

2. Hague Agreement Concerning the International Registration of Industrial Designs

● Administered by: World Intellectual Property Organization (WIPO)

● Adopted in: 1925 (with several revisions and the Geneva Act 1999)

● Purpose:
Simplifies the process of protecting industrial designs internationally by allowing
designers to file a single application to cover multiple countries.

● Key Features:

1. Single Filing: Designers can register in multiple member countries with one
application.

2. Cost-Effective: Reduces administrative and financial burden for international

protection.

3. Flexibility: Designers can designate specific member countries where protection

is desired.

4. Central Administration: Managed through the International Bureau of WIPO.

● Example:
An Indian designer can file a single application under the Hague Agreement to protect a
 new smartphone design in the USA, Europe, and Japan simultaneously.

● Significance:
Facilitates global design protection and helps businesses expand internationally without
multiple filings in each country.

3. Paris Convention for the Protection of Industrial Property

● Adopted in: 1883

● Administered by: WIPO

● Purpose:
The Paris Convention ensures international recognition and protection of industrial
property, including designs, patents, and trademarks, across its member countries.

● Key Provisions:

1. National Treatment: Foreign applicants enjoy same protection as domestic

citizens in member states.

2. Right of Priority: If a designer files a design in one member country, they can
claim priority in other member countries within 6 months.

3. Protection Standards: Member countries must provide adequate protection

against unauthorized use or copying of industrial designs.

● Significance:
The Paris Convention allows designers to claim international recognition and
priority, protecting their designs in multiple jurisdictions while respecting local laws.

4. Locarno Agreement (International Classification of Industrial Designs)

● Adopted in: 1968

● Administered by: WIPO

 ● Purpose:
Establishes a standard classification system for industrial designs, enabling consistent
registration, searching, and enforcement worldwide.

● Key Features:

1. Locarno Classification: Categorizes designs into 32 classes, e.g., furniture,

textiles, vehicles, and household goods.

2. Facilitates Registration: Ensures that designs are classified and searched

consistently in all member countries.

3. Member States Compliance: Helps countries maintain uniformity in design

protection and avoids confusion.

● Example:
A new chair design would fall under Class 06 (Furniture, mirrors, goods of similar
nature), ensuring global recognition under the same category.

● Significance:
Simplifies design searches, prevents overlapping rights, and improves clarity in
international protection.

5. Related Conventions – Rome Convention (1961)

● Although primarily designed for neighboring rights in media and performances, the
Rome Convention influenced the development of secondary or related rights, which
overlap with industrial designs in media and broadcasted products.

● Provides insights into protecting creative efforts that disseminate works of authors,
complementing industrial design protections.

Importance of International Conventions for Industrial Designs

1. Harmonization of Protection: Ensures consistent rights for designers across member

countries.
 2. Facilitates International Trade: Encourages innovation and commercial expansion
without fear of design theft.

3. Reduces Legal Conflicts: Common standards minimize disputes over design ownership
and infringement.

4. Promotes Innovation: Designers can confidently invest in creating new products

knowing they will receive cross-border protection.

5. Supports Global Businesses: Companies with operations in multiple countries can

protect their unique product designs efficiently.

Registration of Design and Its Effects under the Designs Act, 2000

1. Application to Register Designs (Section 5)

The first step in protecting an industrial design in India is filing an application under Section 5 of
the Designs Act, 2000. This section lays down the provisions for registration and ensures that
only designs which are new, original, and not contrary to public policy or morality are
registered. Any individual claiming to be the proprietor of such a design can file the application.
The design should not have been previously published anywhere in the world.

Key points:

● Applications must be filed at the appropriate patent office in the prescribed form and
accompanied by the prescribed fees.

● A design can be registered in only one class. If there is any doubt regarding the
appropriate class, the Controller of Designs has the final say.

● The Controller has the authority to refuse registration if the design does not meet the
requirements. In such cases, the applicant may appeal to the High Court.

● An application not completed within the prescribed time due to applicant default is
deemed abandoned.
2. Procedure for Registration of Designs

The procedure for registration is detailed in Chapter II of the Designs Act, 2000. The process
ensures a systematic and transparent method of registering industrial designs.

Step 1: Filing the Application

● The applicant submits the design to the patent office with all relevant fees.

● The application must specify:

○ The class in which the design is to be registered.

○ The articles to which the design will be applied.

● Separate applications are required for designs in different classes.

Step 2: Examination of the Application

● The Controller sends the application to an examiner to verify whether the design
qualifies for registration.

● If deemed eligible, the Controller accepts the application for further processing.

Step 3: Communication of Objections

● If defects are found, the applicant is notified.

● The applicant must remove the objections and resubmit within six months from the date
of application.

● Failure to address objections within three months leads to automatic withdrawal of the
application.

Step 4: Publication
 ● After registration, the Controller publishes the particulars of the design as prescribed
in Designs Rules, 2001.

● The design becomes open for public inspection, which ensures transparency and helps
prevent infringement.

3. Effect of Registration

Once a design is registered, the proprietor gains copyright protection, which secures the visual
or aesthetic elements of the product.

Key points:

● Copyright duration: 10 years from the date of registration.

● Extension: Can be extended by 5 years (total 15 years) if the application is made before
expiry and fees are paid.

● Restoration: If copyright lapses due to non-payment of fees, the owner can restore the
design within one year, provided the default was genuine.

The registration essentially provides exclusive rights over the design, preventing unauthorized
commercial use by others.

4. Piracy of Registered Design (Section 22)

Piracy refers to the unauthorized commercial use of a registered design and is considered
equivalent to copyright infringement. Section 22 lays down acts constituting piracy and defines
the legal scope of protection.

Acts constituting piracy:

● Applying the design or an obvious imitation to articles for sale without consent.

● Importing articles in the registered class for commercial purposes without the
proprietor’s consent.
 ● Publishing or exposing for sale articles bearing the design or imitation after knowing it
is registered.

Important clarifications:

● Piracy must occur in the course of commerce, not for personal use.

● The acts must involve articles in the registered class.

● Courts assess infringement based on the perspective of an average customer to

determine if confusion exists.

5. Remedies Against Piracy (Section 22(2))

The Designs Act provides civil remedies only, as there is no criminal liability for infringement.

Two alternative remedies for proprietors:

Option 1: Fixed Penalty (Section 22(2)(a))

● The infringer is liable to pay INR 25,000 per contravention to the registered proprietor.

● Total recoverable amount for a single design is capped at INR 50,000.

Option 2: Civil Suit (Section 22(2)(b))

● Proprietor may file a suit for damages and seek an injunction to prevent further
infringement.

● Courts can award damages and injunctions depending on the case.

Additional points:

● No remedy is available for piracy occurring between lapse and restoration of a design.

● Suits must be filed in a court at or above the level of District Judge.

 ● Cases involving cancellation grounds under Section 19 must be transferred to the
High Court.

6. Landmark Judgments

1. Gopal Glass Works Ltd. vs IAG Company Ltd. (2006)

○ Plaintiff’s design “Diamond Square” vs Defendant’s “Kohinoor.”

○ Interim injunction granted as designs were similar.

2. Dabur India Ltd. vs Rajesh Kumar (2008)

○ Plaintiff’s “Dabur Amla Hair Oil” bottle design alleged copied.

○ Court held the bottle design was common, lacking novelty, and denied
injunction.

3. Whirlpool India Ltd. vs Videocon Industries Ltd. (2004)

○ Videocon’s design replicated Whirlpool’s registered design.

○ Court held infringement and passing off, granting relief to Whirlpool.

Authorities and Powers under the Designs Act, 2000

The Designs Act, 2000 provides a structured framework for the protection and registration of
industrial designs in India. To implement its provisions, the Act establishes certain authorities,
primarily the Controller of Designs, along with other officials, and confers specific powers on
them to ensure smooth administration and enforcement of design rights.

1. Controller of Designs
The Controller of Designs is the key authority under the Designs Act, 2000. Appointed by the
Central Government, the Controller plays a pivotal role in the registration, administration,
and cancellation of designs. The Controller is vested with powers to ensure that only new,
original, and registrable designs are granted protection.

