Intellectual Property Rights

Intellectual Property Rights
(MEC 572)
By:- Dr. Gaurav Gugliani

Intellectual property (IP) is a term referring to creation of the intellect for which a
monopoly is assigned to designated owners by law.
Intellectual Property Rights: Intellectual Property Rights (IPR) are rights granted to
creators and owners of works that are results of human intellectual creativity. These
works can be in the industrial, scientific, literary and artistic domains, which can be
in the form of an invention, a manuscript, a suite of software, or a business name.
Intellectual Property Rights are themselves a form of property called intangible
property.
IP is divided into two categories:
1. Industrial Property
2. Copyright
Industrial property, which includes inventions (patents), trademarks,
industrial designs, and geographic indications of source.
Copyright, which includes literary and artistic works such as novels, poems
and plays, films, musical works, artistic works such as drawings, paintings,
photographs and sculptures, and architectural designs. Rights related to copyright
include those of performing artists in their performances, producers of phonograms
in their recordings, and those of broadcasters in their radio and television programs.

The term intellectual property is usually thought of as comprising four
separate legal fields:
1. Trademarks
2. Copyrights
3. Patents
4. Trade secrets
1. Trademarks and Service Marks: A trademark or service mark is a word, name, symbol,
or device used to indicate the source, quality and ownership of a product or service. It can
also consist of slogans, design, or sounds.
2. Copyrights: Copyright is a form of protection provided to the authors of "original works
of authorship" fixed in any tangible medium of expression. The owner of a copyright has
the right to reproduce the work, prepare derivative works based on the original work (such
as a sequel to the original), distribute copies of the work, and to perform and display the
work.
3. Patents: A patent is an exclusive right granted by a country to the owner of an invention
to make, use, manufacture and market the invention, provided the invention satisfies
certain conditions stipulated in the law. Exclusivity of right implies that no one else can
make, use, manufacture or market the invention without the consent of the patent holder.
This right is available only for a limited period of time.
4. Trade Secrets: A trade secret consists of any valuable business information. The
business secrets are not to be known by the competitor. There is no limit to the type of
information that can be protected as trade secrets.
Example: Recipes, Marketing plans, financial projections, and methods of conducting
business can all constitute trade secrets.

Paris Convention for the Protection of Industrial Property (1883):
The Paris Convention applies to the industrial property, including patents,
trademarks, industrial designs, utility models, service marks, trade names,
geographical indications and the repression of unfair competition.
The substantive provisions of the Convention fall into three main categories:
National treatment
Right of priority
Common rules
National Treatment:
This Convention provides that, as regards the protection of industrial
property, each Contracting State must grant the same protection to nationals
of other Contracting States that it grants to its own nationals.
Nationals of non-Contracting States are also entitled to national treatment
under the Convention if they are domiciled or have a real and effective
industrial or commercial establishment in a Contracting State.

Right of Priority:
The Convention provides for the right of priority in the case of patents (and
utility models where they exist), marks and industrial designs. This right means
that, on the basis of a regular first application filed in one of the Contracting
States, the applicant may, within a certain period of time (12 months for patents
and utility models; 6 months for industrial designs and marks), apply for
protection in any of the other Contracting States. These subsequent applications
will be regarded as if they had been filed on the same day as the first
application.
One of the great practical advantages of this provision is that applicants seeking
protection in several countries are not required to present all of their
applications at the same time but have 6 or 12 months to decide in which
countries they wish to seek protection, and to organize with due care the steps
necessary for securing protection.

Common Rules:
(a) Patents. Patents granted in different Contracting States for the same invention
are independent of each other: the granting of a patent in one Contracting State
does not oblige other Contracting States to grant a patent; a patent cannot be
refused, annulled or terminated in any Contracting State on the ground that it has
been refused or annulled or has terminated in any other Contracting State.
(b) Marks. The Paris Convention does not regulate the conditions for the filing and
registration of marks which are determined in each Contracting State by domestic
law. Consequently, no application for the registration of a mark filed by a national of a
Contracting State may be refused, nor may a registration be invalidated, on the
ground that filing, registration or renewal has not been effected in the country of
origin.
(c) Industrial Designs. Industrial designs must be protected in each Contracting State,
and protection may not be forfeited on the ground that articles incorporating the
design are not manufactured in that State.
(d) Trade Names. Protection must be granted to trade names in each Contracting
State without there being an obligation to file or register the names.
(e) Indications of Source. Measures must be taken by each Contracting State against
direct or indirect use of a false indication of the source of goods or the identity of
their producer, manufacturer or trader.
(f) Unfair competition. Each Contracting State must provide for effective protection
against unfair competition.

