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INTELLECTUAL PROPERTY RIGHTS
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INTRODUCTION TO INTELLECTUAL PROPERTY

1.1 INTRODUCTION Invention is the process of devising and producing by independent investigation, experimentation, and mental activity something which is useful and which was not previously known or existing. An invention involves such high order of mental activity that the inventor is usually acclaimed even if the invention is not a commercial success. Inventiveness is the form of creativity leading to invention.1 Creativity is the ability to solve problems, create products or raise issues in a domain (e.g. cooking, engineering, law, music) that is initially novel but is eventually accepted in one or more cultural settings. Innovation, which may or may not include invention, is the complex process of Introducing novel ideas into use or practice and includes entrepreneurship as an integral part. Innovation is usually considered noteworthy only if it is a commercial success. Thus society benefits from innovation, not from invention alone, and often there is a significant lapse of time from invention to innovation. 1.2 AN OVERVIEW OF INTELLECTUAL PROPERTY Intellectual property rights are a bundle of exclusive rights over creations of the mind, both artistic and commercial. The former is covered by copyright laws, which protect creative works, such as books, movies, music, paintings, photographs, and software, and give the copyright holder exclusive right to control reproduction or adaptation of such works for a certain period of time. The second category is collectively known as industrial properties, as they are typically created and used for industrial or commercial purposes. A patent may be granted for a new, useful, and non-obvious invention and gives the patent holder a right to prevent others from practicing the invention without a license from the inventor for a certain period of time. A trademark is a distinctive sign which is used to prevent confusion among products in the marketplace.
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An industrial design right protects the form of appearance, style or design of an industrial object from infringement. A trade secret is an item of non-public information concerning the commercial practices or proprietary knowledge of a business. Public disclosure of trade secrets may sometimes be illegal. KEY OBJECTIVES After reading this chapter, you will be able to understand: Introduction, Invention and Creativity to Intellectual Property Rights Basic types of Intellectual property and its forms Importance and protection of Intellectual Property Rights An Overview of Intellectual Property Rights (IPR), Patents, Industrial Designs, Plant Varieties, copyrights, Trademarks, Geographical Indications.
1.3 IMPORTANCE- PROTECTION OF IPR Intellectual property plays an important role in an increasingly broad range of areas, ranging from the Internet to healthcare to nearly all aspects of science and technology and literature and the arts. Understanding the role of intellectual property in these areas many of them still emerging often requires significant new research and study. To promote informed discussion of the intellectual property, education and awareness in this field is important. Today, possession of land, labor and capital are just not enough for a country to succeed. Creativity and innovation are the new drivers of the world economy. The policies adopted by a country shall determine the nations well being and further as to how it is developing the trapped intellectual capital. An effective intellectual property system is the foundation of such a strategy. Within knowledge-based, innovation-driven economies, the intellectual property system is a dynamic tool for wealth creation providing an incentive for enterprises and individuals to create and innovate; a fertile setting for the development of, and trade in, intellectual assets; and a stable environment for domestic and foreign investment. 1.4 IMPORTANCE OF INTELLECTUAL PROPERTY Intellectual property protection is the key factor for economic growth and advancement in the high technology sector. They are good for business, benefit the public at large and act as catalysts for technical progress. Whether IPRs are a good or bad thing, the developed world has come to an accommodation with them over a long period. Even if their disadvantages sometimes outweigh their advantages, by and large the developed world has the national economic strength and established legal mechanisms to overcome the problems so caused. Insofar as their benefits outweigh their disadvantages, the developed world has the wealth and infrastructure to take advantage of the opportunities provided. It is likely that neither of these holds true for developing and least developed countries. (Extracts from Report on Commission on IPR London September 2002).
Why care about IPR? Patents benefit none other than the owner of the IP and add value to all industrial as well as business concerns and laboratory discoveries and in doing so provide incentives for private sector investment into their development. Anyone in the above business should have an independent Research and development (R&D) center. Offering free R&D and processes in over enthusiasm must be avoided. Globalization and the rapid proliferation of technology have elevated the importance of intellectual property protection for small and medium sized enterprises (SMEs). The intangible nature of intellectual property and the worldwide inconsistency of standard practices create challenges for those businesses wishing to protect their inventions, brands, and business methods in foreign markets. The three most common vehicles for protecting intellectual property are patents, trademarks, and copyrights. The Biotechnology Industry Organization advocates a strong and effective intellectual property system. Strong intellectual property protection is essential to the success, and in some instances to the survival, of the biotechnology companies in this country. For these companies, the patent system serves to encourage development of new medicines and diagnostics for treatment and monitoring intractable diseases, and agricultural products to meet global needs. While giving holistic interpretation to TRIPS agreement public health should be the prime consideration rather than merely protecting the interest of the companies. In the era of knowledge age or information age, the fundamental unit of most products and services is information in one or another form. Have you seen that n-number of websites, virtual enterprises and virtual products? All these rest upon the cornerstone of information: in digital or non-digital form. These have become the top IPR issues, this Internet shall bring several new IPR issues to the fore. In several cases such information is of proprietary nature, hence, the investment in that information product, knowledge product or the virtual product must be protected to encourage other similar initiatives. With increasing worldwide access to electronic distribution, the damage caused by piracy to content producers may completely destroy the value built in their intellectual property. The same context is valid in the case of companies who have earned consumer recognition for their brand names and trade marks. A recognized brand name or trade mark represents the goodwill that has been built into the product or service. Consumers tend to associate the recognized brand name or trade mark with certain characteristics that are specific to that name or mark. Therefore, companies should manage, protect and safeguard the investment in the related intellectual property rights. Not only this, they should be vigilant if anyone else is misusing or causing infringement of this Intellectual property. That is the crux of the intellectual property rights: to give credit where, and when, it is due. With the emergence of the knowledge society and virtual products, the issue of safeguarding the investment in the information-based products has certainly gained high
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importance. We, as consumers or producers in the information chain, cannot afford to be ignorant about the intellectual property rights!! Thus protection of IPR has definite (tangible) benefits, such as to propagate innovative culture, profitability, market leadership and helps creation of wealth for the individual and the nation. India falling one among the developing countries have miles to go, as she has a vulnerable collection of traditional, oral, folklore, customary, agricultural, traditional medicinal like Ayurveda etc. and besides not having much wealth and infrastructure, lack of awareness of IPRs among all stratas of people, is a major set back to a developing country like India. Definition of Intellectual Property : - This term includes, in the broadest sense, all rights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields. Most often one thinks of property as either movable property (e.g.,a radio or a coat) or immovable property (e.g., a house or land). One characteristic of these forms of property Is their tangible existence. In comparison, intellectual property law confers property rights on intangibles. Intellectual property has been characterized as: Classification of Intellectual Property:- Intellectual property in general is broken down into two major branches: industrial property and copyright law. A term of French origin, industrial property (properties industrial) cover artistic, musical, and literary works. The concept of Intellectual Property: - In general, the most important feature of property is that the proprietor or owner may use his property as he wishes and that nobody else can lawfully use his property without his authorization. Of course, there are certain recognized limits for the exercise of that right. For example, the owner of a piece of land is not always free to construct a building or whatever dimension he wishes, but must respect the applicable legal requirements and administrative decisions. 1.5 TYPES OF IPR 7 TYPES OF IPR UNDER WTO 1. Patent- Idea Invention which is New, Useful & Non obvious 2. Designs Pattern or Structure 3. Trademark Signs like Logo ,Symbol, Brand etc; used to identify goods or services 4. Copyright Expression of an Idea 5. Geographical Indication Goods known for its geographic origin 6. Lay out Designs for Integrated circuits 7. Undisclosed information (Trade secret ) Innovation or Know How
1.5.1 Patents A patent is a legal monopoly granted for a limited time to the owner of an invention. It empowers the owner of an invention to prevent others from manufacturing, using, importing or selling the patented invention. Patent Act, 1970 as amended in the years 1998 and 1999 along with Patent Rules, 1972 govern patents in India. This page gives information as to Indian Law on Patents and has full texts of Legislations, Cases and International Conventions. 1.5.2 Trade Mark Trademark means any mark used represent or identify a product or its maker. In a market economy trademarks are most important because it is the biggest assets of a company that really sells the products. This page gives information as to Indian Law on trademark and has full texts of Legislations, Cases and International Conventions. A Trademark can be generally defined as a sign or mark that individualizes and distinguishes the goods of a given enterprise from the goods of other enterprises. 1.5.3 Design Design means any features of shape, configuration, pattern, ornament or composition of lines or colours, industrially applied to an article or to a part, that gives aesthetic value to such article. Designs Act, 2000 deals with protection of industrial design in India. This page gives information as to Indian Law on Designs and has full texts of Legislations, Cases and International Conventions. What is a Design? Design can be described as the totality of the ornamental or aesthetic aspects of a useful article. Manufactures of diverse products such as shoes, clothing, consumer appliances, automobiles, furniture and computer software invest billions of dollars to develop industrial designs to make their products more attractive to consumers 1.5.4 Geographical Indications Geographical indication is an indication that identifies a good as originating in a territory where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. THE GEOGRAPHICAL INDICATIONS OF GOODS (Registration and Protection) RULES, 2000 Short title and commencement. (1) These rules may be called the GEOGRAPHICAL INDICATIONS OF GOODS (Registration and protection) Rules, 200. (2) They shall come into force on the date on which the Act comes into force.
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(3) Definitions.- In this rules, unless the context otherwise requires, a. Act means the GEOGRAPHICAL INDICATIONS OF GOODS (Registration and Protection) Act, 1999 (XLI of 1999; b) agent means a person authorized under Section 76. 1.5.5. Copyright Copyright is a bundle of exclusive rights granted by statute to the author of the works to exploit or authorize the exploitation of the copyright work, based on international norms like Berne Convention, Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement and WIPO Copyright Treaty (WCT). The copyright works in which rights subsist are original Literary, dramatic, musical and artistic works, and cinematography films and sounds recording. This page gives information as to Indian Law on Copyright and has full texts of Legislations, Cases and International Conventions. 1.5.6. Trade Secret Trade secret is a formula pattern, physical device, idea, process, compilation of information or other information that provides the owner of the information with a competitive advantage in the marketplace, and is treated in a way that can reasonably be expected to prevent the public or competitors from learning about it. The law relating to Trade Secrets/Confidential Information/Commercial Secrecy is not well develop0ed in India. There is no legislation regulating this area of law. India follows common law approach of protection based on the case laws. However, there is no decision of the Honorable Supreme Court laying down the law. The decisions of the High Court involving the issues of Trade Secret were decided based on the Copyright/ Design protection laws also. 1.5.7. Integrated Circuits A semiconductor chip is a device that gives effect to program instructions through a circuity fixed on a semiconductor material in a layered form. Popular examples of such chips are ROMs, RAMS etc. that the form the basis of computer software. The semi Conductor Integrated Circuits Layout Design Act, 2000. WHEREAS the Final Act embodying the results of the Uruguay Round of Multilateral Trade Negotiations done at Marrakesh oin the 15th day of April, 1994 provides for establishment of the world Trade Organization; AND WHEREAS the Agreement on Trade Related Aspects of Intellectual Property Rights is part of the said final Act TRANSFER OF TECHNOLOGY Technological competence is critical to, both development of an economy and in the competitiveness in the marketplace. Technology Transfer is the movement of technology from the holders of the technology to the recipients of it. INTERNATIONAL ARRANGEMENTS FOR TRANSFER OF TECHNOLOGY UNCTD In this
deliberation on the international arrangements for transfer of technology, the commission took note of the secretariat document available for consideration under this item. The compendium on transfer of technology provisions is a welcome contribution and should be updated, as necessary, and widely disseminated. The following chart clearly explains the classification of property PATENT LAW IN INDIA
PROPERTY
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PRIVATE
PUBLIC
TANGIBLE PROPERTY
INTANGIBLE PROPERTY
MOVABLE PROPERTY
IMMOVABLE PROPERTY
INTELLECTUAL RIGHT TO INDIVIDUAL SECURITIES REPUTATION
PATENT
COPYRIGHT
INDUSTRIAL DESIGN
TRADE SECRET
The following chart clearly explains the classification of Intellectual property

INTELLECTUAL PROPERTY
INDUSTRIAL PROPERTY
LITERARY PROPERTY
PATENT
TRADE MARKS
INDUSTRIAL DESIGNS
LAYOUT DESIGNS Etc.
COPYRIGHTS
NEIGHBORING RIGHTS
PRODUCT PATENT
PROCESS PATENT
PERFORMERS RIGHTS
BROADCASTING RIGHTS
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The history, the nature and working of the Patents and the legislation relating thereto, has been succinctly summarized in an article, by JUSTICE as. ANAND of the Supreme Court of India which is quite illuminating. Indian patent law has its roots in the UK Patents law. However, unlike Great Britain where the concept of a patent originated from the exercise of the Royal Prerogative to grant monopolies, in India a patent has always been the sole creation of statutes of Indian Legislature. The first Indian law relevant to Patents was enacted in 1856 for grant of exclusive privileges to inventors. This Act was however, found defective and was re-enacted in 1859. In 1872 the Patents and Designs Protection Act was passed followed by Inventions Act of 1883 and Invention and Designs Act of 1888. Subsequently, Indian Patents Act and Designs Act, 1911 was passed which replaced all previous legislations. The Indian Patent law excludes inter alias the following inventions from patentability if they are- a. contrary to law and morality, b. frivolous, c. mathematical formulae or abstract theory, d. living organisms per se, e. methods of agriculture and horticulture, f. foods and drugs per se, g. business methods and h. Topography of integrated circuits.
YEAR ACTS/AMENDMENTS patent law of 1852. Certain exclusive privileges granted to inventors of new manufacturers for a period of 14 years. 1859 The act modified as act xv; patent monopolies called exclusive privileges (making. Selling and using inventions in india and authorizing others to do so for 14 years from date of filing specification). 1872 The patents & designs protection act. 1883 The protection of inventions act.
1856 The act vi of 1856 on protection of inventions based on the british
1888Consolidated as the inventions & designs act. 1911The Indian patents & designs act. 1972The patents act (act 39 of 1970) came into force on 20th April 1972. 1999On March 26, 1999 Patents (Amendment) Act, (1999) Came Into Force From 01-01-1995. 2002The Patents (Amendment) Act 2002 Came Into Force From 2oth May 2003
1.6. LAW RELATING TO PATENTS IN INDIA In India, the national legal regime pertaining to patents is contained the patents Act, 1970 as amended by the Patents Amendment Act, 1999.This legislation has been enacted to amend and consolidate the law relating to Patents. The object f the patent law has been summed up by the Supreme Court India in M/s. Bishwanath prasad Radhey shyam vs. M/s. Hindustan Metal Industries, as under, which is self-explanatory. The object of Patent law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the patent Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain. Definition of Patent: - The word Patent originated from the Latin word Patene which means to open. The concept of patent system is very old one. One of the earliest systems was that originating in England during the reign of Queen Elizabeth A Patent is a legal document issued by the Government to an inventors his heirs, assigns, etc. It defines an invention and grants the right to prevent others from making, using, or selling the invention in the country. The rights exist for a definite period from the date of grant. Therefore, patent is a limited monopoly right granted by the Government to an inventor to use, exploits, work and sell his invention in respect of either a process or a product. The patent must be in respect of an invention and not of a discovery. The invention must be new, useful and industrially applicable. 1.7 SALIENT FEATURES OF PATENT The fundamental principle of patent law is that a patent is granted only for an invention which must be new and useful. In other words it must have novelty and utility. It is essential for the validity of a patent that it must be the investors own discovery as opposed to mere modification of what was already known before the date of the patent.
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The following propositions appears to be well-settled in relation to patents: The patent must be in respect of an invention and not a discovery. In respect of one single invention there must be one single patent. A Patent may be in respect of a substance or in respect of a process. In order to be patentable, the invention must be new, it must involve an inventive step and it must be industrially applicable. 1.8 ORIGINALITY OF INVENTIONS All the inventions in the literary sense are not inventions under the Act. The legislature has taken care to exclude certain items from the scope and purview of patents, by treating them as not being inventions. Section 3 of the Act lists out certain items as not inventions. They are a. An invention which is frivolous or which claims anything obviously contrary to well established natural laws; b. An invention the primary or intended use or commercial exploitation of which would be contrary to law or morality of which would be contrary to law or morality or injurious to public health; human, animal or plant life or to environment. c. The mere discovery of a scientific principle or the formulation of an abstract theory; or discovery of nay living or non-living substances occurring in nature. d. The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant; e. A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; f. The mere arrangement or rearrangement or duplication of known devices each functioning independently of one another in a known way;
g. A method of agriculture or horticulture; and h. Any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products etc. The second prerequisite of an invention is that it must be new. Novelty of an invention plays a significant role in the grant of patent. In other words, what has been patented once cannot be the subject matter of another patent because it is no longer new. The Supreme Court has observed, speaking through justice Sarkaria in Biswanath Prasad vs. Hindusthan Metal Industries, as under, which is quite relevant in this context.
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The fundamental principle of patent law is that a patent is granted only for a invention that must be new and useful. That is to say, it must have novelty and utility. It is essential for the validity of a patent that it must be the inventors own discovery as opposed to mere verification of what was already known before the date of the patent. 1.9 KINDS OF PATENTS Generally, the patents can be classified into two types viz 1. Process Patents and 2. Product Patents. Process Patent: Process patent means that when a substance is invented or produced, a patent is not granted to the substance itself but it is only the method or the process of manufacture of a substance that is granted a patent. Therefore the Patent is granted to the process but not to the product, in this kind of patent. Product Patents: In Product Patents, the Patent is granted not to the method or process of manufacture of a substance but to the substance itself. Therefore, in this kind of patent, it is the product that is covered and protected. 1.10 RIGHTS OF PATENTEES As we have already discussed, a patent is a grant conferring certain monopoly rights on the grantee for a definite period, subject to certain conditions. A grant of patent gives the patentee the exclusive right to make or use the patented article or use of the patented process. Apart from this right a patentee has also the powers to assign the patent, grant licenses under and deal with it otherwise; for any consideration. However, these rights are not absolute and are circumscribed by various conditions and limitations. The Patent Act, 1970 contains various provisions in Section 24, Chapter IVA, Sections 24-A to 24-F, 28, 48, 50, 53, 63 and 58 etc. relating to the specified or implied rights of the patentees. For the sake of convenience and easy comprehension, the same have been summarised as under: Rights in respect of Patents Granted before the Patents Act, 1970 commenced (Under Section 48): Once a patent is granted, the patentee has the exclusive right to make use, exercise, sell or distribute the patented article or substance in India. In case of a process patent he has the right to use or exercise the method or process. These rights can be exercised not only by the patentee but also by his agents or licensees. This right to exploit the patent can be graphically explained as under:
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Rights granted to patentees in respect of patents granted Under the Act (Sec 48 etc.) Once a patent is granted, the patentee has the exclusive right to make use, exercise, sell or distribute the patented article or substance in India. In case of a process patent he has the right to use or exercise the method or process. These rights can be exercised not only by the patentee but also by his agents or licensees. This right to exploit the patent can be graphically explained as under: Right to assign and license A patentee is vested with the power to assign, grant licenses or to deal with the patent for a consideration. This is in a case where the patentee himself is not willing to work the patent. If there are more than one owner of the patent, the co-owner can assign his share of the patent or grant licenses in respect thereof, provided the other co-owners consent and permitted by the controller. Right to surrender the patent Under Section 63 of the Act, the patentee has the right to surrender his patent. A patentee, at any time by giving notice in the prescribed manner. When such an offer is made, the controller should advertise the offer with a view to notifying every person other than the patentee whose name appears in the register as having an interest in the patent. It is necessary to protect the interests of persons like licensees, equitable assignees, and others with whom the patentee might have contractual obligations which are dependent on the continuance of the patent. Rights before sealing The patentee enjoys certain rights even before the sealing of the patent also, under Section 24 of the Act. Under this provision, on and from the date of advertisement of the acceptance of a complete specification and until the date of sealing of patent, the applicant will be entitled to the like privileges and rights as if a patent for the invention had been sealed on the date of advertisement of acceptance of the complete specification. However, the applicant will not be entitled to institute any legal proceedings for infringement until the patent has been sealed. Right to apply for patents of addition Chapter IX of the Act, Sections 54 deal with patents of addition. A patent of addition is the improvement or modification of an invention disclosed in the complete specification of the main invention. Under Section 54 of the Act, a patentee has a right to apply for a patent of addition relating to his main invention.
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Right in case of infringements Infringement is the violation of the violation of the rights conferred by the grant of patent. It consists in the violation of any of the rights like the exclusive right to make, use, exercise, sell or distribute the invention in India. Whenever a patent is infringed, the patentee has a right to institute suits in a court of law, not inferior to a District Court having jurisdiction to try the suit. The patentee may bring in suit for declaration, injuction and also for damages and account of profits Right to make a convention application Every patentee in India has a right to make a convention application or a basic application, for protection of his patent in other convention countries, in case of international instruments being signed by India and those other convention countries. Generally, this right is dependent on the principle of reciprocity and national treatment in international law. However, this position is proposed to be changed under the 2002 (Am) Act which provides for filing of an International application under the PCT. Right to make a convention application If a Patent is lost or destroyed or its non-production is explained satisfactorily to the controller, the patentee has a right to apply for a duplicate patent; and Right to be supplied copies and certificates Certified copies of any entry in the register, or certificates of or extracts from patents, specifications and other public documents in the patent office or from the registers and other records kept there, may be obtained by the patentees and also others by paying the prescribed fee. 1.11. LIMITATIONS OF THE RIGHTS OF PATENTEES It has been already mentioned here before that the rights of the patentees are not absolute. They are subject to many limitations and restrictions which are mentioned briefly hereunder. Use for Experiment, Research and Teaching Any machine, article or apparatus in respect of which patent is granted or any process patent may be used by any person for the purpose only of experiment or research including the imparting of instructions to pupils; not withstanding the rights of the patentee. Use by Government Any patented product or process may be used by the Government for its exclusive use or on behalf of it. The Government may also import such product or patent. Obviously, such a provision has been made in the interest of public service.
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Compulsory Licenses If the patent has not been worked so as to satisfy the reasonable requirements of the public at a reasonable price, the controller may grant compulsory licenses to any applicant to work the patent. Further the central Government also has the power to declare that compulsory licenses should be granted in respect of any patent or class of patents. The controller decides the terms of the license. In case of patents related to food, medicine or drug they are deemed to be endorsed with the words Licenses of right after the expiration of three years from the date of sealing. The legal effect of such an endorsement is that, any person interested in working the patented invention may require the patentee to grant him a licensee on terms mutually agreed upon or settled by the controller. Invention for Defense Purposes Certain inventions relevant for defence purposes may be subjected secrecy provisions by the controller. He may direct restrict or prohibit the publication or communication of information relating to such inventions. In such an event application will not be refused but the complete specification if accepted, will not be advertised and no patent will be granted for the invention. During the continuance of such directions, the central Government may use the invention by debarring the applicant from using it provided the royalties are paid to him. Use in Foreign Vessels etc. Where a vessel or aircraft registered in a foreign country or a land vehicle owned by a foreigner comes to India or its territorial waters temporarily or accidently, the patented article, substance or process may be used in such vessels, and aircrafts etc., without infringing the rights of the patentee legally. Such a use must be for its actual needs or in the consultation or working of the aircraft, or land vehicle only to a foreign vessel, aircraft or land vehicle owned by residents of only those countries which confer similar rights on the residents of India. In other words, this right and limitation are based on the principle of national treatment. 1.12. DUTIES OF PATENTEE The patent granted confers not only certain rights on the patentee but also imposes certain duties and obligations. If the patent is not used and the granted monopoly is abused, compulsory license may be granted to any person who is willing to work the patent or even the patent also may be revoked. It is the implied duty of the patentee to work the patent is India in such a manner so as not to deprive the reasonable requirements of the public and also to make the products of patent available to the public at reasonable prices. Further, the patentees are restrained from making baseless and unjustifiable threats of an action for infringement of the patent. Similarly, every patentee should submit periodical statements to
the controller as to the extent to which the patented invention has been worked on a commercial basis in India. Failure to supply such information is punishable. 1.13 INFRINGEMENT OF PATENTS The monopoly of a patentee over his patent may be violated by unscrupulous elements. If the rights in relation to patent are infringed, the patented has right to take recourse to legal action. What constitutes infringement of a patent is not defined in the Patents ac, 1970. However it may be understood as violation of the monopoly rights of the patentee to make, use, exercise, sell or distribute the invention in India. Infringer is a person who actually manufacturers a patented article without authorization, or uses a patented process likewise. Similarly any one who uses, exercises sells or distributes a patented article or process without any lawful authority would be an infringer. However an innocent use of a patent, use for experiments and instructions, use of invention in foreign vessels do not amount infringements Where the infringer has taken all the essential features claimed in the patent, while manufacturing an article, it will be a direct infringement. Where he uses all features claimed in the patent but alters one or more unessential feature then also it will be an infringement but since it is indirect it is called colorable imitation. Copying the essential features of the invention is sometimes referred to as taking the pith and marrow of the invention. Time of Infringement Remedy for infringement Limitation period Who can file a suit? Who may petition the High Court Who may be sued? Defenses available to Defendants Relieves that may be granted THE DESIGNS ACT, 1911 Definitions: -In this Act, unless there is anything repugnant in the subject or context: design - means only the features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any more or principle of construction or anything which i sin substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2. of the Trade and Merchandise Marks Act, 1958, or property mark as defined in section 479 of the Indian Penal Code
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Registration of Designs The Controller may, on the application of any person claiming to be the proprietor of any new or original design not previously published in India, register the design under this Part. The application must be made in the prescribed form and must be left at the Patent Office in the prescribed manner and must be accompanied by the prescribed fee. The same design may be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the Controller may decide the question. The Controller may, if he thinks fit, refuse to register any design presented to him for registration; but any person aggrieved by any such refusal may appeal to the Central Government. An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be A Design when registered shall be registered of the date of the application for registration,
Certificate of registration The Controller shall grant a Certificate of registration to the proprietor of the design when registered. The Controller may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate.
Copyright in Registered Designs When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration. If before the expiration of the said five years application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of five years. If before the expiration of such second period of five years application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller may, subject1Dany roles under this act, on payment of the prescribed fee, extend the period of copyright for a third period of five years from the expiration of the second period of five years.
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Relevant provisions of geographical indications of- goods Geographical identification, in relation to goods, means identification Which identifies such goods as agricultural goods, natural goods or Manufactured goods as originating, or manufactured in the territory, of a country, or a region or locality in that territory, where a given quality reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be, Explanation; --For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be; Goods means any agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes foodstuff; Indication includes any name, geographical. or figurative representation or any combination of them conveying or suggesting the geographical origin of goods to which it applies; Name includes any abbreviation of a name; Package includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork; Prescribed means prescribed by rules made under this Act; Producer in relation to goods, means any person who,1.14. THE REGISTER AND CONDITIONS FOR REGISTRATION Registrar of Geographical Indications: The controller General of Patents, Designs and Trade Marks appointed under subsection (1) of section 3 of the Trade Marks Act, 1999, shall be the Registrar of Geographical Indications. The Central Government may appoint such officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act, as he may from time to time authorize them to discharge
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For the purposes of this Act, a record called the Register of Geographical Indications shall be kept at the head office of the Geographical Indications Registry, wherein shall be entered all registered geographical indications with the names, addresses and descriptions of the proprietors, the names, addresses and descriptions of authorized user and such other matters relating to registered geographical indications as may be prescribed and such registers may be maintained wholly or partly on computer. Notwithstanding anything contained in sub-section (1), it shall be lawful for the Registrar to keep the record-s wholly or partly in computer floppies or diskettes or in any other electronic form, subject to such safeguards as may be prescribed Where such register is maintained wholly or partly in computer floppies or diskettes or in any other electronic form under sub-section (1), any reference in this Act to any entry in the register shall be construed as the reference to the entry as maintained on computer floppies or diskettes or in the other electronic form, as the case may be. No notice of any trust, express or implied or constructive, shall be entered in the register and no such notice shall be receivable by the Registrar. Subject to the superintendence and direction of the Central Government, the register shall be kept under the control and management of the Registrar REVIEW QUESTIONS 1) Define Invention, Innovation and Creativity 2) Discuss importance of IPR 3) Classify IPR 4) Explain Copy rights and Trademark 5) Discuss salient features of Patent laws in India 6) Discuss kinds of Patents and the rights of a patentee 7) Discuss limitations of the rights of patentees
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INTERNATIONAL PROTECTION OF INTELLECTUAL PROPERTY RIGHTS

