Intellectual Property Rights & Libraries: Patents, Trademarks, etc

1. Introduction: Intellectual Property Rights (IPR) related issues have been growing in
importance especially since the coming into existence of TRIPS (described later) and
its implementation in India. Advances in digital communication and technologies
have been major factors that necessitate a proper understanding of all the issues
involved. These have led to a situation in which the need for awareness of IPR-
related issues among LISP assumes great importance. The principal facets of IPR,
their impact and implications for library and information work and service is
discussed. As is to be expected the emphasis is on the areas of patent information and
copyright. However, other IPR will be touched upon. The term ‘property’ generally
brings to mind two types of property – immovable property such as land or buildings
and movable property such as jewelry, shares, stocks, automobiles etc. Intellectual
property can be considered a third category of property. Intellectual property is
increasingly being recognized as of prime importance in the economy of nations. The
basic features that apply to other types of property viz., that the owner of the property
is free to use it as he/she wishes, provided the use is not against the law, and to
exclude others from so using that owned property apply just as well to intellectual
property also.

2. What exactly is ‘intellectual property’? The term is reserved for types of property that
result from creations of the human mind, the intellect. It can be divided into
copyright and related rights on the one hand and industrial property on the other.
Industrial property covers patents, trademarks and designs. Rights of ownership are
granted by the State. However, unlike the conventional types, the rights of the owner
are limited to a specific period of time. The ‘time feature’ distinguishes intellectual
property and differentiates it from other types of property. This time feature is mainly
because a balance has to be maintained between two “contradictory” perspectives,
viz., the individual’s right to enjoy the fruits of his/her intellectual endeavours and
the need for the society to improve the quality of life by utilizing outputs intellectual
work.

Categories of Intellectual Property


Prepared by Dr. S. Amba, Deputy Director (Retd.), Central Leather Research Institute, Chennai 600020
  Trademarks - Marks, logos, names etc.
 Industrial Designs: Designs – e.g. a new shape for a bottle –
 Geographical Indications: Geographical names indicating a
product
 Protection of new plant varieties
 Layout of design of integrated circuits.
 Inventions e. g. a new product or process of manufacture – Patents
 Literary, artistic and scientific works, books etc. Performances,
broadcasts etc – Copyright and Copyrights Related Rights
This unit deals with, patents, trademarks, designs and geographical indications.

2. IPR in India

In India, the Controller General of Patents, Designs and Trademarks (CGPDTM) administers all
matters pertaining to Patents, Designs, Trademarks, and Geographical Indications. The Indian
Patent Office functioning under the Controller General is also recognized as an International
Searching Authority and International Preliminary Examining Authority under the PCT
(Described under the section dealing with Patents). The Rajiv Gandhi National Institute of
Intellectual Property Management is also affiliated to the CGPDTM. CGPDTM is under the
Ministry of Commerce and Industry, Department of Industrial Policy and Promotion.
(http://www.ipindia.nic.in/)

3. International IPR

World Intellectual Property Organisation (WIPO)

A global forum for intellectual property services, policy, information and cooperation is the
WIPO. It was established in 1967 to promote the protection of IP throughout the world through
cooperation among states and in collaboration with other international organizations. In 1974, the
WIPO became a specialized agency of the UN and is headquartered in Geneva. WIPO is
responsible for promoting the development and harmonization of IP-related legislation, standards
and procedures among its 186 Member States and handles the administration of 26 international
treaties. In 1996 it signed the cooperation agreement with the World Trade Organisation (WTO).
The nine strategic goals of the WIPO were adopted by the member states in December 2009.
They are given in the WIPO website (www.wipo.int) as

 Balanced Evolution of the International Normative Framework for IP

 Provision of Premier Global IP Services
 Facilitating the Use of IP for Development
 Coordination and Development of Global IP Infrastructure
 World Reference Source for IP Information and Analysis
 International Cooperation on Building Respect for IP
 Addressing IP in Relation to Global Policy Issues
  A Responsive Communications Interface between WIPO, its Member
States and All Stakeholders
 An Efficient Administrative and Financial Support Structure to Enable
WIPO to Deliver its Programs
Trade Related Aspects of Intellectual Property Rights (TRIPS) (1994):

The TRIPS Agreement is an international treaty which has shaped IPR legislation and activities
in countries around the world. It is administered by the World Trade Organisation (WTO) and
sets minimum standards for many forms of intellectual property including copyright. TRIPS was
negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade
(GATT) treaty in 1994. The TRIPS Agreement introduced intellectual property law into the
international trading system for the first time and is a comprehensive international agreement on
intellectual property. The TRIPS Agreement is applicable to all WTO members of which India is
one. TRIPS establishes minimum standards for member countries. It has also established basic
principle of national treatment i.e. treating one’s own nationals and foreigners equally. The
obligations under TRIPS apply equally to all member states, however, developing countries were
allowed extra time to implement the applicable changes to their national laws. The transition
period expired in 2005 and India has amended its intellectual property laws to be in conformity
with TRIPS regulations. It requires member countries to provide sanctions against copyright
violations. TRIPS also specifies enforcement procedures, remedies, and dispute resolution
procedures. Though it does not expect all members to have identical rules on intellectual
property, it expects all members to comply with the minimum standards set by it and laws of the
member countries should not contravene the provisions of the agreement. Details can be
accessed at:

http://www.wto.org/english/tratop_e/trips_e/tripfq_e.htm

References

www.ipindia.nic.in
www.wipo.int
www.wto.org › trade topics › trips‎

Questions

1. What is intellectual property? Give some examples.

2. Visit the WIPO website and describe briefly WIPO and summarize its activities in half a
page.
 Patents

Patents are one of the oldest forms of intellectual property. It is the protection given to an
invention – a “product” or the “process” of manufacturing that product. It is the exclusive right
given to an inventor for a specified period of time. It grants the inventor the right to make, sell or
use the product or process and exclude others from doing so. Granting a patent is based on two
fundamental ideas – i) human effort should be rewarded and that is one is entitled to the fruit of
one’s labours and ii) the product invented/process developed should not be the sole possession of
the inventor in perpetuity. It should be for the ‘public good’ i.e. knowledge should be in the
‘public domain’. Hence, even though a patent is granted for exclusive use, the time for such use
is limited by law.

The document which describes the invention is called a patent specification. It describes the
invention and sets out the scope of protection. That is, it discloses the details of the invention for
which the patent protection is sought. The legal rights in a patent are based on the disclosures
made in the specification.

The international organization exclusively concerned with various aspects of intellectual

property including patents is the WIPO which has been described earlier. TRIPS which is an
international treaty on Intellectual Property has also been described earlier. As is the case with
copyright, there are international treaties for patents also.

