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PREFACE
LL.B. Study Notes
305E Intellectual Property Law
CONTENTS
305E Intellectual Property Law
Topic Page
Module-1 Introductory. 3
Module-1 :
1) Introductory :
1.1) The meaning of intellectual property
1.2) Competing rationales of the legal regimes for the protection of intellectual
property
1.3) The main forms of intellectual property : copyright trademarks, patents,
designs
1.4) Other new forms such as plant varieties and geographical indications.
Introductions to the leading international instruments concerning
intellectual property rights : The Berne Convention, Universal Copyright
Convention, Union TRIPS the World Intellectual Property Rights
Organization (WIPO) and the UNESCO.
1.5) The status and position of IPRs in India in context with the International
Regime
1.6) Amendments in various legislations relating to IPRs India including
legislations of Patent, Copyright and Trademark in India and effects
thereof
MODULE-1 QUESTIONS :
Explain the meaning of intellectual property and discuss its various forms, (Nov-
2014)
Discuss : New forms of intellectual property such as (i) plant varieties, and (ii)
geographical indications.
Explain in detail the meaning of Intellectual Property with illustrations and case-laws.
(Apr-2016)
Explain in detail the main forms of Intellectual Property. (Apr-2016)
Discuss : Distinction between Copyright, Patent, Trademark.
Discuss : Enforcement of IPRs.
Discuss : Need for dedicated team for Trade Marks Management/ Protection .
Discuss : Advantages and disadvantages of protecting IP.
Discuss : Competing rationales of legal regimes for protection of IP.
Discuss : The Berne Convention.
Discuss : Universal Copyright Convention.
Discuss : World Intellectual Property Rights Organization (WIPO) .
MODULE-1 ANSWERS :
Explain the meaning of intellectual property and discuss its various forms, (Nov-
2014)
Discuss : New forms of intellectual property such as (i) plant varieties, and (ii)
geographical indications.
Explain in detail the meaning of Intellectual Property with illustrations and case-laws.
(Apr-2016)
Explain in detail the main forms of Intellectual Property. (Apr-2016)
ANSWER :
Refer :
http://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf
https://en.wikipedia.org/wiki/Intellectual_property
http://shodhganga.inflibnet.ac.in/bitstream/10603/62276/7/chapter%202.pdf
https://www.icsi.edu/docs/webmodules/Publications/9.4%20Intellectual
%20Property%20Rights.pdf
http://ccs.in/sites/default/files/ipr_india.pdf
Outline :
Intro
What is Intellectual Property ?
this means that they allow one to prohibit certain acts with respect to their
intellectual assets.
IPRs are largely territorial rights,
exception being copyright, which is global in nature in the sense that it is
immediately available in all the members of the Berne Convention.
IPRs are awarded by the State and are monopoly rights ,
implying that no one can use these rights without consent of the right holder.
Intellectual Property as movable property and chose in actions :
Intellectual Property is a property in legal sense. IP is something that can be owned
and dealt with.
Most forms of IP are chose in action, rights that are enforced only by legal action
as opposed to possessory rights.
Intellectual property is treated on par with movable property,
and can be owned, transferred, licensed, and assigned, and is also subject to
taxation and stamp duty.
The distinguishing features of this property are its intangibility and non-
exhaustability by consumption.
Rights in intellectual property are granted by the State to an inventor, author, or
originator of products that reflect his intellectual effort and ingenuity.
Just as in the case of other rights, intellectual property rights carry with them a set
of duties that in some cases bind the owner of the rights himself, and in some
cases, bind other people.
For example,
if I own copyright in any training materials,
then everyone else has duty, not to make unauthorized copies, sale, or
distribution of these materials!
Likewise, if I have the exclusive patent right to manufacture and commercially
exploit my invention,
then I also have a duty, to ensure that the invention is available in sufficient
quantities to satisfy public needs, at affordable price.
If IPR owner does not fulfill his duties, the law provides for compulsory licensing,
or even revocation of my patent, in extreme cases.
History of IPRs :
While intellectual property law has evolved over centuries,
in the 19th century the term intellectual property began to be used,
in the late 20th century, it became commonplace in the majority of the world.
1808 : The first clear example of modern usage goes back as early as 1808, when
Intellectual Property was used as a heading title in a collection of essays.
1845 : The term can be found used in an Oct-1845 Massachusetts Circuit Court
ruling in the patent case Davoll et al. v. Brown.
Justice Charles L. Woodbury wrote that,
"only in this way can we protect intellectual property, the labors of the mind,
productions and interests are as much a man's own...as the wheat he
cultivates, or the flocks he rears."
1960 : It was only after 1960 establishment of the World Intellectual Property
Organization (WIPO) as an agency of the United Nations,
that the term Intellectual Property really began to be used widely.
Reasons for grant of IPRs :
The philosophy behind grant of IPRs finds origin in the Lockes Theory of Property
according to which
labor should be rewarded.
Following are the main reasons for granting IPRs :
1. Incentive to invent;
2. To encourage disclosure;
3. Commercialization of technology through licensing; and
4. To increase dynamic efficiency.
5. To prevent misappropriation and unjust enrichment,
eg Confidential Information, Trade Secret, and Know-How.
6. Consequentiality justification :
When inventors, authors or artists have an exclusive right to reproduce and
sell their works, society benefits in consequence.
This proposition is based on two assumptions.
First, it assumes that such a right encourages inventors to invent, authors
to write and artists to paint.
Second, it presupposes that,
greater the quantity of inventions and creative works eventually released
into the public domain,
the more the public benefits through economic or cultural enrichment, or
enhanced quality of life.
ie, grant of IPRs results in desirable consequences.
7. Rights-based justification :
According to rights-based justifications for IPRs, property in intellectual works
is primarily a matter of justice rather than of public policy.
IPR laws exist to define and enforce the property rights but are not the source
of these rights;
since to enjoy a property right over ones creative work is a human right.
According to such a view unauthorized use of somebodys invention or creative
work is an unfair and therefore illegal intrusion on the creator-proprietors
freedom to benefit from its use without interference.
Consequentiality justifications have inspired national IPR laws and policy making
far more than rights-based ones.
Forms of Intellectual Property :
Main forms of the intellectual property rights are:
a) Copyright which is available for artistic creative works in art, literary, music
etc.;
The term of Copyright is one of the most lengthiest, 50 years.
b) Trademark rights which are available for name, shape, logo etc.;
Term of a trademark is continuous subject to periodic renewal and no
cancellation action.
c) Designs rights which gives protection for the 3D objects like cutlery, trade
dress, motifs and patterns on fabric/ceramic etc.
Designs have the shortest term of 15 years10 years further extendable to
another 5.
d) Patent that grants monopoly to use and exploit a particular product or
process for a certain period;
Patent lasts for 20 yearsthough in practice it only starts to make money after
few years of grant.
Other forms of intellectual property rights are :
Plant Variety Rights (PVR) or Plant Breeder's Rights (PBR)
Geographical Indications Right
Copyright :
Copyright is a form of intellectual property, applicable to certain forms of creative
work. Copyrights frequently include reproduction, control over derivative works,
distribution, public performance, and "moral rights" such as attribution.
Copyright is a legal right created by the law of a country that grants the creator of
an original work exclusive rights for its use and distribution.
These exclusive rights are not absolute but limited by limitations and exceptions to
copyright law, including fair use.
Note : A major limitation on copyright is that copyright protects only the original
expression of ideas, and not the underlying ideas themselves.
While many aspects of national copyright laws have been standardized through
international copyright agreements, copyright laws vary by country.
Copyrights are usually granted for a limited time only. Typically, the duration of a
Disadvantages :
Cannot be applied to designs that concern how a product works or which are not
visible in normal use ascetics only
ID Right can be easily subverted by slight amendments to the basic design.
Patent :
Patent is a form of intellectual property.
A patent is a set of exclusive rights granted by a sovereign state,
to an inventor or assignee,
for a limited period of time,
in exchange for detailed public disclosure of an invention .
An invention is a solution to a specific technological problem,
and is a product or a process.
According to national laws & international agreements, there may be variations in,
the procedure for granting patents,
requirements placed on the patentee, and
extent of the exclusive rights.
Essentials for grant of a patent :
Patent application must include one or more claims that define the invention.
Each of the claim defines a specific property right.
These claims must meet relevant patentability requirements, such as,
novelty, usefulness, and non-obviousness.
What is included in Patent Right? The exclusive right granted to a patentee,
the right to prevent others, or at least to try to prevent others,
from commercially making, using, selling, importing, or distributing a patented
invention.
Under the World Trade Organization's (WTO) TRIPS Agreement,
patents should be available in WTO member states for any invention,
in all fields of technology,
provided they are new, involve an inventive step, and are capable of industrial
application.
There are variations on what is patentable subject matter from country to country,
even among WTO member states.
TRIPS provides that the term of protection available should be minimum 20 years .
Advantages :
A patent gives the legal right to stop others from using your invention.
Its existence may be enough to deter competitors
Buys time (20 years) in which an inventor can develop a market to the product
or process.
Attractive to investors as it limits competition.
Disadvantages :
Takes time and money to establish a patent.
All patents have to be researched to ensure there are no existing patents of a
similar nature involves legal fees.
Not possible to guarantee that a patent (once granted) is valid, it can be legally
challenged and revoked with no refunds.
It is still up to the inventor to protect a patent.
In case of patent infringement, patentee has to follow remedy elsewhere.
Involves costs. The patent office does not take sides.
Grant of patent is no indication that the invention has merit or commercial value.
Some products and process can be varied slightly to get around the exact
wording of patents.
Plant Varieties Rights (PVR) or Plant Breeder's Right (PBR) :
https://en.wikipedia.org/wiki/Plant_breeders%27_rights
http://www.wipo.int/sme/en/documents/upov_plant_variety_fulltext.html
Intro :
New varieties of plants with improved yields, higher quality or better resistance
to pests and diseases
increase quality and productivity in agriculture, horticulture and forestry, while
minimizing the pressure on the environment.
The tremendous progress in agricultural productivity in various parts of the
world is largely based on improved plant varieties.
More so, plant breeding has benefits that extend beyond increasing food
production.
Development of breeding programs for certain endangered species can remove
the threat to their survival out in nature, as in the case of medicinal plants.
Need/ importance/ benefits of Plant Variety Rights :
While the process of plant breeding requires substantial investments in terms of
money and time,
once released, a new plant variety can be easily reproduced in a way that
would deprive its breeder of the opportunity to be rewarded for his
investment.
Clearly, few breeders are willing to spend years making substantial economic
investment in developing a new variety of plants if there were no means of
protecting and rewarding their commitment.
uniform if the plant characteristics are consistent from plant to plant within
the variety;
stable if the plant characteristics are genetically fixed and therefore remain
the same from generation to generation, or after a cycle of reproduction in the
case of hybrid varieties.
The breeder must also give the variety an acceptable "denomination", which
becomes its generic name and must be used by anyone who markets the
variety.
Procedure to obtain PBR :
To be granted a PBR, it is necessary to file an application for examination by the
designated authority.
Procedure is simple and well defined, hence, the breeder is usually able to file an
application without the services of any agent acting on his behalf.
A PBR will be granted if the requirements are fulfilled.
Once granted, the PBR is valid for a minimum of
25 years in the case of trees and vines and
20 years in the case of other crops
from the date of granting the PBR.
IF PBR is granted by a country THEN, it is valid in the territory of the country
where it was granted
while in the case of intergovernmental organisations (eg CPVO Europe) which
grant PBRs, validity applies in all the member states of that organisation.
For example, the Community Plant Variety Office (CPVO) grants PBR, which
are valid in all member states of the European Union.
Examination of the variety to be protected :
The variety is submitted to the plant variety office,
who grow it for one or more seasons, to check that it is distinct, stable, and
uniform.
If these tests are passed, exclusive rights are granted for a specified period
(typically 20/25 years (or 25/30 years), for trees (and vines).
Misc Provisions :
Annual renewal fees are required to maintain the granted PVR rights.
Exemptions from PVRs :
Farmers may store the production in their own bins for their own use as seed,
but this does not necessarily extend to brown-bag sales of seed.
However, further sales for propagation purposes are not allowed without the
written approval of the breeder.
Compulsory licensing provisions are there to assure public access to protected
varieties,
IF the national interest requires it and the breeder is unable to meet the
demand.
Geographical Indications :
What is a Geographical Indication?
A geographical indication,
is a sign used on goods that have a specific geographical origin
and possess qualities or a reputation due to that place of origin .
eg, name of the place of origin of the goods.
Agricultural products typically have qualities that derive from their place of
production and are influenced by specific local geographical factors, such as
climate and soil.
Whether a sign functions as a geographical indication is a matter of national law
and consumer perception.
The use of geographical indications is not limited to agricultural products .
They may also highlight place of origin, or specific manufacturing skills and
traditions.
eg Switzerland or Swiss, perceived as a geographical indication in many
countries for products made in Switzerland and, in particular, for watches.
What is an appellation of origin?
An appellation (action of giving a name to someone or something) of origin,
is a special kind of geographical indication used on products that have a
specific quality exclusively or essentially due to the geographical environment
in which the products are produced.
Geographical indication is genus. Appellations of origin is its specie .
Appellations of origin are protected in those states which are party to the Lisbon
Agreement for the Protection of Appellations of Origin and their International
Registration are,
Darjeeling for tea grown in the tea gardens of Darjeeling, India
Bordeaux for wine produced in the Bordeaux region of France,
Prosciutto di Parma or Parma ham for ham produced in the Parma
province of Italy
or Habana for tobacco grown in the Havana region of Cuba.
Why do geographical indications need protection?
Geographical indications are understood by consumers to denote the origin and
quality of products.
Many of them have acquired valuable reputations which, if not adequately
protected, may be misrepresented by commercial operators.
rights will be respected and that profits will be returned to IPR holders when
goods and services are traded in the region.
Accessible, sufficient and adequately funded arrangements for the protection of
rights are crucial in any worthwhile intellectual property system.
Strong IPR systems boost economic growth, promote investment and develop
industries that promote creativity and innovation.
TRIPS call for enforcement procedures which permit effective action against IP
infringement.
1. IPR enforcement under TRIPS :
<read from TRIPS Agreement in this doc>
In short, the TRIPS agreement says
Governments have to ensure that intellectual property rights can be enforced
under their laws,
and that the penalties for infringement are tough enough to deter further
violations.
Procedures for enforcement must be fair and equitable, and not unnecessarily
complicated or costly. They should not entail unreasonable time-limits or
unwarranted delays.
People involved in enforcement should be able to ask a court to review an
administrative decision or to appeal a lower courts ruling.
2. IPR enforcement under National legislations :
Remedies for Infringement under Indian Laws fall in two categories :
A. Civil Actions
B. Criminal Actions
Indian IP laws contain enough provisions for administrative, civil and criminal
remedies for infringement of the rights.
However, the problem lies in effective enforcement, especially due to scientific and
technological advancements, which have led to newer ways of circumventing laws.
The rapid technological evolution and its effect on enforcement calls for newer and
effective ways to handle the situation.
2A. Civil Actions :
When any IP is infringed the right owner gets civil cause of action.
After filing of suit, plaintiffs can seek ad interim and interim relief, including,
injunctions,
orders for discovery and inspection,
orders for interrogatories.
Ad interim order operates till interim relief application is decided,
Discuss : Need for dedicated team for Trade Marks Management/ Protection
ANSWER :
Refer :
http://www.legalserviceindia.com/trademarks-copyrights/trade
%20markmainpage.htm
http://epgp.inflibnet.ac.in/epgpdata/uploads/epgp_content/law/08._intellectual_pr
operty_law/27._intellectual_property_assignment_and_licensing_/et/5795_et_27_
et.pdf
<Note : This discussion is Trade Marks. However, same applies to other IPRs as well>
Need for dedicated team for Trade Marks Management/ Protection :
Trade Mark is a valuable asset for any business activity.
Trademarks need to be nurtured just like human beings.
Need for dedicated team for Trade Marks Management/ Protection, can not be over
emphacised.
However, if the creation of an exclusive trademark department is not economical
for any reason,
then it is better to entrust this task to a Trademark Attorney who should be
properly instructed to maintain all particulars and papers with regard to
trademarks either on retainer or work-to-work basis.
Trademarks management comprises two aspects :
1. Trademark Policy
2. Trademark Protection
1. Trademark Policy :
It is a marketing function. Normally the marketing personnel of an organization will
take care of this trademark policy letter known as ' Brand Management
2. Trademark Protection :
It is a legal function. Hence, it is better to integrate the trade marks department
with the legal department of an organization.
The principal duty of the Trademarks Department is to protect and administer the
trademark of the company
i.e. by getting registration under the relevant laws of a particular country, the
country of registration, the list and classes of goods and the services covered ,
renewals, action against the infringes and dishonest users and so on.
