IPR

13/01/2020
World is very technology based, so the ideas and intellect have become the subject matter of trade.
IPRs are negative rights because it is govt sanctioned monopoly rights, so the owners have the
right to stop others to use their creation, ideas and have the right to negotiate the price of their idea
or creation. The owner only give you the right to use it.
It is globalized thing as linked with international trade. Sometimes the negotiations are very
difficult because the amount of protection under the right varies from country to country.
26th April – World Intellectual Property Day.
Generic drugs are cheaper than patented drugs because –
1) They didn’t invest in R&D, so the cost in this is 0.
2) Clinical authorization cost is also nil. Because it may use the chemical composition similar to
the patented drug which got the approval form authority.
Generic company is getting the approval based on the report of patented drug. Also, if patented
company requests, if generic company applies for approval, don’t give it for certain time. This
time period is called data exclusivity period. It is the second layer of protection given to the
patented company.
India, Argentina, Brazil and many developing countries are not having Data Exclusivity provision,
one reason is that we are not simply accepting data exclusivity. This may be due to the disparity
in the developed and the developing countries where people cannot afford the expensive patented
drugs, so having no data exclusivity, will ensure other companies to make generic drugs at cheap
prices.
Each and every Intellectual Property Right is territory specific. So, you need to do your registration
for IPR in every country you do business. Eg., A drug is protected in India and enjoying data
exclusivity in US and cannot enjoy it in India.
Notes from PPT:
Ideas and knowledge are vital part of trade. High technology products developed by invention,
innovation, research, design and testing. Films, music recordings, books, computer software and
online services contain information and creativity, that’s why they are commercially utilized.

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Owners have the right to stop others from using their inventions, designs or creations, they also
have the right to negotiate the payment for using them.
The degree of protection and enforcement of these rights varied extensively around the
world, intellectual property became very important in trade but these differences became a
source of strain in international economic relations.
The Uruguay Round of multilateral trade negotiations held under the framework of the General
Agreement on Tariffs and Trade (GATT) was concluded on December 15, 1993. Those
negotiations included, for the first time within the GATT, discussions on aspects of intellectual
property rights which impacted on international trade. This resulted in the Agreement on trade-
Related aspects of IPRs [TRIPS].
The agreement included 5 major issues:
1) How basic principles of the trading system and other international intellectual property
agreements should be applied.
2) How to give adequate protection to intellectual property rights.
3) How countries should enforce those rights adequately in their own territories.
4) How to settle disputes on intellectual property between members of the WTO.
5) Special transitional arrangements during the period when the new system is being introduced.
The obligations under TRIPS apply equally to all member states, however developing countries
were allowed extra time to implement the applicable changes to their national laws, in two tiers of
transition according to their level of development.
Definition of IPR: The TRIPS Agreement states that, for the purposes of the Agreement, the term
“intellectual property” refers to all categories of intellectual property that are the subject of
Sections 1 through 7 of Part II of the TRIPS Agreement, namely, copyright and neighboring
rights, trademarks, geographical indications, industrial designs, patents, layout-designs
(topographies) of integrated circuits, and undisclosed information (Article 1.2).
Objectives of IPR: Article 7 of TRIPS mentions the objectives of IPR –
1) Promotion of technological innovation and to the transfer and dissemination of technology,
2) The mutual advantage of producers and users of technological knowledge and in a manner
conducive to social and economic welfare, and
3) To a balance of rights and obligations.

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14/01/2021
---Kuch Smjh nahi aaya---
Data exclusivity- it is related with the pharmaceuticals. IPR rights (patents specifically) are highly
lobbied by the Pharmaceutical industry. One reason behind TRIPS (Trade related aspects of
Intellectual property rights) is the lobbying between the pharmaceutical industries.
WIPO being too much philosophical, could not solve the purpose, the resort is that the Pharma
companies start lobbying it. The companies need to run a clinical trial and this usually takes 6-12
years and sometimes, more than that. Post this, they submit the report to Drug Controller authority
(India), they counter-check and then give the certificate of safety and efficacy and now you can hit
the market. Now, pharm companies started complaining that this whole process takes a lot of time
and therefore, the patent period they get is very less. They get 20 years from the date of application.
Now, what to do?
Generic drugs are non-patented drugs. They are cheaper than the patented drugs as they do not
incur any huge R&D costs. The drug has the same ingredient as that of the patented drug, simply
copying and doing an informal trial. This co. claims that it is similar to the patented drug. Based
on the repost of the chemical drug, if the generic drug report seems okay, the market approval to
the generic drug is also given. Parle G (patented) and GC (generic). On the basis of the report of
the patented drug, the generic drug gets the approval.
The other company with the patented drug, for an additional protection, request the DCA to keep
the data of the clinical trial report exclusive to protect it from the generic drug companies. The
time period for which such protection can be granted differs from country to country. This is
calculated form the date on which the report of the trial is submitted and has been granted the
approval. India does not have data exclusivity. The reason is access to medicine.
The infringement aspect, if the drug is patented, it cannot be infringed. Generic drug is bio-similar
or bio-equivalent to the patented drug. Generic drug can be a substitute for the costly drug if the
drug is not patented. India produces the largest quantity of generics. The interesting thing is that
due to the anti-china sentiment. The Active ingredient required India is procured from china in
large amounts and despite India having a potential to manufacture the active ingredient, it does not
as it involves incurring huge costs. And if it decides to manufacture it, the price of the drug would
increase. Govt is now making investments in the same and coming up with the policies so that it
can gradually reduce the procurement of the same from China.

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Article 39.3 of the TRIPS agreement, the interpretation is much closer to the concept of data
exclusivity.
Section 122-E of the Drugs and Cosmetics Act, 1940 defines “new drug”. [It does not insinuate
data exclusivity in any manner.]
Bayer v union of India [2019]
Satwant Reddy committee report on data exclusivity
Paris convention is for industrial property
TRIPS, special transnational arrangement and
Patent can be of three types-
1. Process
2. Product- the product patent is very rigid as irrespective of the new process that you
use for the production, if the consequence, that is, the product is the same, the process
cannot be patented.
To cater to this rigidity, deliberations took place. 1995-2005, 10 years were given to every
developing country to develop their patent regime. And the least developing countries are
still in this process of developing their patent system.
Till 2005, whatever product patent application came to India, it was kept in a mail box and
not deliberated upon/regarded. They were called “mail box applications”.
Novartis application is one of these applications, in 2005, they opened the box and started
examining these applications but by 2005, India introduced section 3 d by virtue of an
amendment. As per TRIPS Article 1.2- definition of IP- it states that for the purpose of this
agreement, the term IP refers to all the type of IP- it covers all the subject matters of IP.
Article 7 talks about the objective and scope of TRIPS.
Article 8 sets out the principles of TRIPS
The objective and principle are guilty conscience. On the one hand you are giving the
monopoly/exclusivity and on the other hand, article 7 and 8 are trying to balance the
situation.
3. Combination

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15/01/2021
Data exclusivity can overlap depending upon the time period for which it is granted. Different
countries grant it for different time period. TRIPS is silent on that.
India is too much into sharing and exclusivity is not in our philosophy.
Labor theory- According to the labor theory, an individual has a right to the product of their
labor, whether physical or intellectual. It is based on the John Locke's labor theory of
property which says that persons are entitled to the fruits of their own labor, and by extension,
intellectual property can be viewed as the fruits of an individual's mental labor. While the
Lockean theory was originally intended for conventional forms of property, it can be extended
to justify intellectual property in general and copyright in particular if we view an owner's
claim to traditional forms of property as being analogous to an author's claims over their
intellectual property. Labor is not a pleasure, people are not very much eager to work, unless
they are being incentivized for the same. Would incentive only include economic incentive?
No, it would also include non-economic factors like name, fame. According to the scholars,
the labor theory is fit for patents. As nowadays, people are working for incentives. It is believed
that these incentives are the motivation behind the invention.
Personality theory- an idea belongs to its creator because the idea is a manifestation of the
creator's personality or self. The best known personality theory is Hegel's theory of property.
It is believed that it is very much fitted with the copyright. It takes into consideration the
personality of an individual. Every individual has a distinct personality. Example, if asked to
write an essay on “unity in diversity”, every individual would have its own way of penning
his/her thoughts.
Utility theory- theory of “social justice” seeks to promote the welfare of maximum number of
people. Therefore, if the country wants to substantiate this theory, the country cannot go with
the data exclusivity policy or with the rigid IPR structure, for that matter. But this goes against
the interest of the originator company and would, in the long run, impede the process of
invention as the companies are unable to take out the costs of the investment made in the
research. Clash between public interest and Intellectual property. But if there is no
invention/creation in the long run, that too would go against public interest.
Social welfare theory- actions must be oriented towards the welfare of the society.
Marx theory- any software engineer is working for a company, under the contract of service,
the person works on the creation, but at the end, the company owns the copyright of the same.
This “contract of service” in many cases results in the exploitation of the invention. Someone
else enjoys the result of your effort and hard work, as whoever is putting the intellect must be
the one to enjoy the benefit of the same.
Vacuum cleaner example-
Trademark- identifying the source of goods and services and helps in differentiating the
particular goods from the other ones available in the market. Example, the name “Eureka
Forbes”.

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 The technology used in vacuum cleaner is protected by “patents”. Every product comes
with a booklet describing the procedure of use of product, user guide. Booklet comes under
the head pf “copyright”.
Shapes of vacuum cleaner, this comes under the head of “industrial design”.
As per TRIPS, Article 39, the trade secret must not be trivial, it must be of some value, worthy,
people want to know it. Trade secret need not be registered.
An unregistered patent, ID, GI, plant variety, you cannot sue. It has to be registered.
16/01/2021
TRADEMARK [PG 134]
To combat the unfair competition is the basis of having this.
A trade mark (popularly known as brand name in layman’s language) is a visual symbol which
may be a word to indicate the source of the goods, a signature, name, device, label, numerals, or
combination of colours used, or services, or other articles of commerce to distinguish it from other
similar goods or services originating from another. It is a very self-explanatory. The mark used
in trade. Suppose you want to purchase Nike shoes, you enter into the shop and you see that each
shoe is covered in white paper, and it is very difficult to select any shoe. This mark nothing but
identifying a source.
Mark is the sign is giving me the identification of the source. There is an expected quality of that
company, that’s why we go for that mark on the product.
A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use
it or to authorize another to use the same in return for payment. The period of protection varies,
but a trade mark can be renewed indefinitely beyond the time limit on payment of additional fees.
Trade-name, Trademark and Brand:
Company name is the trade-name. In TRIPS there is no mention of trade-name. Paris
Convention clarifies that Trade-name may be a trademark or may not be. ITC is the trade-
name, it can go for trademark also. Criteria for registering the company’s name and registering a
trademark is completely different. Therefore, the rights are completely different under them. So,
ITC can be a trademark and trade-name at the same time. A trademark requires a separate
registration from a trade name, and this must be done at the federal level rather than just at the
state level. The registration of a trademark guarantees an individual or business the exclusive use
of the trademark, establishes legally that the trademark was not already being used by any
other business entity prior to your registration of it, and provides official government protection

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from any other business subsequently infringing on your registered trademark. It also provides
legal liability protection against someone subsequently claiming that you are infringing on a
previously registered trademark.
Brand is total perception of people how they are liking the service of the company, the
product and many things of the company. This gives value to the brand. It is a very holistic
thing and the trademark is part of it. Generally you identify brand with the trademark, therefore,
they are interchangeably used sometimes.

Slogan can never be copyrighted but only have trademarked because it too short to be
considered as a literary work. Therefore only under trademark.

Colour depletion theory: There are a limited number of colors in the color palette has been used
to bar protection of colors. The purpose was to protect against ownership of various colors, that
when monopolized, would hinder competition. If one another company is using separate colours,
there will be extinction of colours, as monopoly is estb.
There is territorial aspect in IPRs. But there is a cross-border concept in trademarks.
In service industry like gyms, spas, hotels etc., we consider good as well as the service. US used
to write SM [Service Mark]. India doesn’t use SM explicitly but only TM.

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We can have wordmark, colour, characters [Iron Man, Mickey Mouse etc., are TMs and not
copyrights because copyright ends after certain time period and anyone can use them], designs,
packing shape, logotype, product shape, device logo can have trademarks. In characters, TM is
worthier than copyright.
Suppose, football teams like Man United, Liverpool, Bracelona etc., they have adidas, nike, etc on
their jersey. Sometimes they have more than one on their jersey, this is called cross-licensing. Any
two clubs can enter into agreement and sponsor each other. This would increase the business of
the sports brand.