What can be Patented?

A patent can be granted for an invention of any process or product. The word “Invention” has
been defined under the Patents Act 1970 as “a new product or process involving an inventive
step and capable of industrial application”. “New invention” is defined as any invention or
technology which has not been described earlier in any document or which has been used in the
country or elsewhere in the world before the date of filing of patent application i.e. the subject
matter is not in the public domain or that it does not form part of the state of the art. “Capable of
industrial application” means that the invention is capable of being made or used in an industry

As mentioned earlier, an application cannot be filed for an invention which has been either
published or which has been publicly displayed. However, the Patents Act also states:

“Under certain conditions, there is grace period of 12 months for filing

application even after publication. The Patents Act provides a grace period of 12
months for filing of patent application from the date of its publication in a journal
or its public display in an exhibition organised by the Government or disclosure
before any learned society”
The details and conditions are provided under Chapter VI of the Act (Section 29-34)
(ipindia.nic.in/ipr/patent/faq_patent.htm).

What is not Patentable?

Not every invention or process can be patented. Some of the things that cannot be patented are
given briefly below:

 Things that exist in nature – such as the discovery of a new comet.

 Plants and animals in whole or any part thereof other than microorganisms
 An invention which is frivolous or which claims anything obviously
contrary to well established natural laws; Machines that defy the laws of
nature – machines that defy the law of gravity
 Scientific theories or mathematical models
 Methods or schemes for doing business
 Methods of medical treatment and diagnostic methods
 The mere discovery of a new property or new use for a known substance
 A substance obtained by mere admixture resulting only in the aggregation
of the properties.
 A method of agriculture or horticulture;
 Topography of integrated circuits
 An invention which, in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known
component or components
 Inventions relating to atomic energy
 A presentation of information
 Invention contrary to law or morality or injurious to public health

Evergreening of Patents:

Evergreening of a patent is a strategy allegedly adopted by some to renew their patents by

bringing in some minor changes when the patent is about to expire. A patent on the new form
would then give them monopoly for a further period of 20 years. This term is generally discussed
in the context of pharmaceutical companies. The theory is that by adding new mixtures or
formulations to an existing drug, pharmaceutical companies can patent the “new” drug and sell it
at a higher cost. Indian patent law prevents the ever-greening of a patent. Section 3(d) of India’s
Patent Act states that the following are not inventions:

“The mere discovery of a new form of a known substance which does not result in
the enhancement of the known efficacy of that substance or the mere discovery of
any new property or new use for a known substance …”

Based on the above, the Indian Supreme Court on April 1, 2013 denied a patent for the Novartis
breakthrough drug Glivec (Imatinib mesylate). [Apart from its impact on the patent law, the
judgment also had a social impact in that it made costly drugs available at affordable rates. This
case has been widely discussed in both specialized literature and in the regular newspapers. An
example is “Why Novartis case will help innovation” by Achal Prabhala and Sudhir
Krishnaswamy, The Hindu, April 15, 2013]. [As this is an evolving area students are requested
to access the Internet for latest developments].

Criteria for Patenting

Three criteria have to be fulfilled for an invention to be patented. These are:

 Novelty – the invention must be new or novel.

 Non-obviousness – an inventive step should be involved
 Utility – it must be capable of industrial application.
To obtain a patent, a patent specification is submitted to the designated patent office. The patent
specification is a written description of the invention. It discloses the details of the invention for
which the patent protection is sought. The legal rights in a patent are based on the disclosures
made in the specification.

What is a “priority date”?

Priority date is generally the date of first filing allotted by the patent office to an application.
More than one person might be working on a problem (product or process) at the same time and
achieve the same result. But only one person can be granted a patent for the invention. In such a
case, the first-to-file the application gets the priority in granting the patent and thus becomes the
owner of the patents with the right to exploit it and exclude others from doing so. Such a rule is
useful when a patent is being applied for in several countries as Priority Date is the filing date of
the first application in any of the countries under the treaties mentioned above. Though the date
of filing is generally accepted as priority date it is not always so in all countries. In USA, for
instance, it is the date when the invention was done. For instance, if two persons invent
something, the person who files the application first will get priority in India but in USA, even if
he files an application for the grant of patent, if it is found that some one else has invented it
before the person who files the application, then the first inventor gets priority and not the person
who has first filed the application. The two approaches are “first-to-file” and ‘first-to-invent’.
(USA switched over to the first-inventor-to-file (FITF) system on March 16, 2013).

Inventor vs. Applicant

The inventor need not necessarily be the applicant i.e. the one who applies for the patent. Patents
are property. Generally, a patent is owned by the inventor. However, the inventor and the owner
of the patent may be different. The rights to the property can be assigned to others by the
inventor. For instance, in a government funded research institute or an academic institution, the
inventor assigns the patent to the institute or a university. The assignee applies for the patent and
has the property right to the patent. Assignee refers to the person(s) or corporate body to whom
all or limited rights under a patent are legally transferred. The USA, however, requires a patent
application to be in the name of the inventor. A company cannot be the inventive entity.

Term of Patent

Currently, the term for patents in India is 20 years from the date of filing of the application for
the patent whether it is a provisional or complete specification. The patent is to be renewed every
year on payment of a fee to the Patent Office and it is the responsibility of the patentee to keep
the patent alive by paying the requisite annual fee.

After the 20 year term the invention claimed in the patent falls into the public domain. In case of
applications filed under PCT the term of 20 years begins from International filing date.

Infringement

Infringement of a patent is the violation of the exclusive rights of the patentee.

Procedure in Patenting

Filing of an application at the designated Patent Office is the first step in the patenting process.
Once a patent is filed it is checked for the correctness of all documents required to be submitted
with the application. It is then examined against the criteria mentioned earlier for patentability.
Prior art search is also done by the Examiner at the Patent Office. Objections may be raised if
criteria are not satisfied and the applicant can resubmit the application after carrying out the
necessary changes. Once the criteria are satisfied it is published in the Official Journal of the
Patent Office, after 18 months from the date of filing.

It is now open for opposition by third party which can be done within a period of one year from
the date of advertising. If there is no opposition then the patent is sealed or granted. It is then
published in the Patent Journal. A granted patent gives the inventor/assignee the exclusive right
to make or sell the patented product or process and to exclude others from doing so. However,
the government has the right to make use of the patent if it deems it necessary. It can also be
used by others for experimental or educational and research purposes.

Indian patent law allows both pre-grant opposition and post-grant opposition. Pre-grant
opposition can be anytime after the publication of the patent until its grant. It is granted only if it
overcomes pre-grant opposition. Post-grant opposition decides whether the patent should be
maintained or not.