The trademarks department has an additional task in advising the marketing
personnel
in the choice of new trademarks,
To maintain individual files for each and every trademark of the company for easy
reference.
It is better to computerize the Trademarks Department by creating a software for
this kind of ' Trademarks Management '.
Appoint/ retain competent lawyers to safeguard IPR assets through legal action.
thereby allowing the society to access something that would otherwise have
remained secret.
Protection in the form of intellectual property rights (IPRs) was the price paid
by society to the inventor so that the latter would make his work public.
ie there was greater focus on the individual right of the inventor,
and lesser focus on societal needs.
In todays world, the justification for protecting intellectual property is essentially
utilitarian (need to be useful or practical).
If everybody is free to access new knowledge, inventors have little incentive to
commit resources to producing it.
However, IPR holder also has a duty to be sensitive to meet public needs, at
affordable price.
And in case he fails in this duty, then the legal regime shall provides for
compulsory licensing, or even revocation of patent (or other IPR), in extreme
cases.
Illustration : 2012 : In the case of Natco Pharma Limited v. Bayer Corporation,
the Indian Patents Office granted its first compulsory license, for the
manufacture and sale of Bayers patented cancer drug Nexavar.
In this case Bayers inability to make Nexavar available to nearly 98 per cent
of the Indian public was held by the Controller to amount to a failure to satisfy
the reasonable requirements of the public.
This case set the precedent for making expensive patented drugs available for
compulsory licensing under the Patents Act.
Way To Go ! Creative Commons license (CC) :
Creative Commons license is a fit response to the increasingly high level of
capitalization of intellectual property rights.
CC license is an alternate model to protect intellectual property with less stress
on the commercial component.
CC license is one of several public copyright licenses that enable the free
distribution of an otherwise copyrighted work.
CC license is a collection of eleven possible conditions under which the author
can protect his work,
and in the meantime also provide free reproduction of copyright works for
educational and other socially useful purposes.
Copyleft : Copyleft is a form of copyright license. It is similar to Creative
Commons.
Copyleft can be used for publishing all kinds of copyrighted works such as
texts, music, films, computer software, plays, photographs, etc.
In case of default copyright publishing all rights are reserved in favour of the
owner of copyright,
whereas in copyleft licensing only some rights belonging to the owner are
reserved while others are waived off in favour of the users.
The concept of copyleft is derived from copyright and in fact copyleft is just a
play on the word copyright
to describe the practice of using copyright law to remove restrictions on
distributing copies and modified versions of a work for others and requiring
that the same freedoms be preserved in modified versions.
The copyleft concept uses copyright law creatively to ensure that open content
remains open even when it is modified and redistributed by subsequent
developers.
openly disclose their innovation without any fear that others would appropriate
their creativity.
As per utilitarian theory, awarding property rights to innovators and producers of
creative work is a mere means to an end,
because, ultimately the society benefits as the new creation or innovation is
more openly disclosed.
Patents : Mill agreed that patent monopolies are appropriate compared to
earlier practices of rewards or privileges granted by the monarchy and the
government.
He argued that granting rewards or privileges by government involved
discretion on the part of the authority which may not necessarily recognise
certain inventions.
Patent regime that allowed monopoly to the inventor in exchange for
disclosure of the invention was thought be a good system.
It struck a fine balance between protecting the inventors interest and sharing
or disseminating information about new technologies.
Trademarks : Utilitarian theory is also used to justify the existence of the
modern trademark law.
A utilitarian would argue that protecting marks would reduce search costs,
avoid confusion and ensure quality by weeding out counterfeit goods from the
market. This maximizes the well-being of all people in the society and reduces
harm.
Marks used on the goods serve as a source identifier. It communicates to the
customer about the source of origin of the goods and also to an extent about
the quality of the goods.
If marks are not protected then any person may use it to pass off his goods as
that of others. This would harm the businesses and also confuse the
consumers who associate the mark with certain quality and originating from a
particular business.
Copyrights : Utilitarian justification works well to justify the existence of the
copyright regime as it protects the works of authors, composers, sculptors,
painters, photographers.
A utilitarian would argue that a monopoly for a short duration would encourage
more people to disseminate their work which would enable the public to read,
enjoy and appreciate creative works.
Lack of protection would not give authors enough incentive to be engaged in
creative works.
A copyright regime provides enough incentives to the author as it enables him
to disseminate his work without the fear of someone appropriating his work. It
also enables the author to earn through his creative works.
Criticism :
Utilitarian justification of IPR on the other hand is criticised because,
utilitarian theory does not balance private and public interests.
Rather, unmindful of balance of equity equity, it blindly tries to maximize
benefit.
Private intellectual property restricts the use of ideas.
Patent regime based on the incentive system restricts the people other than the
first person to register the idea, from freely using that idea.
Granting property rights to intangible ideas impedes the flow of knowledge and
also prevents or delays downstream innovation.
Though there is a system of disclosure under the patent system it still provides
exclusive ownership to the person who owns the patent, and he can restrict
others from freely using the invention for a certain period of time (twenty
years).
Illustration :
Had the patent system prevailed during the time when wheel was invented it
would have restricted others from freely using the invention, this would have
seriously restricted the development of mankind as many important, whether
small or big improvements, immediately followed after the invention of wheel.
Thus, the IPR as such does not exactly allow free flow of ideas and the
restriction on the diffusion of technology in a way impedes innovations based on
the original patents.
The negative effect it has on the market has to be taken into consideration.
By providing patent protection for twenty years, what it invariably does is it
eliminates competitors in the market and creates a monopoly situation and the
society may not benefit from such inventions.
2. Labour Theory :
Theory :
One of the powerful basis for justifying IPR lies in the belief that
a person deserves the fruits of his labour .
This would mean that an IPR would belong to the person who created it because
it involves his labour and all the benefits derived from it would be the fruits of
his labour.
John Locke in his Second Treatise of Government asserts that all that is in
nature is provided by God and it is available to all men as it is held in common
for the benefit of all.
So no individual can have prior claim over substances that are available in
nature as it is meant for the enjoyment of the entire humanity.
Locke asserts that when individual exerts his labour over resources he can claim
it as his property because he has added value through his labour.
Lockes version of this labour justification is based on the assumption that each
individual has prior property rights in ones body.
According to Locke, labour exerted by an individual is his own property as he is
the owner of his body.
Therefore, it is impossible to separate labour and its product .
Locke would readily grant patent right if an individual exerts labour to come up
with an innovative product or machine that is useful.
Illustration :
James Watt used his labour to develop and improve steam engines that could be
used in locomotives. Watts invention added value and spurred the growth of the
economy.
Lockes labour theory can be used to justify patent protection for Watts steam
engine as he had mixed his labour to develop a new technology.
As per Locke, an author, painter, photographer or musician who has exerted his
labour to express his original thoughts in the form of a book, paint, photo or
music album should readily be granted a copyright.
Condition : Lockes justification of property rights in labour is subject to a particular
condition.
According to him, property rights can be allowed only if it does not deny the
others of resources existing in nature. For example,
Locke would have an objection if natural phenomenon or natural resources
(like genes) are monopolized even if an individual has exerted labour to
identify or discover its existence as it would prevent others from using it for a
certain period of time.
If there are enough resources available in nature then property rights can be
claimed over resources when a person exerts labour over it.
An individual who has exerted his labour over the scarce resource cannot claim
property rights in it.
Criticism :
Lockes theory is subject to certain limitations and criticisms.
According to Robert Nozick, fruits of labour is usually valuable and property
rights enables the labourer to appropriate this value.
However, Locke allowed private property right over natural resources, only if
there is enough left for others from the common pool of resources.
For instance, if natural resources are scarce and too many people are dependent
on its availability, then if a person has mixed his labour he cannot claim property
rights in it as it would deprive others of it.
Illustration :
Patents over certain cancerous genes like the BRCA1 and BRCA2 would limit
others from using the genes for developing a diagnostic kit.
Locke would certainly disapprove of such patents if there is not enough left for
others.
According to Locke, natural resources do not have any value until an individual
exerts his labour on it.
However, this is not plausible when labour is mixed with naturally existing
substance that does not result in transformation of the substance.
Case of patent Neem Trees use as insecticide :
W.R. Grace claimed a patent for Neem extract. All that Grace did was to
identify exactly which chemical component in the Neem plant had the
insecticide properties (azadirachtin) and extracted that component and claimed
patent over it.
Though there is labour involved on the part of Grace , i.e in identifying exactly
which chemical component had the insecticide properties, it can be said that
chemical component with insecticide property already existed in nature and
its properties would have remained the same regardless of whether Grace
identified its properties.
Here the labour is mixed with what already existed in nature.
Lockes labour theory would grant patent over Neem to Grace.
Even while, Grace had obtained information about the uses of Neem tree
from the Indian farming community.
According to labour theory, even when multiple people might have contributed
to the evolution of a technology, only the value added by the most recent
contributor is to be rewarded.
eg, Prior to Watts invention of steam engine, there were many others who
contributed in the evolution of steam engine but unfortunately it was only Watt
who was able to get the full market value for improvement on the steam
engine.
3. Personality theory :
Theory :
According to this theory, any work or an invention would belong to its author or
inventor because it is the manifestation of the creator or inventors personality.
According to George Wilhelm Friedrich Hegel, personality is the reflection of an
individuals will.
He identifies the personality as the wills struggle to actualize itself .
Hegel gives prominence to the will compared to external property, which is a
manifestation of the will.
Thus, when an individual expresses himself through his work it is nothing but an
external manifestation of his personality.
Labour is the means by which the will occupies the object. Hegel believes that
this external manifestation which is seen as property cannot be alienated at any
point in time as it is a reflection of the self.
Application in IPR :
Hegels personality theory can be used to justify claims by authors, musician,
artists, sculptors, photographers etc. in their work.
An authors personality is manifested through his or her work. Books written by
authors are external objects through which their inner personality (i.e their
feelings, emotions, experiences and imaginations) is manifested.
ie, Harry Potter series is an external manifestation of J.K. Rowlings personality.
The book itself is an expression of the will and part of the personality and as
such justifies right to property.
Similarly, an innovative technology is a manifestation of the inventors will and
as such merits a property right.
Criticism :
The problem in applying personality justification to intellectual property would be
in identifying whether there is a personality stake in the particular object which
is the external manifestation of the will.
Further, Hegels proposition that works are external manifestation of a
personality also poses problem within the realm of IPR.
According to Hegels Personality Theory :
The writer or painter, in copying or imitating, has used his skills and abilities
and expressed his will and as such would have a property right in it.
This would be counter-productive to an IPR regime as it does not recognise the
imitator as a property right holder.
Conclusion :
As highlighted above,
ALL these 3 theories give different justifications for granting IPRs,
and ALL these 3 theories have certain inherent weaknesses.
The utilitarian theory justifies IPR on the basis that it maximizes the benefit to the
society.
Providing patent and copyright protection is seen as an incentive that facilitates
disclosure by inventors, authors and artists.
Without such protection inventors and artists would always be under the fear
that others in the society would engage in unauthorized copying of their work.
Lockes labour theory is an extension of the natural rights theory which can be
used to justify property rights in intangible objects on the ground that a person has
exerted his labour in creating that intangible object.
Hegels personality theory justifies property protection for intangible ideas and
expressions on the basis that it is an extension of the creator or innovators
personality.
The Berne Convention deals with the protection of works and the rights of their
authors.
It is based 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 that want to
make use of them.
History :
The Berne Convention was developed at the instigation of Victor Hugo of the
Association Littraire et Artistique Internationale.
It was influenced by the French "right of the author" (droit d'auteur),
which contrasts with the Anglo-Saxon concept of "copyright" which only dealt
with economic concerns.
1886 : The first version of the Berne Convention treaty was signed by Belgium,
France, Germany, Haiti, Italy, Liberia, Spain, Switzerland, Tunisia, and the United
Kingdom.
1896 : Revised at Paris,
1908 : Revised at Berlin,
1914 : Completed at Berne,
1928 : Revised at Rome,
1948 : Revised at Brussels,
1967 : Revised at Stockholm, and
1971 : Revised at Paris.
Three basic principles :
(a) Principle of "national treatment" :
Works originating in one of the Contracting States
must be given the same protection in each of the other Contracting States as
the latter grants to the works of its own nationals.
Note : Here, Works originating in one of the Contracting States means,
works the author of which is a national of such a State
or works first published in such a State.
(b) Principle of "automatic" protection :
Protection must not be conditional upon compliance with any formality .
(c) Principle of "independence" of protection :
Protection is independent of the existence of protection in the country of origin
of the work.
If, however, a Contracting State provides for a longer term of protection than
the minimum prescribed by the Convention and the work ceases to be protected
in the country of origin,
then, protection may be denied once protection in the country of origin ceases.
Minimum standards of protection :
The minimum standards of protection relate to
the works and rights to be protected,
and the duration of protection:
(a) Works to be protected :
Protection must include
every production in the literary, scientific and artistic domain,
whatever the mode or form of its expression" (Article 2(1) of the Convention).
(b) Rights to be protected :
Subject to certain allowed reservations, limitations or exceptions, the following
are among the rights that 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, and/or musical works,
the right to recite literary works in public,
the right to communicate to the public the performance of such works,
the right to broadcast,
the right to make reproductions in any manner or form,
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.
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, deformation or other derogatory
action in relation to the work,
that would be prejudicial to the author's honor or reputation .
(c) Duration of protection :
As to the duration of protection, the general rule is that
protection must be granted until the expiration of the 50 th year after the
author's death.
There are, however, exceptions to this general rule.
Exception-1. 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 author's identity
Note : In case the author discloses his or her identity during 50 years of
anonymous work
then the general rule applies, ie protection must be granted until the
expiration of the 50th year after the author's death.
Exception-2. 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")
or (in case of un-released work) from the creation of the work .
Exception-3. In the case of works of applied art and photographic works,
the minimum term is 25 years from the creation of the work .
Duration of related rights :
Related rights enjoy shorter terms, normally 50 years after the performance,
recording or broadcast has taken place.
Limitations and exceptions on economic rights :
The Berne Convention allows certain limitations and exceptions on economic rights,
that is, cases in which protected works may be used
without the authorization of the owner of the copyright,
and without payment of compensation.
These limitations are commonly referred to as "free uses" of protected works,
and are set forth in
Article 9(2) - reproduction in certain special cases,
Article 10 - quotations & use of works by way of illustration for teaching purpose,
Article 10bis - reproduction of newspaper or similar articles and use of works for
the purpose of reporting current events, and
Article 11bis(3) - temporary recordings for broadcasting purposes.
Salient feature of Berne Convention :
Developing countries are permitted,
to implement non-voluntary licenses for translation and reproduction of works in
connection with educational activities.
without the authorization of the right holder,
subject to the payment of remuneration to be fixed by the law .
Under the TRIPS Agreement, the three basic principles of Berne Convention,
also bind even those World Trade Organization (WTO) Members not party to the
Berne Convention.
nations.
Economic coercion :
Developed nations strategy of linking trade policy to intellectual property
standards)
played an important role in defeating the competing policy positions of
developing countries like Brazil, Thailand, India and Caribbean Basin states.
The GATT became the basis for the establishment of the World Trade
Organization.
Since, ratification of TRIPS is a compulsory requirement of World Trade
Organization membership,
any country seeking to obtain hard access to the numerous international
markets opened by the World Trade Organization must enact the strict
intellectual property laws mandated by TRIPS.
For this reason, TRIPS is the most important multilateral instrument for the
globalization of intellectual property laws.
Even, states like Russia and China that were very unlikely to join the Berne
Convention have found the prospect of WTO membership a powerful enticement.
Doha Declaration :
In 2001, developing countries, concerned that developed countries were insisting
on an overly narrow reading of TRIPS, initiated a round of talks that resulted in
the Doha Declaration.
The Doha declaration is a WTO statement that clarifies the scope of TRIPS,
stating for example that TRIPS can and should be interpreted in light of the
goal "to promote access to medicines for all".
Scope :
TRIPS requires WTO members to provide legal regime to protect following IPRs :
copyright rights, covering content producers including performers, producers
of sound recordings and broadcasting organizations;
geographical indications, including appellations of origin;
industrial designs;
integrated circuit layout-designs;
patents;
new plant varieties;
trademarks;
etc.
TRIPS requires that, the legal regime protecting IPRs,
shall meet the objectives to contribute to the promotion of technological
innovation
3. Dispute settlement :
The Agreement makes disputes between WTO Members about the respect of
the TRIPS obligations subject to the WTOs dispute settlement procedures.
Other features :
TRIPS provides for most-favoured-nation treatment and some general rules,
to ensure that procedural difficulties in acquiring or maintaining IPRs do not
nullify the substantive benefits that should flow from the Agreement.