Berne Convention for the Protection of Literary and Artistic Works (1886):
The Berne Convention deals with the protection of works and the rights of their
authors. It is based on three basic principles
(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.

World Intellectual Property Organization (WIPO Convention) (1967)
Objectives:
(i) to promote the protection of intellectual property worldwide
(ii) to ensure administrative cooperation among the intellectual property
Unions established by the treaties that WIPO administers.
Activities Performed by WIPO
normative activities
program activities
international classification and standardization activities
registration and filing activities
Organ of WIPO
The WIPO General Assembly
The WIPO Conference
The WIPO Coordination Committee.

TRIPs Agreement (1995): TRIPS agreement means the agreement on Trade
Related Aspects of Intellectual Property Rights. The agreement is sometimes
referred to as a Berne and Paris-plus agreement.
TRIPS is required to promote effective and adequate protection of intellectual
property rights with a view to reducing distortions of and impediments to
international trade.
Areas of intellectual property that the TRIPS agreement covers are:
Copyrights
Trademarks
Service Marks
Industrial designs
Patents
Geographical Indications
Layout Designs of ICs
Trade Secrets

COPYRIGHT
Copyright is one of the key branches of IP law which protects the expression of
ideas. For a work to gain copyright, it has to be original and should be expressed in
a material form. Copyright is thus effective upon the creation of the work. It arises
automatically and in the UK one does not have to register the copyright in the work
before it is protected.
Entitlement to Copyright
A work will qualify for copyright protection if:
It is of a type protected by copyright under the Act.
It is recorded in some form – e.g. in writing, by a sound recording, on a
computer disk, or in a printed form.
The work meets the requisite degree of originality. A work is original if
adequate skill, labour and judgment are spent on creating it.

Works Protected by Copyright
The types of copyright works are broadly categorised into:
Original literary, dramatic, artistic or musical works,
Sound recordings, films or broadcasts and
The typographical arrangement of published editions.
Literary work also includes:
A table or compilation other than a database,
A computer program,
Preparatory design material for a computer program and
A database.
Dramatic work includes a work of dance or mime. Musical work means any work
consisting of music but excludes the words and music of songs.

Rights granted by Copyright
Copyright grants certain rights that are exclusive to its owner. Based on these
rights, the copyright owner
Can copy the work
Issue copies of the work to the public
Rent or lend the work to the public
Perform, show or play the work in public
Communicate the work to the public – this includes broadcasting of a work
and also electronic transmission and make an adaptation of the work or do any
of the above in relation to an adaptation

Copyright Ownership - Who owns what in a Copyright Work?
Copyright ownership can arise automatically or by means of transfer of ownership
through an assignment, assignation or license.
Copyright Owner
The first owner of copyright in a work is the person who created the work. Joint
ownership may arise where more than one author is involved in creating a work.
Copyright Ownership in Computer Generated Works
In the case of computer generated works, the creator is the person by whom the
arrangement necessary for the creation of the work is undertaken.
Copyright Ownership in an Employer-Employee Relationship
Copyright of works created during the course of employment will be owned by the
employer unless an agreement to the contrary is in place. Additionally, copyright
ownership is also dependent on the question of whether the work in question was
produced during the course of employment.

Copyright Ownership in Collaborative Research
In the case of collaborative research partnership between Further Education and Higher
Education institutes and an outside partner copyright ownership can be held jointly. It is
often the case that an agreement regulates this partnership and so ownership rights are
distinguishable.
Copyright Ownership by Students
Relationship between students and FE and HE institutes are based on a special type of
contract. These agreements are the various terms and conditions in the documentation
(e.g. prospectus) that passes between them. In the absence of special terms and conditions
in these documentations, copyright ownership in a work created by the student normally
rests with the student. FE or HE institutes would therefore be better protected if it were to
state in the prospectus or student handbooks that it may own copyright in certain works
created (e.g. databases, software, and thesis publications) by the students. A feasible
option so that both FE or HE institutes and its students reap mutual benefits from this
collaboration would be to allow the student to retain ownership in his work and be
compensated by means of a reward or income and the FE or HE institute to have the rights
to use the work (e.g. to publish the work or to use it as a teaching material).