Types of Patent Applications

Ordinary Application: An application filed without reference to any other application made
earlier.
Convention Application: In this application priority date is claimed on an application made
earlier in a convention country. The application is submitted along with the priority document.

PCT International Application: An application made according to PCT. The applicant gets an
international filing date in all the designated countries.

Application for Patent of Addition: If the applicant feels that he can do a slight modification to
what he has already invented and for which a patent has been applied for, he can apply for an
Application for Addition. This is because there is no inventive step involved.

Divisional Application: At times, it might be that an application claims more than one invention.
In such cases, the application may be divided and an application made for each one of the
inventions. The priority date for the divisional application is the same as that of the parent
application.

Provisional Specification:

A provisional specification does not disclose the complete description of the invention as time
might be required to develop it further. The provisional specification is filed to claim the priority
date of an invention. Immediately on receiving the provisional specification the patent office
accords a filing date for the application. A period up to twelve months is provided to the
applicant for filing the complete specification. The applicant thus has time to fully develop his
invention while at the same time getting priority.

Complete Specification:

The document, containing the detailed description of invention along with the drawings and
claims is called as the complete specification. The description regarding prior art is included in
the complete specification. The disclosure of the invention in a complete specification must be
such that a person skilled in the art may be able to perform the invention. It is mandatory on the
part of an applicant to disclose fully the various features constituting the invention along with
experimental results and drawings etc essential for understanding the invention. The complete
specification contains the title of the invention, the field to which the invention belongs, prior art,
the name, address and nationality of each of the applicants. Every complete specification is
accompanied by an abstract to provide technical information on the invention. The Claims
section in a specification defines the scope of legal protection. The Claims define the monopoly
rights that the applicant is trying to obtain for the invention.

Two other concepts have to be understood. These are:

Equivalent Patent:

A patent that relates to the same invention and shares the same priority application as a patent
filed elsewhere.
 Patent Family:

A patent family consists of all the patents which relate to the same invention published by
different patent offices in various countries. That is, it is the same invention patented in more
than one country by the same inventor and having the same priority date.

Contents of Patent Document

A patent document contains not just technical information but also other useful information. Let
us just see what they are: As the patent document is a technical as well as a legal document (a
techno-legal document), four categories of information can be found in a patent

 Bibliographic
 Technical
 Legal
 Database and retrieval oriented
Every patent document must contain a description of the “prior art” in that area. That is, it
describes the state of the art of technology in the field of invention and the various developments
in the field in which the patent is being applied for and as such contains references to periodical
articles, earlier patent specifications and other literature. Thus it contains useful research and
technical information. There are two types of “prior art” references - those given by the applicant
and those given by the Patent Examiner. This is more so in the US Patents. In the US, the “duty
of candor” principle postulates that all prior art documents that are in any way considered
relevant to the patentability of the invention must be disclosed. Failing to do so may result in
litigation and penalties. Hence, patent documents are a fertile field for identifying documents of
interest. As patent system is very old, LISP can help in tracing the history of specific fields of
technology especially as such information may not be available in any other form of publication.

International Patent Laws

The Paris Convention: The Paris Convention for the Protection of Industrial Property, signed in
Paris in1883, was one of the first intellectual property treaties and is administered by WIPO. The
Convention applies to all categories of industrial property such as patents, trade and service
marks, industrial designs, utility models (a kind of “small patent” provided for by the laws of
some countries), trade names and geographical indications. It has been amended several times,
the last was in 1979. As of 2013, the Convention has 175 contracting member countries. India
became a member of the Paris Convention in December 1998.

The principal features of the Convention are:

 National treatment: A member country is obliged to give nationals of

other member countries the same protection and advantages as it
grants to its own nationals. For example, a Belgian national who is
 applying for a patent in India will get the same protection as an Indian
national.
 Right of priority: The Convention provides for the right of priority in
the case of patents, trade and service marks and industrial designs.
This means that if an application is filed in one country and is
subsequently filed within the specified time frame in another
convention country, the latter application will be considered to be filed
on the same day as the first application thus ensuring right of priority.
Further, these latter applications will not be affected if the information
is made public either through publication or display of the invention.
For example, if an application for a patent is filed in India on January
13, 2014 and subsequently on May 10, 2014 in the United Kingdom,
the priority date would be Jan 13, 2014.
 Common Rules: The Convention has also laid down some common
rules for all the contracting states.
The European Patent Convention: European Patent Convention (EPC) which was signed in
Munich in 1973 is a multilateral treaty instituting the European Patent Organisation (EPO) for
granting European patents. The European Patent Organisation is an intergovernmental
organisation that was set up on 7 October 1977 on the basis of the EPC. The Organisation
currently has 38 members. The EPO provides a single patent grant procedure. The euro patent,
however, is not a single patent but a bundle of national patents depending on the countries
designated in the application.

Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the
Purposes of Patent Procedure (1977).

This treaty is administered by WIPO. India became a signatory in 2001.

In any patent specification the invention should be described completely and with sufficient
detail so that it is possible for a person skilled in the art to perform the invention. When an
invention involves microorganism, it is not possible to describe it in a manner by which others
can perform the invention. Hence, in inventions involving microorganisms, a deposit of the
biological material in a recognized institution is required. The Budapest Treaty ensures that if an
applicant deposits the material in any one recognized institution it is not necessary to deposit it
again in other countries when applying for a patent in those countries. The deposit in one country
is recognized by all countries which are party to the Treaty. The Microbial Type Culture
Collection and Gene Bank (MTCC) of the Institute of Microbial Technology, Chandigarh is an
International Depositary Agency (IDA) under the Budapest Treaty. The Microbial Culture
Collection (MCC) affiliated to National Centre for Cell Science, Pune, has also been recognized
as an IDA in 2011. The deposit is to be done prior to the filing of the application.

Patent Cooperation Treaty (PCT)

Generally, patent rights are ‘country dependent’ or territorial in that protection is given only
within the country in which the application is made. To have protection in other countries it was
necessary to apply individually in the countries desired. Further, it was necessary to apply within
a stipulated time to obtain priority. The Patent Cooperation Treaty (1970), an international patent
law treaty was concluded to overcome such problems. It was amended subsequently in 1979, and
modified in 1984 and 2001. It provides a unified procedure for filing patent applications in each
of its 148 Contracting States. By filing one international patent application under the PCT,
applicants can seek protection and priority in any of the countries designated by them. India is a
member of the PCT since December 1998. It is possible to file an international application
known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai
and Delhi which act as the Receiving Office (RO) for International application.

Patent Laws in Other Countries

As has been mentioned earlier, patent laws are national in scope. To know more about the laws
of various countries, WIPO has created the WIPO Lex which is an electronic database providing
access to intellectual property (IP) laws and treaties of the Members of WIPO, the World Trade
Organization (WTO) and the United Nations (UN).