The obligations under the Agreement apply equally to all Member countries,
but developing countries will have a longer period to phase them in.
Special transition arrangements operate in the situation where a developing
country does not presently provide product patent protection in the area of
pharmaceuticals.
Implementation in developing countries :
There were strong apprehensions that the TRIPS standard of requiring all countries
to create strict IPR regime was detrimental to the development of poorer countries.
hence, developing countries were allowed extra time to implement the applicable
changes to their national laws, in two tiers of transition according to their level
of development.
Lack of legal and technical expertise needed to draft legislation that implements
flexibilities,
has often led to developing nations copying IP legislation of developed nations
or relying on technical assistance from WIPO .
This, according to critics, encourages developing nations to implement stronger
intellectual property monopolies, to the advantage of developed nations.
Studies, Banerjee and Nayak, shows that TRIPS has a positive effect on R&D
expenditure of Indian pharmaceutical firms.
Criticism :
Since TRIPS came into force, it has been subject to criticism from developing
countries, academics, and non-governmental organizations.
Though some of this criticism is against the WTO generally, many advocates of
trade liberalisation also regard TRIPS as poor policy.
TRIPS results in wealth concentration, by way of moving money from people in
developing countries to copyright and patent owners in developed countries)
Coercive device of imposition of artificial scarcity on the developing nations forced
them to go for stronger IPR regime against their national welfare.
Lengthy patent periods under TRIPs unduly slows the entry of generic substitutes
and competition to the market.
The importance of TRIPS in the process of generation and diffusion of knowledge
Discuss : (i) International legal regime protecting IPRs, (ii) Indian legal regime
protecting IPRs.
Discuss the development of Intellectual Property Law in India in the
international regime. (Dec-2015)
Explain the status and position of IPRs in India in context with the International
Regime. (Apr-2016)
ANSWER :
Refer :
http://lawtimesjournal.in/analysis-national-ipr-policy/
http://shodhganga.inflibnet.ac.in/bitstream/10603/62276/7/chapter%202.pdf
Outline :
(i) International legal regime protecting IPRs
TRIPS
The territoriality of IPRs
Theories governing enforcement of international treaties : Monism vs Dualism
Core obligations imposed by international IP agreements
Enforcement provisions
(ii) Indian legal regime protecting IPRs :
Indias International Trade Obligations
Statutory Framework governing Intellectual Property regime in India
Specific steps taken by India in compliance with international treaties :
Administrative Mechanism of the protection
IPR Enforcement Mechanism in India.
(i) International legal regime protecting IPRs :
TRIPS : <detailed discussion elsewhere in this doc>
Before Berne Convention (ie 19th century), domestic intellectual property laws
provided no legal protection to IP products created in other nations,
thereby permitting those products to be exploited by free riders operating
outside the state in which the products were created.
The unfairness of this result prompted governments in the late nineteenth
century to consider an international approach to protect IPRs.
The importance of intellectual property was recognized in
1883 Paris Convention for the Protection of Industrial Property,
and 1886 the Berne Convention for the Protection of Literary and Artistic
Works.
Both these treaties are administered by the World Intellectual Property
Organization (WIPO).
India as a founder member of WTO has ratified TRIPS, and is in the process of
adjusting itself with the new international trade regime.
This acclimatization process included a lot of changes in its laws and notably
Intellectual Property Laws.
As per the agreement, all member countries including, India are to abide by the
mutually negotiated norms and standards within the stipulated time frame.
Accordingly, India has set up an Intellectual Property Right (IPR) regime, which
is WTO compatible and is well established at all levels whether statutory,
administrative or judicial.
Statutory Framework governing Intellectual Property regime in India :
India has complied with TRIPS obligations by enacting the necessary statutes
and amending the existing ones.
The general laws in relation to Intellectual Property Enforcement in India are
mainly the following :-
i) The Code of Civil Procedure - provides for the civil remedies and
enforcement through civil courts,
ii) The Indian Penal Code - provides for penal remedies.
iii) The Civil and Criminal Rules of Practice - rules of practice of the trial courts,
High Courts and the Supreme Court of India set the enforcement procedure.
Judicial precedents :
India follows common law tradition and judicial precedents do have binding
force.
Decisions of the SC and HCs, bind their respective lower judiciary.
The Intellectual Property Laws :
The most important of the Indian IPR Laws are :
Indian Copyright Act, 1957;
Trade Marks Act, 1999;
Designs Act, 2001;
Patents Act, 1970
Geographical Indications of Goods (Registration and Protection) Act 1999;
Protection of Plant varieties and Farmer's Rights Act, 2001.
Semiconductor Integrated Circuit Layout Design Act, 2000;
Above legislations are supported by following rules framed under respective
their respective statutes :-
i) The Patents Rules, 1972 as amended by the Patents (Amendment) Act,
1999
ii) The Trade Rules, 2001.
et.pdf
Outline :
Need for knowledge about licensing & assignment of IP :
Transfer of IP Rights :
Assignment :
License :
Difference between Assignment and Licenses
Need for knowledge about licensing & assignment of IP :
Intellectual property (IP) is not wealth in itself but only a tool or source of it .
And this reservoir of wealth is made to flow only when IP is used to produce and
market goods and services.
The creator may utilize his IP himself but the creator himself is often unable to
utilize his own property or utilize it to its fullest extent.
When he invites others to utilize his property, he has to rely largely on the
mechanism of licensing or assignment by entering into contracts with others.
It is undeniable that IP licensing plays a major role in todays business and
economy.
Business transactions in intellectual property are highly ubiquitous.
eg Online contracts wherein we often click on I agree while downloading
music, films, computer software, books, etc or using online information,
are mostly in the form of licenses.
From off-the-shelf software to complex technology transfer arrangements, all
depend on the same licensing law principles.
Virtually every business today is confronting licensing issues on ever increasing
scales.
Hence, a solid base of knowledge about licensing & assignment of IP has never
been more important for students of law.
Transfer of IP Rights :
IPRs (eg copyright, patents, trademarks, designs, trade secrets, etc) are tradable
and can be transferred through the instrument of contract.
Mobilizing the flexibility of the instrument of contract an owner of IP could invite
others to utilize his property in following different ways,
by assignment wherein all rights in a property are assigned to another person
in return of some consideration.
by selectively granting certain rights and withhold others which is known as a
license.
The format chosen for the transaction of IP, affects and reflects the rights and
obligations of the parties.
Assignment :
The term assignment is defined as a transfer or making over to another
of the whole of any property,
real or personal,
in possession or in action,
or of any estate or right therein.
What assignment is to intangible property,
sale is to tangible property.
ie IP is transmissible by assignment as personal or movable property.
By assigning his IP to another, the owner transfers his legal title to the assignee.
In assignment
the ownership rights of the IP pass from seller to buyer
and it is a one-time activity, conveying full rights in the underlying IP.
Usually, assignment involves compensation in the form of a lump sum payment in
one go but it might also be deferred to be made dependent on certain factors, such
as the success of the commercialization of the transferred IP.
The assignment of intellectual property permits a greater freedom to the assignee
in marketing of the products produced by the IP concerned than could be the case
with a license.
License :
A license can also be appreciated as a legal instrument through which the owner
could invite others in the utilization of his IP.
Meaning of license :
Module-2 :
2) Select Aspects of the Copyright Law in India :
2.1) Historical evolution of the law
2.2) Meaning of copyright,
2.3) Availability of Copyright protection:
2.3.1) Copyright in literary and Artistic work, dramatic and musical Works
2.3.2) Copyright in Sound records and cinematograph films
2.3.3) Copyright in computer programme, Internet and database
2.4) Author and Ownership of copyright, Term of copyright, authorities under
the Copyright Act and their powers, Registration of copyright, Copyright
Society and its powers, Appeal provisions
2.5) Rights conferred by copyright, Assignment, Transmission and
relinquishment of copyright, Provisions relating to licence
2.6) Infringement of Copyright : Criteria, various types of infringement
2.7) Acts not constituting infringement, Fair use provisions, Piracy in internet
2.8) International copyright
2.9) Remedies and Penalty provisions
MODULE-2 QUESTIONS :
Explain in detail the meaning of Copyright and state the Historical evolution of
the Copyright Law in India. (Apr-2016)
Discuss : Amendments in Copyright Law in India.
Explain the meaning of Copyright and discuss its essential elements, (Nov-2014)
Discuss the meaning of copyright and work in which copyright subsists under the
Copyright Act, 1957. (Nov-2011)
Explain under the Copyright Act : Meaning and characteristic of Copyright (Oct-
2013)
Discuss the essential elements of Copyrights. (Dec-2015)
Discuss availability of copyright in, (i) literary and Artistic work, dramatic and
musical Works, (ii) Sound records and cinematograph films, (iii) computer
programme, Internet and database.
Discuss : Government work (Under Copyright Act) (Dec-2015)
Explain under the Copyright Act : Author (Oct-2013)
Discuss : (i) Ownership of copyright, (ii) First owner of copyright, (iii) Term of
copyright, (iv) Authorities under the Copyright Act and their powers, (v)
Registration of copyright, (vi) Copyright Society and its powers, (vii) Appeal
provisions.
Write note : First owner of copyright. (Nov-2011, Nov-2012)
Explain under the Copyright Act : First owner of Copyright (Oct-2013)
Write note : Term of copyright (Nov-2011, Nov-2012, Oct-2013, Dec-2015)
Explain under the Copyright Act : Powers and procedure of copyright board. (Oct-
2013, Nov-2014, Dec-2015)
Explain : Copyright Societies. (Nov-2012)
Explain under the Copyright Act : Copyright Societies (Oct-2013)
Discuss : Rights conferred by copyright, (i) Assignment & Transmission, (ii)
relinquishment of copyright, (iii) Provisions relating to licence.
Discuss the infringement of copyright under the Copyright Act, 1957. (Nov-2011)
Explain in detail the various kinds of infringement of copyrights and state the
remedies under the Copyright Law. (Apr-2016)
Write short note : Infringement of Literary Work (Dec-2015)
Discuss : (i) Acts not constituting infringement, (ii) Fair use provisions, (iii)
Piracy in internet.
Explain act not be infringement of Copyright under the Copyright Act, 1999. (Nov-
2012)
Explain : The remedies available against infringement of Copyright. (Nov-2012)
Explain under the Copyright Act : Civil remedies available against Infringement of
copyright (Oct-2013)
Explain : International Copyright. (Nov-2012)
Explain under the Copyright Act : International Copyright (Oct-2013)
MODULE-2 ANSWERS :
Explain in detail the meaning of Copyright and state the Historical evolution of
the Copyright Law in India. (Apr-2016)
Discuss : Amendments in Copyright Law in India.
Explain the meaning of Copyright and discuss its essential elements, (Nov-2014)
Discuss the meaning of copyright and work in which copyright subsists under the
Copyright Order,
as if such works are Indian works
Rights of the holder of (i) copyrights, and (ii) related rights :
SHORT NOTE :
Creators of works protected by copyright, and their heirs and successors
(generally referred to as right holders), have certain basic rights under
copyright law.
They hold the exclusive right to use or authorize others to use the work on
agreed terms.
Holder of (i) copyrights and (ii) related rights can authorize or prohibit,
reproduction of their work in all forms, including print form and sound
recording;
public performance and communication of their work to the public;
broadcasting of their work ;
translation of their work into other languages; and its adaptation, such as from
a novel to a screenplay for a film.
LONG NOTE :
Owner of a Copyright has following rights under the Copyright Act 1957 :
Reproduction.
Communication.
Adaptation.
Translation.
REPRODUCTION :
The Copyright confers upon the assessee the sole right to reproduce the
authored work.
In other words, no other person except the author shall make copies (one or
many) of the work or copy the substantial part of the work in any form
including sound and film recording etc without the permission of the copyright
owner.
For example, a person buys a film CD and the person makes multiple copies of
it and sells it to others. This would amount to copyright infringement.
COMMUNICATION :
Communication to the public means making any work available to general
public for the purpose of being seen or heard or otherwise enjoyed by the
public directly or by any means of display or diffusion.
It is not necessary that any member of the public actually sees, hears or
otherwise enjoys the work so made available.
For example, a cable operator may transmit a cinematograph film.
Many types of works protected under the laws of copyright and related rights
require mass distribution, communication and financial investment for their
successful dissemination (for example, publications, sound recordings and films).
Hence, creators often transfer these rights to companies,
who, in turn, develop and market the works,
in return for compensation in the form of payments and/or royalties
(compensation based on a percentage of revenues generated by the work).
Duration :
Copyrights : The economic rights relating to copyright are of limited duration
as provided for in the relevant WIPO treaties
beginning with the creation and fixation of the work,
and lasting for not less than 50 years after the creators death.
National laws may also establish longer terms of protection.
Related rights : Related rights enjoy shorter terms, normally 50 years after the
performance, recording or broadcast has taken place.
Copyright and the protection of performers also include moral rights, meaning the
right to claim authorship of a work, and the right to oppose changes to the work
that could harm the creators reputation.
Enforcement of copyright and related rights :
Rights provided for under copyright and related rights laws can be enforced by
right holders through a variety of methods and fora,
including civil action suits,
administrative remedies
and criminal prosecution.
Injunctions, orders requiring destruction of infringing items, inspection orders,
among others, are used to enforce these rights.
What are the benefits of protecting copyright and related rights?
Copyright and related rights protection is an essential component in fostering
human creativity and innovation.
Giving authors, artists and creators incentives in the form of recognition and fair
economic reward increases their activity and output and can also enhance the
results.
By ensuring the existence and enforceability of rights,
individuals and companies can more easily invest in the creation, development
and global dissemination of their works.
This, in turn, helps to increase access to and enhance the enjoyment of culture,
knowledge and entertainment the world over, and also stimulates economic and
social development.
How have copyright and related rights kept up with advances in technology?
The field of copyright and related rights has expanded enormously during the last
several decades
with the spectacular progress of technological development that has, in turn,
yielded new ways of disseminating creations by such forms of communication as
satellite broadcasting, compact discs and DVDs.
Widespread dissemination of works via the Internet raises difficult questions
concerning copyright and related rights in this global medium.
WIPO is fully involved in the ongoing international debate to shape new standards
for copyright protection in cyberspace.
In that regard, the Organization administers the WIPO Copyright Treaty (WCT) and
the WIPO Performances and Phonograms Treaty (WPPT), known as the Internet
Treaties.
These treaties clarify international norms aimed at preventing unauthorized access
to and use of creative works on the Internet.
How are copyright and related rights regulated?
Copyright and related rights protection is obtained automatically without the need
for registration or other formalities.
However, many countries provide for a national system of optional registration and
deposit of works.
These systems facilitate, for example, questions involving disputes over ownership
or creation, financial transactions, sales, assignments and transfer of rights.
Brief History of Copyright Law in India :
The evolution of Copyright Law in India is spread over three phases.
In the first phase, the law of copyright was introduced in India during the reign of
the British Rule in India via the British Copyright Act, 1911.
This Act had very different provisions in comparison to todays law.
The term of the Copyright was life time of the author plus seven years after the
death of the author.
However the total term of copyright cannot exceed the period of forty-two years.
The government could grant a compulsory licence to publish a book if the owner
of copyright, upon the death of the author, refused to allow its publication.
Registration of Copyright with the Home Office was mandatory for enforcement
of rights under the Act.
The second phase was in 1914, when the Indian legislature under the British Raj
enacted the Copyright Act of 1914.
It was almost similar to the British Copyright Act of 1911.
However the major change that was brought in this Act was the criminal
Discuss availability of copyright in, (i) literary and Artistic work, dramatic and
musical Works, (ii) Sound records and cinematograph films, (iii) computer
programme, Internet and database.
Discuss : Government work (Under Copyright Act) (Dec-2015)
ANSWER :
Refer :
(i) Literary and Artistic work, dramatic and musical Works :
<Read Berne convention from Module-1>
(ii) Sound records and cinematograph films :
Introduced vide 2012 amendment in the Copyrights Act 1957.
author. This will help inform your users of what they are looking at and avoid the
issue of passing the information off as your own.
When you are creating hypertext links you should be careful not to authorise
users to make copies of the site you are referencing unless this is expressly
permitted.
Take care that you do not quote or link to another site in a derogatory manner,
by quoting out of context or making an inference that is not directly supported
by evidence.
Avoid the use of frames and do not link from frames to another external site
without the specific permission of the owner of the site you wish to link to. If you
do link to an external web site make sure that it opens in a separate frame to
avoid any confusion or possible misinterpretation.
Using images :
Images on the internet are not copyright free , and care should be taken in their
use. There are a number of sources of royalty-free images and pictures on the
internet, and these sites will state quite clearly the terms and conditions of their
use.
Many websites do NOT allow their work to be copied even for non-commercial
purposes.
If it is not clear from the site that the rights holder is happy for the image to be
used for your particular purpose, you should always seek permission before you
do so.