19/01/2021
India is not having a legislation for unfair competition.
Before TRIPS, we had Paris Convention for intellectual property. Paris Convention, Article 10
provides for the unfair competition.
There is a bit difference between competition law and unfair competition. In former, there is
always a provision for exemption of intellectual property, but when beyond the scope of IPR, the
owner is using his position is creating anti-competitive behavior, Competition Act can come in
between.
Trademark is to identify the source, creating loyalty. It can be of various types.
Trademark Act, 1999 replaced the Trademark Act 1958. It complied with the TRIPS obligations.
The journey of TM started with a word symbol, but later it included colour, shape, character etc
[mentioned above]. Mp3 recording also.
On form we need to mention exactly with the distinctive properties. This mentioning is called
graphical representation. Graphic representation of a mark is the sine qua non for a trademark
registration in India. A trademark application essentially requires the mark to be represented
graphically, that is, the mark should be capable of being put on register in a physical form and also
being published in the journal.
A “Trade mark” [TM] is defined under Section 2(zb) of the Indian Trademarks Act, 1999 as “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 a shape of goods, their packaging,
and combination of colors.” So, Graphical Representation is important in trademark.

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A trademark may be divided into the following categories:
1. Word marks: Word marks may be words letters or numerals. A word mark gives the proprietor
a right only in the word, letter or numerical. No right is sought with respect to the representation
of the mark.
2. Device marks: Where the trademark lies in the unique representation of a word, letter or
numerical, it is called as a device mark.
3. Service Marks: A service mark is nothing but a mark that distinguishes the services of one
person from that of another. Service marks do not represent goods, but the services offered by a
person/ company.
They are used in a service business where actual goods under the mark are not traded. It is a
mechanism available to protect marks used in the service industry. Thus businesses providing
services like computer hardware and software assembly and maintenance, restaurant and hotel
services, courier and transport, beauty and health care, advertising, publishing, educational and the
like are now in a position to protect their names and marks 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 are used to inform the public about a particular feature of the
product for which the collective mark is used. The owner of such marks may be an association or
public institution or cooperative. Collective marks are also used to promote particular products
which have certain characteristics specific to the producer in a given region.
Like Chartered Accountants mark [CA].
5. Certification Marks: Certification marks are used to define standards. It is directly associated
with the quality. They assure the consumers that the product meets certain prescribed standards.
The presence of a certification mark on a product indicates that the product has successfully gone
through a 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
such marking that indicates the safety and the quality of the product. ISI, Silk Mark etc. are
examples of this.

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The difference between the certification mark and the collective mark is that the collective
mark is used by a particular enterprise or members of the association while a certification
mark may be used by anybody who meets the defined standards.
6. Trade dress: This concept came in India through Colgate v. Anchor health, anchor launched a
red-white tooth powder. Colgate challenged it as people identified red-white colour combination
with colgate only. Court: You cannot use this colour as this will confuse the people. For
trademarks, people are considered to be dumbo with common average intelligence and improper
recollection.
Trade dress is the look, packaging. This concept came from USA Two Pesos v. Taco Cabana.
Trade dress is the characteristics of the visual appearance of a product or its packaging (or even
the design of a building) that signify the source of the product to consumers. Trade dress is a form
of intellectual property. In India, Ferrero Rocher v. Mahendra Dugar, same packaging.
7. Well-known marks: When a mark is easily recognized among a large percentage of the
population it achieves the trademark status of a well-known mark. Well-known marks enjoy
greater protection. Persons will not be able to register or use marks, which are imitations of well-
known trademarks. In order to be well-known, a trademark needs to be known/recognized by a
relevant section of people. These people include actual or potential customers, people involved in
the distribution and business service dealing with the goods/services.
8. Unconventional Trademarks: Unconventional trademarks are those trademarks that get
recognition for their inherently distinctive feature.
Unconventional trademarks include the following categories:
Colour Trademark: If a particular color has become a distinctive feature indicating the goods of a
particular trader it can be registered as a trademark. For example, Red Wine.
Sound Marks: Signs which are perceived by hearing and which is distinguishable by their
distinctive and exclusive sound can be registered as sound marks. For example, Musical notes.
Shape Marks: When the shape of goods, packaging has some distinctive feature it can be
registered. For example, Ornamental Lamps. Coca Cola’s small bottle shape is trademarked.
Nescafe cup is having shape mark.
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, Perfumes.

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Motion Mark: A motion trademark is a moving logo which is used by the company as an
innovative marketing strategy by the companies to attract consumer towards their product. Any
motion mark is made by using animation and different computer programs and any moving object
which exist around that company.
Slogan: They cannot be copyrighted therefore trademarked.
Tourism Mark: Kerala tourism has applied for this.
Position Mark: Three strip mark of adidas on the shoes can be an example.
Gesture Mark: One Australian tennis player Lleyton Hewitt applied for “come on” gesture – but
it was rejected.
Texture or feel mark: Leather texture rapping around the wine bottle by Pinterest Company.
Holograms, Mother Teresa Blue border saree.
ABSOLUTE GROUND OF REFUSAL TO TM: Section 9.
These are the grounds on which TM is refused to be granted. First step is, it should be distinctive.
Spectrum of Distinctiveness: According to the Abercrombie test [spectrum of distinctiveness]
categorizes the marks into –
a. Inherently distinctive: Come under Fanciful marks. Where there is no meaning but a catchy
word. A "Fanciful" or "coined" mark is made up, and has no meaning. It is a completely invented
word. Marks in this category are inherently distinctive. Because of their distinctiveness, fanciful
marks generally are afforded the broadest scope of protection against 3rd party use. Like Kodak,
Nokia, Polaroid. Highest distinctive.
b. Non-Inherent distinctive: They come under the Arbitrary marks. An “Arbitrary” mark has a
common meaning that has no relation to the product or service on which it is used. It is a known
word used in an unexpected or uncommon way. Marks in this category are also inherently
distinctive, and are afforded a broad scope of protection. Like Apple for computer, Black & White
for Scotch whiskey, Camel for cigarettes.
c. Marks no distinctiveness: They come under suggestive marks. A “Suggestive” mark suggests
a quality or characteristic of the product or service, but requires imagination, though or perception
to connect the mark with the product and service. Marks in this category are inherently distinctive,
but it is often difficult to predict whether certain wording will be considered suggestive or
descriptive. Suggestive marks have a broader scope of protection than descriptive marks. Eg., Head
& Shoulders for shampoo.

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d. Descriptive: A "Descriptive" word (or words) merely describes an ingredient, quality,
characteristic function, feature, purpose or use of the product or service. Also in this category are
laudatory terms, geographic designations, and surnames. A descriptive word is not "inherently
distinctive" and is therefore not protectable as a mark from the outset. However, such wording
may acquire distinctiveness (also known as "secondary meaning") over time through use and
promotion, and thereby become protectable as a mark. Even once protected, descriptive marks are
generally afforded the narrowest scope of protection against 3rd party use. Section 9(1)(b).
It is not allowed, because you need to give the market freedom to describe itself innovatively.
USA use the word secondary meaning for ‘acquired distinctiveness’. For EU, UK and India we
use ‘acquired distinctiveness’
e. Generic: A “Generic” word is the common name of the product or service. Generic words or
phrases are so descriptive that they are incapable of ever functioning as a mark. RV Enterprise
case, they were supplier to phillips company. They started giving advertisement that, ‘phillips
khareedo World Cup jaao’, ICC sued them saying that they don’t have any relationship so how
can they give ad. Advocate for RV Enterprise argued that, World Cup is so generic word, it doesn’t
only mean ICC WC. Section 9(1)(c).
Generic can be of two types: 1) Common word, so common nothing distinct, 2) Once the word
was distinct, but the use became so much that it became generic, people forget the actual
English word and use that word to identify the product.

There is a Nairobi Agreement, which prohibits the use of Olympic symbol for any commercial
use.
Doctors used to use the red-cross, but red-cross used the restriction on the use, because if every
doctor use this, then they will be thought to be related with the red-cross [organization].
Section 9 lists down the grounds of refusal of TM.
Section 9(3) - A mark shall not be registered as a trade mark if it consists exclusively of— (a) the
shape of goods which results from the nature of the goods themselves; or (b) the shape of goods
which is necessary to obtain a technical result; or (c) the shape which gives substantial value to
the goods.
Phillip Shaver applied for copyright, Industrial Design, TM and what not for protecting its design
of shaver. They asked for shape mark for the three rotary blades [triangular]. If they put those

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blades in any other position, it wouldn’t work. So, if the shape is so necessary for a product to
function, it cannot be patented or trademarked/shapemarked. Therefore, phillips shaver lost.
These were the absolute grounds of refusal.
But it is provided in the Section 9 that a trade mark shall not be refused registration if before
the date of application for registration it has acquired a distinctive character as a result of the use
made of it or is a well-known trade mark.
SECTION 11 TALKS OF THE RELATIVE GROUNDS OF REFUSAL :
It is based in the likelihood of confusion. Likelihood of being identical/similar to earlier trademark.
As per S. 11 it is relative ground for rejection. Eg., you started a mobile company Moliver, later
another person starts a mobile company name Boliver.
Vaporub case, [de cordova v. Vicks] De cordova a company came with a vaporub, it was rejected.
Because whenever people buy vaporub, they look for vicks and not another. According to courts
consumer is having average intelligence level and improper recollection.
Another case, someone started selling mercedez underwear and another company started selling
mercedez caserolls. Mercedez is a very high end car maker, so, anyone who buys it would have an
ability to differentiate. But the court said that, no, a person can get confused like mercedez is
diversifying its business.
Overall similarity is the touchstone. Also the average intelligence level and improper
recollection is the touchstone.
Dilution of trademark is used when there is a well-known trademark. Section 11(6) contains the
details for a well-known mark. The Registrar shall, while determining whether a trade mark is a
well-known trade mark, take into account any fact which he considers relevant for determining a
trade mark as a well-known trade mark including— (i) the knowledge or recognition of that trade
mark in the relevant section of the public including knowledge in India obtained as a result of
promotion of the trade mark; (ii) the duration, extent and geographical area of any use of that
trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark,
including advertising or publicity and presentation, at fairs or exhibition of the goods or services
to which the trade mark applies; (iv) the duration and geographical area of any registration of or
any application for registration of that trade mark under this Act to the extent that they reflect the
use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that

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trade mark, in particular the extent to which the trade mark has been recognized as a well-known
trade mark by any court or Registrar under that record. TRIPS have the same understanding.
Two ways in which well-known marks can get recognition: 1) As per Trademark rule, 2017, if
it is fulfilling the conditions of 11(6), you can apply for well-known mark. 2) Through
Judiciary.
US is not having the concept, some south-asian countries have the concept of cross-border
reputation. NR Dongre v. Whirlpool, in this, only US embassies used have whirlpool washing
machines. NR Dongre started same type of appliances, with the name of whirlpool. Court came
in the way, and restrained it. So, physical presence of a company is not necessary. The
reputation, advertisement through media may suffice to have protection. So, whirlpool got well-
known mark through judiciary.
Similarly, in the case of playboy magazines. Court held that it has cross-border reputation.
Also, in the case of HBO, it wasn’t in India, and AK Das started a channel CBO [Cable Box office].
Court restraint it and held that HBO has cross-border reputation.
UK has the cross-border reputation with the physical presence, but India doesn’t find physical
presence as necessary. Some marks are such reputed one and famous, if someone have that mark
and people can get confused, so it is necessary.
So, the law in India is that Physical Presence not necessary to get cross-border reputation.
But in a case, Toyota raised the issue of territoriality. It is only one case. There are chances of
going to have physical presence as necessary condition.
US use the terminology ‘famous marks’ rather than ‘Well-known marks’.
Section 29(4) of TM Act 1999 use provides for Dilution of TM.

Amrit Dhara case, there was a tonic named Amritdhara [vitamin tonic] by a company. But
someone started business with same type of tonic with the name Laxmandhara. It was challenged.
Court: Microscopic understanding is not there with the consumers and the intelligence level and
improper recollection is the touchstone. Landmark case.
In a similar manner, a company started vitamin tablet with name protovit. Now, next one came
with a name dropovit. When it came before the court, court: there is no slurring in the phonetics
and there is no reason of confusion.