Powers and Functions of the Controller:

● Registration: The Controller examines applications for registration of designs and

decides whether a design qualifies for registration under Section 5.

● Refusal of Registration: If a design does not meet the criteria (novelty, originality, or
public morality), the Controller may refuse registration.

● Publication: Once a design is registered, the Controller ensures its publication for
public inspection under the Designs Rules, 2001.

● Cancellation: The Controller has the authority to cancel the registration of a design on
valid grounds presented under Section 19, either suo moto or on petition.

● Restoration: The Controller can restore a design if copyright lapsed due to non-
payment of fees, provided the default was genuine.

● Appeals: Any decision by the Controller can be appealed to the High Court.
Additionally, the Controller can refer cases directly to the High Court.

● Class Determination: In case of doubt regarding the appropriate class for

registration, the Controller has the final authority to decide the class under which a design
should be registered.

2. Examiners of Designs

Examiners are officers appointed under the Controller to examine design applications. They
play a crucial role in assessing whether a design is new, original, and registrable.

Powers and Responsibilities of Examiners:

● Examine applications to ensure compliance with the Designs Act, 2000.

● Identify defects, objections, or non-compliance in the application.

 ● Notify the applicant about objections or required amendments.

● Recommend acceptance or rejection of a design application to the Controller.

3. Other Authorities under the Act

Apart from the Controller and Examiners, the Designs Act also recognizes other supporting
authorities to maintain an efficient registration and dispute resolution system:

● Patent Office Officials: Assist in filing, processing, and publication of design

applications.

● High Court: Acts as an appellate authority for decisions of the Controller regarding:

○ Registration refusal

○ Cancellation petitions

○ Disputes related to infringement or piracy.

4. Powers Relating to Piracy and Enforcement

The Controller and courts are empowered to enforce design rights and ensure remedies against
infringement:

Controller’s Powers:

● Restore lapsed registrations upon genuine default in fee payment.

● Refer cancellation petitions to the High Court for adjudication.

Courts’ Powers:

● Grant interim or permanent injunctions against piracy of registered designs.

● Award damages to the registered proprietor under Section 22(2)(b).

 ● Determine infringement by considering the perspective of an average customer.

Overlap of Designs with Copyright and Trademarks

Intellectual Property Rights (IPR) in India, including copyright, design, and trademark, often
intersect, leading to overlap issues. This happens when the same product, shape, or artistic
creation may qualify for protection under more than one IPR law. The overlap can create
confusion regarding the scope, duration, and remedies available for protection. Courts in India
have largely followed two approaches: either allowing rights holders to enforce multiple
protections simultaneously or restricting them to one form of protection to avoid duplication.

1. Copyright vs. Design

● Copyright protects the expression of ideas rather than the idea itself, covering literary,
artistic, dramatic, musical works, cinematographic films, and sound recordings under the
Copyright Act, 1957.

● Designs, under the Designs Act, 2000, protect the aesthetic features of an article such as
shape, configuration, pattern, ornamentation, or composition of lines/colours, which
are applied to an article produced by an industrial or mechanical process.

● Overlap arises when an industrial design is also considered an artistic work under
copyright law.

Key legal points:

● Section 15 of the Copyright Act states that copyright does not subsist in a design
registered under the Designs Act. Hence, registration under the Designs Act forecloses
copyright protection.

● If a design is not registered and is reproduced more than 50 times industrially,

copyright protection may cease for the design, but the original artistic work retains
copyright.
 ● Landmark Cases:

○ Microfibres Inc vs Girdhar & Co: Artistic paintings used in industrial designs lose
copyright if reproduced more than 50 times, but the original work retains
protection.

○ Ritika Private Limited vs Biba Apparels: Plaintiff denied protection under both
Copyright and Designs Act due to reproduction beyond the statutory limit.

○ Rajesh Masrani vs Tahiliani Design Pvt Ltd: Protection granted as reproduction

limit was not exceeded.

○ Holland Company LP vs S.P. Industries: Copyright in industrial drawings denied

because the design was intended for industrial use.

Observation: Courts emphasize the industrial/commercial use of designs for deciding whether
copyright protection subsists. Copyright is treated as an inherent right of the author, whereas
design protection requires mandatory registration.

2. Design vs. Trademark

● Shapes and designs can function both as trademarks (if used to identify the source of
goods) and as designs (if they meet aesthetic criteria).

● Design infringement is judged primarily by visual comparison, i.e., whether the

essential features of the design have been copied.

● Trademark infringement/passing off occurs when the infringer tries to exploit the
goodwill of a business, irrespective of the design’s originality.

Judicial precedents:

● Whirlpool India vs Videocon Industries: Test for design infringement established — the
eye alone judges similarity.
 ● Dart Industries Inc vs Techno Plast: Courts allowed passing off suits even if the design is
registered, emphasizing common law rights.

● Smithkline vs Hindustan Lever: Reinforced that passing off is independent of the Designs
Act and can coexist with design infringement claims.

● Tobu Enterprises vs Megha Enterprises: Contrarily, the court held that the Designs Act
remedies are exhaustive, and passing off cannot form a separate basis for injunction.

Observation: There is divergent judicial opinion on whether a registered design, when used as
a trademark, loses its design protection. Courts recognize both coexistence and exclusivity in
different cases.

3. Trademark vs. Copyright

● Copyright protects creative expression, while trademarks protect distinctive signs

associated with trade.

● Overlap arises in logos, artistic signs, emblems, or characters used commercially.

● Example: A painting may enjoy copyright protection; if used as a logo, it may also
qualify for trademark protection.

● Indian law position: Logos qualify as artistic works under copyright law, and their use
in trade may attract trademark protection without affecting copyright status.

Aspect Copyright Design Trademark Overlap / Notes

Definition / Protects the Protects the Protects Some works

Scope expression of aesthetic distinctive signs, may qualify
ideas, including features of an logos, brand under multiple
literary, artistic, article, such as names, or IPRs depending
musical, dramatic shape, symbols used to on usage and
works, configuration, identify the source form (e.g.,
cinematographic pattern, of goods/services. artistic designs
films, and sound ornamentation, used
recordings. or composition commercially).
of lines/colours,
 applied to a
product.

Registration Automatic Mandatory Mandatory Registration

Requirement protection; no registration registration under status affects
formal under the the Trade Marks which rights can
registration Designs Act, Act, 1999 (though be enforced.
required. 2000. unregistered marks
may have common
law protection).

Duration Lifetime of the 10 years from 20 years, Duration differs

author + 60 years registration, renewable significantly;
(for most works). extendable by 5 indefinitely in 10- overlapping
years. year periods. rights may
expire
differently.

Use / Protects Protects designs Protects signs Overlap arises

Industrial creative/artistic applied to associated with when artistic
Application expression, not articles produced commerce and works are used
industrial use. industrially or goodwill. industrially or
manually. as a mark for
trade.

Infringemen Reproduction, Visual Misrepresentation Courts

t Test adaptation, or comparison by or passing off to differentiate:
public eye alone; exploit goodwill. design
communication essential features infringement is
without copied = about
permission. infringement. originality,
trademark
infringement is
about public
confusion.

Example Microfibres Inc Whirlpool India Smithkline vs Shows that same

Cases vs Girdhar & Co: vs Videocon: Hindustan Lever: creation can be
copyright retained design passing off subject to
in original work, infringement allowed for multiple rights,
lost in industrial based on visual unregistered depending on
reproduction over similarity. trademarks. reproduction,
 50 times. registration, and
use.

Conflict / Section 15 of Registration may Trademark can Legislative

Restriction Copyright Act: no restrict coexist with ambiguity
copyright subsists copyright; copyright if creates
in a registered design rights shape/logo also conflicts; courts
design. cease if not identifies source. often rely on
properly intention,
registered. usage, and
public
perception.

Remedies Civil remedies for Civil remedies Civil remedies for Remedies vary
infringement; under Section 22 infringement; depending on
injunctions, of Designs Act; injunctions, which IPR is
damages. injunctions, damages, and invoked;
damages, or passing off claims. sometimes
prescribed cumulative,
statutory sometimes
penalties. exclusive.

