MODULE-01 INTRODUCTION TO IPR

INTRODUCTION TO IPR
With the ever-changing technology and shrinking world boundaries,
the term “Intellectual Property” is coming to be used more often than
ever. From tech companies, such as Samsung, Apple, and Google to
Biotechnology enterprises such as Monsanto, everyone is vigil about
protecting their Intellectual Property. Therefore, it becomes important
to understand what Intellectual Property is and what are the rights that
individual acquire as their Intellectual Property rights.
Meaning of Intellectual Property
Intellectual Property refers to the creations which are made using the
mental power/intellectual power of individuals. This includes a
variety of creations such as literary works, technological inventions,
performances, traditional practices etc.
These can be broadly divided into two categories:
➢ Intellectual property used for protecting industrial inventions
such as Patents, Trademarks etc.
➢ Intellectual property used for protecting literary interests such as
copyright, related rights etc.
MEANING OF INTELLECTUAL PROPERTY
Intellectual property (IP) pertains to any original creation of the
human intellect such as artistic, literary, technical, or scientific
creation.
Intellectual Property Rights
Introduction- Every individual who creates a literary work or invents
an industrial technology is vested with certain rights such as the
exclusive right to such literature or invention, right to gain monetary
benefits from such intellectual property. All such rights that accrue to
a person from the creation of intellectual property are known as
Intellectual Property Rights.

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Intellectual Property Rights can be held by an individual or a
company. Generally, rights pertaining to literary works are held by an
individual and industrial inventions are held by companies. But there
are exceptions to this argument as well.

Meaning of IPR:
➢ Intellectual property rights are the rights given to persons over
the creations of their minds. They usually give the creator an
exclusive right over the use of his/her creation for a certain
period.
➢ Intellectual property rights (IPR) refer to the legal rights given to
the inventor or creator to protect his invention or creation for a
certain period. These legal rights confer an exclusive right to the
inventor/creator or his assignee to fully utilize his
invention/creation for a given period. Need for IPR
1. Encouraging the creativity-The objective of intellectual
property protection is to encourage the creativity of the human
mind for the benefit of all and to ensure that the benefits arising
from exploiting a creation benefit the creator. This will
encourage creative activity and give investors a reasonable
return on their investment in research and development.
2. Protecting the rights of the creator-IP empowers individuals,
enterprises, or other entities to exclude others from the use of
their creations. Intellectual Property empowers individuals,
enterprises, or other entities to exclude others from the use of
their creations without their consent.
3. Increased market value of your business – IP can generate
income for your business through licensing, selling or
commercializing protected products or services. This, in turn,
can improve your stock market or increase your profit. In the
case of a sale, merger, or acquisition, registered and protected IP
assets can increase the value of your business.

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 4. Convert ideas into profitable assets – IP can help to convert
creative ideas into commercially successful products and
services. For example, licensing your patent or copyright can
result in a steady stream of royalties and additional income that
can result in profitable assets.
5. Market the products and services of the business – IP is
necessary to create an image for your business-like trademark,
logo, or design of your product. So, it will help in differentiating
the product and advertise and promote it to the customers.
6. Increase export opportunities for the business – IP can
increase the competition in export markets. One can use their
brands and design for marketing foreign goods and are looking
for franchising agreements with foreign companies or to export
your patented products. Consumers will not be confident buying
means without products or reliable services, international
trademark protection and enforcement machinery to discourage
counterfeiting and piracy.
Nature of Intellectual property:
1. Intangible: Intellectual property is intangible in nature, which
cannot be touch or seen but has some value in it.
2. Territorial: Unlike immovable property, IP property is
commonly used in other countries. Therefore, IP-related issues
tend to be resolved according to the national laws of the
countries involved.
3. Exclusive right to owners: This means that parties other than
the owners do not have the right to use the IP without
permission.
4. Assignable: Since an IP is a form of rights, it can be assigned. It
can be sold, purchased, licensed, hired, or attached.
5. Independence: In most cases, IP rights are embodied in objects,
with different types of IP rights subsisting in the same type of
object.

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 6. Subject to Public Policy: IP rights need to comply with public
policy. While owners of IP seek to achieve adequate
remuneration, they also must make sure that consumers can use
their creations with minimal inconvenience.
7. Indivisible: Multiple parties can have interests in an original
creation without influencing the interests of other right holders
on the same item. Due to its indivisible nature, IP is a resource
that cannot be exhausted.
Kinds of Intellectual Property Rights
Introduction-The subject of intellectual property is very broad. There
are many different forms of rights that together make up intellectual
property. IP can be basically divided into two categories, that is,
industrial Property and intellectual property. Traditionally, many IPRs
were collectively known as industrial assets. It mainly consisted of
patents, trademarks, and designs. Now, the protection of industrial
property extends to utility models, service marks, trade names, passes,
signs of source or origin, including geographical indications, and the
suppression of unfair competition. It can be said that the term
‘industrial property” is the predecessor of ‘intellectual property”.
Patents: A patent is an exclusive right granted for an invention,
which is a product or a process that provides, in general, a new way of
doing something, or offers a new technical solution to a problem. To
get a patent, technical information about the invention must be
disclosed to the public in a patent application.
Features:
1. Exclusive rights -Patent law recognizes the exclusive right of a
patent holder to derive commercial benefits from his invention.
A
patent is a special right granted to the owner of an invention to the
manufacture, use, and market the invention, provided that the
invention meets certain conditions laid down in law. Exclusive
right means that no person can manufacture, use, or market an
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 invention without the consent of the patent holder. This
exclusive right to patent is for a limited time only.
2. Innovation-To qualify for patent protection, an invention must
fall within the scope of the patentable subject and satisfy the
three statutory requirements of innovation, inventive step, and
industrial application.
3. Encouragement-The purpose of patent law is to encourage
scientific research, new technology, and industrial progress. The
economic value of patent information is that it provides
technical information to the industry that can be used for
commercial purposes.
Copyrights: Copyright (or author’s right) is a legal term used to
describe the rights that creators have over their literary and artistic
works. Works covered by copyright range from books, music,
paintings, sculpture, and films, to computer programs, databases,
advertisements, maps, and technical drawings.
Features:
1. Recognises original Ownership-It resides in literary, dramatic,
musical, and artistic works in” original” cinematic films, and in
sound recordings set in a concrete medium. To be protected as
the copyright, the idea must be expressed in original form.
Copyright acknowledges both the economic and moral rights of
the owner.
2. It purely exists in the expression of the idea-The copyright
exists only for the original work. The mere idea to do a job is
not to be used as copyright. For instance, if a brilliant person has
an idea for a book
but he does not do anything to express the idea, he cannot claim
the copyright for that mere idea because the idea should be
expressed.
3. Multiple rights-Copyright is a bundle of rights in the same
work. It comprises of in case of literary work, right to
adaptation, and right to reproduction of work, right to
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 translation, right to change the work into cinematographic
version, and right to serial publication or work. Copyright also
gives the monopoly right to the author or artist. It also gives the
right to protect his work from unauthorized reproduction or
exploitation and restrain others from copying the work.
Trademark: A trademark is a sign capable of distinguishing the
goods or services of one enterprise from those of other enterprises.
Trademarks are protected by intellectual property rights.
Features:
1. A trademark is a badge of Origin-This establishes a link
between the proprietor and the product. It portrays the nature
and quality of a product. The essential function of a trademark is
to indicate the origin of the goods to which it is attached or in
relation to which it is used. It identifies the product, guarantees
quality, and helps advertise the product. The trademark is also
the objective symbol of goodwill that a business has created.
2. A trademark differentiates the product- Trademark serves as
a basic means of achieving product or service differentiation. It
enables a customer to differentiate goods, products, or services
in the market without confusion and make him/her arrive at a
decision on what to purchase.
3. Trademark contains combination of signs-Any sign or any
combination thereof, capable of distinguishing the goods or
services of another undertaking, can create a trademark. It can
be a
combination of a name, word, phrase, logo, symbol, design, image,
shape, colour, personal name, letter, number, figurative element
and colour, as well as any combination representing a graph.
Trademark registration may be indefinitely renewable.
Geographical Indication:
Geographical indications (GIs) are intellectual property (IP) rights
that serve to identify a product that originates from a specific
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geographical area and that has a quality, reputation, or other
characteristics that are essentially attributable to its geographical
origin.
Features:
1. Certification of link between goods and place of its Origin-It
is a name or sign used on certain products which corresponds to
a geographic location or origin of the product, the use of
geographical location may act as a certification that the product
possesses certain qualities as per the traditional method.
Darjeeling tea and basmati rice are a common example of
geographical indication. The relationship between objects and
place becomes so well known that any reference to that place is
reminiscent of goods originating there and vice versa.
2. It performs three functions-
• First, they identify the goods as origin of a particular region or
that region or locality.
• Secondly, they suggest to consumers that goods come from a
region where a given quality, reputation, or other characteristics
of the goods are essentially attributed to their geographic origin.
• Third, they promote the goods of producers of a particular
region. They suggest the consumer that the goods come from
this area where a given quality, reputation or other
characteristics of goods are essentially attributable to the
geographic region.
3. It is necessary that the product obtains its qualities and
reputation from that place: Since those properties depend on
the geographic location of production, a specific link exists
between the products and the place of origin. Geographical
Indications are protected under the Geographical Indication of
Goods (Registration and Protection) Act, 1999.
Design: Design is a type of IPR that protects any composition be it
twodimensional or three-dimensional of lines, patterns, shapes, or
colours. They add attractiveness to the product by making it unique
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and distinctive ultimately leading to alluring potential customers. A
design may also be linked to a company’s reputation and goodwill.
Features:
1. It protects the visual design of the object which is not purely
utilized. It consists of the creation of features of shape,
configuration, pattern, ornamentation or composition of lines or
colours applied to any article in two or three-dimensional form
or combination of one or more features.
2. Objective – Its major goal is to prevent innovative or original
designs from being copied and causing financial harm to the
owner.
Plant Variety:
Plant variety rights (also called plant breeders’ rights) are a form of
intellectual property right designed specifically to protect new
varieties of plants. These rights offer legal protection as a reward for
the investment plant breeders make in breeding and developing new
varieties.
Features:
1. A plant breeder is given a license or special right to do the
following in relation to different types of promotional material:
2. Produce and reproduce the material.
3. Condition the material for the purpose of propagation.
4. Offer material for sale.
5. Sell the materials.
6. Export the materials.
7. Import the materials.
8. The stock of goods for the above purposes
9. Typically, countries are protecting new plant varieties through
the Sui Generis system. The general purpose of conservation is
to encourage those who intend to manufacture, finance, or

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 exploit such products to serve their purpose, particularly where
they otherwise do not work at all.
Layout Design:
Integrated circuits – commonly known as “chips” or “micro-chips” –
are the electronic circuits in which all the components (transistors,
diodes, and resistors) have been assembled in a certain order on the
surface of a thin semiconductor material (usually silicon).
Features:
1. Protection for design of electronic items-In modern
technology, integrated circuits are essential elements for a wide
range of electrical products, including articles of everyday use,
such as watches, television sets, washing machines, and cars, as
well as sophisticated computers, smart phones, and other digital
devices. Developing innovative layout designs of integrated
circuits is essential to produce ever-smaller digital devices with
more functions.
2. Prevention of unauthorized copying-While the creation of a
new layout-design is usually the result of an enormous
investment, both in financial terms and in terms of the time
required from highly qualified experts, the copying of such a
layout-design may cost only a fraction of the original investment.
To prevent unauthorized copying of layout designs and to
provide incentives for investing in this field, the layout design
(topography) of integrated circuits is protected under a sui
generis intellectual property system.
Genetic Resources:
Genetic Resources (GR) refer to genetic material of actual or potential
value. Use of GR refers to the process of researching their beneficial
properties and using them to increase scientific knowledge and
understanding, or to develop commercial products.

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 1. There is continuous search for newer resources to meet the
future demands that arise with the emergence of new diseases,
abiotic stresses, climate change, and enhanced demand for food
and nutritional security.
2. GR are exchanged and searched continuously for specific traits
to improve yields and nutritional value in crops and animal
genetic resources. Every nation is concerned with acquisition of
diverse and superior germplasm for conservation and utilization.
The rapid advancements in the fields of molecular biology,
biotechnology, and bioinformatics, led to the emergence of new
legal, political and technological regimes regulating access to
GR.
Traditional Knowledge:
WIPO (World intellectual property organisation) defines traditional
knowledge as the knowledge, skills, practices, and know-how that are
developed, sustained, and passed on from generation to generation
within a community, often forming part of its cultural or spiritual
identity.
Features:
1. Ensures continuity of TK-Traditional knowledge, acquired
from experience gained over the centuries and adapted to the
local culture and environment, is transmitted orally from
generation to generation. It tends to belong collectively and
takes the form of stories, songs, folklore, proverbs, cultural
values, beliefs, traditions, community rules, the local language,
and agricultural practices, including plant species and animal
breed growth.
2. Ever-changing and Flexible-It is often referred to as an oral
tradition because it is taught, sung, danced, drawn, sculpted,
sung, and performed for thousands of years. Traditional
knowledge is primarily of a practical nature, particularly in
fields such as agriculture, fisheries, safety, horticulture, forestry,

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 and overall environmental management. TK is culture-specific,
context-specific, dynamic, and adaptive.
Trade Secret:
A trade secret is a formula, practice, process, design, instrument,
pattern, commercial method, or compilation of information that is not
generally known or reasonably ascertainable by others, and by which
a business can obtain an economic advantage over competitors or
customers. The scope of trade secrets is virtually unlimited.
Features:
1. Strictly Confidential-Not generally known to the relevant
business circles or to the public. The information should also not
be readily accessible.
2. Has commercial Value-Confers some sort of economic benefit
on its owner. This benefit must derive specifically from the fact
that it is not generally known, and not just from the value of the
information itself. It must have commercial value because it is a
secret. Commercial value encompasses potential as well as
actual value.
3. A trade secret continues for as long as the information is
maintained as a trade secret. However, information may no
longer be considered a trade secret once it becomes easily
accessible, is no longer properly protected, or has no
commercial value.
Industrial property:
Industrial property is a subset of intellectual property. It takes a range
of it takes a range of forms, including patents for inventions,
industrial designs trademarks, service marks layout-designs of
integrated circuits, commercial names and designations, geographical
indications, and protection against unfair competition in some cases,
aspects of an intellectual creation, although present, are less clearly
defined.

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The object of industrial property consists of signs conveying
information, to consumers, regarding products and services offered on
the market. Protection is directed against unauthorized use of such
signs that could mislead consumers, and against misleading practices
in general.
Technological research:
Technology research and development refers to the invention, design,
improvement, and construction of new types of products, equipment,
and machinery. Highly skilled scientists and engineers conduct
technology research and development on medical equipment,
consumer electronics, industrial machines, power generators,
computers, and any number of other modern devices. Professionals
conduct research in many different settings, including engineering
firms, biotechnology companies, manufacturing plants, university
laboratories, and private shops.
Invention and Innovation:
Invention- Invention, the act of bringing ideas or objects together in a
novel way to create something that did not exist before.it is something
that has never been made before, or the process of creating something
that has never been invented. Anything new or different in the world
made by people is an invention.
o Inventions are created to help make life easier and better.
o People who create inventions are called inventors.
o Inventors can live anywhere in the world and be any age. o
Inventions are made to solve problems.
Examples of invention: Mobile phone, Computers, Aeroplane GPS
Cars etc.
Innovation:
Innovation is the practical implementation of ideas that result in the
introduction of new goods or services or improvement in offering

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 goods or services. Innovation is about successfully implementing a
new idea and creating value for your customers and stakeholders.
Innovation starts with a new idea. It could be a plan for an
improved product or service; it could be an updated method for
running your operations; it could also be a new business model.
CHARACTERISTICS OF INNOVATION
• There is an object or target which is being changed.
• It can be a product, a process, an individual’s lifestyle, an
organization's strategy, a society culture.
• Innovation varies in extent or magnitude i.e., degree to which
one deviates from the past.
• It is closely related to problem solving since generation &
implementation of ideas for change never transpire without
difficulty.
• A final characteristic is the impact of the change, the
significance or range of its effects.
Examples of intellectual property rights include:
Patents, Domain names, Industrial design, Confidential
information, Inventions, Moral rights, Database rights, Works of
authorship, Service marks, Logos, Trademarks, Design rights,
Business or trade names, Commercial secrets, Computer software.
Difference Between Invention and Innovation
Basis Invention Innovation
Meaning Idea for a Implementation of
product/process that idea product process
has never been made for the very first time
before
What is it? Creation of a new Adding value to
product something already
existed
Concept An original idea and Practical
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 its working in theory implementation of
new idea
Skills required Scientific skills Set of marketing,
technical, and
strategic skills
Occurs when New idea strikes a Need for
creator improvement in new
or existing products
Concern with Single product or Combination of
process various product and
process
Commercialization May not Results in
commercialize commercialization
Changes May bring few Brings organisational
changes in changes
organisation.

Motive It can be economic It is usually for

and non-economic economic motive
motive
Terms Invention=innovation- Innovation =
commercial invention
exploitation +commercialization

Intellectual property rights in India Genesis and development:

• Between 1880 and 1889 patent laws of most European countries
were developed. In the year 1856 in India Patent Act was
introduced which remained in force for more than 50 years
which was later modified and revised and was called “The
Indian Patents and Designs Act, 1911”.
• A complete bill on patent rights was enacted after Independence
in the year 1970 and was called “The Patents Act, 1970”.

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 • Intellectual Property Rights (IPR) have reached a position from
where it plays an important role in the development of the global
economy in the last two decades. In the 1990s, unilateral laws
and regulations in this area were strengthened by several
countries. • At the multilateral level, due to the successful
conclusion of the
Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) in the World Trade Organization, the protection
and enforcement of the IPR were raised to the level of serious
international commitment.
• Intellectual property is a vast area. Design, copyright, and patent
trademarks have long been recognized. New forms of protection
are also developing, favoured by the stimulating emergence of
technological and scientific activities.
Major International Instruments Concerning Intellectual
Property Rights:
➢ Paris Convention 1883
➢ Berne Convention1886
➢ Universal Copyrights Convention 1952
➢ WIPO Convention 1967
➢ Patent Co-operation Treaty1970
➢ TRIPS Agreement 1994
1. Paris Convention for the Protection of Industrial Property:
The Paris Convention, adopted in 1883, applies to industrial property
in the widest sense, including patents, trademarks, industrial designs,
utility models, service marks, trade names, geographical indications
and the repression of unfair competition. This international agreement
was the first major step taken to help creators ensure that their
intellectual works were protected in other countries.
The Paris Convention for the Protection of Industrial Property, signed
in Paris, France, on 20 March 1883, was one of the first intellectual

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property treaties. It established a Union for the protection of industrial
property. The convention is currently still in force.
The substantive provisions of the Convention fall into three main
categories:
• National treatment,
• Priority right
• Common rules.
As of 21 April 2022, the convention has 179 contracting member
countries which makes it one of the most widely adopted treaties
worldwide.
2. Berne Convention1886:
Berne Convention for the Protection of Literary and Artistic Works.
sThe Berne Convention, adopted in 1886, deals with the protection of
works and the rights of their authors. It provides creators such as
authors, musicians, poets, painters etc. with the means to control how
their works are used, by whom, and on what terms.
It is based on three basic principles and contains a series of provisions
determining the minimum protection to be granted, as well as special
provisions available to developing countries that want to make use of
them.
• The Berne Convention for the Protection of Literary and Artistic
Works, usually known as the Berne Convention, was an
international assembly held in 1886 in the Swiss city of Bern by
ten European countries with the goal to agree on a set of legal
principles for the protection of original work.

• They drafted and adopted a multi-party contract containing

agreements for a uniform, crossing border system that became
known under the same name.

• Its rules have been updated many times since then. The treaty
provides authors, musicians, poets, painters, and other creators
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 with the means to control how their works are used, by whom,
and on what terms.

• In some jurisdictions these types of rights are being referred to

as copyright.

• The United States became a party in 1989. As of November

2022, the Berne Convention has been ratified by 181 states out
of 195 countries in the world, most of which are also parties to
the Paris Act of 1971.

3. The Universal Copyrights Convention (UCC):

The Universal Copyright Convention (UCC) is an international
instrument which was drawn up in 1952 under the auspices of
UNESCO. It was adopted in Geneva, Switzerland, in 1952, is one of
the two principal international conventions protecting copyright the
other is the Berne Convention.
The UCC was developed by the United Nations Educational,
Scientific and Cultural Organization (UNESCO) as an alternative to
the Berne Convention for those states that disagreed with aspects of
the Berne Convention but still wished to participate in some form of
multilateral copyright protection. These states included developing
countries as well as the United States and most of Latin America.
Its main features are the following:
• No signatory nation should accord its domestic authors more
favourable copyright treatment than the authors of other
signatory nations, though no minimum protection for either
domestic or foreign authors is stipulated.

• A formal copyright notice must appear in all copies of a work

and consist of the symbol the name of the copyright owner, and
the year

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 of first publication, a signatory nation, however, might require
further formalities, provided such formalities do not favour
domestic over foreign works.