Always acknowledge your source;
Never alter the image.
Using Screenshots :
There may well be multiple copyrights in screenshots, including fonts, graphics
etc.
If using these for learning and teaching purposes you must avoid any alteration
to the original, and any misleading labelling.
Using Logos :
Care must be taken with use of company logos, particularly where these are
used to click through to a web page.
Such use, without permission, would infringe the companys trademark. There
have been several high-profile legal suits resulting from such uses.
(iv) Government work :
Definition : Sec-2(k) of the Copyright Act, 1957 :
Government work means
a work which is made or published by or under the direction or control of
Discuss : (i) Ownership of copyright, (ii) First owner of copyright, (iii) Term of
copyright, (iv) Authorities under the Copyright Act and their powers, (v)
Registration of copyright, (vi) Copyright Society and its powers, (vii) Appeal
provisions.
Write note : First owner of copyright. (Nov-2011, Nov-2012)
Explain under the Copyright Act : First owner of Copyright (Oct-2013)
Write note : Term of copyright (Nov-2011, Nov-2012, Oct-2013, Dec-2015)
Explain under the Copyright Act : Powers and procedure of copyright board. (Oct-
(2) The Copyright Board may exercise and discharge its powers and functions
through Benches constituted by the Chairman of the Copyright Board from
amongst its members.
(7) The Copyright Board
shall be deemed to be a civil court for the purposes of sections 345 and 346
of the CrPC 1973,
and all proceedings before the Board shall be deemed to be judicial
proceedings within the meaning of sections 193 and 228 of the IPC.
The Board has power to :
i. hear appeals against the orders of the Registrar of Copyright;
ii. hear applications for rectification of entries in the Register of Copyrights;
iii. adjudicate upon disputes on assignment of copyright;
iv. grant compulsory licences to publish or republish works;
v. grant compulsory licence to produce and publish a translation of a literary
or dramatic work in any language after a period of seven years from the
first publication of the work;
vi. hear and decide disputes
as to whether a work has been published
or about the date of publication
or about the term of copyright of a work in another country;
vii. fix rates of royalties in respect of sound recordings under the cover-
version provision; and
viii. fix the resale share right in original copies of a painting, a sculpture or a
drawing and of original manuscripts of a literary or dramatic or musical
work.
(v) Registration of copyright :
Copyright is automatic once the original work is created and it does not require
any formality.
However, certificate of registration of copyright and the entries made therein
serve as prima facie evidence in a court of law with reference to dispute relating
to ownership of copyright.
Procedure for registration : Chapter VI of the Copyright Rules, 1956 sets out the
procedure for the registration under the Copyright Act. The procedure for
registration is as follows :
a. Application for registration is to be made on Form IV ( Including Statement
of Particulars and Statement of Further Particulars) as prescribed in the first
schedule to the Rules ;
b. Separate applications should be made for registration of each work;
copyright subsists or in respect of any other right given by the Copyright Act.
eg Certain rights of producers of sound recordings and broadcasting
organizations are sometimes managed collectively as well.
Basically the a copyright society performs the following functions :
i. Issue licences in respect of the rights administered by the society.
ii. Collect fees in pursuance of such licences.
iii. Distribute such fees among owners of copyright after making deductions for
the administrative expenses.
These societies can also provide their members with efficient administrative
support and legal expertise in,
for example, collecting, managing and disbursing royalties gained from the
national and international use of a work or performance.
(vii) Appeal provisions :
and thereupon such rights shall, subject to the following conditions, cease to
exist from the date of the notice.
On receipt of a notice, the Registrar of Copyrights shall cause it to be published in
the Official Gazette and in such other manner as he may deem fit.
The relinquishment of all or any of the copyrights,
shall not affect any rights subsisting in favour of any person on the date of the
notice.
(iii) Licence :
Sec-30 : Licensing of copyright can be attempted in respect of
works that have already been created
and also for works that are not yet created.
But in respect of future works the license shall take effect only when the work
comes in existence.
There is no specific form or words prescribed in the Copyright Act for a copyright
license.
However, a contract for copyright license of copyright has to be in writing.
The copyright owner may grant a license and transfer some or all of his rights to
others to exploit his work for monetary benefits.
A license is different from an assignment,
licensee gets certain rights subject to the conditions specified in the license
agreement
but the ownership of those rights is not vested with him
while in case of an assignment
the assignee becomes the owner of the interest assigned to him.
A license may be exclusive or of non-exclusive type.
Chapter VI : Sections 30-32B : <read bare act for details>
Section 30 deals with licences by owners of copyright;
Section 31 provides for compulsory licence in works withheld from public;
Section 31A deals with compulsory licences in unpublished Indian works;
Section 31B deals with Compulsory Licence for the benefit of disabled;
Section 31C deals with statutory licence for cover versions;
Section 31D deals with statutory licence for broadcasting of literary and musical
works and sound recording;
Section 32 deals with licences to produce and publish translations;
Section 32A provides for licence to reproduce and publish works for certain
purposes;
Section 32B deals with termination of licences.
Voluntary Licensing :
The owner of the Copyright in any existing or future work may grant any interest
in the work by way of license.
As regards the future works the license shall take effect only when the works
comes into existence.
For a license to be valid it must be in writing and signed by either the owner or
his duly authorized agent.
Where a person to whom a license relating to copyright in any future work dies
before the work comes into existence, his legal representative shall be entitled
to the benefit of the license.
A License Agreement generally contains the following particulars :
Identification of the work licensed
Duration of the license
Territorial extent of the license
Amount of royalty payable
Conditions relating to revision, extension and/or termination of license
Any dispute in respect of the license shall be settled by the Copyright Board or
by way of Arbitration.
Allowability of sub-licensing etc.
Compulsory Licensing :
Compulsory Licensing can be
invoked under certain circumstances with respect to both published works and
unpublished works.
obtained for the purposes of production and publication or translation of the
work.
The procedure for obtaining compulsory licensing with respect to the Indian
works and foreign works is different.
Compulsory licensing on Published Works :
With respect to the Indian works published or performed in public, compulsory
licenses can be obtained by making a complaint to the Copyright Board on the
ground that the owner has :
Refused to re-publish or allow the republication of the work
or has refused to allow the performance of the work in public
and by reason of such refusal the work is withheld from the public.
or Refused to allow the communication of the work to the public
by broadcast of the work or work in the sound recording
on such terms, which the complainant considers reasonable.
In case of assignment, the assignee himself can take action against third party.
The licensee can join with the owner of the copyright and as a party to the
infringement, and take an action for infringement against third party but a
bonafide purchaser in good faith and for consideration of the proprietors interest
without notice of previous licensee is unaffected by it.
Assignee is responsible to protect such rights which accrue as a result of
assignment by the previous owner of IPR.
The licensee himself is NOT responsible to protect copyright.
He can, at the best, sue the licensor for damages for breach of contract if the
latter does not protect his interest.
Failure of assignee to pay royalties, does NOT enable assignor to revoke
assignment.
A failure to pay royalties enables the licensor to revoke the license.
Under Section 30 of the Copyright Act, if the assignee dies before the work comes
into existence, the owner of the copyright has the power to assign his entire rights
or assign only some of the rights to legal representatives of the assignee.
if the licensee in the case of future work dies before the work comes in to
existence his legal representatives shall be entitled to such works, in the
absence of any provision to the contrary.
Discuss the infringement of copyright under the Copyright Act, 1957. (Nov-2011)
Explain in detail the various kinds of infringement of copyrights and state the
remedies under the Copyright Law. (Apr-2016)
Write short note : Infringement of Literary Work (Dec-2015)
Discuss : (i) Acts not constituting infringement, (ii) Fair use provisions, (iii)
Piracy in internet.
Explain act not be infringement of Copyright under the Copyright Act, 1999. (Nov-
2012)
Explain : The remedies available against infringement of Copyright. (Nov-2012)
Explain under the Copyright Act : Civil remedies available against Infringement of
copyright (Oct-2013)
ANSWER :
Refer :
http://lawtimesjournal.in/infringement-of-copyright/
http://lawtimesjournal.in/copyright-and-the-internet/
http://www.saprlaw.com/taxblog/copyright_final.pdf
provisions which, in public interest, permit the use of copyrighted works without
prior authorization or a license from its owner.
The principle of conditional grants to proprietary rights in any intellectual property
is to promote public interest. This is universally recognized and incorporated in
intellectual property system.
Protection and enforcement of intellectual property rights must :
be conducive to social and economic welfare;
safeguard an individuals fundamental rights; and
Promote commerce, competition and innovation.
Generally, exceptions and limitations to copyright are subject to a three-step test
set out in the Berne Convention for the Protection of Literary and Artistic Works.
Briefly stated, the Berne Convention provides that an exception or limitation to
copyright is permissible only if :
it covers special cases
it does not conflict with the normal exploitation of the work; and
it does not unreasonably prejudice the legitimate interests of the author.
Standard exceptions and limitations vary from country to country in their number
and scope.
Contributory Infringement :
Contributory infringement is where,
the copyrighted work is duplicated by another person without the consent of the
owner or existence of any lawful excuse by another with the aid of another.
This may be simply put a abatement to an offence.
For example,
a person has a Rs.1000 note and takes a color Xerox in a shop.
Here, the person is an infringer
and the Xerox shop is abettor who commits contributory infringement.
a book or compact disc is copyrighted which can be easily ascertained,
any person who helps in the offence of infringement like making duplicates
copies, translation, adaptation, communication to public etc, would amount to
contributory infringement.
In the A&M Records, Inc. v. Napster, Inc. 21,
the Defendant maintained a central unit which enabled two or more remote
computers to share all the music files in other system.
The defendant was held vicariously liable and for contributing to the
infringement.
In the case of Sony Corp. of America v. Universal City Studios, Inc. 22, the
piracy.
In Khajanchi Film Exchange v state of MP the appellants apprehending the violation
of their copyright in the film, prayed for the writ of Mandamus without first
exhausting the alternative remedy available under the Copyright Act. The Division
Bench of the Madhya Pradesh High Court Observed :
Petition was filed on mere apprehension that appellants would be deprived of
their rights which did not exist when claim for mandamus was made.
Mandamus can be granted only when default, commission, or omission takes
place which had not happened in this case.
In Jolen Inc v Shoban Lal Jain the Madras High Court held that
latches and acquiescence is a good defence to an action for copyright
infringement.
the plaintiff having allowed the defendant to carry on the business under the
trade name of the plaintiff for 7 years is prima facie guilty of acquiescence and it
cannot claim for relief of injunction against the defendant as the balance of
convenience is in favour of him.
Module-3 :
3) Intellectual Property Rights in Trademarks and Design :
3.1) The rationale of protection of trademarks as (a) an aspect of commercial
and (b) of consumer rights, Definition and concept of trademarks in goods
& services
3.2) Registration, Distinction between trademark and property mark The
doctrine of honest current user, Doctrine of deceptive similarity
Protection of well-known marks
3.3) Passing off and infringement of trademarks : (Definitions, Concept and
Distinction)
3.4) Standards of proof in passing off action
3.5) Remedies and Penalty provisions
3.6) Industrial Designs, Designs Act, 2000 : Authorities, Procedure for
registration of designs, Controller and Registrar : powers and duties,
Assignment and transmission of designs, Powers of the Central
Government, Copyright on registration of Industrial Designs : related
provisions, Patents to designs, Piracy of registered designs, Remedial
aspects, Appeal provisions,
MODULE-3 QUESTIONS :
Explain under the Trademark Act, 1999 : Alteration of registered Trademark (Oct-
2013)
Write note : Registered Users. (Nov-2011)
Explain under the Trademark Act, 1999 : Registration as registered user (Oct-
2013)
Discuss : Absolute and Relative grounds for refusal of registration .
Discuss under the Trade Mark Act, 1999 : Absolute grounds for refusal of
registration. (Nov-2012, Oct-2013)
Discuss under the Trade Mark Act, 1999 : Prohibition of registration of some
names. (Nov-2012, Oct-2013)
Discuss under the Trade Mark Act, 1999 : Relative grounds for refusal of
registration. (Nov-2012)
Discuss under the Trade Mark Act, 1999 : Deceptive similar. (Nov-2012, Nov-
2014, Dec-2015)
Discuss : Distinction between trademark and property mark.
Discuss under the Trade Mark Act, 1999 : Assignment of Trade mark. (Nov-2012,
Nov-2014, Dec-2015)
Discuss : Licensing of Trade Marks.
Explain : Infringement of Trademark (Oct-2013)
Discuss : (i) False Trade Mark, (ii) False Trade Description, (iii) Falsifying and
falsely applying trade marks.
State the definitions and concept of passing off and infringement of trademarks and
distinguish between passing off and infringement of trademarks. (Apr-2016)
Discuss : Standards of proof in passing off action.
Discuss the procedure for infringement of action and passing of action under the
Trade Marks Act, 1999. (Nov-2011)
Discuss : Remedies and Penalty provisions under the Trade Marks Act, 1999.
Discuss under the Design Act, 2000 : Industrial Design. (Nov-2012, Oct-2013, Nov-
2014)
Explain under the Design Act : Owner of Design (Oct-2013)
Explain the provisions relating to registration under the Designs Act of 2000. (Nov-
2011)
Write Short note : Procedure for registration of designs (Nov-2014)
Discuss under the Design Act, 2000 : Prohibition on registration of Designs.
(Nov-2012)
Discuss under the Design Act, 2000 : About cancellation of registration of Design.
(Nov-2012)
Discuss : Powers of the Central Government under Design Act, 2000.
Discuss authorities under Designs Act 2000 and their powers and duties : (i)
Controller, (ii) Registrar.
Discuss Design Controller under the Designs Act, 2000. (Nov-2011, Nov-2012, Nov-
2014, Dec-2015)
Explain the controls over Registration of Designs. (Dec-2015)
Explain under the Design Act : Rectification of register (Oct-2013)
Discuss : Assignment, transmission and licensing of designs.
Discuss : Nature of Copyright in contrast to Design Right .
Discuss : Dart Industries Inc & Anr. vs Techno Plast & Ors.
Discuss : Samsonite Corp vs Vijay Sales.
Discuss : Patents to designs.
Discuss : (i) Piracy of registered designs, (ii) Remedial aspects, (iii) Appeal
provisions.
Discuss under the Design Act, 2000 : Piracy of Registered Designs. (Nov-2012, Oct-
2013, Nov-2014)
MODULE-3 ANSWERS :
http://www.majmudarindia.com/pdf/Limits%20or%20effects%20of%20registered
%20trademark.pdf
Outline : Basics of trademarks.
Intro
The Trade Mark Act 1999 :
What is a Trade Mark?
Benefits of trade marks
Nice Agreement : Classification of Trademarks
Madrid System for registration of Trademarks :
Scope of trademark protection :
Use of TM, SM and symbols :
Intro :
A trademark is a distinctive sign that identifies certain goods or services produced
or provided by an individual or a company.
Its origin dates back to ancient times when craftsmen reproduced their signatures,
or marks, on their artistic works or products of a functional or practical nature.
Over the years, these marks have evolved into todays system of trademark
registration and protection.
The system helps consumers to identify and purchase a product or service based
on whether its specific characteristics and quality as indicated by its unique
trademark meet their needs.
The Trade Mark Act 1999 :
Indian trademark law statutorily protects trademarks as per Trademark Act 1999
and also under the common law remedy of passing off.
Statutory protection of trademark is administered by the Controller General of
Patents, Designs and Trade Marks,
which is a government agency reporting to the Department of Industrial Policy
and Promotion (DIPP), under the Ministry of Commerce and Industry.
The law of trademark provides for,
the mechanism of registration, & the rights acquired by registration,
protection of trademark and prevention of fraudulent trademark.
modes of transfer and assignment of the rights,
nature of infringements,
penalties for such infringement
and remedies available to the owner in case of such infringement.
What is a trademark?
Term Trade means,
The period of protection varies, but a trademark can be renewed indefinitely upon
payment of the corresponding fees.
Trademark protection is legally enforced by courts that have the authority to stop
trademark infringement.
In a larger sense, trademarks promote initiative and enterprise worldwide by
rewarding their owners with recognition and financial profit.
Trade Mark protection discourages the unfair competitors ,
such as counterfeiters, to use similar distinctive signs to market inferior or
different products or services.
The trade mark system enables people with skill and enterprise to produce and
market goods and services in the fairest possible conditions, thereby facilitating
international trade.
Nice Agreement : Classification of Trademarks :
"Nice Agreement Concerning the International Classification of Goods and Services
for the Purposes of the Registration of Marks"
is a multilateral treaty (1957 Nice, France) administered by WIPO.
Classification (under Nice Agreement) of goods & service
is called Nice Classification
India follows Nice Classification of Trade Marks.