Infringement of Copyright
Copyright is said to be infringed when one of the exclusive rights of an author is
performed by a party without the consent or authorization of the author. This
infringement is called primary infringement.
Providing accessories for infringing the exclusive rights or assisting in the making
or distribution of infringing copies is also treated as an infringement and is
referred to as secondary infringement.
Library Uses
The making of copies from books in libraries by its users (staff or students) is fair
dealing only if it is made for research or private study for non-commercial
purposes. This would require the user to sign a copyright declaration form.

Remedies against Infringement
There are three kinds of remedies against infringement of copyright, namely:
1. Civil remedies
Injunction damages or account of profit, delivery of infringing copy and damages
for conversion.
2. Criminal remedies
Imprisonment of the accused or imposition of fine or both. Seizure of infringing
copies
3. Administrative remedies
Administrative remedies consist of moving the Registrar of copyrights to ban the
import of infringing copies into India when the infringement is by way of such
importation and the delivery of the confiscated infringing copies to the owner of
the copyright and seeking the delivery.

How to file a Copyright Application?
Classify Work
Determine Ownership
Identify Appropriate Form
Complete Registration Form
Comply with Deposit Requirements
Payment of Fee

Trademarks and Service Marks: A trademark or service mark is a
word, name, symbol, or device used to indicate the source, quality and
ownership of a product or service. A trademark is used in the marketing is
recognizable sign, design or expression which identifies products or service of a
particular source from those of 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. For the sake of
corporate identity trademarks are also being.
In addition to words, trademarks can also consist of slogans, design, or sounds.
Trademark provides guarantee of quality and consistency of the product or
service they identify. Companies expend a great deal of time, effort and money/
in establishing consumer recognition of and confidence in their marks.

Absolute grounds for refusal of trademark
Sign may be refused on absolute ground if there is lack of distinctiveness,
descriptiveness, generic.
Accordantly to Article 3 of Trade Marks Directive, any application for trademark
protection which can not satisfy the following requirement, will be rejected for absolute
grounds:
A sign must constitute a trademark or capable of graphic representation (Article 3/1. a)
A trademark must have a distinctive character (Article 3/1. b)
Must not be descriptive (Article 3/1. c)
Must not be customary in current language (Article 3/1. d)
A descriptive mark might reveal something about the ingredients of the product, or its
properties, or about the likely users of the product.
Example : “Apple” as a fruit is a ground for refusal of trademarks but “Apple” for
computers can be use as trademark because word apple as no connection with
computers, electric goods.
Relative grounds for refusal of trademark
Sign which is identical or similar kind of goods or services which would create confusion
at the average consumer, with an earlier trademark including the possibility of
association to earlier trademark will not be protected as a trademark base on relative
grounds for refusal.

Procedure for registration of Trade Marks
Stage 1. Search (optional) : A trademark search for identical or similar marks may be conducted
online and on the official website of the Trademarks Registry to determine if the mark is
available.
Stage 2. Filing : If it is determined that no similar Trademark has been identified, a trademark
application is filed for the specification of goods/services for which it is being used or is
proposed to be used.
Stage 3. Examination Report: The trademark application is examined by the Trade Marks Office
in about two to four (2-4) months” time from the filing date and objections, if any, are raised.
These objections can either be raised on:
If no objections are raised, the mark shall directly be allowed to be advertised. (Stage 5)
Stage4. Response to Examination Report : If an examination report is issued, a response must
be filed within one (1) month from the receipt of the examination report failing which the
application is “deemed to have been abandoned” by the Applicant. If the Trade Marks Office is
convinced with the response filed, the application is advertised in the Trademarks Journal.
Alternatively, in case the Examiner has further objections, a show cause hearing would be
offered to the Applicant.

Stage 5. Advertisement : After examination, if the Examiner is satisfied with the
response filed to the objection/s, the trade mark application is advertised in the
Trademarks Journal. The Trade Marks Journal is hosted weekly on the official website.
Stage 6. Opposition : Once advertised, the trademark is open for opposition purposes
for a period of four (4) months. Incase no opposition is filed within this stipulated time
period, the mark proceeds to registration.
Stage 7. Registration & Renewal : The application shall proceed to registration if the
trademark application is not opposed within 4 months from the date of advertisement in
the Trade Marks Journal. The Trade Mark Registry will then issue a soft copy of the
Registration certificate. The mark is registered for a period of 10 years from the date of
filing of the application and can be renewed from time to time on payment of renewal
fees. Each renewal term is for a period of 10 years.

