INTELLECTUAL PROPERTY

RIGHTS

Intellectual Property

What is Property?

any asset or thing that is owned by a person or entity: tangible or intangible.

When does a property called “intellectual” property?

when it is the result of human mind/intellect/thinking process

Therefore, Intellectual Property (IP) is a legal term that refers to creations of thehuman mind and human intellect, such as inventions; literary and artistic works;designs; and symbols, names and images used in commerce.

It is even shown in Balance Sheets of the companies under “Intangible Assets” andholds a great value for the company and its goodwill.

INTELLECTUAL PROPERTY RIGHTS

IP is protected in law by, for example, patents, copyrights and trademarks,which enable people to earn recognition or financial benefit from what theyinvent or create.

Intellectual property rights are the rights given to persons over the creations oftheir minds. They usually give the creator an exclusive right over the use ofhis/her creation for a certain period of time.

WIPO(World Intellectual Property Organization) is an international organizationwhich aims to promote innovation and creativity for the social, economic &cultural development of all countries.

IPRs’ India website: www.ipindia.nic.in

Kinds of IP:

1. Industrial Property

i) Patents

ii) Trademarks

iii) Industrial Designs, Geographical Indication, Trade Secrets etc.

2. Copyrights

Please note that IPRs are not granted for the idea only but are granted for the expression of idea. For example, copyright will not be granted for the poem that a poet has just thought or created in his mind but will be granted if the poet expresses it by writing or narrating. Similarly a person will not be granted a patent if he has the idea to invent but will be granted if he expresses that idea in the form of a product(invention).

PATENTS ACT, 1970

A patent is a statutory right granted to a person by the government, which givesan exclusive privilege of making, selling and using the invention for a limited periodof time.

Terminology

Invention: It means a new product or process involving an inventive step judged by3 main criteria

Innovation: Innovation includes creativity and value addition in existing creationsand includes all intellectual properties like inventions, designs, brand name or logo,literature, drama, music, artistic things etc.

Patent of addition: where an application is made for a patent in respect of anyimprovement or modification of an invention described in the completespecification, he may be granted the patent for the improvement or modificationas a “patent of addition”

Criteria for a product for being

patentable

1. Relates to a process or product or both

2. Novelty or New invention : The matter disclosed in the specification is not

published in India or elsewhere before the date of filing of the patent

application in India.

3. Inventive step : The invention is not obvious to a person skilled in the light ofthe prior publication/knowledge/document.

4. Industrial application : The invention can be made or used in any kind of

industry. It means it can be commercially exploited.

5. Not fall under Sec. 3 and 4

Duration and validity of a patent

The patent is granted for a period of 20 years from the date of filing

patent application. And it can not be extended or renewed after the

expiration.

Patent is a territorial right. Therefore, it is effective only within the territory of

India and separate patents should be obtained in each country where

the applicant requires protection of his invention. He can do so by filing

an international application under PCT(Patent Cooperation Treaty). There

is no patent valid worldwide.

The patent offices located at Kolkata, Chennai, Mumbai & New Delhi act

as receiving offices for patent applications.

Persons entitled to make application

for Patent

An application for patent can be made by any of the following persons:

a) By any person claiming to be the true and first inventor in respect of the

invention

b) By the legal representative of any deceased person who immediately

before his death was entitled to make such an application

c) By any person being the assignee or agent of the person claiming to be

the first inventor of the invention.

Requirement of registration

Why to register a Patent ?

Exclusive rights: Patents provide you with an exclusive right to prevent orstop others from commercially exploiting an invention for twenty years

from the date of filing of the patent application.

Return on investments: Having invested a considerable amount of money

and time in developing innovative products, through exclusive patent

rights, you may be able to establish yourself in the market as the pre-

eminent player and to obtain higher returns on investments.

Opportunity to license or sell the invention: If you choose not to exploit the

patent yourself, you may sell it or license the commercialization of the

patented invention to another enterprise, which could then be a source

of income for your company.

Increase in negotiating power: If your company is in the process ofacquiring the rights to use the patents of another enterprise through alicensing contract, your patent portfolio will enhance your bargainingpower. That is to say, your patents may prove to be of considerableinterest to the enterprise with which you are negotiating, and you couldenter into a cross-licensing arrangement where, simply put, your enterpriseand the other agree to license respective patents to each other.