Accordingly, different goods and services have been classified into 45 Trademark
Classes (1 to 34 cover goods, and 35 to 45 cover services).
The Nice Agreement is open to states who are parties to the "Paris Convention for
the Protection of Industrial Property".
The idea behind this system is to specify and limit the extension of the intellectual
property right by determining which goods or services are covered by the mark,
and to unify classification systems around the world.
Madrid System for registration of Trademarks :
It is an international registration system for trademarks administered by WIPO.
It avoids need to register separate applications with each national or regional
office.
The system is governed by two treaties :
the Madrid Agreement Concerning the International Registration of Marks,
and the Madrid Protocol.
India joined the Madrid Protocol on July 08, 2013. Hence, Indian Trade Mark
registration also has effect in other countries of the Madrid Union.
The term of registration under the Madrid Protocol is 10 years from the date of
application. It is further renewable.
Scope of trademark protection :
State the definition and concept of trademarks in goods and services with case-
laws. (Apr-2016)
ANSWER :
Refer :
Discuss under the Trade Mark Act, 1999 : Collective marks. (Nov-2012, Dec-2015)
ANSWER :
Refer :
Sec-2(1)(g) collective mark means
a trade mark distinguishing the goods or services
of members of an association of persons (not being a partnership)
from those of others;
Collective marks, are owned by an association whose members use them to indicate
products with a certain level of quality and who agree to adhere to specific
requirements set by the association.
Such associations might represent, for example, accountants, engineers or
architects.
Discuss the registration under the Trade Marks Act, 1999. (Nov-2011)
Explain under the Trademark Act, 1999 : Application for registration (Oct-2013)
Explain under the Trademark Act, 1999 : Register of Trademark (Oct-2013)
How to oppose registration under Trade Marks Act ? (Dec-2015)
Discuss under the Trade Mark Act, 1999 : Effect of registration. (Nov-2012)
Explain under the Trademark Act, 1999 : Alteration of registered Trademark (Oct-
2013)
Write note : Registered Users. (Nov-2011)
Explain under the Trademark Act, 1999 : Registration as registered user (Oct-
2013)
ANSWER :
Refer :
http://www.ablemindconsulting.com/registration_procedur.htm
http://www.mondaq.com/india/x/127680/Trademark/Trademarks+Law+In+India+
Everything+You+Must+Know
http://www.ssrana.in/Intellectual%20Property/Trademarks/FAQ-on-Madrid-
Protocol-India.aspx
http://www.lrswami.com/page/what-is-a-trademark
http://www.legalserviceindia.com/trademarks-copyrights/trade
%20markmainpage.htm
Outline :
Need for Trade Mark registration :
What kinds of trademarks can be registered?
Characteristics of a good Trade Mark
Registration procedure :
Need for am agent/ attorney to file for a trademark registration :
Precautions before application :
Application :
Review by the Trade Marks Office :
Preliminary Approval, Publication, Show Cause hearing or Rejection :
Opposition to registration of a Trade Mark
Issue of registration certificate
Term of Trademark Registration :
Register of Trademarks : Rectification/ alteration/ cancellation of Trademark
Rectification/ alteration of Trademark
Cancellation/ revocation of a registered trade mark
Renewal of registration :
Registration as registered user :
Need for Trade Mark registration :
Registration of a Trademark is not mandatory in India but it is advisable to do so
The Trade Marks Act 1999 envisages registration of the Mark before affording
protection.
Section 27 of the Act states that,
no infringement action is maintainable against an unregistered trade mark.
Thus it is in the best interests of the owner/proprietor that the trade marks are
registered for their effective and profitable utilisation.
Benefits of a registered trademark :
Identifies the origin of goods & services.
Advertises goods & services.
the rights applied for are NOT the same as, or similar to, rights already
granted to another trademark owner.
Thorough search of Trade Mark Register shall be carried, otherwise,
there may be objection by the Trade Mark Office, or
3rd parties (who claim similar or identical rights) may oppose the application
A trademark search can be conducted in India on the Indian Trademark
Registrys Website at : http://www.ipindia.nic.in/
Application :
An application for registration of a trademark must be filed with the appropriate
national or regional trademark office.
The application must contain a clear reproduction of the sign filed for
registration, including any colors, forms or three-dimensional features.
It must also contain a list of the goods or services to which the sign would apply.
Review by the Trade Marks Office :
After the application has been filed,
the Trade Marks Office reviews it to ensure that it is complete in all respects
and thereafter allots an application number to the applications.
If the trademark is registered, the application number becomes the registration
number.
Preliminary Approval, Publication, Show Cause hearing or Rejection :
During the process of examination the Trade Marks Office determines if the
trademark is barred for registration,
either under absolute grounds for refusal and/or relative grounds for refusal as
prescribed in The Trade Marks Act, 1999.
Accordingly, they issue an examination report and
the Applicant must respond to the objections that have been raised in the
examination report within a period of one month from the issuance of the
examination report.
Thereafter and based on the response to the examination report that has been
filed by the Applicant,
the Registrar of Trade Marks determines if the application should be,
refused,
accepted for advertisement,
accepted subject to certain limitations
or put up for a "show cause" hearing,
On hearing, the application might be accepted, rejected or accepted subject to
certain limitations.
Should the application be rejected the Applicant can approach the Intellectual
Property Appellate Board to appeal the order of the Registrar of Trade Marks.
Opposition to registration of a Trade Mark :
Should a rights holder of an existing trademark come across,
a trademark which is similar (or deceptively similar) to their mark,
or a trademark published in the Trade Marks Journal, which is similar (or
deceptively similar) to their mark,
they may oppose the impugned mark within three months of the publication in
the journal.
The opposition proceedings in India maybe initiated by any party in order to
maintain the purity of the Register of Trade Marks, regardless of whether they
have any locus standi.
Therefore, any third party who is of the opinion that the advertised mark should
not be allowed to register, can initiate an opposition proceeding by filing a Notice
of Opposition in the appropriate office of the Trade Marks Office.
The Notice of Opposition should be sent to the Trade Marks Office in triplicate .
Issue of registration certificate :
Within three months of the publication of the trademark in the Trade Marks
Journal,
should the trademark not be opposed by a third party,
it will proceed for registration
and the Trade Marks Registry will accordingly issue a registration certificate.
Term of Trademark Registration :
Trademark protection in India is perpetual subject to renewal of the registration
after every 10 years.
The application for renewal can be filed six months before the expiry of the
validity period of the trademark.
Register of Trademarks : Rectification/ alteration/ cancellation of Trademark :
There is a common misnomer that once a trademark is registered it is safe and
protected for good.
There are certain limits on effect of registered Trade Marks as envisaged by the
provisions of Chapter IV of the TM Act 1999.
In case a registered trademark owned by a third party infringes the rights of the
rights holder,
the rights holder can initiate (i) rectification, or (ii) cancellation proceedings
against the registered owner.
Rectification/ alteration of Trademark :
An aggrieved person may file an application before the Registrar of Trademarks
sold or exposed for sale or had in his possession for sale, goods having a mark
calculated to cause it to be believed that the scent, was the scent
manufactured by and belonging to the (original) complainant.
Coming to the facts of the case, it held that
the name Basant Bahar with the same picture, the same inscriptions, and
the same receptacles, was the property mark denoting that the scent in
question was the one manufactured and belonging to the complainant.
From the finding arrived at by the Trial Court, it must follow that
the appellant marked his scent aid the packets in which it was packed with
the same name, the same picture and the same inscriptions
with the intention of causing it to be believed that the scent so marked, or
the scent contained in the said packets, was the one manufactured by and
sold in the market by the complainant.
The appellant (original accused) thus committed the offence of both
using a false property mark
and of selling goods marked with a counterfeit property mark.
The High Court was right in setting aside the order of acquittal passed by the
Additional Sessions Judge and in restoring the order of conviction and sentence
passed by the Trail Court.
Discuss under the Trade Mark Act, 1999 : Assignment of Trade mark. (Nov-2012,
Nov-2014, Dec-2015)
Discuss : Licensing of Trade Marks.
ANSWER :
Refer :
http://epgp.inflibnet.ac.in/epgpdata/uploads/epgp_content/law/08._intellectual_pr
operty_law/27._intellectual_property_assignment_and_licensing_/et/5795_et_27_
et.pdf
Note : This answer is specific to Trade Marks only.
For general discussion on transfer, assignment, licensing of IPRs, see Module-1.
Outline :
Assignment of Trade Mark :
Licensing of Trade Mark :
Assignment of Trade Mark :
<work on this>
which essentially combines trade mark license with the provision of marketing or
promotional assistance and controls over the manufacturing methods employed by
the franchisee.
Burden of proof :
Passing-off :
Standards of proof in passing off action.
Difference between passing-off and infringement of trade mark :
Intro :
Chapter XII of the Trade Marks Act 1999 deals with Offences and Penalties.
Sec-29 defines infringement of registered trade marks.
Sec-102 defines falsification of a trade mark and falsely applying a trade mark.
What is a trademark?
Essence of Sec-2(1)(zb) : Trade Marks Act 1999 :
trade mark means
a mark capable of being represented graphically
and which is capable of distinguishing the goods or services of one person
from those of others
and may include shape of goods, their packaging and combination of colours;
A trade mark can include,
a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colors or any such combinations.
What is trade description?
Sec-2(1)(za) : Trade Marks Act 1999 :
"trade description" means any description, statement or other indication, direct
or indirect,-
...
(iv) as to the place or country in which any goods or services were made,
produced or provided, or
(v) as to the indication of the identity of the manufacturer or of the person
providing the services of the person for whom the goods are manufactured or
services are provided, or
(vi) as to the mode of manufacturing any goods or providing services, or
(vii) as to the material of which any goods are composed, or
...
Infringement of registered trade marks :
In many countries, a trademark receives protection without registration.
In India, registration of a Trademark is not mandatory, but it is advisable.
The Trade Marks Act 1999 envisages registration of the Mark before affording
protection.
5 Benefit of instituting the suit under Such benefit is not available and the
Section 134 of the Trade Marks Act, regular rules of jurisdiction provided
1999 is available wherein the under Section 20 of Civil Procedure
registered proprietor or registered Code, 1908 apply i.e. Passing off action
user of the trademark can institute has to be filed where the Defendant
the suit where they actually and resides or carried on business or cause
voluntarily resides or carries on of actions has arisen.
business or personally work for gain
Summary :
Enforcement mechanisms are expected to boost the protection of marks in India
and reduce infringement and contravention of trademarks.
Discuss : Remedies and Penalty provisions under the Trade Marks Act, 1999.
ANSWER :
Refer :
https://www.icsi.edu/docs/webmodules/Publications/9.4%20Intellectual
%20Property%20Rights.pdf
http://www.ssrana.in/Intellectual
%20Property/Trademarks/Trademark_Protection.aspx
http://www.ssrana.in/Intellectual%20Property/Infringement/Difference-between-
Infringement-and-Passing-Off-in-India.aspx
http://www.mondaq.com/india/x/127680/Trademark/Trademarks+Law+In+India+
Everything+You+Must+Know
Outline :
Relief granted by Courts in Civil Suits for Infringement and Passing off :
Penalties in case of Criminal case for infringement and passing off :
Remedies under the Customs Laws for infringement and passing-off :
Penalty for falsification and falsely applying a trademark
Penalty for selling goods or providing services to which false trade mark or false
trade description is applied.
Intro :
An action for Infringement for registered trademark
or tort of Passing off for both registered as well as unregistered trademark
are essentially two ways of achieving the same objective i.e. protection of
goodwill attached with a mark.
In India a combined action for infringement and passing off is permissible.
However, both are technically two different concepts.
Civil Law, Criminal Law as well as Customs Law remedies are available in the
Infringement or Passing off action.
Relief granted by Courts in Civil Suits for Infringement and Passing off :
A suit can be initiated either under the law of passing off or for infringement under
the Trade Marks Act, 1999
depending on whether the trade mark is unregistered, pending registration or
registered respectively.
Jurisdiction and Venue :
The suit for passing off and/or infringement can be initiated either in the District
Court or in the High Court depending on the valuation of the suit.
The suit can be at the place where the rights holder or one of the rights holders
accordingly.
ELSE
it is advisable to procure a general search and seizure warrant from the local
magistrate and thereafter organize search and seizure operations in that area.
In a criminal proceeding, the litigation is between the State and the infringer and
therefore the rights holder has a limited role to play.
Penalties under criminal laws :
In case of a criminal action for infringement or passing off, following penalty
provisions are there :
Sec-103 : Penalty for applying false trade marks, trade descriptions :
imprisonment ranging from a term from 6 months to 3 years,
and fine ranging from INR 50,000 to INR 200,000.
Sec-104 : Penalty for selling goods or providing services to which false trade
mark or false trade description is applied.
imprisonment ranging from a term from 6 months to 3 years,
and fine ranging from INR 50,000 to INR 200,000.
Remedies under the Customs Laws for infringement and passing-off :
In addition to the civil and the criminal remedies mentioned herein above,
there are also provisions under the customs law which prohibit the importation
of infringing goods in India.
The Customs authorities have promulgated guidelines (known as the Intellectual
Property Rights (Imported Goods) Enforcement Rules, 2007)
under which the rights holder can record their registered trade marks with the
Customs authorities.
These guidelines authorize the Custom officials to seize goods infringing the trade
marks of the rights holder at the border without obtaining any orders from the
Court.
These rules also empower the Custom officers to destroy the suspected goods
under official supervision or dispose them outside the normal channels of
commerce
after it has been determined that the goods detained have infringed the trade
marks of the rights holder
and that no legal proceeding is pending in relation to such determination.
These rules also prohibit the re-exportation of the goods infringing trade marks in
an unaltered state.
Discuss under the Design Act, 2000 : Industrial Design. (Nov-2012, Oct-2013, Nov-
2014)
ANSWER :
Refer :
http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_30_1_man
ual-designs-practice-and-procedure.pdf <--- Key document for Designs.
http://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf
http://www.nishithdesai.com/fileadmin/user_upload/pdfs/Research
%20Papers/Intellectual_Property_Law_in_India.pdf
https://www.icsi.edu/docs/webmodules/Publications/9.4%20Intellectual
%20Property%20Rights.pdf
Industrial Design, the concept :
Meaning of Design :
What is Not a Design?
Meaning of Industrial Design :
Importance of Industrial Design: Need to protect Design: Benefits of Design Right:
How can industrial designs be protected?
Meaning of Design Right :
How extensive is industrial design protection?
Intro :
Under the TRIPS Agreement, minimum standards of protection of industrial designs
have been provided for.
As a developing country, India has already amended its national legislation to
provide for these minimal standards.
Industrial designs in India are protected under the Designs Act, 2000.
The Designs Rules, 2001 have been framed under the Designs Act.
The Designs Act incorporates the minimum standards for the protection of
industrial designs, in accordance with the TRIPS agreement.
It provides for the introduction of an international system of classification, as per
the Locarno Classification.
Meaning of Design :
Sec-2(d) : Design Act 2000 :
design means
only the features of shape, configuration, pattern, ornament or composition of
lines or colours
applied to any article
whether in two dimensional or three dimensional or in both forms,
items;
from house wares and electrical appliances to vehicles and architectural
structures;
from textile designs to leisure goods.
An industrial design is,
primarily of an aesthetic nature,
any technical features of the article to which it is applied are not protected by
the design registration.
however, technical features could be protected by a patent.
Importance of Industrial Design : Need to protect Design : Benefits of Design Right :
Best to begin with an illustration :
Apple iPhones are manufactured in China.
But, China is able to capture paltry 2-5% of its value while overwhelming part is
cornered by USA.
This is mainly attributed to value added by Designing and Research, which is
based in USA.
Thus, importance of design protection cant be overstressed.
Industrial designs are what make an article attractive and appealing;
hence, they add to the commercial value of a product and increase its
marketability.
When an industrial design is protected, the owner the person or entity that has
registered the design is assured an exclusive right and protection against
unauthorized copying or imitation of the design by third parties.
This helps to ensure a fair return on investment.
An effective system of protection also benefits consumers and the public at large,
by promoting fair competition and honest trade practices,
encouraging creativity and promoting more aesthetically pleasing products.
Protecting industrial designs helps to promote economic development by
encouraging creativity in the industrial and manufacturing sectors, as well as in
traditional arts and crafts.
Designs contribute to increase in exports.
Industrial designs can be relatively simple and inexpensive to develop and protect.
They are reasonably accessible to small and medium-sized enterprises as well as to
individual artists and craftsmakers, in both developed and developing countries.
Today, industrial design has become an integral part of consumer culture where
rival articles compete for consumer's attention.
It has become important therefore, to grant to an original industrial design
adequate protection.
How can industrial designs be protected?
In most countries, an industrial design must be registered in order to be protected
under industrial design law.