National Laws on Patents can also be accessed from the Patent Lens web site.
www.patentlens.net/daisy/patentlens/ip/around-the-world.html‎

Patent Laws in India

The Indian Patents and Designs Act 1911 which came into force in 1912 and which replaced all
earlier acts brought patent administration under the management of Controller of Patents for the
first time. After independence, it was felt that this Act was not sufficient to meet the changes in
the economic and political conditions and setup of the country. The 1911 Act was amended in
1950. The Patents Act 1970 repealed and replaced the 1911 Act so far as the patents law was
concerned. The 1970 Act came into force in April 1972. This Act permitted only process patents
for five years, and no product patents for drugs and pharmaceuticals and certain classes of
chemicals. That is, patents were granted only for the process of manufacture for food and
medicine and not for the product developed. Though the filing of product patents in drugs,
pharmaceuticals and agro chemicals was permitted through the amendment in 1999 (brought into
force retrospectively from 1st January 1995), patents were not granted. The applications were to
be examined only after 31st December 2004. The applicants were, however, allowed Exclusive
Marketing Rights (EMR) to sell or distribute these products in India. The 1970 Act was again
amended in 2005 to bring it in line with TRIPS requirements. The amended Act has provided for
product patents in foods, medicines and chemical substances. Patents are filed with the Patent
Office, administered by the Office of the Controller General of Patents, Designs & Trade Marks
(CGPDTM) which functions under the Ministry of Commerce and Industry. The Head Office is
in Kolkata with offices in Delhi, Mumbai and Chennai with defined territorial jurisdiction for
each one of the offices.

Patent Classification Systems

Indian Patent Classification System:

The Indian Patent Classification System is more than sixty year old. All the areas of technology
are classified under 208 classes which have been grouped into 66 groups. The classes have been
further subdivided into sub-classes. For example, the Heading AGRICULTURE which is
indicated by I has a subheading HARVESTING MACHINERY indicated by the IA. As the
classification system has not kept up with developments in technology, the classes are very
broad. It is not in use.

The International Patent Classification (IPC):

The Strasbourg Agreement (of 1971) provides for a common classification for patents including
published patent applications, utility models and utility certificates. The IPC is a hierarchical
system in which the whole area of technology is divided into sections, classes, subclasses and
groups. The highest level of the hierarchy is the eight sections which correspond to broad fields
in technology. This in turn is divided into classes first and then into 640 subclasses. For example,
Section C deals with Chemistry and Metallurgy; C14 with Skins and Leather and C14C with
chemical treatment of skins such as tanning. Subclasses are further divided into main groups and
subgroups. Main group symbols always end with "/00. For example, 1/00 refers to chemical
treatment prior to tanning. The subgroup is at the lowest level of the hierarchy. The IPC contains
about 70,000 groups. The hierarchy is as follows:

 Section
 Sub-section
 Class
 Sub-class
 Main Group
 Sub-group
More than one classification number can be assigned to a patent document so as to indicate the
various facets of the information contained.

The Classification was periodically revised in order to improve the system and to accommodate
developments in technology. Since 2010, it is revised annually. The “Guide to the IPC” available
at the WIPO website not only explains the structure of the IPC but also how it can be used to
classify and retrieve patent documents. The IPC is thus a useful tool in the retrieval of patents
from different databases.

Cooperative Patent Classification:

The Cooperative Patent Classification (CPC) is a joint partnership between the USPTO and the
EPO to harmonize their existing classification systems (ECLA of the EPO and USPC of the
USPTO) and to migrate towards a common classification scheme. It is compliant with the
International Patent Classification.

INID Codes:

Since patents can be in different languages there may be differences in terminology to describe
the data elements. To overcome this, the INID code was developed as a common code for
identifying the different data elements. These codes were standardized by the International Co-
operation in Information REtrieval among PATent offices (ICIREPAT) which ceased to exist in
1979, when its functions were transferred to the WIPO PCPI (Permanent Committee on Patent
Information). INID stands for Internationally agreed Numbers for the Identification of
(bibliographic) Data. These are numerals and are indicated immediately before the corresponding
bibliographic data elements. As INID codes use Arabic numerals they are language-independent.
A few examples:

 [11] Patent Number

 [22] Date of filing the patent application
 [51] International Patent Classification
 [54] Title of invention
 [57] Abstract
The INID codes can be utilized by the information professional to retrieve patents in different
languages or when creating an in-house database of patents. The codes would be useful in the
context of exchange of data or in the merging of databases.

Sources of Information

Activities relating to patents have their own terminology. The OECD’s ‘Glossary of Patent
Terminology’ is a very useful tool to understand the various terms used in Patenting and Patent
Searching. (http://www.oecd.org/sti/sci-tech/37569498.pdf)

Official Journal of the Patent Office:

A requirement of the 2005 amendment to the Patent Act 1970 was the publication of an Official
Journal of the Patent Office. It is a weekly uploaded every Friday and is available on the patent
office website. The starting year is 2005. It contains information on all matters connected with
the Indian Patent Office, notices issued, orders passed, various rules and procedures to be
followed in obtaining copies of specifications etc. It gives details of the patent applications,
patents granted, opposition proceedings etc. The paper and CD ROM versions have been
discontinued since January 2009. The details given for each published application is given
briefly below: The application number, the date of filing, the date of publication, the title of the
invention, international classification number, priority document number, date and country,
international application number and filing date, applicant name and address, name of the
inventor(s), abstract, at times a drawing of the invention, number of pages for the specification
and the number of claims.

Part II of the Journal deals with information regarding Designs. (For more details check
http://ipindia.nic.in/ipr/patent/patents.htm). The Official Journal of the Patent Office replaces the
Gazette of India, Part 3 Section 2 which ceased in 2005.

WIPO Patent Information Services (WPIS)

A mandate of the WIPO is to offer technical assistance to developing countries. In keeping with
this mandate, WIPO has set-up the WIPO Patent Information Services (WPIS) for handling
individual requests for patent information. The WIPO Patent Information Services for
Developing Countries (WPIS) are offered free of charge to developing countries alone. Some of
the services provided on request are reports on state-of-the-art in a specific technological field;
providing search and examination reports in order to assist patent offices of developing countries
in the assessment of the novelty and the inventive step of a patent application filed with them;
providing information on equivalent patents and patent families; provision of free-of-charge
copies of published patents documents and patent applications.

(http://www.wipo.int/patentscope/en/data/developing_countries.html).