• The minimum term of copyright in member nations must be the

life of the author plus 25 years (except for photographic works
and works of applied art, which have a 10-year term)

• All adhering nations are required to grant an exclusive right of

translation for a seven-year period, subject to a compulsory
license under certain circumstances for the balance of the term
of copyright.
• Both the Universal Copyright Convention and the Berne
Convention were revised at a Paris conference in 1971 to take
into consideration the special needs of developing countries,
especially with regard to translations, reproductions, public
performances, and broadcasting.

4. WIPO Convention 1967

The Convention Establishing the World Intellectual Property
Organization
(WIPO Convention) (1967)
➢ The WIPO Convention, the constituent instrument of the World
Intellectual Property Organization (WIPO), was signed at
Stockholm on July 14, 1967, entered into force in 1970 and was
amended in 1979. WIPO is an intergovernmental organization
that became in 1974 one of the specialized agencies of the
United Nations system of organizations.

➢ The origins of WIPO go back to 1883 and 1886 when the Paris
Convention for the Protection of Industrial Property and the
Berne Convention for the Protection of Literary and Artistic
Works, respectively, were concluded. Both Conventions

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 provided for the establishment of an "International Bureau". The
two bureaus were united in 1893 and, in 1970, were replaced by
the World Intellectual Property Organization, by virtue of the
WIPO Convention.

➢ WIPO’s membership consists of more than 180 countries.

➢ Its main policy-making body is the General Assembly, which

convenes every two years. WIPO also holds a biennial
conference, which determines the organization’s budget and
programs. More than 170 nongovernmental organizations
maintain observer status.
WIPO's two main objectives are:
• To promote the protection of intellectual property worldwide
• To ensure administrative cooperation among the intellectual
property Unions established by the treaties that WIPO
administers.

5. The Patent Cooperation Treaty 1970:

The Patent Cooperation Treaty (PCT) makes it possible to seek patent
protection for an invention simultaneously in each of many countries
by filing an "international" patent application. Such an application
may be filed by anyone who is a national or resident of a PCT
Contracting State.
• Patent Cooperation Treaty brought great revolution in field of
invention and innovation for the inventor due to this PCT
enjoyed great success and continued growth across the world.
• It has a near global membership of 148 Contracting States with
millions of inventors, big and small, who aids to the world’s
technological advancement using the PCT and national patent
systems.

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 • The PCT brought revolution in the way through which patents
are obtained across the world.
Basic Features of PCT System
❖ Formal examination done by one office.
❖ Retrieval is carried out by one office.
❖ International publication done by one office.
❖ Examination and authorization finished by national office.
❖ Single application with legal effect in all PCT countries.
❖ 148 countries and 4 regional patent systems.
❖ Used by the world’s major corporations, universities and
research institutions when they seek international patent
protection.
❖ Protects applicant from certain inadvertent errors.
❖ Evolves to meet user needs.
PCT Challenges
➢ Improving the quality of PCT international phase work products.
➢ Building trust between Patent offices, so that duplication of
application in international phase and national phase processing
can be reduced.
➢ Language issues faced by most countries:
➢ Helping developing countries benefit from the PCT.
➢ Making PCT accessible to applicants of all types from all
Contracting States.
➢ Helping PCT users stay of new developments and strategies.

6. TRIPS AGREEMENT 1994:

Trade Related Aspects of Intellectual Property Right (TRIPS) is an
agreement on international IP rights. The TRIPS Agreement, which
came into effect on 1 January 1995, is to date the most comprehensive
multilateral agreement on intellectual property.
The three main features of TRIPS are.
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 • Standards,
• Enforcement • Dispute settlement. Highlights

• TRIPS came into force in 1995, as part of the agreement that

established the World Trade Organisation (WTO).
• TRIPS establishes minimum standards for the availability,
scope, and use of seven forms of intellectual property namely,
trademarks, copyrights, geographical indications, patents,
industrial designs, layout designs for integrated circuits, and
undisclosed information or trade secrets.
• It applies basic international trade principles regarding
intellectual property to member states.
• It is applicable to all WTO members.
• TRIPS Agreement lays down the permissible exceptions and
limitations for balancing the interests of intellectual property
with the interests of public health and economic development.
• TRIPS is the most comprehensive international agreement on IP
and it has a major role in enabling trade in creativity and
knowledge, in resolving trade disputes over intellectual
property, and in assuring WTO members the latitude to achieve
their domestic policy objectives.
• It frames the IP system in terms of innovation, technology
transfer and public welfare.
• The TRIPS Council is responsible for administering and
monitoring the operation of the TRIPS Agreement.

TRIPs Agreement Covers Seven Categories of Intellectual

Property
Rights
a) Copyright-copyright refers to the legal right of the owner of
intellectual property. In simpler terms, copyright is the right to
copy. This means that the original creators of products and
anyone they give authorization to are the only ones with the
exclusive right to reproduce the work.
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b) Trademarks: A trademark can be any word, phrase, symbol,
design, or a combination of these things that identifies your
goods or services. It’s how customers recognize you in the
marketplace and distinguish you from your competitors. The
word “trademark” can refer to both trademarks and service
marks. A trademark is used for goods, while a service mark is
used for services.
c) Geographical Indications: A geographical indication (GI) is
any sign or symbol that identifies goods as emanating from any
specific region or location of a country that gives the goods its
known quality, reputation or characteristics that are essentially
attributable to that region or locality. Example: Darjeeling Tea
in west Bengal
d) Industrial Designs: It is a strategic problem-solving process
that drives innovation, builds business success, and leads to a
better quality of life through innovative products, systems,
services, and experiences. Industrial Design bridges the gap
between what is possible.
e) Patents: A patent is an exclusive right granted for an invention,
which is a product or a process that provides, in general, a new
way of doing something, or offers a new technical solution to a
problem. To get a patent, technical information about the
invention must be disclosed to the public in a patent application.
f) Integrated Circuits: An integrated circuit (IC), sometimes
called a chip, microchip, or microelectronic circuit, is a
semiconductor wafer
on which thousands or millions of tiny resistors, capacitors,
diodes and transistors are fabricated. An IC can function as an
amplifier, oscillator, timer, counter, logic gate, computer
memory, microcontroller, or microprocessor.
g) Trade Secrets: Trade secrets are intellectual property (IP) rights
on confidential information which may be sold or licensed.

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Module -02
REGISTRATIONS AND LAWS OF IPR
Introduction
Intellectual property rights safeguard original works, inventions, or
the other types of intellectual property. IP rights, or intellectual
property rights, are a common kind of legal IP protection for
innovators.
Practical aspects of registration of IPR in India and Abroad:
• If you wish to utilize most types of intellectual property rights in
India, you must first register them. Individual registrations are
necessary for patents in India. In India, you may register a
trademark through the local trademark system.
• There are four basic areas of IP: patents, trademarks, copyrights
and trade secrets. Patents protect inventions, trademarks protect
brands and copyrights protect expressions of ideas. Each of
these types of IP can be registered with the government.
REGISTRATION PROCESS OF IPR IN INDIA
In India, the intellectual property rights pertaining to trademarks and
patents are controlled by the Controller General of Patents Designs
and Trademarks, Department of Industrial Policy and Promotion,
Ministry of
Commerce, and Industry. Copyrights are handled by the Copyright
Office, Copyright Societies, Government of India. Based on the type
of intellectual property right to be registered, application must be
made to the concerned authorities in the prescribed form.

Trademark Registration
• Trademark is the most common type of intellectual property
right with more than 2 lakh trademark registration applications
filed in India during the year 2013-14. Trademark registration

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 and trademark protection in India are governed by the
Trademark Act, 1999.
• A trademark is used by an entity on goods or services or other
articles of commerce to distinguish it from other similar goods
or services originating from a different entity. Names, logo,
slogans, word signature, label, device (product shape), numerals
or even a combination of colours can be trademarked in India.
However, the most popular form of trademark registration is that
of a trademark registration for a business name or logo.
• Once the trademark registration application is filed with the
Registrar of Trademarks, the TM symbol can be used next to the
logo. Once the trademark is registered, the R symbol is placed
next to the logo to indicate that the mark is a registered.
For a mark to be trademarked, it must be:
• Capable of being represented graphically (that is in the paper
form).
• Capable of distinguishing the goods or services of one entity
from those of others.
• Capable of being used or proposed to be used as a mark in
relation to goods or services to indicate a connection between
the goods or services and an entity that has the right to use the
mark.
Steps To Register A Trademark
To register a trademark, the owner needs to go through the following
steps:
• Conducting an exhaustive trademark search.
• Filing an application with necessary documents.
• Examination of the application by the Trademark Registry.
• Post examination procedures.
• Advertisement of the application in the Trademark Journal.
• Opposition by any third party.
• Registration and renewal of the same after every 10 years.
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Copyright Registration
• Copyright registrations are handled by the Copyright Office
acting under the Indian Copyright Act, 1957.
• Copyright is a legal right given by the law to creators of literary,
dramatic, musical, and artistic works and producers of
cinematograph films and sound recordings. Unlike trademark
and patent, copyright protects the expression and not the idea or
creation of mind.
• Further, copyright registration cannot be obtained for titles or
names, short word combinations, slogans, short phrases – as the
same can only be trademarked.
• One of the most popular types of copyright registration in India
is copyright registration of website or software. Websites and
software’s can be copyrighted as they are both considered to be
“literary works” under the Indian Copyright Act, 1957.
Process for Copyright Registration
Step 1: Filing Application
• file an application either physically in the copyright’s office or
through speed/registered post or through e-filing facility
available on the official website (copyright.gov.in).
• For registration of each work, a separate application must be
filed with the registrar along with the particulars of the work.
Along with this, the requisite fee must also be given, Different
types of work have different fees.
Step 2: Examination: Once the Application is filed and work is
submitted, the application will be sent to the examiner of Copyrights.
Step 3: Registration: Copyright could be a style of property law. it
is registered to shield original items of labour like music, art,
literature, cinema/film, photography, or a worm. There are in-depth

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classes that may be registered for copyright by the creators. It
provides exclusive and complete rights to the creator of the work.
Once your copyright is registered, it becomes much easier to move to
the court and get the person who illegally copied your work punished.
To provide adequate protection to copyright holders, the Copyright
Act, 1957 provides imprisonment from six months to three years and
a fine of not less than INR 50,000 in case your right is infringed by
someone.
Patent Registration
• The patent is an exclusive right granted to the Patentee over
his/her invention for a limited period. Through Patent
Registration, the patentee shall have all the rights regarding
controlling, making, using, selling, or importing patented
products or process for producing that product.
• After Patent Registration, no one will be able to use the
invention without the consent of the patentee. However, whether
the invention is patentable or not depends upon various factors
such as invention must be innovative which involves an
inventive step and which can be used in industry.
• With Patent Registration, you can obtain an intellectual property
right over an invention. For Patent Registration, an application
can be filed either by an individual or firm.
• To grant an exclusive right over invention (If it is unique) there
is an Intellectual Property Department established by the Indian
government. To prove that invention is unique, the inventor
must produce all the evidence in connection with the invention.
Process of Patent Registration
Patent Registration is a process under which an application is filed
with the prescribed authority to register an invention in line with The
Patent Act, 1970. With Patent Registration, an inventor will have the
monopoly over his/her invention. Patent Registration application

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should be filed to avoid any dispute in future in relation to
infringement.
For Patent Registration in India, following below-mentioned
points must be considered:
• Patent Search- Before filing Patent Registration in India you
must be aware of the Non obviousness of an invention and for
this purpose, the Patent search is conducted. Enter slice can
conduct Patent Search on your behalf to get to know about
existing inventions in connection with your idea for a patent. On
the flip side, in case there is already a registered patent on your
idea, then the patent cannot be granted. Patent Search is a
process which helps the applicant form the lengthy registration
process. You can skip further steps if there is already a patent
which is like your idea.
• Patent Domicile– Patent Registration done in India is valid in
India only. Patent Registration gives protection to your
invention only in India and not in any other country. On the
contrary, you may protect your invention in other countries as
well. For this purpose, a separate patent registration application
must be filed in each country.
• Filing of Patent Registration Application– For Patent
Registration, an application is filed along with the necessary
details regarding invention with the intellectual property
department.
• Review of Patent Registration Application– After submission
of a Patent application, patent office of the India Government
will scrutiny and check whether there is an existing patent on the
similar idea. However, if the invention is unique and falls under
the criteria of the patentable invention then the patent will be
granted.
• Patent Grant– After verifying the patent Registration
application, the application status will get updated online on the
website of the
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 Department of Industrial Policy & Promotion, Ministry of
Commerce & Industry, and Government of India. For the grant
of a patent certificate, it takes around one year.
REGISTRATION OF IPR IN ABROAD
International intellectual property law refers to a set of laws that
govern the creation, protection, sharing, and use of intellectual
property (IP) in the global context.
First, you must determine if you have rights to the intellectual
property in that country. Patents and trademarks are territorial and
must be registered in each country where protection is sought. A U.S.
patent or trademark does not afford protection in another country. For
copyrights, as a result of international copyright treaties and
conventions, many countries do not require registration of a U.S.
copyright in order to enjoy copyright protection. However, the United
States does not have such copyright relationships with every country.
Once you have confirmed you have intellectual property rights (IPR)
in a foreign country, you must seek to enforce your rights using the
civil, administrative, and criminal enforcement remedies available in
that country. IPR are private rights; therefore, you must protect your
rights in accordance with the IPR laws of that country. Intellectual
property laws can be complex, so it is recommended that you seek
local legal counsel to explore potential remedies.
Office of the Controller General of Patents, Designs&
Trademarks
(CGPDTM)
➢ CGPDTM generally known as the Indian Patent Office, is an
agency under the Department for Promotion of Industry and
Internal Trade
which administers the Indian law of Patents, Designs and
Trademarks.
➢ The Office is responsible for the administration of Patents Act,
1970, Designs Act, 2000, The Trademarks Act, 1999 and
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 Geographical Indications of Goods (Registration and Protection)
Act, 1999 through its Intellectual Property Offices located at
Mumbai, Delhi, Kolkata, Chennai, and Ahmedabad.
➢ Under the Patents Act, 1970, the statutory authority for the grant
of patents is the Controller General of Patents, Designs and
Trademarks (CGPDTM).
➢ The Controller General (CG), who supervises the administration
of the Patents Act, the Designs Act, and the Trademarks Act,
also advises the Government on matters relating to these
subjects. Shri. Unnat P.
Pandit is the current CG and took charge on April 2022.
➢ The Office of the Controller General of Patents, Designs &
Trademarks (CGPDTM) is located at Mumbai.
➢ It functions under the Department of Promotion of Industry and
Internal Trade (DPIIT), Ministry of Commerce & Industry.
➢ The Controller General supervises the working of the Patents
Act, 1970, the Designs Act, 2000 and the Trademarks Act, 1999
and also renders advice to the Government on matters relating to
these subjects.
➢ The Head Office of the ‘Patent office’ is in Kolkata, ‘Trademark
Registry’ is in Mumbai and the ‘GI Registry’ is in Chennai.
➢ The Offices of ‘The Patent Information System’ (PIS) and
‘National Institute of Intellectual Property Management’
(NIIPM) are at Nagpur.
➢ The Controller General supervises the working of the Patents
Act,
1970, as amended, the Designs Act, 2000 and the Trademarks
Act, 1999 and renders advice to the Government on matters
relating to these subjects.
NATIONAL IPR POLICY:
According to the government, the National IPR Policy is a vision
document that aims to create and exploit synergies between all forms
of intellectual property (IP), concerned statutes and agencies. The
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policy will encourage creativity, innovation and entrepreneurship in
India. It will check the theft of one person’s innovation by another.
This is India’s first IPR policy.
• The National Intellectual Property Rights (IPR) Policy 2016 was
adopted on 12/5/2016 as a vision document to guide future
development of IPRs in the country.
• It sets in place an institutional mechanism for implementation,
monitoring, and review.
• It aims to incorporate and adapt global best practices to the
Indian scenario.
Seven objectives of IPR Policy:
• IPR Awareness: To create public awareness about the
economic, social, and cultural benefits of IPRs among all
sections of society.
• Generation of IPRs: To stimulate the generation of IPRs.
• Legal and Legislative Framework: To have strong and
effective IPR laws, which balance the interests of rights owners
with larger public interest.
• Administration and Management: To modernize and
strengthen service oriented IPR administration.
• Commercialization of IPRs: Get value for IPRs through
commercialization.
• Enforcement and Adjudication: To strengthen the
enforcement and adjudicatory mechanisms for combating IPR
infringements.
• Human Capital Development: To strengthen and expand
human
resources, institutions and capacities for teaching, training,
research, and skill building in IPRs.
Highlights of the policy:

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 • The new policy calls for providing financial support to the less
empowered groups of IP owners or creators such as farmers,
weavers and artisans through financial institutions like rural
banks or co-operative banks offering IP-friendly loans.
• The work done by various ministries and departments will be
monitored by the Department of Industrial Policy & Promotion
(DIPP), which will be the nodal department to coordinate, guide
and oversee implementation and future development of IPRs in
India.
• The policy, with a tagline of Creative India: Innovative India,
also calls for updating various intellectual property laws,
including the Indian Cinematography Act, to remove anomalies
and inconsistencies in consultation with stakeholders.

• The ‘Cell for IPR Promotion & Management (CIPAM)’, setup

under the aegis of DIPP, is to be the single point of reference for
the implementation of the objectives of the National IPR Policy.
Salient Features:
• It aims to realise IPR’s as a marketable financial asset, promote
innovation and entrepreneurship while protecting the public
interest.
• Every five years policy will be reviewed. The policy is in
consonance with the WTO’s agreement on TRIPS.
• Special focus on awareness generation and effective
enforcement of IPRs, also the encouragement of IP
commercialization through incentives.
• Includes trademark offices to reduce the time taken for
examination and registration to just a month by 2017.
• It seeks to facilitate domestic IPR filings, for the entire value
chain from IPR generation to commercialization.
• It aims to promote research and development through tax
benefits.

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 • To encourage start-ups, there is a proposal to create an effective
loan guarantee scheme.
Laws of IPR:
Intellectual property rights in India, is governed under the following
Acts:
• Patent Act, 1970
• Trademark Act, 1999
• The Designs Act, 2000
• The Geographical Indications of Goods (Registration and
Protection) Act,1999
• Copyright Act, 1957
• The Protection of Plant Varieties and Farmers Right Act, 2001
• The Semi-Conductor Integrated Circuits Layout Design
Act,2000

1. Patents Act, 1970: Indian Patent Law is defined by various

provisions of the Patents Act, 1970. Under this law, patent rights are
granted for inventions covering a new and inventive process, product
or an article of manufacture that are able to satisfy the patent
eligibility requirements of having novelty, inventive steps, and are
capable of industrial application. Patents Act in India – Overview
What is a patent?
A patent is an exclusive right granted for an invention, which is a
product or a process that provides, in general, a new way of doing
something, or offers a new technical solution to a problem. To get a
patent, technical information about the invention must be disclosed to
the public in a patent application.
• The history of Patent law in India starts from 1911 when the
Indian Patents and Designs Act, 1911 was enacted.
• The Patents Act, 1970 is the legislation that till date governs
patents in India. It first came into force in 1972.
• The Office of the Controller General of Patents, Designs and
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 Trademarks or CGPDTM is the body responsible for the Indian
Patent Act.
• The Patent Office has its headquarters in Calcutta and has
branches in New Delhi, Chennai, and Mumbai. The office of the
CGPDTM is based in Mumbai. Nagpur hosts the office of the
Patent Information System and the National Institute for
Intellectual Property Management.
• The Controller General supervises the Act’s administration and
also offers advice to the government on related matters.
• The Patents Act has been repeatedly amended in 1999, 2002,
2005, 2006 respectively. These amendments were required to
make the Patents Act TRIPS compliant.
• The major amendment in the Patent Act was in 2005, when
product patents were extended to all fields of technology like
food, drugs, chemicals, and microorganisms. The Rules under
Patent Act were also amended in 2012, 2013, 2014.

Patent Law Amendment Act 2005

Salient features of the Patents (Amendment) Act 2005 related to
product patents:
• Extension of product patent protection to products in sectors of
drugs, foods and chemical.
• Term for protection of product patent shall be for 20 years.
• Introduction of a provision for enabling grant of compulsory
license for export of medicines to countries which have
insufficient or no manufacturing capacity; provided such
importing country has either granted a compulsory license for
import or by notification or otherwise allowed importation of the
patented pharmaceutical products from India (in accordance
with the Doha Declaration on TRIPS and Public Health)
• Section 3 (d) regarding patentability.
Effects of Patent Amendment Act 2005
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 • Due to the new patent regime, increased prices of products were
a major hindrance during the time. However, the government
has taken proactive measures to ensure low prices for essential
drugs and has used compulsory licensing as a tool to keep
exorbitant prices under check.
• The amendment intended to make Indian drug and
pharmaceutical industries competitive at par with multinational
companies.
• Despite initial reservations, Indian pharmaceutical companies
manufacturing generic drugs have flourished in the last decade.
• Also, MNCs have opened Research and Development Centres in
India.
Rights granted by a Patent.
1. If the patent is for a process, then the patentee has the right to
prevent others from using the process, using the product
directly obtained by the process, offering for sale, selling, or
importing the product in India directly obtained by the
process.

2. If the grant of the patent is for a product, then the patentee

has a right to prevent others from making, using, offering for
sale, selling, or importing the patented product in India.