As a rule, to be registrable, the design must be new or original.
Countries have varying definitions of such terms, as well as variations in the
registration process itself.
Generally, new means that no identical or very similar design is known to have
previously existed.
Once a design is registered, a registration certificate is issued.
The term of protection granted is generally five years, with the possibility of further
renewal, in most cases for a period of up to 15 years.
Depending on the particular national law and the kind of design,
an industrial design may also be protected under copyright law, as a work of
applied art with a much longer term of protection than the standard 10 or 15
years under registered design law.
In some countries, protections under copyright and industrial design are mutually
exclusive,
ie, once owners choose one kind of protection, they can no longer invoke the
other.
Under certain circumstances an industrial design may also be protectable under
unfair competition law, although the conditions of protection and the rights and
remedies available can differ significantly.
Meaning of Design Right :
Design Right refers to
a property right for a novel or original design that is given to the proprietor of a
validly registered design.
In principle, owner of a registered industrial design or of a design patent
has the right to prevent third parties from making, selling or importing articles
bearing or embodying a design
which is a copy, or substantially a copy, of the protected design,
when such acts are undertaken for commercial purposes.
To be protected under most national laws, an industrial design must be new/
original and non-functional.
How extensive is industrial design protection?
Generally, industrial design protection is limited to the country in which protection
is granted.
The Hague Agreement Concerning the International Registration of Industrial
Explain the provisions relating to registration under the Designs Act of 2000. (Nov-
2011)
Write Short note : Procedure for registration of designs (Nov-2014)
Discuss under the Design Act, 2000 : Prohibition on registration of Designs.
(Nov-2012)
Discuss under the Design Act, 2000 : About cancellation of registration of Design.
(Nov-2012)
ANSWER :
Refer :
http://www.nishithdesai.com/fileadmin/user_upload/pdfs/Research
%20Papers/Intellectual_Property_Law_in_India.pdf
https://www.icsi.edu/docs/webmodules/Publications/9.4%20Intellectual
%20Property%20Rights.pdf
http://hanumant.com/articles/AvinashB-Inellectual%20Property%20Rights%20IPR
%20Notes.html#_Toc317423149
Outline :
Who can Apply for Registration of a Design?
Designs prohibited from registration : [Sec-4]
Process of Registration :
Type of Applications
Representation Sheet :
Classification of Designs : [Section 5(3), Rule 10, 11]
Processing of the Application and Formality Check : [Section 5(1)]
Substantive Examination : [Section 2 (d), 2(g), 5(1), 46 ]
Registration : [Section 5(1), Rule 18]
Rejection : Denial to register a design :
Register of designs :
Period of Protection : [Section 11]
Publication of registered design :
Rights Conferred by Registration : [Sec-11]
Cancellation of Registration of Design : [Section 19, Rule 29]
Who can Apply for Registration of a Design?
Any person (Indian or from a Convention Country),
claiming to be the proprietor of any new or original design
not previously published in any country
and is not contrary to public order or morality
can apply for the registration of the design.
The expressions public order or morality are not defined in the Designs Act.
Sec-2(g) : The term original, with respect to design, means
a design originating from the author of such a design
and includes the cases that, although old in themselves, are new in their
application.
Absolute novelty is now the criterion for registration. [Section 4]
A design shall be considered new if it is significantly distinguishable from known
designs or combination of known designs.
Illustration :
The figure of Taj Mahal is centuries old.
But if a person conceives for the first time, the idea of making a flower vase or
an ash tray in the form of figure of Taj Mahal,
that may be an original design and shall be registrable.
Designs prohibited from registration : [Sec-4]
The following designs are prohibited from registration :
1. A design which is not new or original.
2. A design which has been disclosed to the public anywhere in the world prior to
the filing date or the priority date of application.
3. A design which is not significantly distinguishable from known design or
design.
The application for registration of a design is refereed by the Controller of
Designs to an Examiner of Designs for conducting examination as to :
(a) whether the application and the documents satisfy the formal
requirements, and
(b) whether such design as applied to an article is registrable, under the
provisions of the Designs Act, 2000 and Designs Rules, 2001.
Substantive Examination : [Section 2 (d), 2(g), 5(1), 46 ]
Substantive examination is carried out to determine
whether the design under consideration is :
(a) a design under the Act?
(b) new or original?
(c) prejudicial to public order or morality?
(d) prejudicial to the security of India?
Registration : [Section 5(1), Rule 18]
The Controller shall consider the report of Examiner on registrability of a design
as applied to an article and if it is registrable, the same shall be registered
forthwith.
Sec-5 provides that the Controller may,
on the application of any person claiming to be the proprietor of any new or
original design not previously published in any country and which is not
contrary to public order or morality
register the design under the Act.
Sec-9 provides that, the Controller grants a certificate of registration to the
proprietor of the design when it is registered.
When registered, a design is deemed to have been registered as of the date of
the application for registration.
Rejection : Denial to register a design :
If upon consideration of the report of the Examiner, the Controller is of the
opinion that there are observations adverse to the applicant or the application
requires some amendment(s),
a statement of objections shall be communicated to the applicant or to his
agent.
The defects shall be corrected and the application resubmitted for acceptance
within six months.
If the Controller rejects the application, the aggrieved person can appeal to the
High Court.
Note :
Any person interested may present a petition for a cancellation of the design
registration at any time after the registration, on the following grounds :
that the design has been previously registered in India;
that it has been published in India or in any other country prior to the
registration date;
that the design is not a new or original design;
that the design is not registrable under the Designs Act
or that it is not a design as defined under Section 2(d) of the Designs Act.
An appeal from any order by the Controller can be filed with the High Court.
Note : [Section 15 of The Copyright Act, 1957]
Copyright shall not subsist in any design which is registered under the Designs
Act.
Copyright in any design, which is capable of being registered under the Designs
Act, but is not registered,
will lose its copyright as soon as the design has been reproduced 50 times by
an industrial process by either the owner of the copyright or his licensee.
Discuss authorities under Designs Act 2000 and their powers and duties : (i)
Controller, (ii) Registrar.
Discuss Design Controller under the Designs Act, 2000. (Nov-2011, Nov-2012, Nov-
2014, Dec-2015)
Explain the controls over Registration of Designs. (Dec-2015)
ANSWER :
Refer :
Establishment of Design Controller and Examiners :
Sec-3 : Controller and other officers :
(1) The Controller may refuse to register a design of which the use would, in his
opinion, be contrary to public order or morality.
Sec-45 : Report of the Controller to be placed before Parliament :
Design Controller has duty to prepare, once a year, a report in respect to the
execution of the Design Act 2000, and
the Central Government shall cause, such report, to be placed before both
Houses of Parliament.
Passing off, (defendant was not passing-off, infact they claimed to offer better
deal)
Copying designs by reverse engineering,
Unfair competition and unfair trade practice.
Facts of the case :
The Plaintiffs (Dart & Tupperware Indian Pvt. Ltd.) claimed
ownership of the know-how, intellectual property rights and trade secrets in its
designs used for the manufacture of Tupperware products.
they were a world-famous company having immense goodwill and reputation
and that the Defendants (Techno Plast), the proprietor of the mark
Signoware had copied their product designs which amounted to,
design infringement, copyright infringement, passing off, copying designs by
reverse engineering, unfair competition and unfair trade practice.
On the other hand, the Defendants claimed that
the products were distinct in terms of trade name, appearance, color scheme,
and were a product of their own skill and knowledge.
and that the designs were in public domain.
Court proceedings :
Single judge :
The Court held that once an object has been sold in over 50 units, the only
protection is under the Designs Act.
The Court looked into the meaning of publication and noted that it meant the
availability of knowledge or awareness about a particular design.
Registration is only prima facie evidence of novelty and originality and the
designs lacked originality
as the designs had been published in the 1989 book, The Tupperware
Cook.
and as they were substantially similar to those published earlier.
Therefore, the Court directed that the Plaintiff would be dis-entitled to
injunction on this ground.
The Court also rejected the claim of the Plaintiff viz. copyright infringement,
because the claims clearly fell within the ambit of the Designs Act, and
accordingly, copyright claims in industrial drawings and designs, to be used
for manufacturing processes were not maintainable.
The copyright ceases to exist once the design has been applied and
reproduced over 50 times.
However, since there were serious evidential doubts in proving that the
copyright survived design registration, the Court did not injunct the
Defendants.
Issue of passing off :
Single judge held that the situation was actually contrary.
As per a report, the Defendants salesmen made representations to the
customers not that their products were Tupperware products, but that
they were as good in quality and appearance, yet half the price of
Tupperware.
ie the Defendants were not passing off their goods; rather they were
merely puffing up their products by claiming superior quality.
Division bench :
Contentions of the defendants :
That the 13 designs asserted by the Plaintiff relate to articles such as bowls,
casseroles and lunchboxes etc. which are commonplace and lack novelty
and originality. These designs were pre-published in nature and in the
public domain.
That no copyright can subsist in a registered design.
That it cannot be asserted that copyright can subsist in drawings of purely
functional day to day articles, unless they have inherent creativity.
That drawings of glasses, bowls etc. per se are incapable of copyright
protection as they are not artistic works.
Issue of passing off :
A visual comparison of the parties products proved that the Defendants
were copying the plaintiffs products.
Shapes and colors may acquire distinctiveness and are protectable by law.
A passing off action is not confined by trademark ONLY, it also covers trade
dress.
and that the similarity or confusion was not to be judged by the claim of
the parties but rather by what the products were saying and representing
about themselves.
action for passing off is a common law right, independent of the Designs
Act.
However, for a passing off action,
it must be proved that the general public associates the shape, trade
dress etc. with the Plaintiff alone
which was neither pleaded nor established.
Issue of designs being artistic work :
held that the Single Judge had erred in concluding that
IF the original works such as `product drawings intended for
Discuss : (i) Piracy of registered designs, (ii) Remedial aspects, (iii) Appeal
provisions.
Discuss under the Design Act, 2000 : Piracy of Registered Designs. (Nov-2012, Oct-
2013, Nov-2014)
ANSWER :
Refer :
http://www.nishithdesai.com/fileadmin/user_upload/pdfs/Research
%20Papers/Intellectual_Property_Law_in_India.pdf
(i) Piracy of registered designs :
The proprietor of a registered design gets exclusive right to apply the design to the
article in a class in which the design is registered.
During the existence of copyright over any design,
other persons are prohibited from using the design except or with the permission
of the proprietor, his licensee or assignee.
Essence of Sec-22 : Piracy of registered design : Infringement :
(1) During the existence of copyright in any design it shall not be lawful for any
person
(i) to apply for the purpose of sale
the design or any fraudulent imitation of it
to any article in any class of articles in which the design is registered;
(ii) to import for sale
any article to which the design or fraudulent or obvious imitation of it,
has been applied;
(iii) to publish or to expose such article for sale
knowing that the design or any fraudulent or obvious imitation of it has
Module-4 :
4) The Law of Intellectual Property: Patents :
4.1) Concept of patent, Essentials, Historical view of the patents law in India
4.2) Patentable inventions with special reference to biotechnology products
entailing creation of new forms of life including Amendments of the year
2005
4.3) Patent protection for computer programme and computer software
4.4) Process of obtaining a patent :
4.4.1) Application and Examination : Procedure, Essentials for obtaining
patent : Elements of Novclty, Non-obviousness
4.4.2) Opposition and sealing of patent : general introduction, Grounds for
opposition
4.4.3) The problem of limited locus standi to oppose, especially in relation
inventions having potential of ecological and mass disasters
4.5) Patent Co-operation treaty : Object, reasons and important provisions
4.6) Wrong fully obtaining the invention : Prior Publication or anticipation,
Obviousness and the lack of inventive step, Insufficient description
4.7) Rights and obligations of a Patentee:
4.7.1) Patents as chose in action
4.7.2) Duration of patents law and policy considerations, Use and exercise
rights, Right to secrecy
4.7.3) The notion of "abuse" of patent rights, Compulsory licenses, Special
Categories, Employee Invention Law and Policy Consideration
4.8) International Patents, Transfer of Technology, Know-How and problems
of self reliant development.
4.9) Infringement, Criteria of infringement, Onus of Proof in India, Modes of
infringement, Doctrine of Colorable Variation
4.10) Remedies in case of Infringement : Injunctions and related remedies,
Defense in suits of infringement
4.11) Penal Provisions
MODULE-4 QUESTIONS :
MODULE-4 ANSWERS :
patent means a patent for any invention granted under this Act
A patent provides patent owners with protection for their inventions.
A patent in the law is a property right and hence can be gifted, inherited, assigned,
sold or licensed.
As the right is conferred by the State, it can be revoked by the State under very
special circumstances even if the patent has been sold or licensed or manufactured
or marketed in the meantime.
Protection is granted for a limited period, generally 20 years.
Why are patents necessary?
Patents provide incentives to individuals by recognizing their creativity and
offering the possibility of material reward for their marketable inventions.
These incentives encourage innovation, which in turn enhances the quality of
human life.
What kind of protection do patents offer?
Patent protection means an invention cannot be commercially made, used,
distributed or sold without the patent owners consent.
Patent rights are usually enforced in courts that, in most systems, hold the
authority to stop patent infringement.
Likewise, a court can also declare a patent invalid upon a successful challenge
by a third party.
What rights do patent owners have?
A patent owner has the right to decide who may or may not use the
patented invention for the period during which it is protected.
Patent owners may give permission to, or license other parties to use their
inventions on mutually agreed terms.
Owners may also sell their invention rights to someone else, who then becomes
the new owner of the patent.
Once a patent expires, protection ends and the invention enters the public
domain.
This is also known as becoming off-patent. And such inventions becomes
available for commercial exploitation by others without having to obtain any
consent from anybody.
What role do patents play in everyday life?
Patented inventions have pervaded every aspect of human life,
from electric lighting (patents held by Edison and Swan), and sewing machines
(patents held by Howe and Singer),
to magnetic resonance imaging (MRI) (patents held by Damadian), and the
iPhone (patents held by Apple).
In return for patent protection, all patent owners are obliged to publicly disclose
information on their inventions in order to enrich the total body of technical
knowledge in the world.
This ever-increasing body of public knowledge promotes further creativity and
innovation.
THUS, patents provide not only protection for their owners but also valuable
information and inspiration for future generations of researchers and inventors.
How is a patent granted?
The first step in securing a patent is to file a patent application.
The patent right is territorial in nature.
Inventors and their assignees will have to file separate patent applications in
countries of their interest, along with necessary fees for obtaining patents in
those countries.
The application generally contains the title of the invention, as well as an
indication of its technical field.
It must include the background and a description of the invention, in clear
language and enough detail that an individual with an average understanding of
the field could use or reproduce the invention.
Such descriptions are usually accompanied by visual materials drawings, plans
or diagrams that describe the invention in greater detail.
The application also contains various claims, that is, the extent of protection
that the inventor expects for the patent.
What kinds of inventions can be protected?
An invention must, in general, fulfill the following conditions to be protected by a
patent.
a) It must be of practical use;
b) it must show an element of novelty, meaning some new characteristic
that is not part of the body of existing knowledge (called prior art) in its
particular technical field.
c) The invention must show an inventive step that could not be deduced by a
person with average knowledge of the technical field.
d) Its subject matter must be accepted as patentable under law.
In many countries following are not generally patentable,
scientific theories, mathematical methods, plant or animal varieties,
discoveries of natural substances, commercial methods or methods of medical
treatment (as opposed to medical products)
Types of patents
i) Utility patents
An applicant seeking protection may file one application and request protection
in as many signatory states as needed.
Patents law in India :
The Patents Act, 1970 is a landmark in the industrial development of India.
The basic philosophy of the Act is that
patents are granted to encourage inventions and to secure that these inventions
are worked on a commercial scale without undue delay;
and patents are granted not merely to enable patentee to enjoy a monopoly for
the importation of the patented article into the country,
but also for larger socio-economic development.
The said philosophy is being implemented through
compulsory licensing,
registration of only process patents for food, medicine or drug, pesticides
and substances produced by chemical processes which, apart from chemical
substances also include items such as alloys, optical glass, semi-conductors,
inter metallic compounds etc.
It may, however, be noted that products vital for our economy such as agriculture
& horticulture products, atomic energy inventions and all living things are not
patentable.
Thus, the Patents Act 1970 was expected to provide a reasonable balance
between adequate and effective protection of patents on the one hand
and the technology development, public interest and specific needs of the
country on the other hand.
After Uruguay round of GATT and WTO, India was put under the contractual
obligation to amend its Patents Act in compliance with the provisions of TRIPS.
India had to meet the first set of requirements on 1-1-1995.
Accordingly 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
replaced by the Patents (Amendment) Act, 1999 that was brought into force
retrospectively from 1st January, 1995.
India amended its Patents Act again in 2002 increasing the term of patent to 20
years for all technology, Reversal of burden of proof, compulsory licences etc.
