Module 2 Course Material Ippro Different Domains of Ipr

FICCI Online
Certificate
Course on
Intellectual
Property (IPPro)
DIFFERENT
DOMAINS OF IPR
MODULE 2
This module teaches an overview to the various domains of Intellectual Property
Rights and their implementation. Taking an interdisciplinary approach, it deals
with brief introduction to Patents, Copyrights, Trademarks, Designs, Geographical
Indications, TKDL, Plant Breeder’s Right (PBR), Plant Variety Rights (PVR) and
Trade Secrets. This module also focuses on the concept of bio prospecting and bio-
piracy.
Chapter Title Page No.

1 PATENTS 2-7
2 TRADEMARKS 8-13
3 COPYRIGHTS 14-25
4 INDUSTRIAL DESIGN 26-31
5 PLANT VARIETY 32-40
6 TRADE SECRETS 41-44
7 GEOGRAPHICAL INDICATIONS 45-56
8 SEMICONDUCTOR INTEGRATED CIRCUITS LAYOUT 57-62
DESIGNS
9 TRADITIONAL KNOWLEDGE 63-69
DIFFERENT DOMAINS OF IPR 1.3 1

CHAPTER 1: PATENTS
A patent is an exclusive right granted by a country to an inventor, permitting the inventor to

exclude others from making, using or selling his or her invention in that country during the life
of the patent. It does not give the inventor the right to use or "practice" the invention. So for
example, if a person X have a patent on a “vessel to hold coffee” and Y have a patent on a
“handle for a vessel”, then Y can prevent X from putting a handle on a coffee cup and X can
prevent Y from attaching a cup to handle.
Patents are one of the oldest forms of intellectual property protection. The basic aim of a
patent system is to encourage economic and technological development by rewarding individual
creativity and/or intellect. A patent under the act is a grant from the government to inventors, for
a limited period of time for the exclusive right to make, use, exercise and vend the invention.
A patent is issued to the inventor and not to a company, while it is typical practice to have
employees assign inventions to their employer. Patent protection is available for any product,
process or design that meets certain requirements of novelty, non- obviousness and utility. For
most categories of inventions, patent protection in the United States takes for 20 years from the
date the patent is filed. The procedure for granting patents, requirements placed on the patentee,
and the extent of the exclusive rights vary widely between countries according to national laws
and international agreements.
Typically, however, a granted patent application must include one or more claims that
describe the invention. A patent may include many claims, each of which defines a specific
property right. These claims must meet relevant patentability requirements, such as novelty,
usefulness, and non-obviousness.
Novelty: In order to obtain a patent for an invention, the inventor is compulsory to make sure
that the invention consists of one or more elements that are new, failing which, the invention will
not qualify for patenting.
Non-obviousness: Along with novelty, the invention is required to be non-obvious. As in,
any person possessing skills in the specific field of invention must not find the invention to be

easy and obvious.
Industrial Application: Process/embodiments of an invention must have a commercial
market failing which they will be termed as utility models. In case the novel and non-obvious
invention has industrial application, the invention qualifies to be patented and so satisfies the
conditions of patentability.
 Under the World Trade Organization's (WTO) TRIPS Agreement, patents must 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.
 As per Trade Related Intellectual Property Rights (TRIPS), Article 331, the term of patent is
20 years from the date of filing of the application for a patent. At the end of patent period, the
government prints the invention and it becomes part of the public domain. In other words,
after the expiry of patent period the public can make use of the patent. As part of the public
domain, the disclosure of patent for public will stimulate ideas and even the development of
an better product that could replace the original.
1.1 What can be patented?
The Indian Patent Act, 1970 has notified the nature of patentable inventions. These are
classified and summarized in the following paragraphs:
 Process: In the patents law, the word process refers to either new method of
manufacturing or new technological procedures that can be demonstrated and
validated as new and/or unique.
Similarly, a new process of testing blood samples was patented. Here, it is worth
noting that in both the cases, there was not a specific product {i.e., no physical
object), but both the processes were well documented and subsequently demonstrated
as being workable, new and useful.
 Machine: According to Patent Law, machine means the application of patent for a
specific physical item. Generally, we think of patents for physical products. Here
1 Article 33: Term of Protection: The term of protection available shall not end before the expiration of a period
of twenty years counted from the filing date

also, machine needs to be new and useful that is just an art work or mere interest for
something cannot be patented.
 Manufacture: The word machine in a patent law refers to specific physical items that
have been fabricated through new combinations of materials or technical applications.
The application must demonstrate and validate how the product is manufactured.
 Composition of Matter: The composition of matter as used in the patent law refers
to composition, or say, mixture of chemical compounds such as synthetic materials,
medicines, cosmetics and biogenetic catalysts. This means simply having a
composition or mixture of ingredient does not constitute a patentable composition.
Thus, the compositions or mixtures of known ingredients are not patentable. To be
patentable, the composition must have a new ingredient.
1.2 Types of Patents:

The Patent Law classifies all the patents into three types which are discussed as follows:
 Utility Patents: Patents granted for new products, processes, machines, methods of
manufacturing and composition of matter come under the category of utility patents. This
is the most common patent types sought by the inventors. It is granted for 20 years. The
utility patents exclude most of botanical creations related to plant and agricultural use.
 Design Patents: Design Patents are granted for any new or original ornamental design
for an article of manufacture. Examples are shoe companies such as Reebok and Nike
that have become more interested in design patents as a means of protecting their
ornamental designs. The most important element in the design patent is that it guards the
appearance (design) of the article, not the article itself. For example, dozens of bicycle
manufacturers manufacture their bicycles for exercise and fitness. These bicycles use
similar principles of dynamic tension. Nonetheless, the bicycle producers design their

bicycles so that these appear different and unique. By obtaining design patents, they
differentiate their bicycles and cycle market reaches from cloning manufacturers that
might replicate bicycles. Here, it is important to mention that just having the idea of
cycling for exercise and fitness is not patentable. Compared to utility patent design patent
has a shorter life for 3.5 or 7 years.
 Plant Patent: Plant Patent is granted for any new variety of plant that has been asexually
reproduced by an inventor. The new plants may be patented only when the inventor
satisfies the patent office that the new plant did not exist in nature or in an uncultivated
state.
 Benefits:
Primary incentives embodied in the patent system include incentives to invent in the first
place; to disclose the invention once made; to invest the funds necessary to experiment,
produce and market the invention and to design around and improve upon earlier patents.
 Incentives: Patents provide incentives for economically efficient research and

development (R&D). A study conducted annually by the International Patent and
Trademark Service (IPTS) shows that the 2,000 largest global companies invested
more than 430 billion euros in their R&D departments. If the investments can be
considered as inputs of R&D, real products and patents are the outputs.
 Property Rights: Specifically, the patent internalizes the externality by giving the
inventor a property right over its invention.
 Exclusive Rights and Licensing:
One effect of modern patent usage is that a small-time inventor, who can afford both
the patenting process and the defense of the patent, can use the exclusive right status
to become a licensor. This allows the inventor to collect capital from licensing the
invention and may allow innovation to occur because he or she may choose not to
manage a manufacturing buildup for the invention. Thus the inventor's time and
energy can be spent on pure innovation, allowing others to concentrate on

manufacturability.
 Innovation: In accordance with the original definition of the term "patent", patents
are intended to facilitate and encourage disclosure of innovations into the public
domain for the common good. Thus patenting can be viewed as contributing to open
hardware after a restriction period (usually of 20 years). If inventors did not have the
legal protection of patents, in many cases, they might prefer or tend to keep their
inventions secret (e.g. keep trade secrets). Awarding patents generally makes the
details of new technology publicly available, exploitation or use for further
improvement by other inventors. Furthermore, when a patent's term has expired, the
public record ensures that the patentee's invention is not lost to humanity.
 Monetary Benefits: In many industries (especially those with high fixed costs and
either low marginal costs or low reverse engineering costs computer processors and
pharmaceuticals for example), once an invention exists, the cost of
commercialization (testing, tooling up a factory, developing a market, etc.) is far
more than the initial conception cost.
1.2 Reasons for Patenting: Business Orientation
 Exclusive rights - Patents provide the exclusive rights which usually allow SME to
use and exploit the invention for twenty years from the date of filing of the patent
application.
 Strong market position - Through these exclusive rights, one is able to prevent
others from commercially using his patented invention, thereby reducing competition
and establishing yourself in the market as the pre-eminent player.
 Higher returns on investments - Having invested a considerable amount of money
and time in developing innovative products, SME could, under the umbrella of these
exclusive rights, commercialize the invention enabling SME to obtain higher returns
on investments.
 Opportunity to license or sell the invention - If one chooses not to exploit the

patent himself, then one may sell it or license the rights to commercialize it to
another enterprise which will be a source of income for SME.
 Increase in negotiating power - If SME is in the process of acquiring the rights to
use a patent of another enterprise, through a licensing contract; the patent portfolio
will enhance the bargaining power. That is to say, the patents may prove to be of
considerable interest to the enterprise with whom one is negotiating and could enter
into a cross licensing arrangement where, the patent rights could be exchanged
between the creator and the other person.
 Positive image for enterprise - Business partners, investors and shareholders may
perceive patent portfolios as a demonstration of the high level of expertise,
specialization and technological capacity within a company. This may prove useful
for raising funds, finding business partners and raising the company's market value.

CHAPTER 2:
TRADEMARKS
A trademark is any word, sign, symbols or
graphic that you apply to your company, goods or services to distinguish them from those of
your competitors. The trademark serves as a badge of origin for your business and its brands and
products, and can consist of words, logos, images, slogans, shapes and colors, or a combination
of all of these.
Words and pictures are the most common forms of trademark, but other unique signs can be
registered, so long as they are capable of being represented graphically. For example, designs
have successfully been protected as trademarks (e.g. the Coca-Cola bottle), as colors (e.g. the
yellow color of Yellow Pages), family names (e.g. Louis Vuitton) and even smells and sounds.
Trademarks: Business Assets
Trademarks are valued business assets; a valid trademark right will enable its owner to
prevent others from copying or otherwise taking advantage of the goodwill in the owner’s brand
or company name. In the case of copying or infringement, unregistered trademarks offer limited
protection that is why it is generally recommended to register trademark rights at the relevant
national or regional trademark office. A registered trademark needs to be renewed timely
(generally every 10 years) to keep it in force.
Basics
The applicants must consult with a trademark attorney before attempting to register their
brand, product or company name as not every logo can get a trademark registration. For
example, they will need to verify whether:
 The selected brand, product or company name is available for registration (trademark
searching). In case another party has registered or applied to register a trademark that
looks or sounds the same or similar to your chosen mark for the same or similar group
of goods or services then it is likely that they or the trademark office will object to

your mark.
 The proposed trademark should be ‘distinctive’. The proposed trademark needs to be
a distinctive word, logo, picture or other sign that clearly identifies your goods and
services from those of other traders.
 The proposed trademark can’t be too ‘descriptive’. If the trademark is too expressive
of the goods or services or any characteristics of them, then the trademark office will
likely object to your mark. For instance, Apple functions as a valid trademark in the
computer sector, but it is unlikely to have been approved for use by a company that
trades in apples.
 Certain words and symbols are barred from recording; for example, trademarks that
are deemed contrary to public order or morality (e.g. marks that are offensive or
blasphemous); armorial bearings, flags and other state emblems and, marks that
mislead the public (e.g. marks indicating geographical origin, such as Champagne).
 Trademarks are territorial rights their registration and enforcement is governed by
national laws, and the rights conveyed can vary country-by-country.
2.1 Types of Trademarks

