Intellectual Property Rights

By
Dr. S.P.SUBRAMANIYAN
Deputy Controller of Patents & Designs

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 PROPERTY

Tangible Intangible

Movable Immovable
Eg:Car, Table etc Eg: Building, Land etc

Intellectual Property

Industrial Property Copy Right

Patents, Designs & Trademarks

 THE INDIAN PATENT OFFICE

Patent
Office

Mumbai Chennai Delhi Kolkata

 Intellectual Property Rights
• Patents – Technology – 20years
• Designs – Aesthetic look – 10years + 5years
• Trademark – symbol or logo – 10 + No limit
• Geographical indication – quality of the
product – 10 + No limit
• Copy right – literary, artistic, musical etc – life
time + 60 years
 INDUSTRIAL PROPERTY

PATENTS DESIGNS TRADE MARKS

Inventions relating Any modification in WORD
to CONSTRUCTIONAL SHAPE NAME
FEATURES PATTERN
LOGO
CONFIGURATION
Is registerable
e.g. Safety Valve
e.g. Shape of a
Mechanism e.g. for same
HANDLE
of a Pressure Cooker
or
PRESSURE “PRESTIGE”
COOKER BODY PORTION
of a Pressure “HAWKINS”
Cooker “BUTTERFLY”
 The IP behind the BlackBerry

Patent
Trade-mark

Industrial Design

Patent CA 2508239
A display for a handheld computing Trade-mark Registration
device includes a display panel; a TMA 638068
circuit board carrying display
Wares/Services:
electronics for the display panel; a
cover assembly securing the display Electronic handheld Industrial Design
panel to the circuit board; and a units Registration 125919
resilient layer adhered to the circuit
Registrant: RESEARCH Title: Handheld
board for securing the display to the
computing device. IN MOTION LIMITED Electronic Device
Inventors: HOLMES, CHEN, SIMOES
Owner: RESEARCH IN MOTION
Registrant:
LIMITED RESEARCH IN
MOTION LIMITED
 National Intellectual Property Rights
Policy 2016
• IPR Awareness: Outreach and Promotion
• Generation of IPRs
• Legal and Legislative Framework
• Administration and Management
• Commercialization of IPR
• Enforcement and Adjudication
• Human Capital
 Academic Research

• Publication Vs Patenting

• Discovery Vs Invention
TRADE MARK

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 Trade Mark

• A trade mark is a visual symbol

• a word, signature, name, device, label,
numerals or combination of colours
• used to distinguish goods or services from
other similar goods or services

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 Origin of Trade Mark
• Large companies manufacturing various
products by itself or through others and
marketed by it lead to use of its own
trademark.
• The concept of identifying source of
manufacture by a mark
• By extensive use and advertisement
trademark becomes popular and acquires
goodwill.
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 Requirement

• The selected mark should be capable of being

represented graphically

• It should be capable of distinguishing the goods or

services of one undertaking from those of others.

• It should be used or proposed to be used mark in

relation to goods or services

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 Trade Mark

• Any name
• personal or surname of the applicant or
• predecessor in business or
• the signature of the person
– E.g,
• TATA, BIRLA, GODREJ, McDonald

• SIGNATURE -

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LABEL - PEPSI / COCA COLA
WORD - INFOSYS / JAVA / MICROSOFT

NUMERICAL - 555, 501, 777

LETTER - MDH, BMW, IBM, DHL, ICICI

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Trade Marks
 Types of Trade Marks

• Goods/Product Mark
• Service Mark
• Quality Mark
• Collective Mark

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Quality mark
Service mark
Collective marks
 Fanciful or Coined Marks
• coined or made-up word that has no meaning
other than as a trademark. EXXON, VERIZON,
and KODAK

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 Arbitrary Marks
• Words that have a common meaning but are
applied to a product or service that is
unrelated to goods or services

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 Suggestive Marks
• Suggestive marks indicate some quality or
characteristic of the products or services on or
in connection with which they are used, but
they do not directly describe the product or
service.
– AIRBUS - Airplanes
– KITCHENAID - Kitchen appliances
– SWEETARTS - Candy

