Intellectual Property

 Intellectual property (IP) is a category of property that includes intangible creations of the human intellect.
 There are many types of intellectual property, and some countries recognize more than others. The best-known
types are patents, copyrights, trademarks, and trade secrets.
 The modern concept of intellectual property developed in England in the 17th and 18th centuries.
 The term "intellectual property" began to be used in the 19th century, though it was not until the late 20th
century that intellectual property became commonplace in the majority of the world's legal systems.
 The main purpose of intellectual property law is to encourage the creation of a wide variety of intellectual
goods. To achieve this, the law gives people and businesses property rights to the information and intellectual
goods they create, usually for a limited period of time.
 Main forms of IP

 The key forms of intellectual property protection are patents, copyrights, trademarks and
trade secrets. Because intellectual property shares many of the characteristics of real and
personal property, associated rights permit intellectual property to be treated as an asset
that can be bought, sold, licensed or given away. Intellectual property laws enable owners,
inventors and creators to protect their property from unauthorized use.
 Inventors, artists and authors — whose work is intangible — face difficulty in earning a
living if their claim to their creations is not respected. Unable to rely on locks and fences
to protect their work, they turn to intellectual property protection laws.
 Copyright

 Copyrights offer essentially the only protection for music, films, written works of fiction, poems,
architectural designs and other works of cultural value.
 The owner of copyrighted material has exclusive rights to reproduce the work, prepare derivative
works, distribute copies of the work, and perform or display the work. As creators develop new
forms of expression, these protected categories expand. Intellectual property now includes such
works as computer programs and sound recordings.
 For works created after January 1, 1978, copyright protection generally lasts for the life of the
author plus 70 years. For an anonymous work, a pseudonymous work or a work made for hire, the
copyright endures for a term of 95 years from the year of its first publication or a term of 120 years
from the year of its creation, whichever expires first. Only an author or someone deriving their
rights through the author, like a publisher, can claim copyright.
 Trademarks

 A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies
products or services from a particular source and distinguishes them from others.
 The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a
package, a label, a voucher, or on the product itself. Trademarks used to identify services are sometimes called service
marks.
 The first legislative act concerning trademarks was passed in 1266 under the reign of Henry III, requiring all bakers to
use a distinctive mark for the bread they sold.
 The first modern trademark laws emerged in the late 19th century. In France, the first comprehensive trademark
system in the world was passed into law in 1857.
 The Trade Marks Act 1938 of the United Kingdom changed the system, permitting registration based on "intent-to-
use", creating an examination based process, and creating an application publication system. The 1938 Act, which
served as a model for similar legislation elsewhere, contained other novel concepts such as "associated trademarks", a
consent to use the system, a defensive mark system, and a non claiming right system.
 Patents and Designs
Particulars
What is protected?
Flexibility of parameters
Factors considered
Duration of protection
Some Examples
Cost of protection
Governing Statutes
Average duration to secure rights
Patents Designs
Technical features / Inventions involving Aesthetic appeal / How a product looks from
scientific elements the outside / External features
Strict Not very strict
1.      Novelty
2.      Usefulness / Utility / Industrial 1.      Novelty
Applicability 2.      Originality
3.      Non Obviousness
20 years 10 years + 5 years
Formulation of a beverage such as coke ; A Shapes of bottles, patterns applied on a cloth
method of manufacturing a bottle , etc or crockery, etc
Very high Low
Patents Act, 1970 and Patent Rules, 2003 Designs Act, 2000 and Design Rules, 2001
3 to 4 years after filing a request for
1 to 1.5 years
examination.*
 Secrets in IP

 Trade secrets are intellectual property (IP) rights on confidential information which may be sold
or licensed. In general, to qualify as a trade secret, the information must be:
o commercially valuable because it is secret,
o be known only to a limited group of persons, and
o be subject to reasonable steps taken by the rightful holder of the information to keep it secret,
including the use of confidentiality agreements for business partners and employees.
 The unauthorized acquisition, use or disclosure of such secret information in a manner contrary to
honest commercial practices by others is regarded as an unfair practice and a violation of the trade
secret protection.
Historical evolution of Copy Rights Act, 1957

 The Copyright Act, 1957, governs the law pertaining to copyright in India.
 The major goals of this copyright law are two fold: first, to guarantee authors, musicians, painters,
designers, and other creative individuals the right to their creative interpretation; and second, to enable
others to openly develop upon the concepts and knowledge made available by a work.
 India’s history with copyright laws dates back to the British Empire’s colonial rule. A law called the
Indian Copyright Act, 1957, was passed; it went into effect in January 1958 and has since undergone
five revisions, in 1983, 1984, 1992, 1994, and 1999.
 The Copyright Act of 1957 was India’s first copyright law following independence, and six
amendments have been made since then. The Copyright (Amendment) Act 2012, which was passed in
2012, was the most recent amendment. The concept of copyright in India is governed by the Indian
Copyright Act, 1957, as modified from time to time, and the Indian Copyright Rules, 1958 (Rules).
 Copyright – Computer Programs