A trademark may be divided into the following categories:
a) Word marks: Word marks may be words letters or numerals. A word mark gives
the proprietor a right only in the word, letter or numerical. No right is sought with
respect to the symbol of the mark.
b) Device marks: Where the trademark lies in the unique representation of a word,
letter or numerical, it is called as a device mark.
c) Service Marks: A service mark is nothing but a mark that distinguishes the
services of one person from that of another. Service marks do not represent goods,
but the services offered by a person/ company. They are used in a service business

where actual goods under the mark are not traded. It is a right available to protect
marks used in the service industry. Thus businesses providing services like
computer hardware and software assembly and maintenance, restaurant and hotel
services, courier and transport, beauty and health care, advertising, publishing,
educational and the like are now in a position to protect their names and marks
from being untouched by others. As service marks, the substantive and procedural
rules governing for the service marks are fundamentally the same.
d) Collective Marks: Marks being used by a group of companies can be protected

by the group collectively. Collective marks help to inform the public about a
particular feature of the product for which the collective mark is used. The owner
of such marks may be an association or public institution. Collective marks are
also helpful in promoting particular products which have certain characteristics
specific to the producer in a given region.
e) Certification Marks: Certification marks are used to define standards. They

assure the consumers that the product meets certain prescribed standards. The
presence of certification mark on a product indicates that the product has
successfully gone through a standard test specified. It assures the consumer that
the producers have gone through an audit process to ensure the quality of the
product. For example, toys, electrical goods, etc. have such marking that indicates
the safety and the quality of the product.
NOTE: The difference between the certification mark and the collective mark is
that the collective mark is used by a particular enterprise or members of the
reminder while a certification mark may be used by anyone who meets the definite
standards.
f) Well-known marks: When a mark is easily recognized among a large percentage

of the population it achieves the status of a well-known mark. Well-known marks

enjoy greater protection. People will not be able to register or use marks, which
are simulations of well-known trademarks. In order to be well-known, a
trademark needs to be known/ recognized by a relevant section of people. These
people include actual or possible customers, people involved in the distribution
and business service dealing with the goods/services.
g) Unconventional Trademarks: Unconventional trademarks are those trademarks

which get recognition for their inherently distinctive feature.
Unconventional trademarks include the following categories:

g.1) Color Trademark: If a particular color has become a distinctive feature
indicating the goods of a particular trader it can be registered as a trademark. For
example- Red Wine.
g.2) Sound Marks: Signs which are perceived by hearing and which is
distinguishable by their distinctive and exclusive sound can be registered as sound
marks. For example, Musical notes.
g.3) Shape Marks: When the shape of goods, packaging have some distinctive
feature it can be registered. For example- Ornamental Lamps.
g.4) Smell Marks: When the smell is distinctive and cannot be mistaken for an
associated product it can be registered as a smell mark. For example, Perfumes.
2.2 Trademark Guidelines:
 Enforcement: trademark protection and infringement actions

The registration of a trademark right is only the first step in a long process of
protection and implementation. For some trademarks, this process will be relatively
simple and straightforward but, for many trademark owners, it will be a complex

journey, as they seek to distinguish and uphold their rights against counterfeiting,
passing off or infringement by third parties.
 Identifying infringement: third-party use and passing off

A trademark gives its owner the right to exclude others from using the registered
mark in the relevant territory and group of classes. As such, the emphasis is on the
trademark owner to monitor for misuse and to force the right via infringement action
where misuse is found.
 Responding to trademark infringement and litigious actions

Trademark owners don’t just need to monitor and act against infringing actions by
third parties; they may also find that trademark infringement and passing off actions
are brought against them too. This could be for a number of reasons; for example,
they didn't undertake a thorough symbol search before registering the mark or they
have recently extended their use of the trade name into a new market or product area,
in which a conflicting trademark registration already exists.
Due to similarity in the brand names chosen for trademark applications, conflicts
between trademark owners and applicants are becoming increasingly common.
Unless you have conducted a thorough trademark search before using or seeking to
register a new mark in your chosen territory or class, there is a possibility that your
chosen mark will be similar or confusingly similar to a mark that has already been
registered.
 Licenses and agreements: expansion of trademark rights

Licenses are an excellent tool for bringing trademarks and/or ideas to the attention of
a larger and wider national and international audience. There may come a day when
you are absorbed in starting a new business, when you want to further expand
existing business activities or have the desire to grow further nationally and
internationally. It may also be that you want to merchandise the goodwill or
popularity of your brand or product, or want to quickly put a merchandising format

on the market by means of franchising. In many of these situations licenses provide
an excellent tool to realize these goals.
 Developing a licensing strategy

 Generally a license contains permission from the holder of a trademark
and/or other Intellectual Property rights for a party to use those rights
in a particular territory subject to certain conditions. This use is usually
subject to agreed financial reimbursement (royalties) and is governed
by a licensing agreement.
 Licenses allow companies to expand into new markets or territories via
partnership with a third party. But, to work successfully, it is vital that
the conditions under which a license is issued have been clearly
recorded. The ultimate success of your licensing program depends
upon your licensing strategy and objectives, with attention being paid
to subjects like:
(i) The degree of exclusivity
(ii) The geographical area
(iii)Agreements on quality
(iv) The term of the agreement
(v) The amount of the royalties

CHAPTER 3:
COPYRIGHTS
 Copyright (or author’s right) is a legal term used to describe the rights that
creators have over their fictional and artistic works. Works covered by copyright
range from books, music, paintings, sculpture, films to computer programs,
databases, advertisements, maps and technical drawings. It is a legal right shaped
by the law of a country that grants the inventor of original work partial rights for
its use and distribution. This is usually only for a limited time. The exclusive
rights are not absolute but limited by limitations and exceptions to copyright law,
including fair use.
 Copyright is a form of intellectual property, applicable to certain forms of creative
work. Some, but not all jurisdictions require "fixing" copyrighted works in a
tangible form. It is often shared among multiple novelists, each of whom holds a
set of rights to use or license the work, and who are commonly referred to as
rights holders. These rights frequently include reproduction, control over
derivative works, distribution, public performance and "moral rights" such as
attribution.
 Copyrights are considered regional rights, which mean that they do not extend
beyond the territory of a specific jurisdiction. Also, copyright laws vary by
country.
 Typically, the duration of a copyright spans the author's life plus 50 to 100 years
(that is, copyright typically expires 50 to 100 years after the author dies,
depending on the jurisdiction). Some countries require certain copyright
formalities to starting copyright, but most recognize copyright in any completed

work, without formal registration. Generally, copyright is enforced as a civil
matter, though some jurisdictions do apply criminal sections.
The development of digital media and computer network technologies have prompted
reinterpretation of these exceptions, introduced new difficulties in enforcing copyright, and
inspired additional challenges to copyright law's philosophic basis. Simultaneously, businesses
with great economic dependence upon copyright, such as those in the music business, have
advocated the extension and expansion of copyright and sought additional legal and
technological enforcement.
3.1What can be protected?
Works commonly protected by copyright throughout the world include:

 literary works such as novels, poems, plays, reference works, newspaper articles;
 computer programs, databases;
 films, musical compositions, and choreography;
 artistic works such as paintings, drawings, photographs and sculpture;
 architecture; and
 Advertisements, maps and technical drawings.
Note: Copyright protection extends only to expressions and not to ideas, procedures, and
methods of operation or mathematical concepts as such. Copyright may or may not be available
for a number of objects such as titles, mottoes, or logos, depending on whether they contain
sufficient authorship.
3.2 Rights under Copyright:
There are two types of rights under copyright:

 ECONOMIC RIGHTS, which allow the rights owner to derive financial reward
from the use of his works by others; and

 MORAL RIGHTS, which protect the non-economic interests of the author.
Most copyright laws state that the rights owner has the economic right to allow or prevent
certain uses in relation to a work or, in some cases, to receive remuneration for the use of his
work (such as finished collective management). The economic rights owner of a work can
prohibit or authorize:
1. its reproduction in various forms, such as printed publication or sound recording;
2. its public performance, such as in a play or musical work;
3. its recording, for example, in the form of compact discs or DVDs;
4. its broadcasting, by radio, cable or satellite;
5. its translation into other languages; and
6. Its adaptation, such as a novel into a film screenplay.
Duration of the Rights:

Copyright subsists for a variety of lengths in different jurisdictions. The length of the term
can depend on several factors, with the type of work (e.g. musical composition, novel),
whether the work has been published and whether the work was created by an individual or
a corporation. In most of the world, the default length of copyright is the life of the author
plus 60 years. In the United States, the term for most existing works is a fixed number of
years after the date of creation or publication. Under most countries' laws (for example, the
United States and the United Kingdom), copyrights expire at the end of the calendar year in
question.
The length and requirements for copyright duration are subject to change by legislation, and
since the early 20th century there have been a number of adjustments made in various
countries, which can make determining the duration of a given copyright slightly difficult.
For example, the United States used to require copyrights to be changed after 28 years to
stay in force, and formerly required a copyright notice upon first publication to gain
coverage. In Italy and France, there were post-wartime extensions that could increase the
term by approximately 6 years in Italy and up to about 14 years in France. Many countries
have extended the size of their copyright terms (sometimes retroactively). International
treaties establish minimum terms for copyrights, but individual countries may enforce longer

terms than those.
Berne Convention for the Protection of Literary and Artistic Works (1886):
The Berne Convention for the Protection of Fictional and Artistic Works is the oldest
international agreement in the field of copyright. The Berne Convention deals with the protection
of works and the rights of their authors. It is grounded on three elementary principles and
contains a series of provisions determining the minimum safety to be granted, as well as special
provisions obtainable to developing countries that want to make use of them.
(1) The three basic principles are the following:
(a) Works originating in one of the Contracting States (that is, works the author of which is a
national of such a State or works first published in such a State) must be given the same
protection in each of the other Contracting States as the latter grants to the works of its own
nationals (principle of "national treatment").
(b) Protection must not be conditional upon compliance with any formality (principle of
"automatic" protection).
(c) Protection is not dependent on the existence of protection in the country of origin of the work
(principle of "independence" of protection). 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, protection may be denied once safety in the country of
origin ceases.
(2) The minimum standards of protection relate to the works and rights to be protected, and to
the duration of protection:
(a) As to works, protection must include "every production in the literary, scientific and artistic
domain, whatever the mode or form of its expression" (Article 2(1)2 of the Convention).
2 The expression "literary and artistic works" shall include every production in the literary, scientific and
artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings;

(b) 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, dramatic-musical and 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 (with the possibility that a Contracting State may provide for mere
right to equitable remuneration instead of a right of authorization),
 the right to make reproductions in any manner or form (with the possibility that a
Contracting State may permit, in certain special cases, reproduction without
authorization, provided that the reproduction does not conflict with the normal
exploitation of the work and does not unreasonably prejudice the legitimate interests of
the author and the possibility that a Contracting State may provide, in the case of sound
recordings of musical works, for a right to equitable remuneration),
 The right to use the work as a basis for an audiovisual work and the right to reproduce,
distribute, perform in public or communicate to the public that audiovisual work.
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 modification of, or other
derogatory action in relation to, the work that would be prejudicial to the author's honor or
reputation.
(c) The general rule is that security must be granted until the cessation of the 60th year after the
author's death. There are, however, exceptions to this general rule. In the case of anonymous or
pseudonymous works, the term of protection expires 60 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
lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works;
choreographic works and entertainments in dumb show; musical compositions with or without words;
cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works
of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are
assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans,
sketches and three-dimensional works relative to geography, topography, architecture or science.