UNIT -IV: PATENTS

WHAT IS PATENT :
1. A patent is an exclusive right granted by the Government to the inventor to exclude others to
use, make and sell an invention is a specific period of time, The main motto to enact patent law
is to encourage inventors to contribute more in their field by awarding them exclusive rights for
their inventions.
2. A patent is 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. To get a patent, technical information about the invention must be disclosed to the
public in a patent application.
3. Under the Indian patent law, a patent can be obtained only for an invention which is new and
useful. The invention must relate to the machine, article or substance produced by a
manufacturer, or the process of manufacture of an article.
4. A patent may also be obtained for innovation of an article or of a process of manufacture. In
respect to medicine or drug and certain classes of chemicals, no patent is granted for the
substance itself even if it is new, but the process of manufacturing and substance is patentable.
5. The application for a patent must be true and the first inventor or the person who has derived
title from him, the right to apply for a patent being assignable.
6. The basic aim of patent law is the balance of the interests of inventors on one hand and the
interests of the public on the other hand.
7. The inventors are rewarded with a limited exclusive right on their invention, for providing
technical progress to the public. The exclusive right is limited in time

Meaning and Definition:

A patent is a legal right granted by the government to an inventor, providing exclusive ownership
and control over the invention for a limited period. It allows the inventor to prevent others from
making, using, or selling the invention without consent. The term “patent” signifies absolute
rights over the invention. As per Section 2(1)(m) of the Patents Act, 1970, a patent is a statutory
right granted to the inventor. Patent law is a branch of Intellectual Property Rights (IPR), which
also includes copyrights, trademarks, and industrial designs.

Objective of Patent Law:

The primary objective of patent law is to encourage innovation, scientific research, and industrial
progress. It aims to reward inventors for their creativity while ensuring that the public benefits
from technological advancements. Patent law strikes a balance between the inventor’s exclusive
rights and the larger public interest by granting temporary monopoly rights in exchange for
disclosure of the invention.

Judicial Interpretation:
In the landmark case Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, the
Supreme Court of India observed that the object of patent law is to promote scientific research,
new technology, and industrial development. The Court emphasized that the exclusive privilege
granted to inventors for a limited time encourages innovation of commercial utility, while the
eventual disclosure of the invention contributes to the public domain once the patent term
expires.

Evolution of Patent Protection:

The Patents Act, 1970 initially provided a shorter term of protection, particularly for
pharmaceutical and medicinal products. However, following the 2005 Amendment, the protection
period was extended to 20 years for all types of patents. After the expiry of this term, the
invention becomes available for public use. Under the Act, both product and process patents are
recognized, provided they meet the statutory conditions of novelty, inventive step, and industrial
applicability.

Requirements for Patentability:

For an invention to be patentable under the Patents Act, 1970, it must satisfy three essential
criteria—novelty, non-obviousness, and industrial applicability. Firstly, novelty requires that the
invention be new and not previously known or used. Secondly, non-obviousness means the
invention should not be an evident modification to someone skilled in the field; it must represent
a significant technical or economic advancement. Thirdly, industrial applicability implies that
the invention must be useful and capable of being applied in an industry or used commercially.

Non-Patentable Inventions:
Section 3 of the Patents Act, 1970 lists inventions that are not patentable. These include mere
discoveries of scientific principles, abstract ideas, mathematical methods, methods of agriculture
or horticulture, and medical or surgical treatments. Additionally, inventions contrary to public
order, morality, or those causing harm to the environment or living beings are also excluded
from patentability.

Judicial Approach to Patentability:

In Bajaj Auto Ltd. v. TVS Motor Company Ltd., the court examined whether the patents in
question demonstrated genuine technological advancement or were merely improvements over
prior art. The decision underscored that determining an inventive step requires assessing whether
the invention adds meaningful progress to existing knowledge. Courts continue to interpret and
refine these principles to ensure that the patent system maintains fairness, innovation, and public
benefit.

INTERNATIONAL CONVENTIONS ON PATENTS

International conventions on patents form the cornerstone of the global intellectual property (IP)
system. They aim to harmonize patent laws among nations, promote cooperation in patent
registration, and ensure inventors receive recognition and protection beyond national borders.
These conventions collectively encourage innovation, technological growth, and fair trade
practices worldwide. The major international conventions governing patent protection are
outlined below.

I. The Paris Convention for the Protection of Industrial Property (1883)

The Paris Convention, adopted in 1883, is the first and most influential international treaty
dealing with industrial property, including patents, trademarks, and industrial designs. It
establishes fundamental principles that continue to shape the international patent framework. The
most important among these are:

 National Treatment: Each member country must provide the same protection to
nationals of other member countries as it provides to its own citizens. This ensures
equality and prevents discrimination against foreign applicants.
 Right of Priority: This principle allows an applicant who has filed a patent application in
one member country to use the same filing date for subsequent applications in other
member countries within 12 months. This helps protect inventors from losing novelty due
to later filings in different jurisdictions.
 Independence of Patents: Patents granted for the same invention in different countries
are independent of each other. The refusal, invalidation, or expiration of a patent in one
country does not affect its status in another.
The Paris Convention laid the foundation for international patent cooperation by recognizing
inventors’ rights across borders and setting consistent standards for member states.

II. The Patent Cooperation Treaty (PCT) (1970)

The Patent Cooperation Treaty (PCT), administered by the World Intellectual Property
Organization (WIPO), was established in 1970 to simplify the process of seeking patent
protection in multiple countries. Before the PCT, inventors had to file separate patent
applications in every country, which was time-consuming and costly. The PCT allows an
inventor to file a single international patent application, which has the effect of filing in all PCT
contracting states.

The PCT process consists of two major stages:

1. International Phase: In this phase, the international application is filed and subjected to
an international search to identify prior art. An optional preliminary examination may
also be conducted to assess patentability.
2. National Phase: After the international phase, the application enters the national or
regional phase (usually within 30 or 31 months), where each country’s patent office
examines the application under its national law and decides whether to grant the patent.

The PCT does not grant an international patent but provides a streamlined, cost-effective route to
seek protection in multiple countries simultaneously. It also provides inventors more time to
assess the commercial potential of their inventions before entering expensive national filings.

III. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

(1994)

The TRIPS Agreement, concluded in 1994 as part of the establishment of the World Trade
Organization (WTO), represents the most comprehensive international framework for intellectual
property protection. TRIPS sets minimum standards for the protection and enforcement of all
forms of IP, including patents, across all WTO member nations.

Under TRIPS, patents must be granted for inventions in all fields of technology, whether
products or processes, provided they are novel, involve an inventive step, and are industrially
applicable. The agreement requires a minimum patent term of 20 years from the date of filing
and mandates non-discrimination based on the field of technology, place of invention, or
whether products are imported or locally produced.

TRIPS also requires member countries to establish effective enforcement mechanisms to

prevent infringement and ensure fair protection. Importantly, it includes flexibilities, such as
compulsory licensing, allowing governments to authorize the use of patented inventions without
the owner’s consent under specific circumstances—particularly in the interest of public health
and welfare.

Overall, TRIPS harmonizes IP standards globally, aligning patent laws with trade policies to
balance innovation incentives with public interest.

IV. Other Relevant Conventions

1. The Strasbourg Agreement Concerning the International Patent Classification

(1971):
This agreement established the International Patent Classification (IPC) system, a
standardized framework for organizing patent documents by technological fields. It
facilitates easy retrieval and comparison of patent information across jurisdictions.
2. The Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure (1977):
The Budapest Treaty simplifies the process of patenting biotechnological inventions
involving microorganisms. It allows the deposit of biological materials at an
internationally recognized depository instead of requiring multiple deposits in each
country, ensuring uniform recognition among member states.
 3. The Patent Law Treaty (PLT) (2000):
The PLT aims to harmonize and streamline the formal and procedural requirements
related to patent applications. It simplifies filing procedures, reduces administrative
burdens, and provides standardized rules for formalities such as signatures, filing dates,
and submission requirements.

CONDITIONS OF PATENTABILITY
1. Basic Requirements for Patentability
To qualify for patent protection, an invention must meet the following conditions:
 The invention must be new.
 It must involve an inventive step.
 It should be capable of industrial application.
 It must not fall under the category of non-patentable subject matter listed in Sections
3 and 4 of the Act.
Only when all these conditions are fulfilled can an invention be granted a patent in India.