2.1. ESTABLISHMENT OF WIPO The roots of the World Intellectual Property Organization go back to 1883, when Johannes Brahms was composing his third Symphony, Robert Louis Stevenson was writing Treasure Island, and John and Emily Roebling were completing construction of New Yorks Brooklyn Bridge. The need for international protection of intellectual property became evident when foreign exhibitors refused to attend the International Exhibition of Inventions in Vienna in 1873 because they were afraid their ideas would be stolen and exploited commercially in other countries. 1883 marked the birth of the Paris Convention for the Protection of Industrial Property, the first major international treaty designed to help the people of one country obtain protection in other countries for their intellectual creations in the form of industrial property rights, known as: inventions (patents) trademarks industrial designs
The Paris Convention entered into force in 1884 with 14 member States, which set up an International Bureau to carry out administrative tasks, such as organizing meetings of the member States. In 1886, copyright entered the international arena with the Berne Convention for the Protection of Literary and Artistic Works. The aim of this Convention was to help nationals of its member States obtain international protection of their right to control, and receive payment for, the use of their creative works such as:
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novels, short stories, poems, plays; songs, operas, musicals, sonatas; and drawings, paintings, sculptures, architectural works.
Like the Paris Convention, the Berne Convention set up an International Bureau to carry out administrative tasks. In 1893, these two small bureaux united to form an international organization called the United International Bureaux for the Protection of Intellectual Property (best known by its French acronym BIRPI). Based in Berne, Switzerland, with a staff of seven, this small organization was the predecessor of the World Intellectual Property Organization of today - a dynamic entity with 184 member States, a staff that now numbers some 938, from 95 countries around the world, and with a mission and a mandate that are constantly growing. As the importance of intellectual property grew, the structure and form of the Organization changed as well. In 1960, BIRPI moved from Berne to Geneva to be closer to the United Nations and other international organizations in that city. A decade later, following the entry into force of the Convention Establishing the World Intellectual Property Organization, BIRPI became WIPO, undergoing structural and administrative reforms and acquiring a secretariat answerable to the member States. In 1974, WIPO became a specialized agency of the United Nations system of organizations, with a mandate to administer intellectual property matters recognized by the member States of the UN. In 1978, the WIPO Secretariat moved into the headquarters building that has now become a Geneva landmark, with spectacular views of the surrounding Swiss and French countryside. WIPO expanded its role and further demonstrated the importance of intellectual property rights in the management of globalized trade in 1996 by entering into a cooperation agreement with the World Trade Organization (WTO). The impetus that led to the Paris and Berne Conventions - the desire to promote creativity by protecting the works of the mind - has continued to power the work of the Organization, and its predecessor, for some 120 years. But the scope of the protection and the services provided have developed and expanded radically during that time. In 1898, BIRPI administered only four international treaties. Today its successor, WIPO, administers 24 treaties (three of those jointly with other international organizations) and carries out a rich and varied program of work, through its member States and secretariat, that seeks to:
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harmonize national intellectual property legislation and procedures, provide services for international applications for industrial property rights, exchange intellectual property information, provide legal and technical assistance to developing and other countries, facilitate the resolution of private intellectual property disputes, and marshal information technology as a tool for storing, accessing, and using valuable intellectual property information.
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The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. WIPO was established by the WIPO Convention in 1967 with a mandate from its Member States to promote the protection of IP throughout the world through cooperation among states and in collaboration with other international organizations. Its headquarters are in Geneva, Switzerland. The Director General is Francis Gurry. IP PROTECTION WTO & WIPO A streamlined and efficient patent protection, in addition to the industrys maturing relationship with capital markets is the hallmarks of a countrys global leadership. In contrast, most developing countries do not have strong IPR regimes and suffer negative effects of brain drain. The reason being, lack of effective copyright laws, which force scientists and technicians to immigrate to countries, where competitors protect their research from unfair exploitation. The World Trade Organization (WTO) is the only global international organization dealing with the rules of trade between nations. At its heart are the WTO agreements, negotiated and signed by the bulk of the worlds trading nations and ratified in their parliaments. The goal is to help producers of goods and services, exporters, and importers conduct their business. The World Trade Organization (WTO) is the only international organization dealing with the global rules of trade between nations. Its main function is to ensure that trade flows as smoothly, predictably and freely as possible.
WHAT IS WTO? Location Established Created by Membership Budget : : : : : Geneva, Switzerland 1 January 1995 Uruguay Round negotiations (1986-94) 149 countries (on 11 December 2005) 175 million Swiss francs for 2006
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Secretariat staff Head Functions
: :
635 Pascal Lamy (Director-General)
Administering WTO trade agreements Forum for trade negotiations Handling trade disputes Monitoring national trade policies Technical assistance and training for developing countries Cooperation with other international organizations
2.2. THE 10 BENEFITS OF WTO 1. The system helps promote peace 2. Disputes are handled constructively 3. Rules make life easier for all 4. Freer trade cuts the costs of living 5. It provides more choice of products and qualities 6. Trade raises incomes 7. Trade stimulates economic growth 8. The basic principles make life more efficient 9. Governments are shielded from lobbying 10. The system encourages good government The World Intellectual Property Organization (WIPO) is an international organization dedicated to promoting the use and protection of works of the human spirit. These works intellectual property are expanding the bounds of science and technology and enriching the world of the arts. Through its work, WIPO plays an important role in enhancing the quality and enjoyment of life, as well as creating real wealth for nations. With headquarters in Geneva, Switzerland, WIPO is one of the 16 specialized agencies of the United Nations system of organizations. It administers 23 international treaties dealing with different aspects of intellectual property protection. The Organization counts 183 nations as. Please visit the links below for more information both general and specific on WIPO.
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WIPO Today 1974: Specialized Agency of UN 1970: WIPO 1893: BIRPI 1883:Paris Convention
Status: An intergovernmental organization Member States: 183 Staff: 915 from 94 countries Treaties Administered: 23 Guiding Principles: Transparency Accountability Consensus To promote the protection of intellectual property throughout the world through co-operation among States and, were appropriate, in collaboration with any other international organization To ensure administrative co-operation among the intellectual property Unions, that is, the Unions created by the Paris and Berne Conventions and several subtreaties concluded by members of the Paris Union. Promotion of intellectual property protection worldwide Promotion of creative and intellectual activity Facilitation of technology transfer and dissemination of literary and artistic works Modernization and strengthening of administrative systems
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2.3. WTO WIPO COOPERATION AGREEMENT