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i. AMRITDHARA PHARMACY V. SATYADEO GUPTA (1962)
In this case, the courts did a likelihood of confusion analysis between two marks, namely,
"AMRITDHARA" (Opponent’s Mark) and "LAKSHMANDHARA" (Applicant's Mark). Both
these marks were being used for a medicinal preparation, where "AMRITDHARA" was in use
since 1901, much before the Applicant's mark i.e. "LAKSHMANDHARA" came into existence.
The courts, in this case set down rules/guidelines, the essence of which echoes till today. The
courts laid down the test for determining if the two marks were similar.
Two Important Tests:
- Reasonable Man's Test: The differentiation of the two marks must be done from the point of view
of a man with average intelligence and imperfect recollection.
- Overall Impression Test: According to this test, we must see the overall impression of the two
marks. This includes the overall phonetic and visual similarity of the two marks.
The court, in this case, remarked that a man would have to be "unusually stupid" or must be a fool
or an idiot to be deceived between the two marks. The overall impression of the two marks showed
obvious differences.
ii. F. HOFFMANN-LA ROCHE & CO. LTD. V. GEOFFREY MANNER & CO. PVT. LTD.
(1969)
This is another landmark case that is integral to Indian Trademark Law in practice. This case
reiterates and then clarifies the law laid down in Amritdhara Case.
The Test:
- Totality Test: It is important that while comparing the two marks, one must compare the mark as
a whole. The practice of taking a portion of the word and saying that it is different from the other
mark is not a right practice. The marks must be compared in totality to ascertain if any deception
or confusion exists.
This rule is an extension of the rule already laid down in the previous case.
Onus would be on the Plaintiff to prove that the marks used by the defendant so nearly
resembles the registered trademark that it likely to deceive the consumers.
Relative Grounds in US:
1) They always judge the strength of plaintiff’s mark.
2) The proximity of products and service
3) Likelihood that previous owner would abridge the gap

15
4) Proof of actual confusion.
5) Good faith
6) Quality of the product
7) Sophistication of the consumers. There are three types of consumers: i) having money and know
what should be bought, ii) Go by the pocket and do wrong by buying copied goods, iii) Those who
are merely surviving, they don’t think about any infringement [this is due to the socio-economic
conditions of India].
We have a concept of unregistered TM: there is no infringement, but passing off.
This is having the Passing off, for passing off three things need to be fulfilled –
1) Misappropriation happened.
2) Someone affected the reputation of that mark
3) Damage happened
Difference between Infringement and Passing Off:
Infringement is the statutory remedy for registered mark, and passing off is common law remedy
for unregistered marks.
In infringement you need to prove that plaintiff was the first to register.
In infringement, plaintiff need to prove that defender’s mark is likely to deceive the consumers,
but in case of passing off, these three ingredients need to be proved [difficult]

22/01/2021
The Registration Process of Trademark:
Normally each and every IP is having a fixed format for registration. Certain papers are required.
Step 1: Examination
After a trademark application is filed, it is examined by the examiner for any discrepancies.
The examination might take around 12-18 months. The examiner might accept the trademark
absolutely, conditionally or object.
If accepted unconditionally, the trademark gets published in the Trademark Journal. If not
accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned
in the examination report and a month's time would be given to fulfill the conditions or
response to the objections.

16
Once such response is accepted, the trademark is published in the Trademark Journal. If
the response is not accepted, one can request a hearing. If in the hearing, the examiner feels
that the trademark should be allowed registration, it proceeds for publication in the Trademark
Journal.
Step 2: Publication
The step of publication is incorporated in the trademark registration process so that anyone who
objects to the registering of the trademark has the opportunity to oppose the same. If, after 3-4
months from publication there is no opposition, the trademark proceeds for registration. In
case there is opposition; there is a fair hearing and decision are given by the Registrar. If no
opposition, and if the opposition is resolved, then only registration certificate is granted.
Step 3: Registration Certificate
Once the application proceeds for trademark registration, following publication in Trademark
Journal, a registration certificate under the seal of the Trademark Office is issued.

Trademark can be registered by 3 routes:

1) If I want to protect my mark in India. Then, National Application.
2) Convention Application. This is recognized under Paris Convention. Through this, I can go
to different countries to do business and get protection there. Though there is a concept of trans-

17
border or cross-border reputation, this is not for everyone. Almost all WTO member countries are
part of it.
In this, the concept of priority date comes. On 1st Jan, I applied in India, I am going to get 6
months-time till 30th June, now, because every IP is based on first to file concept. So, the first
application date is very important to lock. Now, if I want to apply in New Zealand in 10 th Feb, in
SA on 23rd March, 12th April in Egypt, then, 4th May in Canada, and so on. Each and every place,
whatever be the country, would consider my filing date as 1st January. After 6th months, Priority
date cannot be given to you.
3) Madrid route. Madrid Protocol govern this. This is run and regulated by WIPO. In the
convention application, we need to go each and every country. It is an international application,
one window application. There is a form which is having all the Madrid protocol signatory
countries. You need to check the countries in which you want to apply. So, its far easier. No need
to go each country.
2 aspects are there: 1) You can apply in only the signatory countries. Not all WTO member
countries are there, but coming fast because of one window form and less fees, and easier renewal.
2) If you want to apply in Madrid, you have to file domestic application first, then only you
can apply in Madrid application. In convention this rule isn’t there, I can apply in another
country first. This difference is in Paris and Madrid.

Comparative Advertisement:
Since, the consumers have a wide variety of products to choose from, often the advertisers resort
to a practice of comparing their products from that of the competitors. While this is an acceptable
practice, many times in order to gain more pecuniary benefits and mileage, competitors end up
using such tactics which either misleads the customers or amounts to denigration of other's product.
Comparative advertisement is a unique practice, where a manufacturer compares his goods or
service from that of his competitors for the purpose of promotion and increased sale of his goods.
Comparative advertisement can be divided into two categories, puffery and denigration.

23/01/2021
Comparative advertisement as a practice was first started by the financial institutions to attract the
customers. They used to compare the interest rates of each other, it is a fact based advertising,

18
which they cannot deny. But in case of other products, like cosmetics, etc., it is very subjective as
to which product is better, this may lead to dispute when comparative advertisement is done.
When the situation is factual and objective, it doesn’t lead to dispute.
Surrogated Advertising: Surrogate advertising is a form of advertising which is used to
promote banned products, like cigarettes and alcohol, in the disguise of another product. This type
of advertising uses a product of a fairly close category, as: club soda, mineral water in case of
alcohol, or products of a completely different category (for example, music CD's or playing cards)
to hammer the brand name into the heads of consumers. The banned product (alcohol or cigarettes)
may not be projected directly to consumers but rather masked under another product under the
same brand name, so that whenever there is mention of that brand, people start associating it with
its main product (the alcohol or cigarette). In India there is a large number of companies doing
surrogate advertising, from Bacardi Blast music CD's, Bagpiper Club Soda to Officers Choice
playing cards.
Domain Name: As such domain name registration doesn’t come under trademark registration.
ICANN [Internet Corporation for Assigned Names and Numbers] is the authority which deals with
the domain name registration. Example: .org, .com, .in etc., we consider it under the trademark
because the feature and characteristics are same as trademark. People try to find unique domain
name to register.
Transfer of Trademark [Pg 153]: In very broad way, it is a license [short term, revocable] or
assignment [long term and irrevocable]. A license can be exclusive and non-exclusive
[simultaneously, license can be given to more people]. A trademark assignment is a process
through which ownership and rights of the trademark are transferred to any other person.
A Trademark assignment takes place between the parties only after executing an agreement
called Trademark Assignment Agreement.
Section 37 entitles the registered proprietor of a trade mark to assign the trade mark and to give
effectual receipts for any consideration for such assignment. Under the new Act, a registered trade
mark is assignable and transmissible whether with or without goodwill of the business either in
respect of all goods or services or part thereof. The assignment or transmission of trade mark has
been prohibited under Section 40, where multiple exclusive rights would be created in more than
one person in relation to same goods or services; same description of goods or services; or goods

19
or services or description of goods or services associated with each other, the use of such
trademarks would be likely to deceive or cause confusion.
Bisleri v. Coca Cola, Bisleri is trademark holder of Mazaa. They entered into a contract and license
given to coca cola for mazaa only in India. Coca Cola will sell mazaa with the know-how from
bisleri in India. Now, Bisleri figured it out that, CC has given advertisement in Turkey for Mazaa.
Bisleri objected to it. CC figured out that in Chittor, they somehow collected the mazaa bottles
from a wholesaler and exporting to Australia. Can export and sale be synonymous? As agreement
was only of selling in India. Court: Export can be considered as selling.
Section 28 talks of the rights conferred after trademark. The registered proprietor of the trade
mark the exclusive right to the use of the trade mark in relation to the goods or services. It also
provides that, where two or more registered proprietors of trademark, which is identical to each
other, each would have the same rights as against each other as he would have if he were a sole
registered proprietor. Section 14 deals with ‘Use of names and representations of living persons
or persons recently dead’. People usually put the name and faces of celebrities on their shops or
autos. In such cases, the registrar may require the applicant to furnish the consent in writing of
such person and may refuse to proceed further unless this is provided. In Daler Mehandi Case,
where a doll could sing a song by him, he challenged it.

27/01/2021
Any proprietor of a trademark can transfer the rights. It can be of two types, License and
Assignment. The main difference between the two is that in a license the person granting
permission (Licensor) retains an interest in the property being licensed, whereas in an assignment
the assignor transfers his rights in the property being assigned.
Difference in approach: Assignment is a change in ownership, so, the same procedure of
registration of trademark has to be followed in it.
Assignment with goodwill and without goodwill: With goodwill, such assignment is where the
rights and value of a trademark as associated with the product is also transferred to another entity.
P, the proprietor of a brand "Shudh" relating to dairy products, sells his brand to Q such that Q will
be able to use the brand "Shudh" with respect to dairy products as well as any other products it
manufactures.

20
Without goodwill is an assignment where the owner restricts the assignee to use trademark for the
products he uses it for. That is, the goodwill attached to the owner’s brand with respect to the
product already being sold under such brand, is not transferred to the buyer. This means that
assignor & assignee both can use the same trademark but in dissimilar goods or services.
P, the proprietor of a brand "Shudh" relating to dairy products, sells his brand to Q such that Q will
not be able to use the mark "Shudh" with respect to dairy products but can use this brand for any
other products being manufactured by it. In such case the goodwill which is associated with brand
"Shudh" for dairy products is not transferred to Q and Q will be required to create distinct goodwill
of brand "Shudh" for any other product or service like Restaurant wherein Q proposes to use this
brand.
Goodwill is the monetary/value representation of a reputation. Assignment is the permanent
transfer of ownership, so you become the owner, you can further transfer the trademark. There is
a very fine line difference between Assignment and Sale. Sale is the absolute transfer, but in
assignment there is a room to make it restricted.
As per TRIPS, we can have non-use trademark for 3 years but somehow, after amendment, the
time limit has been increased for 5 years. But if the individual doesn’t come with my product for
which the proposed mark has been registered, then comes the question of cancellation of the said
trademark.

28/01/2021
GEOGRAPHICAL INDICATION
In 1958, Lisbon Agreement dealt with GI. The concept nurture and started from the European
Union. Geographical indications serve to recognize the essential role geographic and climatic
factors and/or human know-how can play in the end quality of a product. Like trademarks or
commercial names GIs are also IPRs, which are used to identify products and to develop their
reputation and goodwill in the market.
Rationale behind this: 1) Combating the unfair competition [just like trademark, to prevent others
from exploiting the name of a famous product] 2) Upliftment of the farmers and all the related
people of geographic location [EU covers this but not Indian Act].
A product’s quality, reputation or other characteristics can be determined by where it comes
from. Geographical indications (GIs) are place names (in some countries also words associated

21
with a place) used to identify products that come from these places and have these characteristics
(for example, “Champagne”, ‘Scotch whisky’ “Tequila” or “Roquefort”).
Essential attributable characteristics of a product come from the geographical location, therefore
this is the purpose of protecting the rights of the producers of particular location. People develop
the product in that location, continuously work on it to make it unique, therefore recognition
is to be given to them. A copied product would not have the characteristics of the original product
which come from the location.
Though EU is very apprehensive, other countries have started recognizing GI to the indigenous
crafts. Most commonly, a geographical indication includes the name of the place of origin of the
goods. Agricultural products typically have qualities that derive from their place of production and
are influenced by specific local factors, such as climate and soil. Handicrafts in India differs from
location to location, like quality, texture of silk.
Human factor is one big factor, the similarity of products, combating the unfair competition, giving
indication about the quality of the product.
The prime similarity (and the only one) between a trademark and a GI is that both function
as source indicators. The distinction between the two in this context corresponds to the fact
that a trademark identifies a service or good originating from a specific producer, while a GI
identifies the geographical location or region from where the good originates.
GI cannot really fit into trademark. Article 22 of TRIPS mention that you could go under sui
generis or….
15 GIs are registered in India.
GI are based on collective decision making which allow traditions to continue. Human efforts,
culture, land resources and environment are involved in this. GI is not transferrable, it is a
community right, unlike TM.
According to Section 2(e) Geographical Indications of Goods (Registration & Protection) Act,
1999 “Geographical indication” in relation to goods means an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating, or
manufactured in the territory of a country, or a region or locality in that territory, where a given
quality, reputation or other characteristic of such goods is essentially attributable to its
geographical origin and in case where such goods are manufactured goods one of the activities

22
of either the production or of processing or preparation of the goods concerned takes place in
such territory, region or locality, as the case may be.
3 types of goods: 1) Agricultural goods, 2) Manufactured Goods, 3) Natural Goods [Food Stuff
and Handicrafts]. Most of our GI comes under Handicrafts till now.
How to apply?
GI significance of the place has to be substantiated. Details of the appearance of the goods.
Geographical location of the area needs to be provided.
A statement as to how the geographical indication serves to designate the goods as originating
from the concerned territory of the country or region; The class of goods; Geographical map of the
territory or locality in which goods are produced; The particulars of appearance of the geographical
indication; Particulars of producers; An affidavit of how the applicant claims to represent the
interest in the G, etc. are required while applying for GI.
In most of the cases, the govt departments are involved in the applying for a GI. Government
departments apply in most cases for GI.