2. Novelty or Newness
The principle of novelty ensures that an invention is new and not previously known or used.
Under Section 2(l) of the Patents (Amendment) Act, 2005, a new invention means one that has
not been anticipated by prior publication, public use, or knowledge, and does not fall within
the public domain.
An invention loses novelty if it has been disclosed or published before the date of filing.
However, mere discovery of something already existing in nature does not constitute a
patentable invention.
In Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979), the Court
recognized novelty and utility as two essential criteria for patent grant. Similarly, in Gopal
Glass Works Ltd. v. Assistant Controller of Patents (2005), it was emphasized that novelty alone
is not sufficient; the invention must also show originality and inventive character.

3. Non-Obviousness or Inventive Step

The requirement of non-obviousness ensures that the invention is not an evident or routine
improvement to a person skilled in the relevant art. According to Section 2(1)(j) of the Patents
Act, 1970, an invention is a product or process that involves an inventive step and is capable of
industrial application. Further, Section 2(1)(ja) defines inventive step as a feature that involves
technical advancement or economic significance, making the invention non-obvious to a
person skilled in the art.
The principle of inventive step was elaborated in Bishwanath Prasad Radhey Shyam v.
Hindustan Metal Industries (1979), where the Court laid down four tests of obviousness:
1. The person skilled in the art must be able to identify the inventive step based on prior
knowledge or use.
2. A comparison should be made between the existing knowledge and the alleged invention.
3. The differences between them must be carefully observed.
4. There must exist a degree of invention that reflects ingenuity beyond ordinary skill.
Thus, the invention should not be something that a skilled person could easily deduce or create
from existing information.

4. Usefulness or Utility
The principle of utility requires that an invention must be industrially applicable and have
practical value. It should not be merely theoretical or speculative. An invention that lacks
industrial applicability cannot be patented.
In Cipla Ltd. v. F. Hoffmann-La Roche Ltd. (2015), the Court held that an invention must possess
commercial and industrial use to qualify as patentable. Similarly, in Indian Vacuum Brake Co.
Ltd. E.S. Luard (1925), it was observed that utility must not be abstract—the invention must
serve a definite, practical purpose. Merely being “useful” in a vague sense is insufficient; it must
be demonstrably beneficial in an industrial setting.

5. Non-Patentable Inventions (Sections 3 and 4)

Sections 3 and 4 of the Indian Patents Act, 1970 enumerate inventions that are not patentable,
regardless of their novelty or usefulness. These exclusions safeguard public interest, ethics, and
existing knowledge. The following are non-patentable in India:
 Frivolous inventions or those contrary to natural laws.
 Inventions that violate public morality or pose a serious threat to human, animal, or
plant life.
  Mere discovery of scientific principles or abstract theories.
 Mere discovery of new substances or natural phenomena.
 Arrangements or duplications of known devices or methods lacking inventiveness.
 Methods of agriculture or horticulture.
 Processes for medical, surgical, or therapeutic treatment of humans or animals.
 Mathematical or business methods, or computer algorithms as such.
 Literary, dramatic, musical, or artistic works, which are protected under copyright
law.
 Presentation of information or abstract processes.
 Topography of integrated circuits.
 Inventions based on traditional knowledge or duplication thereof.
These exclusions reflect the balance between rewarding innovation and protecting public domain
knowledge, ethical standards, and societal interests.
Different Types of Patent Applications under the Patents Act, 1970
The Patents Act, 1970 provides various types of patent applications, depending on the
circumstances under which the invention is disclosed and claimed. Each type serves a different
purpose within the patent filing process, ensuring flexibility and international recognition of
patent rights.

1. Ordinary Application (Section 7)

An ordinary application is filed directly in the Indian Patent Office without claiming priority
from any previous application. It must be accompanied by either a provisional or complete
specification. If a provisional specification is filed, the applicant must submit a complete
specification within 12 months from the filing date, failing which the application is deemed
abandoned.
If two or more applications relate to cognate inventions, a single complete specification may be
filed with the Controller’s permission. Once the complete specification is submitted, the
provisional one is cancelled, and the application date is considered the date on which the
complete specification was filed.

2. Convention Application (Section 135)

A convention application is filed when the invention has been first applied for in a convention
country (i.e., a country that is a party to an international treaty with India, such as the Paris
Convention). The Indian application must be filed within 12 months from the date of the first
application (known as the basic application).
The applicant can claim the priority date from the basic application, meaning the Indian
application will be treated as if it were filed on that earlier date. This helps protect the invention
from being considered anticipated by later disclosures.
The application must include:
 The complete specification;
 The date and name of the convention country; and
 A declaration that no prior application was filed before that date in any convention
country.
Additionally, certified copies of the original application, translations (if in a foreign
language), and other relevant documents may be required by the Controller.

3. International Application (Patent Cooperation Treaty – PCT)

An international application under the Patent Cooperation Treaty (PCT) allows an applicant
to seek patent protection in multiple countries simultaneously through a single application. When
an international application designating India is filed, it is treated as an Indian national
application under the Patents Act, 1970.
The international filing date is considered the filing date in India. The complete specification
includes all essential elements—description, claims, drawings, and abstracts. This system
simplifies the process of seeking global patent protection and defers the cost of national filings
during the international phase.

4. Divisional Application (Section 16)

A divisional application is filed when a patent application contains more than one invention.
Either the applicant or the Controller may decide that the claims should be divided to ensure each
application covers a distinct invention.
The divisional application must be filed before the grant of the patent, and the complete
specification should not include any new matter beyond what was disclosed in the original
application. Importantly, the filing date of the divisional application is treated as the same as that
of the parent application, preserving the priority and rights of the inventor.

5. Patent of Addition (Section 54)

A patent of addition may be filed for an improvement or modification of an existing invention
that has already been patented or for which an application has been filed by the same applicant.
This allows inventors to protect enhancements or improvements without filing a new
independent application.
The patent of addition remains valid as long as the main patent is in force and does not require
a separate renewal fee. When the main patent expires, the patent of addition can, upon request,
become an independent patent for the remaining term.

FORM AND CONTENTS OF A PATENT APPLICATION

Every patent application must include a specification, which may be provisional or complete.
A specification should contain:
 A title and description of the invention;
 Drawings or diagrams (if required by the Controller);
 A model or sample (if necessary to illustrate the invention); and
 Claims defining the scope of the invention.
A complete specification further requires:
 Full and clear disclosure of the invention and its best method;
 Details of operation or use;
 Claims that define the legal scope; and
 An abstract summarizing the technical content.

Priority Date (Section 11)

The priority date determines the date from which the novelty of an invention is assessed.
 When a complete specification follows a provisional one, the priority date is the date of
the provisional filing.
 If multiple provisional applications are filed, the earliest relevant filing date applies.
  In the case of a divisional application, the priority date is the filing date of the parent
application.
 For convention applications, the priority date is the date of the first filing in the
convention country.

Publication of the Application (Section 11A)

Ordinarily, patent applications are published 18 months after the filing or priority date.
However, the applicant may request early publication. The Controller may refuse publication
under certain conditions such as secrecy directions under Section 35, or if the application is
withdrawn or abandoned.
Publication includes the applicant’s details, application number, filing date, and a brief
abstract.

Examination of the Application (Sections 11B, 12–19)

A request for examination must be made by the applicant or any interested person within the
prescribed period. Upon such request, the Controller refers the application to an examiner, who
reports on:
 Novelty and prior publications;
 Similar existing claims; and
 Patentability under the Act.
If objections arise, the Controller communicates them to the applicant, who may amend
the application accordingly. The Controller may refuse or require amendments before
proceeding.