or if the author reveals his or her identity during that period; in the latter case, the general rule
applies. In the case of audiovisual (cinematographic) works, the minimum term of protection is
60 years after the making available of the work to the public ("release") or failing such an event
from the making of the work. In the case of works of applied art and photographic works, the
minimum term is 25 years from the creation of the work.
(3) The Berne Convention allows certain limitations and omissions 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 Articles 9(2)3, Article 104, Article 10bis5 and
Article 11bis (3)6.
(4) The Appendix to the Paris Act of the Convention also permits developing countries to
implement non-voluntary licenses for translation and reproduction of works in certain cases, in
connection with educational activities. In these cases, the defined use is allowed without the
authorization of the right holder, subject to the payment of remuneration to be fixed by the law.
The Berne Union has an Assembly and an Executive Committee. Every country that is a member
of the Union and has adhered to at least the managerial and final provisions of the Stockholm
Act is a member of the Assembly. The members of the Executive Committee are elected from
among the members of the Union, except for Switzerland, which is a member ex officio.
The Berne Convention, concluded in 1886, was reviewed at Paris in 1896 and at Berlin in 1908,
completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at Stockholm in 1967
and at Paris in 1971 and was amended in 1979.
3 reproduction in certain special cases

4 quotations and use of works by way of drawing for teaching purposes
5 reproduction of newspaper or similar articles and use of works for the purpose of reporting current events
6 ephemeral recordings for broadcasting purposes

Rome Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations (1961):
The Rome Convention secures protection in performances for performers, in phonograms for
manufacturers of phonograms and in broadcasts for broadcasting organizations.
(1) Performers (actors, singers, musicians, dancers and those who perform literary or
artistic works) are protected against certain acts to which they have not consented,
such as the broadcasting and communication to the public of a live presentation;
the fixation of the live performance; the reproduction of the fixation if the original
fixation was made without the performer's consent or if the reproduction was
made for purposes different from those for which consent was given.
(2) Producers of phonograms have the right to authorize or proscribe the direct or
indirect reproduction of their phonograms. In the Rome Convention,
“phonograms” means any exclusively aural fixation of sounds of a performance
or of other sounds. Where a phonogram published for commercial drives gives
rise to secondary uses, a single equitable remuneration must be paid by the user to
the performers, to the producers of the phonograms, or to both. Constricting
States are free, however, not to apply this rule or to limit its application.
(3) Broadcasting organizations have the right to authorize or prohibit certain acts,
namely the rebroadcasting of their broadcasts; the fixation of their broadcasts; the
reproduction of such fixations; the communication to the public of their television
broadcasts if such communication is made in places obtainable to the public
against payment of an entrance fee.
The Rome Convention allows for limitations and exceptions to the above-mentioned
rights in national laws as regards private use, use of short excerpts in connection with
reporting current events, ephemeral fixation by a distribution organization by means of its

own facilities and for its own broadcasts, use solely for the purpose of teaching or scientific
research and in any other cases where national law provides exceptions to copyright in
literary and artistic works. Additionally, once a performer has assented to the combination of
a performance in a visual or audiovisual fixation, the provisions on performers' rights have
no further application.
Duration:
As to duration, protection must last at least until the end of a 20-year period computed from
the end of the year in which (a) the fixation was made, for phonograms and for performances
combined therein; (b) the performance took place, for performances not incorporated in
phonograms; (c) the broadcast took place. However, national laws increasingly provide for a 50-
year term of protection, at least for phonograms and performances.
WIPO is responsible, jointly with the International Employment Organization (ILO) and the
United Nations Educational, Scientific and Cultural Organization (UNESCO), for the
administration of the Rome Convention. These three organizations constitute the Secretariat of
the Intergovernmental Committee set up under the Convention consisting of the representatives
of 12 Contracting States. The Convention does not provide for the institution of a Union or
budget. It establishes a Foreign Committee composed of Contracting States that considers
questions concerning the Convention.
This Convention is open to States party to the Berne Convention for the Protection of Literary
and Artistic Works (1886) or to the Universal Copyright Convention. Instruments of approval or
accession must be deposited with the Secretary-General of the United Nations. States may make
reservations with regard to the application of certain provisions.
Software copyright
The Intellectual Property Rights (IPR) of computer software is covered under the Copyright
Law in India. Accordingly, the copyright of computer software is secure under the provisions of
Indian Copyright Act 1957. Computer program are literary works under the definition in the

Copyright Act. Copyright for computer programs excludes copying of program structure and
design. The graphics sounds, and appearance of a computer program also may be protected as an
audiovisual work; as a result, a program can infringe even if no code was copied.
As a copyright came into being when the original lines of source code were written by the
computer operator, so another copyright comes into being for each addition or modification to
the source code that shows sufficient innovation. Because of this, a computer program generally
is protected not by a single copyright but by a series of copyrights starting when it is first written
and continuing through the last modification.
End-User Licensing Agreements (EULA)

A software license agreement is a contract between the licensor and buyer of the right to use
software. Many form agreements are only contained in digital form and only presented to a user
as a click-through where the user must "accept". As the user may not see the agreement until
after he or she has already bought the software, these documents may be contracts of adhesion.
These documents often call themselves end-user licensing agreements (EULA).
Protection of Copyright Software

Generally, copyright laws protect the form of expression of an idea, but not the idea itself.
With respect to software, this usually means that the computer program, in both human-readable
i.e. Source Code and machine-executable form i.e. Object Code and the related manuals are
eligible for copyright protection, but the methods and algorithms within a program are not
protected expression. Source code and object code are protected against exact copying.
Copyright exists in all original published or unpublished literary works; 'literary work'
includes computer programs, tables and compilations including computer records in any tangible
form. Therefore, work has to be verified into program on some tangible medium to get copyright
protection. Copyright protection, is automatic from the moment the work is embodied in some
medium like ROM, Magnetic Tape, diskette

Requirements for Registration of Copyright Software
Computer Programs without Trade Secrets
1. For published or unpublished computer programs, send one copy of classifying portions of
the program (first 25 and last 25 pages of source code) reproduced in a form visually perceptible
without the aid of a machine or device, either on paper or in microform, together with the page or
equivalent unit containing the copyright notice.
2. For a program less than 50 pages in length, send a visually observable copy of the entire
source code.
3. Where an applicant is unable or unwilling to deposit source code, he/she must state in
writing that the work as deposited in object code contains copyrightable authorship. The Office
will then register the work under its rule of doubt since it has not determined the reality of
copyrightable authorship.
4. When a computer program is embodied in a CD-ROM, ordinarily the entire CD-ROM
package must be mailed to the Copyright Office, including a complete copy of any
accompanying operating software and instructional manual. If registration is sought for the
computer program, the credit should also include a printout of the first 25 and last 25 pages of
source code for the program.
Copyright Infringement
Infringement of Copy right and Legal Remedies for the Computer software
 Section 51 defines infringement of copyright and states that a person oversteps copyright
of another if he unauthorized commits any act which only the copyright folder has
exclusive rights to do. Civil remedies to copyright infringement s are provided in chapter
XII of Copyright Act, 1957 granting injunction and damages for copyright infringement
and criminal liability provisions are provided in chapter XII of Copyright Act, 1957
wherein abetment of breach is also unlawful and punishable with imprisonment of upto
three years and a fine up to Rs. 2 Lacs.
 A person who knowingly uses the infringing copies of Computer software commits a
criminal offence punishable with imprisonment for not less than seven days extendable

up to three years and a well not less than Rs. 50,000/- which may extend to Rs. 2 Lacs.
 Section 62 of the Copyright Act, 1957 entitles a Plaintiff to file for a suit for injunction
against infringements within District Court of the jurisdiction where Plaintiff resides or
carries on business or works for gain. In fact, of late Indian Courts have accepted
petitions against unknown.
 Defendants or persons recognizable through their IP Addresses in internet law related

litigation. Popularly known as John Doe order in the US Courts, India had adopted the
principal of accepting petitions against unknown persons in defamation cases or
Intellectual property infringements including cases relating to software piracy. This is a
positive legal enforcement strategy adopted by Indian Courts to resolve internet related
trial where defendants cannot be identified at stage of filing of the position.
Infringement of Copyrighted Software

Infringement of copyrighted software is called Software piracy. Software piracy is the
reproduction, distribution or use of a software product without the expressed permission of its
author. Software piracy is theft - stealing someone else's original idea and product. It comes in
the next common forms:
 End user piracy: End users (both home and corporate users) who are utilizing
unlicensed software on their systems, or who have installed more copies than
they are entitled to under their license agreements, e.g. a company with only
one license connecting the software on five PCs. This form of end user piracy
is called under-licensing and is of grave concern to the Business Software
Alliance (BSA).
 Hard disk loading: Computer dealers pre-installing illegal copies of software

onto PCs prior to sale. Some dealers use one legally acquired copy but install
it on many machines. These PCs are usually sold without any form of
licensing documentation or disks.

 Software counterfeiting: The illegal duplication and sale of software in a
form that is almost identical to the genuine product.
 Internet piracy: The latest and fastest growing form of software piracy.
Software programs are placed by third parties on the Internet for downloads
free of charge or for a fee. Adventurers tend also to use the Internet as a
means of advertising to solicit sales.

CHAPTER 4: INDUSTRIAL
DESIGN
 An Industrial Design Right is an Intellectual Property right that protects the graphic design
of objects that are not purely utilitarian. Its aesthetic features should not be imposed by the
technical functions of the product. An industrial design consists of the creation of a shape,
conformation or composition of pattern or color, or combination of pattern and color in
three dimensional forms containing aesthetic value. An industrial design can be a two or
three-dimensional pattern used to produce a product, industrial commodity or handicraft.
Novelty, originality and visual appeal are essential if an industrial design right is to be
granted, although these criteria can differ from one country to another.
 An industrial design renders an object attractive or appealing, thus increasing its

marketability and adding to its commercial value. Consumers often take the visual appeal
of a product into reflection when choosing between different products. This is especially
true when the market offers a large variety of products with the exact same function. As the
visual appeal of a product can determine the consumer’s choice an industrial design adds
commercial value to a product.
 Industrial design rights are granted to the creator of designs to reward them for their effort
and investment in manufacturing the product. These rights enable the owner to make
articles to which the design is applied or in which the design is alive. The holder of this
legal title has the exclusive right to make, import or sell any objects to which the design is
applied. They can authorize others to adventure the design and bring a legal action against
anyone using the design without authorization.
 Designs are used in different products and across the various industries like medical,

watches, handicrafts, jewelry, fashion, instruments, furniture, toys, luxury items, textile
designs, sports equipment, electrical appliances etc.
Exclusions from scope of design:

Designs that are primarily literary or artistic in character are not protected in India. These include
• Books, jackets, calendars, certificates, forms-and other documents, dressmaking patterns,
greeting cards, leaflets, maps and plan cards, postcards, stamps, medals.
• Labels, tokens, cards, cartoons.
• Any principle or mode of construction of an article.
• Mere mechanical contrivance.
• Buildings and structures.
• Parts of articles not manufactured and sold separately.
• Variations commonly used in the trade.
• Mere workshop alterations of components of an assembly.
• Mere change in size of article.
• Flags, emblems or signs of any country.
• Layout designs of integrated circuits.
Benefits of Industrial Design:
There are several ways to map the benefits of design. For businesses, the most useful is the “Four
Powers of Design” which outlines the following:
1. Design as differentiator: Design as a source of competitive advantage on the market
through brand equity, customer loyalty and price premium or customer orientation.
2. Design as integrator: Design as a resource that improves new product development
processes (time to market, building consensus in teams using visualization skills); design as a
process that favors modular and platform architecture of product lines, user-oriented innovation
models and fuzzy, front-end project management.
3. Design as transformer: Design as a resource for generating new business opportunities;

for improving the company’s ability to cope with change; or (in the case of advanced design) as
an expertise to better interprets the company and the marketplace.
4. Design as good business: Design as a source of increased sales and better margins, more
brand value, greater market share, better return on investment (ROI); design as a resource for
society at large (such as inclusive design and sustainable design).
The first two in particular are used for gaining a competitive advantage. In the first case the
outside, market based advantage is derived from the design driven differentiation of the
company’s product or service. The second set is more internal and enables a company to gain a
competitive advantage from a unique and difficult-to-imitate combination of organizational
processes and resources driven by design thinking.
Relation of Business designs and Business development:
 Industrial designs make a product attractive and appealing to customers. Design drives
consumer’s choice: the appearance of a product can be a key factor in the consumer’s
purchase decision. The success or failure of a product may rest, at least partly, on how it
looks. Industrial designs can therefore be very important for both small- and medium
sized enterprises (SMEs) and larger companies alike, regardless of their sector of activity.
For business owners, an industrial design registering may be a valuable business asset.
The success of a product is usually influenced by its appearance; in an aesthetic-driven
consumer base, the looks of a fashionable product looks can often be equally or more
important than its functionality. Obtaining exclusive rights to a product with a particular
company may result in a substantial return on the investment because it will allow you to
prevent others from reproducing a popular design.
 An industrial design registration gives you exclusive rights to the commercial production,
marketing and sale of your product for ten years. It also prevents your competitors from
importing a product those copies or very closely resembles your design into that
particular territory. If you’re industrial design is infringed upon, you may bring your case

to court and be awarded costs for the lost sales you have incurred as a result of the
infringement of your design registration. This allows you to focus on establishing
products on the basis of superior industrial design without worrying about knock-offs
from competitors who can produce items cheaper or who can scale their manufacturing
quicker.
 An industrial design recording can also be sold or licensed to others.
 Further, your industrial design registration can help you establish goodwill in the
trademark sense in particular shape and appearance of the article, which is referred to as
its get-up in trademark law. Having sufficient reputation in the get-up of a product
becomes a separate ground for excluding others from copying your design.
 The period of exclusivity provided by an industrial design recording allows your
reputation in the design to build and then potentially provide those protectable trademark
rights that can extend indefinitely as long as sufficient reputation in the get-up is
maintained.
Industrial design right and patent right:
Scope of Protection
A patent protects the technical features of an invention, i.e. the functionality or how it works. A
registered design, on the other hand, protects the aesthetic appearance of an article. For egg, the
South African Designs Act makes provision for two types of designs, namely visual designs and
functional designs. An artistic design can protect any design applied to any article, whether for
the pattern, the ornamentation, the shape and/or the configuration thereof, having features which
appeal to and are judged solely by the eye. A functional design, on the other hand, can protect
any design applied to any article, whether for the design, the shape and/or the configuration
thereof, having features which are necessitated by the function which the article to which the
design is applied is to perform. With registered design protection, the measure of novelty in an
article’s arrival, will determine its ambit of monopoly. As a result, the protection afforded by a
registered design is usually narrower in possibility than that obtained by way of a patent. The

term of a patent in South Africa is 20 years and the term for an aesthetic design is 15 years, and
for a functional design, 10 years.
Validity Requirements
 For an invention to be patentable, the invention must have a technical feature which is
both new and comprises an inventive step. In order to be new, the invention should not
have been disclosed publically anywhere in the world (by the inventor or anyone else)
prior to the filing of a patent application therefor. In addition, if an invention was used
secretly and on a commercial scale prior to filing a patent application, then the invention
will no longer be considered new. It is then important that an invention should be kept
secret, and not be utilized on a commercial scale, before a patent application has been
filed covering the invention. An invention is considered to comprise an inventive step if it
would not have been obvious to a person skilled in the art, having regard to any matter
which, directly before the priority date of the patent application (e.g. the filing date of the
patent application), formed part of the state of the art.
 For registered design protection, the article should have a unique appearance. More
specifically, an aesthetic design must be new and original, while a practical design must
be new and not commonplace in the art in question. There is no inventiveness
requirement for a registered design. Hence, although the scope of protection obtained by
way of a registered design may be somewhat slimmer than that obtained by way of a
patent, the protection afforded by way of a design registration may well be stronger in
some cases, i.e. it may be less vulnerable to attack.
Costs
It is less expensive to file a design application than a patent application, since, unlike a patent
application, a design application is usually not attended by a detailed technical description of the
working of the article (i.e. patent attorneys usually spend less time preparing a design application
than a patent application).
Protection in other countries

When applying for patent protection in greatest other countries, such as the USA and Australia,
the applications are subjected to substantive examination, which leads to additional costs. More
specifically, patent office examiners in examining countries conduct searches to ascertain what
relevant prior art there is and they then compare the pending patent with the prior art. If the
specific examiner is of the opinion that any claim is too broad in light of the prior art, he objects.
An examiner may also reject a claim if he is of the opinion that the invention described therein is
obvious in light of the cited prior art. If the examiner rejects any of the titles, the applicant may
amend or delete those claims that have been rejected and/or he/she must submit arguments to the
examiner in an attempt to persuade him that his objections are not founded or have been
overcome, after examining the application,. If and once an applicant is able to satisfy the
examiner that all the claims are acceptable and all the examiner's objections have been responded
to, then the application will be allowed. In light of the above, there are three important aspects to
bear in mind:
(1) Further prosecution costs will probably be incurred in order to respond to any objections the
examiner may raise against the application;
(2) It may take some years to obtain a granted patent in a particular country; and
(3) Due to the examination procedure, the filing of a patent application in an examining country
is no guarantee that a patent will in fact be granted in that country.
Registered design applications, on the other hand, are usually not subjected to the same grade of
examination (usually only formal examination takes place), which means that the prosecution is
generally much quicker and less expensive, and the likelihood of obtaining design protection is
higher.

CHAPTER 5: PLANT
VARIETY
India has ratified the TRIPS agreement and to give effect

to this agreement, The Protection of Plant Varieties and
Farmers Rights Act, 2001 (PPV&FRA) was enacted. The main aim of this Act is to establish an
effective system for the protection of plant varieties and, the rights of the breeders and to
encourage the development of new varieties of plants.
Any variety that fulfills the DUS (distinctness, uniformity and stability) criteria and that
is "new" (in the market) is eligible for this kind of protection, and there is no need to demonstrate
an inventive step or industrial application, as required under a patent regime.
A DUS examination involves growing the candidate variety together with the most
similar varieties of collective knowledge, usually for at least two seasons, and recording a
comprehensive set of morphological (and in some cases agronomic) descriptors.
Plant varieties present in wilderness cannot be registered, under PPV&FR Authority. However,
any traditionally cultivated plant variety which has undergone the process of domestication/
improvement through human interventions can be registered and protected subjected to
fulfillment of the eligible criteria.
 CRITERIA FOR REGISTRATION OF A VARIETY:
 Novel: if at the date of filing an application for registration for protection, the
propagating or harvested material of such variety has not been sold or otherwise disposed
of in India earlier than one year or outside India, in the case of trees or vines earlier than
six years, or in any other case earlier than four years, before the date of filing such
application.
 Distinct: A variety is said to be different if it is clearly distinguishable by at least one

essential characteristic from any other variety whose existence is a matter of common

knowledge in any country at the time of filing an application.
 Uniform: A variety is said to be uniform, if subject to the variation that may be expected
from the particular features of its propagation it is sufficiently uniformed its essential
characteristics.
 Stable: A variety is said to be stable if its essential characteristics remain unchanged after
repeated propagation or, in the case of a particular cycle of propagation, at the end of
each such cycle.
 TYPES OF VARIETIES
 New Variety: A new variety can be registered under the Act if it conforms to the criteria
for novelty, distinctiveness, regularity and stability.
 Extant variety: An extant variety can be registered under the Act if it conforms to the
criteria for distinctiveness, uniformity and stability. Thus novelty is not careful while
going for the protection of plant varieties. The extant variety is defined as any variety
"which is in public domain or about which there is a common knowledge.
 Farmers' Variety: Under section 2(l)7 farmers variety means a variety "which has been
traditionally cultivated and evolved by the farmers in their fields".
 PERSONS WHO CAN APPLY FOR THE REGISTRATION OF PLANT VARIETY

Application for registration of a variety can be made by:
 person claiming to be the breeder of the diversity;
 successor of the breeder of the variety;
 person being the assignee or the breeder of the variety in respect of the right to make such
application;
7 https://indiankanoon.org/doc/1739034/

 farmer or group of farmers or community of farmers claiming to be breeder of the
variety;
 person authorized to make application on behalf of ranchers; and
 university or publicly funded agricultural institution claiming to be breeder of the variety.
 Filing Requirements For The Registration Of A Plant Variety

 Name, address and nationality of applicants as well as the address of service of their
agent.
 Denomination assigned to such variety.
 Accompanied by an affidavit that variety does not contain any gene or gene sequences
involving terminator technology.
 Complete passport data of maternal lines with its geographical location in India and all
such information relating to the contribution if any, of any farmer(s), village, community,
institution or organization etc. in breeding, evolving or developing the variety.
 Characteristics of variety with description for Novelty, Distinctiveness, Uniformity and
Stability.
 A declaration that the genetic material used for education of such variety has been
lawfully acquired.
 CERTIFICATE OF REGISTRATION
The maximum time taken for issuing certificate of registration is three years from the
date of filing of the application for registration of a plant variety.
 DURATION OF REGISTRATION
 For trees and vines (Perennials) - 18 years from the date of registration of the variety.
 For other crops (Annuals) – 15 years from the date of registration of the variety.
 For extant varieties – 15 years from the date of notification of that variety by the Central
Government under section 5 of the Seeds Act, 19668.

 EXEMPTIONS PROVIDED BY THE ACT
 Farmers' Exemption: Farmer shall be entitled to produce, save, use, sow, resew,
exchange, share or sell his farm produce including seed of a variety protected under this
Act.
 Researcher's Exemption:
(i) the use of registered variety for conducting experiment.
(ii) The use of variety as an initial source of variety for the resolve of creating other
varieties.
 INFRINGEMENT
Following acts may be a case of infringement under the PPV& FR Act:
 If a person who is not a breeder of a variety registered under this act or a recorded agent
or a registered licensee of that variety, sells, exports, imports or produces such variety
without the permission of its breeder or within the scope of a registered license or
registered agency without their permission of the registered license or registered agent.
 If a person uses, sells, exports, imports or products any other variety giving such variety,
the denomination identical with or deceptively similar to the denomination of a variety
already registered under this act in such a way that it causes confusion in the mind of
general people in identifying the registered variety.
 VARIETIES OPEN FOR REGISTRATION A THE MOMENT:

 Black Gram
 Bread Wheat
 Cotton(Tetraploid)
 Cotton(Diploid)
 Chickpea
 Field pea/Garden pea
 Green Gram
 Jute