29/01/2021
Paris convention has used word ‘indication of source’. ‘Appellation of Origin’ and
‘Geographical indication’ and ‘indication of source’ are three terminologies. Indication of
source is not limited to geographical area. Within the bigger circle of indication of source, a
smaller circle is GI and within that GI circle comes the Appellation of Origin.
The concept of GI came from Lisbon Agreement which talked primarily about AO. There is a
difference between the two, AO means, from the raw material to finished product, each and
everything must be done at that particular place, like Nasik Wine and Darjeeling Tea. Everything
like climate, soil etc., give the quality of those products. So, collecting tea, growing them, and
giving them for processing and packaging, each & everything is done in Darjeeling only.
While GI, like in Kota textile, the raw material is collected from somewhere else and then it is
processed in Kota. So, not everything happens in a particular area. GI is bit lenient. What that area
is specialized in, that work is done in that area only, everything else is done somewhere else.
India and some other countries didn’t thought of having separate AO and GI separately. They gave
an open definition of GI which is covering AO also.

23
The registration process of GI: In case of TM, there is a concept of unregistered TM, but here
no such concept. If it is not registered, you cannot go for infringement suit. GI protection never
stops you from making the same thing, you just can make others to name that thing in same manner.
Section 8 of the Act provides that a geographical indication may be registered in respect of any or
all of the goods, comprised in such class of goods as may be classified by the Registrar and in
respect of a definite territory of a country, or a region or locality in that territory, as the case may
be. As per Section 11 any association of persons or producers or any organization or authority
established by or under any law representing the interest of the producers of the concerned goods
can apply for the registration of a geographical indication. The Applicant has to be a legal entity
and should be representing the interest of producers of the goods applied for. Any such
organization or association being not that of the producers may have to prove that they represent
the interest of producers. Any Applicant Authority also has to prove that they represent the interest
of producers. The application must be made in writing.
According to Section 18, a registered geographical indication shall be valid for 10 years and can
be renewed from time to time on payment of renewal fee.
Article 22, 23 and 24 of TRIPS. Article 22 talks in general sense, like what it is. Article 23 gives
extreme Additional Protection for Geographical Indications for Wines and Spirits, it is different
from Article 22 in the nature of protection only. TRIPS provide for always giving of minimum
level of protection for every GI. Existence of GI is questionable in developing countries as
compared to EU.
US, Australia doesn’t protect GI by sui generis Act. So, another way for protecting GI is through
bilateral agreements.
There are three ways: 1) You can go to country to country, if you have market. First you have to
first register GI in your country, this is a requirement. In EU there are 27 countries, once you
register in it, you get protection in 27 countries. 2) Bilateral Agreements. 3) Like Madrid
Agreement in TM, there is Geneva Agreement under GI, but it is only at nascent stage. Also, it
only covers agricultural and food products.
Process of registration-
1) In application has to be moved, the application has to fulfill certain conditions, on receipt of the
application, number is allotted. Thereafter, the examiner scrutinizes the application to check
whether it meets the requirement of the GI Act and Rules.

24
2) Deficiencies if any found through a preliminary examination would be communicated by the
examiner to the applicant. Upon compliance of the deficiencies, the registrar constitutes a
consultative group of experts to ascertain the correctness of the particulars furnished in the
statement of case.
3) After the issuance of the examination report, submissions of the applicant would be considered.
If no further objections are raised, it would be accepted and published in the GI journal.
4) After the advertisement in the journal, any person within three months can oppose the
registration of the application. This period may be extended to one month.
5) If no opposition is filed within the period specified or if the objection is dismissed, the registrar
registers the GI in part A.
6) The date of filing of the application shall be deemed as the date of registration.
7) If the registration of the GI is not completed within 12 months from the date of application due
to the default on the part of the applicant, the application may be abandoned by giving notice to
the applicant.
Under Section 9, there are certain GI which cannot be registered.

1/02/2021
EU and many Latin American countries have concept of AO and GI both. Darjeeling Tea is a
classic example of AO. Before TRIPS, Lisbon agreement covered AO. But later it was thought
that if Lisbon is covering only AO, its scope would be very narrow. As most of the cases are related
to GI. Geneva Act was entered to answer this. Like Madrid Agreement in TM, there is Geneva
Agreement under GI, but it is only at nascent stage. Also, it only covers agricultural and food
products. Not a lot of countries are party in this agreement.
Homonymous GI: Homonymous geographical indications are those indications that sound, spell
or read alike. They are those geographical indications that are spelled and pronounced alike but
which are different in meaning and which are used to designate the geographical origin of products
stemming from different countries. The most frequent cases of homonymous geographical
indications concern the names of regions which are located in different countries.
The problem or conflict generally arises when homonymous geographical indications are sold in
the same market and is accentuated when such the geographical indications are for similar or

25
identical products. Honest use of such geographical indications should be possible, because the
indications designate the true geographical origin of the products for which they are indicated.
There is an administrative way to give both the GIs protection. They need to put a label or tag
identifying the country or the specific region from where it comes.
It may be required that they be used together only with additional information regarding the origin
of the product in order to prevent consumers from being misled. A GI may be refused protection
if, due to the existence of another homonymous indication, its use would be considered potentially
misleading to consumers with regard to the product's true origin.
TM is a private right, while GI is a community right. TM can be anywhere while GI has to be in a
specific area.
Spanish Champagne case,

2/02/2021
--No Class--
3/02/2021
Fluid TM means that a same brand have different trademarks. They try to add little modifications
in their original mark.
T 683/18 EU case.

5/02/2021
--samjh nahi aaya--
6/02/2021

8/02/2021
In order to be patentable, there are some requirements:
1) Should come under patentable subject-matter –
Non-Patentable Subject Matter: In Europe and UK, we have already list of such matters. Section
3 of Patent Act, 1970 mentions inventions which cannot be patented. Exclusions are judicially
created in US [Abstract idea, law of nature and physical phenomena]
Section 3(a) mentions that, an invention which is frivolous or which claims anything obviously
contrary to well established natural laws cannot be patented.

26
Section 3(b) provides that an invention the primary or intended use or commercial exploitation of
which could be contrary to public order or morality or which causes serious prejudice to human,
animal or plant life or health or to the environment, cannot be patented.
Section 3(c) says that, the mere discovery of a scientific principle or the formulation of an abstract
theory or discovery of any living thing or non-living substance occurring in nature
2) Novelty
3) Inventive step
4) Capable of Industrial application
5) Described in a certain manner and disclosed to General Public.

9/02/2021
Also, under Subsection d, the mere discovery of a new form of a known substance which does not
result in the enhancement of the known efficacy of that substance or the mere discovery of any
new property or new use for a known substance or of the mere use of a known process, machine
or apparatus unless such known process results in a new product or employs at least one new
reactant. Eg., A specs with wipers, or A pen with USB and magnifying glass.
A method of horticulture or agriculture is not patentable in India. In Hilly areas, if you do terrace
farming you can stop the draining away of water, this is age old practice of agriculture, this cannot
be patented. This is mentioned in subsection ‘h’.
Also, any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to render them free of
disease or to increase their economic value or that of their products, is not patentable. ECG
machine can be patented but how a person is operating the machine is not patentable. This
mentioned in subsection ‘i’. UK, India, and Europe stand on same footing in this aspect because,
it is a matter of human rights.
Section 3(j) provides that, plants and animals in whole or any part thereof other than micro-
organisms but including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals, cannot be patented.
Biological processes like breathing and all cannot be patented. Eg., You want a red capsicum, but
you see that some green capsicum have red colour i.e., having recessive red traits. If you start

27
taking seeds from that capsicum and start cultivating, and in further generations the capsicum may
be red. So, if a new variety is produced from different variety, it is protected under Plant Act.
Asexually produced plants are patentable.
Gene patent is big question. India is not having a framework regarding it. One case, Myriad Gene
case in US, same happened in Australia. Both had same understanding regarding it. Case was, one
laboratory figured out that Breca1 and Breca2 gene are prone to breast cancer, prostate cancer. If
it is so, the next to kin always needed to be checked. They figured out that if anyone is having such
genes, there can be detection and cure can be done at earlier stage. Now, how to detect that gene,
they asked for patent. Accumulation of many rights held by that laboratory. Validity of the patent
was challenged. At district court: This gene is collected from human body therefore no invention,
so no patent can be given on the gene.
Appeal was seeked. The decision was reversed, whenever you are extracting gene, isolation and
storing that gene is not humanly attached thing, so patent can be granted.
SC reversed the decision, and explained in same lines of district court.
20% of human genes are already patented by US companies. This judgment would not have
retrospective effect.
Another case, Onco Mouse Case, to run cancer research, scientists injected cancerous cells to
mouse.
Laboratory based microorganism is patentable. Under Budapest Treaty, if someone is applying for
microorganism patent, then apart form application, a sample has to be submitted. It’s a living thing,
so you have to prove it. It should be lab-made not natural.
A mathematical or business method or a computer programme per se or algorithms, are not
patentable. Machine and transformation test is used in US.

10/2/2021
In 2020, there is a case Ferid Allani v. UoI, patent office rejected the application. Software per se
is not patentable. He moved to IPAB to challenge it. IPAB also kept the same decision as patent
office. Appealed to HC. A method and device for accesing information on web. The claim is that
the invention is a method of searching information on net. Sort of a search engine. Initially rejected
on the ground that Software per se is not patentable, also even if it is patentable, it is not having
novelty and inventive step.

28
Court held that, the bar on patenting is on computer programme per se and not all technological
invention. In this age where almost everything is based on computer programme, so having this
provision may give rise to difficulties. All the machinery like microwaves etc., have a minimum
computer programme in it. For software patent, the world is standing on same
platform/understanding.
It is ongoing thing, which keeps on experiencing innovation, so, many countries move software
towards copyright and not patent.
In India, there are certain problems. Indian patent office try to issue guidelines. But these
guidelines are not very effective.
Google location history patent, etc., are based on algorithms.
Controller General, Patent Office v. …..
Business Method Patent:
Diamond v. Diehr
DDR Holdings v. Hotels.com
T258/03
Ferid Allani v. UoI,
Moreover, Section 3(k) has a long legislative history and various judicial decisions have also
interpreted this provision. The bar on patenting is in respect of ‘computer programs per se....’ and
not all inventions based on computer programs. In today’s digital world, when most inventions
are based on computer programs, it would be retrograde to argue that all such inventions
would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies
and other digital products would be based on computer programs, however the same would not
become non- patentable inventions - simply for that reason. It is rare to see a product which is not
based on a computer program. Whether they are cars and other automobiles, microwave ovens,
washing machines, refrigerators, they all have some sort of computer programs in-built in them.
Thus, the effect that such programs produce including in digital and electronic products is crucial
in determining the test of patentability.
Patent applications in these fields would have to be examined to see if they result in a “technical
contribution”. The addition of the terms ‘per se’ in Section 3(k) was a conscious step and the
Report of the Joint Committee on the Patents (Second Amendment) Bill, 19991 specifically
records the reasons for the addition of this term in the final statute as under:

29
“In the new proposed clause (k) the words ‘per se’ have been inserted. This change has been
proposed because sometime the computer programme may include certain other things,
ancillary thereto or developed thereon. The intention here is not to reject them for grant of
patent if they are inventions. However, the computer programmes `as such' are not intended
to be granted patent.”
A perusal of the above extract from the Report shows that Section 3 (k) which was sought to be
inserted by the Patents (Second Amendment) Bill, 1999 originally read as "a mathematical or
business method or a computer program or algorithms." "The words “per se” were incorporated
so as to ensure that genuine inventions which are developed, based on computer programs are not
refused patents.
Across the world, patent offices have tested patent applications in this field of innovation, on the
fulcrum of ‘technical effect’ and ‘technical contribution’. If the invention demonstrates a
‘technical effect’ or a ‘technical contribution’ it is patentable even though it may be based
on a computer program.
Bilski v. Kappos:
The U.S. Supreme Court's precedents provide three specific exceptions to broad patent-eligibility
principles: laws of nature, physical phenomena, and abstract ideas. While these exceptions are
not required by the statutory text, they are consistent with the notion that a patentable process must
be "new and useful." Even if an invention qualifies as a process, machine, manufacture, or
composition of matter, in order to receive the Patent Act's protection the claimed invention must
also be novel, nonobvious, and fully and particularly described.
FACTS: Petitioners' patent application seeks protection for a claimed invention that explains how
commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price
changes. The key claims are claim 1, which describes a series of steps instructing how to hedge
risk, and claim 4, which places the claim 1 concept into a simple mathematical formula. The
remaining claims explain how claims 1 and 4 can be applied to allow energy suppliers and
consumers to minimize the risks resulting from fluctuations in market demand. The patent
examiner rejected the application on the grounds that the invention is not implemented on a
specific apparatus, merely manipulates an abstract idea, and solves a purely mathematical
problem. The Board of Patent Appeals and Interferences agreed and affirmed. The United States
Court of Appeals for the Federal Circuit affirmed. Under the court of appeals' formulation, an

30
invention was a “process” only if it was tied to a particular machine or apparatus, or it transformed
a particular article into a different state or thing.
ISSUE: Did the appellate court err in its decision to reject the petitioner’s patent application for a
claimed invention?
CONCLUSION: The judgment of the court of appeals was affirmed by the Supreme Court. Basing
its decision to prior precedent, the Court held that petitioners' claims were not patentable processes
because they were attempts to patent abstract ideas. Two claims in petitioners' application
explained the basic concept of hedging or protecting against risk. The concept of hedging was an
unpatentable abstract idea. Petitioners' remaining claims were broad examples of how hedging
could have been used in commodities and energy markets. According to the Court, limiting an
abstract idea to one field of use or adding token post-solution components did not make the concept
patentable.