Guide to Technology Databases

WIPO has brought out the “Guide to Technology Databases” to assist the users in identifying
and using publicly available online patent databases. The Guide describes the scope of each of
the databases and evaluates them. An overview of each one of the databases is given including
its strength and weaknesses. It also provides guidelines for search and retrieval. Three categories
of databases have been covered. They are public sector databases (those of national and regional
patent offices), free-of-charge private sector databases and fee-based private sector databases.
Some of the public sector databases are those of the WIPO, the US, Australian Patent Office,
Canadian, Japanese Patent Offices. The free of charge include Google Patents and PatentLens.
Examples of fee based ones are Orbit, Thomson Innovation etc.

(www.wipo.int/freepublications/en/patents/.../wipo_pub_l434_11.pdf)

PatentLens:

Patent Lens is a worldwide, open-access, free full-text patent database. It covers over 8 million
patents and applications – those of WIPO, USPTO, and EPO. It also integrates the INPADOC
legal status feature and patent family information. A useful feature is the searching of DNA and
protein sequences disclosed in patents. Another feature of interest is the “Technology
Landscape” which deal with technologies relevant to life scientists and are ‘interpretation maps’
of specific topics and which analyze patent data relating to particular topics.
 Google Patents:

The service was launched on December 14, 2006. Originally confined to patents and patent
applications of the United States Patent and Trademark Office (USPTO) it includes since August
2012, European patent documents. Google patent search now includes China patents, German
patents, Canada patents, and WIPO Patent details. The Prior Art Finder facilitates the
identification of documents related to a particular patent application or grant. More details, along
with a Prior Art tutorial, can be had at:

https://support.google.com/faqs/answer/2539193?hl=en‎.

Patentscope:

Patentscope is a database administered by the WIPO and provides access to regional and national
patents as well as International Patent Cooperation Treaty (PCT) applications in full text format
on the day of publication. Being an international organisation, the WIPO has provided a search
interface in 9 languages. Cross-Lingual Information Retrieval (CLIR) is a tool that proposes
synonyms for search keywords and automatically translates the keywords for retrieval. It is
available in 12 languages. The Translation Assistant for Patent Titles and Abstracts (TAPTA) is
a statistical machine translation tool that translates patent abstracts and titles. For the biosciences,
published Nucleotide and/or Amino Acid Sequence Listings contained in published PCT
applications is very useful.

The user’s guide to the Patentscope database can be accessed at:

(http://www.wipo.int/export/sites/www/freepublications/en/patents/434/wipo_pub_l434_08.pdf)

Espacenet:

Espacenet was developed by the European Patent Office (EPO) together with the member states
of the European Patent Organisation. Espacenet offers free access to more than 70 million patent
documents worldwide; the coverage goes as far back as 1836. The European Patent Office
(EPO)’s machine translation service Patent Translate service offers on-the-fly-translation of
patent documents for all 28 official languages of the EPO's 38 member states, plus Chinese,
Japanese, Korean and Russian. This service is accessible on Espacenet.

It is also possible to ascertain the legal status of the patent through links with the European
Patent Register (www.epo.org/register). The EPO stores all publicly available information it has
on European patent applications as they pass through the grant procedure. With the help of the
Register, it is possible to find out the stage reached by a European Patent Application, whether it
has been granted or whether any opposition has been filed etc. The Register also displays the list
of documents that are linked to the European Patent Application through the priority number.
When the search is done, and the retrieved document is described, options for further details are
given in the search bar. These are:
  The description of the patent (apart from the bibliographic
description which is displayed at first – the application number,
inventor, priority date, country, abstract etc)
 The claims alone
 Drawings and illustrations
 The original patent document
 Documents cited by the patent and those citing the patent
 The legal status
 The patent family details
The EPO also adds chemical registry numbers to many records.

INPADOC, which stands for International Patent Documentation Center, is an

international patent database produced and maintained by the EPO. INPADOC was
founded in 1972 by WIPO and Austrian Government. Later it was integrated into the
EPO. The database provides information about patent families and also information
concerning the legal status of patent applications. Legal status refers to the various stages
that a patent goes through before and after grant and whether it is in force or not. It also
gives details of the owner of the patent. The database is the most comprehensive one for
performing worldwide patent family searches. INPADOC Legal Status and INPADOC
patent family details can be accessed by selecting these items from the side bar of the
ESPACENET patent database search.

(www.epo.org/searching/essentials/patent-families/inpadoc.html‎)

National/Regional Patent Offices:

Patents of specific national and regional Patent Offices can be identified by searching the
website of these Offices. For example, the US Patent and Trademark Office for US
Patents and Patent Applications (www.uspto.gov).

Historical Information:

For those interested in historical searches, a brief sketch of some of the references which
would be of help is given below:

 Gazette of India
 Patents for Inventions
 Patent Office Journal(POJ)
 Indexes by the Indian Patent Office
 Journal of the Patent Office Technical Society
  Patented Inventions of the CSIR
 INPAT Database
 Ekaswa Databases
 Institutional Sources
 National Institute for Intellectual Property Management (NIIPM)
 Patent Information System (PIS)
Gazette of India, Part 3 Section 2:

This was a weekly publication and contained the notifications and notices issued by the
Controller General relating to patents and designs. It contained information regarding each patent
application as well as restoration and opposition proceedings. A Name Index was also included
in some issues.

Patents for Inventions: abridgments of specifications:

The scanned versions of these volumes can be accessed at www.archive.org. Published in 1800s
they cover British patents taken as early as 1660’s. Each volume covers specific categories such
as Clocks and Watches, Brushing and Sweeping, Steering and Maneuvering Vessels etc. They
are a treasure trove for history of technology and are available as PDF files, epub reader
compatible files etc.

Patents for Inventions Abridgments are available for Indian patents also. They were issued in 66
fascicules each one corresponding to one group of the Indian Patent Classification Scheme and
contain an abstract apart from other details such as inventor, patent number etc.

Patent Office Journal (POJ): (1912-1960):

An annual publication of the Patent Office India from 1912 to 1930, each volume covered the
current year and the one preceding it. However, from 1931 until 1938 it covered the patents filed
in the preceding year alone. After this, the coverage is not so systematic and there is a break in
the issue of the POJ.

Indexes brought out by the Indian Patent Office:

i. The Chronological Index covering the years 1959-1964; 1968 and 1969.

ii. The Reference Index serves as a key to the Indian Patent Classification Scheme. Issued in
1959, it is in three volumes

iii. Subject Matter Indexes. Five volumes were brought out covering 1959-1974. In this Index the
208 classes of the Indian Patent Classification are listed alphabetically.

Journal of the Patent Office Technical Society:

Published since the 1960’s by the members of the Patent Office Technical Society, it gives
statistics of the Patents and Designs filed/granted. State wise, subject wise, and country wise
distribution of applications are also given as well as articles and cases related to patent law.