Term of Patent
• The term of every patent in India is 20 years from the date of
filing the patent application, irrespective of whether it is filed
with provisional or complete specification.
• However, in case of applications filed under the Patent
Cooperative Treaty (PCT), the term of 20 years begins from
the international filing date.
2.Trademark Act, 1999

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 ➢ Trademark rights in India are statutorily protected by the
Trademark Act, 1999and also under the common law remedy of
passing off. The administration of such protection under the Act
is done by the Controller General of Patents, Designs and
Trademarks. The Trademark Act, 1999 deals with the
protection, registration and prevention of fraudulent use of
trademarks. It also deals with the rights of the holder of the
trademark, penalties for infringement, remedies for the damaged
as well as modes of transference of the trademark.
➢ Trademark is defined in the Trademark Act, 1999 as, “trademark
means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one
person from those of others and may include the shape of goods,
their packaging and combination of colours.”
Registration of Trademark
To apply for a trademark a person must adhere to the provisions
enlisted under Section 18 of the Act. The Section requires any
persons applying for a trademark to apply in writing in the
manner that is prescribed for the registration. The application
has to contain the name of the mark, goods and services, the
class under which goods and services fall, the period of the use
of the mark and the personal details of the applicant such as
name and address.
Infringement of Trademark: The term infringement means the
violation of someone’s rights. Therefore, infringement of trademark
means the violation of trademark rights.
A trademark is said to be infringed when there is an unauthorised use
of a trademark or a substantially similar mark on goods or services of
a similar nature. In such a case, the court will look at whether such
use of the trademark will cause any confusion to the consumer as to
the actual brand they are purchasing.
Therefore, according to the Act a trademark is infringed if:

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 • If the trademark is a copy of a registered trademark with a few
additions or alterations.
• If the infringed mark is printed or used in advertisements.
• If the infringed mark is used during trade
• If the mark used is so like a registered mark that it is likely to
confuse or deceive a consumer when selecting a category of
product.
In case of infringement of a registered trademark, the person may
file a suit for damages. For filing such a suit, the following
conditions must be met:
• The person filing the suit (plaintiff) must be the registered
owner of the trademark.
• The person who is infringing (defendant) must be using a mark
that is like that of the plaintiff such that it can easily be confused
as one another.
• Such use by the defendant is not accidental in nature.
• The use of the mark by the defendant must be in the course or
similar goods or services to that which the trademark is
registered to.
Classification of Trademarks
• Section 7 of the Trademark Act, 1999 requires the classification
of trademark according to the international classification of
goods and services. There are a total of 45 classes goods and
services may fall under in such a classification. The
international classification system used is called the Nice
Classification (NCL), it was established in 1957 during the Nice
Agreement.
• According to the NCL, there are 45 classes under which goods
and services fall. Classes 1 – 34 are for goods and the classes 35
– 45 are for services.
Opposing a Trademark Registration

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 • The members of the public are given the opportunity to oppose
the registration of a Trademark during its registration process.
The person filing the opposition of registration maybe anyone, it
could be a customer, competitor, or any member of the public.
• n the process of registration of a trademark, the mark will be
advertised in the Trademark Journal, upon this advertisement
anyone can file an opposition to it during a period of three
months. This period of three months may be extended by no
more than one month in special cases. The filing of the
opposition must be done at the Trademark Registrar’s Office
and not at the Intellectual Property Appellate Board (IPAB)
While filing an opposition, one must include the following:
1. Details of the trademark application against which opposition is
being filed.
2. Details of the earlier mark that the registering mark is infringing
upon. It could be an already registered mark or a mark that is
still undergoing its registration.
3. Details of the filing party.
4. Grounds upon which such opposition is based on.

THE DESIGN’S ACT, 2000

There are special legislations governing the protection of different
nature of rights in our country. The purpose of design Act is to protect
any design on an article and that is appealing to the eyes. Design
means features of shape, pattern, configuration, ornament or
composition of colours or lines which is applied in three dimensional
or two dimensional or in both the forms by any industrial process or
means whether manual, mechanical or chemical, separate, or
combined, which in the finished article appeal to and are judged by
the eye; but does not include any mode or principle of construction.
Salient Features:

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 • The classification was made based on the material which has
been used to make that material.
• The classification is built solely on the subject matter of the
design.
• Judging a novelty on the grounds of prior publications of any
article, is made viable by Absolute Novelty.
• It is possible to re-instate the registration of a design.
• The quantum of punishment is enhanced if any infringement
takes place.
• The confidentiality of two years of a registered design is also
abrogated.
• Regulation of anti-competitive practices in contractual licenses.
Requirement Of Originality
Section 2(g), Design Act deals with originality in relation to a design
and means as originating from the author of such design. It refers to
artistic works which has the capacity to increase the decorative and
visual value and can be distinctly recognized as mentioned under sec
2(d) which is:
• Shape
• Configuration
• Ornaments
• Composition of lines or colours.
Requirements For Registration
• A design that is to be registered under the act must have a
unique shape, configuration, pattern, or an ornament.
• When the design is being applied to an article, it must show to
the eye that shape, pattern, configuration, ornament etc., Any
application for registration should be accompanied by a
representation that is drawing, tracing which can be
communicated easily.
• The design should always be a new or an original design.

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 • The design must have not been disclosed anywhere in India or
any other country.
• It should not contain any obscene or scandalous matter.
Cancellation Of Registration
Any interested person may present a petition for cancellation of
registration for a design and any time to the controller under the
certain following grounds.
• Previously registered in India or
• Either it is published in India or in any Country prior to the date.
• Design is not new and original and not registrable under this act.

Section 2 clause D that it is not a design as defined under

this:
Section 51A(1)(a) act of the 1911 act and section 19(1) of the 2000
act deals with the cancellation of registration which also provides a
petition for the cancellation of registration to be filed before the
controller and not before the High court. The basic difference that has
to be understood is section 19 of the 2000 act deals with the
cancellation that has to be made to the controller of the designs and
section 51 deals with cancellation of registration which could be
preferred to the High Court within one year from the date of
education under specific grounds of sub-clauses one and two of
section 51.
A (1). Under the 2000 act High Court can only assume jurisdiction at
an appellate level whereas under section 51(A) the High Court can
directly cancel the registration.
4. The Geographical Indication of Good (Registration and
Protection) Act, 1999:
• The Geographical Indications of Goods (Registration and
Protection) Act, 1999 (GI Act) is a sui generis Act of the
Parliament of India for protection of geographical indications in
India. India, as a member of the World Trade Organization
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 (WTO), enacted the Act to comply with the Agreement on
Trade-Related Aspects of Intellectual Property Rights. The GI
tag ensures that only those registered as authorised users (or at
least those residing inside the geographic territory) are allowed
to use the popular product name.
• Some of the registered geographical indications includes
agricultural goods like Darjeeling tea, Malabar pepper,
Bangalore Blue grapes, manufactured goods like Pochampalli
ikat, Kanchipuram silk sari, Solapur chaddars, Bagh prints, and
Madhubani paintings. Registration process
• An application for registration must be made before the
Registrar of Geographical Indications by any association of
persons or producers or any organization or authority
established by or under any law for the time being in force
representing the interest of the producers of the concerned
goods.
• The application must be made in an appropriate form containing
the nature, quality, reputation or other characteristics of which
are due exclusively or essentially to the geographical
environment, manufacturing process, natural and human factors,
map of territory of production, appearance of geographical
indication (figurative or words), list of producers, along with
prescribed fees.
• The examiner will make a preliminary scrutiny for deficiencies,
in case of deficiencies, the applicant is to remedy it within a
period of one month from the date of communication.
• The Registrar may accept, partially accept, or refuse the
application. In case of refusal, the Registrar will give written
grounds for nonacceptance. The applicant must within two
months file reply. In case of re-refusal, the applicant can make
an appeal within one month of such decision.
• Registrar shall, within three months of acceptance may advertise
the application in the GI Journal.
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 • If there is no opposition, the Registrar will grant a certificate of
registration to the applicant and authorised users.
Duration: A GI is registered for an initial period of ten years, which
may be renewed from time to time.
Exclusions: Under Section 9 of the Act, the following indications
cannot be registered:
• which would likely to deceive or cause confusion
• which would be contrary to any law for the time being in force;
or • which comprises or contains scandalous or obscene matter;
or
• which comprise or contains any matter likely to hurt the
religious susceptibilities of any class or section of the citizens of
India; or
• which would otherwise be disentitled to protection in a court; or
• generic names
• falsely represent to the persons that the goods originate in
another territory, region, or locality.
Effect of registration and infringement
• The registration of GI cannot be transferred, mortgaged,
assigned, or licensed, except in case of inheritance of the mark
upon death of an authorised user.
• Any person who falsely applies or falsifies any geographical
indication, tampers the origin of a good, make or have in
possession of dye, blocks, machines to use in falsification of GI
may be punished shall not be less than six months but which
may extend to three years and with fine which shall not be less
than fifty thousand rupees, but which may extend to two lakhs
(200,000) rupees.

5. Copyright Act, 1957:

The copyright law is an IPR law that protects literary creations.
In India, literary artists are automatically eligible for copyright under
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the Copyright Act of 1957. The Act serves as a comprehensive statute
that provides moral rights (also referred to as the author’s special
rights) and corresponding rights – including rights to broadcasting
organisations, performers’ rights etc. Rights covered under the
Copyright Act of 1957 The Copyright Act covers the following
rights.
➢ Literary, Musical and Dramatic Works: The copyright law
covers the exclusive rights to reproduce literary, musical and
dramatic works, including its storage in any medium such as
CDs, DVDs, electronic means, public performances, sound
recording, translation, adaptation and communication rights.
➢ Computer Programs: The law also covers the rights associated
with literary works under the computer programs umbrella. The
Copyright Act is an umbrella law which covers the literary
works mentioned above, along with rights to sell computer
programs, provide them on sale, on hire and on a commercial
rental basis.
➢ Artistic Works: Copyright laws pertaining to artistic works
protect artistic works as well. It includes reproducing existing
works and storing them in various electronic and non-electronic
mediums and dimensions (2D, 3D, 4D, etc.). Artistic works’
copyrights also include exclusive public communication rights,
issuing copies, translations, and adaptations of the artistic works,
etc.
➢ Cinematograph films and sound recording: Copyright laws
pertaining to cinematograph films as well as sound recording
protect the right to make copies of the film in various mediums
be it photographs, trailers, selling or giving on hire,
commercially renting copies, etc.
Except for computer programs, the copyrights law is automatically
assigned to the owners even if they do not file for the same. In the
case of copyright infringement, the copyright owner or his/her legal
representatives can enforce moral rights. Moreover, as per the 2012

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Amendment of the Copyright Act, the author’s legal representative
may exercise paternity and integrity rights.

Fees Associated with copyright registration applications in India.

COPYRIGHT PROTECTION FEES CHARGED BY COPY

FOR OFFICE RIGHTS OFFICE
Literary, drama, musical and Rs. 500 per work
artistic work
Literary and artistic work used Rs. 2,000 per work
for goods
Cinematograph Films Rs. 5,000 per work
Sound Recording Rs. 2,000 per work

Effect of infringement
• In India, copyright owners can enforce their rights and file for
infringement in civil and criminal courts.
• As a copyright owner, you can enforce various civil remedies
which include damages, injunction, and rendition of accounts.
• Copyright infringement is also deemed as a criminal offence and
can result in penalties including a fine of approximately Rs.
2,00,000 or more. If the offence is deemed severe, it may also
result in an additional prison sentence of up to three years.

5. The Protection of Plant Varieties and Farmers Right Act,

2001:
• In order to provide for the establishment of an effective system
for the protection of plant varieties, the rights of farmers and
plant breeders and to encourage the development of new
varieties of plants it has been considered necessary to recognize
and to protect the rights of the farmers in respect of their
contributions made at any time in conserving, improving and
making available plant genetic resources for the development of
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 new plant varieties. The Govt. of India enacted “The Protection
of Plant Varieties and Farmers' Rights (PPV&FR) Act, 2001”
adopting sui generis system.
• The legislation recognizes the contributions of both commercial
plant breeders and farmers in plant breeding activity and also
provides to implement TRIPs in a way that supports the specific
socio-economic interests of all the stakeholders including
private, public sectors and research institutions, as well as
resource-constrained farmers.
Objectives of the PPV & FR Act, 2001
• To establish an effective system for the protection of plant
varieties, the rights of farmers and plant breeders and to
encourage the development of new varieties of plants.
• To recognize and protect the rights of farmers in respect of their
contributions made at any time in conserving, improving and
making available plant genetic resources for the development of
new plant varieties.
• To accelerate agricultural development in the country, protect
plant breeders’ rights; stimulate investment for research and
development both in public & private sector for the development
new of plant varieties.
Rights under the Act:
• Breeders’ Rights: Breeders will have exclusive rights to
produce, sell, market, distribute, import or export the protected
variety. Breeder can appoint agent/ licensee and may exercise
for civil remedy in case of infringement of rights.
• Researchers’ Rights: Researcher can use any of the registered
variety under the Act for conducting experiment or research.
This includes the use of a variety as an initial source of variety
for the purpose of developing another variety, but repeated use
needs prior permission of the registered breeder.
• Farmers' Rights:
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 ✓ A farmer who has evolved or developed a new variety is
entitled for registration and protection in like manner as a
breeder of a variety.
✓ Farmers variety can also be registered as an extant variety.
✓ A farmer can save, use, sow, re-sow, exchange, share or
sell his farm produce including seed of a variety protected
under the PPV&FR Act, 2001 in the same manner as he
was entitled before the coming into force of this Act
provided farmer shall not be entitled to sell branded seed
of a variety protected under the PPV&FR Act, 2001.
✓ Farmers are eligible for recognition and rewards for the
conservation of Plant Genetic Resources of land races and
wild relatives of economic plants.

REGISTERABLE PLANT VARIETIES IN INDIA

• New Varieties: A Variety which is not in public domain in
India earlier than one year before the date of filing or outside
India, in the case of trees or vines earlier than six years or in any
other case earlier than four years.
• Extant Variety: A Variety which is notified under Seed Act,
1966 or a variety about which there is common knowledge or a
farmer’s variety or any other variety which is in public domain
is considers as an Extant Variety.
• Farmer’s Variety: A Variety which has been traditionally
cultivated and evolved by the farmers in their fields or a variety
which is a wild relative or land race of a variety about which
farmers possess common knowledge.
• Essentially Derived Variety (EDV):
✓ Predominantly derived from such initial variety, or from
a variety that itself is predominantly derived from such
initial variety, while retaining the expression of the
essential characteristics that result from the genotype or
combination of genotypes of such initial variety.
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 ✓ Is clearly distinguishable from such initial variety; and
✓ Conforms to such initial variety in the expression of the
essential characteristics.
NON-REGISTERABLE PLANT VARIETIES IN INDIA
All plant varieties cannot get legal protection in India. Certain Plant
varieties are excluded from the protection under PPVFR Act 2001.
Any variety where prevention of commercial exploitation of such
variety is necessary to protect public order or public morality or
human, animal and plant life and health or to avoid serious prejudice
to the environment or any varieties which has terminator technology
or any variety belonging to the species or genera which is not listed in
the notification issued by the
Central Government cannot be registered for the protection under the
Act.
PLANTS THAT ARE COVERED UNDER THE PPVFR ACT
• As of now following 18 plant species can be registered under the
Act.
• Cereals: Rice, Wheat, Maize, Sorghum, Pearl Millet.
• Legumes: Chickpea, Mungbean, Urdhean, Field Pea, Rajmash,
Lentil, Pigeaon Pea.
• Fibre Crop:
• Four species of cotton namely GossypiumArboreum L. and G.
Herbaceum L. (Diploid Cotton) and G. Barbadense L. and G.
Hirsutum
L. (Tertaploid Cotton)
• Two species of Jute (CorchorusOlitorius L. and C. Capsularis
L.)

5. The Semi-Conductor Integrated Circuits Layout Design

Act,2000
What is Semi-Conductor Integrated Circuit?
• A product having transistors.
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 • Circuitry elements inseparably formed on a semiconductor
material. • Insulating material inside the semiconductor material
• Designed to perform an electronic circuitry function.
• The layout-design of a semiconductor integrated circuit means a
layout of transistors and other circuitry elements and includes
lead wires connecting such elements and expressed in any
manner in semiconductor integrated circuits.
• To protect these newly invented semiconductors an Act was
passed in the year 2000 known as the Semiconductor Integrated
Circuits Layout-Design Act, 2000, in conformity with the
TRIPS Agreement. The Act is an additional act to the Designs.
Features of the Act:
• The Act's goal is to ensure that intellectual property rights in the
field of semiconductor integrated layout designs, as well as
other aspects related to them, are protected.
• Infringement on layout design is punishable under the Act.
• While the Act allows a registered owner of a semiconductor
layout design to commercialise it and seek redress in the event
of a false representation or infringement, it does not allow a
registered owner of a semiconductor layout design to do so.
• Also, the Layout-Design is valid only for a period of 10 years
from the date of filing an application for registration or
commercial exploitation in any country, whichever is earlier,
under this Act.

Eligibility under the Act:

• The applications for protection under the Semiconductor
Integrated Circuits Layout Design Act, 2000 are given to certain
people, either alone or jointly. The specific people who are
allowed are as follows:
✓ Creator of the layout design, either himself or his legal
representative.
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 ✓ Person who is a registered layout design agent or someone who
is in the employment of the principal. It must be stated in a
prescribed or written manner.
Infringement of Layout-Design:
• In India, in addition to legal remedies, an infringement of a
Layout-
Design is also regarded a criminal offence. Under the terms of section
56 of The Semiconductor Integrated Circuits Layout-Designs
Act, 2000, infringement of a registered layout-design is
punishable by imprisonment for up to three years or a fine of
Rs. 50,000 up to a maximum of Rs. 10, 00,000, or both.
Trade secrets:
Trade secrets are intellectual property (IP) rights on confidential
information which may be sold or licensed. In general, to qualify as a
trade secret, the information must be commercially valuable because
it is secret, be known only to a limited group of persons.
Few examples of trade secrets are:
• Google's Search Algorithm
• Coca-Cola's Coke Syrup Formula
• KFC's Original Recipe
• McDonald's Big Mac Special Sauce.
Objectives of trade secrets:
• To understand the nature of trade secrets the reason for
protecting them and the practical challenges in identifying and
protecting them.
• To know how to develop an effective trade secret management
program.
Advantages of trade secrets:
• Long-term protection
• Broder scope
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 • Not limited by territories • Less cost and time needed.
• Possible civil and criminal penalties for theft
• Indefinite future protection.
Disadvantages of trade secrets:
• Burden of maintaining secrecy
• Cannot stop others who independently develop.
• May be subject to patent by third party.
• Theft of trade secrets difficult to prove.
• Not suitable if invention can be reverse engineered.
Importance of trade secret:
• It helps the business in protecting their secret formulas.
• It is important in safeguarding the know-how and other key
information that gives them a competitive advantage. Types of
trade secrets
1. The ingredients used in the product: For example, soft drinks
manufacturer Coca-Cola keeps its ingredients a closely guarded
secret and the recipe is accessible only to a select few.
2. Way of manufacturing: A company may get a competitive
edge just by finding a new way of making things. These may
include types of manufacturing equipment, processes, or
systems. For example, computer chip maker Intel came up with
‘Copy Exactly!’ to ensure consistent quality of products
regardless of where it was manufactured.
3. Way of selling and distribution: Companies often devise
unique methods of selling and distributing products, which may
give them an extra edge. A fitting example would be food brand
Kellogg’s coming up with a data-sharing strategy with retailers
to reduce unsold inventory.
4. Advertising strategies: The success of any product or service
also depends on the way of advertising. Firms will always want
to keep their ad strategies protected. Most firms take necessary
precautions to prevent inadvertent disclosure of trade secrets.
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 This is because if a trade secret is disclosed, it is no longer
possible to protect information, particularly in the age of social
media. This is why most companies, while recruiting an agency
to create an advertisement for business, will be required to keep
a watch on who has access to the company’s confidential
business.
Utility models:
Introduction:
A utility model is a patent-like intellectual property right to protect
inventions. This type of right is available in many countries but,
notably, not in the United States, United Kingdom, or Canada.
Although a utility model is like a patent, it is generally cheaper to
obtain and maintain, has a shorter term (generally 6 to 15 years),
shorter grant lag, and less stringent patentability requirements. In
some countries, it is only available for inventions in certain fields of
technology and/or only for products. Utility models can be described
as second-class patents.
Meaning of utility model:
A Utility Model is a protection option, which is designed to protect
innovations that are not sufficiently inventive to meet the inventive
threshold required for standard patents application.
Characteristics of utility model:
• Utility models are rights that protect inventions.
• it has similar granting requirements to patents and confer
exclusivity rights to their owner.
• for a utility model to be granted the invention must be novel
• it should involve an inventive step.
• it must have an industrial application.
Personal data protection bill,2019: The Personal Data Protection
Bill, 2019 was introduced in Lok Sabha by the Minister of Electronics
and Information Technology, Mr. Ravi Shankar Prasad, on December
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11, 2019. The Bill seeks to provide for protection of personal data of
individuals and establishes a Data Protection Authority for the same.
1. Applicability: The Bill governs the processing of personal data
by: (i) government, (ii) companies incorporated in India, and
(iii) foreign companies dealing with personal data of individuals
in India. Personal data is data which pertains to characteristics,
traits or attributes of identity, which can be used to identify an
individual.
The Bill categorises certain personal data as sensitive personal
data. This includes financial data, biometric data, caste,
religious or political beliefs, or any other category of data
specified by the government, in consultation with the Authority
and the concerned sectoral regulator.
2. Obligations of data fiduciary: A data fiduciary is an entity or
individual who decides the means and purpose of processing
personal data. Such processing will be subject to certain
purpose, collection and storage limitations. For instance,
personal data can be processed only for specific, clear and
lawful purpose. Additionally, all
data fiduciaries must undertake certain transparency and
accountability measures such as: (i) implementing security
safeguards (such as data encryption and preventing misuse of
data), and (ii) instituting grievance redressal mechanisms to
address complaints of individuals. They must also institute
mechanisms for age verification and parental consent when
processing sensitive personal data of children.
3. Rights of the individual: The Bill sets out certain rights of the
individual (or data principal). These include the right to: (i)
obtain confirmation from the fiduciary on whether their personal
data has been processed, (ii) seek correction of inaccurate,
incomplete, or outof-date personal data, (iii) have personal data
transferred to any other data fiduciary in certain circumstances,
and (iv) restrict continuing disclosure of their personal data by a
fiduciary, if it is no longer necessary or consent is withdrawn.
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 4. Grounds for processing personal data: The Bill allows
processing of data by fiduciaries only if consent is provided by
the individual. However, in certain circumstances, personal data
can be processed without consent. These include: (i) if required
by the State for providing benefits to the individual, (ii) legal
proceedings, (iii) to respond to a medical emergency.
5. Social media intermediaries: The Bill defines these to include
intermediaries which enable online interaction between users
and allow for sharing of information. All such intermediaries
which have users above a notified threshold, and whose actions
can impact electoral democracy or public order, have certain
obligations, which include providing a voluntary user
verification mechanism for users in India.
6. Data Protection Authority: The Bill sets up a Data Protection
Authority which may: (i) take steps to protect interests of individuals,
(ii) prevent misuse of personal data, and (iii) ensure compliance with
the Bill. It will consist of a chairperson and six members, with at
least 10 years’ expertise in the field of data protection and
information technology. Orders of the Authority can be
appealed to an Appellate Tribunal. Appeals from the Tribunal
will go to the Supreme Court.
7. Transfer of data outside India: Sensitive personal data may be
transferred outside India for processing if explicitly consented to
by the individual, and subject to certain additional conditions.
However, such sensitive personal data should continue to be
stored in India. Certain personal data notified as critical
personal data by the government can only be processed in India.
8. Exemptions: The central government can exempt any of its
agencies from the provisions of the Act:
• in interest of security of state, public order, sovereignty and
integrity of India and friendly relations with foreign states, and
• for preventing incitement to commission of any cognisable
offence (i.e., arrest without warrant) relating to the above