11/02/2021
Section 3(l) provides that, a literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television productions, are not
patentable. Also, under Section 3(m), a mere scheme or rule or method of performing mental act
or method of playing game, is not patentable.
An invention which in effect, is traditional knowledge or which is an aggregation or duplication
of known properties of traditionally known component or components, is not patentable.
Mentioned in Section 3(o).
As per sec. 6 of Bio-diversity Act, there is an interlinking with IPR especially patent.
Section 4 is based in very specific non-patentable subject-matter. No patent shall be granted in
respect of an invention relating to atomic energy falling within sub section (1) of section 20 of
the Atomic Energy Act, 1962. So, atom related invention is there, it cannot be patented. Also, if
there is something which is related to national security, and defence-related, normally, there is
secrecy direction on it. Generally they don’t approve such patent due to secrecy.
Article 27 of TRIPS [every time TRIPS gives us minimum standards. In this, TRIPS provide for
non-patentable subject matter.], subsection 2 mentions that, Members may exclude from
patentability inventions, the prevention within their territory of the commercial exploitation of
which is necessary to protect public order or morality, including to protect human, animal or plant

31
life or health or to avoid serious prejudice to the environment, provided that such exclusion is not
made merely because the exploitation is prohibited by their law.
Also, mentions that, Members may also exclude from patentability: (a) diagnostic, therapeutic
and surgical methods for the treatment of humans or animals; (b) plants and animals other than
micro-organisms, and essentially biological processes for the production of plants or animals other
than non-biological and microbiological processes. However, Members shall provide for the
protection of plant varieties either by patents or by an effective sui generis system [like India] or
by any combination thereof [Like US]. The provisions of this subparagraph shall be reviewed four
years after the date of entry into force of the WTO Agreement.
European Patent Convention, Article 53 of Part II provides for subject matters which cannot
be patented. Subsection (a), provides, inventions the commercial exploitation of which would be
contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary
merely because it is prohibited by law or regulation in some or all of the Contracting States [same
as TRIPS and Indian position].
In US, S. 101 defines the patentable subject matter. Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of
this title. So, here unlike other laws, discovery is also included.
Also, it is mentioned in the law that, subject matter related to laws of nature, physical
phenomena, and abstract ideas, are not patentable.

12/02/2021
Patent grants one to exclude others from using, making a product. The time of patent starts from
the day of application.
Everything which isn’t part of state of art [state of technology] or prior art [prior technology].
This novelty and inventive step, there is some subjectivity in them also. That’s why if you get
patent in one country, that doesn’t mean that you’ll get patent in other country.
Novelty means newness. As per S. 2(1)(j) of Patent Act, defines invention as, “invention”
means a new product or process involving an inventive step and capable of industrial
application. Which has not been anticipated by any publication.

32
Relative novelty is that I am judging the newness of something, only within my country. But
when I am judging the newness of the product in respect of whole world, it is called absolute
novelty. Each and every WTO member follows absolute novelty. But US shifted from absolute to
relative novelty in 2013 [America Invents Act].
If I purchase a jacket and I try to prove that this jacket is a unique one and I am having it only. I
would start with my family, and check whether they have one or not. Then I would look at whole
state, country etc. The point is, how can we judge the novelty of a product?
Chapter VI of the Patent Act, talks of Anticipation. Anticipation by publication and anticipation
through public knowledge has to be there. Lack of novelty is usually referred to as 'anticipation'
and is determined by factors such as prior publication, public knowledge and public use,
commercialized products and selection inventions. While anticipation is not expressly defined in
the Patent Act, Sections 29 to 34 identify what anticipation is not.
When testing for anticipation, if a prior art exists (i.e., if the prior art describes something falling
within the scope of an alleged claim) then, if by studying the prior art the claimed invention
can be performed, the claim would be considered to be anticipated. It may be unnecessary to
repeat the prior art test, but expert opinion may be considered in order to identify anticipation
better using relevant expertise. It can also be identified by showing the predictable result as the
outcome of what is described in the prior art, regardless of whether it would be a product or process
falling within the scope of the claim.
In India, a patent application is considered to be anticipated if the invention is disclosed in a patent
or any other document which is published before the priority date of the application. However, if
the inventor proves that the matter published was obtained fraudulently and was published without
his or her consent, then it may not be considered to be anticipated. The concept for identifying
prior publication was established in Farbewerke Hoechst Aktiengesellschaft Vormals Meister
Lucius v Unichem Laboratories.
Importance of Prior Art – The Donald Duck Case: In 1949 the Donald Duck story The Sunken
Yacht (by Carl Barks) shows Donald and the nephews raising a ship by filling it with ping pong
balls shoved through a tube, as can be seen below in the images cited from that story.
Since ping pong balls are buoyant bodies, and they were fed to the yacht through a tube, the Donald
Duck episode discloses the same technique as that which is claimed in the patents.

33
Consequently, the Duck story has to be considered novelty-destroying prior art: given the
story, any Patent Office would have rejected Krøyer's patent application.
It remains an open question whether the Dutch patent office in fact used this document as prior art
to refuse the patent application. Regrettably the files of the cases have been destroyed by now, and
the Dutch patent attorney who represented the inventor has passed away several years ago.
According to some sources, Krøyer himself remembered the Donald Duck story from his youth.
This is incorrect as Krøyer (born 21 August 1914) was 35 by the time the Duck story was
published.
This technology was rejected patent just because of the Donald Duck Episode, which was
considered to be publication which led to anticipation.
Anything which is existing already, then we call it as prior art.
Purpose of literature review is that analyzing the prior literatures on a topic and then add own
views. Novelty of an invention is assessed on any prior art which is already available in the society.
Prior art that anticipates the product, can be by publication, or public knowledge, public display
or public sell. Therefore, invention detail is needed in the application.
Information kept secret, for instance, as a trade secret, is not usually prior art, provided that
employees and others with access to the information are under a non-disclosure obligation. With
such an obligation, the information is typically not regarded as prior art. Therefore, a patent may
be granted on an invention, even though someone else already knew of the invention. A person
who used an invention in secret may in some jurisdictions be able to claim "prior user rights" and
thereby gain the right to continue using the invention. As a special exception, earlier-filed and
unpublished patent applications do qualify as prior art as of their filing date in certain
circumstances.
To anticipate the subject-matter of a patent claim, prior art is generally expected to provide a
description sufficient to inform an average worker in the field (or the person skilled in the art) of
some subject matter falling within the scope of the claim. Prior art must be available in some way
to the public, and in many countries, the information needs to be recorded in a fixed form
somehow. Prior art generally does not include unpublished work or mere conversations
Section 2(1)(l) "new invention" means any invention or technology which has not been
anticipated by publication in any document or used in the country or elsewhere in the world

34
before the date of filing of patent application with complete specification, i.e., the subject matter
has not fallen in public domain or that it does not form part of the state of the art.
There is a bi-cycle, now when you add gear in cycle. The gear system is a new invention, while
the bi-cycle as a whole remains invention.

15/02/2021
Exceptions to Anticipation through Publication:
Section 29 provides that an invention will not be deemed to be anticipated by reason that the same
was published before the priority date, if the applicant proves that the matter was published
without his consent or without the consent of person from whom he derives the title and after
getting knowledge of such publication, application for the grant of patent was made as soon
as reasonable practicable. However, the above will not be applicable where the invention is
commercially worked in India before the priority date of the invention with the consent of the
applicant.
It also states that an invention claimed in a patent application shall not be anticipated by reason
only that any other application filed for the same invention is in contravention of the rights of the
applicant or by reason only that after the date of filing of other application, the invention was
published or used by that other person without the consent of the first applicant.
Whenever we are judging a TM, we judge from it from the customer’s point of view [average
intelligence and imperfect recollection].
In patent, we don’t judge from such low threshold. The judging factor is, the person skill in
the art. It means that person is an expert [having 12-15 year work experience in the field, or
having PhD.].
How to judge an inventive step? US and some countries use word ‘non-obviousness’, India uses
‘inventive step’. It means whatever the prior art [existing], the new innovation/invention, the
person should be one step ahead of the prior art, so that they can prove that from prior art, the
invention is different.
As per S. 2, inventive step 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 the art.

35
TVS v. Bajaj, Bajaj came with a DTSI engine [having 2 valves and air fill mixture, and cylinder
position was different giving quick ignition and low smoke]. Later, TVS launched a bike and it
was the license holder of Avian. When TVS launched the product, Bajaj filed a case for
infringement. TVS counter-claimed that prove your validity of your Patent. When it was judged
there were some prior arts available.
Bajaj patent was not a valid patent, as there was no novelty and no inventive step was there.
Since 2010 it is pending case, they actually negotiated out of the court. Here also, there we felt the
need to person’s skill in the art.
Vishwanath Radheshyam v. Hindustan Metals, In UP area, there is a metal plate, there is a
hammering needed to flatten the plate. This practice was prevalent there. Vishwanath asked for
patent on that. He couldn’t prove that he worked on that or some inventive step was there.
What is workshop improvement [Jugaad] and what is inventive step? It was held that:
1. The object of patent law is to encourage scientific research, new technology and industrial
progress. The price of the grant of the monopoly is the disclosure of the invention at the Patent
Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain.
2. The fundamental principle of Patent law is that a patent is granted only for an invention which
must have novelty and utility. It is essential for the validity of a patent that it must be the inventor's
own discovery as opposed to mere verification of what was, already known before the date of
the patent.
3. The Act of 1911, does not specify the requirement of being, useful, in the definition of
‘invention’, but courts have always taken the view that a patentable invention, apart from being a
new manufacture, must also be useful. The foundation for this judicial interpretation, is to be found
in the fact that S. 26(1)(f) of the Act recognizes lack of utility as one of the grounds on which a
patent can be revoked.
4. In order to be patentable, an improvement on something known before or a combination of
different matters already known, should be something more than a mere workshop `improvement,
and must independently satisfy the test of invention or an inventive step. It must produce a
new result, or a new article or a better or cheaper article than before. The new subject matter
must involve “invention” over what is old. Mere collocation of more than one, integers or things,
not involving the exercise of any inventive faculty does not qualify for the grant of a patent.
Rickman v. Thierry; Blackey v. Latham; and Encyclopadeia Britannica, applied.

36
5. To decide whether an alleged invention involves novelty and an inventive step, certain broad
criteria can be indicated. Firstly if the “manner of manufacture” patented, was publicly known,
used or practised in the country before or at the date of the patent, it will negative novelty or
‘subject matter’. Prior public knowledge of the alleged invention can be by word of mouth or by
publication through books or other media. Secondly, the alleged discovery must not be the obvious
or natural suggestion of what was previously known.

If there is a long felt need and not having a solution for long time for the same, and an
improvement to a prior art is serving that need then that can be a factor in granting patent
to a product which is not novel.