This Act came into force on 20th May 2003 with the introduction of the new Patent
Rules, 2003.
Power of Central Government to make rules :
Under the provisions of Section 159 of the Patents Act, 1970 the Central
Government is empowered to make rules for implementing the Act and regulating
patent administration.
Accordingly, the Patents Rules, 2003 were notified and brought into force w.e.f.
20.4.1972.
These Rules were amended from time to time till 20th May 2003 when new Patents
Rules, 2003 were brought into force by replacing the 1972 rules.
These rules were further amended by the Patents (Amendment) Rules, 2005 and
the Patents (Amendment) Rules, 2006.
The last amendments are made effective from 5th May 2006.
There are four Schedules to the Patents (Amendment) Rules;
the First Schedule prescribes the fees to be paid;
the Second Schedule specifies the list of forms and the texts of various forms
required in connection with various activities under the Patents Act. These forms
are to be used wherever required and if needed, they can be modified with the
consent of the Controller.
the Third Schedule prescribes form of Patent to be issued on Grant of the Patent.
the Fourth Schedule prescribes costs to be awarded in various proceedings
before the Controller under the Act.
Explain patentable invention and rights of patentee under Patent Act. (Dec-2015)
Write note : Inventions which not-patentable. (Nov-2011)
Explain under the Patent Act : Invention (Oct-2013)
Discuss under the Patent Act, 1970 : Patentable invention. (Nov-2012)
ANSWER :
Refer :
https://www.icsi.edu/docs/webmodules/Publications/9.4%20Intellectual
%20Property%20Rights.pdf
Patents Act, 1970.
Patentable subject matters :
Intro :
A patent is granted for an invention which may be related to any process or
product.
An invention is different from a discovery.
Discovery is something that already existed but had not been found.
Not all inventions are patentable. An invention must fulfill certain requirements
known as conditions of patentability.
Section 2(1)(j) : Meaning of invention :
Invention means a new product or process involving an inventive step and
capable of industrial application.
Here, capable of industrial application, means that the invention is capable of
being made or used in an industry [Section 2(1)(ac)].
Elements of Patentability :
The patent must be in respect of an invention and not a discovery.
The fundamental principle of Patent Law is that a patent is granted only for an
invention which 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 work
as opposed to mere verification of what was already known before the date of
the patent.
It is important to bear in mind that in order to be patentable an improvement
should be something more than a mere workshop improvement;
and must independently satisfy the test of invention or an inventive step.
To be patentable the improvement or the combination must produce a new
result, or a new article or a better or cheaper article than before.
Sec-2(1)(l) : New invention is defined 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;
In Raj Prakash v. Mangat Ram Choudhary AIR 1978 Del, it was held that
invention, as is well known, is to find out some thing or discover some thing
not found or discovered by anyone before.
It is not necessary that the invention should be any thing complicated.
The essential thing is that the inventor was first to adopt it.
The principal therefore, is that every simple invention that is claimed, so long as
it is something which is novel or new, it would be an invention and the claims
and specifications have to be read in that light.
Therefore, the essential elements of patentability are :
1. Novelty
2. Inventive step (non-obviousness) and
3. Industrial applicability (utility)
1. Novelty :
A novel invention is one, which has not been disclosed, in the prior art
Here, prior art means everything that has been published, presented or
otherwise disclosed to the public on the date of patent
The prior art includes documents in foreign languages disclosed in any
format in any country of the world.
ie For an invention to be judged as novel, the disclosed information should not
be available in the 'prior art'.
This means that there should not be any prior disclosure of any information
contained in the application for patent (anywhere in the public domain, either
written or in any other form, or in any language) before the date on which the
application is first filed i.e. the 'priority date'.
The term prior art has not been defined under the Indian Patents Act,
it shall be determined by the provisions of Section 13 read with the provisions
of Sections 29 to 34.
ie An invention shall NOT be considered to be novel IF
(a) it has been anticipated by publication before the date of the filing of the
application
in any of the specification filed in pursuance of application for patent in
India on or after the 1st day of January 1912.
or in any of the documents in any country.
(c) if it has been claimed in any claim of any other complete specification filed
in India which is filed before the application but published after said
application.
(d) if it has been anticipated having regard to the knowledge, oral or
otherwise, available within any local or indigenous community in India or
elsewhere.
Case-law :
In Ganendro Nath Banerji v. Dhanpal Das Gupta, AIR1945 Oudh 6, it was held
that
no general rule can be laid down as to what does or does not constitute an
invention.
Novelty need only be established in the process of manufacturing, not in the
article produced.
Novel combination of two known ideas may be sufficient to establish novelty
of subject matter in this respect.
In Ram Narain Kher v. M/s Ambassador Industries, AIR 1976 Del 87, the Delhi
High Court has held that
at the time the patent is granted to a party it is essential that the party
claiming patent should
specify what particular features of his device distinguish it from those
which had gone before
and show the nature of the improvement which is said to constitute the
invention.
A person claiming a patent has not only to allege the improvement in art in
the form but also that the improvement effected a new and very useful
addition to the existing state of knowledge.
2. Inventive Step (Non-obviousness) :
Inventive step is a feature of an invention that involves technical advance as
compared to existing knowledge or having economic significance or both, making
the invention non obvious to a person skilled in art.
Here definition of inventive step has been enlarged to include economic
significance of the invention apart from already existing criteria for determining
inventive step.
An invention shall not be considered as involving an inventive step, if, having
regard to the state of the art, it is obvious to a person skilled in the art.
The term "obvious" means that which does not go beyond the normal progress
of technology but merely follows plainly or logically from the prior art,
i.e. something which does not involve the exercise of any skill or ability beyond
that to be expected of the person skilled in the Art.
For this purpose a person skilled in the art should be presumed to be an
ordinary practitioner aware of what was general common knowledge in the
relevant art at the relevant date.
In some cases the person skilled in the art may be thought of as a group or
team of persons rather than as a single person.
3. Industrial Applicability :
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 as many times as necessary.
What kind of utility/ usefulness is required for patenr?
An invention to be patentable must be useful. If the subject matter is devoid of
utility it does not satisfy the requirement of invention.
For the purpose of utility, the element of commercial or pecuniary success has
no relation to the question of utility in patent law.
(i) 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;
(j) 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;
(k) a computer programme per se other than its technical application to industry
or a combination with hardware;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of
playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known component
or components.
Sec-4 of Patents Act 1970 prohibits the grant of patent in respect of an invention
relating to atomic energy falling within Sec-20(1) of the Atomic Energy Act, 1962.
Sec-20 of the Atomic Energy Act, 1962 contains special provision relating to
inventions.
Under Sec-20 (1) of the Atomic Energy Act, 1962
no patents shall be granted for inventions which in the opinion of the Central
Government are useful for or relate to the production, control, use or disposal of
atomic energy or the prospecting, mining, extraction, production, physical and
chemical treatment, fabrication, enrichment, canning or use of any prescribed
substance or radioactive substance or the ensuring of safety in atomic energy
operations.
Who can apply for patents and who can not apply for patent ? (Nov-2014, Dec-
2015)
ANSWER :
Refer :
Discuss the meaning, types of specification under the Patents Act, 1970. (Nov-
2011)
ANSWER :
Refer :
https://www.icsi.edu/docs/webmodules/Publications/9.4%20Intellectual
%20Property%20Rights.pdf
Specification :
In order to obtain a patent, an applicant must fully and particularly describe the
invention therein claimed in a complete specification.
The disclosure of the invention in a complete specification must be such that a
person skilled in the art may be able to perform the invention.
This is possible only when an applicant discloses the invention fully and particularly
including the best method of performing the invention.
The Specification is a techno-legal document containing full scientific details of the
invention and claims to the patent rights.
The Specification, thus, forms a crucial part of the Patent Application.
It is mandatory on the part of an applicant to disclose fully and particularly various
features constituting the invention.
Types of specifications :
The Specification may be filed either,
(i) as a provisional specification, or
(ii) as a complete specification.
The Specification (provisional or complete) is to be submitted in Form-2
along with the Application in Form-1 and other documents, in duplicate,
along with the prescribed fee as given in the First Schedule.
The first page of the Form 2 shall contain :
(a) Title of the invention;
(b) Name, address and nationality of each of the applicants for the Patent; and
(c) Preamble to the description.
The title of the invention shall sufficiently indicate the specific features of the
invention.
Every Specification whether provisional or complete shall describe the invention.
The applicant shall submit drawings, wherever required.
The Controller may also require the applicant to submit drawings, if necessary at
Discuss under the Patent Act, 1970 : Qualification of a patent agent. (Nov-2012)
Discuss in detail : Patent Agent.
ANSWER :
Refer :
https://www.icsi.edu/docs/webmodules/Publications/9.4%20Intellectual
%20Property%20Rights.pdf
Intro :
The work relating to
drafting of specifications,
making of application for a patent,
subsequent correspondence with the Patent office on the objections raised,
representing the applicants case at the hearings,
filing opposition and defending application against opposition
is entrusted to a qualified Patent Agent.
Sections 125-132 of the Patents Act, 1970 and Rules 108-120 of the Patents Rules,
2003 deal with the Patent Agents.
The Controller maintains a register to be called the register of patent agents in
which there will be entered the names, address and other relevant particular as
may be prescribed of all persons qualified to have their names so entered according
to section 126.
According to rule 4 such register has to be maintained at the Head Office of the
Patent Office, Calcutta.
The register will contain the name, nationality address of the principal place of
business, branch office address and other relevant particular as may be prescribed,
if any, the qualification and the date of registration of entry as Patent agent.
Qualifications for Registration as Patent Agents :
According to Section 126 a person will be qualified to have his name entered in the
register of patent agents if he fulfils the following conditions, namely :
(a) He/she is a citizen of India;
(b) He/she has completed the age of 21 years;
(c) He/she has obtained a degree in Science, Engineering or Technology from
any University established under the law for the time being in force in the
territory of India or possesses such other equivalent qualifications as the Central
Government may specify in this behalf, and, in addition, -
(i) has passed the qualifying examination prescribed for the purpose; or
(ii) has, for a total period of not less than ten years, functioned either as an
examiner or discharged the functions of the Controller under section 73, or
both, but ceased to hold any such capacity at the time of making the
Refer :
Under the Patent Cooperation Treaty, inventors can submit just one international
application which is valid in any or all of the more than 120 countries that are
members of this Treaty.
Inventors may apply for a patent either in all the member countries of PCT or in
selected group of countries.
Only inventors who are citizens or residents of the member countries of the PCT
can use this easier system to file international patent applications.
Where to apply?
Application for the patent has to be filled in the respective patent office.
The territorial jurisdiction is decided based on whether any of the following
occurrences falls within the territory.
Place of residence,domicile or business of the applicant(first mentioned
applicant in the case of joint applicants)
Place from where the invention actually originated.
Address for services in India given by the applicant when he has no place of
business or domicile in India.
A foreign applicant should give an address for service in India and the
jurisdiction will be decided upon that. An applicant (Indian or foreigner) also can
his Patent Agents address as address for serving documents,if he/she so wishes.
How to apply?
Steps involved in obtaining a Patent are as follows :
Section 7 dealing with form of application requires every application for a
patent to be made for one invention only.
A patent may be in respect of a substance or in respect of a process.
But it is not possible to bifurcate a patent and state that it relates to the
substance and the other to the process.
Every international application under the Patent Cooperation Treaty (PCT) for a
patent, as may be filed designating India shall be deemed to be an application
under the Act, if a corresponding application has also been filed before
Controller in India.
In order to have a complete patent, the specifications and the claims must be
clearly and distinctly mentioned.
To file an application for patent accompanied with either a provisional
specification or a complete specification
To file complete specification,if provisional application was submitted earlier.
Examination of the application by patent office.
Acceptance of applications and publication in the gazette of accepted
applications.
Responding and satisfactory overcoming the opposition/objections,if any to the
grant of patent.
Sealing of patent
Application for patent (Form 1) in duplicate should be accompanied by required
documents along with requisite fees.
Patent documents to be submitted :
There are two types of patent documents usually known as patent
specification,namely
A. Provisional specification
B. Complete Specificaion
A. Provisional Specification :
A provisional specification is usually filled to establish priority of the invention
in case the disclosed invention is at a conceptual stage and a delay is expected
in submitting full and specific description of the invention.
Although,a patent application accompanied with provisional specification does
not confer any legal patent rights to the applicants, it is however a very
important document to establish the earliest ownership of an invention.
Complete specification must be submitted within 12 months of filing the
provisional specification. This period can be extended by 3 months.
<detailed note elsewhere in this doc>
B. Complete Specification :
Submission of complete specification is necessary to obtain a patent.
The contents of a complete specification would include the following :
Title of the invention
Field to which invention belongs.
Background of the invention including prior art giving drawbacks of the
known inventions practices.
Complete description of the invention along with experimental results.
Drawings etc essential for understanding the invention.
Claims, which are statements, related to the invention on which legal
proprietorship is being sought. Therefore the claims have to be drafted very
carefully.
<detailed note elsewhere in this doc>
(ii) Essentials for obtaining patent :
(iii) Elements of Novelty, Non-obviousness :
(iv) Opposition to the patent :
Rule 55 dealing with opposition by representation against the grant of patent
requires the representation for opposition under section 25 to be filed at the
appropriate office
within a period not exceeding three months from the date of publication of the
application under section 11A of the Act, or before the grant of patent,
whichever is later
Such representation shall also include a statement and evidence, if any, in support
of the representation and a request for hearing if so desired.
The Controller has been empowered to consider such representation only when a
request for examination of the application has been filed.
On consideration of the representation if the Controller is of the opinion that
application for patent shall be refused or the complete specification requires
amendment, he shall give a notice to the applicant to that effect.
On receiving the notice the applicant shall, if he so desires, file his statement and
evidence, if any in support of his application within one month from the date of the
notice.
On consideration of the statement and evidence filed by the applicant, the
Controller may either refuse to grant a patent on the application or require the
complete specification to be amended to his satisfaction before the patent is
granted.
After considering the representation and submission made during the hearing if so
requested, the Controller shall proceed further simultaneously
either rejecting the representation and granting the patent
or accepting the representation and refusing the grant of patent on that
application,
ordinarily within one month from the completion of above proceedings.
<for details of grounds read Sec-25(1) and Sec-25(2) from bare act>
Under Rule 57 the opponent is required to send a written statement in duplicate
setting out the nature of the opponents interest, the facts upon which he bases his
case and relief which he seeks and evidence, if any, along with notice of opposition
and to deliver to the patentee a copy of the statement and the evidence, if any.
Constitution of Opposition Board and its Proceeding :
Section 25(3) provides that where any such notice of opposition is duly given,
the Controller shall notify the patentee and constitute a Board by order in writing
to be known as the Opposition Board consisting of such officers as he may
determine and refer such notice of opposition along with the documents to that
Board for examination and submission of its recommendation.
The Opposition Board shall conduct the examination of the notice of opposition
along with documents filed under rules 57 to 60 referred to under section 25(4),
and submit a report with reasons on each ground taken in the notice of
opposition with its joint recommendation within three months from the date on
which the documents were forwarded to them.
(v) Problem of limited locus standi to oppose, especially in relation to
inventions having potential of ecological and mass disasters :
(vi) Grant of patents :
Section 43 dealing with grant of patents provides that where an application for a
patent has been found to be in order for grant of the patent
and either the application has not been refused by the Controller by virtue of any
power vested in him by the Act,
or the application has not been found to be in contravention of any of the
provisions of the Act,
the patent shall be granted as expeditiously as possible to the applicant or, in
the case of a joint application, to the applicants jointly, with the seal of the
patent office
and the date on which the patent is granted shall be entered in the register.
The Controller has been put under obligation to publish the fact that the patent has
been granted and thereupon the application, specification and other documents
related thereto shall be open for public inspection.
Grant of patents subject to conditions :
As per Section 47 the grant of a patent shall be subject to the conditions that :
(1) any machine, apparatus or other article in respect of which the patent is
granted or any article made by using a process in respect of which the patent
is granted, may be imported or made by or on behalf of the Government for
the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on
behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is
granted or any article made by the use of the process in respect of which the
patent is granted, may be made or used, and any process in respect of which
the patent is granted may be used by any person, for the purpose merely of
experiment or research including the imparting of instructions to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine or
drug may be imported by the Government for the purpose merely of its own
use or for distribution in any dispensary, hospital or other medical institution
maintained by or on behalf of the government or any other dispensary,
and, in the case of an application other than by the Central Government, should
also set out the nature of the applicants interest.
The Controller, if satisfied that
the reasonable requirements of the public with respect to the patented
invention has not been satisfied or
patented invention has not been worked in the territory of India or
is not available to the public at a reasonably affordable price,
may make an order revoking the patent.