S.NO. Article 1. 2. 3. 4. 5. Purpose
Article 1 Convention, Standards and Emblem accepted Article 2 Laws and Regulations Article 3 Implementation of article 6 ter of Paris convention for the purpose of TRIPS agreement.
Article 4 Legal-Technical assistance and Technical cooperation. Article 5 Final clause-Entry into force, amendment of this agreement
How WIPO Works The terms governing WIPOs mandate, functions, finances and procedures are set out in the WIPO Convention. Member States WIPOs Member States determine the strategic direction and activities of the Organization. They meet in the Assemblies, committees and working groups. There are currently 184 Member States, i.e. over 90 percent of the countries of the world. Secretariat The WIPO Secretariat, or International Bureau, is based in Geneva. WIPO staff, drawn from more than 90 countries, include experts in diverse areas of IP law and practice, as well as specialists in public policy, economics, administration and IT. The respective divisions of the Secretariat are responsible for coordinating the meetings of Member States and implementing their decisions; for administering the international IP registration systems; for developing and executing the programs designed to achieve WIPOs goals; and for providing a repository of IP expertise to assist its members. Core Tasks of WIPO WIPOs activities are conducted within the strategic framework set out in the biennial Program and Budget document and are driven by demand from Member States. They fall broadly into the following areas.
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Developing international IP laws and standards WIPO is responsible for promoting the progressive development and harmonization of IP legislation, standards and procedures among its Member States. This includes further development of international laws and treaties regarding patents; trademarks, industrial designs and geographical indications; and copyright and related rights. WIPO is also working with Member States to explore IP issues in the area of traditional knowledge, traditional cultural expressions and genetic resources. WIPO handles the administration of 24 international treaties (16 on industrial property; 7 on copyright; plus the convention creating WIPO). Delivering global IP protection services WIPO administers fee-based services, based on international agreements, which enable users in member countries to file international applications for patents (PCT), and international registrations for trademarks (Madrid system), designs (Hague System), and appellations of origin (Lisbon System). WIPO administers four IP classification systems, which organize the mass of information concerning inventions, trademarks, and industrial designs into indexed, manageable structures for easy retrieval. WIPOs Arbitration and Mediation Center offers dispute resolution services to businesses and individuals, including in the growth area of Internet domain name disputes. Encouraging the use of IP for economic development WIPO runs a range of programs aimed at increasing the effective use of IP by developing nations as a tool for economic development. Programs include technical assistance in support of member countries initiatives to improve their IP legislative, institutional and human resources framework; strategies for innovation promotion and IP exploitation; economic studies and material to inform public policy choices. Promoting better understanding of IP WIPO creates and disseminates a wealth of public outreach material. This aims to encourage creativity and innovation; and to increase understanding of how to protect and benefit from the resulting IP. Seminars and information products also target specific groups, such as creators, small and medium-sized enterprises, research institutions and policymakers. Other awareness-raising activities contribute to Member States efforts in the area of enforcement of IP rights.
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Providing a forum for debate WIPO meetings regularly bring together stakeholders from governments, rights-holders groups and civil society in order to facilitate constructive debate on current challenges. WIPO also commissions and publishes studies on emerging issues. 2.4. GATT The General Agreement on Tariffs and Trade (GATT) Introduction The General Agreement on Trade and Tariff (GATT) was set up on October 30, 1947 in Geneva with 23 countries as its founder members, and India was one of them. It was originally set up as a temporary arrangement to bring about trade liberalisation. India has always been an active champion of multilateral trade negotiations. GATT later became an important and permanent set-up to attend to all trade issues among member countries. Its membership also got enlarged to practically all the members of the United Nations, except the communist countries and East European countries. 2.4.1 Objectives of GATT The broad aim of GATT has been to reduce the trade restrictions put up by individual nations in pursuit of their narrow national interests. The goal was to achieve through multilateral negotiations, settling of all trade disputes through a set of rules and regulations evolved by GATT for its members. The other objective was to aim at tariff concessions for exports and imports among the countries, with a view to aim at developing the full use of the resources of the world and expanding trade. GATT always permitted exception to its general rules, which require the eventual elimination of all import restrictions. It was always subject to safeguards intended to protect legitimate interests of other trading nations. The most important exceptions given by GATT were the special protection given to agriculture by most nations and allow many import restrictions to protect the farmers. Their rules also made import restrictions to protect the farmers. Their rules also made exceptions in the case of countries, which were in balance of payments difficulties. 2.4.2. Work done by the GATT From 1947 to 1967, GATT sponsored six rounds of multilateral trade negotiations mainly with a view to bring down the trade barriers by persuading countries to bring down their import levies with a view to greater exchange of goods and more trade flow. The sixth round brought the weighted average tariff of major trading nations to be reduced by 2% on raw materials and 7.7% on industrial products.
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GATT played a prominent role in the settlement of trade disputes between two countries. GATT played a useful role between 1947 and 1973. But in the seventies there were many changes, which occurred in the world economy. The fixed system exchange rate was moving towards a floating system of exchange parity. The oil prices quadrupled in 1973, and threatened to increase further. There was a worldwide economic recession in 1974-75. Many of the developing countries had diversified their export base, and were becoming competitors to developed countries. In 1974, the next round of multilateral negotiations were commenced by GATT, and it was concluded in 1979 at Tokyo, and was referred to as Tokyo round of negotiations. Here tariffs were lowered by 27% to an average level of 5%. Certain non-tariff barrier agreements and codes were also agreed to. An eighth round of trade negotiations under the auspices of GATT was launched in the mid eighties. This was known as Uruguay Round. Apart from the usual exercise to bring down the trade barriers, it also attempted to draft trading rules to cover four major sectors, not previously regulated. These were agriculture, services, investment, and intellectual property rights (patents, trademarks copyrights etc). It was also decided that an institutional framework was to be given to GATT, and thus was born World Trade Organisation (WTO which was to replace GATT as an apex trade policy body. The discussions, many times very vociferous, continued for eight long years. Many of the developing countries put forward their view strongly to protect their economies, and in the Intellectual Property Rights discussion India played a prominent part and changing many of the original stringent changeover for the developing countries. It also protected the age old traditions of the farmers to have the right to their own seed protection and various other clauses which may have a bearing on our agriculture. The discussions dragged on and ultimately a deadline was given that it should be completed at a conference in Morocco and the new organisation WTO should come into existence on 1st January 1995. Accordingly all the countries who are members of the GATT signed the WTO agreement and lodged the instrument of ratification on January 1, 1995. 2.4.3. Patent Cooperation Treaty Summary of the Patent Cooperation Treaty (PCT) (1970) The Patent Cooperation Treaty makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an international patent application. Such an application may be filed by anyone who is a national or resident of a PCT contracting State. It may generally be filed with the national patent office of the contracting State of which the applicant is a national or resident or, at the applicants option, with the International Bureau of WIPO in Geneva.
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If the applicant is a national or resident of a contracting State which is party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Bangui Agreement, or the Eurasian Patent Convention, the international application may also be filed with the European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO), The African INtellectual Property Organization (OAPI) or the Eurasian Patent Office (EAPO), respectively. The Treaty regulates in detail the formal requirements with which any international application must comply. The filing of a PCT application automatically has the effect of the designation of all PCT contracting States. The effect of the international application in each designated State is the same as if a national patent application had been filed with the national patent office of that State. The international application is subjected to what is called an international search. That search is carried out by one of the major patent offices [1] and results in an international search report, that is, a listing of the citations of published documents that might affect the patentability of the invention claimed in the international application. In addition, a preliminary and non-binding, written opinion on whether the invention appears to meet the patentability criteria in light of the search report results is also issued. The international search report and the written opinion are communicated to the applicant who, after evaluating their content, may decide to withdraw his application, in particular where the content of the report and opinion suggest that the granting of patents is unlikely, or he may decide to amend the claims in the application. If the international application is not withdrawn, it is, together with the international search report, published by the International Bureau. The written opinion is not published at this time. If the applicant decides to continue with the international application with a view to obtaining national (or regional) patents, he can, in relation to most contracting States, wait until the end of the thirtieth month from the priority date to commence the national procedure before each designated Office by furnishing a translation (where necessary) of the application into the official language of that Office, paying to it the necessary fees and acquiring the services of local patent agents. If the applicant wishes to make amendments to the application, for example, in order to overcome documents identified in the search report and conclusions made in the written opinion, and to have the potential patentability of the as-amended application reviewed, the optional international preliminary examination may be used. The result of the preliminary examination is an international preliminary report on patentability (IPRP Chapter II) which is prepared by one of the major patent offices [2] and which contains, once again, a
preliminary and non-binding opinion on the patentability of the claimed invention. It provides the applicant with an even stronger basis on which to evaluate his chances of obtaining patents, and, if the report is favorable, a stronger basis on which to continue with his application before the national and regional patent Offices. The procedure under the PCT has great advantages for the applicant, the patent offices and the general public: (i). applicants have up to 18 months more than if they had not used the PCT to reflect on the desirability of seeking protection in foreign countries, to appoint local patent agents in each foreign country, to prepare the necessary translations and to pay the national fees; (ii). applicants can rest assured that, if their international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by any PCT contracting State patent Office during the national phase of the processing of the application; (iii).on the basis of the international search report and the written opinion, applicants can evaluate with reasonable probability the chances of their invention being patented; (iv).applicants have the possibility during the optional international preliminary examination to amend the international application and thus put it in order before processing by the various patent Offices; (v). the search and examination work of patent Offices can be considerably reduced or eliminated thanks to the international search report, the written opinion and, where applicable, the international preliminary report on patentability which are communicated to the national and regional Offices together with the international application; (vi).since each international application is published together with an international search report, third parties are in a better position to formulate a well-founded opinion about the potential patentability of the claimed invention; and (vii).for applicants, international publication puts the world on notice of their applications, which can be an effective means of advertising and looking for potential licensees. 2.5. PATENT COOPERATION TREATY (PCT) a multilateral treaty which became effective in 1978 that eliminates some of the duplication involved when obtaining patent protection for the same invention in several countries. More than 40 nations are signatories of the PCT; with the PCT it is possible to file and prosecute a single international application, which has the same effect as filing a separate application in each PCT nation that the inventor designates at the time of filing the application.
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The treaty that facilitates filing of international applications between 40 (Sept. 1988) member countries. It permits the applicant to file a single international application that will be equivalent to a national filing in each of the countries designated on the application. The Patent Cooperation Treaty (PCT) provides a unified procedure for filing patent applications to protect inventions worldwide, or more precisely in about 125 countries. A single filing results in a single search accompanied with a written opinion (and optionally a preliminary examination), after which the examination (if provided by national law) and grant procedures are handled by the relevant national or regional authorities. It simplifies the process of obtaining patents in many countries. A PCT application for the invention of interest is filed with the PCT authorities, which preliminarily assess the inventions patentability. The assessment helps one decide if the cost and effort of pursuing patent protection for the invention in specific countries is justifiable. The PCT is administered by the World Intellectual Property Organization (WIPO) in Geneva PCT is becoming more and more popular among the (115) member countries. According to the statistic of World Intellectual Property Organization (WIPO), nearly 104,000 International applications under the PCT were filed representing 14.3% increase on the number of applications filed in 2000. Major user of PCT are: USA 38% GERMANY 13% JAPAN 11% U.K. 62% FRANCE 4%
Other countries that have taken part in the PCT International application are India, Columbia, Equator, Philippines, Oman, Zambia and Tanzania.
2.5.1. Ultimately, the PCT brings the world within reach; postpones the major costs associated with international patent protection; provides a strong basis for patenting decisions; and is used by the worlds major corporations, research institutions and universities when they seek international patent protection.
The PCT created a Union, which has an Assembly. Every State party to the PCT is a member of the Assembly.
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The Assembly of the PCT Union has established a special measure to the benefit of (1) natural persons who are nationals of and reside in States whose per capita national income is below US$ 3,000, and (2) applicants, whether a natural person or not, who are nationals of and reside in States which are classed as least developed countries by the United Nations. That benefit consists of a reduction of 75 percent of certain fees under the Treaty. Details concerning the PCT can be obtained by consulting the PCT website as well as the PCT Applicants Guide, published by WIPO in English and French (there are also Chinese, German and Japanese editions, which are not published by WIPO) and the PCT Newsletter, published by WIPO in English. The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in 2001. It is open to States party to the Paris Convention for the Protection of Industrial Property (1883). Instruments of ratification or accession must be deposited with the Director General of WIPO. 2.6 TRIPS AGREEMENT THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS) The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), negotiated during the Uruguay Round, introduced intellectual property rules for the first time into the multilateral trading system. The Agreement, while recognizing that intellectual property rights (IPRs) are private rights, establishes minimum standards of protection that each government has to give to the intellectual property right in each of the WTO Member countries. The Member countries are, however, free to provide higher standards of intellectual property rights protection. The Agreement is based on and supplements, with additional obligations, the Paris, Berne, Rome and Washington conventions in their respective fields. Thus, the Agreement does not constitute a fully independent convention, but rather an integrative instrument which provides Conventionplus protection for IPRs. The TRIPS Agreement is, by its coverage, the most comprehensive international instrument on IPRs, dealing with all types of IPRs, with the sole exception of breeders rights. IPRs covered under the TRIPS agreement are: (a) Copyrights and related rights; (b) Trade marks; (c) Geographical Indications;
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(d) Industrial Designs (e) Patents (f) Layout designs of integrated circuits; and (g) Protection of undisclosed information (trade secrets). The TRIPS agreement is based on the basic principles of the other WTO Agreements, like non-discrimination clauses - National Treatment and Most Favoured Nation Treatment, and are intended to promote technological innovation and transfer and dissemination of technology. It also recognizes the special needs of the least-developed country Members in respect of providing maximum flexibility in the domestic implementation of laws and regulations. Part V of the TRIPS Agreement provides an institutionalized, multilateral means for the prevention of disputes relating to IPRs and settlement thereof. It is aimed at preventing unilateral actions. 2.6.1. (a) Copyrights and related rights Part II Section 1 (Article 9 to Article 14) of the TRIPS agreement deals with the minimum standard in respect of copyrights. Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings. It is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work. The Copyright Act, 1957 protects original literary, dramatic, musical and artistic works and cinematograph films and sound recordings from unauthorized use. Unlike the case with patents, copyright protects the expressions and not the ideas. There is no copyright in an idea. The general rule is that a copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author. In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and works of international organizations, the 60-year period is counted from the date of publication. The Copyright Act, 1957 came into effect from January 1958. This Act has been amended five times since then, i.e., in 1983, 1984, 1992, 1994 and 1999, with the amendment of 1994 being the most substantial. The Copyright Act, 1957 continues with the common law
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THE TRIPS AGGREEMENT Agreements on Trade Related aspects of Intellectual Property rights (TRIPs) came into effect on January 1,1995. It was a major outcome of the Uruguay Round of multilateral trade negotiations, which led to the establishment of the World Trade Organization (WTO). Developing country members of the WTO have had to comply with all the provisions of TRIPS since January 1, 1996. For developing countries, the transitional arrangements incorporated into TRIPS allow a gradual phasing-in a period of 5 years till January 1, 2000. Such a phasing-in period is also permitted to former centrally planned economies, which are now in the process of transition to the market economy.
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Copyrights in the TRIPS Agreement Protection of works covered by Berne Convention. (Art.9) Protection of computer programs as literary works and of compilations of data. (Art.10) Recognition of rental rights, at least for phonograms, computer programs, and for cinematographic works. (Art.11) Recognition of a 50 years minimum term for works owned by juridical persons, and for performers and phonogram producers. (Art 12) Exceptions to exclusive rights must be limited to special cases, which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the rights-holder. (Art 13) Recognition of rights of performers, producers, of phonograms and broadcasting organizations. (Art.14)
Developments elsewhere have brought about a certain degree of convergence in copyright regimes in the developed world. The Copyright Act is compliant with most international conventions and treaties in the field of copyrights. India is a member of the Berne Convention for the Protection of Literary and Artistic Works of 1886 (as modified at Paris in 1971), and the Universal Copyright Convention of 1951. Though India is not a member of the Rome Convention of 1961, the Copyright Act, 1957 is fully compliant with the Rome Convention provisions. Two new treaties, collectively termed as Internet Treaties, were negotiated in 1996 under the auspices of the World Intellectual Property Organization (WIPO). These treaties are called the WIPO Copyrights Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT). These treaties were negotiated essentially to provide for the protection of the rights of copyright holders, performers and producers of phonograms in the Internet and digital era. India is not a member of these treaties as yet.
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2.6.2. (b) Trademarks Part II Section 2 (Article 15 to Article 21) of the TRIPS agreement contains the provisions for minimum standards in respect of Trademarks. A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or marks on their artistic or utilitarian products. Over the years these marks evolved into todays system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs. A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or Trademark in the TRIPS Agreement: Protectable subject matter includes any sign, combination of signs capable of distinguishing the goods or services from others. Registration depends on distinctiveness end use. (Art 15) Rights on the owners of registered trademark conferred to prevent third party not having his consent, from using in course of trade relating to identical goods/ services. (Art. 16) Exception to exclusive rights must be limited and take into account the legitimate interest of the trademark owner and of third parties. (Art. 17) The minimum term of protection is seven years, indefinitely renewable.(Art.18) Requirements for use are to be limited in terms of both the minimum period of nonuse and the admissibility of reasons for non-use. (Art.19) Special requirements for use are limited, as well as the conditions of licensing and assignment of trademarks. (Art 20) A trademark may be assigned without transfer of the business to which it belongs.(Art. 21)
To authorize another to use it in return for a payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees. Trademark protection is enforced by the courts, which in most systems have the authority to block trademark infringement. There are two international treaties governing Trademarks - the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. In India, the Trade Marks Act, 1999 was passed on 30th December 1999 and came into force on 15th September 2003. Before commencement of this Act, the Trade & Merchandise Marks Act governed the protection of trademarks in India, which has now been replaced by the Trade Marks Act. The Trade Marks Act, 1999 is in coherence with
the provisions of the TRIPS Agreement. The new Act provides for registration of trademarks for services in addition to goods, and has increased the period of registration and renewal from 7 yrs to 10 yrs. 2.6.3 (c) Geographical Indications (GI) Section 3 Part II (Article 22 to Article 24) of the TRIPS Agreement contains the provisions for minimum standards in respect of geographical indications. Geographical Indications of Goods are defined as that aspect of intellectual property which refers to the geographical indication referring to a country or to a place situated therein as being the country or place of origin of that product. Typically, such a name conveys an assurance of quality and distinctiveness which is essentially attributable to the fact of its origin in that defined geographical locality, region or country. Under Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property, geographical indications are covered as an element of IPRs. GI in the TRIPS Agreement Legal means shall be provided to prevent use of an indication in a manner that misleads the public or when it constitutes unfair competition, and to invalidate a trademark if the public is misled as to the true place of origin. (Art.22) Additional protection is conferred on geographical indications for wines and spirits, including ways of protecting homonymous indications. (Art.23) Negotiations shall be undertaken to establish a multilateral system of notification and registration, aimed at increasing the protection of indications for wines and spirits.(Art.24) Exceptions to the required protection may be based on prior and continuous use of an indication, prior application or registration in good faith of a trademark, or on the customary use of the indication. (Art.24) Obligations only relate to geographical indications that are protected in their country of origin. (Art 24)
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In India, the Geographical Indications of Goods (Registration and Protection) Act, 1999 came into force with effect from 15th September 2003. This Act seeks to provide for the registration and protection of Geographical Indications relating to goods in India. The Controller General of Patents, Designs and Trade Marks is also the registrar for the Geographical Indications, and the Geographical Indications Registry is located at Chennai. 2.6.4. (d) Industrial Designs (ID) Section 4, Part II (Article 25 and Article 26) of the TRIPS Agreement contains the provisions for minimum standards in respect of Industrial designs.
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Industrial designs are an element of intellectual property. Industrial designs refer to creative activity, which result in the ornamental or formal appearance of a product. Design rights refer to a novel or original design that is accorded to the proprietor of a validly registered design. But it does not include any mode or principle or construction or any thing which is in substance a mere mechanical device. India has already amended its national legislation to provide for these minimal standards. The essential purpose of the Designs Act, 2000 is to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The present legislation is aligned with the changed technical and commercial scenario and conforms to the international trends in design administration. Under the Designs Act, the designs would not include any trade mark, as defines in the Trade Marks Act or property mark or artistic works as defined in the Copyright Act. The duration of the registration of a design is initially ten years from the date of registration, but in cases where claim to priority has been allowed the duration is ten years from the priority date. This initial period of registration may be extended by further period of 5 years on an application before the expiry of the said initial period of Industrial Design in the TRIPS Agreement: Protection to new or original designs. (Art.25) Protection for textile designs through industrial design or copyright law. (Art 25). Exclusive rights can be exercised against acts for commercial purposes, including importation. (Art 26) Minimum Term of Protection is ten years. (Art 26)
Copyright The proprietor of a design may make an application for such an extension as soon as the design is registered. 2.6.5. (e) Patents Section 5 Part II of the TRIPS Agreement (Article 27 to Article 34) contains the provisions for standards in respect of the Patents. A Patent is an exclusive right granted by a country to the inventor to make, use, manufacture and market the invention that satisfies the conditions of novelty, innovativeness and usefulness Members are required to comply with the Paris Convention for the Protection of Industrial Property. Introduction of Patent Law in India took place in 1856 whereby certain exclusive privileges to the inventors of new inventions were granted for a period of 14 years. Presently,
the patent provisions in India are governed by the Patents Act, 1970. The Indian Patents Act is fully compatible with the TRIPS Agreement, following amendments to it; the last amendment being in 2005 by the Patents (Amendment) Act, 2005. Product patents in the field of pharmaceuticals and agro-chemicals have been introduced by deleting Section 5 of the Patents Act. Those inventions which are considered a mere discovery of a new form of a known substance or mere discovery of a new property or new use will not be considered patentable. A provision for patenting of software that is embedded in hardware has also been introduced in the Patents Act. The term of every patent is now for 20 years from the date of filing. Provisions for the pre-grant opposition to the grant of patents have also been incorporated in the Act. Earlier such provisions were available only for post-grant opposition. The filing date of a patent application and its complete specification will now be the Patents in the TRIPS Agreement: Patents shall be granted for any inventions, whether products or processes, in all field of technology, provided they are new, involve an inventive step and are capable of industrial application. No discrimination in respect to place of invention. Exception available for diagnostic, therapeutic and surgical methods of treatment for humans or animals, as well as plants and animals and essentially biological processes for the production thereof. (Art.27) Exclusive right to owners against third party for using subject matter including process of patent, without his consent. (Art 28) Inventions shall be disclosed in a manner, which is \sufficiently clear and complete for a skilled person in the art to carry out the invention. (Art. 29) Limited exceptions to the exclusive rights provided such exception do not conflict with normal exploitation of the patent. (Art.30) Revocation/forfeiture is subject to judicial review. (Art 32) The term of protection shall be at least 20 years from the date of application. (Art.33) Reversal off the burden of proof in civil proceedings relating to infringement of process patents is to be established in certain cases. (Art.34)