 Kidney bean/French bean
 Lentil
 Maize
 Pearl millet
 Pigeon pea
 Rice
 Sorghum
 Small Cardamom
 Sugarcane
 Turmeric
 Ginger
 Black Pepper
 Indian Mustard and Karan Rai
 Rapeseed
 Sunflower
 Safflower
 Castor
 Sesame
 Linseed
 Groundnut
 Soybean
 Chrysanthemum
The Protection of Plant Selections and Farmers’ Rights Act 2001 was enacted in India to
protect the new plant varieties. Rules for the same were notified in 2003. The Act has now come
into force. The Protection of Plant Varieties and Farmers’ Rights Authority has been set up and
is responsible to administer the Act. The office of the Registrar has started receiving applications
for registration of twelve advised crops viz. rice, lentil, maize, green gram, kidney bean, black
gram, chickpea, pearl millet, pigeon pea, sorghum, field pea, bread wheat.
Under the TRIPS contract it is obligatory on part of a Member to provide protection to new plant

variety either through patent or an effective sui generis system or a combination of these two
systems. India was therefore under an obligation to introduce a system for protecting new plant
variety; India opted for sui generis system and enacted The Protection of Plant Varieties and
Farmers’ Rights Act 2001, however, in many countries such florae can be protected through
Breeders’ Rights, patents and International Union for the Protection of New Varieties of
Plants (UPOV) Convention.
Objectives
The objectives of the Protection of Plant Varieties and Farmers’ Rights Act are:
(I) to stimulate investments for research and growth both in the public and the private sectors for
the developments of new plant varieties by ensuring appropriate returns on such investments;
(ii) To facilitate the growth of the seed industry in the country through domestic and foreign
investment which will ensure the availability of high quality seeds and planting material to
Indian farmers; and
(iii) To recognize the role of farmers as cultivators and conservers and the contribution of
outdated, rural and tribal communities to the country’s agro biodiversity by rewarding them for
their contribution through benefit sharing and protecting the traditional right of the farmers.
This act provides protections to farmers by giving them farmers’ rights while providing
for an effective system of protection of plant breeders’ rights. The Act seeks to safeguard
researchers’ rights as well. It also contains provisions for safeguarding the larger public interest.
The farmer’s rights include traditional rights to save, use, share or sell his farm produce of a
variation protected under this Act provided the sale is not for the purpose of reproduction under a
commercial marketing arrangement.
How novelty, distinctiveness, uniformity & stability have been defined in the
Protection of Plant Varieties and Farmers’ Rights Act?
A) Novelty – Plant variety is novel if at the date of filing of the application for registration for
protection, the propagating or harvested material of such variety has not been sold or otherwise
disposed of by or with the consent of breeder or his successor for the determination of

exploitation of such variety-
(I) in India earlier than one year or
(ii) outside India , in the case of trees or vines earlier than six years or in any other case, earlier
than four years, before the date of filing such application:
 Provided that a trial of a new variety which has not been sold otherwise disposed of;
 Shall not affect the right to protection;
 Provided further that the fact that on the date of filing the application for registration;
 propagating or harvested material of such variety has become a matter of common; and
 Knowledge other than through the aforesaid manner shall not affect the criteria of novelty
for such variety.
B) Distinctiveness – New plant variety will be considered distinct if it is clearly unique by at

least one essential characteristic from any other variety whose existence is a matter of common
knowledge in any country at the time of filing of the application.
C) Consistency – New plant variety pass uniformity test, if subject to the variation that may be
expected from the particular features of its propagation, it is sufficiently uniform in its essential
characteristics.
D) Stability – New plant variety will be considered stable if its essential characteristics remain
unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the
end of each such cycle.
Compulsory Plant Variety denomination:
After satisfying the above four essential criteria every applicant shall assign a single and distinct
assessment to a variety with respect to which he is seeking registration.
Plant varieties that can’t be protected:

A plant variety which is:-
(i) Not capable of identifying such variety; or
(ii) Consists solely of figures; or
(iii)Liable to mislead or to cause confusion concerning the characteristics, value, identify of
such variety, or the identity of breeder of such variety;
(iv) Likely to deceive the public or reason confusion in the public regarding the identity of
such variety;
(v) Comprised of nay matter likely to hurt the religious sentiments correspondingly of any
class or section of the citizens of India;
(vi) Prohibited for use as a name or symbol for any of the purposes; and
(vii) Comprised of solely or partly of geographical name.
PBR OR PVR
Plant breeders' rights (PBR), also known as plant diversity rights (PVR) are rights granted to the
breeder of a new variety of plant that give the breeder exclusive control over the broadcasting
material (including seed, cuttings, divisions, tissue culture) and harvested material (cut flowers,
fruit, foliage) of a new variety for a number of years.
With these rights, the breeder can choose to become the select marketer of the variety, or to
license the variety to others. In order to qualify for these excellent rights, a variety must be new,
distinct, uniform and stable. A variety is:
 new if it has not been commercialized for further than one year in the country of
protection;
 individual if it differs from all other known varieties by one or more important
botanical characteristics, such as height, maturity, color, etc.;
 uniform if the plant features are consistent from plant to plant within the variety; and
 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.

Licensing
In addition to being in the market place yourself and making and selling the new variety
protected by your PBR, another way that you can realize economic benefits from your PBR is by
authorizing other people to use your PBR. This is called 'licensing'. When you license your PBR,
you give another person the right to use your PBR. You might, for example, grant a license to
another person whose business is located elsewhere (i.e. not a local competitor) in Australia or
even grant a license to a person in another country. In that way your PBR is working even harder
for you. You can receive profits from making and selling your new variety, and also receive a
royalty from licensees making and selling your new variety.

CHAPTER 6: TRADE SECRETS
A trade secret is defined as any valuable business information that is not generally known
and is topic to reasonable efforts to preserve confidentiality. Generally, a trade secret will be
protected from exploitation by those who either obtain access through improper means, those
who obtain the information from one who they know or should have known gained access
through indecorous means, or those who breach a promise to keep the information confidential.
While virtually every business has at least some trade secrets, they are quite fragile because they
protect information and resources that are secret, which necessarily means that protection is lost
if and when the secret becomes openly known. For that reason, when other forms of intellectual
property protection are available, such as copyright or patent protection, one should carefully
consider the wisdom of relying only on trade secret protection. Any confidential business
information which provides an enterprise a competitive advantage may be considered a trade
secret. Trade secrets encompass manufacturing or industrial secrets and commercial secrets. The
unauthorized use of such information by persons other than the holder is regarded as an unfair
practice and a violation of the trade secret. Depending on the legal system, the protection of trade
secrets forms part of the general concept of safety against unfair competition or is based on
specific provisions or case law on the protection of confidential information.
The trade secret is usually defined in broad terms and includes sales methods, distribution
methods, consumer profiles, and advertising strategies, lists of suppliers and clients, and
manufacturing processes. While a final determination of what information constitutes a trade
secret will depend on the conditions of each individual case, clearly unfair practices in respect of
secret information include industrial or commercial espionage, breach of contract and breach of
confidence.
 Contrary to patents, trade secrets are protected without registration, that is, trade
secrets are protected without any procedural formalities. Consequently, a trade secret
can be protected for an unlimited period of time. For these motives, the protection of
trade secrets may appear to be particularly attractive for SMEs. There are, however,

some conditions for the information to be considered a trade secret. Compliance with
such settings may turn out to be more difficult and costly than it would appear at first
glance. Some universal standards exist which are referred to in Art. 39 9 of the
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Contract):
 The information must be secret

 It must have profitable value because it is a secret.
 It must have been subject to reasonable steps by the rightful holder of the information
to keep it secret (e.g., through confidentiality agreements).
Cases in Which SME may profit from Trade Secret Protection
 When the secret is not patentable.

 When the probability is high that the information can be kept secret for a considerable
period of time. If the secret information consists of a patentable invention, trade secret
protection would only be convenient if the secret can be kept confidential for over 20
years (period of protection of a patent) and if others are not likely to come up with the
same invention in a sincere way.
 When the trade secret is not considered to be of such great value to be deemed worth a
patent (though a utility model may be a good alternative in countries where utility model
protection exists).
 When the secret relates to a manufacturing procedure rather than to a product, as products
would be more likely to be reverse engineered.
 When you have applied for a patent and are waiting for the patent to be granted.
How to protect trade secrets
A trade secret owner should employ as many precautions as reasonably possible such as:
9 https://www.wto.org/English/docs_e/legal_e/27-trips_04d_e.htm

 restricting access to confidential information physically and electronically to only those
individuals that need to know the information;
 marking documents that they constitute confidential information;
 making use of non-disclosure and confidentiality agreements;
 maintaining information with password protection;
 disposing confidential information by shredding or other means designed to destroy the
information;
 conducting exit interviews with departing employees to ensure the return of all
confidential information in the employee’s possession and to emphasize confidential
obligations;
 ensuring that there are restraint of trade provisions in the employment contracts;
 establishing due diligence and on-going third party management procedures;
 instituting and information protection team; and
 Make trade secret protection a priority.
NEGATIVE EQUITABLE RIGHTS
A breach of contract occurs when one party has not performed its promise in accordance with
the terms of the contract. The very purpose of filing a lawsuit for a breach of contract is to seek
the appropriate remedy for the same. As defined in Black’s law dictionary a remedy is “the
means by which a right is imposed or the defilement of a right is prevented, redressed or
compensated. The word “medicine” in a legal context has virtually the same meaning in a
medical context, namely, to cure. In a legal context, a remedy cures the violation of a legal right.
Common law provides two types of remedies i.e. legal remedy and equitable remedy.
The practice of granting equitable medicines came about to compensate for the inadequacies
of the common law courts which could not grant remedy if the affected party wanted the
performance of the contract or wanted to prevent the commission of a wrong threatened. The
principle that wherever there is a wrong there will be a remedy is the basis of granting equitable
remedies as opposed to legal remedies which provides damages or compensation. According to

Holds worth even though equitable remedies like definite performance has been unnamed and
unregistered it has been spotted from the early times, he brings out this aspect that has been
showcased in the Shakespearean play ‘Merchant of Venice’ where Shylock is denied specific
performance of his contract, the debate is still alive as to whether it was fair to him.
Holders of a covenant seek money damages, but holders of equitable servitudes seek
restrictions. In the United States, both negative and affirmative equitable servitudes are
recognized. It is a covenant that equity will enforce against the successors of the burdened land
who have notice of the covenant.

CHAPTER 7: GEOGRAPHICAL INDICATIONS
What is a geographical indication?

A geographical indication (GI) is a symbol used on products that have a specific physical origin
and retain qualities or a reputation that are due to that origin. In order to function as a GI, a sign
must identify a product as originating in a given place. In addition, the qualities, characteristics
or reputation of the product should be basically due to the place of origin. Since the qualities
depend on the geographical place of production, there is a clear link between the product and its
original place of production. Geographical indications are typically used for agricultural
products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.
Some of the GI in India are as follows:
Palakkadan Matta Rice Agricultural Kerala

Aranmula Kannadi Handicraft Kerala
Pochampally Ikat Handicraft Telangana
Karvath Kati Sarees & Fabrics Agricultural Maharashtra
Salem Fabric Handicraft Tamil Nadu
Chanderi Fabric Handicraft Madhya Pradesh
Solapuri Chaddar Handicraft Maharashtra
Solapur Terry Towel Handicraft Maharashtra
Kotpad Handloom fabrics Handicraft Odisha
Mysore silk Handicraft Karnataka
INTERNATIONAL PROTECTION FOR GI UNDER TRIPS
At the international level, TRIPS sets out minimum standards of protection that WTO members
are bound to comply with in their respective national legislations. However, as per the scope of
protection of GI under TRIPS is concerned, there is a problem of grading. This is because,

although TRIPS contains a single, identical definition for all GI, irrespective of product
categories, it mandates a two-level system of protection: (i) the basic protection applicable to all
GI in general (under Article 22 10 ), and (ii) additional protection applicable only to the GI
denominating wines and moods (under Article 2311).
This kind of protection is challenging, if Article 22 fails to provide sufficient intellectual

property protection for the benefit of the genuine right-holders of a GI. A producer not belonging
to the geographical region indicated by a GI may use the proposition as long as the product’s true
origin is indicated on the label, thereby free-riding on its reputation and goodwill.
There are three main ways to protect a geographical indication:

 so-called sui generis systems (i.e. special regimes of protection);
 using collective or certification marks; and
 methods focusing on business practices, including administrative product approval
schemes.
These approaches involve differences with respect to important questions, such as the
situations for protection or the scope of protection. On the other hand, two of the modes of
protection namely sui generis systems and collective or certification mark systems share some
common features, such as the fact that they set up rights for cooperative use by those who
comply with defined standards.
10 http://www.cptech.org/ip/texts/trips/22.html
11 http://www.cptech.org/ip/texts/trips/23.html

12
Broadly geographical indications are protected in different countries and regional systems
through a wide variety of approaches and often using a combination of two or more of the
approaches outlined above. These approaches have been developed in accordance with different
legal traditions and within a framework of individual historical and economic conditions.
12 https://www.google.co.in/search?biw=1366&bih=662&tbm=isch&sa=1&ei=wKcCWqv5C8zOvgTXwo8I&q
=A+success+story+Darjeeling+tea+GI&oq=A+success+story+Darjeeling+tea+GI&gs_l=psy-
ab.3...0.0.0.11542.0.0.0.0.0.0.0.0..0.0....0...1..64.psy-ab..0.0.0....0.f5s4_bgYLbc#imgrc=_o3Wph3trEWYgM:

GI in India
STEP 1: Filing of application

 First check whether the indication comes within the ambit of the definition of a GI
under section 2(1) (e)13.
 The association of persons or producers or any organization or authority should
represent the interest of producers of the concerned goods and should file an affidavit
how the applicant claims to represent their interest.
 Application must be made in triplicate.
 The application shall be signed by the applicant or his agent and must be attended by
a statement of case.
 Details of the special characteristics and how those standards are maintained.