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 Bisleri vs Coca cola
• Coca Cola was the largest brand of soft drinks
operating in 200 countries.
• Aqua Minerals Pvt. Ltd., was a part of Parle
group of Industries sold the trademarks ,
formulation rights, know- how, intellectual
property rights, goodwill etc. of their products
THUMBS UP, LIMCA, GOLD SPOT, MAAZA to
Coca Cola.
 Bisleri vs Coca cola
• The company Bisleri Sales Ltd, had the secret beverage
base for manufacturing maaza and was an affiliated
company of Aqua Minerals.
• On September 12, 1993, several agreements were
signed between both the parties, such as, deed of
assignment, goodwill assignment, know-how,
confidentiality and non- use agreement, non- compete
agreement, general assignment, etc. to give effect to
the sale for a considerable money value.
• Coca Cola was envisaged with the right to sell the
product Maaza within the territory of India.
 Bisleri vs Coca cola
• Bisleri retained the trademark rights of MAAZA in
respect of other countries where it had been registered.
• In March 2008, the Bisleri got aware of the fact that the
Coca Cola had filed for registration of MAAZA in turkey.
• As a result of this, Bisleri sent a legal notice repudiating
the Licensing Agreement and made it devoid of all other
selling rights.
• Coca Cola filed the suit for permanent injunction and
damages for infringement of trademark and passing off,
as the defendant had completely ignored many
irrevocable and absolute rights embarked upon the
plaintiff.
Industrial Design

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Industrial design is
• Shape or configuration
• pattern, ornamentation or composition
of lines or colours applied to any article
by any industrial process
• the finished article appeals to and
judged solely by the eye.

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 Requirement for filing design
• New or original
• Not be disclosed to the public in any form
• Distinguishable from known designs or
combination of known designs

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 Exclusion
• books, jackets, calendars, certificates, forms-and other
documents, dressmaking patterns, greeting cards,
leaflets, maps and plan cards, postcards, stamps, medals;
• labels, tokens, cards, cartoons.
• buildings and structures;
• parts of articles not manufactured and sold separately;
• mere change in size of article;
• flags, emblems or signs of any country. layout designs of
integrated circuits.

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Rear Body Portion
Disclaimed
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 Design

•What drives the design?

–Shape
–Surface ornamentation
–Color contrast
–Texture contrast
COPYRIGHTS
 WHAT IS COPYRIGHT ?

 A Copyright is a protection offered to the authors of

literary, dramatic, artistic,musical works, producers of
cinematograph films, sound recordings.

 A Copyright protects the particular manner in which a work’s contents and

ideas are expressed

 It is a bundle of rights including, rights of reproduction, communication to

the public, adaptation and translation of the work.

Ideas , Facts , Titles and Slogans

cannot be Copyrighted
 WHY SHOULD COPYRIGHT BE PROTECTED ?

 Ensures safeguards of the rights of

authors over their creations, by
protecting and rewarding creativity.

 The protection provided by copyright to the

writers, artists, musicians, architects and computer software
developers
induces to create more Creations and motivates others to create.

 Economic and social development of a society is dependent on

creativity.
 AUTHORSHIP AND OWNERSHIP
1. Whose rights are protected by copyright?
Copyright protects the rights of
authors, i.e., creators of
intellectual property in the form
of literary, musical, dramatic,
artistic works, cinematograph
films and sound recordings.

2. Who is the first owner of copyright in a work?

Ordinarily the author is the first owner of copyright in a work.
 AUTHORSHIP AND OWNERSHIP
3. Who is an author?
In the case of a Literary or Dramatic work
“The author, i.e., the person who creates the work”
In the case of Musical work,
“The composer”
In the case of Cinematograph film & Sound recording,
“The Producer”
In the case of Photograph,
“The Photographer”
In the case of a Computer generated work,
“The person who causes the work to be created”
 REGISTRATION OF COPYRIGHTS
Procedure for registration of work under Copyright
Act,1957(amended Act,2012)

 Copyright comes into existence as soon as a work is created and no formality is

required to be completed for acquiring copyright.

 Facilities exist for having the work registered in the Register of Copyrights
maintained in the Copyright Office of the Department of Industrial policy and
Foreign Trade.

 The entries made in the Register of Copyrights serve as prima-facie evidence in

the court of law.