 In India, the Intellectual Property Rights (IPR) of computer software is covered under the Copyright Law.
Accordingly, the copyright of computer software is protected under the provisions of Indian Copyright Act
1957.
 Computer program are literary works under the definition in the Copyright Act. A “computer program” is a set
of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain
result. Copyright for computer programs prohibits copying of program structure and design. The graphics,
sounds, and appearance of a computer program also may be protected as an audiovisual work; as a result, a
program can infringe even if no code was copied.
 Just as a copyright came into being when the original lines of source code were written by the programmer, so
another copyright comes into being for each addition or modification to the source code that shows sufficient
originality. Because of this, a computer program generally is protected not by a single copyright but by a series
of copyrights starting when it is first written and continuing through the last modification.
 Ownership of copyrights and assignment

 Copyright, a unique intellectual property meant for the creative brothers and sisters around the world isres
incorporalis. In that sense, it has no tangible existence but is a proprietary right and can be disposed of.
 In modern life, every individual is aware of the concept of Copyright because of the expansion of media and
communication throughout the world. Today’s world has no shortage of ideas, thoughts, modes of expression,
and its distribution, which the world media has upheld through the gift of technology coupled with a wider
scope of communication and share. This very thing has directed out attention towards the creative world,
their rights and obligations, along with their grievances in the form of disputes faced by the creators. The
Copyright Act, 1957 as amended in 2012 is the current vehicle to settle and guide the creators towards
betterment and give them some pecuniary opportunities so that they are further encouraged to bless the world
with their creativity.
 A copyright assignment is when the copyright holder transfers ownership of the copyright to another person
or organization.
 Piracy in Internet

 Internet piracy is the use of the internet to illegally copy content, infringing on the
copyright of the content owner.
 Internet piracy takes many forms, and includes a wide variety of legally protected content.
This includes music, movies, software, and even digital books.
 The principle of a typical internet pirate is that all information in the world should be free.
Sometimes the copy protection and/or warnings that are meant to thwart piracy is difficult
to manage or makes purchasing feel more like punishment than not (think the FBI
warning before a movie). Others simply don't want to pay for content.
 Patents Act, 1970

 The Patents Act, 1970 is the legislation that till date governs patents in India. It first came into force
in 1972.
 The Patents Act has been repeatedly amended: 1999, 2002, 2005, 2006. These amendments were
required to make the Patents Act TRIPS-compliant
 The major amendment was in 2005, when product patent was extended to all fields of technology
like food, drugs, chemicals and micro organism
 The Indian Patent Act, 1970 strikes a balance between the rights of the applicant and his obligation
to the society granting the rights.
 Some salient features of the Act include, product and process patent, term of patent as 20
years,patent examination conducted on request, fast track mechanism for quick disposal of appeals,
pre-grant and post-grant opposition allowed, protection of biodiversity and traditional knowledge,
and, publication of applications after 18 months of date of filing of patent application.
 Patents Act, 1970

 One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the patent
subject to the fulfillment of certain conditions.
 Section 3(d) stipulates that 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,
is not patentable
Patentable inventions with special reference to
biotechnology products

 Industrial Applicability
 In India, for an invention to be industrially applicable, it is necessary to prove that the invention can
be made, Can be used in at least one field of activity, and Can be reproduced with the same
characteristics as many times as necessary.
 Since no specific mention with regard to the industrial applicability of biotechnology patents has
been provided for in the act, it is reasonable to apply the general industrial applicability standards to
biotechnology inventions. If biotechnology inventions can be made and used in an industry and can
be reproduced as many times as required, they would satisfy the Industrial Applicability requirement
in India. The guidelines for examining biotechnology inventions in the Draft Manual of Patent
Practice, 2008 provide that gene sequences and DNA sequences whose functions are not disclosed do
not satisfy the Industrial Applicability requirement.
Patentable inventions with special reference to
biotechnology products

 Novelty
 The Patents Act does not have any explicit provisions with respect to the novelty of biotechnology
inventions.
 Since most biotechnology inventions are products of nature inherently present in living organisms, they
could be construed as discoveries and not patentable.
 However, the Draft Manual of patent practice and procedure, 2008 provides that biological materials
such as recombinant DNA, Plasmids, and processes of manufacturing thereof are patentable provided
they are produced by substantive human intervention.
 As there are no decided cases on the subject, the interpretation of the Manual is being used to analyze
the novelty of biotechnology inventions. Several patents have been granted for isolated gene sequences
in India and such sequences have been considered to be novel by the patent office in the light of their
natural counterparts.
Patentable inventions with special reference to
biotechnology products