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 matters. Processing of personal data is also exempted from
provisions of the Bill for certain other purposes such as:
➢ prevention, investigation, or prosecution of any
offence, or ➢ personal, domestic, or ➢ journalistic
purposes.
However, such processing must be for a specific, clear, and lawful
purpose, with certain security safeguards.
9. Offences: Offences under the Bill include: (i) processing or
transferring personal data in violation of the Bill, punishable
with a fine of Rs 15 crore or 4% of the annual turnover of the
fiduciary, whichever is higher, and (ii) failure to conduct a data
audit, punishable with a fine of five crore rupees or 2% of the
annual turnover of the fiduciary, whichever is higher. Re-
identification and processing of de-identified personal data
without consent is punishable with imprisonment of up to three
years, or fine, or both.
10. Sharing of non-personal data with government: The
central government may direct data fiduciaries to provide it with
any: (i) non-personal data and (ii) anonymised personal data
(where it is not possible to identify data principal) for better
targeting of services.
11. Amendments to other laws: The Bill amends the
Information Technology Act, 2000 to delete the provisions
related to
compensation payable by companies for failure to protect
personal data.
Aesthetic values: In an intellectual property law, an aesthetic design
or values relates to the outward appearance of a product. It is what
makes a product attractive or appealing to customers and visual
appeal is one of the key considerations that influence the decision of
consumers to prefer one product over another.
Importance of aesthetic value:
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 • Aesthetics makes us happy.
• On an emotional level they elicit feelings of happiness and calm.
• They connect us to our ability to reflect on and appreciate the
world around us which in turn gives us feelings of contentment
and hope.
What is the nature of aesthetic value?
The Nature of Aesthetic Value proposes that aesthetic goodness, the
property in virtue of which works of art are valuable, is a matter of
their capacity in appropriate circumstances to give satisfaction.
Career opportunities in intellectual property rights:
• Can work for in any product development company.
• Hospital field.
• Research and development labs.
• Law firms or start-ups or can own a IP company.
• Independent IP litigation practice or secure jobs as IP agents in
different industries.

MODULE -03
PATENTS AND COPYRIGHTS
Introduction: A patent is a type of intellectual property that gives its
owner the legal right to exclude others from making, using, or selling
an invention for a limited period of time in exchange for publishing
an enabling disclosure of the invention. In most countries, patent
rights fall under private law and the patent holder must sue someone
infringing the patent in order to enforce their rights. In some
industries patents are an essential form of competitive advantage.
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Meaning & Definition:
A patent is an exclusive right granted for an invention, which is a
product or a process that provides, in general, a new way of doing
something, or offers a new technical solution to a problem. To get a
patent, technical information about the invention must be disclosed to
the public in a patent application.
Definition: A Patent is a right granted to an inventor by the
government which gives him sole control over his invention and
enables him to stop others from making, using, selling, offering to
sell, or importing his invention”.
OBJECTIVE:
• To provide protection of creativity of creators.
• To promotes the creativity of new creators.
• To accelerate the technological and industrial development of
the countries.
• To provide the exclusive right to invention and affords
protection against unauthorized use of invention by third parties.
• Understand the meaning of specifications.
Elements of Patentability:
What is Patentable Subject Matter?
The below-mentioned list is the Patentable Subject Matter that the
invention is patentable or not, which are as follows: -
• Utility
• Novelty
• Non-Obviousness
• Inventive Steps
A. Utility: Patents must be for inventions that are useful. This
means the item being patented has a credible, specific, and
substantial purpose. Utility must be specific to the item being
patented; general utility that applies to a broad class of items
will not suffice.
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 B. Novelty: The novelty requirement has two parts: novelty and
statutory bars to patentability. Novelty means the invention was
not known or used by others; that is, it must be new. The
statutory bar requires that the patented item must not have
already been in public use or for sale in the U.S. for more than
one year prior to the date the patent was applied for.
C. Non obviousness: An invention is said to be non-obvious when
it is different from the existing inventions present in the state of
the art. For the grant of patent protection, the aspect of
‘newness’ is not enough for the invention. What has to be seen
is that it also comprises elements that are undoubtedly different
from the existing inventions in the relevant industry. Also, an
invention must be of a nature that is not obvious or simple in its
operational aspects. The person in the relevant field who is not
an expert must be able to conclude that the invention sought to
be patented is different from existing inventions and adds a new
element that is not obvious in nature.
D. Inventive Steps: “Inventive steps” means a feature of an
invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and
that makes the invention not obvious to a person skilled in art.
The product must come into being because of an invention
which has a feature that:
E. Entails technical advance over existing knowledge or
F. Has an economic significance and
G. Makes the invention not obvious to a person skilled in art.
Registration process for a Patent Under Patent act, 1970:
Step 1: Decision of doing it yourself or engaging a professional
Before you proceed with the filing of patent application you need to
decide if you will be taking any help of patent professional or
undertaking the patent process itself. Considering the number of
deadlines is recommended that you hire a professional who has
experience in the world of patent.
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If you decide to take the help of professional make sure that you sign
a NDA (Non-Disclosure Agreement)with the patent professional
before revealing about your invention.
Step 02: Check the Patentability: Before filing patent application in
India, It is mandatory to do a detailed patentability search to
determine whether a patent can be granted or not. It should include
both patent and nonpatent references. Based on the information
discovered during the search, you have the option of calibrate your
patent application so that you do not end up filing for a patent which
already exists.
A patent should meet all the criteria as per Indian Patent Act:
• Novelty
• Inventiveness
• Non obviousness
Step 03: Drafting the Patent Application (Provisional or
Complete): A patent application is filed in Form-1 with the
prescribed fee mentioned in schedule 1 at a patent office in
accordance with the jurisdiction. Each patent application is
accompanied with patent specification (Form 2)
According to the State of Invention, you can either file a provisional
or complete application. If it is still in development mode it is
recommended to file a provisional application to block all important
filing dates. A complete specification is not filed, the application shall
be deemed to be abandoned. A patent specification should include –
Title of the patent invention, Background for the Invention, Summary
of the Invention/Object of the invention, Explanation if any of the
patent drawings, description of the invention, Patent abstract of the
disclosure and sequence listings.
Step 04: Filing the Patent Application in India: First filing in India
Once the application is drafted, you need to file the patent application
in India and secure the filing date. If provisional application is filed
then complete specification shall be filed Within 12 months from the
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date of filing of the application, and if the complete specification is
not filed within that time, the application shall be deemed to be
abandoned.
Foreign filing decision: If you are interested in protecting your
invention in other foreign jurisdiction you have to file it within 12
months from your first filing date based in the countries you are
interested in.

Every application for patent to be filed in the forms mentioned

below:
✓ Form 1: Application for grant of commission.
✓ Form 2: provisional/Complete specification.
✓ Form 3: Statement and Undertaking regarding foreign
application under section 8 as per the patent act herein after re
offered to as, the act (Only required if a corresponding patent
application is filed in another country).
✓ Form 5: Declaration as to inventor ship (Only to be filed along
with the complete application)
✓ Form 26: Form for authorization of a patient agent (Only
required if you are using a patent agent to help you file the
application)
✓ Form 28: To be submitted by startup or small entity (only
required if you are claiming startup and entity status).
Priority Documents:
In case you are claiming priority from a foreign patent application and
entering India, you may be required to provide the priority document
as well.
Step 05: Publication of Patent Application: Every application is
published in the official journal after 18th months period from the
date of filing of application or the date of priority of application
whichever is earlier. There is a provision for early publication of an
Indian Patent application by filing a formal request.
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The early publication rule does not apply if:
a. Secrecy directions are imposed under section 35 of the act.
b. Application has been abandoned under section 9(1) of the act.
c. The applicant has withdrawn his application 3months prior to
the expiry of said prescribed period of 18 months.
Step 6: Examination of Patent Application: Every patent
application is not examined; Applicant or any other third party must
file a request for examination under form 18 and for expedited
examination in Form18A (under conditions as prescribed in the rules)
Process of examination (Objections by examiner and responding to
objections). Once the application is filed it will end up on the desk of
examiner. During Examination Process examiner will scrutinize
application that it is in accordance with patent act and rules.
The examiner creates 1st examination report of the application and
will state ground for objections if any. There after the applicant is
required to comply with the requirements within a period of 6 months
from the date of FER which can be extended by 3months by filing
Form4.
Step 7: Grant of Patent: The order of grant is given when all the
requirements of patent act are compiled, and it will be published in
Patent Journal.
Step 8: Renewal: After the grant of patent, it needs to be renewed
from
3rd year onward by paying renewal fee as prescribed in schedule 1. A
Patent in India can be renewed for maximum period of 20 years from
the date of filing.
What Inventions or Processes can get a patent registration?
The following can obtain patent registration:
• Art, Process, method, or manner of the manufacture
• Machine and apparatus
• Any products produced by manufacturing.
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 • Computer software with technical application
• And even product patents for food, chemicals, medicines, or
drugs.
Patentee:
Who is a Patentee?
Patentee is a person for the time being entered in the register of
patents as the grantee or proprietor of the patent. Patentee is the one to
whom patent has been granted. Patentee is entitled to deal with his
such property in the same manner as the owner of any other movable
property deals with his property.
Rights and Duties:
As per Article 284 of the TRIPS (Trade-Related Aspects of
Intellectual Property Rights), Agreement provides the following
Rights and Obligations of Patentee:
Rights of Patentee as Per the Patent Act, 1970:
• Right to Exploit the Patent: When the invention is a product,
the Patentee has the exclusive rights to use, make, import, or sell
for these purposes related to an invention in India. On the other
hand, when the invention of the inventor is a procedure or
process of manufacturing of any article or substance, the right to
exploit means the exclusive right exercise or use the procedure
or method in the territory of India.
• Right to Grant License: The Patentee of a Patent is given the
right to grant license, transfer rights, or enter some arrangement
for some consideration. The assignment or license to be valid
and legitimate it is required to be in writing and should be
registered with the Controller of Patent. Unless a document of
assignment of a Patent is not registered, it is not admitted as
evidence of title of the Patent, and such a rule is applicable to
the assignee, not the assignor. (As per Section 69(5) of the
Patent Act, 1970)

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 • Right to Surrender: By giving notice in the prescribed manner,
the Patentee of a Patent has the right to surrender a Patent at any
time and at his/her own discretion. The advertisement for such
an offer of surrender is required to be done in the Journal. The
publication is done to give an opportunity to the people to
oppose the offer of surrender of the Patentee. This is done when
the Patentee apprehends his/her non-performance of the Patent
in the future and upon which he/she decides to surrender the
Patent.
• Right to Sue for Infringement: The Patentee has the right to
sue for Infringement of Patent in District Court has the
jurisdiction to try the suit.
• Right to Use and Enjoy Patent: The Patentee of the Patent has
the exclusive right to exercise, make, utilize, convey, or offer or
the patented substance or article in India or to practice or utilize
or the process or techniques associated with the invention. Such
rights can be exercised either by the Patentee himself/herself or
by his/her licensees or agents.

Duties/Obligations of Patentee as per the Patent Act, 1970.

Once a Patent is granted to a Patentee, there are certain Rights and
Obligations of Patentee.
The Obligations of Patentee are as follows:
a. Duty to Discloses: 8 of the Patent Act, 1970, accomplishes the
obligation to disclose of the Patentee. Section 8(1) of the Patent
Act, 1970, tells that the Patentee has an obligation to disclose all
required data related to the remote uses of comparative or same
invention documented by him/her or through him/her or through
someone by him/her at the time of applying or within 6 months
of applying. The Patentee of a Patent is required to record an
announcement of all the listed particulars viewing the
applications and, in addition to the above, an endeavour to

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 disclose all the points of interest of any subsequent applications
that might be documented at the future stages.
Section 8(2) of the Patent Act, 1970, puts an obligation on the
Patentee to provide all the data required by the Controller of
Patent with regards to the relating of any remote applications at
whatever point demand is made by the Controller of Patents
within a period of 6 months of such a demand by the Controller
of Patent. The first part of the obligation of Patentee begins
when a man records an application of Patent. On the other hand,
the second part begins after a demand is made by the Controller
of Patents under the Patents Act, 1970.

b. Duty to Request for Examination: Not like other Intellectual

Property Rights, the Registration process of Registration of
Patent does not accommodate any kind of programmed
examination of the grant of Patent application. In the procedure
above mentioned, as indicated by Section 11(B) of the Patents
Act, 1970, the obligation is thrown on the Patentee
himself/herself to ask for the Controller of Patents to look at the
growth or development connected for Patent.

c. Duty to Respond to Objections: The Controller of Patent

before accepting the examination request passes it to the analyst
who looks at the growth and gives a report to the Controller of
Patent known as the First Examination Report (FER). On certain
cases there may be some protests which will be brought up in
the First Examination Report, it is the right of Patentee to reply
to such opposition complaints and consent to the corresponding
within a time period of a year of the issuance of the First
Examination Report (FER) falling which the application of the
Patentee will be considered to be surrendered by the Controller
of Patent.

d. Duty to Clear All Objections: It is the obligation of the owner

of the
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 Patent to respond to the raised objections as well as to clear and
remove each one of the raised objections and, in addition,
certain oppositions raised against his/her invention. If the
Controller of Patent has not fulfilled, he/she, it may also require
a meeting also. Furthermore, it is the obligation of the owner of
Patent to go for a consultation and clear all the objections and,
in addition, oppositions, if are raised any, against the invention
of the inventor.

e. Duty to Pay Statutory Fees: The Patentee has an obligation to

pay all the statutory expenses required to get a grant of a Patent
in the process of Registration without failure generally, his/her
application for the grant of Patent won’t be managed. Sec 142 of
the Patent Act, 1970, accomplishes the provisions recognized
with payment of charges and, in addition, the consequences for
non-payment of such prescribed fees.
After this process is imitated to and the Patentee of Patent clears
every one of the restrictions and protests raised against his/her
invention, if the Controller of Patent is fulfilled, he/she will
grant a Patent to the invention and publishes it in the Journal, or
generally, the Controller rejects such a Patent.
Assignment and License of Patents:
• An assignment of patent is a transfer of all the proprietary rights
by the patentee to the assignee.
• The license is the right granted to work the invention by
withholding the patentee's proprietary rights.
Assignment:
The term ‘assignment of patent’ is not defined in the Indian Patents
Act. An assignment is an act by which the patentee assigns whole or
part of the patent rights to the assignee who acquires a right to prevent
others from making, exercising, using, or vending the invention.
There are three kinds of assignments. Those are as follows: -

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 1. Legal Assignment: An assignment or an agreement to assign
for an existing patent is the legal assignment, where an assignee
may enter his name as the patent owner. A patent that is created
by the deed can only be assigned through a deed. A legal
assignee entitled as a proprietor of the patent acquires all rights
thereof.
2. Equitable Assignments: Any agreement that includes a letter in
which the patentee agrees to give the certain defined share of a
patent to another person is an equitable assignment of patent.
However, in that case, an assignee cannot have his name entered
in the register as a proprietor of the patent. But the assignee can
give notice of his interest in the patent entered in a register.
3. Mortgages: A mortgage is an agreement where the patent rights
are wholly or partly transferred to the assignee in return for the
sum of money. Once an assignor repays the sum to an assignee,
the patent rights are restored to the assignor and patentee. A
person in whose favour the mortgage is made must not be
entitled to have his name entered in the register as a proprietor,
but he can get his name entered in the register as the mortgagee.
2. Licenses:
The Patents Act allows the patentee to grant a License by way of an
agreement under section 70 of the Act. A patentee, by way of granting
a license, may permit a licensee to make, use, or exercise the
invention. The license granted is not valid unless it is in writing. A
license is a contract signed by the licensor and the licensee in writing.
The terms agreed upon by them include the payment of royalties at a
rate mentioned for all articles made under the patent. Licenses are of
the following types:
1. Voluntary licenses: It is a license given to any other person
to make, use, and sell the patented article as agreed upon the
terms of the license in writing. As it is a voluntary license,
the Controller and Central government do not have any role
to play. The agreement is mutually agreed upon the terms and
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 conditions made by the licensor and licensee. In case of any
disagreement, the licensor has the right to cancel the
licensing agreement.
2. Statutory licenses: The central government grants statutory
licenses by empowering the third party to make/use the
patented article without the patent holder’s consent in view of
public interest. For an example of such statutory licenses
which is a compulsory license. Compulsory licenses are
defined as “authorizations permitting a third party to make,
use, or sell a patented invention without the patent owner’s
consent.
3. Exclusive Licenses and Limited Licenses: It depends upon
a degree and extent of rights conferred on the licensee; a
license can be an Exclusive or Limited License. An exclusive
license excludes all the other persons, including the patentee,
from the right to use the invention. Anyone or more rights of
the patented invention
can be conferred from the patentee’s bundle of rights. The
rights can be divided and assigned, restrained entirely, or in
part. The limitation may arise in a limited license as to
persons, time, manufacture, place, use, or sale.
4. Express and Implied Licenses: An express license is one
where the permission to use a patent is given in express
terms. This license will not be valid unless it is in writing in
the document embodying upon terms and conditions. In case
of implied license, though permission is not given in express
terms, it is implied from the circumstances. For instance,
where a person buys a patented article, either within a
jurisdiction or abroad either directly from a patentee or his
licensees, there is an implied license in any way and to resell
it.
Difference Between Assignee and Licensee

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 • An assignee can reassign his rights to third parties while the
licensee cannot change a title or cannot reassign his rights to the
third person.
• An assignee is assigned with all the patent owner’s rights while
the licensee cannot enjoy the rights.
• An assignee has the right to sue an infringer while a licensee is
not empowered with the right to sue any party for the
infringement of the patent in his name.
RESTORATION OF LAPSED PATENTS:
Patent is granted for a term of 20 years from the date of filing of the
Patent in the Indian Patent Office. As per Section 53 of Patent Act,
1970, the Patentee is required to pay a renewal fee till the date of
possession given by the Indian Patent Office. If the holder of Patent
does not pay the renewal or maintenance fees within the prescribed
time limit given by the Indian Patent Office, such a Patent will lapse.
The Patent Act, 1970, provides for provisions related to Restoration
of Lapsed Patent in India. In the article, we will discuss the complete
procedure of disposing of the application for the Restoration of
Lapsed Patent in India.
The Patentee, or the legal representative of Patentee, can make an
application for the Restoration of Lapsed Patent in the manner
prescribed manner in the Patent Act, 1970. In the circumstance
where the Patent is held by two or more persons jointly, then with the
permission of the Controller of Patent, one or more of the joint
owners or without joining others can apply for Restoration of Lapsed
Patent in India.
The application for Restoration should be filed within 18 months from
the date on which the Patent ceases to have effect. However, any
person can pay the renewal fees of the application for the Restoration
of a Lapsed Patent in India. Still, the application of Restoration
should be made by the Patentee himself/herself or by his/her legal
representative. The application for Restoration of a Lapsed Patent can

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be made within one year from the date on which the Patent has
lapsed.