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International date of filing for the patent as per the provisions of the Patent Cooperation Treaty A provision has also been introduced in the Patents Act to enable the grant of compulsory licenses for the export of medicines to countries with limited or no manufacturing capacities to meet emergent public health situations. The law effectively balances and
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calibrates intellectual property protection with public health concerns and national security. This provision is in line with the Decision of the WTO of 30 August 2003 on the Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health. 2.6.6. (f) Layout Designs of Integrated Circuits Articles 35 to 38 of Section 6/Part II of the TRIPS agreement contains the provisions for protection of rights in respect of Layout Designs of Integrated Circuits. The basis for protecting integrated circuit designs (Topographies) in the TRIPS Agreement is the Washington Treaty on Intellectual Property in Respect of Integrated Circuits, 1989. India is a signatory to this international agreement. In India, the IPRs on the layout designs of integrated circuits are governed by the Semiconductor Integrated Circuits Layout-Design Act, 2000. Under this Act, a layout-design shall be considered original if it is the result of its creators own intellectual efforts and is not commonly known to the creators of layoutdesigns and manufacturers of semiconductor integrated circuits at the time of its creation. But a layout-design, which is not original, or which has been commercially exploited anywhere in India or in a convention country; or which is not inherently distinctive; or which is not inherently capable of being distinguishable from any other registered layout-design, shall not be registered as a layout-design. But if a layout-design which has been Lay out Design in the TRIPS Agreement: Protection in accordance with Treaty on Intellectual Property in Respect of Integrated Circuit. (Art.35) Protection shall extend to layout designs as such and to the industrial articles that incorporate them. (Art.36) Bona fide purchasers of products involving infringing layout designs shall be liable to pay compensation to the rights-holder after. (Art.37) Term of protection is a minimum of 10 years notification. (Art 38)
Commercially exploited for not more than two years from the date on which an application for its registration has been filed either in India or in a convention country shall be treated as not having been commercially exploited. The registration of a layout-design shall be only for a period of ten years counted from the date of filing an application for registration or from the date of first commercial exploitation anywhere in India or in any country whichever is earlier. No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered layout-design.
2.6.7. (g) Protection of undisclosed information Article 39 of Section 7 Part II of the TRIPS agreement elaborates on the protections of trade secrets. A Trade Secret or undisclosed information is any information that has been intentionally treated as secret and is capable of commercial application with an economic interest. It protects information that confers a competitive advantage to those who possess such information, provided such information is not readily available with or discernible by the competitors. They include technical data, internal processes, methodologies, survey methods used by professional pollsters, recipes, a new invention for which a patent application has not yet been filed, list of customers, process of manufacture, techniques, formulae, drawings, training material, source code, etc. Trade Secrets can be used to protect valuable know how that gives an enterprise a competitive advantage over its competitors. The Agreement provides that natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by or used by others without their consent in a manner contrary to honest commercial practices. Further, parties are required to protect against unfair Trade Secrets in the TRIPS Agreement Undisclosed information is to be protected against unfair commercial practices, if the information is secret, has commercial value and is subject to steps to keep it secret. Secret data submitted for the approval of new chemical entities for pharmaceutical and agrochemical products should be protected against unfair commercial use and disclosure by governments. commercial uses, undisclosed or other data obtained as a condition of approving the marketing of pharmaceutical or of agricultural chemical products.
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There is no specific legislation regulating the protection of trade secrets. India follows common law approach of protection based on contract laws. 2.7 ISSUES UNDER NEGOTIATIONS IN THE TRIPS COUNCIL OF THE WTO A. Relationship between TRIPS Agreement and the Convention on Biological Diversity (CBD) and Protection of Traditional Knowledge. B. Additional protection to geographical indications (GIs) to products other than wines and spirits. C. Multilateral GI Register for wines and spirits. D. Non-Violation and Situation Complaints.
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2.8 BERNE CONVENTION Summary of the Berne Convention for the Protection of Literary and Artistic Works (1886) The Convention rests on three basic principles and contains a series of provisions determining the minimum protection to be granted, as well as special provisions available to developing countries which want to make use of them. (1). The three basic principles are the following: (a). Works originating in one of the contracting States (that is, works the author of which is a national of such a State or works which were first published in such a State) must be given the same protection in each of the other contracting States as the latter grants to the works of its own nationals (principle of national treatment) [1]. (b). Such protection must not be conditional upon compliance with any formality (principle of automatic protection) [2]. (c). Such protection is independent of the existence of protection in the country of origin of the work (principle of the independence of protection). If, however, a contracting State provides for a longer term than the minimum prescribed by the Convention and the work ceases to be protected in the country of origin, protection may be denied once protection in the country of origin ceases [3]. (2). The minimum standards of protection relate to the works and rights to be protected, and the duration of the protection: a) As to works, the protection must include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression (Article 2(1) of the Convention). b) Subject to certain permitted reservations, limitations or exceptions, the following are among the rights which must be recognized as exclusive rights of authorization: the right to translate, the right to make adaptations and arrangements of the work, the right to perform in public dramatic, dramatico-musical and musical works, the right to recite in public literary works, the right to communicate to the public the performance of such works, the right to broadcast (with the possibility of a contracting State to provide for a mere right to equitable remuneration instead of a right of authorization), the right to make reproductions in any manner or form (with the possibility of a contracting State to permit, in certain special cases, reproduction without authorization provided that the reproduction does not conflict with the normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author, and with the possibility of a contracting State to provide, in the case of sound recordings of musical works, for a right to equitable remuneration),
the right to use the work as a basis for an audiovisual work, and the right to reproduce, distribute, perform in public or communicate to the public that audiovisual work [4].
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The Convention also provides for moral rights, that is, the right to claim authorship of the work and the right to object to any mutilation or deformation or other modification of, or other derogatory action in relation to, the work which would be prejudicial to the authors honor or reputation. c) As to the duration of protection, the general rule is that protection must be granted until the expiration of the 50th year after the authors death. There are, however, exceptions to this general rule. In the case of anonymous or pseudonymous works, the term of protection expires 50 years after the work has been lawfully made available to the public, except if the pseudonym leaves no doubt as to the authors identity or if the author discloses his identity during that period; in the latter case, the general rule applies. In the case of audiovisual (cinematographic) works, the minimum term of protection is 50 years after the making available of the work to the public (release) orfailing such an eventfrom the creation of the work. In the case of works of applied art and photographic works, the minimum term is 25 years from the creation of such a work [5]. (3) Countries regarded as developing countries in conformity with the established practice of the General Assembly of the United Nations may, for certain works and under certain conditions, depart from these minimum standards of protection with regard to the right of translation and the right of reproduction. The Berne Union has an Assembly and an Executive Committee. Every country member of the Union which has adhered to at least the administrative and final provisions of the Stockholm Act is a member of the Assembly. The members of the Executive Committee are elected from among the members of the Union, except for Switzerland, which is a member ex officio. The establishment of the biennial program and budget of the WIPO Secretariatas far as the Berne Union is concernedis the task of its Assembly. The Berne Convention, concluded in 1886, was revised at Paris in 1896 and at Berlin in 1908, completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at Stockholm in 1967 and at Paris in 1971, and was amended in 1979. The Convention is open to all States. Instruments of ratification or accession must be deposited with the Director General of WIPO. 2.9 ROME CONVENTION Summary of the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (1961)
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The Convention secures protection in performances of performers, phonograms of producers of phonograms and broadcasts of broadcasting organizations. 1. Performers (actors, singers, musicians, dancers and other persons who perform literary or artistic works) are protected against certain acts they have not consented to. Such acts are: the broadcasting and the communication to the public of their live performance; the fixation of their live performance; the reproduction of such a fixation if the original fixation was made without their consent or if the reproduction is made for purposes different from those for which they gave their consent. Producers of phonograms enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms. Phonograms are defined in the Rome Convention as meaning any exclusively aural fixation of sounds of a performance or of other sounds. When a phonogram published for commercial purposes gives rise to secondary uses (such as broadcasting or communication to the public in any form), a single equitable remuneration must be paid by the user to the performers, or to the producers of phonograms, or to both; contracting States are free, however, not to apply this rule or to limit its application. Broadcasting organizations enjoy the right to authorize or prohibit certain acts, namely: the rebroadcasting of their broadcasts; the fixation of their broadcasts; the reproduction of such fixations; the communication to the public of their television broadcasts if such communication is made in places accessible to the public against payment of an entrance fee.
2.
3.
The Rome Convention allows exceptions in national laws to the above-mentioned rights as regards private use, use of short excerpts in connection with the reporting of current events, ephemeral fixation by a broadcasting organization by means of its own facilities and for its own broadcasts, use solely for the purpose of teaching or scientific research and in any other casesexcept for compulsory licenses that would be incompatible with the Berne Conventionwhere the national law provides exceptions to copyright in literary and artistic works. Furthermore, once a performer has consented to the incorporation of his performance in a visual or audiovisual fixation, the provisions on performers rights have no further application. Protection must last at least until the end of a period of 20 years computed from the end of the year in which: (a). the fixation was made, for phonograms and for performances incorporated therein; (b). the performance took place, for performances not incorporated in phonograms; (c). the broadcast took place, for broadcasts. (However, national laws ever more frequently provide for a 50-year term of protection, at least for phonograms and for performances.)
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WIPO is responsible, jointly with the ILO and UNESCO, for the administration of the Rome Convention. These three organizations constitute the Secretariat of the Intergovernmental Committee set up under the Convention and consisting of the representatives of 12 Contracting States. The Convention does not provide for the institution of a Union or a budget. It establishes an Intergovernmental Committee composed of Contracting States, that considers questions concerning the Convention. This Convention is open to States party to the Berne Convention for the Protection of Literary and Artistic Works (1886) or to the Universal Copyright Convention. Instruments of ratification or accession must be deposited with the Secretary-General of the United Nations. States may make reservations with regard to the application of certain provisions. REVIEW QUESTIONS 1) Explain the core task of WIPO 2) Explain salient features of GATT 3) Discuss the importance of TRIPS agreement 4) Discuss the impact of PCT 5) Write notes on (i). Bern convention (ii). (ii) Rome convention 6) Salient features of WIPO
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UNIT III
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PATENTS
3.1. INTRODUCTION TO PATENTS- OVERVIEW A patent is a set of exclusive rights granted by a state to an inventor or his assignee for a limited period of time in exchange for a disclosure of an invention. The procedure for granting patents, the requirements placed on the patentee and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims defining the invention which must be new, inventive, and useful or industrially applicable. In many countries, certain subject areas are excluded from patents, such as business methods and mental acts. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission.[1] The term patent usually refers to a right granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. The additional qualification utility patents is used in the United States to distinguish them from other types of patents but should not be confused with utility models granted by other countries. Examples of particular species of patents for inventions include biological patents, business method patents, chemical patents and software patents. Some other types of intellectual property rights are referred to as patents in some jurisdictions: industrial design rights are called design patents in some jurisdictions (they protect the visual design of objects that are not purely utilitarian), plant breeders rights are sometimes called plant patents, and utility models or Gebrauchsmuster are sometimes called petty patents or innovation patents. This article relates primarily to the patent for an invention, although so-called petty patents and utility models may also be granted for inventions. Certain grants made by the monarch in pursuance of the royal prerogative were sometimes called letters patent, which was a government notice to the public of a grant of
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an exclusive right to ownership and possession. These were often grants of a patent-like monopoly and predate the modern British origins of the patent system. For other uses of the term patent see Land patents, which were land grants by early state governments in the USA. This reflects the original meaning of letters patent that had a broader scope than current usage. 3.2. KEY OBJECTIVES After reading this chapter, you will be able to understand: A general view about Patents and an introduction Historical development, concepts on Novelty, Utility, Non-Obviousness. An idea about Patentable and Non Patentable Inventions. Basic procedure for Filing of patents and its acquisition. The different compulsory Licenses & patent offices in India and jurisdiction.
PATENTSWHAT IT IS A Patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product for those purposes. The purpose of this system is to encourage inventions by promoting their protection and utilization so as to contribute to the development of industries, which in turn, contributes to the promotion of technological innovation and to the transfer and dissemination of technology. Under the system, Patents ensure property rights (legal title) for the invention for which patent has been granted, which may be extremely valuable to an individual or a Company. One should make the fullest possible use of the Patent System and the benefits it provides. Patent right is territorial in nature and a patent obtained in one country is not enforceable in other country. The inventors/their assignees are required to file separate patent applications in different countries for obtaining the patent in those countries. Historical development 3.3. HISTORY OF INDIAN PATENT SYSTEM The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the sovereign. Fresh legislation for granting exclusive privileges was introduced in 1859 as Act XV of 1859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions only and extension of priority period from 6 to 12 months. The Act excluded importers from the definition of inventor. The 1856 Act was
based on the United Kingdom Act of 1852 with certain departures including allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty. The Act of 1859 provided protection for invention only and not for designs whereas United Kingdom had been protecting designs from 1842 onwards. To remove this lacuna, the Patterns and Designs Protection Act (Act XIII) was passed in 1872. This Act amended the 1859 Act to include any new and original pattern or design or the application of such pattern to any substance or article of manufacture within the meaning of new manufacture. The Act XV of 1859 was further amended in 1883 by XVI of 1883 to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibitions of India. A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition. In 1888, new legislation was introduced to consolidate and amend the law 7 relating to invention and designs in conformity with the amendments made in the UK law. The modifications introduced in the Indian law, by Act V of 1888, over the UK legislation, inter alia, includes : Shifting of authority to administer the Act from the Home department to Secretary to Government of India; Extension of the jurisdiction of the Act to other courts apart from High Courts of Madras, Calcutta and Bombay; Reduction in the fee from Rs. 100 to Rs. 10 only at filing stags; Graduation of fee as to amend approximately with the increasing value with the invention acquires as it becomes more commonly known and used. Provision for detailed disclosure of the invention, including best mode of working the invention in full clear, concise and exact terms so as to enable any person skilled in the art or science to make use of the invention; Provision of powers to call for a model of the invention; Change of time for filing petition in respect of patent granted in United Kingdom from 12 months from the letters patent to 12 months from the date of sealing; Powers to extend the term of exclusive privileges by 7 years ordinarily and 14 years in exceptional cases. Provision for granting compulsory licence where invention is not made accessible to public, on reasonable terms; Appointment of Agents to encourage filing by foreign inventor; Introduction of provision for protection of new or original design; Provision for counting the grace period for filing application for invention displayed in the Exhibition from the date of admission of the invention into the Exhibition instead of the date of the opening of the Exhibition.
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In 1911, the Indian Patents and Designs Act, 1911, (Act II of 1911) was brought in replacing all the previous legislations on patents and designs. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was amended in 1920 to provide for entering into reciprocal arrangements with UK and other countries for securing priority. In 1930, further amendments were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, another amendment was made to provide for filing of provisional specification and submission of complete specification within nine months. After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its objective. It was found desirable to enact comprehensive patent law owing to substantial changes in political and economic conditions in the country. Accordingly, the Government of India constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a 8 retired Judge of Lahore High Court, in 1949, to review the patent law in India in order to ensure that the patent system is conducive to the national interest. The terms of reference included (a) to survey and report on the working of the patent system in India; (b) to examine the existing patent legislation in India and to make recommendations for improving it, particularly with reference to the provisions concerned with the prevention of abuse of patent rights; (c) to consider whether any special restrictions should be imposed on patent regarding food and medicine; (d) to suggest steps for ensuring effective publicity to the patent system and to patent literature, particularly regarding patents obtained by Indian inventors; (e) to consider the necessity and feasibility of setting up a National Patents Trust; (f) to consider the desirability or otherwise of regulating the profession of patent agents (g) to examine the working of the Patent Office and the services rendered by it to the public and make suitable recommendations for improvement; and (h) to report generally on any improvement that the Committee thinks fit to recommend for enabling the Indian Patent System to be more conducive to national interest by encouraging invention and the commercial development and use of inventions. The Committee submitted its interim report on 4th August, 1949 with recommendations for prevention of misuse or abuse of patent right in India and for amendments to sections 22, 23 & 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts of 1919 and 1949. The main recommendations of the Committee were as follows:-
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a. Any interested person may apply for a compulsory licence or revocation of the patent on any of the following grounds, namely (i). patented invention, being capable of being commercially worked in India, is not being commercially worked therein to the fullest possible extent; (ii). demand for the patented article in India is not being met to an adequate extent or on reasonable terms; (iii).commercial working of the invention in India is being prevented or hindered by the importation of the patented articles; and (iv).the refusal of the patentee to grant a licence or licences on reasonable terms, whereby the commercial or industrial activities in India are prevented or hindered; b. for obtaining relief against abuse of patent rights, an application can be made to the Controller of Patents and Designs any time after the sealing of the patent and the order of the Controller to be appealable before the 9 appellate authority which should be an ad-hoc Special Tribunal nominated by the Central Government consisting of (i). a sitting or retired judge of a High Court ( as the President), (ii). a barrister or advocate of not less than ten years standing, preferably conversant with patent law and procedure, and (iii).a technical expert in the particular subject with which the patent in question is concerned The functions of the Special Tribunal should be judicatory and not advisory, and its decisions should be final and it should have the power to award costs. The committee also observed that the Patents Act should contain clear indication to ensure that food and medicine and surgical and curative devices are made available to the public at the cheapest price commensurate with giving reasonable compensation to the patentee. Based on the above recommendation of the Committee, the 1911 Act was amended in 1950 (Act XXXII of 1950) in relation to working of inventions and compulsory licence/ revocation. Following grounds were provided for making applications for compulsory licence: (a) patented invention, being capable of being commercially worked in India, is not being commercially worked therein to the fullest possible extent; (b) demand for the patented article in India is not being met to an adequate extent or on reasonable terms; (c) commercial working of the invention in India is being prevented or hindered by the importation of the patented articles; (d) the refusal of the patentee to grant a licence or licences on reasonable terms, the commercial or industrial activities in India are prevented or hindered;
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(e) a market for the export of the patented article manufactured in India is not being supplied; (f) the working or efficient working in India of any other patented invention which makes a substantial contribution to the establishment or development of commercial or industrial activities in India is unfairly prejudiced; and (g) conditions of licence unfairly prejudiced the establishment or development of commercial or industrial activities in India. The time period prescribed for making the applications was at any time after expiration of three years from the date of sealing. The application could also be made by the licencee. The term, patented article included any article made by a patented process. Other provisions were related to endorsement of the patent with the words licence of right on an application by the Government so that the Controller could grant licences. In 1952, an amendment was made to provide 10 compulsory licence in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices, through Act LXX of 1952 . The compulsory licence was also available on notification by the Central Government. Based on the recommendations of the Committee, a bill was introduced in the Parliament in 1953 (Bill No.59 of 1953). However, the bill lapsed on dissolution of the Lok Sabha. In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to examine the question of revision of the Patent Law and advise government accordingly. The report of the Committee, which comprised of two parts, was submitted in September, 1959. The first part dealt with general aspects of the patent law and the second part gave detailed note on the several clauses of the lapsed bill of 1953. The first part also dealt with evils of the patent system and solution with recommendations in regard to the law. The committee recommended retention of the patent system, despite its shortcomings. This report recommended major changes in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on 21st September, 1965, which, however, lapsed. In 1967, an amended bill was introduced which was referred to a Joint Parliamentary Committee and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911 Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought into force on 20th April, 1972 with the publication of the Patents Rules, 1972. The salient features of the Patents Act, 1970 are: Elaborate definition of invention No product patents for substances intended for use as food, drugs and medicines including the product of chemical processes Codification of certain inventions as non-patentable Mandatory furnishing of information regarding foreign application
Adoption of absolute novelty criteria in case of publication Expansion of the grounds for opposition to the grant of a patent Exemption of certain categories of prior publication, prior communication and prior use from anticipation Provisions for secrecy of inventions relevant for defence purposes Provision for use of inventions for the purpose of Government or for research or instruction to pupils Reduction in the term of patents relating to process in respect of substances capable of being used as food or as medicine or drugs Enlargement of the grounds for revocation of a patent Provision for non-working as ground for compulsory licences, licences of right, and revocation of patents Additional powers to Central Government to use an invention for purposes of government including Government undertakings Prevention of abuse of patent rights by making restrictive conditions in licence agreements/contract as void11 Provision for appeal to High Court on certain decisions of the Controller Provision for opening of branches of the Patent Office.
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This Act remained in force for about 24 years till December 1994 without any change. An ordinance effecting certain changes in the Act was issued on 31st December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was later replaced by the Patents (Amendment) Act, 1999 that was brought into force retrospectively from 1st January, 1995. The amended Act provided for filing of applications for product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were not allowed. However, such applications were to be examined only after 31st December, 2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights (EMRs) to sell or distribute these products in India, subject to fulfilment of certain conditions. The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May, 2003 with the introduction of the new Patents Rules, 2003 by replacing the earlier Patents Rules, 1972. Salient features of the Patents (Amendment) Act, 2002 were: Further codification of non patentable inventions 20 years term of patent for all technology Provision for reversal of burden of proof in case of process patents Provisions of compulsory licences to meet public health concerns Deletion of provision of licence of right