 Morality
 Section 3(b) of the Indian Patent Act provides that an invention the primary or intended use or commercial
exploitation of which would be contrary to public order or morality or which causes serious prejudice to human,
animal, or plant life or health or to the environment is not patentable.
 As per the section an invention would not be patentable if it is immoral or against public order, harmful to human,
animal, or plant life, or harmful to the environment.
 The Draft Manual of Patent Procedure, 2010 provides that Any biological material and method of making the
same which is capable of causing serious prejudice to human, animal, or plant lives or health or to the
environment including the use of those that would be contrary to public order and morality are not patentable.
 It further provides that the processes for cloning human beings or animals, processes for modifying the germ line,
the genetic identity of human beings or animals, uses of human or animal embryos for any purpose are not
patentable as they are against public order and morality. The Indian Patent Law has strong prohibitions against
patenting biotechnology inventions based on morality and public order.
Process of obtaining patent
 Process of obtaining patent

 Step 01: Invention disclosure

 The first step is to disclose your invention to the professional. This is done by signing a non-disclosure
agreement.
 Step 02: Patentability search
 Usually, a professional charges a fee (approx INR 10,000 to INR 20,000) at this step. At this stage, your
professional performs extensive research for prior evidence in all the possible databases. Further, he or
she builds a patentability search report based on your invention.
 Step 03: Decision to file an application for patent
 This is where the actual process begins. After detailed research about (any) existing history of your
invention, you can decide if you want to go ahead with the patent application filing.
 Process of obtaining patent

 Step 08: Grant of patent

 If the application meets all the prescribed requirements, it is placed in order for the grant.
Usually, the final grant of the application is notified through a journal that is published
 Step 09: Renewal of your patent
 Usually, a patent is in force for 20 years. On completion of 20 years, the owner is required
to renew the patent by paying a small fee.
 Process of obtaining patent

 Step 04: Patent drafting

 You can choose to draft the application on your own or take a professional’s help to do this. If you
choose to take help, you might have to pay somewhere around INR 20,000 to INR 30,000.
 Step 05: Filing the patent application
 After you are done with a review of your patent draft and are satisfied with the scope and details, you are
ready to file for a patent.
 You can file the patent application in a prescribed manner with appropriate forms with fees. You need to
pay fees of INR 1,600 or 4,000 or 8,000 (based on the type of application) while submitting the patent
application in the patent office. If you do not file a request for early publication, the patent application
will be published on expiry of 18 months
 Process of obtaining patent

 Step 06: Request for examination

 This is the step where the applicant is required to request the Indian patent office to examine your patent
application, within 48 hours. Request for examination fees ranges from INR 4,000 to INR 20,000 (based
on the type of applicant).
 Step 07: Responding to objections (if any)
 The draft and the report submitted to the officers in the patent office are thoroughly examined at this step.
At this step, there is a chance for the inventor to communicate his novelty or inventive step over any other
piece of art found during the assessment. If all the things are well clarified and solved, the patent
application is almost ready to come to action
 Patent cooperation treaty
 The Patent Cooperation Treaty (PCT) provides us with an overview of an international treaty which is duly
administered by the World Intellectual Property Organization (WIPO).
 The Patent Cooperation Treaty (PCT) is an international treaty with more than 148 Contracting States. It is
administered by the World Intellectual Property Organization.(WIPO).
 The PCT is an international treaty which provides a system for filing a patent application and allow us to obtain patents
in multiple countries around the world on the basis of a single patent application.
 The PCT simplifies the patent filing process for applicant and the ultimate decision to grant a patent vests exclusively
with each national or regional Patent Office.
 A single PCT application has the same legal effect as a national Patent application in each of the PCT Contracting
States. Without the PCT, we would have to file a separate patent application in each country separately and
independently. PCT save applicant time, effort and expense of preparing separate applications in various languages and
file it in different signatories states.
 Patent Cooperation Treaty- file an application under the PCT, directly or within the 12-month period as provided for by
the Paris Convention from the filing date of a first application, which is valid in all Contracting States of the PCT.
Grounds for Opposition of patent

 A patent can only be opposed on the following grounds:

 the nominated person in the patent application is either:
 not entitled to a grant of patent for the invention; or
 entitled to a grant of patent for the invention but only in conjunction with some other person.
 that invention is not a patentable invention;
 that the patent specification filed is not a complete specification
 This means a patent application can be opposed for reasons that the patent:
 is not new, inventive for a standard patent (innovative for a innovation patent);
 is not useful: this is to ensure that patents are granted for subject matters that work and can be used, discouraging patents being filed
purely for strategic reasons.
 was secretly used in the patent area (i.e. Australia) before the Priority Date;
 issues of patent specification: this is a disclosure requirement applicable to claims made which are not clear, succinct, supported by
matters disclosed in the specification, and fail to satisfy disclosure requirements generally.
 Rights of patentee