Land Marks Case in Trademarks Act

ASSIGNMENT OF A TRADEMARK
Assignment of a trademark occurs when the ownership of such mark as such, is
transferred from one party to another whether along with or without the goodwill of
the business. In case of a registered Trademark, such assignment is required to be
recorded in the Register of trade marks.
A mark may be assigned or transferred to another entity in any of the following
manners:
Complete Assignment to another entity- The owner transfers all its rights with respect
to a mark to another entity, including the transfer of the rights such as right to further
transfer, to earn royalties, etc. (E.g. X, the proprietor of a brand, sells his mark
completely through an agreement to Y. After this X does not retain any rights with
respect to the brand)

Assignment to another entity but with respect to only some of the goods/ services-
The transfer of ownership is restricted to specific products or services only. (E.g. P, the
proprietor of a brand used for jams and jellies and dairy products. P assigns the rights
in the brand with respect to only dairy products to Q and retains the rights in the
brand with respect to jams and jellies.) This is called partial assignment.
Assignment with goodwill- Such assignment is where the rights and value of a
trademark as associated with the product is also transferred to another entity.(E.g. 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.)

Assignment without goodwill- Such assignment also referred to as gross
assignment, is where the owner of the brand restricts the right of the buyer and
does not allow him to use such brand for the products being used by the original
owner. Thus, the goodwill attached to such brand with respect to the product
already being sold under such brand, is not transferred to the buyer. (E.g. 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.). In many jurisdictions like United States, assignment of mark without
goodwill is not allowed at all. India on the other hand allows assignment without
goodwill.

TRADEMARK LICENSING
The licensing of a mark is to allow others to use the mark without assigning the
ownership and the same may be done for all or some of the goods and services
covered. The Trademarks Act does not mention the term 'License', the concept
under the Act is mentioned as that of a 'Registered User'.
Trademark licensing is advantageous to both the parties. While the licensor enjoys
its rights to the mark by getting the royalties for its use, the licensee is able to
expand its market operations by using the brand and developing its reputation.
In case of Licensing, the licensor is open to license the rights over the trademark in
manner it may like. The Licensor can restrict the rights of the licensee in a
trademark or brand with respect to the products or services wherein the licensee
can use such brand, with respect to time for which it can use such mark, with
respect to area within which it can use such mark etc.

Trademark Infringement And Remedies
Trademark infringement is a violation of the exclusive rights attaching to a registered
trademark without the authorization of the trademark owner or any licensees
(provided that such authorization was within the scope of the license). Infringement
may occur when the infringer (i.e. the person doing the infringing act), uses a
trademark which is identical or confusingly similar to a registered trademark owned
by another person, in relation to products or services which are identical or similar to
the products or services which the registration covers. The owner of such registered
trademark may commence legal proceedings against the infringer.
Trademark infringement is an infringement of exclusive rights attaching to a
trademark without the authorization of the trademark owner or any licensee.
Trademark infringement typically occurs when a person uses a trademark which
may be either a symbol or a design, with resembles to the products owned by the
other party. The trademark owner may begin an officially permitted proceeding
against a party, which infringes its registration.

There are two types of remedies are available to the owner of a trademark for
unauthorized use of its imitation by a third party.
An Infringement Action: an infringement action is a statutory remedy.
An Action of passing off: an action for passing off is a common law remedy
Civil remedies in Trademark:
# Injunction/ stay against the use of the trademark
# Damages can be claimed
# Accounts and handing over of profits
# Appointment of local commissioner by the court for custody/ sealing of infringing
material / accounts
# Application under order 39 rule 1 & 2 of the CPC for grant of temporary / ad interim
ex-parte injunction

Organization of an IPAB Bench: Each Bench of the IPAB includes a Judicial Member and a
Technical Member. The qualifications for appointment as a technical member of the IPAB
are mentioned in The Trade Marks Act and the Patents Act.
Jurisdiction: Appeals from the decision of the Controller to the IPAB must be made within
three months from the date of the decision/ order or direction, according to the, or within
such further time as the IPAB permits, with the appropriate fees.
An extension is available for filing the appeal by way of a Condonation of Delay (COD)
petition. The pre-requisite for filing COD is that there must be genuine reasons of delay,
along with the prescribed official fees.

