Intellectual Property Rights

Situation/Example
 Situation 1: John created a machine which could get X-
Ray directly on digital form rather than a photo plate
 John have invested around Rs.50 lakhs to develop this
technology
 After one month of launching this product in the market,
another company comes up with a copy of the product
 How can John protect his invention/product?
 Can John stop the competitor product from being sold?
Key Features of IPR
 Helps business organisations-Enabling innovation and
creativity
 Leverage the investment made into product research and
development
 Different from traditional property/asset right
 Inventions,
 Literary and artistic work, designs
 Names and Images used in commerce
Cont.
 Classified into broadly following categories:
 Patents

 Copyright

 Trademark

 Designs

 Trade secrets

 IPR’s are referred to as “Invisible Infrastructure of

Innovation”- Driving Innovation
 Patent

 Protect the new product and process for 20 years

 Exclusive right to sell, use and license is provided

 Registration of patent is mandatory

 An application has to be filed with Indian Patent Office

 Not to publish details of the invention before patent is

granted
 One of the part’s of this bottle was patented. Can you
identify?
Cont.

 Valve that allows liquid products to be stored without leaking

and could be useful for upside down usage

 “A self-sealing valve is provided for fluid dispensing packages”

was patented in 1991 by a person called Paul Brown.

 He later licensed the technology to companies such as Heinz

IBM: Gaining through licensing
 IBM’s patent portfolio is one of the largest in the world

 IBM was not effectively using all its innovations and

patents-Not commercializing the innovations

 Hence started to license it to other business

organizations

 Earns more than $1.5 billion as licensing fee and royalty

Oil India Patent
 Oil India has been granted patent by the European Patent Office for
an invention titled ' A method for preventing wax deposition in oil
wells with packers.'
 The patent grant amounts to recognition of the uniqueness of the
solution provided by Oil India to the problem of heavy wax
deposition in flowing oil wells completed with packers
 Filed for patent in India as well as EU and US.
 Patent Co-operation Treaty could be used for international
filings
Situation/Example

 Situation 2: Paul Raj developed a concept called Flyguard-

a biometric card with all the travel and personal details of

travellers Paul Raj applied for patent for this concept

 Paul Raj applied for patent for this concept in 2007

 Can he patent this concept?

What can be patented?

 Test for granting patent

 Novelty- Invention must be new and not know to the world

 Non-obviousness- An inventive step and not obvious to any

expert

 Utility and Enablement-Practical or commercially significant

Cont.

 Paul Raj case-

 Knowledge was already in the public domain

 Cannot patent as the criteria’s of Novelty and Non-

obviousness are not fulfilled

 Filed a case against TCS for using similar concept- Court didn’t

accept as the concept was not original

Excluded from Patenting - Indian context

 Surgical practices or treatment process- Process of doing

operation/surgery cannot be patented

 Agricultural practices cannot be patented- New way of

cultivation cannot be patented

 Plants and animals cannot be patented

 Computer programme code

 These are public interest exceptions to patent protection

To Patent or not to patent : TVS-Bajaj case

 Bajaj gained a patent for “An improved internal combustion

engine working on four stroke principle” in 2005.

 Bajaj claims this as an “unique technology of using two spark

plugs for efficient burning of lean air fuel mixture in a small
bore engine (bore size between 45 mm and 70 mm)”.

 TVS comes up with FLAME in 2007 with similar engine

 Legal dispute starts between TVS and Bajaj

Cont.
 TVS claimed that this technology was in public knowledge
with Honda holding a patent from 1985
 Bajaj refutes the claim
 Does patenting provide any advantage if the competitor
could easily copy the technology?
 Should patent be sought when your competitor can drag
into long patent battles based on existing public
knowledge ?
Cont.
Key factors that could be considered:

 Patent infringement is difficult to prove if it is not an

unique technology

 Patenting does not provide benefit if competitors could

work around the patented technology for advancement

 Cost of attaining and protecting patent is worthwhile only

if other companies are willing to license it from you
Ethical issues in IPR
 Private property interest may adversely affect the society

 Need to balance the public interest with the private

property interest- business and society issues for
governments

 IPR laws usually have an in-built legal mechanism enabling

governments to intervene

 Ethical dilemma: Should the TRIPS waiver be applied in

the context of COVID?
Compulsory Licensing
 Compulsory licensing is the right of the government to put to use a
patent in public interest.
 Government can allow business organizations to use the patent on a
licensing fee fixed by government
 In following cases:
 “the reasonable requirements of the public with respect to the patented
invention have not been satisfied, or
 the patented invention is not available to the public at a reasonably
affordable price”

Nexavar Compulsory Licensing
 Compulsory Licensing was granted to Natco Pharma for
producing a generic version of Bayer’s Corporation’s patented
medicine Nexavar

 This medicine is used in the treatment of liver and kidney

cancer

 Price of medicine was around Rs.2.8 lakh for a monthly course

 Natco Pharma promised to reduce it to around Rs 8800 per

month
Delhi Photocopy case
 Major academic publishers filed case against a photocopy
shop in New Delhi

 Publisher’s contest that the photocopy person is using the

material to prepare course pack for students and it is an
copyright infringement

 Court held that the matter is falling under the fair use of
copyright
Fair Use of Copyright
Exceptions under fair use of copyright

 Use of copyright for educational or research purpose

 Use of copyright for reporting current events in media

 Use of the work aimed at the benefiting the visually

impaired. facilitates reproducing, issuing of copies, adapting
or communicating any work in any accessible format, for
visually impaired persons
Trademarks

 Words, logo, symbol, packaging and colour combination which

could distinguish the products and services are protected

 Trade mark could be registered for a period of 10 years

 Helps in protecting the brand value

 The concerned legislation in India is the Trade Marks Act, 1999

Cont.
 Can you license trade mark?

 Can you sell your trade mark?

 Certification and collective marks are also protected

under Trademark
Cont.
Cont.

 Using an identical or similar mark in relation similar goods

would be a case of passing off

 This is treated as trademark infringement.

 Causes likelihood of confusion in the minds of customers

 Reputation loss to the original trade mark owner

Trade-dress
 Whether packaging and combination of colours, textures,
graphics are important?
Cont.
 The purpose of trade dress protection is to protect
consumers from such packaging or appearance of
products that are designed to imitate other products

 ITC-Britannia case in India- Britannia’s packaging was

found to deceptively similar to ITC (Delhi High Court
Single Judge)

 In U.S- Trade dress registration is provided to Apple Store

 Bombay High Court stated that the Poma-ex used every
single feature of Pidilite’s product packaging in its
minutest details
Sound Marks
 Sound performs the trademark function of uniquely
identifying the commercial origin of products or services

 ‘Factual Distinctiveness’ of the sound is the required

 Here ‘Factual Distinctiveness’ means the immediate recall

value of sound with the product/service.

 Eg. ICICI corporate jingle is a protected sound mark

 Can fragrance be protected under trade-mark?

Whirpool Case

 Whirlpool had registered the trademark in India for

purpose of selling washing-machine but did not renew it

 Later another company wanted to register the trademark

Whirlpool for washing machine

 Can another company register the trademark?

Well-know marks
 In case of well-know marks, the market reputation needs
to be considered.

 This includes even the trans-boundary reputation

 Even when not registered in India as a trademark

protection could be given to stop dilution of brand name

 Mercedes Benz- Name and logo was used in apparels

 Rolex- Name was used for artificial jewelry

Descriptive Words
 Cadila Healthcare Ltd. launched a product containing, a sugar
substitute, under the brand name ‘Sugar Free’

 Cadila states that they have coined and adopted the brand
description ‘Sugar Free’ and were the first user of the said
brand description in India.

 Amul adopted a brand-name consisting of the words ‘Sugar

Free’ for their frozen dessert,

 Cadila wants Amul to drop the description from the product

Cont
Is Domain name a Trademark?

 Satyam Infoway Ltd, a leading IT service company,

registered several domain names like ‘www.sifynet’,
‘www.sifymall.com’.

 Another company Siffynet Solutions Pvt Ltd began doing

business of network marketing under the domain names,
‘www.siffynet.net’ and ‘www.siffynet.com’.

 Satyam Infoway claimed it as a trade mark breach

 Mindtree being used by Mindtree consulting, Bangalore
(www.mindtree.com) and Mindtree solution (Katmanadu
based company using domain name www.mind-tree.com)

 WIPO domain name dispute resolution body heard

contention from both the companies and finally ruled in
favour of Indian company.

 Indian IT service company was already in existence and

have been using the trademark for prolonged period of
time
Trademark for Building
 Taj Mahal palace hotel obtained trademark in July 2017

 First building in India to obtain trademark protection

Patenting gone wrong
 US allowed to patent use of Neem in agricultural purpose

 US also allowed to patent medicinal use of Turmeric

 Later after India opposed to this the patents were

revoked