Patented Inventions of the CSIR (1940-1964):

Two volumes have been brought out by Council of Scientific and Industrial Research of the
patents taken by the organisation. The first was published in 1951 and the second in 1965. The
first volume gives the specification in full while the latter gives the abstracts.

INPAT Database:

This database contains bibliographic information on more than 50,000 patents granted in India
between 1975 and 2002 and can be searched by application number, title, patent number,
Inventor, International Classification number etc. It is a product of The National Institute of
Science Communication and Information Resources (NISCAIR), India.

Ekaswa Databases:

The Patent Facilitating Centre of Technology Information, Forecasting and Assessment Council
(TIFAC) provides free online access to Indian Patent Searchable Databases:

Ekaswa A: Patent applications filed in India as published in the issues of the Gazette of India
(Part III, Section 2) from January 1995 to December 2004.
(http://www.indianpatents.org.in/db/testmaina.asp)

Ekaswa B: Patent applications notified for opposition in the Gazette of India (Part III, Section 2)
published from January 1995 to December 2004.
(http://www.indianpatents.org.in/db/db/testmainb.asp)

Ekaswa C: Patent applications published in Official Journal of Patent office published from
January 2005 onwards.

(http://www.pfc.org.in/db/db.htm) [current information].

Institutional Sources:

The website of the Controller General of Patents, Designs and Trademarks provides information
on all patents, designs, trademarks, geographical indications. http://www.ipindia.nic.in/

National Institute for Intellectual Property Management (NIIPM):

The Rajiv Gandhi National Institute for Intellectual Property Management under the Ministry of
Commerce & Industry is engaged in conducting training and awareness programs relating to
Intellectual Property Rights such as Patents, Designs, Trademarks and Geographical Indications.
(http://www.ipindia.nic.in/NIIPM/)

Patent Information System (PIS):

PIS was established in 1980 at Nagpur by Ministry of Commerce and Industry, Government of
India. It has the following objectives:

 To obtain and maintain a comprehensive collection of patent

specification and patent related literature on a world wide basis.
 To provide technological information contained in patents through
search services and patent copy supply service;
The PIS has many international databases and full text of patents the list of which is given in its
website. The PIS also provides search services including state-of-art-search, bibliographic search
and family patent search. (http://ipindia.nic.in/Niipm/pis.htm)

Traditional Knowledge:

Patents have been applied for and granted in many instances on the basis of the traditional
knowledge of a community or society and though this knowledge is in the public domain it is not
available in any document.

This is because such knowledge is generally passed down from one generation to the next by
word of mouth, and for the most part is undocumented. This is a major cause of concern to
governments as it leads to economic losses and is prejudicial to the interests of the community
and to the nation at large.

Biopiracy refers to the appropriation, generally by means of patents, of indigenous biomedical

knowledge by foreign entities (including corporations, universities and governments) without
compensatory payment.

IPR regimes have been permitting only formal systems of knowledge. India has strong and
worthy informal systems of knowledge. This knowledge has to be codified so that information
contained in them can be documented so that biopiracy can be prevented. India is one of the 193
odd nations that are a party to the international treaty - Convention on Biological Diversity
which came into force on 29/12/1993. 2010 is the International Year of Biodiversity. India has
passed the Biological Diversity Act 2002 which came into force as of 15th April 2004. Under
this, every local body shall constitute a Biodiversity Management Committee and maintain a
People’s Biodiversity Register which shall contain comprehensive information on availability
and knowledge of local biological resources, their medicinal or any other use or any other
traditional knowledge associated with it. The library professional especially those in public
libraries in rural areas can get involved in such endeavours.

Traditional Knowledge Digital Library:

Another immense effort to combat biopiracy is the Traditional Knowledge Digital Library
(TKDL) Project of the NISCAIR, a CSIR institution. The examiners of patents involving neem,
turmeric etc contended that they could not search relevant traditional knowledge as prior art. The
reason for this non-accessibility were that a) such information was not compiled and arranged in
a orderly fashion b) the prior art was confined to texts which were not in the English language.
The TKDL project was established in 2001 to overcome this. At the time the TKDL was
established, it was estimated that nearly 2000 patents relating to Indian Medicinal Systems had
been granted. The TKDL database makes available the information from various sources. TKDL
gives modern names to plants/diseases/processes mentioned in literature relating to Indian
systems of medicine. A classification system, the Traditional Knowledge Resource
Classification, has been developed for Indian systems and is structured on the lines of the IPC so
as to facilitate retrieval of information. (www.niscair.res.in) (www.tdkl.res.in). The CSIR is
publishing a journal titled “Indian Journal of Traditional Knowledge”. It helps Patent Examiners
to carry out prior art searches.

The importance of documenting and identifying traditional knowledge can be seen when one
considers the following.

India (CSIR) fought a successful legal battle in 1999 to revoke a US patent granted in 1995 on
use of turmeric in wound healing to two expatriate Indians at the University of Mississippi
Medical Centre. The use of turmeric to heal wounds is well known in India for generations. The
Council of Scientific & Industrial Research (CSIR), India, New Delhi filed a re-examination case
with the USPTO challenging the patent on the grounds of existing prior art. CSIR argued that
turmeric has been used for thousands of years for healing wounds and therefore its medicinal use
was not a novel invention. Their claim was supported by documentary evidence of traditional
knowledge, including ancient Sanskrit texts and a paper published in 1953 in the Journal of the
Indian Medical Association. USPTO upheld the CSIR objections and cancelled the patent as
there was no novelty involved. The turmeric case was a landmark judgment case as it was for the
first time that a patent based on the traditional knowledge of a developing country was
successfully challenged.

Another attempt to revoke a patent was the one granted by the European Patent Office (EPO) on
the antifungal properties of neem.

TKDL is a database containing information from Indian Systems of Medicine including

Ayurveda, Siddha, Unani and Yoga to be used as prior art. It contains scanned images of
medicinal formulations from original books. TKDL has since its inception prevented many
patents being granted.

The information professional thus has an important or even vital role to play in participating in
the documenting of knowledge/dissemination of such knowledge.

The Role of LISP vis-à-vis Patents

Novelty had been mentioned as being one of the criteria for patenting. Novelty means that the
information contained in the patent should not have been published earlier. It should also not
have been in use. Even an oral description of the invention can negate novelty. It must be
understood that as novelty is considered in a global context the publication of details anywhere
in the world will spoil novelty. An extensive and exhaustive search of literature and patent
publications is necessary to determine novelty.