Opposition to the Grant of Patent (Section 25)

Two types of opposition may be filed:
1. Pre-grant opposition – Any person may object after publication but before grant of
the patent on grounds such as lack of novelty, obviousness, or wrongful obtainment.
2. Post-grant opposition – Filed within one year after the grant, challenging the validity of
the patent on similar grounds.
The Controller, after hearing both parties, may maintain, amend, or revoke the patent.
Grant of Patent (Section 43)
Once all objections are resolved, and the Controller is satisfied that the application complies with
the Act, a patent is granted to the applicant or joint applicants. It bears the seal of the Patent
Office and the date of grant is recorded in the Register of Patents.
A notice of grant is then published, and all related documents become open for public
inspection.
Surrender and Revocation of Patents
I. Surrender of Patent (Section 63)
Under Section 63 of the Patents Act, 1970, a patentee may voluntarily surrender his patent
when he no longer wishes to retain its rights. To do so, the patentee must give notice to the
Controller expressing the offer to surrender. The Controller then publishes this offer in the
Official Journal and notifies all interested persons of the same.
Any interested person may oppose the surrender by giving a notice to the Controller within
three months from the date of publication. Such a notice of opposition must be communicated
to the patentee. If either the patentee or the opponent wishes to be heard, the Controller must
provide a hearing opportunity to both sides.
After considering the evidence and hearing the parties, if the Controller is satisfied that the patent
may be surrendered, he may accept the offer and revoke the patent by order. Once the patent
is revoked, the Controller may:
 Direct the patentee to return the patent certificate;
 On receiving the patent, formally revoke it by an official order; and
 Publish the revocation of the patent in the official records.
Thus, surrender under Section 63 serves as a voluntary mechanism for a patentee to give up
their rights, often used when maintaining the patent is no longer commercially viable or
strategically useful.

II. Revocation of Patent (Section 64)

Section 64 provides for the revocation of a patent, i.e., the cancellation of patent rights once
granted. Revocation can occur against the will of the patentee and serves as a legal remedy to
prevent the continuation of invalid or wrongfully granted patents.
A patent may be revoked in three ways:
1. On a petition filed by any interested person before the Appellate Board (or High Court
after the abolition of IPAB);
2. On a petition filed by the Central Government in the public interest; or
3. On a counter-claim made by a defendant in a suit for infringement before the High
Court.

III. Grounds for Revocation of Patent

A patent can be revoked on several specific legal grounds enumerated under Section 64(1) of
the Act. The major grounds include the following:
1. Earlier Priority Patent Exists:
The claimed invention has already been included in a valid claim of another patent
having an earlier priority date.
2. Lack of Entitlement:
The patent application was made by a person not entitled under the Act, and the patent
was wrongfully granted.
3. Wrongful Obtaining:
The patent was obtained fraudulently or in contravention of the rights of the true inventor
or their legal successor.
4. Not an Invention:
The subject matter of the claim does not qualify as an “invention” under Section 2(1)(j)
of the Act.
5. Lack of Novelty:
The claimed invention is not new, as it was publicly known or used in India, or published
in India or elsewhere before the priority date.
6. Obviousness / Lack of Inventive Step:
The invention is obvious to a person skilled in the art and lacks any inventive step.
7. Lack of Utility:
The invention is not useful or industrially applicable.
8. Insufficient Disclosure:
The complete specification does not sufficiently describe the invention or fails to disclose
 the best method of performing it, making it difficult for a skilled person to reproduce the
invention.
9. Improperly Defined or Overbroad Claims:
The claims are not properly defined or are based on subject matter not disclosed in the
specification.
10. False Representation:
The patent was obtained through false suggestion or misrepresentation of facts.
11. Non-Patentable Subject Matter:
The claimed subject matter is not patentable under the provisions of the Act (for example,
discoveries, abstract theories, or methods of agriculture).
12. Secret Prior Use:
The invention was secretly used in India before the priority date of the claim.
13. Failure to Disclose Information (Section 8):
The applicant failed to disclose, or knowingly furnished false information to the
Controller about foreign patent applications relating to the same invention.
14. Contravention of Secrecy Directions:
The applicant violated secrecy directions issued under Section 35 or made an
unauthorized foreign patent application contrary to Section 39.
15. Fraudulent Amendment:
Any amendment of the specification under Section 57 or 58 was obtained by fraud.
16. Incorrect Disclosure of Biological Source:
The complete specification either does not disclose or wrongly mentions the source or
geographical origin of biological material used in the invention.
17. Traditional or Indigenous Knowledge:
The invention is anticipated based on traditional knowledge or practices of local or
indigenous communities, either within India or abroad.

IV. Exceptions and Clarifications

While determining lack of novelty or inventive step:
 A personal document, secret trial, or secret use of the invention is not considered
prior art; and
  If the patent is for a process or a product made by a claimed process, the importation of
that product into India (made abroad by that process) is treated as knowledge or use in
India, unless imported for reasonable trials or experiments only.

V. Legal Effect of Revocation

Once a patent is revoked, all rights conferred by it cease to exist retrospectively, as though the
patent had never been granted. The invention becomes public property, and anyone may use it
freely without infringement concerns.

COMPULSORY LICENCE UNDER THE PATENTS ACT, 1970

The concept of compulsory licensing serves as a balance between protecting the patentee’s rights
and safeguarding the public interest. It allows the government to authorize a third party to make,
use, or sell a patented invention without the consent of the patentee, under specific
circumstances. The relevant provisions are contained in Sections 84 to 94 of the Patents Act,
1970.

I. Grounds for Grant of Compulsory Licence (Section 84)

According to Section 84, any person interested may apply to the Controller for a compulsory
licence after three years from the date of grant of the patent. The application can be made on
the following grounds:
 The reasonable requirements of the public with respect to the patented invention are
not being satisfied;
 The patented invention is not available at a reasonably affordable price;
 The patented invention is not worked in India.
The applicant must state the nature of his interest in the patent and provide supporting
particulars. If the Controller is satisfied with the application, he may grant a compulsory licence
on suitable terms and conditions.
While considering such an application, Section 84(6) directs the Controller to take into account:
 The nature of the invention and time elapsed since the patent was sealed;
 Measures taken by the patentee or licensee to work the invention;
 The applicant’s ability to work the invention to public advantage;
  The applicant’s capacity to undertake the risk of providing a licence; and
 Efforts made by the applicant to obtain a voluntary licence from the patentee on
reasonable terms.
Under Section 84(7), the reasonable requirements of the public are deemed not to have been
satisfied when, for instance, refusal to grant licences:
 Prejudices the establishment or growth of trade or industry in India;
 Restricts supply or market development;
 Imposes restrictive conditions such as exclusive grant-back or coercive package
licensing;
 Leads to non-working of the invention in India; or
 Results in obstruction of commercial use due to importation by the patentee or others on
his behalf.

II. Procedure for Grant of Compulsory Licence (Section 87)

Under Section 87, when an application for a compulsory licence is made, and the Controller is
satisfied with the stated grounds, he must direct the applicant to serve a notice of the application
to the patentee and other interested persons. The application is published in the Official
Journal.
Any person interested, including the patentee, may file an opposition within the prescribed time,
stating the grounds of objection. The Controller must inform the applicant and provide an
opportunity for hearing to both parties before making a decision on the grant of the licence.

III. Revocation of Patents for Non-working (Section 85)

If the reasonable requirements of the public continue to be unsatisfied even after the grant of a
compulsory licence, Section 85 allows the Controller to revoke the patent.
After two years from the date of the first compulsory licence, the Central Government or any
interested person may apply for revocation on the following grounds:
 The invention has not been worked in India;
 The reasonable requirements of the public have not been met;
 The invention is not available at a reasonable price.
Upon satisfaction of the above grounds, the Controller may revoke the patent, and every such
application must be decided within one year from its filing date.

IV. Powers of Controller (Section 88)

The Controller has broad powers under Section 88 to ensure public interest is met. He may:
 Direct the grant of licences to customers where the patentee’s restrictive conditions
prejudice manufacture, use, or sale of unpatented materials;
 Amend existing licence terms upon application by a licensee;
 Grant licences for other patents held by the same patentee if necessary for effective
working of the invention.
Further, a licensee who finds the agreed terms to be overly onerous may apply to the Controller
for revision after using the invention commercially for at least 12 months.

V. Adjournment of Hearings (Section 86)

Under Section 86, the Controller may adjourn the hearing of a compulsory licence application
for up to 12 months if it appears that the patented invention has not been adequately worked in
India. However, if the patentee proves that the invention could not be worked due to legal
restrictions imposed by the government, such period of adjournment will be excluded from
consideration.