The controller has however been put under obligation to ordinarily decide such
application within one year of its presentation.
Need for compulsory licensing :
If everybody is free to access new knowledge, inventors have little incentive to
commit resources to producing it.
However, IPR holder also has a duty to be sensitive to meet public needs, at
affordable price.
And in case he fails in this duty, then the legal regime shall provides for
compulsory licensing, or even revocation of patent (or other IPR), in extreme
cases.
Hence, in todays world, the rationale for protecting intellectual property is
essentially utilitarian (need to be useful or practical).
Accordingly, under international legal regime for protection of IPR there are a
provisions for compulsory licensing to assure public access to intellectual
properties
if the national interest requires it,
or if the IPR holder is unable to meet the demand.
During TRIP negotiations developed countries, including the US, had raised
concerns over developing countries like India liberally issuing the CL.
The 2002 Doha Declaration affirmed that the TRIPS agreement should not prevent
members from taking measures necessary to protect public health.
However, despite this recognition, less-developed countries have argued that
TRIPS's flexible provisions, such as compulsory licensing, are near-on impossible
to exercise.
In particular, less developed countries have cited their infant domestic
manufacturing and technology industries as evidence of the policy's bluntness.
Patents : Duties of patentee :
Section 83 dealing with general principles applicable to working of patented
invention provides that in exercising the powers conferred for working of patents
and compulsory licences, regard shall be had to the following general
considerations, namely :
(a) that patents are granted to encourage inventions and to secure that the
inventions are worked in India on a commercial scale and to the fullest extent
that is reasonably practicable without undue delay;
(b) that they are not granted merely to enable patentees to enjoy a monopoly
for the importation of the patented article;
(c) that the protection and enforcement of patent rights contribute to the
promotion of technological innovation and to the transfer and dissemination of
technology, to the mutual advantage of producers and users of technological
knowledge and in a manner conducive to social and economic welfare, and to a
balance of rights and obligations;
(d) that patents granted do not impede protection of public health and nutrition
and should act as instrument to promote public interest specially in sectors of
vital importance for socio-economic and technological development of India;
(e) that patents granted do not in any way prohibit Central Government in
taking measures to protect public health;
(f) that the patent right is not abused by the patentee, and the patentee does
not resort to practices which unreasonably restrain trade or adversely affect the
international transfer of technology; and
(g) that patents are granted to make the benefit of the patented invention
available at reasonably affordable prices to the public.
Procedure for Dealing with Applications for revocation and compulsory License :
Sec-87 provides that where the Controller is satisfied, upon consideration of an
application for compulsory licence or revocation of patent, that a prima facie case
has been made out for the making of an order,
he shall direct the applicant to serve copies of the application upon the patentee
and any other person appearing from the register to be interested in the patent
in respect of which the application is made, and shall publish the application in
the Official Journal.
The patentee or any other person desiring to oppose the application may, within
prescribed time or within such further time as the Controller may on application
allow, give to the Controller notice of opposition.
Any such notice of opposition should contain a statement setting out the grounds
on which the application is opposed.
Where any such notice of opposition is duly given, the Controller shall notify the
applicant, and shall give to the applicant and the opponent an opportunity to be
heard before deciding the case.
Patents : Compulsory Licence :
As per the WTO norms, a Compulsory Licence can be invoked by a government
allowing a company to produce a patented product without the consent of the
Section 31 of the Copyright Act 1957 enables a complaint to be filed before the
Copyright Board, which jurisdiction is now vested with the Intellectual
Property Appellate Board, when such refusal has resulted in the work being
withheld from the public.
Similarly, when the owner of the work, has refused to allow communication of
the work by broadcast or that of a sound recording on terms which the
complainant considers not to be reasonable, a complaint can be filed before the
Board.
The Board will hear the owner of the work and on determination of a cause
direct Registrar of Copyright to grant license to qualified persons subject to
payment of compensation to the owner of the work.
Under Section 31 (A) of the Copyright Act 1957, when a work is unpublished, or
published but the author is dead or unknown or not traceable,
any person may apply to the Board for exploitation of the work. The Board
after due notice and hearing, if satisfied, direct the Registrar to grant license.
Likewise, Section 31B (1) provides that any person working for the benefit of
persons with disability on a profit basis or for business may apply to the
Copyright Board in prescribed manner for a compulsory licence to publish any
work in which copyright subsists for the benefit of such persons.
Conclusion :
The principle of conditional grants to proprietary rights in any intellectual property
is to promote public interest. This is universally recognized and incorporated in
intellectual property system.
Protection and enforcement of intellectual property rights must :
be conducive to social and economic welfare;
safeguard an individuals fundamental rights; and
Promote commerce, competition and innovation.
(vi) Patent Assignment/License : Transfer of technology and know-how :
http://epgp.inflibnet.ac.in/epgpdata/uploads/epgp_content/law/08._intellectual_pr
operty_law/27._intellectual_property_assignment_and_licensing_/et/5795_et_27_
et.pdf
Licensing of a patent could obviously be done upon the issuance of the patent but it
could also be attempted during the pendency of the patent application.
A contract for licensing or assignment has to be in writing and has to be reduced to
the form of an executed document which includes all the terms and conditions
governing the rights and obligations of the parties.
Failure to comply with any of these conditions will render the license or assignment
invalid.
Further, the document must be registered by filing an application in the prescribed
manner with the Controller of Patents.
In order to ensure that the employer has the rights to exploit the patent rights in
the invention, most employers, in actual practice, require employees to sign
contracts to assign or license the future inventions to the employers.
Assignment :
Assignment refers to the act of the patentee by which the patent rights are
wholly or partially transferred to the assignee who acquires the right
to prevent others from making, using or exercising or vending the invention.
Section 70 of the Patents Act, 1970 gives the person/persons, persons
registered as grantee or proprietor of a patent,
power to assign, grant licences under, or otherwise deal with, the patent
and to give effectual receipts for any consideration for any such assignment,
licence or dealing.
The assignment can either be exclusive or non exclusive.
The exclusivity can be further limited, for example exclusivity to a territory or
market or line of products.
Following are three main types of assignments in patents :
Legal Assignments :
An assignment of an existing deed is a legal assignment.
A patent which is created by deed can only be assigned by a deed.
A legal assignee is entitled to be registered as the proprietor of the patent
and acquires all the rights thereof.
Equitable Assignments :
A document agreeing to transfer a patent or a share of a patent with
immediate effect is an equitable assignment.
Refer :
This provision allows the generic producers to market and manufacture their goods
as soon as the patent term expires.
However, this does not allow for the use of such patented IP to obtain the
license to manufacture and distribute the generic drug before the expiry of the
term of patent.
This exemption is also referred as Bolar Provision and is a statutorily created
exemption to patent rights that allows the manufacturers of generic drugs to
undertake steps reasonably related to the development and submission of
information required for obtaining marketing approval anywhere in the world in
respect of a patented product without the consent of the patentee.
4. Foreign Vessels, Aircraft or Land Vehicles Exception :
As per Article 5 of the Paris Convention,
rights conferred by a patent shall not extend to the use of the patented invention
on board of vessels when such vessels temporarily or accidentally enter the
waters,
provided that the invention is used exclusively for the needs of the vessel .
This exception is beneficial in facilitating uninterrupted international travel and
reducing tensions between countries over the treatment of vessels flying their flag.
As this exception is not optional for countries party to the Paris Convention, Indian
Patents Act, in order to comply, incorporated the said exception under Section 49.
According to the said section, the patent rights are not infringed when the patented
invention is used exclusively for the needs of foreign vessels, aircraft, or land
vehicles and other accessories thereof, when such foreign vessels, aircraft, or land
vehicles temporarily or accidentally comes into India.
The term "Temporarily" not only includes the accidental and unintentional entry but
also the intentional and regular going into a port, provided that the vessels,
aircraft, or land vehicles does not remain permanently in the territorial waters or
the territory of the country.
5. Exhaustion of Patent Rights :
The Doctrine of Exhaustion or First Sale Doctrine refers to
the exhaustion of the exclusive rights of the patent holder once the patented
invention is sold without any restriction.
As per this Doctrine, the first UNRESTRICTED sale of a patented item exhausts the
patentee's further control over that particular item.
The rationale behind the patent holder exhausting their rights once they have sold
the patented product is that,
by first sale of the patent invention the Patent holder
has already used the exclusive rights to prevent others from making, using,
selling, offering for sale in the territory of patent grant or importing an
Discuss suits for infringement of Patent under the Patents Act, 1970. (Nov-2011)
Discuss : (i) Criteria of infringement, (ii) Modes of infringement, (iii)
Jurisdiction, (iv) Onus of Proof in India, (v) Doctrine of equivalent, (vi)
Doctrine of Colorable Variation.
ANSWER :
Refer :
http://corporatelawreporter.com/2016/12/14/patent-infringement/
Intro :
Patent infringement typically is caused by using or selling a patented invention
without permission from the patent holder.
The scope of the patented invention or the extent of protection is defined in the
(a) Patent Administrative Cases, where the Indian Patent Office is the defendant.
These types of cases include dispute on grant of a patent, patent invalidation
and upholding and compulsory licensing.
(b) Patent Infringement Cases, where the patentee or patent assignee pursue
damages against willful infringement conduct by the alleged infringer.
These include infringement of patent, disputes relating to ownership of patent,
disputes regarding patent rights or right for application, patent contractual
disputes, and contractual disputes of assignment right, patent licensing and
dispute relating to revocation of patents.
Section 104 of the Patents Act, 1970 says that
the infringement suit shall not be instituted in a court lower than the District
Court in India.
Further, if the defendant files a counter-claim against revocation of the patent,
then the suit along with the counter-claim shall be transferred to the High Court
for decision.
Like any other civil suit the jurisdiction shall be determined in accordance with rules
of the Code of Civil Procedure. Accordingly the appropriate forum would be :
1. Principal place where the plaintiff carries on his business; or
2. Principal place where the defendant carries on his business; or
3. Place where the infringing articles are manufactured or sold or infringing
process is being applied or where the articles manufactured by the infringing
process are sold.
Period of Limitation :
The period of limitation for instituting a suit for patent infringement is three
years from the date of infringement.
(iv) Onus of Proof in India :
The traditional rule of burden of proof is adhered to with respect to patented
product.
Accordingly in case of alleged infringement of a patented product the onus of
proof rests on the plaintiff.
However, TRIPS prompted amendment inserted by way of Sec-104(A) has
reversed burden of proof in case of infringement of patented process.
Under the current law, the Court can at its discretion shift the burden of proof on
the defendant, in respect of process patent if either of the following two conditions
is met :
1. The subject matter of the patent is a process for obtaining a new product; or
2. There is substantial likelihood that an identical product is made by the process
and the plaintiff/ patentee has made reasonable efforts to determine the process
actually used but has failed
In considering whether a party has discharged the burden imposed upon him under
Section 104(A), the Court shall not require him to disclose any manufacturing or
commercial secrets, if it appears to the Court that it would be unreasonable to do
so.
(v) Doctrine of equivalent :
Patent infringement generally falls into two categories :
A. Literal infringement :
The term literal infringement means that each and every element recited in
claim has identical correspondence in the allegedly infringing device or
process.
B. Infringement under the doctrine of equivalent :
Even if there is no literal infringement, a claim may be infringed under the
doctrine of equivalents if some other element of the accused device or process
performs substantially the same function, in substantially the same way, to
achieve substantially the same result.
The doctrine of equivalents is a legal rule in most of the worlds patent systems
that allows a Court to hold a party liable for patent infringement even though the
infringing device or process does not fall within the literal scope of patent claim,
but nevertheless is equivalent to the claimed invention.
The expansion of the claim coverage permitted by the doctrine of equivalents,
however, is not unbounded.
The scope of coverage which is afforded to the patent owner is limited by (i) the
doctrine of prosecution history estoppel and (ii) the prior art.
An infringement analysis determines whether a claim in a patent
literally reads on an accused infringers device or process,
or covers the allegedly infringing device under the doctrine of equivalents.
The steps in the analysis are :
Construe the scope of literal language of the claims.
Compare the claims, as properly construed with the accused device or process to
determine whether there is literal infringement.
IF there is no literal infringement,
THEN, construe the scope of the claims under the doctrine of equivalents.
The doctrine of equivalents is an equitable doctrine which effectively expands the
scope of the claims beyond their literal language to the true scope of the inventors
contribution to the art.
However, there are limits on the scope of the equivalents to which the patent
owner is entitled.
(vi) Doctrine of Colorable Variation/ Alteration :
Section 48 of the Patents Act 1970, which are subject to certain other provisions
of the Act including Section 47, Section 49, Section 100 and Section 107A.
SUMMARY :
The Patents Act provides remedies to the patent owner, the patent applicant and
also to a third party who may be threatened with infringement action.
The remedies to patent owners are based on certain rights granted under Section
48 of the Patents Act subject to certain exceptions.
The Act also offers remedies on the infringement of these rights.
The remedies include temporary injunction, permanent injunction, damages or
account of profits.
The suit may be filed in a civil court not inferior to the district court, except where
a counterclaim of revocation is filed by the defendant to the suit, in which case the
entire suit shall be transferred to the High Court along with the counterclaim of
revocation.
However injunction is not a statutory right but merely an equitable remedy.
Interim relief is available to prevent infringing goods from entering the channels of
trade, pending the resolution of litigation.
The patent applicant and third party also have certain remedies under the act
especially when threatened with a suit of patent infringement.
WHO can avail of remedies?
The remedies available to a party under the Act are directly dependent on the issue
at hand.
The parties who may avail of remedies under the Patent Act are any persons who
are aggrieved by the patent law provisions.
These persons may be broadly classified into three categories namely,
the patent owner,
the patent applicant
and the third party aggrieved by the effect of patent or likely to be aggrieved by
the possible effect of patent application when granted.
WHEN can remedies be granted?
Following are the situations in which remedy may be sought by a person aggrieved
under the provisions of the Act :
1. Infringement of the patent right of the patent holder
2. Invalidity of patent claims including pre-grant opposition, post grant
opposition, revocation and counter-claim for revocation
3. Declaration of non-infringement
4. Groundless threats of infringement
There are also situations in which a patent applicant or a third person may seek
Further the defendant may invoke the exceptions under Section 47 such as use
for research or for governments own use, as a ground for defence.
One of the main defences in a suit for infringement is the invalidation of patent
claims which is usually by way of filing a counter-claim for revocation under
Section 64, usually along with the written statement.
(iii) Penal Provisions :
FAILURE TO OBTAIN FOREIGN FILING LICENCE UNDER SECTION 39 :
The S.39 requires a patent applicant to first file in India or to obtain a foreign
filing licence (FFL) to first file abroad.
Besides being a ground for the revocation of patent, the failure to obtain FFL
under Section 39 is also an offence.
The Section 118 states that failure to comply with S. 39 (or with the Secrecy
Orders under S.35) shall be punishable with imprisonment for a term which may
be extended to 2 years or with fine or both.
There is no remedy available to a patent applicant for non-compliance of S. 39
requirement to obtain a foreign filing licence to file abroad without first filing in
India,
Suggested Readings :
Cornish W.R., Intectual Property, Patents, Trade Marks, Copy Rights and Allied Rights,
Asia Law House, Hyderabad.
Vikas Vashishth, Law and Practice of Intellectual Property, Bharat Law House, Delhi.
P. Narayanan, Intellectual Property Law, Eastern Law House, Calcutta.
Dr. B. L. Wadehra, Law relating to Intellectual Property, Universal Law Publishing Co.
Chakravarty's Intellectual Property Law, Ashoka Law House, New Delhi
Bibeck Debroy (ed), Intellectual Property Rights Rajiv Gandhi Foundation, Delhi.
E.I.F. Anderfelt, International Patent Legislation and Developing Countries
W.R. Cornish. Intellectual Property, Sweet and Maxwell.
Mata Din, Law of Passing off and Infringement Action of Trade Marks
P.S. Sengal and Kishore Singh, Indian Patent System and Paris Convention : Legal
Perspectives
K. Thairani, Copyright The Indian Experience
W.R. Cornish, Para and Materials on Intellectual Property, Sweet & Maxwell.
N. K. Acharya, Textbook on Intellectual Property Rights, Asia Law House
Dr. S. R. Myneni, Law of Intellectual Property, Asia Law House
Justice P. S. Narayanas Intellectual Property in India, Gogia Law Agency
Manish Arora, Guide to Trademarks Law, Universal Law Book Co.
Iyengar's The Trademarks Act, Universal Law Book Co.
Pr. Ashwani Kr. Bansal, The Designs Law, Universal Book Co.
Dr. B. L. Wadehra, Law Relating to Patent, Trademarks, Copyright, Designs &
Geographical Indication, Universal Law Publishing Co.
Patent Co-operation Treaty