 Three certified copies of the map of the region to which the GI relates.
 Details of the examination structure if any to regulate the use of the GI in the territory
to which it relates.
 Give details of the entire applicant together with address. If there is a large number of
producers a collective reference to all the producers of the goods may be made in the
application and the G.I., if registered will be indicated accordingly in the register.
 The applicant must have an address for service in India. Generally, application can be
filed by (1) a lawful practitioner (2) a registered agent.
STEP 2 and 3: Preliminary scrutiny and examination

 The Examiner will scrutinize the application for any deficiencies.
 The applicant should within one month of the communication in this respect, remedy
the same.
 The content of statement of case is assessed by a consultative group of experts will
versed on the subject.
 The will ascertain the correctness of particulars furnished.
 Thereafter an Examination Report would be issued.
STEP 4: Show cause notice

 If the Registrar has any opposition to the application, he will communicate such
objection.
 The applicant must respond within two months or apply for a hearing.
 The decision will be duly communicated. If the applicant wishes to appeal, he may
within one month make a request.
 The Registrar is also authorized to withdraw an application, if it is accepted in error,
after giving on opportunity of being heard.
STEP 5: Publication in the geographical indications Journal

 Every application, within three months of acceptance shall be published in the
Geographical Indications Journal.

STEP 6: Opposition to Registration
 Any person can file a notice of antagonism within three months (extendable by
another month on request which has to be filed before three months) opposing the GI
application published in the Journal.
 The registrar shall serve a copy of the notice on the applicant.
 Within two months the applicant shall sent a copy of the counter statement.
 If he does not do this be shall be deemed to have uncontrolled his application. Where
the counter-statement has been filed, the registrar shall serve a copy on the person
giving the notice of opposition.
 Thereafter, both sides will lead their respective signals by way of affidavit and
supporting documents.
 A date for hearing of the case will be fixed thereafter.
STEP 7: Registration
 Where an application for a GI has been accepted, the registrar shall register the
geographical indication. If registered the date of filing of the application shall be
estimated to be the date of registration.
 The registrar shall issue to the applicant a certificate with the seal of the Geographical
indications registry.
STEP 8: Renewal
 A registered GI shall be valid for 10 years and can be renewed on payment of renewal
fee.
STEP 9: Additional protection to notified goods

 Additional protection for notified goods is provided in the Act.
STEP 10: Appeal

 Any person aggrieved by an order or decision may prefer an appeal to the intellectual
property appellate board (IPAB) within three months.

What Indications are not registrable?
For registrability, the signals must fall within the scope of section 2(1)e of GI Act, 199914.
Being so, it has to also satisfy the provisions of section 9 15, which prohibits registration of a
Geographical Indication:
 the use of which would be likely to deceive or cause mistake; or

 the use of which would be contrary to any law for the time presence in force; or
 which comprises or contains disgraceful or obscene matter; or
 which comprises or contains any matter likely to hurt the time being in force;
religious susceptibilities of any class or section of the citizens of India; or
 which would otherwise be dismantled to protection in a court; or
 which are resolute to be generic names or indications of goods and are, therefore, not
or ceased to be protected in their country of origin or which have fallen into disuse in
that country; or
 which although literally true as to the territory region or locality in which the goods
originate, but falsely represent to the persons that the goods originate in another
territory, region or locality as the case may be.
Explanation 1 to section 9 says that for the purposes of this section, “generic names of
signals” in relation to goods which although relates to the place of the region where the goods
was originally produced or manufactured, has lost its original meaning and has become the
common name of such goods and serves as a designation for an indication of the kind, nature,
type of other property or representative of the goods.
Explanation 2 further says that “in determining whether the name has become generic,
account shall be taken of all factors including the existing situation in the region or place in
which the name originates and the area of feasting of the goods.”
14 http://lawmin.nic.in/ld/P-
ACT/1999/The%20Geographical%20indications%20of%20goods%20(Registration%20and%20Protection)%20Act,
%201999.pdf
15 http://lawmin.nic.in/ld/P-
ACT/1999/The%20Geographical%20indications%20of%20goods%20(Registration%20and%20Protection)%20Act,
%201999.pdf

Additional protection to certain goods
An application may be made to the registrar in respect of goods advised by the central
Government for additional protection for a registered geographical indication in Form GI-
916accompanied in triplicate along with a statement of case and shall be accompanied with the
copy of the notification issued.
The application shall be made jointly by the registered administrator of the Geographical
indications in India and by all the producers of the Geographical indication.
Affidavits
The Affidavits required by the Act and the rules to be filed at the Geographical indications
Registry or furnished to the Registrar, unless otherwise provided in the matter or matters to
which they relate, paragraphs repeatedly numbered, and each paragraph shall as far as
practicable be confined to one subject. Every affidavit shall state the description and the true
place of abode of the person filing it and shall state on whose behalf it is filed.
Affidavits shall be taken In India-before any court or person having by law authority to
receive evidence, or before any officer empowered by such court as aforesaid to administer oaths
or to take affidavit, in any country or place outside India before a diplomatic or consular Officers
(Oaths and Fee) Act, 194817, or such country or place, or before a notary public or before a judge
or official of the country or place.
Where the deponent is illiterate, blind or unacquainted with the language in which the
affidavit is written a certificate by the person taking the affidavit that the affidavit has read
translated or explained in his company to the deponent made his signature or mark in his
presence shall appear in the jurist.
Every affidavit filed before the Registrar in connection with any of the proceedings under the
Act or the rules shall be duly stamped under the law for the time being in force.
Falsification or False application of a GI
16 http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_98_1/Form-gi-09.pdf
17 https://www.mea.gov.in/Uploads/PublicationDocs/154_The-Diplomatic-Consular-Officers-Oaths-And-Fees-
Act-1948.pdf

Falsification with respect to a GI means ‘the act of making a GI or illusorily similar GI, or
changing a genuine GI by alteration, addition, effacement or otherwise, without the consent of
the authorized user of the GI’.
False application of GI means ‘application of a GI or deceptively similar GI to goods/
package comprising the goods or use of the package bearing an identical/deceptively similar GI
for the purpose of packing, filing or wrapping therein any goods other than the genuine goods of
the authorized user of the GI without the consent of authorized user.
Defenses
 Invalidity of GI: the accused may begged that the GI with respect to which he is
alleged to have committed an offence under the Act is invalid.
 Due consent: The accused can plead that the acts alleged to have been committed by
him were committed after obtaining consent of the proprietor. However the burden of
proving the consent shall lie on him.
 Absence of Menes Rea or intention to defraud: As guilty mind is an essential
ingredient of the offence, the accused can plead that he did not intend to defraud the
consumers. Unlike the other criminal cases, the accused has to establish his
innocence. The prosecution is not required to prove the guilt of the accused beyond
all reasonable doubts.
 Reasonable care and ignorance: The suspects can plead that he had taken all the
necessary precautions against committing the offence and had no reasons to suspect
that the GI was not genuine or that an offence has been committed in respect of the
goods.
 Disclosure of Information: The suspects can also plead that he cooperated with the
prosecutor by providing him all the information in his possession regarding the
person from whom he obtained the goods or things.
Course of employment: The accused can plead that he was in the ordinary course of
business, employed on behalf of other persons to apply GI, or as the case may be, to make dies,
blocks, machines, plates or other tools for making or being used in the making of the GI. Also

that he was not interested in the goods or other things by way of profit or commission depending
on the sale of such goods.
Quantum of Punishment: Falsification or false application of a GI is punishable with a
minimum imprisonment of six months, which may extend to three years and with a minimum
fine of fifty thousand that may extend to two lakh rupees.
Selling goods to which False Geographical Indication is applied: Under the second
category of offence of selling, letting for hire, exposing to sale or hiring and possession of goods
bearing the false GI is covered.
 Defenses available: The accused can raise the following statutory defenses:
 Invalidity of the GI: the suspects may plead that the GI with respect to which he is
alleged to have committed an offence under the Act is invalid.
 Reasonable care and ignorance: The accused can plead that he had taken all the
necessary precautions against committing the offence and had no reasons to suspect
that the GI was not open or that an offence has been committed in respect of the
goods.
 Disclosure of Information: The accused can also plead that he cooperated with the
prosecutor by providing him all the information in his possession regarding the
person from whom he obtained the goods or things
 Lack of Guilt: The suspects can plead that he had acted innocently
 Quantum of Punishment
 The offence under this class shall be punishable with a minimum imprisonment of 6
months that may be extended to 2 years and a minimum fine of fifty thousand rupees
that may be protracted to two lakh rupees.
 Enhanced Penalty: Every second and subsequent act that falls in the above mentioned
classes of offences shall be punished with a minimum imprisonment of 1 year that
may extend to 3 years and a minimum fine of 1lakh that may range to 2 lakh rupees.
 False representation with respect to the GI
 Following representation with respect to GIs constitute offences under the Act

 Misrepresentation as to Registration: representing an unregistered GI as a registered
GI
 Misrepresentation as to the goods specification: representative that a GI is registered
in respect of any goods in respect of which it is not registered.
 Misrepresentation as to the exclusive use: representing that registration of the GI
gives the exclusive right of use, which the registration actually does not confer.
WHAT ARE THE ADVANTAGES OF PROTECTION UNDER THE LISBON SYSTEM?
Geographical indications are protected in accordance with international treaties and

national laws under a wide range of concepts, including sui generis laws for the protection of
geographical indications or appellations of origin, trademark laws in the form of collective marks
or certification marks, laws against unfair competition, consumer protection laws, or specific
laws or decrees that recognize individual geographical indications. Securing fortification for such
indications in other countries has, however, been complicated due to differences in legal
concepts existing from country to country in this respect. As its name indicates, The Lisbon
Agreement for the Protection of Appellations of Origin and Their International
Registration (hereinafter referred to as ‘the Lisbon Agreement’) was specifically concluded in
response to the need for an international system that would facilitate the protection of a special
category of such geographical indications, i.e. “appellations of origin”, in countries other than
the country of origin, by means of their registration with WIPO through a single procedure, for a
minimum of formalities and expense. The Lisbon Agreement helps protect national economic
interests: in many countries, goods bearing an appellation of origin represent a substantial share
of exports, and it is therefore important that the appellations should be effectively protected
against any appropriation in the largest possible number of countries.
Geneva Act
 In the plenary session of 20 May, the Geneva Act of the Lisbon Agreement on
Appellations of Origin and Geographical Indications was adopted by the
Diplomatic Conference convened at the World Intellectual Property Organization

(WIPO). The reform of the Lisbon Agreement on the Protection of Appellations
of Source and their International Registration was launched by the WIPO in 2009.
 The Geneva Act allows the international registration of geographical indications
(GIs), in addition to appellations of origin, and permits the accession to the
Lisbon Agreement by certain intergovernmental organizations.
 The Geneva Act of the Lisbon Agreement further develops the legal outline of the
Lisbon System, which helps promote many globally marketed products such as,
for example, Scotch whisky, Darjeeling tea and Café de Colombia.
 Other changes affect fee provisions, scope of protection, protection against
becoming generic, and safeguards for respect of prior trademark rights.