VI. Terms and Conditions of Compulsory Licence (Section 90)

Section 90 lays down the terms and conditions the Controller must observe while granting a
compulsory licence. These include:
 Ensuring reasonable royalty and remuneration to the patentee;
 Promoting maximum working of the invention;
 Making the patented invention available at affordable prices;
 Granting non-exclusive and non-assignable licences;
 Granting licence for the remaining patent term unless a shorter term serves public
interest;
 Ensuring the licence is granted primarily for the Indian market;
 Allowing export of patented products only to remedy anti-competitive practices; and
  Restricting importation of patented products where it would infringe the patentee’s rights.
For semiconductor technology, licences are granted only for non-commercial public use.

VII. Compulsory Licence for Export of Patented Pharmaceutical Products (Sections 92 &
92A)
Section 92 empowers the Central Government to issue a notification for granting compulsory
licences in cases of:
 National emergency,
 Extreme urgency, or
 Non-commercial public use.
In such cases, the Controller may bypass the regular procedure under Section 87 and directly
grant a licence, ensuring that the product is available at lowest possible prices while allowing
the patentee to derive reasonable benefits.
This provision also covers public health crises such as AIDS, HIV, tuberculosis, malaria, or
similar epidemics.
Under Section 92A, compulsory licences may be granted specifically for the export of patented
pharmaceutical products to countries that lack adequate manufacturing capacity. The aim is to
address public health problems in developing or least-developed countries.

VIII. Termination of Compulsory Licence (Section 94)

A compulsory licence may be terminated under Section 94 when the circumstances that
justified its grant cease to exist.
The application for termination can be made by:
 The patentee, or
 Any person deriving title or interest in the patent.
However, if made by the patentee, the licensee may oppose the termination. The Controller,
before granting such termination, must ensure that the licensee’s interests are not unfairly
affected.

GOVERNMENT USE OF PATENTS UNDER THE PATENTS ACT, 1970

The Patents Act, 1970, recognizes that while a patent grants exclusive rights to the patentee,
these rights are not absolute. In certain circumstances, the government is permitted to use
patented inventions in the public interest or for governmental functions. The relevant provisions
that govern this aspect are Sections 47, 100, and 156 of the Act. These provisions create a
balance between private patent rights and public welfare, ensuring that innovation serves societal
needs as well.

1. Section 47 – Conditions Attached to the Grant of Patents

Section 47 imposes specific conditions on every patent granted in India. It provides that the grant
of a patent is subject to the right of the government to use the invention for its own purposes. The
key aspects of this section include:
 Governmental Use: The Central Government may make, import, or have made on its
behalf any patented product or product made by a patented process merely for its own
use. This means that the government can use the invention without needing the patentee’s
permission when it is for non-commercial, official, or public service purposes.
 Educational and Research Use: The patented invention may be used for imparting
educational or instructional purposes within government institutions.
 Public Health Use: In the case of medicines or drugs, the government may distribute
them through government hospitals, dispensaries, or medical institutions for public
service.
This provision ensures that the patentee’s exclusive rights do not prevent the government from
fulfilling essential public functions such as healthcare, education, or defense.

2. Section 100 – Use of Inventions for Government Purposes

Section 100 provides a more detailed framework for situations where the government, or a
person authorized by it, may use a patented invention for the purposes of the government. The
section permits:
 Authorization: The government can authorize any person to use a patented invention on
its behalf for governmental purposes.
 Scope of “Governmental Purpose”: This includes uses related to defense, public health,
transport, infrastructure, and other functions that serve national or public interests.
  Compensation to Patentee: When the government or its authorized agent uses the
patented invention, the patentee is entitled to receive adequate remuneration. The amount
of such remuneration is either agreed upon between the parties or determined by the
Controller if no agreement is reached.
 Transparency and Notice: The patentee must be notified as soon as practicable when
their patent is used by or on behalf of the government, ensuring accountability.
This provision is particularly important during emergencies, such as public health crises, where
the government may need to utilize patented technologies without delay to protect public
welfare.

3. Section 156 – Effect of Patents Against the Government

Section 156 clarifies that a patent has the same effect against the government as it has against
any individual. This means that the government, too, must respect the rights of the patentee
unless it acts under the exceptions provided in the Act, such as those in Sections 47 or 100.
Thus, while the government can use a patented invention under certain conditions, it cannot
arbitrarily infringe upon patent rights without following due procedure or without ensuring fair
compensation to the patentee.

4. Judicial Interpretation: Garware Wall Ropes Ltd. v. A.I. Chopra and Konkan Railway
Corporation Ltd. (2009)
This Bombay High Court case provides an important judicial interpretation of government use
under Section 100. The appellant, Garware Wall Ropes Ltd., sought an injunction and rendition
of accounts for patent infringement. The respondents, including the Konkan Railway
Corporation, argued immunity under Section 100, claiming that they were using the patent for
the government’s work.
The Court held that:
 Section 48 of the Act provides specific rights to the patentee, including exclusive rights
to make, use, and sell the patented invention.
 These rights cannot be taken away except under conditions explicitly provided in the Act.
  While Section 47 allows the government to use a patent merely for its own use, Section
100 requires authorization and possibly an agreement or license with the patentee when a
third party uses the invention on behalf of the government.
 The Court emphasized that the government’s right under Section 100 does not grant
absolute immunity; rather, it must comply with procedural safeguards and ensure fair
compensation.
This judgment thus reinforced the principle that governmental use must be legitimate, justified,
and consistent with statutory limits.

PARALLEL IMPORTS UNDER THE INDIAN PATENTS ACT, 1970

Parallel imports represent a fascinating intersection of intellectual property rights, international
trade, and consumer welfare. Under Indian patent law, they form part of the broader policy
framework that seeks to balance patent protection with public access to technology and
medicines.

1. Meaning and Concept of Parallel Imports

Parallel imports—sometimes referred to as “gray-market goods”—are genuine, non-counterfeit
products that are first sold in one country and then imported into another without the patent
owner’s explicit authorization. These are authentic goods, not imitations or fakes, but the act of
importing them bypasses the patent holder’s distribution control.
For example, suppose a patented drug is sold in Thailand at ₹200 per unit but in India at ₹1,000
per unit. If an Indian trader buys the drug from Thailand and sells it in India, that trader is
engaging in parallel importation. The key point is that the goods were lawfully sold abroad
and imported without the patent owner’s permission.
Under a strict patent regime, this would constitute infringement because the patent owner’s right
to control importation (under Section 48 of the Patents Act) would be violated. However, India’s
patent law provides a crucial exception that allows such imports under certain conditions.

2. Statutory Basis – Section 107A(b) of the Patents Act, 1970

The legal foundation for parallel imports in India lies in Section 107A(b), which provides:
“Importation of patented products by any person from a person who is duly authorized under the
law to produce and sell or distribute the product shall not be considered as an infringement of
patent rights.”
This clause creates a statutory exception to infringement, establishing that once a patented
product is sold by a person “duly authorized under the law,” its further importation into India is
lawful.
Thus, a patentee’s control over a particular article ends with its first authorized sale, and that
article may be freely traded, including imported into India — a concept known as the doctrine of
exhaustion of rights.

3. Legislative Evolution of Section 107A(b)

The current broad scope of Section 107A(b) emerged through legislative reform:
 2002 Amendment (enforced in 2005):
Initially, the clause permitted parallel imports only when the product was obtained from
someone “duly authorized by the patentee.”
This created a narrow rule — only products sold with the patent owner’s direct consent
could be imported.
 2005 Amendment:
The clause was revised to say “duly authorized under the law,” thereby expanding the
scope.
This means the authorization can arise not only from the patentee but also from any
lawful source — such as a compulsory license, a government authorization, or a judicial
order in another country.
This shift effectively introduced international exhaustion into Indian patent law, aligning
India’s framework with its commitment to access to medicines and public interest objectives.

4. Doctrine of Exhaustion (First Sale Doctrine)

The doctrine of exhaustion underpins Section 107A(b). It means that once a patented product
has been lawfully sold, the patent holder’s rights over that specific item are “exhausted”—the
patent owner cannot control its resale or importation.
There are three main types of exhaustion:
 1. National Exhaustion: Rights are exhausted only when the sale occurs within the
country. Sales abroad do not affect domestic rights.
2. Regional Exhaustion: A sale in one member country of a region (e.g., EU) exhausts
rights across that region.
3. International Exhaustion: A sale anywhere in the world exhausts patent rights globally,
allowing free trade of that item.
India follows the principle of international exhaustion, meaning that a lawful sale of a
patented item in any country extinguishes the patentee’s right to control its import into India.

5. India’s Policy Stance and TRIPS Compliance

India has consistently supported the international exhaustion model, particularly to ensure
affordable access to medicines and promote competition.
During the 2011 WTO TRIPS Review, India explicitly clarified that parallel imports are
permissible where the product is lawfully sold abroad, explaining that “the law” in Section
107A(b) refers to the law of the exporting country.
This interpretation aligns with Article 6 of the TRIPS Agreement, which leaves the issue of
exhaustion entirely to the discretion of member states. TRIPS cannot be used to challenge a
member’s national rule on parallel imports.
Thus, India’s position is fully TRIPS-compliant and reflects the balance between innovation
incentives and consumer welfare envisioned in the Doha Declaration on TRIPS and Public
Health (2001).

6. Economic and Policy Rationale

Advantages of Allowing Parallel Imports:
 Affordable Access: Encourages price competition, particularly for pharmaceuticals,
ensuring broader access to essential drugs.
 Consumer Welfare: Prevents patentees from engaging in excessive price discrimination
and market segmentation.
 Market Efficiency: Promotes global trade and arbitrage, aligning prices across markets
and benefiting developing economies.
  Public Health Priority: Supports the Indian government’s constitutional and policy
objectives to make medicines and technologies accessible to all.
Concerns and Criticisms:
 Erosion of Patentee Control: Reduces the patent holder’s ability to price products
differently across markets.
 Risk of Re-importation and Quality Variations: Differences in labeling, packaging, or
storage conditions could affect consumer experience.
 Reduced R&D Incentives: Some argue that lower returns might discourage future
innovation, especially in pharmaceuticals.
 After-Sales and Warranty Issues: Patentees may refuse service for goods not
distributed through official channels.
Despite these criticisms, India prioritizes public interest and affordability over strict control of
intellectual property rights.

7. Illustrative Example
Consider a patented cancer drug manufactured by Company X.
 In South Africa, it sells for ₹500 per dose.
 In India, the same drug sells for ₹2,000 per dose under Company X’s Indian subsidiary.
An Indian importer purchases the drug legally from a South African wholesaler (authorized
under South African law) and sells it in India for ₹1,000.
Under Section 107A(b), this does not constitute infringement, because the product came from
a person duly authorized under law to produce and sell it.

8. Comparison with Other IP Laws

 Copyright Act, 1957: Follows national exhaustion — parallel imports of copyrighted
works (like books or movies) are generally not allowed without permission.
 Trademarks Act, 1999: Follows a rule similar to international exhaustion, as genuine
goods lawfully sold abroad can be imported, provided there is no consumer confusion.
 Patents Act, 1970: Aligns with international exhaustion through Section 107A(b),
emphasizing public access and flexibility.
MEANING OF PATENT INFRINGEMENT
Patent infringement occurs when an individual or entity makes, uses, sells, offers to sell, or
imports a product or process that falls under the protection of a valid patent without obtaining
authorization from the patent holder. The essential idea behind patent protection is to grant the
patentee exclusive rights to commercially exploit the invention. Unauthorized exploitation,
therefore, amounts to infringement. To determine infringement, the allegedly infringing product
or process is compared to the claims of the patent, as these claims define the scope of protection.
Courts engage in a “claim construction” process to interpret these claims and decide whether the
accused act falls within their ambit.

2. Elements of Patent Infringement

Two basic elements constitute a patent infringement claim:
 Validity of the Patent: The patent must be legally valid, satisfying the requirements of
novelty, inventive step, and industrial applicability.
 Infringement: The defendant’s actions must fall within the patent’s claim scope. If the
patented features are found in the defendant’s product or process, infringement is
established.

3. Types of Patent Infringement

Patent infringement is generally classified into three major categories — direct, indirect, and
willful infringement.
 (a) Direct Infringement: This occurs when a person or company directly makes, uses,
sells, or imports a patented invention without the patentee’s permission. Examples
include manufacturing a patented product, using it in commercial activity, selling or
offering it for sale, or importing such products into a country where the patent is valid.
 (b) Indirect Infringement: This takes place when an entity aids or induces another to
infringe a patent. It includes:
o Contributory Infringement: Supplying essential elements of a patented
invention with the knowledge that it will be used to infringe.
o Induced Infringement: Encouraging or directing another person to infringe the
patent, often through instructions, advertising, or technical assistance.
  (c) Willful Infringement: Occurs when the infringer knowingly violates the patent
holder’s rights despite being aware of the patent’s existence. Courts may award enhanced
(punitive) damages in such cases.

4. Legislative Framework in India

India’s patent infringement laws are primarily governed by the Patents Act, 1970 and the
Patents Rules, 2003, along with India’s obligations under international treaties such as TRIPS.
 (a) The Patents Act, 1970:
o Section 48: Grants the patent holder exclusive rights to make, use, sell, or offer
for sale the patented invention.
o Section 104: Provides the right to initiate an infringement suit.
o Section 105: Specifies the jurisdiction for infringement cases.
o Section 107: Lists available defences, including challenging patent validity.
 (b) The Patents Rules, 2003: These rules outline procedural mechanisms for enforcing
patent rights, filing complaints, and defending against infringement claims.
 (c) International Framework (TRIPS Agreement): As a WTO member, India aligns its
patent protection and enforcement mechanisms with the Trade-Related Aspects of
Intellectual Property Rights (TRIPS) Agreement. The 2005 amendment to the Patents Act
brought Indian law into conformity with TRIPS obligations.
 (d) Amendments to Strengthen Protection: The Patents (Amendment) Act, 2005
introduced product patents, compulsory licensing provisions, and extended patent terms
to align with global standards.

5. Remedies for Patent Infringement

Patent holders have several remedies under law to address infringement —
 (a) Injunctive Relief: Courts may issue temporary or permanent injunctions to restrain
the infringer from continuing infringement activities.
 (b) Monetary Damages: This includes actual damages (losses suffered by the patentee)
and statutory or enhanced damages (for willful infringement).
 (c) Royalty Payments: Courts may direct infringers to pay royalties for continued use of
the invention.
  (d) Litigation Costs: In certain cases, courts may award costs, including attorney’s fees,
to the successful party.
 (e) Seizure of Infringing Goods: Courts may order the confiscation of infringing
products from the market.
 (f) Criminal Sanctions: Willful infringement, especially in cases involving
counterfeiting, may attract criminal penalties such as fines or imprisonment.

6. Defences Against Patent Infringement (Section 107)

The Patents Act provides several statutory defences to defendants in infringement suits,
including:
 Invalidity of Patent: Challenging the patent’s validity on grounds of lack of novelty,
inventive step, or non-patentable subject matter.
 Non-infringement: Asserting that the alleged act does not fall within the patent’s claim
scope.
 Research or Experimental Use: Limited use for research or experimentation is not
considered infringement.
 Compulsory Licensing: If the patentee has failed to commercially exploit the patent in
India, defendants may rely on compulsory licensing provisions.

7. Landmark Judicial Decisions

 Novartis AG v. Union of India (2013): The Supreme Court denied a patent for a
modified form of the cancer drug Glivec, ruling it lacked novelty and inventive step
under Section 3(d) of the Act. This case reinforced India’s strict standards for
patentability.
 Bayer Corporation v. Union of India (2012): The Delhi High Court upheld the grant of
India’s first compulsory license for Bayer’s cancer drug Nexavar, emphasizing public
interest and accessibility over monopoly rights.