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Introduction of system of deferred examination Mandatory publication of applications after 18 months from the date of filing Provision for process patent for micro organisms Establishment of Appellate Board Provision for parallel imports Provision for exemption from infringement proceedings for use of a patented invention for obtaining regulatory approval for a product based on that patented invention Provision to protect biodiversity and traditional knowledge.
The third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act, 2005 (Act 15 Of 2005 ) on 4th April, 2005 which was brought into force from 1st January, 2005. The salient features of this amendment are Extension of product patents to all fields of technology including food, drugs, chemicals and micro organisms12 Deletion of the provisions relating to Exclusive Marketing Rights (EMRs) Introduction of a provision for enabling grant of compulsory licence for export of medicines to countries which have insufficient or no manufacturing capacity to meet emergent public health situations Modification in the provisions relating to opposition procedures with a view to streamlining the system by having both pre-grant and postgrant opposition in the Patent Office Strengthening the provisions relating to national security to guard against patenting abroad of dual use technologies Rationalisation of provisions relating to time-lines with a view to introducing flexibility and reducing the processing time for patent application.
3.4. NOVELTY, NON-OBVIOUSNESS AND INDUSTRIAL APPLICABILITY Section 2. Definitions and interpretation. (j) invention means a new product or process involving an inventive step and capable of industrial application; Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;
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(l) new invention means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art; (m patent means a patent for any invention granted under this Act; A patent is granted for an invention. An invention is defined in section 2(1)(j) as a new product or process involving an inventive step and capable of industrial application. Therefore, the criteria for an invention to be patentable are (i). it must be novel; (ii). it must have an inventive step; and (iii).it must be capable of industrial application. Further, the invention should not fall under any of the categories of Inventions Not Patentable mentioned under sections (3) and (4) of the Patents Act, 1970. NOVELTY OF INVENTION 3.2.1 General Principle: An invention is considered new (novel) if it has not been anticipated by publication in any document any where in the world or used in the country or prior claimed in an application for patent in India or form part of the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere before the date of filing of patent application or date of priority, that is, the subject matter has not fallen in the public domain or that it does not form part of the state of the art.22 3.2.2 Although the term state of the art has not been defined under the Patents Act, the following general principles are applied by the Patent Office to determine the novelty of an invention during the examination procedure by applying provisions of section 13, read with the provisions of sections 29 to34 An invention is not considered to be novel (a) if it has been anticipated by publication before the date of filing of the application in any of the specifications filed in pursuance of application for patent in India on or after 1st January, 1912. (b) if it has been anticipated by publication made before the date of filing or the date of priority of the application in any of the documents in any country; or (c) if it has been claimed in any claim of any other complete specification filed in India, which was filed before the date of application though published after the date of that application.
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Inventive Step (Non-Obviousness) 3.9.1 After establishing the novelty, an invention is assessed for inventive step. The invention is not considered to involve an inventive step, if it is obvious to a person skilled in the art on the date of priority. Inventive step is assessed on 34 the basis of published documents or otherwise and is defined in the Act as under: Inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art. [Section 2(1)(ja)] 3.9.2 Further, section 2(1)(l) defines new invention as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art. Industrial Applicability 3.25.1 The third criteria of patentability is that the invention should be capable of industrial application. It is defined in Section 2 (1) (ac) of the Patents Act, 1970. Section 2 (1) (ac) Capable of Industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry. 3.25.2 If the subject matter is devoid of industrial application it does not satisfy the definition of invention for the purpose of the Act. Ordinarily, Industry is taken in its broad sense as including any useful and practical, as distinct from intellectual or aesthetic activity. It does not necessarily imply the use of a machine or the manufacture of a product and covers such thing as a process for dispersing fog or a process of converting energy from one form to another 3.25.3 Vague and speculative indication of possible objectives that might or might not be achievable by carrying out further research with the tool as described may not be sufficient for fulfilment of the requirement of industrial 52 applicability. The purpose of granting a patent is not to reserve an unexplored field of research for an applicant. 3.25.4 Methods of testing are generally regarded as capable of industrial application if the test is applicable to the improvement or control of a product, apparatus or process which itself is capable of industrial application. It is therefore advisable to indicate the purpose of the test if this is not otherwise apparent. 3.25.5 Processes or articles alleged to operate in a manner which is clearly contrary to well-established physical laws, such as perpetual motion machines, are regarded as not having industrial application, as was held in Paezs Application (BL O/176/83) and Webbs Application (BL O/84/88).
3.25.6 An invention for a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not taken to be capable of industrial application. 3.25.7 Parts /pieces of the human or animal body to be used in transplants are objected as not being capable of industrial application. 3.5. PATENTABLE AND NON-PATENTABLE INVENTIONS WHAT IS PATENTABLE INVENTION A new product or process, involving an inventive step and capable of being made or used in an industry. It means the invention to be patentable should be technical in nature and should meet the following criteria - 3 i) Novelty : The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India. ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document. iii) Industrially applicable: Invention should possess utility, so that it can be made or used in an industry. WHAT IS NOT PATENTABLE The following are Non-Patentable inventions within the meaning of the Act: (a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws; (b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment; (c) the mere discovery of a scientific principle or the formulation of an abstract theory (or discovery of any living thing or non-living substances occurring in nature); (d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or mere new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant ; Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.
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(e) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; (f) The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (g) A method of agriculture or horticulture; (h) any process for the medicinal, surgical, curative, prophylactic,diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products. (i) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; (j) a mathematical or business method or a computer programme per se or algorithms; (k) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (l) a mere scheme or rule or method of performing mental act or method of playing game; (m) a presentation of information; (n) topography of integrated circuits; (o) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. (p) Inventions relating to atomic energy and the inventions prejudicial to the interest of security of India. 3.6. PROCEDURE FOR FILING PATENTS 3.6.1. Filing of Application for Patent DOCUMENTS REQUIRED FOR FILING AN APPLICATION 1. Application form in duplicate (Form 1). 2. Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2). 3. Drawing in duplicate (if necessary). 4. Abstract of the invention in duplicate. 5. Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3). 6. Priority document (if priority date is claimed) in convention application,when directed by the Controller. 8
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7. Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5). 8. Power of attorney (if filed through Patent Agent). 9. Fee (to be paid in cash/by cheque/by demand draft) (See Schedule I). (Note: The cheque or demand draft should be payable to the Controller of Patents drawn on any schedule bank at a place where the appropriate office is situated). 3.6.2 Section 7. Form of application (1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office. (1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India. (1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty. (2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application. (3) Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor. (4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification. 3.6.3 Rule 6. Leaving and serving documents (1) 87Any application, notice or other document authorised or required to be filed, left, made or given at the patent office, or to the Controller or to any other person under the Act or these rules, may be tendered by hand or sent by a letter addressed to the Controller at the appropriate office or to that person through post or registered post or speed post or courier service or by electronic transmission duly authenticated. If it is sent by post or registered post or speed post or courier service or by electronic transmission duly authenticated, it shall be deemed to have been filed, left, made or given at the time when the mail containing the same would have been delivered in the ordinary course of post or registered post or speed post or courier service, or by electronic transmission duly authenticated, as
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the case may be. In proving such sending, it shall be sufficient to show that the mail was properly addressed and transmitted: (2) Any written communication addressed to a patentee at his address as it appears on the register of patents or at his address for service given under rule 5, or to any applicant or opponent in any proceedings under the Act or these rules, at the address appearing on the application or notice of opposition, or given for service, shall be deemed to be properly addressed. (3) All notices and all written communications addressed to a patentee, or to any applicant or opponent in any proceedings under the Act or these rules, and all documents forwarded to the patentee or to the said applicant or opponent, shall, except when they are sent by special messenger, be sent by registered post or speed post or courier service or by electronic transmission duly authenticated. (4) The date of a notice or a written communication addressed to a patentee or to any applicant or opponent in any proceedings under the Act and these rules shall be the date of dispatch of the said notice or written communication, by registered post or speed post or courier or fax or electronic transmission duly authenticated, as the case may be, unless otherwise specified under the Act or these rules. (5) In case of delay in receipt of a document or a communication sent by the patent office to a party to any proceedings under the Act or these rules, the delay in transmitting or resubmitting a document to the patent office or doing any act by the party may be condoned by the Controller if a petition for such condonation of delay is made by the party to the Controller immediately after the receipt of the document or a communication along with a statement regarding the circumstances of the fact and evidence in support of the statement: Provided that the delay condoned by the Controller shall not exceed the period between the date on which the party was supposed to have received the document or communication by ordinary course of mail or electronic transmission and the actual date of receipt of the same. Whether Any other person under the Act under the ambit of rule 6 includes, the Patent Agent apart from the Controller and the Patent Office when read with Section 2(1)(s) was considered (in the case)*. The Controller held that the expression any other person under the Act or Rules in rule 6 would mean that whenever there is a bi-party or multi-party proceedings viz. an 88 opposition under section 25, 61, or 92 of the Act, the parties to the proceedings are required to serve certain documents such as statements and evidence on each other, under intimation to the Controller and also on the Controller. In the course of any of the said proceedings if any document has been sent by one party to the other party and to the Controller by post sufficiently in advance, then if there is a postal delay as a result of which the other party or the Controller receives the said documents late, the delay involved will be condoned by the Controller under Rule 6 and the documents will be taken on record and deemed to have been received on the due date.
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Accordingly, I cannot accept with regard to the expression any other person under the Act or the Rules as including Patent agent to whom his client has send the documents. Patent application can also be filed electronically from any remote location through efiling system. 3.6.4. Rule 7. Fee (1) The fees payable under section 142 in respect of the grant of patents and applications there for, and in respect of other matters for which fees are required to be payable under the Act shall be as specified in the First Schedule. (a) The fees, payable under the Act may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated. If the draft or cheque is sent by post, the fees shall be deemed to have been paid on the date on which the draft or cheque would have reached the Controller in the ordinary course of mail. (b) Cheques or drafts not including the correct amount of commission and cheques on which the full value specified therein cannot be collected in cash shall be accepted only at the discretion of the Controller. (c) Where a fee is payable in respect of a document, the entire fee shall accompany the document. (3) In case an application processed by a natural person is fully or partly transferred to a person other than a natural person, the difference, if any, in the scale of fee(s) between the fee(s) charged from a natural person and the fee(s) chargeable from the person other than the natural person in the same matter shall be paid by the new applicant with the request for transfer. (4) Fees once paid in respect of any proceeding shall not ordinarily be refunded irrespective of whether the proceeding has taken place or not. (i). Subject to the approval of the Controller, any person may deposit money in advance and request the Controller to realise any fee payable by him from the said deposit and in such case the date of the receipt of the request to realise the fee or the date on which the request to realise the fee is deemed to have been received, whichever is earlier, shall be taken as the date of payment of the fee: 89 Provided that the requisite amount of money is available at the credit of the person making such request. (ii). Subject to the approval of the Controller, any person may discontinue the deposit of money in advance and in such case the balance, if any, shall be refunded. 3.6.5. Forms (1) The Forms set forth in the Second Schedule with such variations as the circumstances of each case may require shall be used for the purposes mentioned therein.
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(2) Where no Form is so specified for any purpose, the applicant may adopt any Form specified in the Second Schedule with such modifications and variations as may be required. 3.6.6. Size, etc., of documents (1) All documents and copies of documents, except affidavits and drawings, sent to or left at the patent office or otherwise furnished to the Controller shall be written or typewritten or printed either in Hindi or in English language (unless otherwise directed or allowed by the Controller) in large and legible characters with deep indelible ink with lines widely spaced upon one side only of strong white paper of a size A4 of approximately 29.7 centimetres by 21 centimetres with a margin of at least 4 centimetres on the top and left hand part and 3cm on the bottom and right hand part thereof. Any signature which is not legible or which is written in a script other than Hindi or English shall be accompanied by a transcription of the name either in Hindi or in English in block letters: Provided that any document including drawing, if any, may also be filed in electronic form along with a copy of it on white paper: Provided further that in case the application for patent discloses sequence listing of nucleotides and/or amino acids, the same shall be filed in electronic form. (2) Additional copies of all documents shall be filed at the appropriate office, if required by the Controller. (3) Names and addresses of applicants and other persons shall be given in full together with their nationality and such other particulars, if any, as are necessary for identification. 3.6.7. Period within which proof of the right under section 7(2) tomake the application shall be furnished. :Where, in an application for a patent made by virtue of an assignment of the right to apply for the patent for the invention, if the proof of the right to make the application is not furnished with the 90 application, the applicant shall within a period of six months after filing of such application furnish such proof. Explanation. For the purposes of this rule, the six months period in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India. 3.6.8. Order of recording applications The applications filed in a year shall constitute a series identified by the year of such filing. In case of an application filed corresponding to an international application in which India is designated, such application shall constitute a series distinct from the rest of the applications identified by the year of filing of corresponding applications in India
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3.6.9 Information and Undertaking regarding foreign applications.(1) The statement and undertaking required to be filed by an applicant for a patent under sub-section (1) of section 8 shall be made in Form 3. (1A). The period within which the applicant shall file the statement and undertaking under sub-section (1) of section 8 shall be ^six months] from the date of filing the application. Explanation.For the purpose of this rule, the period of six months in case of an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India. (2) The time within which the applicant for a patent shall keep the Controller informed of the details in respect of other applications filed in any country in the undertaking to be given by him under clause (b) of sub-section (1) of section 8 shall be :six months from the date of such filing. (3) When so required by the Controller under sub-section (2) of section 8, the applicant shall furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars as the Controller may require which may include claims of application allowed within six months from the date of such communication by the Controller. 3.6.10 Provisional and Complete specifications (1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, The application shall be deemed to be abandoned. (2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are 91 cognate or of which one is a modification of another and the Cont roller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications. Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification. (3) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly. (4) Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification
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treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before 2[grant of patent], cancel the provisional specification and post-date the application to the date of filing of the complete specification. 3.6.11. Contents of specifications 1. Every specification, whether provisional of complete, shall describe the invention and shall begin with a title sufficiently indicating the subject matter to which the invention relates. 2. Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly. 3. If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification. 4. Every complete specification shall (a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed; (b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and 92 (c) end with a claim or claims defining the scope of the invention for which protection is claimed (d) be accompanied by an abstract to provide technical information on the invention: Provided that; (i) the Controller may amend the abstract for providing better information to third parties; and (ii) if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely: (A) the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period; (B) all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;(C) access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority; (D) disclose the source and geographical origin of the biological material in the specification, when used in an invention.
(1) In case of an international application designating India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act. (2) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification. (3) A declaration as to the inventorship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification, (4) Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions 3.6.12 Specifications (1) Every specification, whether provisional or complete, shall be made in Form 2. (2) A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made. (3) A specification in respect of a patent of addition under section 54 shall contain a specific reference to the number of the main patent, or the application for the main patent, as the case may be, and a definite statement that the invention comprises an improvement in, or a modification of, the invention claimed in the specification of the main patent granted or applied for. (4) Where the invention requires explanation through drawings, such drawings shall be prepared in accordance with the provisions of rule 15 and shall be supplied with, and referred to in detail, in the specification: Provided that in the case of a complete specification, if the applicant desires to adopt the drawings filed with his provisional specification as the drawings or part of the drawings for the complete specification, it shall be sufficient to refer to them in the complete specification as those left with the provisional specification. (5) Irrelevant or other matter, not necessary, in the opinion of the Controller, for elucidation of the invention, shall be excluded from the title, description, claims and drawings. (6) Except in the case of an application (other than a convention application or an application filed under the Patent Cooperation Treaty designating India) which is accompanied by a complete specification, a declaration as to the inventorship of the invention, shall be filed in Form 5 with the complete specification or at any time
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before the expiration of one month from the date of filing of the complete specification, as the Controller may allow on an application made in Form 4. Explanation,For the purposes of this rule, the date of filing of the complete specification with respect to an application corresponding to an international application in which India is designated shall be reckoned from the actual date on which the corresponding application is filed in India. a. The abstract as specified under clause (d) of sub-section (4) of section 10, accompanying the specification shall commence with the title of the invention. The title of the invention shall disclose the specific features of the invention normally in not more than fifteen words b. The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate clearly the technical field to which the invention belongs, technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention. Where necessary, the abstract shall contain the chemical formula, which characterises the invention. c. The abstract may not contain more than one hundred and fifty words. d. If the specification contains any drawing, the applicant shall indicate on the abstract the figure, or exceptionally, the figures of the drawings which may accompany the abstract when published. Each main feature mentioned in the abstract and illustrated by a drawing shall be followed by the reference sign used in that drawing. e. The abstract shall be so drafted that it constitutes an efficient instrument for the purposes of searching in the particular technical field, in particular by making it possible to assess whether there is a need to consult the specification itself. (8) The period within which reference to the deposit shall be made in the specification under sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be three months from the date of filing of the application. 3.7 COMPULSORY LICENCES The Indian Patent Law has provided for adequate powers to the Controller of Patents to issue compulsory licenses to deal with the following extreme and/or urgent situations. A) Section 84To prevent the abuse of patent as a monopoly and to make way for commercial exploitation of invention by an interested person. B) Sections 92 (1) and 92 (3)Circumstances of national emergency or extreme urgency. C) Section 92 AFor exports of pharmaceutical products to foreign countries with public health problems. (A) Section 84The law provides for compulsory license under section 84 of the Indian Patent Act, to prevent the abuse of patent as a monopoly and to make way
for commercial exploitation of invention by an interested person. Under this section, any person can make an application for grant of compulsory licence for a patent after three years, from the date of grant of that patent, on any of the following grounds: a. The reasonable requirements of the public with respect to the patented invention have not been satisfied; b. The patented invention is not available to the public at a reasonably affordable price. c. The patented invention is not worked in the territory of India. Moreover, Section 89 specifies and explains the general purposes of granting compulsory license under Section 84 as: (i). That the patented inventions are worked on a commercial scale in the territory of India without undue delay and to the fullest extent that is reasonably practicable; (ii). That the interests of any person for the time being working or developing an invention in the territory of India under the protection of a patent are not unfairly prejudiced. Further, the subsection 6 of Section 84 elaborates that the Controller shall take into account the following factors while considering the application under section 84. 1. The nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patent or licensee to make full use of the invention; 2. The ability of the applicant to work the invention to the public advantage; 3. The capacity of the applicant to undertake the risk in providing capital and working the invention, if the application were granted; 4. As to whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit. Notably, Section 90 of the Act also empowers the controllers to settle the terms and conditions for compulsory licences. (B) Sections 92 (1) and 92 (3)Both these sections enable the Central Government and the Controller, respectively, to deal with circumstances of national emergency or circumstance of extreme urgency related to public health crises by granting relevant compulsory licences. (C) Section 92 AProvides for compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health
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problems. Thus, this section is an enabling provision for export of pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector in certain exceptional circumstances, to address public health problems. Such country has either to grant compulsory license for importation or issue a notification for importation into that country. 3.8. PATENT OFFICES AND JURISDICTION An applicant or first mentioned applicant in case of joint applicants can file application for patent at the appropriate Patent Office under whose jurisdiction he normally resides or has his domicile or has a place of business or the place from where the invention actually originated. For the applicant, who is non-resident or has no domicile or has no place of business in India, the address for service in India or place of business of his patent agent determines the appropriate patent office where applications for patent can be filed. Territorial Jurisdiction of Appropriate Office for the Applicants
Office Patent Office Branch, Mumbai Territorial Jurisdiction The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli Patent Office Branch, Chennai The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep . Patent Office Branch, New Delhi The States of Haryana, Himachal Pradesh,Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh,
Uttaranchal, Delhi and the Union Territory of Chandigarh. Patent Office, Kolkata The rest of India.
Case Studies Case history 1 Joya Williams, 41-year old administrative assistant had worked for the director of Global brand marketing Coco-Cola Their competitors have informed the fact that coke information was stolen through an employee The stolen information was bargained for $1.5 million Phone records of William were tracked. The policemen discovered that she was the source for the stolen information
The accused employee was fired Case history 2 Besides Williams two other were charged for en routing and bargaining their trade secrets A law suit was filed in Atlanta court and the case was attended by Judge Joel Feldman for nearly 45 minutes The judge approved $23,000 bond for Williams A video clipping was also exhibited expressing the simple act that Williams was in search of some documents and had stuffed them in her bag.
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REVIEW QUESTIONS (1) Discuss the historical development of Indian Patent system (2) Explain the provisions relating to (i). Novelty (ii). Non- Obviousness (iii).Industrial applicability (3) Explain the procedure for filing Patents Explain the legal provisions relating to compulsory licenses
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COPYRIGHTS, TRADEMARKS, OTHER INTELLECTUAL PROPERTY RIGHTS