The IPAB has appellate jurisdiction against the decision of the Controller or Central
Government of India in following matters:
Any decisions related to inventor names
Any directions given to co-owners of the patent
Any decisions related to Patent of Addition
Any orders relating to divisional application
Any orders relating to dating of application
Refusal of application for failure to comply with any provisions of the Act
Any decisions relating to anticipation
Any decisions and cases of potential infringement.
In respect to a correction of clerical errors.
Any decisions related to compulsory license of a patent.
Any decisions related to revocation of patent for non-working.
Any decisions relating to substitution of applicants.
Any decision in respect to any amendment/revocation of patent.
Any decisions related to amendment of application and specification.
Any decisions related to restoration of lapsed patents.
Any decisions related to surrender of patents.
In respect to revocation of patents to satisfy public interest.
In respect to any registration of patent assignments.

Exclusive Jurisdiction: The Appellate Board can receive, hear and dispose all
appeals from any order or decision of the Controller and all cases related to
the revocation of a patent, rectification of register; other than through a
counter-claim in a suit for infringement. IPAB has the authority to proceed
with the matter either de novo or from the stage at which it was transferred
on appeal. The jurisdiction to hear patent infringement cases continues with
the High Courts.
The IPAB is the sole authority to exercise the powers and adjudicate
proceedings arising from an appeal against an order or decision of the
Controller.

Introduction:
 Patent usually refers to the right granted to anyone who invents any new, useful,
and non-obvious process, machine, article of manufacture, or composition of matter.
Patent is an exclusive right given by a country to the owner of an invention to make,
use, manufacturing and market the invention.
Exclusive right implies that no one else can make, use, manufacture or market the
invention without the consent of the patent holder.
The law relating to patents in India is governed by Indian Patents Act, 1970 as
amended by Patents (Amendment) Act, 1999 and Patents (Amendment) Act,
2002,which came into force with effect from May 2, 2003. In our discussion, we will
refer to this act as the Indian Patents Act (IPA).
A patent is an exclusive monopoly grant by the govt. of an inventor over his
invention for limited period of time

Criteria for patent Application
Patent applications must satisfy the following three criteria:
Novelty
novelty or new invention is defined under Section 2(l) of the Patents Act as "any invention or
technology which has not been anticipated by publication in any document or used in the
country or elsewhere in the world before the date of filing 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".
Inventive step or Non-Obviousness
Inventive step is defined under Section 2(ja) of the Patents Act as "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".
This means that the invention must not be obvious to a person skilled in the same field as the
invention relates to. It must be inventive and not obvious to a person skilled in the same field.
Industrial applicability
Industrial applicability is defined under Section 2(ac) of the Patents Act as "the invention is
capable of being made or used in an industry". This essentially means that the invention cannot
exist in abstract. It must be capable of being applied in any industry, which means that the
invention must have practical utility in order to be patentable.

Inventions Not Patentable in India
(a) Inventions that are frivolous and contrary to natural laws.
b) Inventions which go against public morality
(c) Inventions that are a mere discovery of something that already exists in nature.
(d) The mere discovery of a form already existing in nature does not lead to enhancement
of efficacy.
(e) Mere admixing of mixtures leading in the aggregation of properties are non-
patentable.
(f) Mere aggregation or duplication of devices working in a known way is not an invention.
(h) Horticulture or agricultural method is non-patentable.
(i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in human
and animals are non-patentable.
(j) Essential biological processes for the production or propagation of animals and plants is
not an invention.
(k) Simple mathematical or business or computer programs are not an invention.
(l) Aesthetic creation is not an invention.
(m) Mental act, rule or method is not an invention.
(n) Presentation of information is non-patentable.
(o) The topography of integrated circuits is non-patentable
(p) Traditional Knowledge is not an invention.
(q) Atomic-Energy inventions are non -patentable.

Who is Patentee?
Patentee is a person for the time being entered in the register of patents as the
grantee or proprietor of patent. Patentee is the one to whom patent has been
granted. Patentee is entitled to deal with his such property in the same manner as
the owner of any other movable property deals with his property.