Surrender and Revocation of Patents:

Surrender of Patent
A patent can be voluntarily surrendered at any time by giving a
notice to the controller in the prescribed manner. The notice or the
application shall contain an offer to surrender the patent. This can be
opposed by any interested person within 3months. Section 63 of the
Patents Act, 1970 deals with the surrender of a patent.
63(1)- The patentee can offer to surrender his patent by giving notice
to the controller in the prescribed manner.
63(2)-The offer to surrender the patent should be published by the
controller, and every person interested in the patent must also be
notified of the same.
63(3)-After the publication by the controller, any interested person
can oppose the surrender, by giving notice to the controller which
should be notified by the controller to the patentee. 63(4)-If the
patentee or the opponent wants to be heard, the controller on being
satisfied that the patent may be surrendered and after the hearing, may
accept the offer and revoke the patent by the order.
63(5)- The notice of opposition must be given within a period of 3
months from the date of publication of the notice to surrender the
patent. The opponent may give notice of opposition to the controller
in FORM14 in duplicate as per Rule87. 63(6)-If the patentee's offer to
surrender the patent is accepted by the controller. He may direct the
patentee to return the patent and on receiving the patent revoke it by
order and publish the revocation of the patent. While revoking the
patent, the controller may direct the patent to return the patent and on
receipt of the patent, the controller shall publish the revocation of the
patent.

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Revocation of Patents
Section 64 of the Patents Act, 1970 deals with the ‘Revocation of
patents. A patent that has been granted to an invention can be revoked
by the Appellate Board in the following ways:
➢ on a petition filed by any interested person; or
➢ on a petition filed by the Central Government; or
➢ on a counterclaim in a suit for infringement of the patent by the
High Court. Grounds for Revocation of Patents A patent may be
revoked on any of the following grounds.
➢ where an invention as claimed in a valid claim of earlier priority
date which is included in the complete specification of another
patent.
➢ where the patent application was filed by a person who is not
entitled under the provisions of the Act and was granted a patent
on such application.
➢ where the patent was wrongfully obtained and the rights of the
petitioner or any person under/through whom he claims, were
contravened.
➢ when the subject of a claim of the complete specification is not
an invention within the meaning of the Act.
➢ where the invention that is being claimed is not new having
regard to what was publicly known or used in India before the
priority date of the claim and having regard to what was
published in any of the documents, whether in India or
elsewhere.
➢ where the invention that is claimed is obvious and lacks any
inventive step, having regard to what was publicly known, used
or published in India, before the priority date.
➢ where the invention is not useful.
➢ where the invention and the method by which it is to be
performed is not sufficiently and fairly described by the
complete specification. In other words, the description of the
method or the instructions for the working of the invention as
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 specified in the complete specification are insufficient to enable
a person of average skill and knowledge of the art to which the
invention relates, to operate or work the invention or where the
best method of performing the invention which is known to the
applicant is not disclosed.
➢ where the scope of any claim is not defined properly or based on
the matter which his not disclosed in the specification. shall
where a false suggestion or representation was made to obtain
the patent.
➢ where the subject of any claim of the complete specification is
not patentable under the Act.
➢ the invention that is being claimed was secretly used in India
before the priority date of the claim.
➢ where the information required under Section 8 has not been
disclosed by the applicant of the patent to the Controller or the
information that has been furnished is false to his knowledge.
➢ where any direction of secrecy passed under Section 35 has been
contravened by the applicant or made an application in
contravention of Section 39 for the grant of a patent outside
India.
➢ where the permission to amend the complete specification under
Section 57 or 58 was obtained by fraud.
➢ the complete specification does not disclose or mentions the
wrong source or geographical origin of biological material used
for the invention.
➢ the invention was anticipated having regard to the knowledge
which was available within any local or indigenous community
within India or elsewhere. However, where the invention
claimed is not new, obvious or lacks any inventive step, having
regard to what was publicly known or used in India or published
in India or elsewhere, before the priority date of the claim.
➢ a personal document, secret trial or secret use is not considered.

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 ➢ where the patent is for a process or for a product that is made by
a process which is claimed, the importation of the product which
is made abroad by that process into India will constitute
knowledge or use in India of the invention, on the date of
importation. Except where the product has been imported for the
purpose of reasonable trial or experiment only.

INFRINGEMENT OF PATENTS:
Patent infringement means the violation of the exclusive rights of the
patent holder. As discussed earlier, patent rights are the exclusive
rights granted by the Government to an inventor over his invention
for a limited period. In other words, if any person exercises the
exclusive rights of the patent holder without the patent owner's
authorization, then that person is liable for patent infringement.
Sections 104-114 of the Patents Act, 1970 provide guidelines relating
to patent infringement.

Unlike the Design law, the Patents law does not specify as to what
would constitute infringement of a patented product or process.
However, the following acts when committed without the consent of
the patentee shall amount to infringement:
(Making, using, offering for sale, selling, importing the patented
product.)
Using the patented process, or using, offering for sale, selling or
importing the product directly obtained by that process.

TYPES OF PATENT INFRINGEMENT:

1. Direct Infringement: As any patent lawyer will tell you, this is the
most obvious form of unauthorized use. This involves producing,
utilizing, selling (or attempting to sell), or importing a protected idea
or invention without obtaining authorization from the rightful owner.
Direct infringement means that the unauthorized version either
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performs the exact same function as the original or meets the
original's description.
2.Indirect Infringement: There are two types of indirect
infringement. One is contributory infringement, which refers to the
purchasing or importing of materials that are 152Intellectual Property
Rights intended to be used as part of a patented item. In order to
defend your patent in this type of case, you would need to prove that
those materials were intended to be used only as part of your
protected patent. The other type of indirect infringement is called
infringement by inducement, which refers to any activity performed
by a third party that causes someone to directly infringe on a patent.
In other words, one individual or organization would need to
convince another individual or organization to take part in behaviours
that lead to infringement on the original patent. Even if one of those
parties is not aware of the original patent, they can still be found
responsible.
3. Wilful and Literal Infringement: Wilful infringement
involves the concept of intention. It refers to an act of infringement
that involves a complete disregard for patent protection. Simply put, it
means that the infringer likely knew about the patent and chose not to
follow the law. Literal infringement refers to incidents involving the
exact copy of a patented item being used, sold, or imported. This
copied version would contain every feature outlined in the original
patent. Although rare, it's just as blatant as wilful infringement. In
some cases, involving literal infringement, the infringing party may
claim that they are the ones with the licensed rights to that product or
that the original patent is somehow invalid. However, it's likely that
the infringing party will be aware of the patent in question and will
(for whatever reason) choose to infringe upon it anyway.
4. Doctrine of Equivalents Infringement: It's also important to
note that even if the infringing item is not exactly the same as the
patented item, a judge may find in favour of the patent holder if the
item performs the same function and yields the same results. The
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patent holder may win this case even if the newer product is somehow
more efficient. A judge might cite the doctrines of equivalents,
complete coverage, compromise, estoppel, and superfluity to justify
that kind of ruling. If you intend to protect your trademarks and
patents properly, it's important to understand the scenarios you might
encounter and why it's so important to find a good patent lawyer if
any infringements should ever occurs. When and if you need to
defend your patent in a court of law, we're here to help. For more
information, please contact us today.
EXCLUSION FROM INFRINGEMENT
The law however enumerates certain exceptions to infringement:
(a) Experimental and Research: Any patented article or process
can be used for the following purposes.
-Experiment
- Research
• Instructing the pupils: It is also permitted to make, construct,
use, sell or import a patented invention solely for the uses
reasonably related to the development and submission of
information required under any law for the time being in force,
in India, or in a country other than India, that regulates the
manufacture, construction, use, sale or import of any product.
All such acts, if within the bounds as created above, cannot be
challenged as infringing the rights of the patentee.
(b) Parallel Importation under certain conditions: Patented
article or article made by using the patented process can be imported
by government for its own use. Also, a patented process can be used
by the government solely for its own use. Moreover, the government
can import any patented medicine or drug for the purposes of its own
use or for distribution in any dispensary. hospital or other medical
institution maintained by the government, or any other dispensary,
hospital or medical institution notified by the government.

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EXCEPTION TO THE INFRINGEMENT OR NON-
INFRINGING ACTIVITIES
• Government Use: As per section 47 of the Indian Patents Act,
1970, an invention can be used any time after the application for
a patent is filed, or after the patent is granted by the 'Central
Government' and by 'any person authorized by it. The patented
product may be imported or made by or on behalf of the
government. Similarly, the patented process may be used by or
on behalf of the government for its own use.
• Research Exemption: Any person may use or make the
patented invention merely for the purposes of experiment or
research including and imparting instructions to students.
Supply of Patented Drugs to Health Institutions. A patented
invention in respect of any medicine or drug may be imported
by the Government for the purpose merely of its own use or for
distributing in any dispensary, hospital or medical Institution
maintained by or on behalf of the government. Use of Patented
Invention on Foreign Vessels Patent rights are not considered to
be infringed where the foreign vessel/aircraft/land vehicle
temporarily or accidentally comes to India and uses the
invention in the body of the vessel/in
machinery/tackle/apparatus/in its construction or working as per
section 49 of the Indian Patents Act. However, this provision is
applicable only to the foreign vessel/aircraft/land vehicle of
those foreign countries that provide reciprocity to Indian
vessel/aircraft/land vehicle.
• Bolar-Like Provision: As per the Patents Act, 1970 u/s107A
(a), any act of making, constructing, using or selling a patented
invention solely for uses reasonably relating to the development
and submission of information required under any law for the
time being in force, in India, or in a country other than India that
regulates the manufacture, construction, use or sale of any
product, is not to be considered as infringement.
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 • Parallel Import: Under section 107A (b) of the Indian Patents
Act,
1970 the importation of patented products by any person authorized
by the patent owner or the licensee of the patent owner to any
country will not be considered as an infringement.

Defences, etc., in suits for infringement as per section 107 of the

Indian Patents Act, 1970:
(1) In any suit for infringement of a patent every ground on which it
may be revoked under section 64 of Patents Act shall be available as a
ground for defence. (2) In any suit for infringement of a patent by the
making, using or importation of any machine,
apparatus of other article or by the using of any process or by the
importation, use or distribution or any medicine or drug, it shall be a
ground for defence that such making, using, importation or
distribution is in accordance with any one or more of the conditions
specified in section 47 of the Indian Patents Act.
Jurisdiction: A patent holder can file a suit for infringement in the
District Court or High Court. However, counterclaims for revocation
of the patent is made by the defendant, the suit along with the
counterclaims are transferred to the High Court for a decision on the
validity of the patent.
The IPA, however, is silent as to which courts will have the
jurisdiction to hear the case. According to s 19 of the Civil Procedure
Code 1908, the patentee can bring the suit for infringement in the
court which has jurisdiction in the area where he/she resides or carries
on a business or personally works for gain. The patentee can also
bring the suit for infringement in a court which has jurisdiction in the
area where the infringing activity took place.
Rights of Patent Exclusive Licensee the Indian Patent Act under
section 109 provides rights alike to the exclusive license holder as
that of patentee to institute a patent infringement suit if the act of
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infringement is committed after the date of the license. The court
considers any loss suffered or likely to be suffered by the exclusive
licensee before awarding damages or an account of profits or granting
any other relief and considers the profits earned by means of
infringement so far as it constitutes an infringement of the rights of
the exclusive licensee as such.

Limitation period for Patent Infringement suit- India

The Indian Limitation Act governs the period of limitation for
bringing a suit for infringement of a patent, which is three years from
the date of infringement. Therefore, it is pertinent to note that the
limitation period for the suit runs from the date of infringing act and
not from the date of grant. Another point worth noting is that if the
patent has ceased to have an effect due to non-payment of the renewal
fee, then the patentee will not be entitled to institute the proceedings
for the infringement committed between the date on which patent
ceased to have an effect and the date of publication of the application
for restoration of the patent.
The Legal Interface of IPR: It is worth noting that all the IPR
laws (excluding patent and designs laws) provide penal provisions
to prevent infringement.
• Administrative Remedy: When infringing goods are imported
into Indian Territory, the IP owner can approach the Collector of
Customs and prevent the entry of these goods into the Indian
market. The IP owner must provide the name of the exporter,
consignee, port of entry, name of the ship, etc to avail
him/herself of this remedy.
• Civil Remedy Interim Injunctions: Interim injunctions are
granted during the pendency of the case even before a full-
fledged trial. This relief is granted by a summary procedure
based on the admitted facts and by establishing: al A prima facie
case where the burden of proof lies on the patentee to establish
the patent violation. There are more chances of proving the
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 prima facie case if the patent is sufficiently old and b) A balance
of convenience in favor of the plaintiff as per the doctrine of
relative hardships. The plaintiff would suffer irreparable loss if
his/her prayer for a temporary injunction is not allowed.
Usually, in patent infringement cases, an interim injunction is not
normally granted before a full-fledged trial. It is a kind of norm that
whenever the patentee files a suit for infringement, the
defendant/infringer counterclaims for invalidity. For example, in the
case of Novartis AG v Mehar Pharma 2005 PTC 160 (para 28), as
soon as the defendant counterclaims for invalidity it becomes difficult
for the patentee to establish a prima lace case because of which the
court does not grant any injunction against the defendant.
Under Indian law, there is no presumption of the validity of a recent
patent. In the case of patents older than five years, the court may
presume the validity of a patent. However, in the case of patents
where a Certificate of Validity has been granted under s 130 of the
IPA either by the High Court or by the Intellectual Property Appellate
Board (IPAB), then the patentee can demand an Interim injunction.
Permanent injunctions are granted after a full-fledged trial. If the
court concludes, after a full-fledged trial, that the plaintiff had
unjustly obtained an interim injunction before trial, then the Court
will direct the plaintiff to compensate the defendant for the losses that
the defendant had suffered due to the subsistence of the injunction
prior to the trial.
REMEDIES FOR PATENT INFRINGEMENT
An action for infringement must be instituted by way of a suit in any
District Court or a High Court having jurisdiction to entertain the suit.
The plaintiff on satisfying the court about infringement of his patent
would be entitled to the following relief.
• Interlocutory injunction
• Damages
• Account of profits
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 1. Interlocutory Injunction: The Plaintiff may at the
commencement of the action move for an interim injunction to
restrain defendant from committing the acts complained of until
the hearing of the action or further orders. The plaintiff should
make out a prima facie case and also show that the balance of
convenience in his favor
2. Damage: In assessing the damages the important question is
what the loss is sustained by the patentee. The loss must be the
natural and direct consequence of the defendants’ acts. The
object of damages is to compensate for loss or injury.
3. Accounts of Profits: Where a patentee claims the profits made
by the unauthorized use of his patent, it is important to ascertain
how much of his invention was appropriated, in order to
determine what proportion of the net profits realized by the
infringer was attributable to its use.

PENALTIES FOR PATENT INFRINGEMENT:

The Patents Act 1970 provides Chapter XX regarding the penalties
for patent infringement. The various parameters laid down for an act
which will amount to penalties for the patent infringement, which are
as below:
❖ Section 118- of the Patents Act, a person is liable for the
imprisonment which may extend to two years or fine or both in
the following cases: if any person fails to maintain the secrecy
regarding the inventions relevant for the defence purposes under
Section 35, or, if any person fails to maintain the secrecy
regarding the inventions relevant for the defence purposes under
section 35, or, if any resident makes an application for grants of
a patent outside India without prior permission, in contravention
to section 39.
❖ Section 120-if any person falsely represents that any article sold
by him is patented in India or is subject to an application for
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 patent in India then he shall be liable for a fine which may
extend to Rs. 1 Lakhs.
❖ Section 121-if any person falsely uses the word 'patent office'
for his place of business or in any document issued by himself
which mislead the belief of others then he shall be liable for
imprisonment which is extended to six months or fine or both.
❖ Section 122-if the person fails or refuses or falsely furnishes the
following: Any false information is given to the Central
government under section 100 sub-section (5) Any false
information is given to Controller under section 146 He shall be
liable for the fine which may extend to Rs 10 Lakhs.
❖ Section 123 if any person who has restrictions on practice as
patent agents under section 129 contravenes the provision, then
shall be liable for the fine which may extend for Rs 1 Lakhs for
the first time and Rs 5 Lakhs in case offence is repeated for the
second time.
❖ Section 124 if the company has committed any offence under
this Act, then the person in charge of the conduct of the business
of the company will be liable under this provision.
Suits for the Patent infringement:
Chapter XVIll of the Patents Act 1970 is regarding the suits
concerning for patent infringement. The following are the provisions
which guide the owner of the patent to file suits for patent
infringement:
for the groundless patent infringement proceedings, then the
aggrieved person may bring the suit against him. The aggrieved
person can seek for the following reliefs from the court.
a) He can ask for the declaration that threats are unjustifiable
b) An injunction against the threats
c) Damages Section 109-The exclusive licensee can take the
proceedings against the patent infringement and can ask for the
following reliefs from the court:
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 Damages, Accounts of profits for patent infringement, Other such
relief that the court shall take into consideration if any loss suffered,
or profits earned from patent infringement.
d) Reliefs in suits for patent infringement: Under section 108, the
court may grant the relief in any suit for the patent infringement
includes the injunction, damages, and accounts of profits. The court
can also order the goods found to be Infringing or predominant use
of which is in the creation of infringing goods shall be seized,
destroyed, or forfeited and can grant compensation.
Appeals made in case of patent infringement.
The Chapter XIX under the Patents Act 1970 deals with the appeals
to the Appellate Board. Section 116- The Appellate Board established
under section 83 of the Trademarks Act, 1999[1] for the purposes of
this Act, and Appellate Board shall exercise the jurisdiction, authority
and power conferred on it by or under this Act.
Section 117(A)- Appeals to the Appellate Board for patent
infringement the appeal shall not lie from any order, direction or
decision issued or made under Patents Act by the Central
Government, or order of the Controller for the purpose of giving
effect to any such order, direction, or decision.
The appeal is allowed for the orders and the decision of the Central
government and Controller under the section 15 to section 20, section
25(4), section 28, 51, 54, 57, 60, 61, 63, 68, 69(3), 78, 84, 85, 88, 91,
92 and
94 of the Patents Act 1970
• The appeal shall be in a prescribed form and verified which is
accompanied by the copy of order direction or decision
appealed. The fees to be furnished as prescribed.
• The appeal shall be made within the three months from the date
of decision, direction or by the Central Government or by the
Controller. After the prescribed time, the Appellate Board to
allow to the appeal for patent infringement in accordance with
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 the rules. And to allow the appeal for patent infringement in
accordance with the rules.
PATENT OFFICE AND APPELLATE BOARD:
A patent office is a governmental or inter-governmental organization
which controls the issue of patents. In other words, "patent offices are
government bodies that may grant a patent or reject the patent
application based on whether the application fulfils the requirements
for patentability.
LIST OF PATENT OFFICES
For a list of patent offices and their websites, see the World
Intellectual Property Organization (WIPO) maintained list, here. The
entries shown in italics are regional or international patent office.
1. African Regional Intellectual Property Organization (ARIPO)
2 IP Australia (IPA)
3. Barbados Corporate Affairs and Intellectual Property Office
(CAIPO)
4. Canadian Intellectual Property Office (CIPO)
5. Chinese National Intellectual Property Administration (CNIPA)
6. Ethiopian Intellectual Property Office (EIPO)
7. European Patent Office (EPO)
8. Eurasian Patent Organization (EAPO)
9. German Patent Office (DPMA)
10. Gulf Cooperation Council (GCC) Patent Office (GCCPO)
11. Indian Patent Office (IPO)
12 Intellectual Property Office of Singapore (IPOS)
13. Israeli Patent Office
14. Italian Patent and Trademark Office

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15. Japan Patent Office (JPO)
16. Korean Intellectual Property Office (KIPO)
17. Mexican Institute of Industrial Property (IMPI)
18. National Industrial Property Institute, France (INPI)
19. National Industrial Property Institute, Portugal (INPI)
20. Netherlands Patent Office
21. Nordic Patent Institute (NPI)
22 Norwegian Industrial Property Office
23"Organisation Africaine de la Propriété Intellectuelle" (OAPI)
24. Patent Office of the Republic of Latvia
25. Intellectual Property Organisation of Pakistan (IPO)
26. Polish Patent Office (PPO)
27. Russian Federal Service for Intellectual Property. (Rospatent),
Russian Federation
28. Spanish Patent and Trademark Office (SPTO)
29. Swedish Patent and Registration Office (PRV)
30 Swiss Federal Institute of Intellectual Property (IGE)
31. Taiwan Intellectual Property Office (TIPO) Republic of China
32. Turkish Patent and Trademark Office (TURKPATENT)
33. Ukrainian Patent Office (officially 'State Enterprise "Ukrainian
Institute of Industrial, roperty".
or 'SE "UIPV")
34. United Kingdom Intellectual Property Office (UK-IPO)
35. United States Patent and Trademark Office (USPTO) 36. World
Intellectual Property Organization (WIPO)