Positive image for your enterprise: Business partners, investors andshareholders may perceive patent portfolios as a demonstration of thehigh level of expertise, specialization, and technological capacity withinyour company. This may prove useful for raising funds, finding businesspartners and raising your company’s market value.

Process to register a patent?

Patent application can be filed by the person entitled to make application or by the “Patent Attorney” or“Patent Agent”

Application for Patent along with all the prescribed documents shall be filed with the Patent Office havingthe appropriate jurisdiction.

The application should consist :

i. title of the invention along with complete specifications which should sufficiently and clearly describe thematerial information about the invention (usually accompanied by visual materials such as drawings, plans, ordiagrams)

ii. disclose the best method of performing the invention which is known to the applicant

iii. should describe the method of operation/use, technical information and scope of the invention

Patent of Addition, is an another kind of application which may be filed subsequent to the Filing of anApplication for Patent, for an improvement or modification.

Publication: Application is kept secret for a period of 18 months from the date of filing. In 19th month, the application is published in the official journal which is made available on the website. (applicant has an option to get his application published before 18 months also)

Request for examination: Application is examined on request which can be made within 48 months from the date of filing. Then examiner gives examination report whether the claim is not prohibited and whether the invention meets the criteria of patentability. Then he submits the report to the Controller.

FER: First Examination Report containing list of the objections is issued. Then applicant has to meet the objections within 12 months of FER issue. If objections are met, grant of patent is approved by the Controller.

Post-grant Opposition: After publication, an opposition can be filed within 1 year. A period of 2 months is allowed for receipt of response against opposition.

Then Controller may either reject the opposition and grant the patent or accept the opposition and modify/reject the patent application.

A certificate of patent is issued within 7 days. Grant of patent is published in the official journal.

Renewal of Patent: No fee for 1st and 2nd year but renewal fee is required to be paid in the subsequent years to avoid the lapse of patent.

If an employee has invented a new product or process: Who will own the

rights to the patent?

In most countries, if an employee has developed an invention in execution of his/heremployment contract – i.e. usually during his/her working time within the enterprise – theinvention (and the related patent rights) will belong to the enterprise. To avoid confusion andpossible disputes, employers often specify issues of intellectual property ownership inemployment contracts. Depending on the merits of the case, the employee may, however,have a right to equitable remuneration in accordance with legislative provisions or theemployment contract. In any case, the employee will always retain the right to be mentionedas the inventor, unless he/she expressly renounces this right.

Infringement of a patent

Patent infringement is the commission of a prohibited act with respect to a patented invention without permissionfrom the patent holder. It occurs when someone violates the patent rights an inventor has in invention by making,using or selling the invention without the patent owner’s permission(or if the patent has been licensed), in a waynot permitted by the license.

Types of infringement:

1. Direct infringement- directly states that the third party has intentionally stole the technology from the inventorwithout permission. It occurs when someone directly makes, uses or sells the patented invention.

2. Indirect infringement- it refers to the unfair trade practice that does not give a clear indication that patent is bought &sold in the market. It occurs, for instance, when a device is claimed in a patent and a 3rd party supplies a product whichcan only be reasonably used to make the claimed device.

How to judge Patent Infringement

Doctrine of equivalents- new device or process violates an existing patent if the new invention does the same work in a substantially similar way to achieve the same results

Doctrine of complete coverage- describing the complete requirements

Doctrine of compromise- agreement between 2 parties to settle differences between them by mutual concessions

Doctrine of estoppel- used in certain situations to prevent a person from relying upon certain facts which are different from an earlier set of facts

Doctrine of superfluity- a claim construction should not render a phrase superfluous (unneccesary)

Remedies for infringement

Monetary relief:

1. Compensatory damages- patent owner may recover the lost profits on infringement

2. Increased damages- upto 3 times the compensatory damages can be recovered incase of direct infringement

Equitable relief:

1. Preliminary injunction- temporary order by court that prevents the other party frompursuing a particular course of conduct until the conclusion of case

2. Permanent injunction- final order of a court that a person or entity refrain from certainactivities permanently

Cost & Attorney’s fees

Costs are typically recoverable and in rare cases where there is wilful infringement, so areattorney’s fees

TRADEMARKS ACT, 1999

Trademark is a mark capable of being represented graphically and

which is capable of distinguishing the goods or services of one person

from those of others. It includes word, sign, name, numerals, logo, label,

shape of goods, their packaging and combination of colours.