Rights of the patentee are enshrined under section 48 of the Patents Act, 1970.
All rights granted to patentee are conditional which are imposed under section 47
of the Act.
Such conditions are :
1. Manufacture or import of the patented invention may be made by the
government for the purpose of its own use.
2. Any process in respect of which the patent is granted may be used by or on
behalf of the government for the purpose merely of its own use.
3. Any patented process/product may be used for the purpose of experiment or
research or imparting of knowledge to pupils.
4. In case of a patent in respect of any medicine or drug, the medicine or drug may
be imported by the government for the purpose merely of its own use or for
distribution in any dispensary , hospital or other medical institution maintained
by or on behalf of the government.
Rights of Patentee

Patentee has been enshrined with following rights :
Where the patent is for a product, the exclusive right to prevent third parties,
who do not have his consent, from act of making, using, offering for sale, selling or
importing for those purposes that product in India.
Where the subject matter of patent is a process, the exclusive right to prevent
third parties, who do not have his consent, from the act of using that process, and
from the act of using, offering for sale, selling or importing for those purposes the
product obtained directly by that process in India.

The rights conferred under the Act are:
To exploit the patent.
To license the patent to another (sec.70).
To assign the patent to another (sec.70).
To surrender the patent to another(sec.63).
To sue for the infringement of the patent.

Limitations:
The Act provides certain limitations on the exercise of rights.
They are:
1) Government use of patent.
2) 2) Compulsory licenses.
3) 3) Use of inventions for Defense purposes. 4) Revocation for non working of
patents. 5) Restored patents.

Government use of patent:
• Section 100 of the provides that at any time after the application for a patent
had been filed at the patent office or patent has been granted, the central
government may use the invention for government purposes.
• May be used or even acquired for its own use.
• Can do without consent of patentee or even without payment of royalties.
• Includes right to sell.
Compulsory licenses •
Section 84 stipulates that at any time after the expiration of three years from the
date of grant of patent, any interested person may make an application to the
controller for grant of compulsory license on patent, if the patent is not worked
satisfactorily to meet the reasonable requirements of the public, at a reasonable
price.

Use of inventions for defence purposes
• Such patents may be subject to certain secrecy provisions.
Revocation for non working of patents
• A patent may be revoked in cases where there has been no work or unsatisfactory
result to the demand of public in respect of patented invention.
Revocation for non working of patents
• A patent may be revoked in cases where there has been no work or unsatisfactory
result to the demand of public in respect of patented invention.

Direct patent infringement means the marketing, sale, or commercial use of an exact
patented item or invention that performs substantially the identical function.
Direct infringement may be literal or non-literal.
a) Literal Infringement
Literal infringement, as the name suggests, occurs when each and every component
claimed in patent specification has been used in alleged infringing
product/device or process. Accused product or process falls directly within the scope
of patent claims.
b) Non-literal infringement [Doctrine of equivalence]
In case of non-literal infringement, patent infringement is not literally directed to
what is claimed in the patent specification but the infringing device or process may
be similar or equivalent to the claimed invention. For example, if the patented
process uses ethanol and the infringer is using butanol to avoid infringement of
patent, it will be still considered as infringement under doctrine of equivalence
because both ethanol and butanol belongs to the same family of alcohols and both
forms of alcohols might perform the same function to obtain similar or same results.
In such a case, even if there is no literal infringement, a claim may be infringed under
the doctrine of equivalents, if some other element of the accused device or process:
performs substantially the same function,
in substantially the same way,
to achieve substantially the same result
(Triple Identity Test).

2. Indirect Infringement
indirect infringement, third party might actively induce, encourage or materially contribute
to the infringing activity. Such third party might be direct infringer.
Indirect patent infringement is of two types, induced and contributory.
a) Induced Infringement: In case of Induced infringement, one actively and knowingly
induces the other person to infringe a patent by encouraging, assisting, aiding,
inducing him/her to do so. A potential inducer of infringement is aware of existence
of the patent as well as intend for their actions to result in a third party infringing that
patent.
b) Contributory Infringement Contributory infringement happens when there is an
intentional participation or assistance by one party in an act of infringement to the other
party making them vicariously liable for the acts of the infringer. Contributory infringement
is a type of indirect infringement, where a person or corporation is held liable for
infringement even if they have not actively participated in infringing activities.