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INDIAN PATENT OFFICE: The Office of the Controller General
of Patents,
Designs and Trademarks (CGPDTM) generally known as the Indian
Patent
Office, is an agency under the Department for Promotion of industry
and
Internal Trade which administers the Indian law of Patents, Designs
and Trademarks. On 28 February 1856, the Government of India
promulgated legislation to grant what was then termed as "exclusive
privileges for the encouragement of inventions of new manufactures".
On 3March 1856, a civil engineer, George Alfred DePenning of 7,
Grant's Lane, Calcutta petitioned the of India for grant of exclusive
privileges for his invention "An Efficient Punkah Pulling Machine"
On 2 September, DePenning, submitted the Specifications for his
invention along with drawings to illustrate it's working. These were
accepted and the invention was granted the first ever Intellectual
Property protection in India.
Amendments to the Patents Act & Rules:
Amendments (in 1999, 2002, 2005) were necessitated by India's
obligations under TRIPS, allowing product patents in drugs and
chemicals. A pre-grant representation in addition to the existing post-
grant opposition has been re-introduced. A provision of later
amendments was on software patentability, which was later
withdrawn in another amendment in 2005. The amendment in 2012
focused on change in marks of Patent Agent Examination.
Indian Patent Rules were amended in
2003,2005,2006,2012,2013,2014,2016 and 2018. The 2006
amendment of rules introduced reduced timelines and a fee structure
based on specification size and number of claims, in addition to a
basic fee. Indian Patent amendment rules 2012 was for amendments
in criteria for patent agent exam qualification. Gazette Notification of
Patent (Amendments) Rules 2013 has made necessary provisions for
recognizing Patent office as Examining authority and Searching
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authority on international level for filing, searching and examination
of patent along with necessary fees. Patent amendment rules 2014
introduced a third category of applicant for small entities and revised
the basic fee for filing a patent application. Patent amendment rule
2016 implemented on 16 May 2016, and introduced such as electronic
communication to applicant/agent, and applicant can withdraw their
application using Form-29, and majorly introduced for the expedited
examination for startup companies, and the timeline to put the grant
of applicant has been reduced from 12 months to 6 months. In
addition, video conference has been introduced for hearing the patent
matters.
Activities:
• Patent administration: Trends in Indian patents, 1997-2013,
The number of biotech patents has doubled in a decade. The
CGPDTM reports to the Department for Promotion of Industry
and Internal Trade (DPIIT) under the Ministry of Commerce and
Industry and has five main administrative sections:
• Patent Information System: The patent office is headquartered
at Kolkata with branches in Chennai, New Delhi and Mumbai,
but the office of the CGPDTM is in Mumbai. The office of the
Patent
Information System and National Institute for Intellectual
Property Management is at Nagpur. The Controller General
(CG), who supervises the administration of the Patents Act, the
Designs Act, and the Trademarks Act, also advises the
Government on matters relating to these subjects. O.P. Gupta is
the current CG and took charge on 16 November 2015. Under
the office of CGPDTM, a Geographical Indications Registry has
been established in Chennai to administer the Geographical
Indications of Goods (Registration and Protection) Act, 1999.
The Indian Patent Office has 526 Patent Examiners, 97 Assistant
Controllers, 42 Deputy Controllers, 1 Joint Controller, and 1 Senior
Joint Controller, all of whom operate from four branches. Although
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the designations of the Controllers differ, all of them (apart from the
Controller General) have equal authority in administering the Patents
Act. An Indian Patent Examiner is mandated to search for prior art
and for objections under any other ground as provided in the Patent's
Act, then to report to the Controller, who has the power to either
accept or reject Examiners' reports. Unlike the system at the
USPTO/EPO/JPO, Examiners at IPO have only recommended power
and the controllers are empowered by statute either to accept or refuse
their recommendations. Examiners' reports to the Controller are not
open to the public unless courts allow it (section 144 of the Patents
Act). A Parliamentary committee has recommended repealing S144.
✓ Patent duration: Term of every patent in India is 20 years from
the date of filing of patent application, irrespective of whether it
is filed with provisional or complete specification. However, in
case of applications filed under PCT the term of 20 years begins
from the international filing date accorded under PCT. Since the
rights granted by an Indian Patent Office extends only
throughout the territory of the India and ceases to have effect in
a foreign country, an inventor who wishes patent protection in
another country must apply for a patent in a specific country
(according to its law) either through: PCT route or through
conventional filing of application.
✓ Geographical Indications: India, as a member of the World
Trade
Organization (WTO), enacted the Geographical Indications of
Goods (Registration & Protection) Act, 1999 has come into
force with effect from 15 September 2003. Gls have been
defined under Article 22(1) of the WTO Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS)
Agreement as: "Indications which identify a good as originating
in the territory of a member, or a region or a locality in that
territory, where a given quality, reputation or characteristic of
the good is essentially attributable to its geographic origin."

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COPYRIGHT.
MEANING
According to the Copyright Act 1957, Copyright is the legal right
granted to an intellectual property owner is copyright. It helps protect
the creator of the original material so that no one can duplicate or use
it without authorization. If an original work needs protection through
copyright laws, it must be in a tangible form. For instance, the Indian
Copyright Act protects the creator's work by law until 60 years after
their death.
The statutory definition of copyright means the exclusive right to do
or authorize others to do certain acts in relation to—
• Literary, dramatic, or musical works.
• Artistic work.
• Cinematograph film; and • Sound recording.

IMPORTANT/ SILENT FEATURES/ BENEFITS/ NATURE OF

COPYRIGHT
1. Scope of rights conferred to author: Under section 13 of the
Copyright Act 1957, protection is provided to literary works,
musical works, dramatic works, artistic works, sound recording
and cinematograph films. For example, books, manuscripts,
poetry, these are protected under the Act as literary works.
The Copyright Act, 1957 protects original literary, dramatic,
musical and artistic works and cinematograph films and sound
recordings from unauthorized uses. Unlike the case with patents,
copyright protects the expressions and not the ideas.
2. Provisions to determine first ownership: According to Section
17 of the Copyrights Act 1957, the first owner of the copyright
is the author of the work itself. The exception to this rule is the
case in which, the employer becomes the owner of the copyright
in circumstances where the employee creates a work in the
scope of her/his employment.
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3. Civil and criminal remedies: The civil remedies for copyright
infringement are covered under Section 55 of the Copyright Act
of 1957. These civil remedies include damages, injunctions,
interpretation of accounts, destruction and delivery of infringed
copies and damages for conversion. The criminal remedies, for
infringement of copyright, are provided under Section 63 of the
Copyright Act 1957. These criminal remedies include
imprisonment, fines, search, and seizure of infringing goods, etc.
The imprisonment can range up to 3 years but cannot be less
than 6 months and the fine ranges from 50,000 to rupees.
4. Creation of copyright office and copyright board: Provisions
for setting up a copyright office, which is under the control of
the
Registrar of the copyright for the registration of books and other
'works' of art, and a copyright board to help in dealing with
copyright-related disputes are also given in the Copyright Act,
1957. Section 9 of the Copyright Act, 1957 provides for the
inception of an office which is to be called the Copyright Office
for the purpose of the Act Section 11 of the Copyright Act, 1957
provides for the inception of the Copyright Board.
5. Copyright registration creates a public record: It tells the
world that your work is protected by copyright and enables a
person who wants to license your work to find you.
6. It enables you to file a lawsuit and take legal action: against
someone who infringes your copyright, say by selling copies of
your work without your permission.
7. It provides you with economic benefits: by entitling you to use
your work in various ways making copies, performing in public,
broadcasting your work etc., and availing appropriate reward for
it. Thus, it provides you with a reward for your creativity. It
allows you to sell or pass the rights of your work.
8. It allows you to get legal evidence of your ownership: So, if
someone prevents you from using your work, you can just use

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 your copyright to prove that it's your work and you have a right
to use it.

9. It allows you to change the form of your work. For example, it

allows you to make a sequel or revise or update the work.

10.Exclusive use: Once you get copyright for your work, others
cannot use it without permission. If any infringement takes
place, you can carry out legal action.

11.Record of ownership: Once you get the copyright registered,

there will be a public record of the ownership of your work.

12.Preventing misuse: You can prevent misuse of your work by

registering a copyright. You have more control over how it is
presented to the public.

13.Economic gain: The most crucial benefit is the economy you

derive from the same. You will have the sole right to any
revenue that accrues from your original work.

14.Encourages creativity: It encourages general creativity in the

society as owners enjoy the benefits of creative work.

SUBJECT MATTERS OF COPYRIGHT

All subject matters protected by copyright are called
protected works. Thus, according to section 13 of the copyright act
1957, it may be subjected for the following works:
➢ Original literary work: The act states that copyright subsists in
original literary work, and section 2(o) of the act provides that-
“literary work” includes computer programmers, tables and
compilations including computer databases.”
Irrespective of the quality, style or literary merit, a work may
be considered as literary, if it is expressed in print or writing or
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 in some form of notation or symbols. A literary work is
something which is intended to afford either information or
instruction, in the form of literary enjoyment. The term ‘literary’
in copyright law is to be used in a sense somewhat like the use
of word literature in political or electioneering literature and
refers to written or printed matter. Work literary works includes
but are not limited to textbooks, poem, magazine, catalogue,
letters, novel, dissertation, lyrics of song etc.

➢ Original dramatic work: Copyright subsists in original

dramatic work and its adaptation. Section 2(h) provides that
“dramatic work” includes any piece for recitation,
choreographic work or entertainment in dumb show, the scenic
arrangement or acting, form of which is fixed in writing or
otherwise but does not include a cinematograph film. Types of
published or unpublished dramatic works that may be submitted
for registration include choreography, pantomimes, plays,
treatments, and scripts prepared for cinema, radio, and
television. These works may be with or without music. It also
includes dance and mime and therefore cover operas, ballets,
and screenplays as well as plays.

➢ Original musical work: Section 2(p) of the act provides that-

“musical work” means a work consisting of music and includes
any graphical notation of such work but does not include any
words or any action intended to be sung, spoken or performed
with music.

A musical work is a song’s underlying composition created by a

songwriter or composer along with any accompanying lyrics.
The copyright owner of a musical work has the rights to make
and distribute copies of it, (publicly perform or display it) and
make derivative works from it (including interpolations,
remixes, or even videos using the musical work). Anyone else
who wants to do these things must either get a license from the
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 copyright owner, use a statutory license, or have an exemption
apply, like fair use.

➢ Original artistic work: Section 2(c) of the act provides that-

“artistic work” means a painting, a sculpture, a drawing
(including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic
quality. A [work of architecture]; and any other work of artistic
craftsmanship. A work of architecture is included as an artistic
work and any work of artistic craftsmanship can also come
under the ambit of an artistic work. The author of an artistic
work is the artist of the artistic work other than photograph. The
photograph is a person who takes the photograph, who is
regarded as the author. Recently there was an issue with regard
to a selfie taken by a monkey. The court has held that, the
person has to be a human being and so far intellectual property
rights have only covered intellectual work of humans.

➢ Cinematography films: Section 2 (f) of the act provides that-

“Cinematograph film” means any work of visual recording and
includes a sound recording accompanying such visual recording
and “cinematograph” shall be construed as including any work
produced by any process analogous to cinematography including
video films. Every recorded work with moving visuals/images
will be considered a cinematograph film. Visual recording”
means the recording in any medium, by any method including
the storing of it by any electronic means, of moving images or of
the representations thereof, from which they can be perceived,
reproduced, or communicated by any method.

➢ Sound recordings: Sound Recording has been defined under

Section 2(xx) as a recording of sounds from which such sounds
may be produced regardless of the medium on which such
recording is made or the method by which the sounds are
produced. A Sound Recording Copyright may be claimed in the
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 aggregate of sound embodied in any tangible medium, including
phonograph discs, open-reel tapes, cartridges, cassettes, player
piano rolls, and other material of objects in which sound are
fixed and can be communicated either directly or with the aid of
machine or device. When a graphical notation of a musical work
is recorded in any medium from which sound may be produced,
it amounts to Sound Recording. The author of a sound recording
work is the Producer of the sound recording.
ESSENTIAL DOCUMENTS REQUIRED FOR COPYRIGHT
REGISTRATION.
• Before we discuss the procedure which you must follow if you
want to get your work registered under the Indian Copyright
Act, 1957, we must investigate the essential document that you
require for a smooth registration.
• Though there are some special requirements for different kind of
work, essential requirements are.
• Three copies of the work if the work is published.
• If the work is not published comma, then two copies of
manuscripts.
• If the application is being filled by an attorney, then special
power of attorney or vakalatnama signed by the attorney and the
party.
• Authorization the respect of work comma if the work is not the
work of the applicant.
• Information regarding the title and language of the work.
• Information regarding the name, address, and nationality of the
applicant.
• Applicant must also provide his mobile number and e-mail
address.
• If the applicant is not the author, a document containing the
name, address, and nationality of the author, and if the author is
deceased, the date of his death.

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 • The work is to be used on product, then and now no objection
certificate from the Trademark Office is required.
• The applicant is other than the author, and no objection
certificate from the author is required. In this case, and
authorization of the author may also be required.
• If a person’s photo is appearing in the work, then a new
objection certificate from such person is required.
• In case the publisher is not the applicant, an objection certificate
from the publisher is required.
• If the work is published, and address of the first publication is
also required.
• Information regarding the year and country of subsequent
publications.
• In case of copyright is for software, the source code and object
code are also required.
REGISTRATION PROCEDURES.
Copyright is a right given by the law to creators of literary, dramatic,
musical, and artistic works and producers of cinematograph
reproduction, films communication and sound recordings. In fact,
adaptation, it is a bundle and of translation rights including, inter alia,
rights of reproduction, communication to the public, adaptation, and
translation of the work. Copyright ensures certain minimum
safeguards of the rights of authors over their creations, thereby
protecting and rewarding creativity.
Creativity being of the keystone of progress, no civilized society can
afford to ignore the basic requirement of encouraging the same. The
economic and social development of a society is dependent on
creativity. The protection provided by copyright to the efforts of
writers, artists, designers, dramatists, musicians, architects and
producers of sound recordings, cinematograph films and computer
software, creates an atmosphere conducive to creativity, which
induces them to create more and motivates others to create.

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STEPS FOR REGISTRATION OF COPYRIGHTS.
STEP 01: FILLING AN APPLICATION.: Along with the requisite
fee, an application needs to be submitted either in DD/IPO. Once this
application is filed, a diary number is generated and issued to the
applicant.
STEP 02: EXAMINATION: There is a minimum wait of 30 days
for recording and analysing any objections that may come up against
the copyright application.
a. In case of no Objection
The application goes ahead for scrutinization by an examiner. This
scrutiny gives rise to options:
1. In case of discrepancy found during scrutiny
• A letter of discrepancy is sent to the applicant letter is
generated and sent to the applicant.
• Based on the reply from the applicant, the registrar
conducts a hearing of the alleged discrepancy row
• once the discrepancies are sorted during the hearing, the
extracts of the same are sent to the applicant for him/her to
register the copyright.
2. In case of zero discrepancy
This would mean that the copyright application fulfils all
criterion required for the copyright. The applicant is then given
the nod to go ahead with the registration of the game.
(If the registration is not approved, then the applicant received a
letter of rejection)
b. In case of an objection filed.
While we listed above the scenarios of •no objections', in case one is
faced with an objection the following proceedings take place:
Authorities send out letters to the two concerned parties, trying to
convince them to take back the objection. After requisite replies from

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the third party, the registrar conducts a hearing. Depending on
whether the registrar accepts the reply, the procedure takes shape.
• If the application is accepted: The application being accepted
means that the objection has been rejected. The goes ahead for
scrutinization by an examiner. This scrutiny gives rise to two
options:

• In case of discrepancy found during scrutiny: A letter of

discrepancy is sent to the applicant letter is generated and sent to
the applicant Based on the reply from the applicant, the registrar
conducts a hearing of the alleged discrepancy row.
Once the discrepancies are sorted during the hearing, the
extracts of the same are sent to the applicant for him/her to
register the copyright.
c. In case of zero discrepancy
This would mean that the copyright application fulfils all criterion
required for the copyright The applicant is then given the nod to go
ahead with the registration of the same. (If the registration is not
approved, then the applicant received a letter of rejection)
d. If application is rejected.
In case this happens, then the applicant receives a rejection letter that
marks the end of the copyright procedure.
STEP03: REGISTRATION: As can be seen from the steps, the
registration solely depends on the registrar. once everything is cleared
from the registrar's end, the applicant received the copyright and can
legally exercise all the rights that comes with the owner of that
copyright.
Copyright is a form of the intellectual property law It is
registered to protect original pieces of work such as music, art,
literature, cinema/film, photography, or a computer program. There
are in depth categories that can be registered for copyright by the

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creator. It will give exclusive and complete rights to the creator of the
work.
TERM OF PROTECTION.
Original literary: Copyrights last for the life of the author plus 50
years if the author is a natural person, or for 150 years if the author is
a corporation.
Dramatic work: Copyright protection lasts for the life of the author
plus an additional 70 years.
Musical work: Duration of copyright protection for musical work
published within the lifetime of the author until sixty years from the
beginning of the calendar year next following the year in which the
author dies.
Artistic work: The duration of the copyright artistic works is valid
until the work is first published to a span of the life of the artist + 70
years.
Cinematograph films: The term of protection for cinematograph
films is 60 years. The term of protection starts from the year which
follows the year in which the work was published first.
Sound recordings: Author's Life + 70 years. If author is a corporate
body, it is 95 years from publication or 120 years from creation,
whichever expires first.
OWNERSHIP OF COPYRIGHT
Copyright protection is given for the work having originality, i.e., it
should be from the author and must have minimum degree of
creativity. So, it is the author who is the real creator of the world
thereby first owner of the of the copyright and Indian law recognized
author as the first owner of the copyright. But by title ownership it
means it includes not only the author, but also assign me and can be
even a legal entity even though not defined in the act. In the barn
conversion deep term author is not defined, instead it says the person
under whose name the work is disclosed, which implies that it is not
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the necessary that always the author should be the owner. However
Indian Copyright Act defines the term order with respect to various
works, but still leaves some problems. It becomes more complex in
the context of changing technologies, better cinematography works,
sound recording, broadcasting etc. Which is the combination of
different works, also when author does works in the course of
employment.
The Concept of Authorship in History
The author in copyright history, especially before the Statute of Anne,
had been a separate entity from the printer or publisher of a work. The
distinguishable rights of a book owner over the manuscript as a
physical object made from ink and parchment from the rights of an
author over the text itself indicated an early separation between the
person who created the work and the person who invested in
publishing it. In fact, early forms of copyright practiced by the book
trade showed more of an economic interest by the book sellers in the
physical embodiment of a text rather than the text itself. Printing
privileges that were given to printers in the year 1400s allowed books
to be printed in large quantities and distributed. This encouraged a
capitalistic enterprise in the form of the book trade to develop though
not creative endeavours through autonomous authorship. Authors
were given separate privileges, but it appeared from the privileges
granted to authors, editors, translators and printers that even in
fifteenth century Venice, a fusion of authorship and the print business
existed.

OWNERSHIP OF COPYRIGHT IN INDIA

The provisions of acquiring copyright ownership are defined under
Section 17 According to which, the first owner of copyright is defined
as under:
Subject to the provisions of this Act, the author of a work shall be the
owner of copyright therein Section 17 statutorily recognizes the
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author of the work to be the first owner of the copyright. the author is
defined under the Act for various works, which come under the law of
copyright.
Section 2(d) defines author, it says "Author" means, —
• In relation to a literary or dramatic work, the author of the work.
• In relation to a music work, the composer.
• In relation to artistic work other than a photograph, the artist.
• In relation to photograph, the person taking the photograph. the
artist.
• In relation to a cinematograph film or sound recording, the
producer; and
• In relation to any literary, dramatic, musical, or artistic work
which is computer-gene person who causes the work to be
created [8].

CLAIM COPYRIGHT OWNERSHIP

In the case of a literary, dramatic, musical or artistic
work, the name of the author or the publisher which appears on copies
of the work is presumed to be the author of the work, unless the
contrary is approved.

ASSIGNMENT
Assignment refers to the transfer of copyright ownership. A
person or a company to whom the rights are assigned is known as
assignee. In this case, the Assignee become an owner.
COPYRIGHT INFRINGEMENT IN INDIA
Copyright laws provide certain exclusive rights to the copyright
holder, such as the right to reproduce. distribute, display, or perform
the protected work, or to make derivative works. Use of such
copyright-protected work without the permission of the copyright
owner is copyright infringement. In this article, we look at copyright
infringement in India.
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COMMON TYPES OF COPYRIGHT INFRINGEMENT
The following are some of the most common types of copyright
infringement:
• Making copies of copyrighted works for sale or hire or letting
them for hire.
• Permitting performance of copyright infringed works at any
place for the performance of works.
• Distributing copyright infringing works.
• Public exhibition of copyright-infringing works.
• Importing copyright infringing works into India.
If any of the activity is performed by a person or business, then
they are liable for prosecution under copyright laws in India.
REMEDIES OF INFRINGEMENT OF COPYRIGHT.
Civil Remedies for Copyright Infringement
The civil remedies for copyright infringement are covered under
Section 55 of the Copyright Act of 1957. The different civil remedies
available are:
1. Interlocutory Injunctions: The most important remedy is the
grant of an interlocutory injunction. In most case the application
filled is for interlocutory relief and the matter rarely goes
beyond the interlocutory stage. There are three requirements for
there to be a grant of interlocutory injunction — Firstly, a prima
facie case. Secondly, there needs to be a balance of convenience.
Finally, there needs to be an irreparable injury.