RIGHTS OF PATENT HOLDERS

When a patent is granted under the Patents Act, 1970, the patentee is vested with a bundle of
exclusive rights to control, use, and exploit the patented invention. These rights are primarily laid
down under Section 48 of the Act and are conferred to ensure that inventors are adequately
rewarded for their innovation.
1. Exclusive Control Over the Invention
The patentee enjoys exclusive control over the use and commercialization of the invention.
 For a Product Patent: The patent holder can prevent others from making, using, selling,
offering for sale, or importing the patented product into India without authorization. For
instance, if the invention relates to a new machine or drug, no other person can
manufacture or sell it without the patentee’s consent.
 For a Process Patent: When the invention relates to a process or method of
manufacture, the patentee has the right to restrain others from using that process or from
using, selling, or importing products made by that process without permission.
This ensures that the inventor retains complete control over the commercial exploitation
of the invention.
2. Duration of the Patent
Under Section 53 of the Patents Act, 1970, a patent remains valid for 20 years from the date of
filing of the application, irrespective of whether it is a provisional or complete specification. In
the case of international filings under the Patent Cooperation Treaty (PCT), the term of 20
years begins from the international filing date. During this period, the patentee has full monopoly
rights to use, sell, or license the invention for commercial gains.
3. Right to Take Legal Action
If a third party uses the patented invention without permission, it amounts to patent
infringement. The patentee has the right to institute legal proceedings before the competent
court under Section 104 of the Act. Remedies available include:
 Injunction: A court order restraining the infringer from continuing the unauthorized use.
 Damages or Account of Profits: Compensation for financial loss or recovery of profits
earned by the infringer.
Additionally, an exclusive licensee may also file an infringement suit under specific
circumstances.
4. Dealing with the Patent as Property
A patent is treated as an intellectual property asset and can be commercially exploited. The
patentee may:
  Assign (sell) the patent to another person.
 License the invention for specific uses while retaining ownership.
 Collaborate or enter partnerships to exploit the patent.
If the government uses the patented invention for public purposes under Section 100, the
patentee is entitled to receive fair remuneration determined by mutual agreement or by
the court.

LIMITATIONS ON PATENT RIGHTS

While the Patents Act confers broad rights on inventors, it also imposes certain restrictions to
ensure public welfare, accessibility, and fair competition. These limitations are essential to
balance private monopoly rights with public interest.
1. Non-Patentable Inventions (Sections 3 & 4)
Certain subject matters are excluded from patent protection to prevent monopolies over natural
discoveries or socially sensitive inventions. These include:
 Frivolous inventions or those contrary to scientific laws.
 Inventions against morality or public order, or harmful to life or environment.
 Mere discoveries of natural substances or scientific principles.
 New forms of known substances without enhanced efficacy (to prevent “evergreening”
in pharmaceuticals).
 Mere admixtures or arrangements of known substances without inventive step.
 Agricultural or horticultural methods.
 Medical, surgical, or therapeutic treatments for humans or animals.
 Plants, animals, and biological processes (except microorganisms).
 Computer programs per se, algorithms, or mathematical methods.
 Artistic or literary works (covered under copyright).
 Traditional knowledge and atomic energy inventions (Section 4).
These exclusions maintain a balance between innovation and public accessibility.
2. Compulsory Licensing (Sections 84–92A)
The government may allow others to use a patented invention without the patentee’s consent in
the interest of the public.
 Grounds:
 o The patented invention is not available to meet public demand.
o The patented product is priced excessively.
o The invention is not worked in India.
 Timing: A compulsory license can be applied for after 3 years from the date of patent
grant.
 Special Situations:
o During national emergencies, health crises (like epidemics), or public non-
commercial use.
o Export of medicines to countries lacking manufacturing capacity.
 Royalty Payment: The licensee pays a reasonable royalty to the patentee. The license is
non-exclusive, ensuring broad accessibility.
3. Government Use (Section 100)
The government or an authorized person can use a patented invention for government purposes
(e.g., defence, public health, or essential services) without prior permission from the patentee.
However, the patentee is entitled to receive adequate compensation.
If the invention was tested or recorded by the government prior to the patent application, it can
be used without payment.
4. Reporting Requirements (Section 146)
Patent holders must periodically submit statements to the Patent Office regarding the
commercial working of their invention in India. This ensures transparency and helps monitor
whether patents are being exploited for public benefit.
5. Contractual Restrictions (Section 140)
Certain conditions in licensing or assignment contracts are deemed anti-competitive and void.
These include:
 Forcing the licensee to buy specific goods from the patentee.
 Preventing the licensee from using competing technology.
 Restricting challenges to the validity of the patent.
Such provisions ensure fair market practices and prevent abuse of patent rights.
6. Revocation of Patents (Sections 64–66)
A patent may be revoked under certain circumstances, such as:
 The invention is not patentable or lacks novelty/inventive step.
  The patent was obtained by fraud or misrepresentation.
 The invention is not worked in India despite compulsory licensing.
 The invention is contrary to public interest or relates to atomic energy.
7. Termination of Contracts (Section 141)
After a patent expires, any contractual license or lease associated with it automatically terminates
upon three months’ notice, allowing free public use of the invention.

KEY PENALTIES UNDER THE PATENTS ACT, 1970

1. Section 118 – Furnishing False Information
This provision penalizes individuals who knowingly provide false information or statements
during any stage of patent proceedings. Such false representations may occur during filing,
examination, or opposition of patents. The purpose of this section is to maintain the integrity and
transparency of the patent system. Anyone found guilty may face imprisonment of up to six
months, a fine, or both. This ensures that applicants and related parties remain truthful and
avoid manipulating the patent process.

2. Section 119 – Unauthorized Claim of Patent Rights

Section 119 addresses cases where a person falsely represents an article as patented or as the
subject of a pending patent application when it is not. Such misrepresentation can mislead
consumers or investors into believing that the product is officially protected by law. The penalty
for this offense is a fine that may extend up to ₹1,00,000. This section acts as a deterrent
against false advertising and unfair trade practices that exploit the credibility of the patent
system.

3. Section 120 – Wrongful Use of the Term “Patent Office”

The Patents Act reserves the term “Patent Office” for official governmental use. Section 120
penalizes any individual or organization that wrongfully uses the term “Patent Office” in their
business name, documentation, or advertisements to mislead the public. Such unauthorized use
may create confusion or falsely imply official endorsement. The penalty is a fine up to
₹1,00,000, ensuring the authenticity and credibility of the actual Patent Office are preserved.
4. Section 121 – Non-Compliance with Secrecy Directions
Under certain conditions, inventions related to defense or national security are subject to secrecy
directions under Section 35 of the Act. Section 121 imposes penalties on individuals who fail to
comply with these secrecy requirements. The punishment includes imprisonment, a fine, or
both, depending on the severity of the breach. The intent is to protect sensitive technologies
from being disclosed or misused in ways that could harm national interests.

5. Section 122 – Non-Furnishing of Information

Patent holders are required to provide specific information to the Controller of Patents, such as
details on the working of the patent in India (as per Section 146). Failure to furnish this
information, or knowingly providing false details, attracts penalties under Section 122. The
offender may be liable to pay a fine as determined by the authorities. This provision ensures that
patent rights are not merely held for monopoly purposes but are effectively contributing to
industrial and economic growth.

6. Section 124 – Unauthorized Practice as Patent Agent

Only individuals registered under the Act are authorized to act as patent agents and assist in
patent-related matters such as drafting and filing applications. Section 124 penalizes those who
practice as a patent agent without registration, maintaining professional integrity in the field.
The punishment includes imprisonment for up to six months, a fine, or both. This safeguards
inventors from unqualified or fraudulent intermediaries.

7. Section 125 – Liability for False Entries in the Register

The Register of Patents is a public record containing vital information about patents and their
ownership. Section 125 makes it an offense to make, cause, or procure false entries in this
register or to produce false documents for inclusion. The person committing such fraud may
face imprisonment or a fine, or both. The section upholds the accuracy and reliability of patent
records, which are essential for public trust and legal certainty.

8. Section 118A – Disclosure of Confidential Information

This section deals with the unauthorized disclosure of confidential information obtained
during the performance of official duties under the Patents Act. Individuals entrusted with
confidential patent data, such as patent office employees or examiners, must not reveal or misuse
such information. Violation leads to imprisonment, a fine, or both, depending on the gravity of
the breach. This ensures the protection of sensitive technical and commercial information that
inventors disclose during the patent process.