4.1. KEY OBJECTIVES After reading this chapter, you will be able to understand The various Copyrights and its related rights Different patterns of Trade Marks and rights arising from Trademark registration Definitions for Industrial Designs and Integrated circuits Protection of Geographical Indications at both the national and International levels Application Procedures
4.2. PATENTS AND TECHNOLOGICAL DEVELOPMENT Facilitate transfer and investment Disseminate initial knowledge as free input (public good) to produce further knowledge as output (private good) Limit free riders not innovators Encourage licensing arrangements Catalyze new technologies and businesses
ADVANTAGES OF PATENT Patent acts as tradable industrial asset for the enterprise and, thus the strength of patent portfolio of the company is the indication of the good economic health of the company Patents provide inventive and creative ideas for further R&D in the field After the term of patent is over, or when the patent is not kept in force, the patented invention is available to the public for free use Patent as Information source is enormous and wide
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80% of the information is first published only in the patent documents and not elsewhere. The patent information is well classified according to the International Patent Classification System to enable easy search and use. The scientific knowledge contained in the patent specification helps as a stepping stone for further research. The Patent information is free to be utilized after the term of the Patent expires or when the Patent ceases to be in force. Patent Information plays a pivotal role in Technology Transfer.
4.2.1. Advantages in Patenting Inventions Patents create additional source of revenue By ignoring patents, companies miss out on a very important competitive advantage brought in by patents Patent division have started generating 90% of profit margins Patents act as entry ticket for new foreign markets Major issues that impede effective IP implementation in Indian industries are listed below Lack of IP-awareness among managers, engineers, scientists and students (especially in patents) Patent rights are territorial by nature. Should an innovator file his inventions in his motherland alone or in those countries where there is market potential for the inventions? Cost of filing a US patent is around $35000 or 15.5 lakhs Such an amount may be productively spent in other activities associated with development of an organization Huge amount spent in patenting an innovation must be recovered before the technology becomes obsolete By preventing the competitor from forging/ recreating/ illicit usage of the invention there is no assurance that the intellectual creation would be accepted by the target customers
4.2.2. Barriers in Patenting Inventions Bureaucratic, time consuming painful process associated with filing patent. Patent filing process lacks transparency An inventor must wait for minimum of six months and a maximum of five years after the research work is complete and suitable formalities are taken care.
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With in that period the inventor must not publish the outcome of research work or such technology must not be available for commercial exploitation. The patented innovations are subjected to technology obselence with in that period
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LICENSE License is obtained so as to prevent others using the invention. It may be exclusive, non exclusive or limited. An exclusive license excludes all other persons including the patentee from the right to use the inventions. An expressed license is one in which permission to use the patents in the expressed terms. Implied license does not grant such a permission.
MONOPOLY RIGHTS A Monopoly right obtained as a consequence of patentee been granted to use his invention exclusively by him i.e., sell, manufacture, mortgage. The exclusive right in enjoyed by the patentee is called monopoly right.
4.3. EXCLUSIVE MARKET RIGHTS DEFINITION: The minimum standards on eight ipr conferred so as to obtain a protection against anticompetitive practices in contractual license is called exclusive market right. This new provision has been incorporated in the Patents Act, 1970 as amended by The Patents (Amendment) Act, 1999 with effect from 1st January, 1995. Under this amendment to the Patents Act, 1970 it is now possible to make an application for patent claiming for a substance itself intended for use or capable of being used as Medicine or Drug, excepting the intermediate for the preparation of drug.
EXCLUSIVE MARKET RIGHTS However that India has the privilege, under WTO regime, of a ten years transition period. Thus application for product claims for medicine or drug will not be processed until the end of 2004. But Exclusive Marketing Rights (EMR) can be obtained for that application if certain conditions as stated below are fulfilled:
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EXCLUSIVE MARKET RIGHTS 1. Where an invention has been made in India or outside India and before filing such a claim in India, application for the same invention claiming identical article or substance in a Convention Country (WTO) has been filed on or after 1st January, 1995 and a patent has been granted on or after the date of making a claim for article or substance in India and approval to sell or distribute has been obtained in the said Convention Country on the basis of the test done on or after 1st January, 1995. 2. Where an invention has been made in India and before filing such a claim the applicant has made an application for patent on or after 1st January, 1995 for method or process of manufacturing the identical article or substance and patent has been granted in India on or after the date of making of the product claim. 3. Marketing approval of the article or substance has been obtained from the appropriate authority in India provided that the application for patent has not been rejected by the Controller on the basis of the report of the Examiner that the invention is not an invention (Section - 3) or the invention is an invention on which no patent can be granted (Section - 4). Duration EMR will be valid for a period of five years or till the date of grant of the patent or date of rejection of the application for the grant of patent whichever is earlier.
BARRIERS IN PATENTING INVENTIONS Major issues that impede effective IP implementation in Indian industries are listed below Lack of IP-awareness among managers, engineers, scientists and students (especially in patents) Patent rights are territorial by nature. Should an innovator file his inventions in his motherland alone or in those countries where there is market potential for the inventions? Cost of filing a US patent is around $35000 or 15.5 lakhs
DESIGNS A Design means beautifying an industrial product to attract the consumer public. By registering the design, adopted for the purpose of shaping, configuration or ornamentation of a vendible industrial product. The Government confers upon the originator the exclusive Design Rights for a limited term.
Thus, patents and designs embrace the production stage of an industrial activity. A Design means beautifying an industrial product to attract the consumer public. By registering the design, adopted for the purpose of shaping, configuration or ornamentation of a vendible industrial product. The Government confers upon the originator the exclusive Design Rights for a limited term. Thus, patents and designs embrace the production stage of an industrial activity.
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COPYRIGHTS What is a work ? A work means any of the following , namely, a literary, dramatic, musical or artistic work, a cinematograph film, or a sound recording. What is a copyright ? A Copyright is a protection offered to the authors of literary, dramatic, artistic, producers of cinematograph films,sound recordings and another intellectual properties. A Copyright protects the particular manner in which a works contents and ideas are expressed TRADEMARKS Trademark may be defined as a name, word, device label, signature etc that uniquely identifies a brand manufactured by particular organization from others. Any sign capable of distinguishing the goods or services of an undertaking from those of others may constitute a trade mark Period seven years If use is condition for registration, non use for three years will result in cancellation Its origin dates back to ancient times, when craftsmen reproduced their signatures, or marks on their artistic or utilitarian products. Over the years these marks evolved into todays system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs.
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Well established Trademarks are considered as indicators of Quality Trademark can be popularized & then registered If a registered Mark is used & maintained properly,the registration can last forever. Registered mark not used continuously for 5 years gets cancelled
TRADE NAME Trade name is nothing but a word, jargon, symbol or a combination of all three so as to identify the business or its goodwill. Trade name performs a function similar to trademark. It also identifies the goods manufacture by an organization in a unique fashion under honest concurrent usage of trademarks
GEOGRAPHICAL INDICATIONS Geographical Indications of Goods are defined as that aspect of industrial property, which refers to the geographical indication referring to a country or to a place, situated therein as being the country or place of origin of that product. Quantities features of certain goods have impact of geographical conditions prevailing within it. The manufacturers association may apply for such registrations. Geographical indications do protect the interest of remote territories and augment the import and exports of the nation. Portion inherited knowledge, indigenous architectural designs and knowledge about herbal medicines could preserve under this category.
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Example Champagne Wine (France) Swiss Chocolates (Switzerland) Darjeeling Tea (India)
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GI is valid for a period of ten years WIPO is in charge of the administration of a number of international agreements which deal partly or entirely with the protection of geographical indications (see, in particular, the Paris Convention for the Protection of Industrial Property, and the Lisbon Agreement for the Protection ofAppellations of Origin and Their International Registration). Furthermore, through the work of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, made up of representatives of member States and interested organizations, WIPO explores new ways of enhancing the international protection of geographical indications. A trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using the trademark. A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. It may be used by all producers who make their products in the place designated by a geographical indication and whose products share typical qualities If a geographical term is used as the designation of a kind of product, rather than an indication of the place of origin of that product, this term does no longer function as a geographical indication. Where that has occurred in a certain country over a substantial period of time, that country may recognize that consumers have come to understand a geographical term that once stood for the origin of the product. For example, Dijon Mustard, a style of mustard originally from the French town of Dijon - to denote now a certain kind of mustard, regardless of its place of production.
GI IN AGRICULTURE PRODUCTS The use of geographical indications is not limited to agricultural products. They may also highlight specific qualities of a product which are due to human factors that can be found in the place of origin of the products, such as specific manufacturing skills and traditions. That place of origin may be a village or town, a region or a country. An example for the latter is Switzerland or Swiss, which is perceived as a geographical indication in many countries for products that are made in Switzerland and, in particular, for watches.
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UTTAR PRADESH
ITEMS
ASSOCIATED GEOGRAPHICAL LOCATION Aligarh Allahabad Azamgarh Bhadohi Suriyawan Buland Shar, Anupshahr Etah- Soron
Glass products / Leather products Petha (Sweet) Agra Locks in brass and iron / scissors Guava Banarasi Sarees Carpets, Woolen Carpets Homeopathic Medicine Melons
Glass bangles / Glass wares, Scientific Jasrana Shikohabad equipments Glass bangles / Glass tube, Glass jar Firozabad Handloom cloth / Bed sheets Tyre Tube Handloom Cloth ITEMS Ghaziabad, Pilkhua, Loni Gorakhpur ASSOCIATED GEOGRAPHICAL LOCATION Hamipur Gohand Jhansi Hamipur Kanpur Dehat Sikandra Kanpur Nagar Kanpur Kheri Ole Dhakwa Lucknow Chinhat Kakori Malihabad and Mahona
Bricks Handloom Cloth Handloom Ranipur Leather work Leather goods, cotton cloth, woolen garment Bone Ash Brass wares Chicken work Crockery, Pottery Chicken work Mango
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ITEMS Khadi Cloth Silken Sarees Handloom Cloth Brassware Brassware Handloom fabrics Charthawal Catechu Bhinga Knives Khadi Cloth Nakur Electrical Goods Pipri Silken Sarees Silken Sarees Marble Goods Carpets ASSOCIATED GEOGRA PHICAL LOCATION Mau Amila Ghosi Maunath Bhanjan Moradabad Chandausi Hasanpur Muzafarnagar Pratapgarth Rampur Saharanpur Sonbhadra Varanasi Kotwa Lohta Mizapur Chunar
HIMACHAL PRADESH
ASSOCIATED GEOGRAPHICAL LOCATION Shawls Kulu Caps Kulu Shawls Kinnaur Caps Kinnaur Chappals Chamba Tea Kangra ITEMS
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RAJASTHAN
ITEMS Bikaneri Bhujia Kota Stone Bhandhej Green Pickle and Onion and Marwadimathaniya Chhitar Stone of Jodhpur Yellow Stone of Jodhpur Bikaneri Bhujia Kota Stone Bhandhej Green Pickle and Onion and Marwadimathaniya Chhitar Stone of Jodhpur Yellow Stone of Jodhpur Mats of Salawas (Jodhpur) Bikaneri Bhujia Kota Stone Bhandhej Green Pickle and Onion and Marwadimathaniya Chhitar Stone of Jodhpur Yellow Stone of Jodhpur Mats of Salawas (Jodhpur) Granite of Jallore Heena (Mehndi) of Sojat Jink Badala Paohpadra / Meekalsar Ki Matkiya Sevan Grass of Jaisalmere Bantonite Ker, Kumti, Sangri (Khejedi Vatpad) Jodhpur Jodhpur Jodhpur Jallore Sojat Rajasthan Rajasthan Jaisalmere Rajasthan Rajasthan Jodhpur Jodhpur Bikaner Kota Rajasthan Rajasthan Jodhpur Jodhpur Jodhpur Bikaner Kota Rajasthan Rajasthan Bikaner Kota Rajasthan Rajasthan ASSOCIATED GEPGRAPHICAL LOCATION
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PUNJAB
ITEMS ASSOCIATED GEOGRAPHICAL LOCATION Pulkari A handicraft Kotkpura Dhoda- A sweet Punjab Kotakpur
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Amristari Papad & Warian Amristar Patialvi uti Muktsari Juti Punjabi Juti Fazilka Juti Patiala Nallah Sarson Da Sag Patiala Mukstar Fazilka Patiala Punjab
WEST BENGAL
ASSOCIATED SNO ITEMS GEOGRAPHICAL LOCATION 1. 2. 3. 4. 5. Murshidabad silk Bishnupur Baluchuri Dhanekhali Saree Santipur Tant Phuliar Tant Murshidabad Bishnupur Dhanekhal Santipur Phuliar
Handicraft: 1. 2. Dokra Bankura & Bisnupur Terakota West Bengal West Bengal
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SNO ITEMS
FOOD ASSOCIATED GEOGRAPHICAL LOCATION 1. 2. 3. 4. 5. 6. Bardhamaner Mihidana Bardhamaner Sitabhog Kolkatat Rosogolla Shaktigath Lancha Krishanagarar Sarvaja Darjeeling Tea Bardhaman Bardhaman Kolkata Shaktigarh Krishnanagar Darjeeling
MADHYA PRADESH
ASSOCIATED SNO ITEMS GEOGRAPHICAL LOCATION 1. Chanderi Saree Chanderi
4.4. LAYOUT DESIGNS 4.4.1. Layout Design of Integrated Circuits Reaffirmation of the treaty on intellectual property in respect of integrated circuits. Lobbied by the US Hardware/Software industry. Reproduction of a protected layout; importing selling or otherwise distributing for commercial purposes a layout design or an integrated circuit incorporating a protected layout or an article incorporating such an integrated circuit, not possible without right-holders permission.
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4.4.2. Trade Secrets Creates a system by which holders of secret information are not forced to part with to government or other bodies. Where secret information (best reports of chemicals and pharmaceuticals) is given to government, data to be kept secret. Secret information: information not generally known; has commercial value; person in control of the information has taken steps to keep it secret. Such a system is created where holders of secret information are not forced to part with to government or other bodies. Where secret information (best reports of chemicals and given to government, data to be kept secret. Pharmaceuticals is
NOTES
A trade secret is information that provides a business with a competitive advantage. The following section provides examples of circumstances where trade secret protection was approved or denied
Courts have provided trade secret protection to: Formula Patterns Plans Designs Physical devices Processes Software Know-how
Please keep in mind that different courts may reach contrary conclusions concerning trade secret status with respect to what may appear to be identical matters. 4.4.3. Formula Formula is a group of symbols that make a mathematical statement or a conventionalized statement expressing some fundamental principle or a representation of a substance using symbols for its constituent elements. It establishes a right direction for making something worthwhile or lucrative A formula (i.e., a recipe that allows one to create a product) can be a trade secret
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4.4.4. Cocacola Common formulas found to be trade secrets in the food, drug, and cosmetics industry include formulas for butter flavoring, cheese, breakfast cereal, seasoning for fried chicken, special diet rations for dogs, mixed alcoholic beverages, lipstick, and hair conditioner The Coca-Cola Company has put numerous security measures in place to keep its formula a secret. In fact, the formula gives the Coca-Cola Company a significant business advantage in the soda market, as there is no other soda that tastes the same
Formulae for a lemon-flavored soft drink, recipes and cooking procedures for common dishes such as BBQ chicken and bakery goods were all denied trade secret protection. 4.4.5 Pattern A pattern is a form, template, or model (or, more abstractly, a set of rules) that can be used to make or to generate things or parts of a thing. If the things that are generated have enough in common for the underlying pattern to be inferred or discerned, in which case the things are said to exhibit the pattern. The detection of underlying patterns is called pattern recognition
4.4.6 Plan A Plan is a proposed or intended method of getting from one set of circumstances to another They are often used to move from the present situation, towards the achievement of one or more objectives or goals
4.4.7 Design Design is a decorative or artistic work. It may also be termed as an arrangement scheme
4.5. COURTS HAVE FOUND THE FOLLOWING TO BE TRADE SECRETS: Circuitry for an advanced minicomputer Colour TV circuitry Schematics for an analog circuit Plans and specifications for gears and rollers of a photo-processing machine plans for drilling equipment Plans and designs for a veneer dryer Molds for the manufacture of street markers Design for a grating.
4.5.1 Physical Devices Physical device is a device that has some physical implementation. It is an actual piece of hardware, not an emulated device. It is used in manufacturing can be a trade secret.
NOTES
4.5.2 Physical Devices These devices include A device for manufacturing radio parts Machinery and equipment used to manufacture polyethylene Machinery and equipment used to manufacture saw grade diamonds A computer tool used to service microprocessor-based elevators, a tool for making a pressure-sensing mechanism A machine for inking carbon paper and ribbons, and an adhesive-tape machine
4.5.3. Process Process is a generalized method of doing something, generally involving steps or operations that are usually ordered and/or interdependent. A process, method or technique used to make the final end product can also be a trade secret.
4.5.4 Process Examples of processes found to be trade secrets include: A process to manufacture foam crash pads A process to treat metal, a process to manufacture fiberglass A method and procedure to manufacture epoxy resin rods A process to manufacture potassium sulfate A process for an environmentally sound method to manufacture coated paper
KNOW-HOW Know-how is information that enables a person to accomplish a particular task or to operate a particular device or process. Information and experiential expertise related to using formulas or processes. Know-how can be a trade secret. Examples of trade secrets in this area include: Know-how pertaining to the construction of plant chemicals, methods for testing procedures to assure the quality of raw material Know-how to ascertain whether CAT scanning equipment and components are operating according to specifications and to identify malfunctions Methods to manufacture typewriters
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4.6. PATENTS VS TRADE SECRETS In some cases, even where an invention would meet the criteria of patentability, SMEs may opt for maintaining their invention as a trade secret rather than apply for patent protection The decision as to whether to apply for protection or to maintain the invention secret is one that should be taken on a case-by-case basis depending on a wide variety of factors. It is crucial, first of all, for SMEs to know that trade secrets are protected, as long as certain actions are taken to keep the trade secret confidential This may imply the need for signing confidentiality agreements with employees and/or non-disclosure agreements with partners
CASE STUDIES CASE HISTORY:1 Joya Williams, 41-year administrative assistant had worked for the director of global brand marketing coco-cola Their competitors have informed the fact that coke information through an employee The stolen information was bargained for $1.5 million Phone records of William were tracked. The policemen discovered that he was the source of stolen information The accused employee was fired was stolen
CASE HISTORY:2 Besides Williams other two were charged for en routing and bargaining their trade secrets A law suit was filed in Atlanta court and the case was attended by judge Joel Feldman for nearly 45 minutes The judge approved $23,000 bond for Williams A video clipping was also exhibited expressing the simple act that Williams was in search of some documents and had stuffed in her bag
CASE HISTORY:3 The accused had verified that the liquid container with a white label is supposed to be new product to be launched She was prevented from discussing the secrets to any one other than their lawyers
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VERDICT The court is yet to pronounce the final verdict in this case CASE HISTORY: The accused had verified that the liquid container with a white label is supposed to be new product to be launched She was prevented from discussing the secrets to any one other than their lawyers
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VERDICT The court is yet to pronounce the final verdict in this case PATENTS VS TRADE SECRETS
SNO. 1 PATENTS procedure through TRADE SECRETS legal method by keeping intellectual
Patenting is an IP protection Trade secret is an IP conservation registration of the invention creations a secret and prevention of competitors from recreation or illicit usage
Cumbersome and expensive Substantial efforts may be required registration procedure exist for to keep the secret confidential. patenting an innovation Some special privileges such as Trade secrets licence and EMR are granted to companies patentee invention for disclosing do not prevent independently
his developing the same invention from patenting or commercializing it. Opportunities for licensing the product will be limited
The monopoly granted is valid No such time frame is fixed. The for a limited period-usually 20 producer can continue to use it as years. If the patents are not long as the technology or the renewed at appropriate time, process is not the technology is open to public competitors known to the
Well-drafted
remedial The degree of protection for trade
measures are prescribed by the secrets is significantly lower. legislation for patent Exclusivity over the invention will infringement. Civil remedies be lost if and/or when the secret are normally invoked to protect becomes public the interest of lawful owner of the patent
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4.7 MANAGING INTELLECTUAL PROPERTY RIGHTS IPR POLICY: CAN ONE SIZE FIT ALL? Need to define (F)RAND (a possible enhancement) In (F)RAND context, IPR claims (and timeliness) should be made mandatory and be controlled Companies IPR strategies change over time and depending on market segments/ competitive positioning IPR strategy can be both open and proprietary (see IBM) Technologies/standards IPR : threat of fear, uncertainty & doubt Range of policies is probably the model to explore
INTELLECTUAL PROPERTY RIGHTS MANAGEMENT The only resource in which poor people are rich is their knowledge. Protection of the intellectual property rights becomes necessary to ensure knowledge based approach to work. The activities necessary to achieve this goal are: To coordinate with various intellectual property institutions and attorneys to mobilize pro bono or paid help for grassroots innovators to file patents, trademark and other means of IP protection and also directly file applications on their behalf. To pursue with the government authorities, the possibility of nif providing the certificate of inventions/unique traditional knowledge accompanied by medium term protection so as to reduce transaction costs of the IP offices and the innovators.
To coordinate with WIPO and other international patent offices to secure IP protection for grassroots innovators globally wherever applicable. To provide assistance to innovators to enter into licensing arrangements with entrepreneurs for transferring technologies. To help pool part of the license fee obtained from the innovators towards an innovation fund for supporting innovators. To help in prior art search so that innovators can maintain their competitive edge. To screen ongoing patents on Indian traditional knowledge so as to oppose the improperly granted patents, particularly dealing with knowledge/innovations/ practices entered in the National Register.
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TECHNOLOGY TRANSFER Developing countries, in particular, see technology transfer as part of the bargain in which they have agreed to protect intellectual property rights. The TRIPS Agreement includes a number of provisions on this. For example, it requires developed countries governments to provide incentives for their companies to transfer technology to least-developed countries (Article 66.2). Least-developed countries want this requirement to be made more effective. In Doha, ministers agreed that the TRIPS Council would put in place a mechanism for ensuring the monitoring and full implementation of the obligations. The council adopted a setting up this mechanism in February 2003. It details the information developed countries are to supply by the end of the year, on how their incentives are functioning in practice. This is now being implemented, and will be reviewed in full when the TRIPS Council meets in November 2003. At the same time, the question of technology transfer continues to be raised under various TRIPS headings such as TRIPS and Public Health.
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REVIEW QUESTIONS (1) Explain the rights of Copy rights (2) Write short note on Trade secrets (3) Discuss the need and importance of managing individual designs (4) Explain the procedures involved in protecting geographical indications (5) How to register for Trade marks?
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UNIT V
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LEGAL ASPECTS OF INTELLECTUAL PROPERTY RIGHTS