Functions of Trademarks

1. identifies goods and services

2. guarantees its unchanged quality

3. advertises the goods or services

4. creates an image for the goods or services

Trademark in India is classified under 45 different classes.

Kinds of Trademark

Standard

Registered trademark, Service mark, Trade dress,

Unregistered trademark

Non-standard

Certification marks, Chartered marks, Collective

trademarks, Electronic registration marks,

Non-conventional

Colour trademarks, Hologram trademarks, Motion

trademarks, Scent trademarks, Shape trademarks,

Sound trademarks

Related

Brand, Emblem, Logo

Important terms

Certified trademark- it means a mark used in the course of trade which arecertified by the proprietor of the mark in respect of origin, material, quality,accuracy or other characteristics

Well-known trademark- it means a mark which has become so popular to thelarge segment of public who use such goods or services that the use of suchmark in relation to other goods or services would be likely to be taken asindicating a connection with the first mentioned goods or services.

Collective trademark- it is a trademark owned by an organization orAssociation of persons, whose members use it to identify themselves with alevel of quality, geographical origin, or other characteristics set by theorganization. Non-compliance of such rules may invoke penalty also.Examples are “CA” “CS” “CMA” “Dr.”

Non-registrable trademark

A mark shall not be registered as a trademark if-

1. The mark is likely to deceive the public or cause confusion.

2. The matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class orsection of the citizens of India.

3. It contains or comprises of scandalous or obscene matter.

4. Its use is prohibited under the Emblems and Names Act,1950

Even, a trade mark which is identical with or similar to an earlier trade mark and is to be registered forgood or services which are not similar to those for which the earlier trade mark is registered and thatregistered trade mark has a reputation in India, shall not be registered.

Duration & Renewal of Trademark

The trademark is granted for a period of 10 years.

It can be further renewed for another period of 10 years.

The registration of trademark is not compulsory in India but it is advisable to do so.

If trademark is not used within 5 years from the date of registration, then it becomesliable to be removed from the register of trademarks. But if non-use of trademark is dueto special circumstances in the trade which may include restrictions imposed by any lawor regulation on the use of trademark in India, it will be protected from being removed.

Process to register a trademark

The mark should be used or proposed to be used in relation to the goods or services.

1. Trademark application filing- any person claiming to be the proprietor of the mark shall apply in writing to theregistrar in the prescribed manner along with the fee for registration of his mark.

2. Examination report by the registry-an examination report is usually issued within 3 months to one year dependingupon the backlog of the registry

3. Reply to examination report- a reply to an examination report has to be filed within a period of 1 month from thereceipt thereof. If the registry is satisfied with the reply, the application shall proceed for advertisement in theTrademarks Journal.

4. Advertisement in Indian Trademarks journal-an application is advertised in the Trademarks Journal so as to invite thepublic for filing an opposition for the mark.

5. Opposition- the time period to file a notice of opposition is 4 months from the date the Trademarks Journal in whichthe mark has been advertised, has been made available to the public.

6. Registration- where no opposition is filed within the specified time, the application shall proceed to registration.

Passing-off

It occurs in the case of unregistered brand names. Here the owner has the preferred rightover the brand due to long & continuous use of that brand. Since the brand beingunregistered, the suit for infringement can not be initiated. In such situation, passing offis an alternate remedy & can be initiated in the appropriate court of law & can bebrought by the owner or the user of that brand against another person.

It is to be noted that here the owner has a greater burden firstly to prove his ownershipand then actual misuse & actual damage has to be proved for any relief of passing off.

COPYRIGHTS ACT, 1957

Nature of copyrights

Creativity being the key stone of progress, no civilized society can afford to ignore the basicrequirement of increasing the same. Economic & social development of the society is dependent oncreativity.