2. Pecuniary Remedies: Copyright owners can also seek three

pecuniary remedies under Section 55 and 58 of the Copyright
Act of 1957. First, an account of profits which lets the owner
seek the sum of money made equal to the profit made through
unlawful conduct. Second, compensatory damages which let the
copyright owner seek the damages he suffered due to the

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 infringement. Third, conversion damages which are assessed
according to the value of the article.

3. Anton Pillar Orders: The Anton pillar order gets its name from
the holding in Anton Pillar AG V. Manufacturing Processes.
The following elements are present in an Anton Pillar Order —
First, an injunction restraining the defendant from destroying or
infringing goods. Second, an order permitting the plaintiffs’
lawyer to search the defendant's premises and take goods in their
safe custody. Third, an order that the defendant be directed to
disclose the names and addresses of suppliers and consumers.

4. Mareva Injunction: The Marva injunction comes into play

when the court believes that the defendant is trying to delay or
obstruct the execution of any decree being passed against him.
The court has the power to direct him to place whole or any part
of his property under the court's disposal as may be sufficient to
satisfy the decree. This is provided in Order XXXVIII. Rule 5 of
The Civil Procedure Code, 1908.

5. Norwich Pharmacal Order: The Norwich Pharmacal Order is

usually passed when information needs to be discovered from a
third party.

REMEDY FOR COPYRIGHT INFRINGEMENT IN INDIA

Copyright owners can take legal action against any person or entity
that infringes on the copyright of a work. The copyright owner can
file a civil remedies case in a court having jurisdiction and is entitled
to remedies by way of injunctions, damages, and accounts. Further,
no court inferior to that of a Metropolitan Magistrate or a Judicial
Magistrate of the first class can try any offence under the Copyright
Act.
In case of copyright infringement by an artificial judicial person like a
private limited company or limited liability partnership (LLP), the
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company and all persons who at the time the offence was committed
was in charge or was responsible to the company for the conduct of
the business of the company, would be liable to be proceeded against.
Criminal Prosecution for Copyright Infringement
If any person knowingly infringes or abets the infringement of the
copyright in any work, then such an offence is a criminal offence
under Copyright Act. In the case of criminal copyright infringement,
the minimum punishment for an infringement of copyright is
imprisonment for six months with a minimum fine of Rs. 50,000/-. In
the case of a second and subsequent conviction' the minimum
punishment is imprisonment for one year and a fine of Rs. l.00,000/-.
PENALTIES: The minimum punishment for infringement of
copyright is imprisonment for six months with the minimum fine of
Rs. 50,000/-. In the case of a second and subsequent conviction the
minimum punishment is imprisonment for one year and fine of Rs.
One lakh.
RELATED RIGHTS: Related rights are the rights related to
copyright, that have their special subject matter of protection, which
is mainly related to copyright works. In copyright law, related rights
(or neighbouring rights) are the rights of a creative work not
connected with the work's actual author. It is used in opposition to the
term "authors' rights".
RELATED RIGHTS OF COPYRIGHTS
Certain Rights are given to the copyright holder under the Copyright
Act, 1957. These rights are discussed below:
1. Right to Reproduction: The right to reproduction allows the
copyright holder to make copies of his work in any form. The
copyright holder can also bring legal action against the person if
he reproduces his work i.e., download or copies his work in any
format for commercial purposes.
2. Right to distribute: The copyright holder has the right to
distribute his work in a manner he deems fit. He is also entitled
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 to transfer his rights or some rights. For example, he may allow
someone to translate his work.
3. Right to make derivative works: The copyright holder has the
right to derivative works. Thus, if a person wants to make a
movie based on a novel, then he should take permission from
the author of the novel to do so, or it may result in copyright
infringement.
4. Right to publicly perform: The copyright holder has the right
to perform his work publicly i.e., a writer of a novel may
showcase his work by performing drama or concert.
5. Right of Paternity: The right of paternity allows the copyright
holder to claim authorship of the work. The author can claim
due credit for his work, thus for example, if a movie is based on
a novel but the maker of tie movie does not acknowledge the
author of the novel then the author can bring an action against
the makers.
6. Sui Generis Right: This right is available to the creators of the
database and software. The right exists for a period of 15 years.
Copyright Exceptions
If a person uses the quotes of the copyrighted work then it will not
amount to infringement Similarly, a person may cite examples of the
published work to criticize it or review it. Criteria for using the
exception.
The reason for using the material is genuinely for the purpose of
Quotation, Criticism and Review. For example, one cannot discuss
the whole film in an article and then comment that she liked the
movie.
Thus, A person material cannot which use has used them for material
review which or criticism is not should made available already be to
available the public to but this kept confidential

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 The use of the material should be fair. There is no legal definition of
what is fair and not. The fair use of the material will depend on the
facts and circumstances of the case.
DISTINCTION BETWEEN RELATED RIGHTS AND
COPYRIGHTS
Related rights are the rights of a creative work not connected with the
work's actual author. It is used in opposition to the term "authors'
rights". Neighbouring rights is a more literal translation of the original
French droit’s violins. Related rights vary much more widely in scope
between different countries than authors' rights. The rights of
performers, phonogram producers and broadcasting organizations are
certainly covered, and are internationally protected by the Rome
Convention for the Protection of Performers, Producers of
Phonograms and Broadcasting Organizations signed in 1961.
Within the European Union, the rights of film producers (as opposed
to directors) and database creators are also protected by related rights,
and the term is sometimes extended to include the sui generis rights in
semiconductor topologies and other industrial design rights. A
practical definition is that related rights are copyright-type rights that
are not covered by the Berne Convention. The protection of
performers is perhaps the strongest and most unified of the related
rights. A performer (musician, actor, etc.) has an intellectual input in
their performance over and above that of the author of the work.
On the other hand, Copyright refers to the legal right of the
owner of intellectual property. In simpler terms, copyright is the right
to copy. This means that the original creators of products and anyone
they give authorization to are the only ones with the exclusive right to
reproduce the work. Copyright law gives creators of original material
the exclusive right to further use and duplicate that material for a
given amount of time, at which point the copyrighted item becomes
public domain.

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Module-4
Concepts of Trademarks and others
Meaning: Trademark can be any word, phrase, symbol, design, or
combination pf these things that identifies your goods and services.
Its how customer recognize you in the marketplace and distinguish
you from your competitors. The word trademark can refer to both
trademarks and services marks. A trademark is used for goods, while
service mark is used for services.
Definition: A trademark in India is defined under Section 2 (1) (zb)
of the trademark act, 1999. It is a distinctive sign or indicator by an
individual or an organization and is applied to the articles of
commerce to identify the products of one trader from those of
another.
According to WIPO, “Trademark is a sign capable of
distinguishing the goods or service of one enterprise from those
of other enterprises are protected by intellectual property rights.”
Functions of Trademarks:
• It identifies the product and its origin.
• It proposes to guarantee its quality.
• It advertises the product.
• The trademark represents the product.
• It creates an image of the product in the minds of the public
particularly the consumers and the prospective consumers of
such goods.
Different kinds of Trademarks:
Types of trademarks include service marks, collective marks,
certification marks, EC whatever the trademark type, the trademarks’
purpose is the same. Particularly to distinguish the source of the
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goods or services. And assured the consumers of how the quality of
the product or service.
A trademark can be divided into the following:
1. Word marks: Word marks maybe words, letters, or numerals.
A word mark only gives the proprietor a right to the word, letter,
or numerical and no right is sort concerning the presentation of
the mark.

2. Device mark: A device mark uniquely represents a logo, label,

or design in the image format and may also contain a word or a
combination of words.

3. Service marks: A service mark is nothing but a mark that

distinguishes one person’s services from another. Service mark
do not represent goods, but the services offered by a person or a
company.

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 They are used in a service business where actual goods under
the mark are not traded. It is a mechanism available to protect
marks youth in the service industry. Thus, companies providing
services like computer hardware and software assembly and
maintenance, restaurant and hotel services, Courier and
transport, beauty and healthcare, advertising, publishing,
education, and like are now in a pollution to protect their names
and Mark from being misused by others. As service marks, the
substantive and procedural rules governing the service marks
are fundamentally the same.

4. Collective marks: Marks being used by a group of companies

can now be protected by the group collectively. Collective
marks inform the public about a particular product feature used
for the collective mark. The owner of such marks may be an
association, public, institution, non-cooperative. Collective
trademarks are also used to promote product with certain
characteristics specific to the producer in each region.

5. Certification marks: Certification marks are used to define

standards; they assure the consumers that the product meat
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 specific prescribed standards. Or certification mark or Nah
product indicates that the product has successfully passed
standard test specified. It assures the consumer that the
manufacturers have gone through an audit process to ensure the
quality of the product.
For example, toys, electrical goods etc Have a marking that
indicates the Product Safety and quality,
The difference between the certification mark and collective mark is
that a particular enterprise or association members user the collective
marks in contrast, certification Mark May be used by anybody who
meets the defined standard.

6. Well known marks: When a mark is easily recognised among a

large percentage of the population, it achieved the trademark
status of a well-known mark.
Well known marks enjoy more excellent protection, and persons will
not be able to register or use marks imitations of well-known
trademarks. A trademark needs to be known, recognised by a relevant
section of people to be well known. These people include actual all
potential customers, people involved in distribution, and business
service dealing with goods and services.

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7. Unconventional trademarks: The trademark that gets
recognition for their inherently distinctive feature are
unconventional.
Unconventional trademarks include the following categories.
• Colour trademark, if a particular colour has been distinctive
feature indicating the good of a specific trader, it can be
registered as a trademark. For example, red wine.
• Sound mark, signs that are perceived by hearing and
distinguishable by their distinctive and exclusive sound can be
registered as sound marks. For example, musical notes
• Shape marks, when the shape of goods or packaging has some
distinctive feature, it can be registered. For example, ornamental
lamps
• Smell marks, when the smell is distinctive and cannot be
mistaken for an associated product, it can be registered as a
smell mark. For example, perfume.

8. Shape mark: Shape Mark is a Trademark that protects the

product shape. It may be the shape of a brand logo, product, tag
good, label, etc., that are designed by an individual. Such marks
have 3dimensional shapes or marks which are capable of
differentiating products and services of one trader from another,
which has been incorporated as Trademark.
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For example: the Coca-Cola bottle obtained a Trademark for its shape
to safeguard its individuality and uniqueness.

9. Sound mark: A sound trademark is a trademark where the

sound is utilised to perform the trademark function of uniquely
distinguishing the commercial source of products or goods and
services. A sound mark, in recent times, has been increasingly
used as a trademark in the marketplace. It is a non-conventional
trademark.

Brand name
A word, name, symbol, etc especially one legally registered as a
trademark, used by a manufacturer all merchant to identify its
products distinctively from others of the same type and usually
prominently displayed on its goods, in advertising.
A Brand name is the name that used to identify the family of product
or services that you offer or a single line of product or services that
you offer. For example, Nike is the brand name used on most
products manufactured by Nike, Inc.
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There are 7 types of brands name.
• Descriptive brand name: Descriptive brand names are those
that explicitly convey the product or service offered by a
company. Example: Bank of America, General Motors,
Hotels.com.
• Evocative brand name: On the other end of the creative
spectrum from descriptive names is evocative names. Evocative
names use suggestion and metaphor to recall brand positioning
and all brand experience. Example: Amazon apple etc
• Invented brand names: Invented brand names are etymological
fabrications data nothing if not unique they are more unique and
require more time and money. Example: Xerox Adidas.
• Lexical brand names: Lexical brand names rely onward play
for their memorability. Example, dun-kin Donuts, crispy cream
• Acronymic brand names: If there is one naming convention
that has come to signify large, national corporation it is acronym
example, IBM, BP, ups.
• Geographical brand names: Geographical names in fuse a
brand with all the cultural. Natural and historical association of
its namesake. Example, New York life American Airlines.
• Founder brand names: The founder brand tradition stretches
back to the earliest brand as well. Example Kellogg's, Ford,
Colgate, Nestle Logo
Logos serve to represent a given. Organization or company through a
visual image that can be easily understood and recognised. Logo
generally involves symbols, stylist text or both. Logos are often
created by a graphic artist in consultation with a company and the
making expert.
3 categories of logo exist and are often Mulan combination,
• Ideographs _ free form images that can be entirely abstract.
• Pictographs _ symbolic, representational images

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 • Logo types _ simple text, textual representations, like a
company reinitiate.

Signature
Signature is a handwritten depiction of someone’s name, nickname or
other mark that a person rights on documents are the proof of identity
and intent. The writer of a signature is a signatory or sinner.
Signature may be confused with an autograph which is chiefly and
artistic signature.

Symbol
A symbol is a mark, sign, or Word that indicates or understood as
representing and object, idea relationship. A symbol is a sign, shape
or object that is used to represent something else.
There are 4 types of symbols,
• Ideogram _represent actions, ideas, or concepts.
• Icon _represents objects and or their functions.

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 • Rebus _ represents sounds, words, or part of word with pictures.
• Phonogram _represents a spoken sound.

Registrable vs Non-Registrable Trademarks

Trademark means “a mark capable of being represented graphically

and which is capable of distinguishing the goods and services of one
person from those of others and may include a word, combination of
numbers, shape of goods, packaging, sounds and/or combination of
colours”. To register a trademark, a trademark application must be
filed in India with the Registrar of Trademarks.
Registrable Marks:Registrable marks are those marks that can be
represented graphically. And marks that can distinguish itself from
other person’s goods and services. Registrable marks according to the
TRIPS agreement states that “any sign, or any combination of signs,
capable of distinguishing the goods or services of one undertaking
from those of other undertakings, shall be capable of constituting a
trademark”.
A trademark registration application can be filed for a registrable
mark.
Examples of Registrable Marks

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The following are examples of registrable marks:
A name of a product that is not unusual for a trade to consider it as a
mark. This includes a personal name or a surname of an applicant or
predecessor in business or a company name or the signature of the
person. The appropriate mark can be represented.in a special or in a
particular way the proprietor desires to do.
• The invented word or words of a mark should neither be in a
direct descriptive of the character nor be the quality of the
goods. and services.
• A mark can be in a combination of letters or numbers.
• The mark can use fancy devices or symbols.
• Symbols can be represented as monograms.
• Combination of multiple colours or a particular colour can be
combined with a word or device.
• Considering the shapes of the goods or the specific way in
which the goods are packaged.
• Those marks forming a 3-dimensional sign.
• Sound marks that can be represented in a standard system or can
be described in words for its graphical representation.
Non-Registrable Marks
The marks that are not distinctive enough from other marks and
which cannot be registered as a trademark are called non-Registrable
marks. This means that the mark has failed to differentiate itself from
other goods and services. Hence, trademark registration cannot be
obtained for nonregistrable marks.
Examples of Non-Registrable Marks
• Marks that cannot be accepted according to the law of
Trademark. Act.
• Marks that mislead or tends to cause confusion to the public.
• Marks consist of subject matter that hurt the religious senses of
any class or sections of the Indian citizens.
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• Marks that contain improper or vulgar subject matter.
• Marks that are banned under the Emblems and Names of
Prevention of Improper Use Act, 1950.
• Marks of the goods whose shapes are directly obtained from the
nature of the goods.
• Marks of the goods whose shapes are important to acquire a
technical result.
• Marks that are similar in identity to another good or product

Importance/ Features / Benefits / Rights of Trademark:

1. Valuable Assets: A registered trademark may prove to be
valuable assets for your company/ business. These assets keep
on appreciating over time. As your business grows over time,
the value of trademark gets scaled up automatically. So, if your
business grows, your trademark also grows in value.
2. Protection to your brand: A registered trademark establishes
ownership over the brand, name, or logo. It protects your brand
from any unauthorize use of the third party the registered
trademark proves that the product totally belongs to you, and
you have exclusive right to use, sell and modify the brand or
goods in which ever manner you want.
3. Provides uniqueness to brand and facilitates brand loyalty:
A brand that is unique and different must be registered as every
business needs a brand or logo that stands out, which
differentiates your brand from that of others. Hence, a registered
trademark gives a unique identity to your brand. Brand loyalty is
huge and something every business needs to foster. A
recognisable and familiar logo goes a long way towards building
brand loyalty.
4. Easy communication tool: Trademarks may prove to be an
effective and easy communication tool. They speak for
themselves. A registered trademark can be easily identified
which brand your product belongs to. For example, when you

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 see a silver colour half bitten apple on any device, be it laptop or
a phone, you can easily identify that it is an Apple product.
5. Easy for customers to find: A registered trademark makes it
easy for customers to find the product. As it is an effective tool
and unique in its identity, the trademarks that are registered can
be easily traceable and customers may reach your product
easily.
6. Trademark is forever/life: Trademark once registered can last
for eternity. The Trademark registered by any firm remains with
them forever. Yes, the trademark registration shall be renewed
after every 10 years. However, the identity that it gave to the
brand remains forever.
7. ATM works as a shield: For every entrepreneur it is
fundamental to make sure that his/her brand is safeguarded
against competition. Now, in case the trademark that the
individual has been working to build already has a registered
trademark by someone else, then not only does that individual
loses business and goodwill in the market but also loses the
privilege to prohibit others from using the same trademark.
Therefore, shielding the trademark shall safeguard the
trademark/business, which further assists the individual by
preventing others from using similar trademark.
8. A TM is economical: The cost of trademark registration is only
a one-time cost. Additionally, the time period and procedure of a
trademark registration has also been reduced satisfactory. A
trademark registration now takes about 6 months to 1 year to
process a trademark application. Moreover, once the trademark
gets registered, the same is valid for a time of 10 years which
can be easily renewed every 10 years before expiry of the
trademark.
9. Legal protection: When a trademark is registered, it is
designated as intellectual property, which means it is protected
against infringement. The exclusive right to use a trademark in
connection to the “Class” of products or services it represents is
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 also conferred by trademark registration. The symbol “TM” can
be used with your items after you have filed a trademark
application. Only once your trademark has been registered may
you use the sign “R.” In addition, the TM sign can only be used
for the goods and/or services stated in the registration certificate.
In the instance of illegal use of a registered trademark, you can
seek infringement redress in the country’s proper courts.
10.Product differentiation: Trademarks are unique to the goods or
services they represent. A trademark will allow you to
distinguish your goods from that of your rivals. Furthermore,
because trademark registration is applicable for the full class of
goods or services represented, it will aid in distinguishing your
items. Customers recognize items with distinct trademarks in a
unique way, resulting in a customer base for your product.
11.Business valuation and goodwill: Trademarks that are
registered and connected with your products increase the total
value, goodwill, and net worth of your company. Your
trademark communicates your commitment to quality, as well as
the unique aspects of your goods and the goal of your company.
Trademarks aid in the expansion of your company. They aid in
the retention of loyal consumers and the protection of your
company’s reputation.
12.Business expansion: A trademark provides a link between a
company’s consumers and its products. You can build a
consumer base by offering efficient or innovative items. Your
trademark aids in the retention and expansion of your consumer
base. The registration of your trademark grants you exclusive
rights to use it for a period of ten years, protecting your business
earnings. By launching new items and growing their business,
businesses may take advantage of the benefits of having a client
base.
13.Right to exclusive use: Section 28(1) of the Act provides that
subject to the other provisions of this Act, registration of a
trademark, if valid, give to the registered proprietor of the
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 trademark the exclusive right to use the trademark in relation to
the goods or services in respect of which the trademark is
registered.
14.Right to seek statutory remedy against infringement: Section
28(1) also provides that the registered proprietor of a trademark
can seek legal remedy in case of an infringement of his
trademark in the manner provided by this Act. He may obtain an
injunction and at his option, either damages or an account of
profits by instituting a suit against the alleged infringer.
15.Right to assign: Section 37 of the Act provides that the
registered proprietor of a trademark shall have the power to
assign the trademark and to give effectual receipts for any
consideration for such assignment. However, this right shall be
subject to the provisions of the Act and to any rights appearing
from the register to be vested in any other person.
16.Right to seek correction of Register and to alter registered
trademark: The registered proprietor of a trademark has a right
to make an application to the registrar seeking correction of
register regarding the errors pertaining to the particulars of the
registered proprietor and other aspects relating to the registered
trademark. The registered proprietor of a trademark must make
an application to the registrar seeking leave to add to or after the
trademark in any manner not substantially affecting the identity
thereof. The Registrar may refuse the leave or grant it on such
terms and may be subject to such limitations as he may think fit.
17.Right of Registered Trademark holder of Identical
Trademark: Section 28(3) provides that where two or more
persons are registered proprietor of trademarks, which are
identical with or nearly resembling with each other, the
exclusive right to use of any of those trademarks shall not
(except so far as their respective rights are subject to conditions
or limitations entered on the register) be deemed to have been
acquired by any of those persons as against any other of those
persons merely by registration of trademark. However, each of
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 those persons has otherwise the same rights against other
persons excluding registered users using by way of permitted
use, as he would have if he were the sole registered proprietor.
RIGHTS OF REGISTERING TRADEMARKS
It is not mandatory to register your trademark. However, registering it
provides broader rights as compared to the rights of an unregistered
trademark.
1.The Right to Exclusive Use: The exclusive right to use the
trademark concerning the products and goods for which it was
registered, under some conditions. If there are more than one
proprietor in whose name the trademark is registered, each of them
will have the same right as other unregistered users.
2.The Right to Statutory Remedy for Any Infringement: As the
owner has exclusive rights over the registered trademark, he/she can
seek legal solutions to any sort of infringement of their registered
trademark, in a manner prescribed by law.
3.Right to Assign: A registered trademark owner has the right to
transfer ownership by the way of license or assignment. They can
provide effectual receipts for such assignments.
4.Right to Register Correction: The Owner of a Registered
Trademark can apply for correction of the register with regards to the
name, address, or description of the registered proprietor. He has the
right to even cancel out any entry of trademark on the register or
strike out any class of goods and services from the register.