16/02/2021
Windsurfing International Inc. V. Tabur Marine ltd., The plaintiff was the manufacturers of
windsurfer and patented an arc-shape sailboard in the UK. The patented equipment was a
sophisticated arc-shaped model, which made the sailboard to attain higher speed and stability. In
this case the plaintiff sued another company for patent infringement as a result of producing and
selling the similar windsurfing equipment in UK. In the same time, the defendant (Tabur Marine)
alleged that the validity of the patent can be challenged. Because at least 20 years ago, a boy has
already used the similar method to hold the sail taut and provided a handhold for the rider. The
Court upheld the claim of defendant and held that the boy's invention predated the plaintiff's
application and the sailboard designed by the plaintiff was an obvious improvement on the boy's
invention. Thus the patent for windsurfing equipment had been anticipated. Although the
windsurfing equipment was judged non-patentable, it must be noted that in this case the court held
"the improvement carried out by the patentee was not sufficient to gain the protection of a patent",
in other words, the sporting apparatus could be patentable if the requirements of patentability are
satisfied.
The court set out the four steps required to be taken when ascertaining the validity of a patent:
‘The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court
has to assume the mantle of the normally skilled but unimaginative addressee in the art at the
priority date and to impute to him what was, at that date, common general knowledge in the art in
question. The third step is to identify what, if any, differences exist between the matter cited as

37
being ‘known or used’ and the alleged invention. Finally, the court has to ask itself whether,
viewed without any knowledge of the alleged invention, those differences constitute steps which
would have been obvious to the skilled man or whether they require any degree of invention.’
KSR v. Teleflex, Plaintiff held the exclusive license to the patent entitled “Adjustable Pedal
Assembly with Electronic Throttle Control.” One claim of the patent involved adding an
electronic sensor to the pedal which then transmitted information to the computer controlling the
engine’s throttle. Defendant added an electronic sensor to its existing pedal design. Plaintiff sued
Defendant for patent infringement. Defendant argued the claim by Plaintiff was invalid because
the addition of the electronic sensor was obvious. The district court granted summary judgment to
Defendant and Plaintiff appealed. The court of appeals applied the “teaching, suggestion, or
motivation” [TMS] test and reversed. The Supreme Court granted the Defendant’s writ of
certiorari in order to address the obviousness analysis.
Court:
17/02/2021
Mosaicking means using different stone chips in a single tile in some pattern. It refers to
assembling a number of elements of prior art that have not been put together in the prior art, in
order to show whether an invention lacks inventiveness. Mosaicking is allowed for judging the
inventive step and not novelty. An invention is novel if it has not been disclosed in the prior art.
The 1st date of application is called the priority date, which is 12 months for a patent (as was 6
months for trademark).
Claim portion is the main portion on which novelty and inventive step are judged.
COMMERCIAL/INDUSTRIAL APPLICATION
• If an invention is novel and having an inventive step, but cannot be used in the market or the
industry, then such an invention cannot be granted patent due to lack of industrial application.
• WIPO has 2-type definition of industrial application. Use in industry means fit for use in an
economic activity.
Under industrial application, the workability of the invention is judged and not the profit generated
by use of such invention.

18/02/2021
Procedure of Registration of Patent:

38
Step I: Filing the Application.
And after filing the patent within the 48 months you have to ask the patent office, to start the
examination of the application. Without asking they won’t start examination. The rationale
behind this is, examination is a very vigorous job, so sometimes it happens that you have applied
patent, but there is nothing novel or patentable in it. So, the office asks whether you are serious or
not. SO, if you are serious, you request for examination.
Patent search database is there.
A written description need to be given with all the specification of the invention that is claimed.
This is mandatory, because patent enablement is a mandate. If the govt is giving you 20 year
monopoly, on the other hand govt is encouraging innovation.
First claim has almost everything, so they call it as independent claim. In most of the cases, second
claim is the dependent claim as it refers the claim 1. Again 3 is gives reference of claim 1. So,
other claims are dependent claim.
Infringement is going to be judged on the claim, so it is important. Only claim is not going to serve
the purpose, so, the enablement says that the claims must provide full detailed, well-drawn
specification of the claimed invention-technology.
Written description and enablement are two different things. First is the enablement requirement,
next is the best mode requirement and finally is the written description requirement. The
enablement requirement requires the inventor to describe his or her invention in a manner that
would allow others in the industry to make and use the invention.
-- First to file concept is there. Priority date concept is also there, so if we file application on 1st
June, then the prior art will be considered till 30th May.
In trademarks, we had three routes. In Patent, you get 12 months of priority time. Patent
cooperation treaty is there in this.
-- Classification of trademarks is given under Nice [France] treaty. For Patent, Stratsbourg
Classification for patent is there [france].
After the 18 months of the priority application [first date of application], it will be published.
If there is secrecy clause, then after the cessation of that period of secrecy, it is published. In
national phase of PCT application, then it will be published immediately after filing. Prima Facie
examination need to be done before publication, then within 18 months they have to publish.
Before publication, it is advisable not to disclose the invention.

39
19/02/2021
Primarily we need to see the relationship between the new claim and the prior art. Cost
effectiveness is the secondary thing. Every claim is a separate claim, so, rejection of one claim
wouldn’t reject other claims.
If the claim doesn’t appropriately covers invention details or there is any ambiguity, then patent
office can ask you to rectify that.
Section 8 of the Patent Act, provides that a statement setting out detailed particulars of such
application, must be furnished to the Patent office. Failure in following this provision, the
application be rejected.
Section 31 and 32 mentions that, if after the exhibition, the application for patent must be made
within 12 months, otherwise it will be cancelled.
Characteristics/considerations at the time of making a claim:
a. Each claim is a separate claim and therefore, rejection of one claim would not amount to
rejection of all.
b. Claim must start with a capital letter and end with a full stop. It must begin with I claim or we
claim or it is claimed that and etc.
Application for coffee dispensing machine, if it has elements like the crusher, container and the
collector- the claim may be based on any or all of the same.
c. When applied for patent, examination is not implied. ‘Request for examination’ is a mandatory
requirement. The applicant has the option to file such a request within 48 months of the priority
date of application/first date of application. If the request is not filed within such period, the
application would be deemed to be withdrawn.
For example- the applicant is of the opinion that the claim has no merits, he might not request the
examination.
However, if the applicant is serious about the examination, he needs to file the request at the
earliest possible as he is in a queue.
d. If the claim language is not clear or if the claim does not appropriately cover the invention
details or if there is any other ambiguity associated with the same, the patent office or any other
concerned authority can ask the applicant to rectify the claim or make any other required
correction. [see: Graham case]

40
e. Patent application gets published after the expiry of 18 months from the priority date/first date
of application. Publication can be asked at an earlier moment of time. If the application is for an
invention for which there is a secrecy direction given [defense direction], such application is
moved to the defense ministry, it is totally under the control of the concerned ministry and it is
upon the ministry to ask for enablement or publication.

20/02/2021
Examination is done by the controller along with the patent examiner. Examiner upon receiving
the request for application, would superficially review it and then prepare a report for the same.
This would include all the deficiencies in the application, example, missing signature, document
and etc.
Signature of a patent agent is required on the patent specification. This patent agent can be only
from a science background and not otherwise. This first report is sent to the applicant to rectify the
errors/ fulfill the deficiencies. Whereas, if on the other hand, there is someone who is working on
a similar invention, they would seek permission to proceed with the invention, if they secure the
same, then only they move forward with the R&D.
Once the first examination report is issued and the applicant has complied to all the requirements
thereto, that is, all the errors have been rectified, a subsequent examination report would be issued
within the 12 months of issue of the first examination report. If this report finds certain deficiencies
in the application, then the applicant would be asked to incorporate the changes and if not done so,
there is a likelihood of “application abandonment”. If there are no deficiencies found in the SER,
the applicant proceeds towards the grant of patent.
In the process of invention, there are two groups of people, one is concerned with the R&D and
the other with the “timeline”. The latter group takes care of the above-discussed.
Examination is over, application is published and is open for opposition. Opposition can be pre-
grant opposition or post-grant opposition. As per the Indian Patent Rules, a patent is not granted
for a period of 6 months from the date of publication and in all this time, opposition is invited.
Either there was no pre-grant opposition or there was but has not been handled, there is a hearing.
If at any stage the applicant is not content with the decision of the patent controller, the applicant
can move to the IBP, then HC, then SC.
After the pre-grant opposition, the patent is granted. After the grant of the same, the publication
takes place and post-grant opposition can be made for the next 12 months from the date of
publication by an interested party.
The grounds for granting the post-grant application are the same [section 25(2)]
Opposition cleared or if there was no opposition, the patent was granted. After the grant, renewal
fee is to be paid to maintain the patent for 20 years.
Another consideration is the ‘working of the patent’. Report for the working of the patent must be
also provided. If the report is not provided, the patent would be regarded as NPP [Non performing

41
patent]. These are dormant patents. These are not cancelled and this hinders the invention of a new
inventor due to there being a patent on existing subject matter (prior art)/ or taking ransom from
these inventors to work upon the same. This is called “patent trolling”. Impedes the practice of
others.

22/02/2021
Two Types of Transfer: Assignment and License.
It is only the owner of a patent who can either assign or license its patent. However, in case of joint
owners or co-owners, one of the owners cannot assign or grant license without the consent of the
other owner. Pursuant to section 68 of the Patents Act, 1970 (“Act”), any license is not valid
unless all the terms and conditions between the parties in relation to the license have been reduced
in writing and documented in the agreement, which should be duly executed. Further, section 69
of the Act stipulates that the licensee shall file an application for registration of his rights as a
licensee under the concerned license agreement with the Controller of Patents (“Controller”)
within six months of the date of agreement. A similar application to register the transfer of interest
shall also be filed by the licensor.
The term “assignment” is not defined under the Act. A patent holder can assign the whole or any
part of the patent rights to the whole of India or any part thereof. Assignment is in essence a transfer
of ownership even if it is partial. There are three kinds of assignments: legal assignment, equitable
assignment and mortgages. An assignment of an existing patent is a legal assignment where the
assignee may enter his name as the patent owner.
A certain share given to another person is called an equitable assignment. An equitable assignee
cannot have his name entered in the register as proprietor of the patent but he may have notice of
his interest in the patent entered in the register. A grant of patent rights before the grant of patent
is an equitable assignment, which gives the assignee the right to call upon the patentee when the
patent is granted to assign that patent to the assignee. A mortgage is when patent rights are wholly
or partly transferred to obtain money.
On repayment of the money the mortgagor becomes entitled to get his name entered in the register
as the proprietor. Section 68 provides that the assignment deed shall, when registered, have effect
from the date of its execution. It is crucial to note here that pursuant to section 40 of the Indian
Contract Act, a contract which the promisor is required to perform personally is not capable of

42
assignment. Section 37 further says that in absence of a contrary intention, a contract is enforceable
against assignees as well.
To sum, an assignment agreement has to satisfy the requirements as provided under the Contracts
Act. The assignment agreements create legal and equitable rights in law.
Compulsory Licensing: Compulsory licenses are generally defined as “authorizations permitting
a third party to make, use, or sell a patented invention without the patent owner's consent.” Under
Indian Patent Act, 1970, the provision with regard to compulsory licensing is specifically given
under Chapter XVI. The conditions which need to be fulfilled in order for a compulsory license to
be granted are laid down under Sections 84 and 92 of the Act. As per Section 84, any person who
is interested or already the holder of the license under the patent can make a request to the
Controller for grant of Compulsory License on patent after three years from the date of grant of
that patent on the existence of conditions mentioned in the Section 84 of the Patents Act, 1970.
While granting the compulsory license, the Patent office will take into account few measures such
as the nature of the invention, any measures already taken by the patentees or any licensee to make
full use of the invention, ability of the applicant to work the invention to the public advantage and
time elapsed since the grant of the patent i.e. worked or not worked.
Although this works against the patent holder, generally compulsory licenses are only considered
in certain cases of national emergency, and health crisis. There are certain pre-requisite conditions
which need to be fulfilled if the Government wants to grant a compulsory license in favor of
someone.
Article 30 and 31 of TRIPS allows for compulsory licensing of the IPRs. From the Doha
declaration, first time the word ‘compulsory licensing’ was used.
Para 4 of Doha declaration: We agree that the TRIPS Agreement does not and should not prevent
Members from taking measures to protect public health. Accordingly, while reiterating our
commitment to the TRIPS Agreement, we affirm that the Agreement can and should be interpreted
and implemented in a manner supportive of WTO Members' right to protect public health and, in
particular, to promote access to medicines for all.
We have sections 84 and 92 of Patent Act. Bear v. Natco, Bear was having exclusive rights
throught the world for cancer drug. Cost was 2 lac 85k rupees per person per month. So,
affordability was an issue. In the meantime, Cipla tried to make generic version of the drug, then
also 33K was the cost. Natco came forward and asked for compulsory license. Bear opposed this.

43
Natco showed that affordability is big question. With this, availability was an issue as Bear didn’t
had the manufacturing unit in India. Natco tried their best to negotiate for voluntary license [as
first step should be asking for voluntary license]. Under section 84, you have to wait 3 years from
granting of patent, then only you can apply for it.
Step I: Identification of grounds
Step II: Wait for 3 years
Step III: Negotiate for voluntary license. If not possible, then ask for compulsory license.

23/02/2021
Section 84 is having certain procedure, after which the license is granted. It is an extreme case to
give compulsory license.
When there is no time, we cannot wait for such a long time [3 years, then voluntary granting of
license, then application for compulsory license etc.], then Section 92 is the resort. Under this, the
public interest ground is enumerated.
Applicant doesn’t have to wait for any 3 years or any procedure has to follow. This is the difference
from S. 84. Through a notification only govt grants the compulsory license.
Section 92 provides that in case of national emergency or in circumstances of extreme urgency or
in case of public noncommercial use, that it is necessary that compulsory licenses should be
granted.
Para 6 of Doha Declaration states that, “We recognize that WTO Members with insufficient or
no manufacturing capacities in the pharmaceutical sector could face difficulties in making
effective use of compulsory licensing under the TRIPS Agreement. We instruct the Council for
TRIPS to find an expeditious solution to this problem and to report to the General Council before
the end of 2002.” This is addressing a type of situation where, even after having compulsory
license, LDCs may not have the manufacturing countries to make use of the license.
Section 92A of the Patent Act provides for compulsory license for export of patented
pharmaceutical products in certain exceptional circumstances.
Countries like Rwanda, Ghana don’t have capacity to produce the drugs for cancer, now S. 92A
empowers India to export the pharmaceutical products for which compulsory license has been
granted to India.
This section talks of only export and not of import.