Copyright protects and rewards creativity. It is an exclusive right that protects original literary, dramatic, musical, artistic work, cinematographic films & sound recordings from unauthorized uses.

"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) work of architecture; and

(iii) any other work of artistic craftsmanship;

It is the only IPR that is valid worldwide as soon as the property comes into existence without anyrequirement of registration anywhere, though registration can be made.

Duration of different forms of copyright

In case of literary(including computer programs), dramatic, musical or artistic work, copyrightprotection is given for the lifetime of the author + 60 years after his death. In case of jointauthorship, the term of copyright will start from the author who dies last.

If any performer appears or engages in any performance, he has a special right in relation tosuch performance called “performers right” to be enjoyed for a period of 50 years.

In case of cinematographic films, sound recording etc. term of protection is 60 years from thebeginning of the next calendar year following the year in which the work has been firstpublished.

For a broadcasting organization, a period of 25 years from the beginning of the calendar yearfollowing the year in which the broadcast is made.

Author and co-ownership

Where two or more people have created a single work protected by copyright and the contribution of eachauthor is not distinct from that of the other(s), those people may be considered joint owners.

Joint ownership might arise, for example, if a person was commissioned to create a website together withone of the company’s employees. It is likely that both the person being commissioned and the companywould be joint first owners of copyright in the website. If someone wanted to copy or use a work of jointownership in some way, all of the owners would have to agree to such a request, otherwise aninfringement of copyright could still occur.

On the other hand where individual contributions are distinct or separate, each person would be theauthor of the part they created (for instance where the music and lyrics of a song are created by twodifferent people). In these circumstances, if you wished to use just the lyrics you would only need thepermission of the copyright owner of the lyrics.

Rights conferred by Copyrights

Moral rights: right to disclose the work, to withdraw it from the public, to have his name indicated on the work and to prevent any distortion, mutilation or any other modification of the work, which would be prejudicial to the author's honour or reputation

Economic rights: reproduction, its distribution, its public performance, its communication to the public by broadcasting or in any other manner, its retransmission, its alteration and its exhibition. The author is entitled to remuneration for the use of the work and he can waive it only by an express statement to that end.

Assignment & Transmission of

Copyrights

The owner of the copyright is entitled to assign(sell) the copyright either wholly or partly & to get effectual receipts of consideration.

Assignment of the copyright can be done for existing work as well as future work. Assignment of copyright for the future work shall take effect only when the work comes into existence.

The assignment of copyright in any work should be in writing & signed by the assigner or his duly authorized agent.

The assignment should identify such work, specify the rights assigned, duration, territorial extent of such assignment, amount of royalty & other consideration payable to the owner or his legal representative and the assignment is subject to extension, revision or termination on the terms mutually agreed upon by the parties.

Where the assignee doesn’t exercise the rights assigned to him within a period of 1 year from the date ofassignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry ofsaid period unless otherwise specified in the assignment.

Transmission: Where under a bequest(legacy) a person is entitled to the manuscript of a literary, dramatic or musical work, or to an artistic work, and the work was not published before the death of the testator, the bequest shall, unless the contrary intention is indicated in the testator’s will thereto, be construed as including the copyright in the work in so far as the testator was the owner of the copyright immediately before his death.

Infringement of copyrights

If any person without authorization from the owner or without any license or in contravention of the conditions of the license so granted, exercise any right in respect of the work which has the copyright protection, it constitutes an infringement of copyright.

Following are some of the commonly known activities involving infringement of copyright:

1. making infringing copies for sale

2. public exhibition of infringing copies

3. Importation of infringing copies to India

4. using any place for the performance of work in public without consent where such performance constitutes infringement of copyright.

Remedies for infringement

One can institute suit under Civil, criminal law and administrative law

a) Civil remedy- one may file for injunction, damages and accounts rendition, delivery of infringing copies and damages for conversion.

b) Criminal remedy- one may file for imprisonment and fine, seizure of infringing copies and delivery of them to the owner.

c) Administrative remedy- one may file for moving the Registrar to ban the import of infringing copies and delivery of the confiscated infringing copies to the owner