The LISP can thus help the patentee in several ways:

 before filing of the patent to ascertain if information is already

available in published form or if it is already put into use;
 by creating awareness in the applicants for the need for novelty
and advising them in filing a patent before the matter is submitted
as a dissertation or as a paper.
 by checking for novelty in patents relating to the field of interest of
the parent organization so as to aid in the opposition process.
It has been stated that information contained in a patent is not available elsewhere. It has been
estimated that 80% of the information contained in a patent document is never published
elsewhere and at times it is the only source of information (Poynder). In a press release dated
December 9, 2013, WIPO stated that in 2012 the global patent filing grew by 9.2% i.e. 2.35
million applications were filed. In India, there was an increase of 3.9%. It further states that for
the first time the total number of patent grants worldwide exceeded one million mark in 2012 and
that an estimated 8.66 million patents were in force worldwide as per the data provided by 821
patent offices. Hence, there is a vast store of technical information that has to be tapped by the
information professional.

LISP could also participate in documenting traditional knowledge by identifying sources of

information and formally organizing such information. More about this is given in the next
section.

Conclusion

The above section deals briefly with various features of patents, patenting in India, information
sources and patent search and retrieval. It is confined to free databases and resources and does
not describe commercial databases. There is a plethora of information on the Internet about
patents and patenting which include extensive FAQs and tutorials. The WIPO Academy
conducts several courses including a free basic course on Intellectual Property which is useful in
getting a basic knowledge of IPs.

References

European Patent Office http://www.epo.org/

http://ipindia.nic.in/ipr/patent/faq_patent.htm
http://ipindia.nic.in/ipr/patent/patents.htm
http://ipindia.nic.in/ipr/patent/patents.htm
http://ipindia.nic.in/ipr/patent/patents.htm– Website of Patent Office, India
http://ipindia.nic.in/Niipm/pis.htm
http://www.indianpatents.org.in Patent Facilitating Centre, TIFAC
http://www.ipindia.nic.in
http://www.ipindia.nic.in
http://www.ipindia.nic.in/iponew/TK_Guidelines_18December2012.pdf
http://www.ipindia.nic.in/iponew/TK_Guidelines_18December2012.pdf
http://www.ipindia.nic.in/NIIPM/
http://www.pfc.org.in/db/db.htm
http://www.pfc.org.in/db/db.htm)
http://www.wipo.int/export/sites/www/freepublications/en/patents/434/wipo_pub
_l434_08.pdf
http://www.wipo.int/export/sites/www/freepublications/en/patents/434/wipo_pub
_l434_08.pdf
http://www.wipo.int/patentscope/en/data/developing_countries.html
http://www.wipo.int/patentscope/en/data/developing_countries.html
https://support.google.com/faqs/answer/2539193?hl=en
OECD. Glossary of Patent Terminology. www.oecd.org/sti/sci-tech/37569498.pdf‎
WIPOLex. www.wipo.int
www.archive.org
www.epo.org/register
www.epo.org/searching/essentials/patent-families/inpadoc.html‎
www.epo.org/searching/essentials/patent-families/inpadoc.html‎
www.niscair.res.in
www.patentlens.net/daisy/patentlens/ip/around-the-world.html
www.patentlens.net/daisy/patentlens/ip/around-the-world.html‎
www.tdkl.res.in
www.tkdl.res.in
www.uspto.gov
www.wipo.int/freepublications/en/patents/.../wipo_pub_l434_11.pdf
www.wipo.int/freepublications/en/patents/.../wipo_pub_l434_11.pdf
Questions

1. What is a patent? What are the criteria for patenting?

2. If your organisation is planning to file a patent what would your duties be as a
LISP?
3. What is a patent family? What are the databases you would use for a patent
family search? Do a search on any of the databases indicated by you for a
specific patent family search. Describe your search results and the steps
involved and a critical evaluation of the database searched.
4. Study the WIPO “Guide to Technology Databases” and carry out a search in a
field of interest to you on any one of the public sector databases and free-of-
charge private sector databases. Describe the steps involved and critically
comment on ease of use and online help provided.
5. Do a search using the CLIR tool of Patentscope.
6. Access the Official Journal of the Patent Office. Retrieve a patent
specification relating to your field of interest and describe the various details
given in an Indian Patent Specification and mention the INID codes for the
same.
7. What is priority date and why is it important? From the Official Journal of the
Patent Office, retrieve a specification which gives priority date details.
8. Describe briefly the different types of patent applications.
9. Using the IPC alone retrieve at least 8 patent specifications from any one of
the databases described in the lesson. Use the online IPC from the WIPO
website.
 Trademarks

A trademark is basically a visual symbol which is used to label goods or services so as to

distinguish the goods or services offered by one undertaking from those offered by another. It
can be a name, word, symbol, slogan or even a combination of the above and identifies a given
product. The main characteristics of a trademark are that:

i. it should be distinctive i.e. be able to distinguish the goods and services of another
ii. It should not be deceptive

A service mark is the same as a trademark. However, it identifies a service and not a product.

Trademark Protection in India

Trademarks are administered by the Trademarks Registry under the Controller General of
Patents, Trademarks and Designs. The Head Office is in Mumbai with offices in Kolkata, Delhi,
Ahmedabad and Chennai. It administers the Trade Marks Act, 1999 and subsequent rules.
Registration of a trade mark is not compulsory, however, registration would be useful in dealing
with cases of infringement. The term of a trademark registration is for a period of ten years. The
renewal is possible for further period of 10 years each. It can be used indefinitely by the user.

The Trademark Journal gives details of activities of the Trademark Registry and also the
Trademarks applied for and renewed etc. The Journal can be accessed on the Web.
(www.patentoffice.nic.in).

Public search of trademarks is possible through the following website.

(https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx). The various options that can be
selected for getting more details and information are:

 Class Details (gives the list and description of the 45 Classes as

given in the Nice Classification of Goods and Services)
 Well Known Marks
 Prohibited Marks
 Vienna Code Classification
 International Non-Proprietary Names (INN)
Nice Classification and Vienna Code Classification are described later.

There are three search categories:

 Wordmark (three options are given: starts with, contains, and

match with)
 Vienna Code
 Phonetic.
The ‘CLASS’ criterion is common to all categories and is a compulsory field. Class Details
provides a list of the classes.

The retrieved documents are displayed and reports can be generated for the retrieved documents
selected. A guide for searching the database is available at

https://ipindiaonline.gov.in/tmrpublicsearch/Guidelines.

International Trademark Protection

International protection for trademark is through the Madrid system and is governed by two
treaties – the Madrid Agreement and the Madrid Protocol. Of interest to LISP are two databases
of WIPO. These are the MADRID EXPRESS, which permits the searching of international
trademark registrations, and ROMARIN for details of international marks.