CHAPTER 8: SEMICONDUCTOR INTEGRATED
CIRCUITS LAYOUT DESIGNS
 A layout-design of a unified circuit refers essentially to the three-dimensional character

of the elements and interconnections of an integrated circuit.
 An integrated circuit (IC) is an electronic circuit in which the elements of the circuit are
integrated into a medium, and which functions as a unit. Currently the medium used to
generate this unit is a solid semiconductor such as silicon. The circuit is integrated into
the piece of silicon, commonly called a "chip" or a "silicon chip". The terms "integrated
circuit", "semiconductor" and "silicon chip" are used synonymously as commercial ICs
are usually fabricated from silicon semiconductors.
 In modern technology, integrated circuits are essential elements for a wide range of
electrical products, including articles of everyday use, such as watches, television sets,
washing machines, and cars, as well as cultured computers, smart phones, and other
digital devices. Developing innovative layout designs of integrated circuits is essential for
the production of ever-smaller digital devices with more functions.
 While the creation of a new layout-design is usually the result of an enormous
investment, both in financial terms and in terms of the time required from highly
qualified experts, the copying of such a layout-design may cost only a portion of the
original investment. In order to prevent unauthorized copying of layout designs and to
provide incentives for investing in this field, the layout design (topography) of integrated
circuits is protected under a sui generis intellectual property system.
Protection Eligibility
A layout design of an integrated circuit can be endangered if it is original in the sense that it is
the result of the creators’ own intellectual effort and not commonplace among creators of layout-
designs and manufacturers of integrated circuits at the time of the creation. In general, protection
of the topography requires that an integrated circuit be registered or commercially exploited.

What kind of protection does a creator of layout-designs of integrated circuits enjoy?
In general, a right holder has the exclusive right to prevent or stop others from commercially
using the protected layout designs. In other words, the original layout design cannot be replicated
entirely or partly for commercial purposes by others, without the authorization of the holder of
the right. Further, without the authorization of the right holder, a protected layout-design, an
integrated circuit incorporating the layout design, or an article incorporating such a layout design
cannot be imported, sold or otherwise distributed, for commercial purposes.
How long does protection for layout designs of unified circuits last?
The term of protection varies from one country to another. According to the Agreement on
Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement), members must
provide for a minimum protection of at least ten years from the filing of the application for
registration or from the first commercial exploitation of integrated circuits.
Conditions for the protection of layout-designs of integrated circuits
How to protect layout designs of integrated circuits?

In some countries, topographies of integrated circuits have to be registered in order to
obtain protection. In general, such registrations take place without extensive investigation.
However in some countries, an application for registration must be filed within two years and
protection commences with the first commercial exploitation. In other countries, the protection
starts automatically with the first commercial exploitation, distinctly, or as incorporated in an
integrated circuit.
In general, an application for registration has to contain information on the owner, a title
and a drawing of the topography and a detailed description or deposit of the topography of the
integrated circuit. In some countries, where the integrated circuit has been commercially
exploited, suggestion of a sample of that integrated circuit, along with information defining the
electronic function performed by the integrated circuit, may be also required. Registration is
usually subject to the payment of a fee.

Who owns the exclusive right to a layout design of integrated circuits?
The beneficiary of the protection is, typically, the originator of a layout design. However,
if the design is created during the course of an employment contract, most national laws provide
for an implied transfer of rights to the employer. Since layout designs of united circuits are
protected by sui generis intellectual property rights, they could be assigned or licensed to others.
What is the extent of the exclusive rights conferred?

The extent of the exclusive rights varies from one country to another. In general, a right
holder has the exclusive right to avoid or stop others from commercially using the protected
layout design. In other words, the original topography cannot be reproduced entirely or partly for
commercial purposes by others, without the authorization of the holder of the right. Further,
without the authorization of the right holder, a protected layout design, an incorporated circuit, or
an article which incorporates an unlawfully simulated layout-design cannot be imported, sold or
otherwise distributed, for commercial purposes by others without the authorization of the holder
of the right.
However, the performance of an act by a third party for private use or for the single
purpose of evaluation, analysis, research or teaching is not considered to require the
authorization of the right holder. Therefore, “reverse engineering” of an integrated circuit for
such purposes is not restricted.
In total, layout designs of integrated circuits are protected against copying of the
geographies and against the distribution of products which integrate copied topographies, but the
right holder cannot prevent others from developing other original topographies which have the
same functions as those of protected topographies.
Who is responsible for the enforcement of the rights?

The right holder may enforce his or her rights against an infringer through civil action.
Remedies can include injunctions, damages and seizure of goods. In most countries,
topographies of integrated circuits are registered without substantive examination. Therefore,

lack of originality may be raised as a protection in infringement proceedings. In some countries
criminal sanctions against an infringement are also available.
Legal framework of protection

International legal framework for the protection of layout designs of integrated circuits
The Washington Treaty on Intellectual Property in Respect of Integrated Circuits (IPIC)
was assumed by WIPO member states in 1989. Although the Washington Treaty has not entered
into force, its substantive provisions have been incorporated by reference in the Trade Related
Aspects of Intellectual Property Rights (TRIPS) Agreement to a large extent. These provisions
deal, among other things, with the definitions of “integrated circuit” and “layout-design
(topography)”; requirements for protection; exclusive rights conferred and their limitations; as
well as exploitation, registration and disclosure. The TRIPS Agreement provides for additional
facility, inter alia, on the scope and term of protection.
The international legal framework leaves it open to member states as to which legal form
of protection for the layout designs of integrated circuits is provided. In most countries, a special
law (sui generis law) on layout-designs (geographies) of integrated circuits (or sometimes called
“mask works”) exists. However, countries may provide protection of layout designs of integrated
circuits by the law on copyright, patents, utility models, industrial designs, unfair competition or
any other law (or a combination of any of those laws).
Objectives of the protection of layout designs of integrated circuits
Why protect the topography of integrated circuits?

 Integrated circuits are manufactured in accordance with very detailed plans or layout
designs. The layout designs of integrated circuits are creations of the human mind. They
are usually the result of vast investment, of both expertise and financial resources. There
is a continuing need for the creation of new layout designs that reduce the scopes of
existing integrated circuits and simultaneously increase their functions.
 Whilst creating a new layout design for an integrated circuit involves a major investment,

it is possible to copy such a layout design for a fraction of that cost. Copying may be
done by shooting each layer of an integrated circuit and preparing masks for the
production of the integrated circuit on the basis of the photographs obtained. The high
cost of the creation of such layout designs and the relative ease of copying are the main
reasons why layout designs need protection, in order to foster sustainable investment and
innovation in the field.
 While the exclusive right to the topography is intended to encourage creativity, the
possibility of “opposite engineering” by others for the purpose of evaluation, analysis,
research or teaching is meant to strike a balance in order to enable improvements of
existing integrated circuits and their compatibility.
Article 35
Relation to the IPIC Treaty
Members agree to provide protection to the layout-designs (topographies) of integrated circuits
(referred to in this Agreement as "layout-designs") in accordance with Articles 2 through 7(other
than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 18 of the Treaty on
Intellectual Property in Respect of Integrated Circuits and, in addition, to comply with the
following provisions.
Article 36
Scope of the Protection
Subject to the provisions of paragraph 1 of Article 37 19, Members shall consider illegal the
following acts if performed without the authorization of the right holder: importing, selling, or
otherwise distributing for commercial purposes a protected layout-design, an integrated circuit in
which a protected layout-design is incorporated, or an article incorporating such an integrated
circuit only in so far as it continues to contain an illegal reproduced layout-design.
Term of Protection
18 http://www.wipo.int/treaties/en/text.jsp?file_id=295136
19 https://www.iprsonline.org/unctadictsd/docs/2.6_intergratedcircuits.pdf

1. In Members requiring registration as a condition of protection, the term of protection of layout-
designs shall not end before the expiration of a period of 10 years counted from the date of filing
an application for registration or from the first commercial manipulation wherever in the world it
occurs.
2. In Members not requiring registration as a condition for protection, layout-designs shall be
protected for a term of no less than 10 years from the date of the first commercial manipulation
wherever in the world it occurs.
3. Notwithstanding paragraphs 1 and 2, a Member may provide that protection shall lapse 15
years after the creation of the layout-design.
LAYOUT-DESIGNS (TOPOGRAPHIES) OF INTEGRATED CIRCUITS

The provisions on the protection of layout-design of integrated circuits are found in Articles 35 to
3820, which make up Section 6 of Part II of the TRIPS Agreement21. According to Article 35 of the
TRIPS Agreement, Members are required to protect the layout-designs (topographies) of integrated
circuits in accordance with provisions of the Treaty on Intellectual Property in Respect of Integrated
Circuits (IPIC Treaty) and the additional provisions of Articles 36 to 38 of the TRIPS Agreement.
The latter provisions relate to the term of protection, the treatment of cleared infringers, the
application of the protection to articles containing infringing integrated circuits, and compulsory
licensing. The IPIC Treaty had been negotiated under the auspices of WIPO and signed in
Washington in 1989 but has never entered into force as only an insufficient number of countries had
ratified it. It is therefore only through their incorporation into the TRIPS Agreement that a number
of provisions from the IPIC Treaty have become necessary on WTO Members.
20 https://www.iprsonline.org/unctadictsd/docs/2.6_intergratedcircuits.pdf
21 https://www.wto.org/english/docs_e/legal_e/27-trips_04c_e.htm

CHAPTER 9: TRADITIONAL KNOWLEDGE
PROTECTION
Traditional knowledge (TK) is knowledge, know-how, skills and practices that are developed,
continuous and passed on from generation to generation within a community, often forming part
of its cultural or spiritual identity. While there is not yet an accepted definition of TK at the
international level, it can be said that:
 TK in general sense encircles the content of knowledge itself as well as traditional
cultural expressions, including distinctive signs and symbols associated with TK.
 TK in a narrow sense refers to knowledge as such, in particular the knowledge
resulting from intellectual activity in a traditional context, and includes know-how,
practices, skills, and innovations.
 Traditional knowledge can be found in wide variety of contexts, including:
agricultural, mechanical, technical, ecological and medicinal knowledge as well as
biodiversity-related knowledge.
Traditional Knowledge and Intellectual Property

Innovations based on TK benefits from patent, trademark, and geographical indication
protection, and be protected as a trade secret or confidential information. However, traditional
knowledge as such - knowledge that has ancient roots and is often oral - is not protected by
conservative intellectual property systems.
The IP issues break down into two important themes:
Defensive protection aims to stop people outside the community from obtaining intellectual
property rights over traditional knowledge. India, for example, has compiled a searchable
database of traditional medicine that can be used as evidence of prior art by patent examiners
while assessing patent applications. This followed a well-known situation in which the US Patent
and Trademark Office granted a patent (later revoked) for the use of turmeric to treat wounds, a
property well identified to traditional communities in India and documented in ancient Sanskrit
texts. Defensive strategies might also be used to protect sacred cultural manifestations, such as

revered symbols or words from being registered as trademarks.
Positive protection is granting of rights that authorize communities to promote their traditional
knowledge, control its uses and benefit from its commercial exploitation. Some uses of
traditional knowledge can be protected through the standing intellectual property system, and a
number of countries have also developed specific legislation. However, any specific protection
afforded under national law may not hold for other countries, one reason why many indigenous
and local communities as well as governments are pressing for an international legal instrument.
Need for protecting TK and efforts worldwide:

There are numerous reasons which depict the need to protect the Ethnic Traditional Knowledge,
to-
1. Improve the livelihoods of TK holders and communities- TK is a valuable asset to
indigenous and local communities who depend on TK for their livelihood as well as to
manage and adventure their local ecosystem in sustainable manner.
2. Benefit national economy- Most of industries look for the time tested traditional
knowledge information for developing novel products having commercial acceptability.
Hence, defensive TK has the potential to improve the economy of many developing
countries by greater commercial use of their biological wealth and increasing exports of
TK related products.
3. Conserve the environment - The traditional communities are intelligent and have made
agriculture sustainable through their different agricultural practices. They create a
balance between the environment and requirement.
4. Prevent bio piracy- Bio piracy refers either to the illegal abstraction of biological
resources and associated TK or to the patenting, without compensation of spurious
inventions based on such knowledge or resources.
EXISTING METHODS OF PROTECTING TRADITIONAL KNOWLEDGE

The following legal frameworks can be adapted to protect traditional knowledge;
• International protection through treaties and conventions;
• National protection through national legislations controlling access to genetic material enacted

in various countries, and national intellectual property legislations; and
• Local protection through private contractual measures.
International Protection
The Convention on Biological Diversity (CBD) was drafted at the UN Conference on
Environment and Development held in Rio de Janiero in 1992. It deals with issues
relating to environmental law and policy making in the context of sustainable
development. The objectives of the CBD are the maintenance of biological diversity, the
sustainable use of its components, the fair and equitable sharing of the benefits arising
out of the utilization of genetic resources including appropriate access to genetic
resources, the appropriate transfer of relevant technologies, the consideration of all rights
over these resources and technologies, and the availability of appropriate funding to
develop these issues.
Art. 8(j)22 of the CBD calls on the signatories of the Convention to respect, preserve, and
maintain the knowledge, innovations, and practices of the indigenous communities. Art.
8(j) implies that researchers should pay for the traditional knowledge readily available to
them and that they have to maintain the confidentiality of such knowledge if so required.
Art. 8(j) is supported by Art.18.4 23 that encourages countries to develop models of
cooperation for the development and use of technology, particularly indigenous or
traditional technology. However, the CBD has no enforcement mechanisms of any sort.
The principles espoused by the CBD can be enforced only when they are incorporated
into the national access legislation of the signatory countries, should they choose to
institute them. Other newly drafted instruments have begun to supplement the CBD
treatment of traditional knowledge.
Art. 9(a) of the FAO’s International Treaty on Plant Genetic Resources for Food and
Agriculture of 2001 deals with the need to protect traditional awareness. Article 29 of the
Draft UN Declaration on the Rights of Indigenous People of 1999 is more elaborate in its
protection of traditional knowledge and other traditional resources of the people. It states
22 https://www.cbd.int/doc/decisions/cop-13/cop-13-dec-18-en.pdf
23 https://www.cbd.int/doc/meetings/ttc/egttstc-02/other/egttstc-02-oth-techstudy-en.pdf

that indigenous peoples are entitled to the recognition of the full ownership, control, and
protection of their social and intellectual property. Special measures should be developed
to control, develop, and protect their sciences, technologies, and cultural manifestations,
including human and other genetic resources, seeds, medicines, knowledge of the
properties of fauna and flora, oral traditions, literatures, designs, and visual and
performing arts.
Chapter 26 of Agenda 21 24 is focused on ethnic people and is targeted towards

empowering them. Paragraph 4 (a) of Chapter 26 25 calls on the relevant national
governments to adopt policies or legal instruments that would protect the cultural and
intellectual property of such people. The aim of this provision is to provide some
protection over the traditional knowledge and folklore of such persons. Therefore, the
scope of international measures that have been developed merely recognizes the rights of
indigenous people to their traditional knowledge. None of these instruments specify a
regime to protect such knowledge. Also, none of the instruments specify mechanisms to
enforce this recognition of the rights of indigenous peoples to their traditional knowledge
– they are simply persuasive in nature.
Protecting India’s Traditional Knowledge June 2011

In just under two years, in Europe alone, India has succeeded in bringing about the
cancellation or withdrawal of 36 applications to patent traditionally known medicinal
formulations. The key to this success has been its Traditional Awareness Digital Library
(TKDL), a database containing 34 million pages of formatted information on some 2,260,000
medicinal formulations in multiple languages. Designed as a tool to assist patent examiners of
major intellectual property (IP) offices in carrying out prior art searches, the TKDL is a unique
repository of India’s traditional medical wisdom. It also bridges the language gap between
traditional knowledge expressed in languages such as Sanskrit, Arabic, Persian, Urdu and Tamil,
and those used by patent examiners of major IP offices. India’s TKDL is attesting a powerful
weapon in the country’s fight against erroneous patents, sometimes referred to as “bio piracy”.
24 http://www.un-documents.net/a21-26.htm
25 http://www.un-documents.net/a21-26.htm

BIOPROSPECTING AND BIOPIRACY
A situation where indigenous knowledge of nature, creating with indigenous people, is used by
others for profit, without permission from and with little or no compensation or recognition to
the indigenous people themselves is bio piracy.
 Bio piracy operates through unfair application of patents to genetic resources and
traditional knowledge.
 Bio piracy is the theft or usurpation of genetic materials especially plants and other
biological materials by the patent process example: use of indigenous knowledge of
medicinal plants for patenting by medical companies without recognizing the fact that the
knowledge is not new, or invented by the patentee and thereby the piracy deprives the
native community to the rights to commercial exploitation of the technology that they
themselves had developed.
Effects of Bio piracy:

 Causes depletion of Biodiversity
Examples: Asia: Use to have more than 100,000 varieties of rice in 20th century.
Now: less than a dozen are planted in 70% of land being cultivated for Rice.
India: 30,000 Now: 10 varieties
Srilanka: 2000 varieties Now: only 5 varieties.
 Depletion in wildlife diversity decreases the interaction of beneficial wild life pathogens
to humans.
 Loss of biodiversity is Irreversible.
Recent cases of Bio-piracy

 Neem Patent: US patent office granted patent on a fungicidal product derived from seeds
of the Neem. India opposed the patent by claiming that the fungicidal properties of the
Neem tree had been in public knowledge in India for many centuries. The oil from neem
has been used traditionally by farmers to prevent fungus. It was neither a novel idea nor
was it Inventive. The Patent was finally revoked by the European Patent Office.

 Haldi patent- In December 1993, a patent was filed by the University of Mississippi
Medical Center, Mississippi. Applicants received US patent 5,401,504 for the use of
turmeric powder as a wound-healing agent by Indian Government objected to the patent
The turmeric patent failed to satisfy the criteria of novelty in view of the cited turmeric’s
qualities documented in ancient medical textbooks.
 Basmati patent- Rice Tec (US Co.) obtained a patent (US 5663484) on a type of rice
produced by crossing a strain of Indian basmati rice with an American variety. The patent
claimed rights in respect of basmati-like rice grown anywhere in the Western
Hemisphere. It also claimed future rights on any new varieties created by crossing the
new variety with existing Asian varieties. The farmers argued that an American rice
producer should not be allowed to use the name ‘basmati’. Basmati rice is a valuable
export crop getting India approximately US$800 million a year. As a result of a
worldwide citizen campaign against Rice Tec Basmati patents, USPTO struck down large
sections of the Basmati patent.
Bioprospecting
 The search for biological resources & accompanying indigenous knowledge for the
purpose of commercial exploitation;
 A process of appropriation and commercialization of natural products ranging from
plants and animals;
 Bioprospecting could be a useful tool in economic conservation;
Bioprospecting or Bio piracy

 Bioprospecting includes “the investigation, extraction and screening of biological
diversity and indigenous knowledge for commercially valuable genetic and biochemical
resources”.
 Unfortunately, indigenous people are all too often unaware of the value of their
knowledge.
 Legislation has attempted to prevent such unrestricted bioprospecting or what is often

referred to as “bio piracy.”
 Bioprospecting or collecting biological samples, can help medical and other scientific
research; while Bio piracy or illegal collection, can:
1. infringe on the sovereign rights of nations
2. decrease the economic health of indigenous communities
3. deplete or destroy species.
Bio piracy and Patent

Patents on illegally acquired biological source materials are considered acts of bio piracy.
Natives own the intellectual property rights to their traditional awareness.
A negative impact:
Many patents either deny economic compensation to indigenous groups entirely or they
prevent indigenous groups from using specific plant materials altogether.
The patent holder will unethically benefit from the obvious result of nature rather than a
product of human efforts or skill.
Efforts to bar granting of patent on biological material:

Provision for mandatory disclosure of source and geographical origin of the biological
material.
The non- disclosure and wrongful disclosure of the biological material is a ground for
patent opposition and Revocation.
Traditional Knowledge, whether written or oral, treated as prior art in defining

patentability.
Disclaimer: The study material mentioned in the module is for academics purpose to
provide information and understanding; it should not be interpreted as a legal advice or opinion.

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Chapter Title Page No.

DIFFERENT DOMAINS OF IPR 1.3 1

A patent is an exclusive right granted by a country to an inventor, permitting the inventor to

DIFFERENT DOMAINS OF IPR 1.3 2

1.1 What can be patented?

DIFFERENT DOMAINS OF IPR 1.3 3

1.2 Types of Patents:

DIFFERENT DOMAINS OF IPR 1.3 4

 Incentives: Patents provide incentives for economically efficient research and

DIFFERENT DOMAINS OF IPR 1.3 5

1.2 Reasons for Patenting: Business Orientation

DIFFERENT DOMAINS OF IPR 1.3 6

DIFFERENT DOMAINS OF IPR 1.3 7

Trademarks: Business Assets

DIFFERENT DOMAINS OF IPR 1.3 8

2.1 Types of Trademarks

DIFFERENT DOMAINS OF IPR 1.3 9

d) Collective Marks: Marks being used by a group of companies can be protected

e) Certification Marks: Certification marks are used to define standards. They

f) Well-known marks: When a mark is easily recognized among a large percentage

DIFFERENT DOMAINS OF IPR 1.3 10

g) Unconventional Trademarks: Unconventional trademarks are those trademarks

Unconventional trademarks include the following categories:

2.2 Trademark Guidelines:

 Enforcement: trademark protection and infringement actions

DIFFERENT DOMAINS OF IPR 1.3 11

 Identifying infringement: third-party use and passing off

 Responding to trademark infringement and litigious actions

 Licenses and agreements: expansion of trademark rights

DIFFERENT DOMAINS OF IPR 1.3 12

 Developing a licensing strategy

DIFFERENT DOMAINS OF IPR 1.3 13

DIFFERENT DOMAINS OF IPR 1.3 14

3.1What can be protected?

Works commonly protected by copyright throughout the world include:

3.2 Rights under Copyright:

There are two types of rights under copyright:

DIFFERENT DOMAINS OF IPR 1.3 15

Duration of the Rights:

DIFFERENT DOMAINS OF IPR 1.3 16

(1) The three basic principles are the following:

DIFFERENT DOMAINS OF IPR 1.3 17

DIFFERENT DOMAINS OF IPR 1.3 18

3 reproduction in certain special cases

DIFFERENT DOMAINS OF IPR 1.3 19

DIFFERENT DOMAINS OF IPR 1.3 20

DIFFERENT DOMAINS OF IPR 1.3 21

End-User Licensing Agreements (EULA)

Protection of Copyright Software

DIFFERENT DOMAINS OF IPR 1.3 22

DIFFERENT DOMAINS OF IPR 1.3 23

 Defendants or persons recognizable through their IP Addresses in internet law related

Infringement of Copyrighted Software

 Hard disk loading: Computer dealers pre-installing illegal copies of software

DIFFERENT DOMAINS OF IPR 1.3 24

DIFFERENT DOMAINS OF IPR 1.3 25

 An industrial design renders an object attractive or appealing, thus increasing its

DIFFERENT DOMAINS OF IPR 1.3 26

Exclusions from scope of design:

Benefits of Industrial Design:

DIFFERENT DOMAINS OF IPR 1.3 27

Relation of Business designs and Business development: