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Ipr-Notes Compress
Ipr-Notes Compress
Ipr-Notes Compress
Intellectual property, in its literal sense, means the things which emanate from the exercise of the
human brain. It is the product emerging out of the intellectual labour of a human being. It
involves the visible expression of a mental conception, the work of both brain and hand.
Intellectual property refers to creations of the mind: inventions, literary and artistic works, and
symbols, names and images used in commerce. Intellectual property is divided into two
categories.
1.1Industrial Property includes patent for inventions, trademarks, industrial designs and
geographical indications.
1.2Copyright includes literary works such as novels, poems and plays, films, musical works,
artistic works such as drawings, paintings, photographs and sculptures and architectural designs.
Rights related to copyright included those of performing artists in their performances, produces
of phonograms and those of broadcasters in their radio and television programs.
Intellectual property rights are like any other property rights-they allow the creator, or owner, of
a patent, trademark, or copyright to benefit from his or her own work or investment.
These rights are outlined in Article 27 of the Universal Declaration of Human Rights, which sets
forth the right to benefit from the protection of moral and material interests resulting from
authorship of any scientific, literary or artistic production.
The importance of intellectual property was first recognized in the Paris Convention for the
Protection of Industrial Property in 1883 and the Berne Convention for the protection of Literary
and Artistic Works in 1886. Both treaties are administered by the World Intellectual Property
Organization (WIPO).
The author of a work may relinquish all or any of the rights in the copyright in the work by
giving notice in the prescribed form to the Register of Copyrights and there upon, such rights
cease to exist from the date of the notice.
On receipt of the above notice, the Registrar of copyrights shall cause it be published in the
official Gazette and in such other necessary manner.
The relinquishment of all or any of the rights in the copyright in a work does not affect any rights
subsisting in favour of any person on the date of the above notice.
7.4.Procedure
On a complaint being made to the Copyright Board, the Board, after giving the owner of the
copyright an opportunity of being heard and after holding necessary enquiries, may direct the
Registrar of Copyright to grant to the complainant a licence to republish the work, perform the
work in public or communicate the work to the public by broadcast, as the case may be, subject
to payment to the owner of the copyright reasonable compensation and subject to other terms and
conditions, if necessary. The Registrar will then grant the licence on payment of such fee as may
be prescribed.
10.2.Civil Remedies
10.2.1.Procedure
The procedure before the court in a suit for infringement copyright is governed by the Code of
Civil Procedure.
10.4.Interlocutory Injunction
In order to secure immediate protection from a threatened infringement or from the continuance
of an infringement, a plaintiff may apply for an interlocutory injunction pending the trial of the
action or further orders. An application for such relief is made along with the plaint supported by
affidavit evidence. Very often an ex parte injunction is also sought, i.e. a temporary injunction
granted for a short period, for a week or so,before the defendant has notice of the suit or is heard.
For obtaining an interlocutory injunction the plaintiff has to establish a prima facie case and that
the balance of convenience is in his favour and that if the interim order is not granted it will
cause irreparable injury to the plaintiff.
The defendant if injured as a result of the injunction, will be entitled to compensation by virtue
of an undertaking as to damages by the plaintiff which is an invariable condition of the granting
of such an injunction. An interlocutory injunction will not be granted where the defendant might
suffer irreparable injury from an injunction pending trial and the plaintiff can be protected by the
defendant being ordered to keep an account, nor will it normally be granted where a bona fide
defence of fair dealing has been pleaded, or if the plaintiff has been guilty of undue drill coming
to the court or his conduct amounted to acquiescence in the infringement or if there is any
substantial doubt as to the plaintiff's right to succeed. It has been held that in considering whether
to grant an interlocutory injunction the court must look at the whole case. It must have regard not
only to the strength of the claim, but also to the strength of the defence and then decide what is
best to be done. The remedy by way of interlocutory injunction must not be made the subject
of strict rules.
10.7.1.Threat action
When the owner of the copyright in a work comes to know that his copyright is being infringed
by a person he normally sends a notice to that person requesting him to forthwith discontinue the
act which constitutes infringement of the copyright. If the person complies with the request the
matter ends there subject to the question of compensation for damages and conversion, if any,
being settled by mutual agreement.
This procedure is adopted only where the nature of the infringement involved is such that it is
not likely to be repeated, e.g. the performance in public of a dramatic or musical work where the
damages involved will be negligible. But where the infringement involves the reproduction of a
copyright work in large numbers and the damages involved might be heavy the owner of the
copyright sends notices to the persons involved in the infringing acts, threatening them with legal
proceedings. The threat may be direct or indirect. It may be addressed to particular persons or
generally and it may be made through circulars, advertisements or otherwise.
10.7.2.Slander of Title
If a publisher publishes the work of A under the name of B with the approval of B and without
the consent of A, A may, in the absence of any express or implied contract, sue the publisher and
B for malicious falsehood or slander of title.
Copyright Act provides that the author of a work has the right to claim the authorship of the
work. The Berne Copyright Convention also recognizes this right. If this right is infringed the
author can take proceedings against the persons concerned for the relief of injunction and
damages. The right to claim authorship exists even after the assignment of the copyright in the
work and can be exercised by the legal representatives of the author.
The plaintiff has to prove that the statement or representations complained of were false or
untrue; that they were made maliciously, that is, without just cause or excuse, and that the
plaintiff has suffered special damage thereby.
Malice in the law of slander of title and other forms of injurious falsehood means some
dishonest or otherwise improper motive. An intent to injure without just cause or excuse
is sufficient.
12.1. Patent
A patent is an exclusive right granted to a person who has invented a new and useful article or an
improvement of an existing article or a new process of making an article. It consists of an
exclusive right to manufacture the new article invented or manufacture an article according to the
invented process for a limited period. After the expiry of the duration of patent, anybody can
make use of the invention.
The concept of patent and its essential ingredients like novelty, inventive step, lack of
obviousness and sufficiency of description have remained the same ever since it was conceived
over four hundred years ago.
A patent is a form of industrial property or as it is now called intellectual property. The owner of
the patent can sell this property. He can also grant licences to others to exploit the patent. The
property in a patent is similar in many respects to other forms of property.
A patent being a creation of statute is territorial in extent. A patent granted in one state cannot be
enforced in another state unless the invention concerned is also patented in that state.
A patent is not granted for an idea or principle as such, but for some article or the process of
making some article applying the idea.
12.2.Invention
To invent literally means to find out something, to discover something not found or discovered
by anyone before. It is the production or introduction of a new thing for the first time by
exercising one’s own mind, skill and labour. It must not be known to the public prior to the claim
made by the inventor.
12.2.1.Definition-Under S. 1(1)(j) of the Patents Act, 1970 (as amended in 2002) an invention is
defined as follows: ‘Invention means a new product or process involving an inventive step and
capable of industrial application.
The Patent (Amendment) Act 2005 defines ‘new invention’ to mean any invention or technology
which has not been anticipated by publication in any document or used in the country or
elsewhere in the world before the date of filing patent application with complete specification i.e.
the subject matter has not fallen in the public domain or that it does not form part of the state of
the art. Patent can be granted for either products or processes. In the case of product patent, the
product itself is patented by the inventor. For example, say if the inventor invents a new drug
which can itself prevent the occurrence of influenza he would get a patent over the product i.e.
the drug itself. This means that the exclusive right to manufacture that drug vests with the
inventor. Consequently, none apart from the one who holds the patent in the product can
manufacture the product
irrespective of the fact that the new manufacturer uses a process completely different from the
patent holder.
It has been held that a method or process is a manufacture if it
• results in the production of some vendible product, or
• improves, or restores to its former condition a vendible product or
• has the effect of preserving from deterioration some vendible products to which it is applied.
A patent can be obtained only for an invention which is new and useful. The invention must
relate to a machine, article or substance produced by manufacture, or the process of manufacture
of an article. A patent may also be obtained for an improvement of an article or of a process of
manufacture. In regard to medicine or drug and certain classes of chemicals no patent is granted
for the substance itself even if new, but a process of manufacturing the substance is patentable.
The applicant for a patent must be the true and first inventor or a person who has derived title
from him, the right to apply for a patent being assignable. He must give a full and sufficient
disclosure of the invention and specify the precise limits of the monopoly claimed. The invention
claimed must be novel and must not be obvious to those who are skilled in the art to which it
relates.
The three essential requirements of a patentable invention are novelty, inventiveness (i.e.
inventive step or lack of obviousness) and utility. There are some inventions which may satisfy
the above criteria but are still not patentable.
13.1.What is a Patent
A patent is an exclusive right granted to a person who has invented a new and useful article or an
improvement of an existing article or a new process of making an article. It consists of an
exclusive right to manufacture the new article invented or manufacture an article according to the
invented process for a limited period. After the expiry of the duration of patent, anybody can
make use of the invention.
The concept of patent and its essential ingredients like novelty, inventive step, lack of
obviousness and sufficiency of description have remained the same ever since it was conceived
over four hundred years ago.
A patent is a form of industrial property or as it is now called intellectual property. The owner of
the patent can sell this property. He can also grant licences to others to exploit the patent. The
property in a patent is similar in many respects to other forms of property.
A patent being a creation of statute is territorial in extent. A patent granted in one state cannot be
enforced in another state unless the invention concerned is also patented in that state.
A patent is not granted for an idea or principle as such, but for some article or the process
of making some article applying the idea.
14.1.In determining whether what the alleged infringer is doing amounts to an infringement
of a particular patent three questions are involved:
1. the extent of monopoly right conferred by the patent which has to be ascertained by a
construction of the specification, particularly the claims. Construction
2. whether the alleged acts amount to making, using, exercising, selling or distributing a product
or using or exercising a method or process in the case of a process patent, and
3. whether what the alleged infringer is doing amounts to an infringement of the monopoly
conferred by the patent grant.
First, in order to ascertain the scope of the claims made in the patentee’s specification, the court
must ascertain the essential integers of the claim. This is a question of construction and no
general rule can be laid down. The claim must be construed as a document without having in
mind the alleged infringement. Secondly, the essential integers having been ascertained, the
infringing article must be considered. To constitute infringement the article must take each and
every one of the essential integers of the claim. Non-essential integers may be omitted or
replaced by mechanical equivalents;there will still be infringement. Where the invention resides
in a new combination of known integers, or merely in a new arrangement and interaction of
ordinary working parts, it is not sufficient to show that the same result is reached; the working
parts must act on one another in the way claimed in the claim of the patent.
If the patentee has in his specification limited the essential features of his claim in a manner that
may appear to be unnecessary, it may be that the copier can escape infringement by adopting
some simple mechanical equivalents so that it cannot be said that every essential integer of the
claim has been taken.
14.5.Reliefs
The reliefs available to a successful plaintiff in a suit for infringement include:
1. an injunction, and
2. either damages or account of profits.
The power to grant reliefs is subject to certain restrictions. Thus where the patent is endorsed
‘licences of right’, and the infringing defendant is ready and willing to take a compulsory licence
no injunction will be granted. In the case of innocent infringement no, damages or account of
profits will be granted. Damages or account of profits may be refused in respect of infringement
committed after a failure to pay the renewal fee within the prescribed period. In certain
circumstances damn or account of profits will not be granted in respect of the use of the
invention before the date of amendment where the specification has been amended after its
publication. If the patent is held to be only partially valid, reliefs may be granted in respect of the
valid claims which is infringed,provided the plaintiff proves that the invalid claim was framed in
good faith and with reasonable skill and knowledge.
14.5.1.Interlocutory Injunction
The plaintiff may at the commencement of the action move for an interim injunction to restrain
the defendant from committing the acts complained of until the hearing of the action or further
orders.
The principles upon which an interlocutory injunction may be granted in a patent action are the
same as in any other action, namely, that the plaintiff should make out a prima facie case and
also that the balance of convenience lies in his favour. In patent actions it may frequently happen
that the defendant is able to show that there are substantial grounds for disputing the validity of
the patent and often also that there are good reasons for saying that his apparatus does not
infringe the plaintiff's claim. If either of those circumstances are shown to be present, the court
may not grant an interlocutory injunction. The onus of showing a prima facie case which lies on
the plaintiff is a heavy one and that it is comparatively easy for the defendant to establish a
defence sufficient to prevent the grant of such an injunction. The remedy by interlocutory
injunction is kept flexible and discretionary and is not made the subject of strict rules.The object
of an interlocutory injunction is to protect the plaintiff against injury by violation of his rights for
which he could not be adequately compensated in damages recoverable in the action if he
succeeds at the trial. The court must weigh one need against another and determine where the
balance of convenience lies. In granting the injunction the court must be satisfied that the claim
is not frivolous or vexatious; in other words, that there is a serious question to be tried.
Various factors are taken into consideration in deciding the balance of convenience, such as
whether the patent is a new one or an old one, whether the defendant's trade is a new one or an
old established one and so on. If a patent is a new one, challenging its validity may be sufficient
for a refusal of an injunction, but if the patent is sufficiently old and has been worked, the court
would, for the purpose of temporary injunction presume the patent to be a valid one. Even if a
likelihood of infringement is established, interlocutory injunction will be refused if there is a
serious attack on the validity of the patent. If the patent relied on will expire before the action
can be heard, the balance of convenience can be considered against the grant of an interlocutory
injunction.