Exceptions to infringement of patent
Section 107A of Indian Patents Act
Any act of making, constructing, using, selling or importing a patented invention
solely for uses reasonably related to the development and submission of information
required under any Indian law or law of a country other than India, that regulates the
manufacture, construction, use, sale or import of any product.
once the patent specifications are made available to public by publication, third
parties are permitted to use such information to conduct experiments for the
purposes of doing further developments on the patent. This provision is more or
less applicable to drug manufacturers who can make use of this provision to conduct
extensive research on a patented product. This will enable them to produce and
market their new product at the expiry of the original patent.
“Importation of patented products by any person from a person, who is duly
authorized under the law to produce and sell or distribute the product, shall not be
considered as an infringement of patent rights”

Remedies in case of Infringement
The claim of patent by the patentee during the lawsuits are being tested for innovativeness and
patentability of the patent. If the court is not convinced with these aspects, in many cases, the
patent claim of patent applicant was dismissed by Indian judiciary. However, if the patent right is
established by the patentee, by establishing three essential elements like prima facie case,
irreparable injury and balance of convenience, in such cases, injunction orders were passed by
the courts to prevent the infringement; and suitable remedies to protect the patent rights were
also passed in various patent infringement.
In the case of infringement of the patent, there can be a suit filed in the appropriate court,
which may be a District Court or a High Court. In case a patent infringement suit is filed in a
district court and a counter claim is filed by a defendant, the patent infringement suit is
transferred to a High Court. In the infringement suit, the plaintiff can seek an injunction and
damages or order for an account for profits from the potential infringer of the patent. Where
the defendant proves that at the time of infringement, he was not aware of and had no
reasonable grounds to believe that the patent existed, an order for damages or accounts for
profits is not granted. Therefore, the patentee should take steps to convey to the general public
that his product or process is patented. In an infringement suit, infringing goods, materials, and
equipment used for their production can be seized, forfeited, or destroyed. The courts can
appoint suo motu or on application of a party to the suit, scientific advisors to assist the court or
to submit a report on a specified question. The Patents Act does not provide for criminal action
in case of patent infringement.

Geographical Indication:
A geographical indication (GI) is a sign used on products that have a specific
geographical origin and possess qualities or a reputation that are due to that origin. In
order to function as a GI, a sign must identify a product as originating in a given place. In
addition, the qualities, characteristics or reputation of the product should be essentially
due to the place of origin. Since the qualities depend on the geographical place of
production, there is a clear link between the product and its original place of
production.

Difference between a geographical indication and a trademark
Trademark is a sign, name, or identity of a
business concern that is used to differentiate
the goods or services of one entity from that
of another. A car is still a car, but can be
distinguished on the basis of the
manufacturer’s trademark. For example, the
BMW and Audi are the trademarks of the
individual car manufacturers.
In GI, the name signifies the place of origin
of the good and any manufacturer in that
geographical location can use the GI for the
specific good. E.g. Darjeeling tea, Swiss
cheese, Tirupati Laddu. Etc.
A Trademark is registered by a single entity. A GI is basically a collective protection given
to a group of manufacturers belonging to the
specific location, where the good has first
originated.
every manufacturer or producer in the same
region are allowed to use the same
geographical indication.
While only one person or manufacturer can
use a trademark registered in his/her name
and address
A trademark can be a letter, a word,
numerals or simply a number, or a
combination of letters and numbers, an
abbreviation, a name, a device, a hologram, a
sound or a smell
A geographical indication can only be a name
or a symbol related to places

A trademark is developed by human
creativity. It is the human creativity or
intellect that determines the distinctiveness
or the uniqueness of a trademark. A
trademark can be Suggestive, descriptive or
arbitrary
a GI identifies the product on basis of its
place of origin. Factors such as the
topography, human work, climate etc of a
specific geographical location determines
the nature of the GI.
Trademarks are governed by the Indian
Trademarks Act 1999
GIs are governed by the Geographical
Indications of Goods (Registration and
protection) Act 1999.
Example: BMW, Audi, ITC, Reliance etc. Example: Goa Feni, Kolhapuri Chappal,
Darjeeling Tea etc.
Cont...

Procedure for Registration of GI
STEP 1 : Filing of application
STEP 2 and 3: Preliminary scrutiny and
examination
STEP 4: Show cause notice
STEP 5: Publication in the geographical
indications Journal
STEP 6: Opposition to Registration
STEP 7: Registration
STEP 8: Renewal
STEP 9: Additional protection to notified
goods
STEP 10: Appeal
A registered GI shall
be valid for 10 years
and can be renewed
on payment of
renewal fee.