 Right to grant the license

 A patentee poses the right of granting a license or entering into some arrangement for some consideration. The license provided would only
be considered valid if only been in writing form and should be registered with the Controller of the Patent. As per Section 69 (5)[18] of the
Patent Act, 1970, a document of assignment of a Patent is not registered, it would not be admitted as evidence of the title of the patent, and
such a rule applies to the assignee, and not the assignor.
 Right to surrender
 A patentee through a notice of prescribed manner has the right to surrender a Patent at any time at the patentee’s discretion. Such surrenders
are advertised through journals. The publication is done to allow the people so they can oppose the offer of the surrender of the patentee. It
is done when the patentee seizes their non-performer of the Patent in the future and upon which they decide to surrender the Patent.
 Right to sue for infringement
 The patentee holds the right to sue for infringement of the Patent in the District Court which has the jurisdiction to try the suit.
 Right to use and enjoy Patent
 The Patent Act gives a patentee a distinctive right to exercise, make, utilize, conveyor offers an article in India or the patented substance or
to practice the techniques associated with the inventions. The rights under it can be either exercised by the patentee themselves or by their
licenses or agents.
 Obligations of patentee

 Duty to request for examination

 Under Section 19 (B)[19] of the Patents Act, 1970, the obligation is driving on the patentee themselves to seek from the Controller of
Patents to look at the development connected for Patent.
 Duty to respond to objections
 The examination request made to the Controller of Patent for its acceptance passes it to the analyst who looks at the growth and gives a
report to the Controller of Patent and which is known as the First Examination Report (FER).
 Duty to clear objections
 The owner of the Patent is obliged to respond to the race to objections, and also to clear and remove every raised objection, and even
certain oppositions raised against the patentee’s invention. The patentee is obliged to go for a consultation to remove any such kinds of
objections and oppositions against their inventions.
 Duty to pay statutory fees
 A patentee is obliged to pay all the statutory expenses required to acquire a grant of a Patent in the method of registration without any
failures. Mostly the application for the grant of Patent for the patentee isn’t managed. Section 142[20] of the Patent Act, 1970, lays down
the provisions recognized with payment of charges and also the consequences for the non-payment of such prescribed fees.
 Duration of patents

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

 Federal Court, Arbitration or the ITC

 Remedies for patent infringement are obtained through suit in federal court. Alternatively, the patent
owner and accused infringer can agree to settle their dispute through arbitration or arbitration may be
required by a contract under which the dispute arises. The court action is quite formal and provides
for appeals. Arbitration, while following the general rules of court proceedings, is less formal, and the
decision of the arbitrator is binding. Generally, arbitration is less costly and faster than litigation in
federal court. In either forum, the same basic remedies are available.
 An alternative source of limited relief is available through the International Trade Commission (ITC)
when the source of the infringing products is outside of the United States. The ITC can exclude from
importation products that infringe a valid U.S. patent and cause injury to a domestic business.
However, no compensation for past infringement or attorney’s fees are available in an ITC
proceeding.
 Infringement remedies

 Monetary Relief
 The patent statutes provide for the recovery of compensatory damages as the primary monetary
remedy for patent infringement. The primary award should be the best approximation of the amount
necessary to restore the owner to the financial position he or she would have enjoyed had the
infringer not engaged in unauthorized acts in violation of the owner’s exclusive patent rights. The
three traditional modes of measuring compensatory damages are lost profits, established royalty, and
reasonable royalty.
 Lost Profits
 Lost profits, in the form of sales diversion, price erosion, or increased expense, are an appropriate
basis for recovery when the patent owner or an exclusive licensee exploits the lawful exclusive rights
of the patent directly by manufacture, use, or sale.
 Infringement remedies

 Established Royalty
 If the owner chooses to exploit the patent through offering licenses at an established royalty rate, that rate is the
appropriate basis for recovery.
 Reasonable Royalty
 Absent sufficient evidence of lost profits or an established royalty, the patent owner may in any case recover against the
infringer not less than a reasonable royalty. A reasonable royalty is the royalty that willing parties would have agreed to
had they negotiated a license under the patent.
 Injunctive Relief
 The remedy against continued infringement of a patent is an injunction. In a patent infringement suit, an injunction is a
court order prohibiting the manufacture, use, or sale of the patented invention. Violation of an injunction is considered
contempt of court and is dealt with by contempt proceedings. In such a proceeding, only violation of the injunction need
be proven.
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