Assignment of trademark
When the ownership of a trademark is transferred from one party to
another either with or without goodwill, it is called an assignment of
the trademark. Such Assignment must be recorded in the register of
trademark if the trademark is registered. Trademark registration is
necessary in such cases. The Assignment is different from licensing
of trademark.
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 • Complete Assignment of the trademark to another entity the
owner of the trademark transfers all its rights with respect to a
mark to another entity, including the right of transfer of the
rights such as to further transfer, to earn royalties, etc.
• Assignment of the trademark to another entity but concerning
only some of the goods or services the transfer of ownership,
which is limited only to specific products or services, is termed
as a partial assignment.
• Assignment of the trademark with goodwill
Where the rights and value of a trademark associated with the product
are also transferred along with the main product, it can be said to be
an assignment of the trademark with goodwill.
Licensing of trademark
The licensing of trademark allows others to use mark without
transferring ownership it is done for goods and services under
TRADE ACT 1999 it does use term license or licensing of trademark
it is mentioned as Registered user.
The licensing of trademark is beneficial to both parties. The Licensor
gets the right to enjoy the benefit of the brand which he got after
paying the royalty, while the licensee can develop the brand
reputation and expand the market operation of the brand in licensing
of the trademark.
The benefits of Licensing of a Trademark:
1. Financial Gain: – The trademark is widely used for commercial
gain, and the owner receives royalties as a result. This financial gain
benefits both parties. By granting the licence to the licensee, the
licensor, who previously could not capitalise on his trademark due to
lack of resources or exposure, can now use those resources to his
advantage and benefit more. A portion of the income are also given to
the licensee.
2. Expansion of the Trademark Owner’s Business: – The
Trademark owner’s business grows and expands its reach into new
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regions. Since the licensee(s) can leverage their distribution abilities
for business expansion, the company is no longer restricted to a
specific geographic area.
3.Expanding the Brand Recognition of a Trademark: –The
Trademark becomes well-known in areas where it was previously
unknown. The licensee is allowed to widely publicise using his
resources.
4.Increase in Trademark Popularity: – As the Trademark is
recognised to more individuals and consumers, it gains popularity. By
boosting sales, this increases revenue and facilitates the trademark’s
continued licencing.
5.Workload Redistribution/Reduction: – In a sense, the Licensee
joins the Licensor as a partner. Because the licensee is equally
responsible for upholding the quality of the goods, he produces using
the trademark, the licensee’s workload is lessened, and he need not
worry about the quality of the products.
What is Trademark Infringement?
Trademark infringement is the unauthorized use of a trademark, a
substantially similar mark or slogan on competing or related goods
and services. Infringement can only be done in case of a registered
trademark. It is an infringement of exclusive rights attaching to a
trademark without the authorization of the trademark owner or any
licensees. Holding a trademark signifies a company’s claim over the
design and it represents the goodwill of a business or brand.
1.Registered Trademark: Registered trademark means a distinctive
mark or symbol i.e., logo, slogan, word, taste etc., to which a
person/company/business is holding the right of ownership by
fulfilling all the legal requirements under The Trademark act, 1999.
Infringement can only be said if a trademark is registered and there
cannot be any action against unregistered trademark’s infringement
generally (common law tort of ‘passing off’ is an exception). Even a
registered trademark can constitute trademark infringement when its
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use is concerning those goods or services which are not like those for
which the trademark is registered.
2.Use during trade.: Trademark shall be used in the management of
business or trade to constitute trademark infringement. Non-
commercial use of a trademark where no gain to the person using it
and no loss to the brand or monetary value of the company/business is
caused will not constitute trademark infringement.
3.Identity and Similarity: Mark, logo, slogan etc., used shall be
identical to the original trademark to constitute trademark
infringement.
4.Confusion in the mind of consumers: Product or service should
create confusion in the minds of consumers. Confusion does not mean
that consumers should not know trademark infringement. Even when
the consumer is aware that a product/service is copycat, but he/she is
going for that product because of the similar appearance and fake
brand value attached to the product (and copycat products are
available at a cheaper price, unavailability of the original product
during that period or any other convenience), it will amount to
trademark infringement. The only requirement under this head is that
confusion created in the minds of consumers is likely to have an
association with the registered trademark.
5.Unfair advantages: Unfair advantage or illegal gain means earning
something by using the name, resource etc., of another
company/business. When a trademark is used by the person who is
not authorized to use it and such use in any manner gives him some
profit (either monetary or favour in the market), it will amount to
trademark infringement. Unfair advantage can be gained by a person
by using a registered trademark as his trade name or part of his trade
name.
6.Use for Packaging or labelling.: Using a trademark for packaging
or labelling of products is a prima facie act of unauthorized use. It
shows the intention of the infringer, and any such act will constitute
trademark infringement.
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7. Import and export of goods under the mark.: Importing and
exporting products under a registered mark trust the purchaser/seller
of the company whose trademark it carries. Hence all unauthorized
acts of import and export under the mark of an already registered
trademark will constitute trademark infringement.
Civil remedies to infringement of the trademark
Two types of remedies are available to the owner of the
product/service in case of unauthorized use of trademarks (trademark
infringement) i.e., civil and criminal. Civil remedies available in case
of trademark infringement are as under:
1.Injunction: The action of an injunction means stopping one person
from doing a particular activity or task by the due process of law
(judicial proceedings). In the matter of trademark infringement, it is a
restriction on a person from unauthorized use of the trademark. The
court can pass an injunction order to prevent a person from further
using a trademark. If proceedings are going on and it does not become
clear whether there is trademark infringement or not, in that case, the
court can pass a temporal order to stay the use of the trademark by the
accused.
2.Damages: Damages refer to monetary compensation awarded to the
person who suffered any wrongful loss because of the act of another
person. Recovery of damages is the objective of most civil litigation
2. An order awarding damages for trademark infringement can also be
passed by the court. Court generally awards such compensation which
will be more than the loss suffered by the person.
3.Destruction and sealing of material: In the case of trademark
infringement, the court is vested with the power to appoint a local
commissioner for sealing of infringing material and account. The
court may direct such local commissions to destroy infringing
material wholly. The court may also ask the infringer to deliver all the
goods or products which are labelled with the trademark in question
before a court of law.

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4.Measure for recovery of reputation: The court may direct the
infringer to take measure to restore the reputation of the
company/business which suffered because of him. This can be
achieved through an apology in advertisements or by giving a
statement which brings back the faith of the public in the company or
business whose trademark was infringed.
Penalties for Trademark Infringement: -
1.Section 103: If a person is found to falsify any pre-existing
trademarks or trade descriptions and applies to their own goods or
services, they are to be punished with imprisonment for a term of six
months to three years, along with a fine of fifty thousand rupees to
two lakh rupees.
2.Section 104: The same punishment mentioned right above would be
awarded to a person if he is found to sell, hire goods or services to
which false trademarks or descriptions are applied.
3.Section 105: If a person previously convicted of the offences
prescribed in sections 103 and 104 is again found guilty for those
offences, he will be punishable for every subsequent offence with a
jail term of one year to three years and a fine from one lakh extending
up to two lakhs.
4.Section 106: If any person removes or attempts to remove for sale
from any premises referred to in section 81, or sells or exposes for
sale or has in his possession for sale or for any purpose of trade or
manufacture piece goods or cotton yarn or cotton thread that is not
marked as required by that section, every such piece and every such
bundle of yarn and all such thread, as well as everything used for the
packing thereof, shall be forfeited to the Government and will be
fined up to one thousand rupees.
5.Section 107: No person is allowed to make a false representation of
a trademark as legally registered, and if found to be guilty, he will be
punished with imprisonment for up to three years or asked to pay a
fine or sometimes even both.
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6.Section 108: If a person is found to mislead that his place of
business is in official connection with the Trademarks Office, he will
be punishable with a jail term extending up to two years, or with a
fine, or both.
7.Section 109: If a person falsely makes entries in the register, then
he shall be punished with imprisonment extending to two years, with
a fine, or both.
Trademark Registration Process
Registration for trademark can be easily done in four steps and they
are as follows:
Step 1: Trademark Search: The first step is trademark search. The
search should be done in both for various combination of similar
marks on the intellectual property website. In case similar marks are
found, check the description to see if the mark represents the same set
of goods or services proposed by you.
Step 2: Application Preparation: In the second step, an application
is prepared by the Trademark Attorney. Form 48 and TM-1 will be
prepared for approval and signature of the trademark applicant.
Step 3: Application Filing: In the third step, the trademark filing is
completed with the Trademark Registry. The Government fee for
registering a trademark for an individual, startup, small enterprise is
Rs.4500. For all other types of applicants, the Government fee is
Rs.9000. there is a separate fee setup for the attorney professional
which is Rs.3500 for each application.
Step 4: Government Processing: Once a trademark application is
filed and the Government is processing the application, the status of
the trademark application must be checked periodically. In case of
objection, an objection reply must be submitted by the applicant
within 30 days. Similarly, in case of opposition, the applicant must
respond in a time-bound manner to allay the concerns of the
counterparty.

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Documents Required for Trademark Registration
The following is the list of documents required for trademark
registration in India:
• A copy of the trademark or of the logo. In case of trademark for
word, logo is not required.
• Applicant’s details like name, address, and nationality. In case
of company or LLP, the incorporation certificate.
• Udyog Aadhar registration in case the company is eligible for
lower filing fee.
• Description of goods or services represented by the mark.
• Trademark class under the application must be filed.
• Power of attorney in Form 48 Format should be signed by the
applicant.
Benefits of Trademark
• The biggest benefit to having a trademark registered is for the
protection of the brand and the business by contributing to the
goodwill of the business.
• Further, having a strong brand can act as a bridge between the
customer and the product by ensuring they are loyal and
affiliated to the business for a long time.
• It gives credits to the source of the product or service.
• It guarantees its quality.
• It helps in the advertisement of goods and service.
ESTABLISHMENT OF THE APPELLATE BOARD: According
to section 83 of the Indian Trademarks Act, the Central Government
shall, by notification in the Official Gazette, establish an Appellate
Board to be known as the Intellectual Property Appellate Board to
exercise the jurisdiction, powers, and authority conferred on it by or
under this Act. The Intellectual property appellate board came into
existence on 15th September 2003. Its headquarters is in Chennai and
has sittings in Chennai, Mumbai, Kolkata, and Ahmedabad.

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FUNCTIONS OF THE APPELLATE BOARD: When a person is
aggrieved by the order of the registrar, he shall file an appeal within
three months of the passing of the order before the board. The board
can hear cases after the expiry of the said period if there is sufficient
and reasonable cause for not being able to file for an appeal before the
specified time. The appeal must be filed in the prescribed form and
manner along with a copy of the order against which the appeal is
filed. An application can be filed for the rectification of the register
under sec 57 of the Act and when the board passes an order regarding
this, the certified copy of the order is communicated to the registrar.
The registrar gives effect to the order by amending or rectifying the
contents in the register.
POWERS OF THE APPELLATE BOARD:
• The board is not bound by the rules of the civil procedure code.
It is bound by the principles of natural justice and has the power
to regulate its own procedure like deciding the time and place of
the meeting.
• It shall have the same power as that of a court trying a suit under
the civil procedure code like receiving evidence, examining the
witness, requisitioning any public record etc.
• The proceeding before this board is deemed to be a judicial
proceeding and the board is considered to a civil court. After the
constitution of this board, no other court has the jurisdiction to
try cases that come under the purview of this board.
• No interim order can be passed by the court unless the copy of
the order against which appeal is initiated and the documents in
support of the claim for the interim order is provided.
The Protection of Plant Varieties and Farmers Right Act, 2001:
In order to provide for the establishment of an effective system for the
protection of plant varieties, the rights of farmers and plant breeders
and to encourage the development of new varieties of plants it has
been considered necessary to recognize and to protect the rights of the

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farmers in respect of their contributions made at any time in
conserving, improving and making available plant genetic resources
for the development of new plant varieties.
The Govt. of India enacted “The Protection of Plant Varieties and
Farmers' Rights (PPV&FR) Act, 2001” adopting sui generis system.
The legislation recognizes the contributions of both commercial plant
breeders and farmers in plant breeding activity and also provides to
implement TRIPs in a way that supports the specific socio-economic
interests of all the stakeholders including private, public sectors and
research institutions, as well as resource-constrained farmers.
Objectives of the PPV & FR Act, 2001
• To establish an effective system for the protection of plant
varieties, the rights of farmers and plant breeders and to
encourage the development of new varieties of plants.
• To recognize and protect the rights of farmers in respect of their
contributions made at any time in conserving, improving and
making available plant genetic resources for the development of
new plant varieties.
• To accelerate agricultural development in the country, protect
plant breeders’ rights; stimulate investment for research and
development both in public & private sector for the development
new of plant varieties.
Rights under the Act:
• Breeders’ Rights: Breeders will have exclusive rights to
produce, sell, market, distribute, import or export the protected
variety. Breeder can appoint agent/ licensee and may exercise
for civil remedy in case of infringement of rights.
• Researchers’ Rights: Researcher can use any of the registered
variety under the Act for conducting experiment or research.
This includes the use of a variety as an initial source of variety
for the purpose of developing another variety, but repeated use
needs prior permission of the registered breeder.
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 • Farmers' Rights:
✓ A farmer who has evolved or developed a new variety is
entitled for registration and protection in like manner as a
breeder of a variety.
✓ Farmers variety can also be registered as an extant variety.
A farmer can save, use, sow, re-sow, exchange, share or
sell his farm produce including seed of a variety protected
under the PPV&FR Act, 2001 in the same manner as he
was entitled before the coming into force of this Act
provided farmer shall not be entitled to sell branded seed
of a variety protected under the PPV&FR Act, 2001.
✓ Farmers are eligible for recognition and rewards for the
conservation of Plant Genetic Resources of land races and
wild relatives of economic plants.
REGISTERABLE PLANT VARIETIES IN INDIA
• New Varieties: A Variety which is not in public domain in
India earlier than one year before the date of filing or outside
India, in the case of trees or vines earlier than six years or in any
other case earlier than four years.
• Extant Variety: A Variety which is notified under Seed Act,
1966 or a variety about which there is common knowledge or a
farmer’s variety or any other variety which is in public domain
is considers as an Extant Variety.
• Farmer’s Variety: A Variety which has been traditionally
cultivated and evolved by the farmers in their fields or a variety
which is a wild relative or land race of a variety about which
farmers possess common knowledge.
• Essentially Derived Variety (EDV): Predominantly derived
from such initial variety, or from a variety that itself is
predominantly derived from such initial variety, while retaining
the expression of the essential characteristics that result from the
genotype or combination of genotypes of such initial variety.
✓ Is clearly distinguishable from such initial variety; and
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 ✓ Conforms to such initial variety in the expression of the
essential characteristics.
NON-REGISTERABLE PLANT VARIETIES IN INDIA: All
plant varieties cannot get legal protection in India. Certain Plant
varieties are excluded from the protection under PPVFR Act 2001.
Any variety where prevention of commercial exploitation of such
variety is necessary to protect public order or public morality or
human, animal and plant life and health or to avoid serious prejudice
to the environment or any varieties which has terminator technology
or any variety belonging to the species or genera which is not listed in
the notification issued by the Central Government cannot be
registered for the protection under the Act.
PLANTS THAT ARE COVERED UNDER THE PPVFR ACT:
As of now following 18 plant species can be registered under the
Act.
Cereals: Rice, Wheat, Maize, Sorghum, Pearl Millet.
Legumes: Chickpea, Mungbean, Urdhean, Field Pea, Rajmash,
Lentil, Pigeaon Pea.
Fibre Crop: Four species of cotton namely GossypiumArboreum L.
and G.
Herbaceous L. (Diploid Cotton) and G. Barbadense L. and G.
Hirsutism L. (Tetraploid Cotton)
Two species of Jute (CorchorusOlitorius L. and C. Capsularis
L.) The Semi-Conductor Integrated Circuits Layout Design
Act,2000 What is Semi-Conductor Integrated Circuit?
• A product having transistors Circuitry elements inseparably
formed on a semiconductor material.
• Insulating material inside the semiconductor material
• Designed to perform an electronic circuitry function.

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 • The layout-design of a semiconductor integrated circuit means a
layout of transistors and other circuitry elements and includes
lead wires connecting such elements and expressed in any
manner in semiconductor integrated circuits.
• To protect these newly invented semiconductors an Act was
passed in the year 2000 known as the Semiconductor Integrated
Circuits Layout-Design Act, 2000, in conformity with the
TRIPS Agreement. The Act is an additional act to the Designs.
Features of the Act:
• The Act's goal is to ensure that intellectual property rights in the
field of semiconductor integrated layout designs, as well as
other aspects related to them, are protected.
• Infringement on layout design is punishable under the Act.
• While the Act allows a registered owner of a semiconductor
layout design to commercialise it and seek redress in the event
of a false representation or infringement, it does not allow a
registered owner of a semiconductor layout design to do so.
• Also, the Layout-Design is valid only for a period of 10 years
from the date of filing an application for registration or
commercial exploitation in any country, whichever is earlier,
under this Act.
Eligibility under the Act: The applications for protection under the
Semiconductor Integrated Circuits Layout Design Act, 2000 are given
to certain people, either alone or jointly. The specific people who are
allowed are as follows:
• Creator of the layout design, either himself or his legal
representative.
• Person who is a registered layout design agent or someone who
is in the employment of the principal. It must be stated in a
prescribed or written manner.
Infringement of Layout-Design: In India, in addition to legal
remedies, an infringement of a Layout-Design is also regarded a
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criminal offence. Under the terms of section 56 of The Semiconductor
Integrated Circuits LayoutDesigns Act, 2000, infringement of a
registered layout-design is punishable by imprisonment for up to three
years or a fine of Rs. 50,000 up to a maximum of Rs. 10, 00,000, or
both.
Layout design registration process in India:
Step-01: Applying for Registration of Designs: The application for
registration of designs can be filed by the applicant himself/herself or
through a professional person (i.e., patent agent, legal practitioner).
However, for the application not being resident of India, and residing
in India must be employed.
Step-02: Place of applying for registration of designs: Any person
who desires to register a design shall submit the following documents
to the controller of designs, The patent office at Kolkata, or at any of
its branch offices at New Delhi, Mumbai, and Chennai.
Step-03: Duration of the registration of a design and its
extension:The duration of the registration of designs is usually 10
years from the date of registration but in uses where the claim to
priority has been allowed. The duration is 10years from the priority
date. This initial period of registration may be extended by a future
period of 5 years on an application made in Form-3 accomplished by
a fee of Rs.2000/- to the controller before the expiry of the said initial
period of copyrights. The proprietor of a design may make an
application for such an extension even as soon as the designs in
registration.
Step-04: Cancellation of Registration of a Design: The registration
of a design may be cancelled at any time after the registration of the
design, on a petition for cancellation in form 8, with a fee of Rs.
1,500/- to the Controller of following grounds:
✓ That the design has been previously registered in India or
✓ That it has been published in India or elsewhere prior to the dals
of registration or
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 ✓ The design is not new or original or
✓ Design is not registrable or
✓ it is not a design under Clause (d) of Section 2
Step-05: Piracy of a Design: Piracy of a design means the
application of a design or its imitation to any article belonging to a
class of articles in which the design has been registered for the
purpose of sale or importation of such articles without the written
consent of the registered proprietor. Publishing such articles or
exposing them for sale with knowledge of the unauthorized
application of the design to them also involves piracy of the design.
Step-06: Penalty for the piracy of a Registered Design: If anyone
contravenes the copyright in a design for every contravention, he/she
is able to pay a sum not exceeding Rs. 25,000/- to the registered
proprietor subject to a maximum of Rs 50,000 -recoverable as
contract debt in respect of any one design. The registered proprietor
may bring a suit for the recovery of the damages for any such
contravention and for an injunction against repetition of the same.
Total sum recoverable shall not exceed Rs. 50,000/- as contract debt
as stated in Section 22 (2) (a). The suit for infringement, recovery of
damage should not be filed in any court below the court of District
Judge.
Step-06: Design Registration: The Designs Act, 2000, was made
effective from May 11, 2001, and the Designs Rules, 2001 govern
India's registration of designs. According to the Act, the design
registration protects the features of shape, pattern, configuration,
ornamentation, or composition of some lines or colours applied to the
articles.

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