Emerging Technologies and Intellectual Property Rights

Presented by

Poorvi Chothani, Esq.

LawQuest, Mumbai
www.lawquestinternational.com

Intellectual Property
According to the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time.

Emerging Technologies

Digitization Electronic distribution The Internet Nanotechnology Bio-technology Move from physical assets to intangible assets

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Effect of Emerging Technologies

Innovation Growth of new industries e.g. BPO Efficiency Savings Prolific Publishing Opportunities (specialized websites, blogs, portals) Customer Centric Advertising

Intellectual Property Rights

Patents Trademarks Copyrights Industrial designs Trade Secrets Data Geographical Indications

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International Treaties
India is a member or signatory of several international organizations and conventions:

Word Intellectual Property Organisation (WIPO), World Trade Organization (WTO) - TRIPS Paris Convention for the protection of Industrial Property

Patent Co-operation Treaty (PCT)

Budapest Treaty

Relevant Laws*
The The The

The
The

Patents Act, 1970 Copyright Act, 1957 Trademark Act, 1999 Designs Act, 2000 Information Technology Act, 2000

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*As amended from time to time and with their supporting rules.

Issues Facing Evolving Technologies

IP Development IP Ownership IP Protection IP Management IP Valuation IP Dilution Fragmented Marketing Initiatives Loss of Privacy Data Protection

Patents Protect Emerging Technologies

A Patent is an intellectual property right relating to inventions and is granted exclusive right, for a limited period, to an inventor. An invention means a new product or process involving an inventive step and capable of industrial application (S. 2(1)(j))

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Patentable Inventions
An invention is capable of industrial application if it satisfies three conditions, cumulatively: Can be made; Can be used in at least one field of activity; Can be reproduced with the same characteristics 1. An invention to be patentable must be useful. If the subject matter is devoid of utility, it does not satisfy the requirement of invention. 2. Can be exploited for commercial purpose; 3. The meaning of usefulness is therefore useful for the purpose indicated by the applicant or patentee whether a non-commercial utility is involved.

Non-Patentable Inventions

Section 3 of the Patents Act enumerates certain types of inventions or forms that are not patentable
Section 4 of the Patents Act prohibits the patenting of inventions relating to atomic energy

Patent Rights

The patentee receives exclusive right on registration of the patent application, to

prevent others from performing, without authorisation, the act of making, using, offering for sale, selling or importing that product for the above purpose. exclude others from performing, without his authorisation, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India.

Increased Patent Filings in India

Increase from less than 13,000 in 2003-04 to about 29,000 in 2006-07

PCT International Applications submitted in India

The grant of patents increased four-fold from 1,911 in 200405 to 7,539 in 2006-07

2001- 295 2002- 525 2003-764 2004- 784

(Source WIPO)

(Source- http://www.domain-b.com/economy/general/20080107_patent_applications.html)

Patents and Emerging Technologies

Granted to Innovative Products and Processes Changing Subject Matter of Patent Filings Patents and Outsourcing

Joint Ownership First to File versus First to Invent Different Levels of International Protection for Web Based Applications

Trademarks

A Trademark is a means of identification of goods or services, a symbol which an organisation or person wises the consumer to identify with its goods or services as opposed to that of the competitor. Registration of Trademarks is governed by The Trademarks Act, 1999.

http://www.indiatrademarks.org/

Trademark Application

A Mark` may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, the shape of goods other than those for which a mark is proposed to be used, or any combination thereof or a combination of colours and so forth. The Trademark to be registered should not be deceptively similar to an existing mark of another person and not the one expressly prohibited under the Act.

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Registration

http://www.ipindia.nic.in

Duration of a Trademark

The present term of registration of a trademark is ten years, which may be renewed for further periods of ten years on payment of prescribed renewal fees. Failure to use a registered trademark for a continuous period of five years may result in cancellation.

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Infringement
The owner has the right to sue in the courts of law for infringement of the trademark.

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Trademarks and the Internet

Domain names importance of maintaining similarity Global impact of trademarks Domain name disputes claimants reliance on trademark ownership

Misdirection of search engines

Dilution of famous marks malafide use, parody and commentary Trademark infringement and/or passing off (misrepresentation) in multiple jurisdictions

Copyrights

Copyright is an exclusive right granted to the author of an original work for a limited period of time with the right to exploit that right.

Copyright Subsists In
Original Literary
Computer Software Dramatic Work Musical Works Artistic Works Cinematographic Films

Photographs
Sound Recordings etc

Bundle of Rights
Reproduce the work in any material form including the storing of it in any medium by electronic means Issue and Distribute Copies Perform the work or Communicate the work Make Films or Sound Recordings Make Translations and/or Adaptations and all the above rights for such adaptations Publicly Display the Work Transfer any of these rights, either as a bundle or individually to another party

Copyright gives the author of a literary, dramatic or musical work, the right to:

Term of Copyrights
Literary Works: 60 years from the death of the author (From the calendar year following the year of death) Broadcaster Rights: 25 years from the year following the first broadcast; Photographs and cinematographs, sound recordings, 60 years (From the calendar year following the year of publication) .

Copyright is granted for:

Copyright is subject to certain limitations Statutory Licensing

Fair Use Exceptions

Compulsory Licensing

Copyright and Emerging Technologies

Traditionally copyright was introduced to protect printed material The legislature and the courts struggle to keep up as technology changes and new media emerge.

Digitization of Traditional Copyrightable Material

Wall papers Mobile content Music, video, images downloads from the internet Video streaming (MTV overdrive, a broadband internet
video-on-demand service)

Blogs Podcasting Subscription digital music stores-itunes and mtvs urge Tivo

Copyrights and Emerging Technologies

Copyright protection for software Patentability of embedded computer programs with technical effect Patent protection for software in the united states Version recordings and remixes (after two years of original sound recording) Peer to peer downloads iTunes, YouTube Rampant plagiarism

Designs under the Designs Act

New or original, not previously published or used in any country Relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Be applied or applicable to any article by any industrial process. Features should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Should not include any Trademark or property mark or artistic works as defined under the Copyright Act, 1957.
Any mode or principle of construction or operation or any thing which is in substance a mere mechanical device is not eligible for registration.

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Designs Rights
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Gives the owner an exclusive right against unauthorised copying or imitation of the design by third parties. Protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts.

Non-Registrable Designs

Designs of industrial plans, layouts and installations are not registrable under the Act. Painting, sculptures and the like which are not produced in bulk by any industrial process Stamps, labels, tokens, cards

An artistic work as defined under the Copyright Act, 1957 "Artistic works" means: A painting, a sculpture, a drawing (including a diagram, map, chart or plan) on engraving or a photograph, whether or not such work possesses artistic quality. An work of architecture and any other work of artistic craftsmanship.

Duration

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 made in specified format.

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Trade Secrets

Data Protection

Contact Details
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