A Design refers to the features of shape, configuration, pattern, ornamentation or
composition of lines or colours applied to any article, whether in two or three
dimensional (or both) forms. This may be applied by any industrial process or means
(manual, mechanical or chemical) separately or by a combined process, which in the
finished article appeals to and judged solely by the eye.
Design does not include any mode or principle of construction or anything which is a
mere mechanical device. It also does not include any trade mark or any artistic work.
Industrial Design

 A design should:
 Be new or original
 Not been disclosed to the public anywhere by publication in tangible from or by use
or in any other way prior to the filling date, or where applicable, the priority date of
the application for registration.
 Be significantly distinguishable from known designs or combination of known
designs.
 Not comprise or contain scandalous or obscene matter.
 Not be a mere mechanical contrivance.
 Be applied to an article and should appeal to the eye.
 Not be contrary to public order or morality.
 Not be prejudicial to the security of India
Essential Requirement for Registration

Benefits of Design Registration
 A registered proprietor of the design is entitled for protection of his intellectual
property.
 He can take step against infringement, if his right is infringed by any person.
 He can license or sell his design as legal property for a consideration or royalty.
Registration initially confers this right for ten years from the date of registration.
 It is renewable for a further period of five years.

Designs that are primarily literary or artistic character are not protected under the
Designs Act. These will include :
 books, calendars, certificates, forms-and other documents, dressmaking patterns,
greeting cards, leaflets, maps and plan cards, postcards, stamps, medals.
 labels, tokens, cards, cartoons.
 any principle or mode of construction of an article.
 mere mechanical contrivance.
 buildings and structures.
 parts of articles not manufactured and sold separately.
 variations commonly used in the trade.
 mere workshop alterations of components of an assembly.
 mere change in size of article.
 flags, emblems or signs of any country.
 layout designs of integrated circuits.
Exclusion from scope of design

Plant Variety Protection
Plant variety protection, also called a "plant breeder's right" (PBR), is a form
of intellectual property right granted to the breeder of a new plant variety .
According to this right, certain acts concerning the exploitation of the
protected variety require the prior authorization of the breeder. Plant variety
protection is an independent sui generis form of protection, tailored to protect
new plant varieties and has certain features in common with other intellectual
property rights.

CRITERIA FOR REGISTRATION OF A VARIETY:
Novel: If at the date of filing an application for registration for protection, the propagating
or harvested material of such variety has not been sold or otherwise disposed of in India
earlier than one year or outside India, in the case of trees or vines earlier than six years,
or in any other case earlier than four years, before the date of filing such application.
Distinct: A variety is said to be distinct if it is clearly distinguishable by atleast one
essential characteristic from any other variety whose existence is a matter of common
knowledge in any country at the time of filing an application.
Uniform: A variety is said to be uniform, if subject to the variation that may be expected
from the particular features of its propagation it is sufficiently uniform in its essential
characteristics.
Stable: A variety is said to be stable if its essential characteristics remain unchanged
after repeated propagation or, in the case of a particular cycle of propagation, at the end
of each such cycle.

Farmers’ Variety
“Farmers’ Variety” means a variety which-
(i) has been traditionally cultivated and evolved
by the farmers in their fields; or
(ii) is a wild relative or land race of a variety about
which the farmers possess the common
knowledge;

Farmers’ rights
(i) a farmer who has bred or developed a new variety shall be entitled for registration and
other protection in like manner as a breeder of a variety under this Act;
(ii) the farmers’ variety shall be entitled for registration if the application contains
declaration as specified in clause (h) or sub-section (1) of section 18;
(iii) a farmer who is engaged in the conservation of genetic resources of land races and wild
relatives of economic plants and their improvement through selection and preservation
shall be entitled in the prescribed manner for recognition and reward from the Gene
Fund. Provided that material so selected and preserved has been used as donors of
genes in varieties registrable under this Act;
(iv) a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell
his farm produce including seed of a variety protected under this Act in the same
manner as he was entitled before the coming into force of this Act

USE OF Plant Variety Protection FOR
BENEFIT – SHARING
 Effective technology transfer
 mainly for agriculture development and growth
 Enable competitiveness of the agriculture sector
 Contribute cultivars that are important for food security
 Incentivize innovation through:
• Further investments into Research and Development
• Providing a share of the revenue generated to inventor
• Stimulate enterprise development
• Facilitate access to poor farmers for development

Intellectual Property Rights

Recomendados

Recomendados

Mais conteúdo relacionado

Mais procurados

Mais procurados (20)

Semelhante a Intellectual Property Rights

Semelhante a Intellectual Property Rights (20)

Último

Último (20)

Intellectual Property Rights