44
Rwanda was in a bad need for HIV drugs, they applied to WTO. WTO took 2 years time to send
the drugs to Rwanda. So, this was much debated situation. That’s why 92A type of provision is
very significant.
Bayre v. Cipla, under compulsory licensing, India is procuring cancer drug. China didn’t ask for
compulsory license. China is still paying that money for the drug. Now, a person started buying
the drug online in cheap rates. China had a limit on purchasing medicines online. He came into
notice.
There were more than 100 box sent to China by India, Bayre came into the way, China is not the
country which don’t have the manufacturing country. So, s. 92A cannot be applied.
Bolar exemption is a concept which was used here, it says that not for commercial use but for
research and academic use, you can send medicines. But 100 boxes!!!? Delhi HC dealt the case in
favor of Indian companies.
Standard Essential Patent: Recent wars between the smartphone giants over the patent issues
have brought into focus the importance of Standard Essential Patents (SEPs). SEPs are patents
essential to implement a specific industry standard. This implies that to manufacture standard
compliant mobile phones, tablets and other electronic devices, such manufacturers will have to use
technologies that are covered by one or more SEPs. Standards are technical requirements or
specifications that seek to provide a common design for a product or process. Patents which are
essential to a standard and have been adopted by a Standard Setting Organization (SSO) are known
as SEPs.
The concept of SEPs evolved in India when Ericson in 2011 objected to the importation of handsets
by Kingtech Electronics (India), claiming that the handsets infringed several of their SEPs in AMR
Codec (Adaptive Multi-Rate) technology. This was the starting point for SEP litigation in India.
The Indian Patents Act, 1970 (the "Act") does not contain any special provision for SEPs. Further,
the Act does not lay down any specific criteria or terms and conditions to be complied with while
licensing a patented technology.
The prospect of licensing of SEPs plays a vital role in a company's incentive to invest in
standardization activities, besides other motivations such as directing the standard development
towards technological solutions where the respective company is strong and can offer specific
services or infrastructure. However, the exclusive rights conferred by patents on inventors may
defeat the object of making standards available to all for public use. In order to address this

45
problem, most SSO’s have defined IPR policies where SSO members must commit to licensing
their SEPs on terms and conditions that are “Fair, Reasonable and Non-Discriminatory” (FRAND).
These commitments are meant to protect technology implementers while ensuring that Patent
holders receive an appropriate reward for their investment in research and development.
Section 64 is talking of revocation of Patent. The Patent office is entitled to revoke any patent
granted by it. It may, be revoked on a petition of any person interested or of the Central
Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent
by the High Court.
Section 63, any patentee at any point of time, by giving notice, can surrender the patent.

24/02/2021
A patent is considered to be infringed when any person exercises the exclusive right of the Patent
holder without his permission within the country of patent grant and within the term of protection.
An infringement could be assessed by ascertaining following things:
1) Whether the person alleged of infringement exercised the rights of the patent holder with respect
to the patented invention?
2) Whether the rights have been exercised without authorization of the patent holder?
3) Whether the actions of the alleged infringer are within the country or territory of patent grant?
and,
4) Whether the patent has not expired or lapsed?
Based on its nature, infringement may be classified into two types:
Direct Infringement; and
Indirect Infringement.
Direct Infringement
Direct infringement is again classified into two types:
Literal Infringement; and
Equivalence Infringement.
Literal Infringement
An infringement would be termed as Literal Infringement when all the elements of any claim could
be found in the alleged product or process.
Equivalence Infringement

46
In India, if the product in substance is equivalent to the claim, then that product or process is
infringing. The presence of any insubstantial changes and non-essential elements are not sufficient
for alienation of an infringing product or process from infringement. If in a product or process the
core of the claimed invention has been copied, then there exists substantial equivalence.
Indirect Infringement
If a person encourages, induces or instigates another person to infringe a product or process it is
said to be indirect infringement.
Doctrine of Equivalence:
Under this doctrine, a patent claim would be infringed from another product or process, if
‘equivalence’ can be established between the elements in the claims of the invention and the
elements of the accused product or process. In this article, we would begin by understanding the
Doctrine of Equivalent Patents and trace its inception and evolution in the US Supreme Courts.
In the case of Raj Parkash v. Mangat Ram Chowdhry, the Delhi High Court had discussed the
concept of non-literal infringement. While the court had not used the words ‘Doctrine of
Equivalence’ explicitly, it had found that the pith and substance of the invention must be paid
heed to and that the decision shall not get lost in detailed specifications.
Function-result test: If the two products perform same function and produce same result, then
doctrine of equivalence is applied. This test is used in US. 3 things are seen in this:
1) Performs substantially the same function
2) In substantially the same way
3) To obtain the same result

25/02/2021
The Misuse of Patent: Patent misuse in the United States cannot be used to start a case. It is
merely an affirmative defence and unlike abuse of rights, it is linked to competition effects of
patents. It is a type of tool internal to patent law to tackle anticompetitive behaviour. Although a
breach of competition law is not enough to invoke patent misuse, neither is it a requirement.
Patent misuse can be used to “show that the patentee has impermissibly broadened the ‘physical
or temporal scope’ of the patent grant with anticompetitive effect”.
Patent misuse is there to; “prevent a patentee from using the patent to obtain market benefit beyond
that which inheres in the statutory patent right”.

47
Patent Linkage: Patent Linkage refers to the communication between the national regulatory
authorities and the Patent Office to prevent marketing approval of generic drugs until after
the expiration of patents covering the drug product or approved use. This practice requires
that “second applicants” usually generic companies seeking marketing approval demonstrate that
the pharmaceutical product for which they are applying is not protected by a valid patent. Under
this kind of regulation, national regulatory authorities have an obligation to prevent registration
and marketing of generic pharmaceuticals when patent covers the product.
In India, there is no patent linkage and courts have rejected attempts by big pharma
companies to create such linkages. The patent system and the drug regulatory system in India
are two separate and independent mechanisms created under different laws and this is the
legislative intent.
A proposal made by the Drugs Controller General of India (DCGI) to incorporate the status of
patent(s) of drugs, in its marketing proposal, was abandoned, pursuant to an intense debate, with
perspectives from the industry factions and public health advocates.
DCGI and Indian Patent Office are having a hard time co-ordinating their own offices. DCGI in
India is not even in a position to effectively carry out its own work of drug regulation. The Patent
Office is in no better a position, since, it is so strapped for resources that it cannot even co-ordinate
its four offices properly leading to debacles.
There are various attempts done by pharmaceutical multinational companies for the introduction
of patent linkage in India. These include strong lobbying through free trade agreements, various
court cases amongst others.

COPYRIGHT
Indian copyright law is at parity with the international standards as contained in TRIPS. The
(Indian) Copyright Act, 1957, pursuant to the amendments in 1999, 2002 and 2012, fully reflects
the Berne Convention for Protection of Literary and Artistic Works, 1886 and the Universal
Copyrights Convention, to which India is a party. India is also a party to the Geneva Convention
for the Protection of Rights of Producers of Phonograms and is an active member of the World
Intellectual Property Organization (WIPO) and United Nations Educational, Scientific and
Cultural Organization (UNESCO).
There is also the Rome Convention for Protection of Broadcasting.

48
Copyright is protecting the personality right. Copyright ensures certain minimum safeguards of
the rights of authors over their creations, thereby protecting and rewarding creativity. Creativity
being the keystone of progress, no civilized society can afford to ignore the basic requirement of
encouraging the same. 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.
Copyright law protects expressions of ideas rather than the ideas themselves. Under section 13 of
the Copyright Act 1957, copyright protection is conferred on literary works, dramatic works,
musical works, artistic works, cinematograph films and sound recording. For example, books,
computer programs are protected under the Act as literary works.
Copyright refers to a bundle of exclusive rights vested in the owner of copyright by virtue of
Section 14 of the Act. These rights can be exercised only by the owner of copyright or by any
other person who is duly licensed in this regard by the owner of copyright. These rights include
the right of adaptation, right of reproduction, right of publication, right to make translations,
communication to public etc.
Copyright protection is conferred on all Original literary, artistic, musical or dramatic,
cinematograph and sound recording works. Original means, that the work has not been copied
from any other source. Copyright protection commences the moment a work is created, and its
registration is optional.
The work has to be present in some tangible manner. It is one established principle
of copyright law that copyright protection cannot be provided to a work until and unless the work
is expressed in some tangible form. This requirement of expressing the idea is known as the
requirement of fixation in copyright.
The Berne Convention deals with the protection of works and the rights of their authors. 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 three basic principles are the following:

49
(a) Works originating in one of the Contracting States (that is, works the author of which is a
national of such a State or works first published in such a State) must be given the same protection
in each of the other Contracting States as the latter grants to the works of its own nationals
(principle of “national treatment”).
(b) Protection must not be conditional upon compliance with any formality (principle of
“automatic” protection).
(c) Protection is independent of the existence of protection in the country of origin of the work
(principle of “independence” of protection). If, however, a Contracting State provides for a
longer term of protection than the minimum prescribed by the Convention and the work ceases to
be protected in the country of origin, protection may be denied once protection in the country of
origin ceases.

01/03/2021
It is a bundle of rights like to produce, to sell, like other IPRs.
Idea is not having copyright, only expression can have copyright. Many people can have same
kind of idea for working something. Many painters can have a similar idea for portrait. So, we
cannot block the idea. For example: Boy and girl love each other, and after many struggle from
family and society, they eventually die. We can recall many movies of similar plot. You cannot
say that each movie is copy of one another. They all are different expressions. So, copyright give
protection to expression only and not idea.
There is idea-expression dichotomy: Not all ideas can be expressed creatively. Often, there are
ideas that can be expressed in only a particular way. In such a case, copyrighting the expression
would amount to the copyrighting of the idea that would in turn stall the free flow of ideas.
In every such case where the expression is necessary to effectively communicate an idea, courts
apply the Merger Doctrine to find that no copyright subsists. The Merger Doctrine primarily
seeks to address the point where ideas and expressions converge.
An important case in this regard is that of Morrisey v. Proctor & Gamble Co. This case primarily
dealt with a competition/contest and whether its rules are a subject for copyright. The court held
that the idea of the contest is merged with the rules. Copyrighting the rules would amount to
copyrighting the idea of the contest and therefore the rules are not a subject matter of copyright.

50
Likewise, in the case of Joshua Et-Hokin v. Skyy Spirits Inc the question arose about some
photographs of the iconic blue bottle of Skyy Spirits. The Court held that since there are only a
few ways in which a bottle can be photographed, the pictures cannot seek copyright protection.
Cases in the present have been decided on the basis of the above cases. However one fails to realize
that this undermines the effort invested by the author or the creator. For example, consider the
photographs of the bottle. It is obvious that the no two photographs of the bottle clicked by two
different photographers can be the same. Even the variation in a slight angle can cause a huge
difference. In such cases, the idea-expression dichotomy proffers no solution and is therefore, at
times, inadequate.
Every possible expression can be copyrighted? No, originality has to be there, that it must originate
from a particular author, is not copied from someone else, independent creation. Originality started
from a concept of Skill, Labor and Judgment. These three have to be there for proving originality.
The Supreme Court of India reviewed the concept of originality in detail in Eastern Book
Company and Others v DB Modak and Another (2007). Prior to this case the Indian courts,
implicitly, followed the English approach to originality. The appellants in this case were the
publishers of Supreme Court Cases (SCC), a series of law reports which contains all the Supreme
Court’s judgments. The appellants alleged that the respondents, who had created software
packages that contained Supreme Court judgments, had copied the contents of their publication
verbatim. The appellants copy-edited the raw judgments and provided various inputs such as
headnotes, cross-references, standardization and formatting of the text, paragraph numbering,
verification, etc., which in their view required considerable skill, labour, expertise and expenditure.
The appellants claimed that SCC constitutes an “original literary work” under section 13 of
the Copyright Act and the respondents had infringed their right under section 14 by copying their
work.
The Supreme Court interestingly diverted from its standard practice of following the English sweat
of the brow doctrine and adopted the view that “Novelty or invention or innovative idea is not
the requirement for protection of copyright but it does require minimal degree of creativity.”
Applying the “creativity” standard, the court held that mere copy-editing of the judgment would
not merit copyright protection as this involves labour and nothing else. However, since some
creativity is involved in the production of headnotes, footnotes, editorial notes, etc., these would
qualify for copyright protection and the respondents were not allowed to copy them.