5.1. KEY OBJECTIVES After reading this chapter, you will be able to understand: Application of Infringement of Patents and its remedies Modification of granted patents and protection against unfair competition. Detailed idea about the Copyright and related rights, Trade Marks, Industrial design, Integrated circuits and Geographic indications Enforcement of Intellectual Property Rights
Infringement of Patent and Remedies The roots of the World Intellectual Property Organization go back to 1883, when Johannes Brahms was composing his third Symphony, Robert Louis Stevenson was writing Treasure Island, and John and Emily Roebling were completing construction of New Yorks Brooklyn Bridge. The need for international protection of intellectual property became evident when foreign exhibitors refused to attend the International Exhibition of Inventions in Vienna in 1873 because they were afraid their ideas would be stolen and exploited commercially in other countries. 1883 marked the birth of the Paris Convention for the Protection of Industrial Property, the first major international treaty designed to help the people of one country obtain protection in other countries for their intellectual creations in the form of industrial property rights, known as: inventions (patents) trademarks industrial designs
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The Paris Convention entered into force in 1884 with 14 member States, which set up an International Bureau to carry out administrative tasks, such as organizing meetings of the member States. In 1886, copyright entered the international arena with the Berne Convention for the Protection of Literary and Artistic Works. The aim of this Convention was to help nationals of its member States obtain international protection of their right to control, and receive payment for, the use of their creative works such as: novels, short stories, poems, plays; songs, operas, musicals, sonatas; and drawings, paintings, sculptures, architectural works. Like the Paris Convention, the Berne Convention set up an International Bureau to carry out administrative tasks. In 1893, these two small bureaux united to form an international organization called the United International Bureaux for the Protection of Intellectual Property (best known by its French acronym BIRPI). Based in Berne, Switzerland, with a staff of seven, this small organization was the predecessor of the World Intellectual Property Organization of today - a dynamic entity with 184 member States, a staff that now numbers some 938, from 95 countries around the world, and with a mission and a mandate that are constantly growing. As the importance of intellectual property grew, the structure and form of the Organization changed as well. In 1960, BIRPI moved from Berne to Geneva to be closer to the United Nations and other international organizations in that city. A decade later, following the entry into force of the Convention Establishing the World Intellectual Property Organization, BIRPI became WIPO, undergoing structural and administrative reforms and acquiring a secretariat answerable to the member States. In 1974, WIPO became a specialized agency of the United Nations system of organizations, with a mandate to administer intellectual property matters recognized by the member States of the UN. In 1978, the WIPO Secretariat moved into the headquarters building that has now become a Geneva landmark, with spectacular views of the surrounding Swiss and French countryside. WIPO expanded its role and further demonstrated the importance of intellectual property rights in the management of globalized trade in 1996 by entering into a cooperation agreement with the World Trade Organization (WTO). The impetus that led to the Paris and Berne Conventions - the desire to promote creativity by protecting the works of the mind - has continued to power the work of the Organization, and its predecessor, for some 120 years. But the scope of the protection and the services provided have developed and expanded radically during that time.
In 1898, BIRPI administered only four international treaties. Today its successor, WIPO, administers 24 treaties (three of those jointly with other international organizations) and carries out a rich and varied program of work, through its member States and secretariat, that seeks to: harmonize national intellectual property legislation and procedures, provide services for international applications for industrial property rights, exchange intellectual property information, provide legal and technical assistance to developing and other countries, facilitate the resolution of private intellectual property disputes, and marshal information technology as a tool for storing, accessing, and using valuable intellectual property information. The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations. It is dedicated to developing a balanced and accessible international intellectual property (IP) system, which rewards creativity, stimulates innovation and contributes to economic development while safeguarding the public interest. WIPO was established by the WIPO Convention in 1967 with a mandate from its Member States to promote the protection of IP throughout the world through cooperation among states and in collaboration with other international organizations. Its headquarters are in Geneva, Switzerland. The Director General is Francis Gurry. How WIPO Works The terms governing WIPOs mandate, functions, finances and procedures are set out in the WIPO Convention. Member States WIPOs Member States determine the strategic direction and activities of the Organization. They meet in the Assemblies, committees and working groups. See decisionmaking bodies. There are currently 184 Member States, i.e. over 90 percent of the countries of the world. Click here for a regularly updated list of members and membership criteria, with links to further information by country. Secretariat The WIPO Secretariat, or International Bureau, is based in Geneva. WIPO staff, drawn from more than 90 countries, include experts in diverse areas of IP law and practice, as well as specialists in public policy, economics, administration and IT.
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The respective divisions of the Secretariat are responsible for coordinating the meetings of Member States and implementing their decisions; for administering the international IP registration systems; for developing and executing the programs designed to achieve WIPOs goals; and for providing a repository of IP expertise to assist its members. Organigram Director General NGOs, IGOs, Civil Society WIPO works with a wide spectrum of stakeholders, including other intergovernmental organizations, non-governmental organizations, representatives of civil society and of industry groups. Some 250 NGOs and IGOs currently have official observer status at WIPO meetings. See the list of WIPO observers and admission criteria. Program and Budget Every two years WIPOs Director General presents a Program and Budget document to Member States for approval. This details objectives, performance measures and budgetary planning for all proposed program activities. WIPO is unusual among the family of UN organizations in that it is largely self-financing. About 90 percent of the Organizations budgeted expenditure of 626 million Swiss francs for the 2008-2009 biennium will come from earnings from the services which WIPO provides to users of the international registration systems (PCT, Madrid system, The Hague System etc.). The remaining 10 percent will be made up mainly of revenue from WIPOs arbitration and mediation services and sales of publications, plus contributions from Member States. These contributions are relatively small. The five largest contributing countries each donate about one-half percent of the Organizations budget. Financial Regulations and Rules The financial activities of WIPO are governed by the Financial Regulations and Rules. Modification of granted patents The Patent Opposition System allows any party desiring to do so the opportunity to file an opposition to a granted patent after the patent right is granted. The goal of the Patent Opposition System is to increase public confidence in the patent system. When an opposition is filed, the Patent Office re-examines the appropriateness of its initial decision to grant the patent and remedies any flaws that are discovered. While defective patent rights should be corrected rapidly, any defect in the description in the grounds for opposition or evidence in written opposition to a patent make it difficult for an examiner, patent right holder, etc. to understand the intention of the party who filed the opposition. This could lead to complication in examination of the opposition.
The patent right holder will be informed of the reason for cancellation, if such a decision is arrived at by the Chief Appeals Examiner, and given the opportunity to submit written opinion or demand for correction. However, unlike the procedure for amendment of the patent specification in the examination stage, for the patent right holder to file a demand for correction the same form as the written demand for trial for correction or invalidation is required. Enforcement of Intellectual Property Rights 1. General Obligations 2. Civil and Administrative Procedures and Remedies 3. Provisional Measures 4. Special Requirements Related to Border Measures 5. Criminal Procedures Acquisition and Maintenance of Intellectual Property Rights and Related Inter-Parts Procedures Enforcement of Intellectual Property Rights 5.2. GENERAL OBLIGATIONS Article 41 1. Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. 2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. 3. Decisions on the merits of a case shall preferably be in writing and reasoned. They shall be made available at least to the parties to the proceeding without undue delay. Decisions on the merits of a case shall be based only on evidence in respect of which parties were offered the opportunity to be heard. 4. Parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions and, subject to jurisdictional provisions in a Members law concerning the importance of a case, of at least the legal aspects of initial judicial decisions on the merits of a case. However, there shall be no obligation to provide an opportunity for review of acquittals in criminal cases.
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5. It is understood that this Part does not create any obligation to put in place a judicial system for the enforcement of intellectual property rights distinct from that for the enforcement of law in general, nor does it affect the capacity of Members to enforce their law in general. Nothing in this Part creates any obligation with respect to the distribution of resources as between enforcement of intellectual property rights and the enforcement of law in general. 5.3. CIVIL AND ADMINISTRATIVE PROCEDURES AND REMEDIES Article 42 Fair and Equitable Procedures Members shall make available to right holders civil judicial procedures concerning the enforcement of any intellectual property right covered by this Agreement. Defendants shall have the right to written notice which is timely and contains sufficient detail, including the basis of the claims. Parties shall be allowed to be represented by independent legal counsel, and procedures shall not impose overly burdensome requirements concerning mandatory personal appearances. All parties to such procedures shall be duly entitled to substantiate their claims and to present all relevant evidence. The procedure shall provide a means to identify and protect confidential information, unless this would be contrary to existing constitutional requirements. Article 43 Evidence 1. The judicial authorities shall have the authority, where a party has presented reasonably available evidence sufficient to support its claims and has specified evidence relevant to substantiation of its claims which lies in the control of the opposing party, to order that this evidence be produced by the opposing party, subject in appropriate cases to conditions which ensure the protection of confidential information. 2. In cases in which a party to a proceeding voluntarily and without good reason refuses access to, or otherwise does not provide necessary information within a reasonable period, or significantly impedes a procedure relating to an enforcement action, a Member may accord judicial authorities the authority to make preliminary and final determinations, affirmative or negative, on the basis of the information presented to them, including the complaint or the allegation presented by the party adversely affected by the denial of access to information, subject to providing the parties an opportunity to be heard on the allegations or evidence. Article 44 Injunctions 1. The judicial authorities shall have the authority to order a party to desist from an infringement, inter alia to prevent the entry into the channels of commerce in their jurisdiction of imported goods that involve the infringement of an intellectual property
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right, immediately after customs clearance of such goods. Members are not obliged to accord such authority in respect of protected subject matter acquired or ordered by a person prior to knowing or having reasonable grounds to know that dealing in such subject matter would entail the infringement of an intellectual property right. 2. Notwithstanding the other provisions of this Part and provided that the provisions of Part II specifically addressing use by governments, or by third parties authorized by a government, without the authorization of the right holder are complied with, Members may limit the remedies available against such use to payment of remuneration in accordance with subparagraph (h) of Article 31. In other cases, the remedies under this Part shall apply or, where these remedies are inconsistent with a Members law, declaratory judgments and adequate compensation shall be available. Article 45 Damages 1. The judicial authorities shall have the authority to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that persons intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity. 2. The judicial authorities shall also have the authority to order the infringer to pay the right holder expenses, which may include appropriate attorneys fees. In appropriate cases, Members may authorize the judicial authorities to order recovery of profits and/or payment of pre-established damages even where the infringer did not knowingly, or with reasonable grounds to know, engage in infringing activity. Article 46 Other Remedies In order to create an effective deterrent to infringement, the judicial authorities shall have the authority to order that goods that they have found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or, unless this would be contrary to existing constitutional requirements, destroyed. The judicial authorities shall also have the authority to order that materials and implements the predominant use of which has been in the creation of the infringing goods be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to minimize the risks of further infringements. In considering such requests, the need for proportionality between the seriousness of the infringement and the remedies ordered as well as the interests of third parties shall be taken into account. In regard to counterfeit trademark goods, the simple removal of the trademark unlawfully affixed shall not be sufficient, other than in exceptional cases, to permit release of the goods into the channels of commerce.
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Article 47 Right of Information Members may provide that the judicial authorities shall have the authority, unless this would be out of proportion to the seriousness of the infringement, to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution. Article 48 Indemnification of the Defendant 1. The judicial authorities shall have the authority to order a party at whose request measures were taken and who has abused enforcement procedures to provide to a party wrongfully enjoined or restrained adequate compensation for the injury suffered because of such abuse. The judicial authorities shall also have the authority to order the applicant to pay the defendant expenses, which may include appropriate attorneys fees. 2. In respect of the administration of any law pertaining to the protection or enforcement of intellectual property rights, Members shall only exempt both public authorities and officials from liability to appropriate remedial measures where actions are taken or intended in good faith in the course of the administration of that law. Article 49 Administrative Procedures To the extent that any civil remedy can be ordered as a result of administrative procedures on the merits of a case, such procedures shall conform to principles equivalent in substance to those set forth in this Section. 5.4. PROVISIONAL MEASURES Article 50 1. The judicial authorities shall have the authority to order prompt and effective provisional measures: a) to prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance; b) to preserve relevant evidence in regard to the alleged infringement. 2. The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed. 3. The judicial authorities shall have the authority to require the applicant to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant is the right holder and that the applicants right is being infringed or that such infringement is imminent, and to order the applicant to provide a
security or equivalent assurance sufficient to protect the defendant and to prevent abuse. 4. Where provisional measures have been adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take place upon request of the defendant with a view to deciding, within a reasonable period after the notification of the measures, whether these measures shall be modified, revoked or confirmed. 5. The applicant may be required to supply other information necessary for the identification of the goods concerned by the authority that will execute the provisional measures. 6. Without prejudice to paragraph 4, provisional measures taken on the basis of paragraphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Members law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer. 7. Where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by these measures. 8. To the extent that any provisional measure can be ordered as a result of administrative procedures, such procedures shall conform to principles equivalent in substance to those set forth in this Section. 5.5. SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES Article 51 Suspension of Release by Customs Authorities Members shall, in conformity with the provisions set out below, adopt procedures to enable a right holder, who has valid grounds for suspecting that the importation of counterfeit trademark or pirated copyright goods may take place, to lodge an application in writing with competent authorities, administrative or judicial, for the suspension by the customs authorities of the release into free circulation of such goods. Members may enable such an application to be made in respect of goods which involve other infringements of intellectual property rights, provided that the requirements of this Section are met. Members may also provide for corresponding procedures concerning the suspension by the customs authorities of the release of infringing goods destined for exportation from their territories.
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Article 52 Application Any right holder initiating the procedures under Article 51 shall be required to provide adequate evidence to satisfy the competent authorities that, under the laws of the country of importation, there is prima facie an infringement of the right holders intellectual property right and to supply a sufficiently detailed description of the goods to make them readily recognizable by the customs authorities. The competent authorities shall inform the applicant within a reasonable period whether they have accepted the application and, where determined by the competent authorities, the period for which the customs authorities will take action. Article 53 Security or Equivalent Assurance 1. The competent authorities shall have the authority to require an applicant to provide a security or equivalent assurance sufficient to protect the defendant and the competent authorities and to prevent abuse. Such security or equivalent assurance shall not unreasonably deter recourse to these procedures. 2. Where pursuant to an application under this Section the release of goods involving industrial designs, patents, layout-designs or undisclosed information into free circulation has been suspended by customs authorities on the basis of a decision other than by a judicial or other independent authority, and the period provided for in Article 55 has expired without the granting of provisional relief by the duly empowered authority, and provided that all other conditions for importation have been complied with, the owner, importer, or consignee of such goods shall be entitled to their release on the posting of a security in an amount sufficient to protect the right holder for any infringement. Payment of such security shall not prejudice any other remedy available to the right holder, it being understood that the security shall be released if the right holder fails to pursue the right of action within a reasonable period of time. Article 54 Notice of Suspension The importer and the applicant shall be promptly notified of the suspension of the release of goods according to Article 51. Article 55 Duration of Suspension If, within a period not exceeding 10 working days after the applicant has been served notice of the suspension, the customs authorities have not been informed that proceedings leading to a decision on the merits of the case have been initiated by a party other than the defendant, or that the duly empowered authority has taken provisional measures prolonging the suspension of the release of the goods, the goods shall be released, provided that all other conditions for importation or exportation have been complied with; in appropriate cases, this time-limit may be extended by another 10 working days. If proceedings leading
to a decision on the merits of the case have been initiated, a review, including a right to be heard, shall take place upon request of the defendant with a view to deciding, within a reasonable period, whether these measures shall be modified, revoked or confirmed. Notwithstanding the above, where the suspension of the release of goods is carried out or continued in accordance with a provisional judicial measure, the provisions of paragraph 6 of Article 50 shall apply. Article 56 Indemnification of the Importer and of the Owner of the Goods Relevant authorities shall have the authority to order the applicant to pay the importer, the consignee and the owner of the goods appropriate compensation for any injury caused to them through the wrongful detention of goods or through the detention of goods released pursuant to Article 55. Article 57 Right of Inspection and Information Without prejudice to the protection of confidential information, Members shall provide the competent authorities the authority to give the right holder sufficient opportunity to have any goods detained by the customs authorities inspected in order to substantiate the right holders claims. The competent authorities shall also have authority to give the importer an equivalent opportunity to have any such goods inspected. Where a positive determination has been made on the merits of a case, Members may provide the competent authorities the authority to inform the right holder of the names and addresses of the consignor, the importer and the consignee and of the quantity of the goods in question. Article 58 Ex Officio Action Where Members require competent authorities to act upon their own initiative and to suspend the release of goods in respect of which they have acquired prima facie evidence that an intellectual property right is being infringed: a. the competent authorities may at any time seek from the right holder any information that may assist them to exercise these powers; b. the importer and the right holder shall be promptly notified of the suspension. Where the importer has lodged an appeal against the suspension with the competent authorities, the suspension shall be subject to the conditions, mutatis mutandis, set out at Article 55; c. Members shall only exempt both public authorities and officials from liability to appropriate remedial measures where actions are taken or intended in good faith. Article 59 Remedies Without prejudice to other rights of action open to the right holder and subject to the right of the defendant to seek review by a judicial authority, competent authorities shall have the authority to order the destruction or disposal of infringing goods in accordance
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with the principles set out in Article 46. In regard to counterfeit trademark goods, the authorities shall not allow the re-exportation of the infringing goods in an unaltered state or subject them to a different customs procedure, other than in exceptional circumstances. Article 60 De Minimis Imports Members may exclude from the application of the above provisions small quantities of goods of a non-commercial nature contained in travellers personal luggage or sent in small consignments. 5.6 CRIMINAL PROCEDURES Article 61 Members shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale. Acquisition and maintenance of intellectual property rights and related inter-parts procedures Article 62 1. Members may require, as a condition of the acquisition or maintenance of the intellectual property rights provided for under Sections 2 through 6 of Part II, compliance with reasonable procedures and formalities. Such procedures and formalities shall be consistent with the provisions of this Agreement. 2. Where the acquisition of an intellectual property right is subject to the right being granted or registered, Members shall ensure that the procedures for grant or registration, subject to compliance with the substantive conditions for acquisition of the right, permit the granting or registration of the right within a reasonable period of time so as to avoid unwarranted curtailment of the period of protection. 3. Article 4 of the Paris Convention (1967) shall apply mutatis mutandis to service marks. 4. Procedures concerning the acquisition or maintenance of intellectual property rights and, where a Members law provides for such procedures, administrative revocation and inter partes procedures such as opposition, revocation and cancellation, shall be governed by the general principles set out in paragraphs 2 and 3 of Article 41.
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5. Final administrative decisions in any of the procedures referred to under paragraph 4 shall be subject to review by a judicial or quasi-judicial authority. However, there shall be no obligation to provide an opportunity for such review of decisions in cases of unsuccessful opposition or administrative revocation, provided that the grounds for such procedures can be the subject of invalidation procedures. 5.7 PROTECTION AGAINST UNFAIR TRADE COMPETITION Protection against unfair competition has been recognised as one of the main objectives of intellectual property system. It does not grant exclusive rights to the owners with respect to the subject concerned, like in the case of patents, trade marks, etc. Infact, it prohibits any act of competition that is contrary to honest practices in industrial or commercial matters, referred to as unfair competition. The acts of unfair competition not only adversely affect the competitors, which tend to lose their customers and market share; but also affect consumers as they are likely to be misinformed and mislead and tend to suffer economic and personal prejudice. The following acts of unfair competition are closely related to IP and are directly relevant to consumer protection:- all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor indications or allegations the use of which in trade is liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for their purpose or quantity, of the goods. Whatever form unfair competition may take, it is in the interest of the honest and legitimate entrepreneur, the consumer and the public at large that they should be prevented from it as early and as effectively as possible. Free and fair competition between enterprises is considered to be the best means of satisfying supply and demand in the economy as well as of serving the interests of consumers and economy as a whole. This stimulates innovation and productivity and leads to the optimum allocation of resources in the economy; reduces costs and improves quality; as well as accelerates economic growth and development. Hence, In India, the Government has formulated a Competition Policy which protects the interests of consumers and producers by promoting and sustaining a fair competition. Further, fair play in the market place cannot be ensured only by the protection of industrial property rights. A wide range of unfair acts, such as misleading advertising, violation of trade secrets, etc., are usually not dealt with by specific laws on intellectual property. Thus, it is necessary to enforce Unfair Competition law to supplement the intellectual property laws and to grant fair protection to consumers. Data Exclusivity: Protection against unfair commercial practice.