(www.wipo.int/madrid/en/services/madridexpress.htm) (www.wipo.int/madrid/en/romarin).

Specific INID codes are available for searching these databases. These are given in the WIPO
document ‘STANDARD ST.60: RECOMMENDATION CONCERNING BIBLIOGRAPHIC
DATA RELATING TO MARKS’

Nice Classification

The Nice Classification (NCL) is an international classification of goods and services applied for
the registration of marks. It was established by the Nice Agreement, a WIPO-administered
multilateral treaty that establishes the Nice Classification. It was signed in Nice in 1957. The first
edition of the Nice Classification was published in 1963, and revised several times. The current
version is the tenth edition (2013). It contains 45 classes for classifying goods and services.
Under the Nice Agreement the contracting parties are required to include in their official
documents the numbers of the classes to which the goods and services for which a trademark
registration is being sought. (www.wipo.int/classifications/nice/en/)

Vienna Classification

Vienna Classification is an international classification system established by the Vienna

Agreement and is used to classify the figurative elements of marks. The countries which are
party to the Agreement are required to include the classification in their official documents and
registrations.

(www.wipo.int/classifications/nivilo/vienna)

References

https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
 https://ipindiaonline.gov.in/tmrpublicsearch/Guidelines
www.patentoffice.nic.in.
www.wipo.int/classifications/nice/en/
www.wipo.int/classifications/nivilo/vienna
www.wipo.int/madrid/en/romarin
www.wipo.int/madrid/en/services/madridexpress.htm

Questions

1. What is a trademark? Give 5 examples of trademarks that you encounter in daily life.
2. Do a search of trademarks for any product of your choice on the website
‘https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx’ using the “worldmark” and
“class” fields. Identify the steps used in the search. Select at least two of the items
retrieved. Next generate a report of the items selected and give a description of the report
generated.

Industrial Design (ID)

“Industrial Designs” relates to the ornamental or aesthetic aspect of a useful product. It is

concerned with shape, texture, colour, configuration and pattern etc. or the combination thereof
of any object that could be consumer or industry oriented. It may be three-dimensional or two
dimensional. It protects the appearance of a product. As Designs are considered to be intellectual
property, protection is given to them under law. The purpose of design registration is, therefore,
to ensure that creators of designs are not deprived of the economic benefits due to them by others
applying it to their goods.

ID Legislation in India

In India, the Indian Design Act, 1911 has been replaced by the New Designs Act, 2000. Novelty
is a criterion here also as in the case of patents. The design should be new or original, not
previously published or used in any country before the date of application for registration. The
duration of the registration of a design is initially ten years from the date of registration. It can be
extended by a further period of 5 years. The Register of Designs is a document maintained by the
Patent Office, Kolkatta. This is open for public inspection on payment of a prescribed fee.

Part II or Part III of the Official Journal of the Patent Office, which is published weekly, covers
all matters dealing with Industrial Designs and gives details of the Designs applied for and other
official matters in relation to Designs. The Journal is published by the Controller General of
Patents, Designs and Trademarks. Design application status can be ascertained by searching
Indian Design Application Retrieval System.

(http://ipindiaservices.gov.in/designapplicationstatus/designstatus.aspx)
 International ID Legislation

Hague System: Under the Hague System for the international registration of industrial designs, it
is possible to obtain protection in several countries through filing one single international
application.

Hague Express: The Hague Express Database can be searched for information on international
registration of designs. (http://www.wipo.int/ipdl/en/hague/search-struct.jsp).

Locarno Classification (1979)

The Locarno Classification is a classification for industrial designs. and is based on a on the
Locarno Agreement, a multilateral treaty administered by WIPO. India follows the international
classification for industrial designs. (http://www.wipo.int/classifications/nivilo/locarno/)

References

http://ipindiaservices.gov.in/designapplicationstatus/designstatus.aspx
http://www.wipo.int/classifications/nivilo/locarno/
http://www.wipo.int/ipdl/en/hague/search-struct.jsp

Questions

1. Refer to the Part in the Official Journal of the Patent Office dealing with designs and
summarize briefly the information available in the Journal.
 Geographical Indications (GI)

A Geographical Indication is a notice stating that a given product has its origin in a given
geographical area. This implies that the product (either natural or crafted) has a certain unique
quality. It is thus used to identify goods having special characteristics originating from a definite
Geographical Territory. The product derives its qualities and reputation from that place. It could
apply to both agricultural produce as well as handicrafts and manufactures associated with a
region. Agricultural products have qualities that are due to specific local factors such as soil,
climate etc. Certain handicrafts and manufactures are associated with a certain place. That is,
there is a connection between the product and the place and the customer is assured of the quality
of the product when such a tag is used. The registration of GI gives the party registering the GI
and authorized users the legal right to make exclusive use of the GI and to exclude unauthorized
persons from misusing the GI. GI thus helps producers differentiate their products from other
competing products. GIs, thus help in promoting trade and commerce for the regional product
and in preventing unfair competition.

GI in India

India, as a member of the World Trade Organization (WTO), enacted the Geographical
Indications of Goods (Registration & Protection) Act, 1999 which has come into force with
effect from 15th September 2003. It prevents unauthorized use of a Registered GI by others. The
Registration is valid for 10 years. It can be renewed indefinitely on the payment of a fee. The Act
is administered by the Controller General of Patents, Design and Trade Marks who is the
Registrar of Geographical Indications. The Geographical Indications Registry is located at
Chennai. Darjeeling tea became the first GI tagged product in India.

GI registrations have been given for many items in India such as:

 Mysore Silk
 Muga Silk of Assam
 Dharwad Peda
 Malabar Pepper
 Salem fabric
 E.I. Leather
 Bhavani Jamakalam
 Tirupathi Laddu etc.
The journal for GI registrations can be accessed on the web.

(http://ipindia.nic.in/grindia/journal)

To differentiate between trademark and GI, we could take the following hypothetical example –
Rice from the Nellore area referred to as Nellore Rice could be taken to be a GI but such rice can
be marketed under the trademark “Diamond”.
 International GI

The International Agreement for GI is the Lisbon Agreement.

(www.wipo.int/geo_indications/en/)‎‎.International‎Registrations‎can‎be‎searched‎using‎LISBON
EXPRESS (www.wipo.int/ipdl/en/search/lisbon)

References

http://ipindia.nic.in/grindia/journal
www.wipo.int/geo_indications/en/‎
www.wipo.int/ipdl/en/search/lisbon

Questions

1. What is GI? Explain with examples.

2. What Legislation applies to GI in India?
3. Refer to the Journal for Indian GIs. Identify 2 GIs each from two different states of India
for the year 2013, 2012 and 2011. Give details regarding the GIs identified as given in the
Journal.