 The Copyright Office has been set up to provide registration facilities to all
types of works and is headed by a Registrar of Copyrights and is located at IPR
Building Sector 14, Dwaraka, New Delhi.
 REGISTRATION OF COPYRIGHTS
Guidelines for registration of Work under Copyright Act
 Application for registration is to be made on Form IV (Including Statement of
particulars and Statement of Further Particulars) as prescribed in the first Schedule to
the rules

 Separate applications should be made for registration of each work

 Each application should be accompanied by the requisite fee prescribed in the second
schedule to the rules

 The applications should be signed by the applicant or the advocate in whose favor a
Power of Attorney has been executed

 The Power of Attorney signed by the party and accepted by the advocate should also
be enclosed
 What is the term of protection of
copyright?
• The general rule is that copyright lasts for 60 years.
In the case of original literary, dramatic, musical and
artistic works the 60-year period is counted from
the year following the death of the author.
• In the case of cinematograph films, sound
recordings, photographs, the 60-year period is
counted from the date of publication.
 COPYRIGHTS INFRINGEMENTS
Common Copyright Infringements
 Making infringing copies for sale or hire or selling or
letting them for hire

 Permitting any place for the performance of works in

public where such performance constitutes infringement of
copyright

 Distributing infringing copies for the purpose of trade or

to such an extent so as to affect prejudicially the interest
of the owner of copyright

 Public exhibition of infringing copies by way of trade

 Importation of infringing copies into India

• What is not Infringement?
• Section 52
• Fair dealing for private use, research, criticism or
review
• Fair dealing for reporting current events in a
periodical or newspaper
• Reproduction for judicial proceedings and for
legislatures’ requirements
• Reproduction by a teacher or pupil in the course
of instruction or in exams
• Remedies for Infringement
• •Administrative(copyright board)
• •Civil Proceedings(starts from district court)
• •Criminal remedies
• Penalties and Punishments
• •First offence –six months imprisonment and
Rs.50,000/-fine(Section 63)
• •Second offence –one year imprisonment and
Rs.1,00,000/-fine(Section 63 A)
• •Maximum –three years imprisonment and
Rs.2,00,000/-fine
 UNCOPYRIGHTABLE STUFF
 Ledger sheets and blank forms

 Rules and recipes (“merger”)

 Facts and theories

 Ideas and principles

 Methods of operation/processes

 Bicycles and bicycle racks

 White pages listings of telephone directories

•The economic rights are transferable through
• –Assignments
• •An assignment involves the disposal of the copyright:
the author (assigner) assigns the copyright to another
person (assignee) or transfer of ownership of the
copyright
• –Licences
• •In the case of licence only specified interest in copyright
is transferred not the ownership is transferred to the
licensee. A licence normally does not confer any right to
licensee against licensor or third party but exclusive
licensee has substantial rights against the licensor , even
to sue the licensor.
 AUTHORSHIP AND OWNERSHIP
4. Who all have rights in musical sound recording?
There are many right holders in a musical sound recording.

For example,
 the lyricist who wrote the lyrics
 the composer who set the music
 the singer who sang the song
 the musician (s) who performed the
background music
 the person or company who produced the
sound recording.
GEOGRAPHICAL INDICATIONS

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 What are geographical indications?
• Link a product to a particular region
• Indicate qualities, attributes, reputation
associated with geographic origin
• Suggest connection to region’s inherent
characteristics (e.g., soil, climate, terrior)
• May also imply production skills/processes
associated with region
 GI
• Collective right
• Protecting knowledge remains in the
public domain
• Scope of protection is relatively
circumscribed compared to patent and
trade mark

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 Goods for Registration
• Agricultural
• Natural
• Handicrafts
• Industry
• Manufactured Goods
• Food stuffs