14.5.3.Assessment of damages
In assessing damages the sole question is what is the loss sustained by the patentee by reason of
the unlawful sale of the defendant’s goods. The loss must be the natural and direct consequence
of the defendants' acts. The object of damages is to compensate for loss or injury. The general
rule is that the measure of damages is to be, so far as possible, that sum of money which will put
the injured party in the same position as he would have been in, if he had not sustained the
wrong. There are two essential principles in valuing the damages, first, that the plaintiffs have
the burden of proving their loss; second, that defendants being wrongdoers, damages should be
liberally assessed but the object of this is to compensate the plaintiffs and not to punish the
defendants.
The measure of damages may be estimated by applying the following principles:
1. Where the patentee manufactures the product and does not grant licences, the measure of
damages will be the profit which would have been realized by the owner of the patent if the sales
of the infringing articles had been made by him.
2. Where the patent is exploited through the granting of licences for royalty payments, the
measure of damages which the infringer must pay will be the sums which he would have paid by
way of royalty, if instead of acting illegally, he had acted legally. The solution to this problem
will depend upon the evidence as the rates of royalty may vary from time to time.
3. The pecuniary equivalent of the injury resulting from the natural consequences of the acts
done by the defendants. An estimate should be made of the number of articles the plaintiff did
sell less by reason of the acts of the defendants. Then find the profit that they would have made
upon each article.
4. Where only a part of a complex machine is protected by a patent the importance of the
patented part to the whole machine should be considered. If it forms the very essence of the
machine damages may be measured by the profit on the whole machine; otherwise account
should be taken only of the patented part.
17.2.1.Statutory Provisions
The procedure for registration of trade marks is contained in Ss. 18 – 24 of the Trade Marks Act
1999.
19.3.Registration of Designs
Registration of designs is done by the Patent Office at Calcutta. The procedure for registration is
contained in Ss. 5-10 of the Designs Act and Rules prescribed.
Any person claiming to be the Proprietor of any new and original design not previously
published in any country may apply for registration of the design. For the purpose of registration
goods are classified into 32 classes under the Third Schedule the Designs Rules 2001.
An application may endorse on the application a brief Statement of the novelty he claims for his
design as for example, ‘novelty resides in the shape of the ash-tray as illustrated’,‘novelty resides
in the shape or configuration in the bookshelf as illustrated’ and so on
On receipt of an application the application will be examined by an examiner as to whether the
design is registrable under the Act and the Rules and submit a report to the controller.
If the application is in order and satisfies the requirements of the Act and the Rules .
Controller will accept the application and register it. The design when registered will be
registered of the date of the application for registration. There is no provision under the Act for
advertisement of the application before registration or any opposition proceedings as in the
Patent or Trade Marks Act.
If the application due to any default on the applicant is not completed within the prescribed time
it will be deemed to be abandoned.
If the controller refuses an application any person aggrieved may appeal to the High Court.
Certain emblems and seals like the emblem and seal of the United Nations Organisation, of the
World Health Organisation, of the Government of India or any State and the Indian National Flag
are not registrable as designs.
Registration of the design in the first instance will be for a period of ten years which can
be extended by five years.
The controller has power to correct clerical errors in the register on a request made for the
purpose in the prescribed form [S. 29].
19.4.Rights conferred by Registration [Ss. 11 – 15]
The registered proprietor of a design has the exclusive right to apply a design to any article in
any class in which it is registered. This right is called a Copyright in the design.
The nature of the Copyright is different from the Copyright under the Copyright Act.
Copyright in a design can last for a maximum period of fifteen years. Thereafter it becomes
public property and anybody can use it.
The rights conferred by registration are subject to the following conditions:
(1) If exact representations or specimens of the design are not supplied to the Controller by the
registered proprietor as required the Controller may erase his name from the register.
(2) The articles on which the design is applied should marked in the prescribed manner with the
word ‘Registered’ or its abbreviation ‘Regd’ or ‘RD’ followed by the registration number. This
requirement may waived in the case of certain articles subject to conditions.
If the proprietor fails to apply the marking as above, he will not be entitled to recover any
penalty or damages in respect of any infringement of copyright unless he shows that he has taken
all precautions to ensure the marking of the article or that the infringer had knowledge of the
existence of the Copyright in the design.
Registration does not in fact give any exclusive right to the registered proprietor. What it gives is
the right to stop others from infringing his registration by making, applying the design or
importing articles bearing the design and so on. Registration is not a guarantee of its validity
since the official novelity is a very limited one.