51
The Canadian standard of copyright is based on skill and judgment and not merely labour. The
skill and judgment required to produce the work must not be so trivial that it could be characterized
as purely mechanical exercise. This approach is sometimes known as the “skill and judgment” test.
The work is not copied from previous one is original. It can come from same type of area or idea,
it doesn’t matter, only expression is seen, the expression has to be original.
US threshold is very high in judging the originality in copyright. They follow the substantiality
test, that is, if substantially a product is different from any previous work, then it is original.
Merit of the work need not to be looked into. Irrespective of the quality and merit of the work, you
can get the copyright. For a literary work, which is not in a tangible form, like any online lecture,
the copyright resides with the performer.
Copyright of Source Code:
A copyright protects a particular tangible expression of an idea. In the context of software, a
copyright could protect source code, object code and user interfaces. A copyright is obtained
automatically at the time the expression is created, such as when the source code is written, when
the user interface is created, or when the program is compiled.
Copyright protection may be sought for all source code regardless of whether the source code is
maintained as a trade secret, released only as object code, or “open-sourced.” Specifically, the
copyright application process allows the copyright owners to designate various portions of the
source code as a trade secret. Copyright is beneficial for the software industry because it provides
a fast, inexpensive mechanism for securing intellectual property rights while still allowing the
copyright owners to maintain portions of their source code as trade secrets. Further, the ability of
a copyright holder to obtain statutory damages and attorney’s fees can substantially reduce the cost
of enforcement, allowing individuals and companies of all sizes to enforce their copyrights without
breaking the bank.

2/03/2021
According to Section 2 (ffc) of Copyright Act, “computer programme” means a set of instructions
expressed in words, codes, schemes or in any other form, including a machine readable medium,
capable of causing a computer to perform a particular task or achieve a particular result.
If we consider machine as a legal person, how will it deal with the ownership/authorship of the
copyrighted work?

52
According to Section 30, provides that, the owner of the copyright in any existing work or the
prospective owner of the copyright in any future work may grant any interest in the right by licence
in [writing by him] or by his duly authorised agent.
Provided that in the case of a licence relating to copyright in any future work, the licence shall take
effect only when the work comes into existence.

05/03/2021
Subject-Matter of Copyright:
Cinematographic film: “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
[Section 2(f)].
In case of cinematographic film, we tape the film and then roll it. But in case of dramatic
performance, it is performed physically.
Musical work: A work consisting of music and contains any graphical connotation of word.
“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
the music. Defined under Section 2(p).
Artistic Work: “artistic work” means — (i) 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; (ii) a work of architecture; and (iii) any other work of artistic
craftsmanship. This is provided under Section 2(c).
Work of Architecture means any building or structure having an artistic character or design, or any
model for such building or structure.
Section 2(xx) defines, “sound recording” means 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.
Derivative Work: A “derivative work” is a work based upon one or more preexisting works, such
as a translation, musical arrangement, dramatization, fictionalization, motion picture version,
sound recording, art reproduction, abridgment, condensation, or any other form in which a work
may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations,

53
elaborations, or other modifications which, as a whole, represent an original work of authorship,
is a “derivative work.”
Permission is required form the copyright holder to make a derivative work. But one exception to
it is, when the copyright has been expired, then it can be done.
Term of protection in India: Author’s life plus 60 years. Section 22 provides for this.
Term of copyright in published literary, dramatic, musical and artistic works — Except as
otherwise hereinafter provided, copyright shall subsist in any literary, dramatic, musical or artistic
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.
Explanation— In this section the reference to the author shall, in the case of a work of joint
authorship, be construed as a reference to the author who dies last.
Section 23 provides that, For anonymous and pseudonymous works, the protection is till 60 years
from the date the work is published. Concept of Orphan work comes here, the works for which the
information of author cannot be found, or the owner has died, or the owner is legal company which
has gone out of work.
If any writer, writes the work in pseudonym, then if the writer has the clear agreement with the
publisher. It is not a typical pseudonymous work, but only for readers. So, normal protection to
them.
In the case of a cinematograph film, copyright shall subsist until [sixty years] from the beginning
of the calendar year next following the year in which the film is published. Section 26 provides
for it.
Same followed for sound recordings and works where government is the first owner
Section 24: In case of protection of Posthumous Work, copyright shall subsist until [sixty years]
from the beginning of the calendar year next following the year in which the work is first published
or, where an adaptation of the work is published in any earlier year, from the beginning of the
calendar year next following that year.
Protection to performer: Who is the performer? Any person who makes performance. (1) Where
any performer appears or engages in any performance, he shall have a special right to be known
as the “performer’s right” in relation to such performance. (2) The performer’s right shall subsist
until [fifty years] from the beginning of the calendar year next following the year in which the
performance is made.

54
8/03/2021
Copyright is having inherent international protection. Once you copyright a work in one country
which is part of Berne Convention, then it will automatically applicable to all the member
countries.
Minimum rule theory: Explained in Berne Convention. As different countries have different
duration for copyright. So, for uniformity, what is the minimum period in any country would be
considered as uniform period of copyright.
Author’s life plus 50 years is generally the minimum.
Authorship and Ownership: Section 2(d) of the copyright act, “author” means, — (i) in relation
to a literary or dramatic work, the author of the work; (ii) in relation to a musical work, the
composer; (iii) in relation to an artistic work other than a photograph, the artist; (iv) in relation to
a photograph, the person taking the photograph; (v) in relation to a cinematograph film or sound
recording, the producer; and (vi) in relation to any literary, dramatic, musical or artistic work which
is computer-generated, the person who causes the work to be created.
-- Music here is not song. For cinematographic film or sound recording, Producer is author and
not director. In 2012, there was an amendment in copyright act. Producer is the one who invests
money and take risk, therefore they are considered authors.
-- Author of work is the first owner of the copyright. If the work is made in the course of
employment, then employer is the first owner.
Cambridge Press case, question paper is also a literary work that can be copyrighted.
In the case of a work created by an author in the course of his or her employment under a contract
of service or apprenticeship, then the employer is the first owner of the work. However, this does
not affect the rights of an author in any original literary, dramatic, musical or artistic work that is
incorporated in a cinematograph film as has been clarified by the 2012 amendments to the
Copyright Act.
-- In the case of any address or speech delivered, the person making the address or delivering the
speech, or the person on whose behalf he or she does so, is the first owner of the work.
-- In the case of a government work, the government is the first owner of the work.
-- In the case of a work made or first published by a public undertaking, the public undertaking
will be the first owner of the work.

55
-- In the case of works created by international organisations, the international organisation would
be the first owner of the work.
May an employer own a copyrighted work made by an employee?
If a person in the course of his or her employment under a contract of service or apprenticeship
creates any work, his or her employer becomes the first owner of the copyright in the work so long
as there is no contract to the contrary. Hence, an employer’s ownership is automatic by virtue of
the employer-employee relationship. However, for any literary, musical, artistic and dramatic
works that are incorporated in a film, the employer does not become the first owner of the copyright
and the employee author retains the first ownership. A specific assignment of copyright in such a
case is required by the employer.
May a hiring party own a copyrighted work made by an independent contractor?
In the absence of an assignment in favour of the hiring party, the first owner of the copyright is the
independent contractor. The hiring party would have only an equitable right to use the material
created for the purpose of hiring or commission, and possibly against any assignment detrimental
to such use.
To own the copyright, the hiring party would have to obtain an assignment in writing from the
independent contractor.
-- Whoever be the employer, author will always be recognized for the work he has created. Only
the economic rights decision would go to the owner that is the employer [he has invested]. But
authorship would go to creator.
-- Two things: Paternity right and Right to Integrity, they are moral rights which are perpetuity
rights. No one is allowed to distort or manipulate the work. The right to paternity is the right of
the author to claim authorship over his work and have it attributed to him. On the other hand,
the right to integrity permits the author to restrain or claim damages in the event of any distortion,
mutilation, modification or any other untoward act done to his work.
As per Indian Copyright Act, any work that is registered, exclusive rights are provided to literary,
dramatic or musical work, not being a computer programme, by the virtue of Section 14.
Section 14 also confers exclusive rights to: (i) to reproduce the work in any material form including
the storing of it in any medium by electronic means; (ii) to issue copies of the work to the public
not being copies already in circulation; (iii) to perform the work in public, or communicate it to

56
the public; (iv) to make any cinematograph film or sound recording in respect of the work; (v) to
make any translation of the work; (vi) to make any adaptation of the work.
Owner can give permission for translation or adaptation, which is part of derivative work.

9/03/2021
Communication to the Public: It also come under the bundle of rights with copyright. Right to
issue copies of work to public includes the right to import the work. Importation of particular work
for specific purpose may be important link towards issuing work to public. Print, Publish and
selling of work includes importation of work. This has been held in Penguin books case.
Performance of the literary work before the public without the owner of the copyright of the work,
is infringement. This is very subjective, because public is not defined anywhere, it may be one
person or many, no standard given.

10/03/2021
Section 52 provides for the acts which would not be considered as infringement of a copyright.

11/03/2021
Circumvention of a Copyright means: The action of overcoming a problem or difficulty in
infringing copyright, typically in a clever and surreptitious way.
65A. Protection of technological measures:
(1) Any person who circumvents an effective technological measure applied for the purpose of
protecting any of the rights conferred by this Act, with the intention of infringing such rights, shall
be punishable with imprisonment which may extend to two years and shall also be liable to fine.
(2) Nothing in sub-section (1) shall prevent any person from,—
(a) doing anything referred to therein for a purpose not expressly prohibited by this Act:
Provided that any person facilitating circumvention by another person of a technological measure
for such a purpose shall maintain a complete record of such other person including his name,
address and all relevant particulars necessary to identify him and the purpose for which he has
been facilitated; or
(b) doing anything necessary to conduct encryption research using a lawfully obtained encrypted
copy; or

57
(c) conducting any lawful investigation; or
(d) doing anything necessary for the purpose of testing the security of a computer system or a
computer network with the authorization of its owner; or
(e) operator; or
(f) doing anything necessary to circumvent technological measures intended for identification or
surveillance of a user; or
(g) taking measures necessary in the interest of national security.

12/03/2021
Section 30

15/03/2021
Transfer of Copyright:
Assignment of Copyright (Section 18)
The owner of the copyright of a work has the right to assign his copyright to any other person. The
effect of assignment is that the assignee becomes entitled to all the rights related to the copyright
to the assigned work. However, mere grant of right to publish and sell the copyrighted work
amounts to publishing right and not assignment of copyright.
Where the assignee of a copyright becomes entitled to any right comprised in the copyright, he
shall be treated as the owner of the copyright in respect of those rights. The assignor shall also be
treated as the owner of copyright with respect to unassigned rights. The legal representatives of
the assignee shall be entitled to the benefits of assignment, if the assignee dies before the work
comes into existence.
In Video Master v. Nishi Production, the Bombay High Court considered the issue whether
assignment of video rights would include the right of satellite broadcast as well. The Court agreed
with the contentions of defendant that there were different modes of communication to the public
such as terrestrial television broadcasting (Doordarshan), satellite broadcasting and video TV. The
owner of the film had separate copyright in all those modes, and he could assign it to different
persons. Thus, satellite broadcast copyright of film was a separate right of the owner of the film
and the video copyright assigned to the plaintiff would not include this.
Mode of Assignment (Section 19)

58
As per section 19, assignment of copyright is valid only if it is in writing and signed by the assignor
or his duly authorized agent. The assignment of a copyright in a work should identify the work
and specify kind of rights assigned and the duration and territorial extent of such assignment.
Further, it should specify the amount of royalty payable, if any, to the author or his legal heirs
during the continuance of assignment and the assignment will be subject to revision, extension or
termination on terms mutually agreed upon by the parties.
If the period of assignment is not mentioned it will be deemed to be taken as five years from the
date of assignment. If the territorial extent of such assignment is not stipulated, it will be taken as
applicable in whole of India.
Also, Section 19(8) contemplates that the assignment of copyright work against the terms and
conditions on which rights have been assigned to a particular copyright society where the author
of the work is a member shall be void. Further, Section 19(9) and section 19(10) opine that the
assignment of copyright for making cinematograph film or sound recording shall not affect the
right of the author to claim an equal share of the royalties and consideration payable with respect
to use of his protected work.
In Saregama India Ltd v. Suresh Jindal, it was held that the owner of the copyright in a future
work may assign the copyright to any person either wholly or partially for the whole of the
copyright or any part thereof and once the assignment is made the assignee for the purpose of this
Act is treated as the owner of the copyright.

16/03/2021
INDUSTRIAL DESIGN
In a legal sense, an industrial design constitutes the ornamental aspect of an article.
An industrial design may consist of three dimensional features, such as the shape of an article, or
two dimensional features, such as patterns, lines or color.
BAHAAR SE KAISA DIKH RHA HAI.
Rationale behind ID: An industrial design right protects only the appearance or aesthetic
features of a product, whereas a patent protects an invention that offers a new technical solution to
a problem. In principle, an industrial design right does not protect the technical or functional
features of a product. The different look of the product is one of the main attraction for the
customer, that’s why sometimes product quality is compromised for the looks.

59
Through trademarks we recognize the brand. To build a brand, trademark is one small component
only, one more thing that adds up to the brand value is the industrial design of the product.

22/03/2021

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