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Introduction: Data exclusivity is one of the most interesting issues in the current discussion on pharmaceutical intellectual property policy-making globally. It is aimed at protecting and safeguarding pharmaceutical registration files, i.e. the data submitted by companies to regulatory authorities. The underlying logic of data exclusivity suggests that it is an expression of trade secrets and, as such, should be independent of patents. Compared with patents, the market power of data exclusivity is, in theory, less restrictive, mainly because it does not legally prevent other companies from generating their own registration data. One of the highly debated and controversial TRIPS compliance agenda, which could impact Indian domestic pharmas future growth profile, is data exclusivity. Even though, the industry has serious concerns in adopting this provision, the global growth of Indian pharma makes it imperative for India to provide confidence and assurance to our overseas partners and clients. We must convince them that we prefer compliance within flexibilities, without prejudicing domestic national public health interests. The transitional period of ten years, given to developing nations to conform to the TRIPS agreement ended on December 31, 2004. This opened up the pharmaceutical sector to product patent regime which gave exclusive rights to the inventor to use and sell his product, patented since 1995 for a period of 20 years. Coming under TRIPS obligations, India amended its 1970 Act and consequently, introduced product patent regime in 2005, amidst a flurry of protests by public interest groups across the country. For the good of many, for the benefit of many- the ancient system of Indian medicine believed in this holy principle for thousands of years. When it came to patient care and treatment, it was always people before profits. Even in the modern age of medicines, India plays a significant role in global access to medicines. In fact, it is one of the worlds largest exporters of cheap generic drugs mainly to poor countries of Africa and Asia that do not have drug producing abilities. Understanding the provisions of TRIPS: One of the main reasons why companies are in favour of data exclusivity provisions is because, it takes around 8-10 years of intensive clinical research and trials and an investment of between $800 million to $1.2 billion to bring a new drug into the market. Further, by its very nature, R&D is a high risk business. MNCs seem to further strengthen their argument in support of data exclusivity by citing Article 39.3 of TRIPS, namely- WTO Members should protect undisclosed test or other data against unfair commercial use and disclosure. Conversely, nowhere does TRIPS state that countries should provide exclusive rights to the originator of the data for a given period. Rather, TRIPS simply refers generally to the need for data protection. Data protection against unfair commercial misuse, as mentioned
in TRIPS, is totally different from data exclusivity. Therefore, the use of data by the Drug Controller is a legitimate, non-commercial use and is TRIPS compliant. a) Interpreting Article 39.3
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Article 39.3 requires countries to protect undisclosed registration data about new chemical entities i) against disclosure and ii) against unfair commercial use. Thus, regulatory authorities may not publish registration data, or share it with third parties (e.g. generic competitors). This is a clear requirement. But there is some debate as to what exactly is meant by unfair commercial use. Does the use of bio-equivalence studies instead of full clinical trials represent unfair commercial use? Clearly, there is no unfair commercial use by the generic company. The generic manufacturer never uses the originators data and does not even have access to them. Meanwhile, the regulatory authorities also do not normally use the originators data though, as mentioned above, they may (indirectly) rely on them. But even if the regulators uses those data, this is not commercial use, since the regulatory agency is not a commercial organisation. Legal experts have also pointed out that, in the context of Article 39 of TRIPS, the term unfair commercial use refers to, and prohibits, practices such as industrial espionage. However, it was not meant to provide exclusive rightsnor was it meant to interfere with the work of a government body, tasked with protecting the public. Article 39.3 does not need protection for data that is already public; Protection is required only for new chemical entities (NEC). Hence, countries have considerable discretion in defining new and can exclude applications for second indications, formulations, etc. Before granting protection, regulators can ask applicants to prove that the data, for which protection is sought, is the result of significant investment. Thus, Article 39.3 only seeks protection against unfair commercial use and countries are allowed considerable discretion in defining unfair use, keeping in mind its spirit that the health authorities must not disclose test data, submitted by companies. b) Article 39.3 does not endorse exclusive rights Data exclusivity does not have major implications, since the period of data exclusivity would normally be shorter than the patent duration. It is also clear from the above that data exclusivity is not related to patent protection. A few years ago, the US and its powerful drug multinationals, after successfully managing the WTO agreement on TRIPs and Public Health in its favour, started actively pursuing for a data exclusivity provision for drugs in the Indian regulatory system.The ultimate goal was to incorporate the data exclusivity condition into the patent rules of The argument of data exclusivity conferring absolute and dictatorial rights to pharmaceutical companies stands baseless, on the contrary it recognizes and gives well deserved economic returns for its efforts, which is, oftentimes data arising out of many years of research and clinical trials and is very expensive to produce. It is viewed that Data Protection is very different from data exclusivity. Contrary to Indias stand, the EU and
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US are of the opinion that article 39.3 also covers data exclusivity and they have adopted similar legislation to provide data exclusivity to innovator, the duration of which may exceed up to 10 years in EU and 5 years in US. However, it needs to be understood that the main objective ofArticle 39.3 is to restrict and stop unfair commercial useor unfair competition. Therefore, it is vital to analyze unfair commercial use at this juncture. c) Unfair commercial use According to Article 39.1 of TRIPS, in the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris convention (1967), members shall protect...data submitted to governments or governmental agencies in accordance with paragraph 3. Thus, the obligation of the members is to protect data submitted to the government or government agencies in the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris convention. Even though, Article 39.3 uses the term unfair commercial use instead of unfair competition, the purpose and the meaning of the word unfair commercial use convey the same meaning. Article 10bis of the Paris convention defines unfair competition as any act of competition contrary to honest practices in industrial or commercial matters. Further WIPO in its model provisions of unfair competition law (model law) 1996, which essentially gives effect to Article 10bis, does not give any exclusive rights on undisclosed information. According to WIPO, repression of unfair competition is not concerned with exclusive rights, but is directed against acts of competition contrary to honest practices in industrial or commercial matters, e.g. in relation to undisclosed information (trade secrets). The model law does not indicate that a fixed term of protection of undisclosed information is what is necessary for effectively implementing the abovementioned article of the Paris convention. More importantly, under the discipline of unfair competition, protection is not based on the existence of property rights. Further, according to the commission on intellectual property rights, innovation and public health (CIPIH), appointed by the World Health Organization, Article 39.3 does not create property rights, nor a right to prevent others from relying on the data for the marketing approval of the same product by a third party, or from using the data except where unfair (dishonest) commercial practices are involved. Additionally, the commission on intellectual property rights (CIPR) recommends that countries may allow health authorities to approve equivalent generic substitutes by relying on the original data. Therefore, the debate on Article 39.3 revolves around whether to include or to leave data exclusivity from the interpretation of the said article. On the analysis of the text of WIPO, as mentioned above, it can be argued that repression of unfair competition does not advocate any kind of exclusive rights. Thus, the enjoyment of market exclusivity to pharmaceutical companies or the innovator on the basis of Article 39.3 is not at all a possibility especially as the word exclusivity is not mentioned anywhere in the Article.
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Conclusion: Its interesting to note that the committee for the Protection of Undisclosed Information was formed under Article 39.3 of the TRIPS Agreement, under the chairpersonship of Satwant Reddy, Secretary, Ministry of Chemicals and Fertilizers. This committee had recently finalised a proposal for a five-year term of data exclusivity (DE) for India. However, the proposal put forward by the Satwant Reddy report, which would allow multinationals exclusive use of their costly data for three to five years with adequate safeguards, is still being considered, given that this might not do justice to Indias obligations to TRIPS. Developing countries like India should implement data protection legislation that facilitates the entry of generic competitors, whilst providing appropriate protection for confidential data. This may be done in a variety of TRIPS-compatible ways. There is no need to enact legislation in order to create exclusive rights where no patent protection exists or to extend the effective period of the patent monopoly beyond its proper term. With regard to the question of research in generic drugs, it is known that generic drugs dont require the same amount of documents; in fact it would be a very small fraction. Why should anyone be interested in the results of the original drug? There would be enough evidence developed over years from the usage of the original drug, establishing the suitability of the molecule or formulation. So, what can we look forward to in the future? India should not impose restrictions for the use of or reliance on such data in ways that would exclude fair competition or impede the use of flexibilities built in TRIPS[21] Instead, it should emphasise the public health aspects of data exclusivity rather than merely consider thecorporate gains of a few pharmaceutical companies Suit for infringement Sections 104 to 117 deal with the suits concerning infringement of patents. Chapter XVIII describes the jurisdiction of courts, burden of proof, declaration of non-infringement, pleas of defence, reliefs available in a suit for infringement and other related matters. Jurisdiction: An action for infringement of a patent must be instituted by way of a suit in any District Court or High Court having the jurisdiction to try the suit. Where a counter claim for revocation of the patent is made by the defendant, the suit, along with the counter claim, will be transferred to the High Court for decision (Section 104). The cause of action for fiI ing the suit must have arisen at a place within the jurisdiction of the court where the suit is filed. Suit for infringement: A suit for infringement can be filed by the patentee, Jr his exclusive licensee or assignee or co-owner or any person authorised by the patentee. A suit for the infringement must be filed within 3 years from the :late of infringement. It can be filed only after the patent has been sealed. However, he can claim damages caused to him by infringement committed :luring the period between the date Of advertisement of acceptance of complete
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Burden of proof in case of suits concerning infringement In any suit for infringement of a patent, where the subject matter of patent IS a process for obtaining a product, the court may direct the defendant to prove, evocation of a patent in the earlier chapter under the heading revocation, patent. The grounds of revocation may be pleaded as defence in a suit n infringement. The defences are: a. that the invention was claimed in a valid claim of earlier priori date contained in the complete specification of another pate b. that the patentee is not entitled to the patent; c. that the patent was wrongfully obtained in contravention of the person entitled; d. that the subject of claim is not an invention within the meaning e. that the invention as claimed is not new having regard to what v, publicly known or publicly used in India or elsewhere before t expiry date of the claim; f. what the invention as claimed is obvious and does not involve an inventive step; g. that the invention is not useful; h. that the complete specification does not sufficiently and describe the invention and the metho by which it is to be performed i. that the scope of any claim of the complete specification is sufficiently and clearly defined or is
j. that the patent was obtained on a false suggestion or representing Reliefs against infringement Where a suit is filed for infringement of a patent, the plaintiff is entitled to the following remedies under Section 108. They are: An action for infringement of a patent must be instituted by way of suit in any District Court or a High Court havingjurisdiction to try the suit. It can be instituted only after the patent has been sealed. There is no infringement in an invalid patent. A suit for infringement of a patent which has expired may be brought in oider to claim damages sustained during the term of the patent. The purpose of the injunction is to prevent apprehended use of the patentees statutory monopoly, as defined in his claim. The reliefs of damages and an account of profits are alternatives and may not both be awarded or ordered in respect of the same infringement. The purpose of an account of profits is not to punish the defendant but to prevent his unjust enrichment.
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Injunction: The relief of injunction is the most common effective and important relief. In cases of urgency the wide discretionary power have been conferred upon the court to grant interiminjunction subject to certain conditions. An injunction will be granted as general rule where the validity of the patent and infringement are conclusively established. However the grant of an injunction is discretionary. Where an injunction is granted, it is important to limit the scope of the injunction to prohibit acts, which if carried out would infringe the patent. That there is aprimafacie case that the patent is valid and infringed.That the balance of convenience is in favour of the injunction being granted.In the absence of interim injunction, the plaintiff will suffer an irrepairable loss. Before granting an interim injunction the court will also take into consideration, the following factors: (1) whether it is possible to compensate the plaintiffby award of damages when he succeeds at the trial (2) remaining term of the patent and (3) whether the defendants trade is new one or an old one. In a suit of infringement the plaintiff is entitled to injunction ifhe establishes his case. For the grant of temporary injunction, principles applicable to the infringement of patent action are that there is a prima facie case that the patent is valid and infringed, that the balance of convenience is in favour of injunction being granted and that the plaintiffwill suffer an irrepairable loss. I An interim injunction will not be granted if the patent which has been obtained by the plaintiff is a recent one and there is a serious controversy about the validity of the grant of patent itself. Iffrom the objections raised by the defendant, it is clear that a serious controversy exists as to whether or not the invention claimed by the plaintiff is new one or a new manufacture or whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent, courts will not grant an interim injunction restraining the defendant from pursuing his normal business activity. The interim injunction will not be granted if the defendant dispute the validity of the grant.2 The Delhi High Court refused to grant injunction where there is the validity of the grant of patent is challenged. It held that if it is endeavoured to be shown that the patent ought not to have been granted, the court will not interfere by issuing a temporary injunction.3 If the patent is more than six years old and there is been actual user, it would be safe for the court to proceed upon this presumption.4 In Rajpraksh Vs. Mangat Ram Chowdhury 5 the ingredients ofldfringements are discussed. The patented article or where there is a process, then the process, has to be compared with the infringing article of process to find out whether the patent has been infringed. Unessential features in an infringing article or process are of no account. If the infringing goods are made with the same object in view which is attained by the patented
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article then a minor variation does not take action for infringement of patent the one as to the invalidity of a plaintiffs patent and the grounds of insufficiency of description, want of novelty, absence of inventive steps and want of utility was rightly placed on the defendant. In case of infringement of a patent, the onus of proving the infringement lies upon the plaintiff, who has not only to prove the patent in his favour, but also to prove that the patent is being infringed by resorted to a process patented by the plaintiff. In doing so, he must prove that the defendant has produced the patented articles or used the patented process, and to that end, the burden is on hi~ to prove that article seized by him and produced in court is the article produced by the defendant. 1 Damages or account of profits The next relief available to the plaintiff is the award of damages. The relief of damages or account of profits are available in the alternative. The court has a discretion to award damages in lieu of or in addition to an injunction in certain cases where injury to the claimants legal right is small or which is capable of being estimated in money or which can be adequately be compensated by a small money payment or the case is one in which it would be oppressive to the defendant to grant an injunction. Restriction on power of court to grant damages or account of profits: Section III lays down certain restrictions on the power of court to grant damages or account of profits. It cannot be granted under the following circumstances: 1. Where the defendant was not aware and no reasonable grounds for believing that the patent existed 2. Where any infringement was committed after the failure to pay any renewal fee within the prescribed period and before any extension of that period. 3. Where the specification has been amended, the infringement was committed before the date of amendment unless it was shown that the original specification was framed in good faith and with reasonable skill and knowledge. Apart from these circumstances, the reI ief of damages or account of profits may be awarded for a partially valid specification. This is provided under Section 114 of the Act. Seizure, forfeiture or destruction The plaintiff is also entitled to another remedy by virtue of amendment made in the year 2002 with effect from 20.5.2003. Clause (2) of Section 108 has been inserted by the Patents (Amendment) Act, 2003, which provides additional remedy of seizure, forfeiture or destruction of goods without payment of any compensation. It says, that the court may also order that the goods which are found to be infringing and materials and implement, the predominant use of Patents. The particulars of the breaches, constituting the alleged infringements of his/her rights.
Threat of infringement proceedings Section 106 provides the reliefs like a declaration or an injunction or damages in the case of groundless threats of infringement proceedings. The patent right is a statutory right and in case of any infringement, the patentee is entitled to institute a suit against the infringer. But without filing any suit for infringement. If he threatens any other person by means of circulars or advertisements or by communications, orally or in writing he can be stopped by any aggrieved person. This type of threatening is generally given to a rival manufacturer, dealer with a view to stop the suspected infringement without having recourse to expensive infringement proceedings. The Section 106 says that where any person threatens any other person by circulars or advertisements or by communications, orally or in writing addressed to that person or any other person, with proceedings for infringement of a patent. any person aggrieved may bring a suit against him praying for the following reliefs, that is to say (a) a declaration to th~ effect that the threats are unjustifiable; (b) an injunction against the continuance of the threats;(c) such damages, if any as he has sustained thereby. A mere notification of the existence ofa patent does not constitute a threat of proceedings within the meaning of this section. Section 107 speaks about the defences available to the defendant in a suit for infringement. Infringement is violation of a right. It is unlawful making or selling or using a patented invention. A suit for infringement will arise only after the patent has been sealed. Repairing of a patented article to prolong the life of the article is permitted, but one must not make new one under the guise of repairing it. Under Section 47, the use of any patented article for the purpose of experiment or research for imparting of instructions to pupils is not an infringement. 5.8 INFRINGEMENT OF COPYRIGHT IN A DESIGN Section 22 (1) speaks about fraudulent and obvious imitations. Imitation is common in both cases. In the case of fraudulent imitation the imitation need not be obvious. Mere intention to deceive is enough. In the case of obvious imitation, it is necessary that the imitated article is very closer to the registered article. It is not necessary that the design must be exact reproduction of the registered design. Both the designs must be viewed as a whole and it must be viewed through the eyes of a consumer. The factors to be considered In order to establish piracy, the following must be established: a. that the copyright in the design exists; b. that the design or a fraudulent or an obvious imitation thereof has been applied to the article alleged to be pirated one;
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c. that the design or its imitation has been applied without the licence or written consent of the registered proprietor; d. that the article to which the design has been applied comes within the scope of description of goods covered by the registration; e. that the application of the design has been made for the purpose of sale of article; and f. that the defendant has applied the design or caused the design to be applied or done anything with a view to enable the design to be so applied to the article, or the defendant has imported for the purpose of sale the article bearing the design or its imitation without the consent of the registered proprietor or the defendant has published or exposed or caused to be published or exposed for sale the offending article knowing that it is pirated or infringing article.
In this case, the plaintiffs were registered proprietors of a certain design for printing saris. The defendants imported into Bombay, ten cases (boxes) of Japanese print which is identical with or a fraudulent imitation of the registered design ofthe plaintiffs and that the defendants applied the design to the goods contained in the ten cases without the licence or consent of the plaintiffs. The court observed: It is not necessary in the case of every design or pattern in order to bring it within the statute that it must be exact reproduction of the registered design or that the words fraudulent or obvious imitation in the section must be construed to mean exact reproduction. Where there was no novelty or originalty about the registered design or pattern but it was merely a particular arrangement of old and well known kinds of work, quite a small change would make a great difference. It is only in cases where there is no novelty or originalty about the design that exact reproduction of the registered design would amount to an infringement of such a design and quite a small change, however trifling it may be, would make a great difference. Who is an infringer? In Mohammed Abdul Kareem V s. Mohammad Yasin I, the court has answered the question who is an infringer of a design. He is, i. a person who has applied the design or a fraudulent or obvious imitation thereof to the article for the purpose of sale without the licence or consent of the proprietor
ii. a person who has caused to be applied the design or its imitations as aforesaid; iii. a person who has done anything with a view to enable the design to be applied as aforesaid; . iv. a person who has imported for the purpose of sale a pirated article without the consent of the registered proprietor; and v. a person who has published or exposed or caused to be published or exposed for sale a pirated article knowing that it is pirated article.
Burden of proof: It is for the plaintiff to prove that the defendant had knowledge of plaintiffs right in a design. Further he has to establish that both the designs are similar and it is an obvious imitation of the registered design of the plaintiff. In Nikki Tasha (India) Pvt. Ltd. Vs. Faridabad Gas Gadgets!, the Delhi High Court discussed that where an injunction can be granted. In this case the plaintiff got the registration with regard to a product known as KITCHENETE which is a combination of gas burner, grill and oven. The plaintiff sought permanent injunction against the defendant who under the name of NAV JYOTI, are manufacturing, selling and advertising LPG Gas, cooking range similar in design to the registered designs of plaintiff. While refusing to grant injunction in favour of plaintiff, the court observed: An interlocutory injunction will not normally be granted where damages wi1l provide an adequate remedy if the claim succeed. The court will not grant an interlocutory injunction unless satisfied that there is a real probabil ity of the plaintiff succeeding on the trial of the suit. Where the design is of a recent date, no inj unction should be granted. Moreso, when there is a serious question as to the validity of the design to be tried in the suit, an application for cancellation has been made where a person has entered as a proprietor of a registered design, that is under the Act no conclusive proof that the plaintiff is proprietor of the designs, but only a prima facie evidence that he is the proprietor. Damages or compensation Apart from the grant of injunction, the proprietor is also entitled the relief of damages. The infringer will be liable for every contravention of Section 22 to pay the registered proprietor of the design, a sum not exceeding Rs. 25,000/which is recoverable as a contract debt. The total sum recoverable in respect of anyone design will not exceed Rs. 50,000/. If the proprietor elects to bring a suit for the recovery of damages for any such contravention and an injunction against the repetition thereof, the infringer is liable to such damages as may be awarded and to be restrained accordingly. Deliver up of infringing articles Section 22 provides the remedy of deliver up of articles. The plaintiff may also ask for rendition of accounts by the defendants to show the profits earned by the defendant by unlawfully using the design. The plaintiff would contend that the profit earned by the defendant would be the loss sustained by him which he would claim as damages. REVIEW QUESTIONS 1. Write short note in Patent Infringement 2. How to modify granted patents 3. Suggest suitable strategies for protecting unfair competitions 4. Explain the ways of enforcing the Intellectual Property Rights 5. Briefly examine the laws related to the IPR in India
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INTELLECTUAL PROPERTY RIGHTS

INTRODUCTION TO INTELLECTUAL PROPERTY

INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL RIGHT TO INDIVIDUAL SECURITIES REPUTATION

The following chart clearly explains the classification of Intellectual property

LAYOUT DESIGNS Etc.

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1856 The act vi of 1856 on protection of inventions based on the british

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

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INTERNATIONAL PROTECTION OF INTELLECTUAL PROPERTY RIGHTS

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Secretariat staff Head Functions

635 Pascal Lamy (Director-General)

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2.3. WTO WIPO COOPERATION AGREEMENT

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL PROPERTY RIGHTS

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INTELLECTUAL PROPERTY RIGHTS

INTELLECTUAL PROPERTY RIGHTS