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 Geographical Indications

Nagpur oranges

Champangne

Darjeeling Tea
Kanchipuram silk
saree
PATENTS

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 Turmeric Patent

• U.S. Patent No. 5,401,504 was

granted to Das et al.
• Wound healing property of
turmeric
• It is commonly used for wound
healing in India
• Challenged by way of re-
examination at USPTO by Govt.
of India (CSIR)
• All claims are cancelled
Prior art for turmeric in Urdu
Prior art - English Translation
Prior art English Translation
Prior art for Turmeric
Prior art for Turmeric
Revocation of Turmeric Patent
Revocation of Turmeric Patent
 Diamond Vs Chakrabarty (1980)
• Genetically modified organisms can be patented
or not;
• Ananda Mohan Chakrabarty, a Genetic
engineer,was working for General Electric:
• He created a bacterium derived from the
Pseudomonas genus – presently known as
Pseudomonas putida was competent of breaking
down crude oil for the treatment of oil spills;
• Filed patent in USPTO and rejected stating living
thing not patentable;
 Diamond Vs Chakrabarty
• The Board of Patent Appeals and Interferences agreed with
the original decision.
• The United States Court of Customs and Patent Appeals
ruled the case in Chakrabarty’s favor, explaining:
“The fact that micro-organisms are alive is without legal significance for
purposes of the patent law.”
• Sidney A. Diamond, Commissioner of Patents and
Trademarks, appealed to the Supreme Court;
• The court decided in favor of Chakrabarty, affirming that “a
live, human-made micro-organism” is a patentable subject
matter under 35 U.S.C. § 101. Respondent’s micro-organism
consists of a “manufacture” or “composition of matter”
inside that statute.
 Quanta Computer, Inc Vs LG Electronics, Inc
• US Supreme Court held that a patent owner sells a patented
product to a (first)buyer, the purchaser of the product(second
buyer) is free to use or sell that patented product without
having to worry about being sued for infringement by the
patent holder.
• The invention is “methods and systems for processing
information”
• LGE authorized Intel to make and sell microprocessor products
using the patented inventions and in the agreement, it was
expressly stated that no license was granted to any third party
for combining licensed products with other products;
• LGE was willing to allow Intel’s customers to combine the
microprocessor products with products not licensed by LGE, but
only upon payment of a further royalty to LGE for the right to do
so.
Quanta Computer, Inc Vs LG Electronics, Inc

• Quanta Computer purchased licensed Intel

microprocessor products and proceeded to
manufacture computers containing them.
• Quanta followed Intel’s specifications, which in
turn led to the practice of the patented methods
and making the patented systems that LGE
licensed to Intel– since that was the way Intel had
designed its microprocessor products.
• LGE then sued Quanta for patent infringement
Quanta Computer, Inc Vs LG Electronics, Inc
• Quanta appealed to Federal Circuit which held that the
exhaustion doctrine did not apply because of the
statement in the Master Agreement that combination
products were not licensed;
• Quanta appealed the decision and the case was heard in
the Supreme court. The supreme court reversed the FC
decision while concluding that:
– The doctrine of patent exhaustion applies to method patents, and
– Once a product is unconditionally authorized for sale, and that this
product comprises the essential elements of a patented invention, with
no other intended use than to practice the patent, the doctrine of patent
exhaustion applies and the patent owner can no longer invoke patent
law in an attempt to receive additional royalties or limit the rights of the
licensee’s subcontractors and the latter’s clients, since, by doing so, the
patent owner would extend the patent’s scope and the rights which the
patent confers without due cause.
 What is a patent?

A PATENT IS A BUSINESS TOOL.

In Academia: Patents spur interest in

turning research results into
products that benefit the public.
Do you know?

90% of patents are for

improvements
to existing patented inventions
 Do you know?
• 1/3 of new drugs originates from basic
research conducted at universities, hospitals
and biotech companies.

• Improvements to known technologies

• New combinations of known technologies

• New uses of known technologies

 WHAT IS PATENT?

Patent is an exclusive right

granted by the Government
to the applicant
for an invention
for a limited period of time
in lieu of disclosure of his invention.
A Patent is “A Contract with Society”
• Inventor gives to society:
– A written description of his/her invention that
sufficiently teaches “one of ordinary skill in the
art” how to make and use the claimed
invention, and that sets forth the “best mode”
at the time of filing the patent application.

• Inventor gets from society:

– About a 20 year monopoly from the filing date
to exclude others from practicing the
claimed invention.
 Patents
• Right to stop others from using the
invention without permission

• Monopoly right

• For a limited period – 20 years

• Territorial right
 WHAT IS AN INVENTION?
2(1)j.- Invention” means any
(i) new product or process,
(ii)involving an inventive step and
(iii)capable of industrial application.
INVENTION MEANS SUCCESSFUL TECHNICAL SOLUTION
TO A PROBLEM.
Thank You All