IPRs an overview

S.K. Soam

Head, ICM Division

National Academy of Agricultural Research Management, Hyderabad

soam@naarm.ernet.in

IP Forms

• Patents• Trademark• Copyrights and related issues• Industrial design• Layout-Designs (Topographies) of Integrated Circuits

• Geographical indications• Trade secrets or undisclosed information

• Biodiversity, TK, Plant varieties

Need of IPRs in agriculture- cases of bio-piracy & bioprospecting

• Rice

• Neem

• Haldi

• Wheat

• Jeevani

• Hoodia

Trade Related aspects of Intellectual Property Rights –TRIPS enforcements

Enforcement

Developed

Developing

Developing

LDC LDC

Product Pharma

1Jan1995

1Jan1996

1Jan2000

1Jan2005

1Jan2006

1Jan2016

Issues?

Provisions in TRIPS

TRIPS induced- legal changes in India

• Amendment in Indian patent laws• Registration & protection of geographical

indications (Goods) Act 1999• Protection of plant varieties and farmers’

rights Act 2001 • Biological diversity Act 2002• Trademark Act 1999• Designs Act 2000

Patent (amend)Act 1999

• US-India pharma dispute

• Mail box provisions

• Application for examination after 31 Dec 2004

• EMR provisions

Patent (amend) Act 2002- Patent rules 2003 w.e.f. 20-5-03- salient features

• Definition as per trips (novelty, inventive step, industrial application)- include process and product both. Processes in plants patentable

• Term 20 years (7 years)– Time for restoration of ceased patent 18 months (12)

• Publication after 18 months of filing date/ priority date (12 months)-delayed time- specifications

• Request for Examination (REF) after filing request/fees-48 months

• Provisions of PCT

• Mail box/ EMR- pharma, agrochemicals

• Ground of opposition– Source of geographical origin- biological material– ITK oral or otherwise in India or abroad- TKDL ground of rejection

Patent (amend)Act 2005• Any one can apply for pregrant opposition within 6 month

of date of publication on 11 grounds• Interested persons can apply for post grant opposition• Definition of ‘new invention’• Definition of ‘inventive step’- technical advancement and

economic significance• Software per se not patentable• Publication before 18 months of filing date/ priority date • Request for Examination (REF) after filing request/fees-36

months• Section 3 (d) –mere discovery of new form or new use not

patentable• Software per se not patentable• No EMR but compulsory licensing for countries with

insufficient manufacturing capacity, if by notification allow importation

What can be patented?

• As per TRIPS-minimum standards

• Microorganism-with modifications, inventive steps

• Non-biological/ microbiological processes

• Chemical compounds or compositions derived from plants/ animals

Patent (amend)act 2002What can’t be patented?

• Diagnostic/therapeutic/surgical methods for treatment of human/animals-Trips

• Essential biological processes• Mere discovery of living/non-living substance

occurring in nature• Mere discovery without inventive

step/novelty/new use• A method of Agriculture/ horticulture- India• Invention related to atomic energy- India• Invention contrary to law/ morality• Plant varieties- patents/+sui-generis system

The Protection of Plant Varieties and Farmer’s’ Rights Act 2001

• Variety u/s [2(za)]: a plant grouping except micro-organism within a single botanical taxon of the lowest known rank, which can be—

(i) defined by the expression of the characteristics resulting from a given genotype of that plant grouping;

(ii) distinguished from any other plant grouping by expression of at least one of the said characteristics; and

(iii) considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation, and includes propagating material of such variety, extant variety, transgenic variety, farmers' variety and essentially derived variety.

• Extant variety: Variety that has been notified under section 5 of the Seeds Act, 1966(54 of 1966); or, farmers' variety; or, a variety about which there is common knowledge; or any other variety which is in public domain

• Farmers’ variety: Variety that has been traditionally cultivated and evolved by the farmers in their fields; or a wild relative or land race of a variety about which the farmers possess the common knowledge

Definition-EDV

• Essentially Derived Variety [EDV, u/s 2(i)]: in respect of a variety (the initial variety) shall be said to be essentially derived from such initial variety when it—

(i) is predominantly derived from such initial variety, or from a variety that is itself predominantly derived from such initial variety, while retaining the expression of the essential characteristics that results from the genotype or combination of genotype of such initial variety;

(ii) is clearly distinguishable from such initial variety; and(iii) conforms (except for the differences which result from the act of

derivation) to such initial variety in the expression of the essential characteristics that result from the genotype or combination of genotype of such initial variety.

• Essentially derived varieties may be obtained for example by the selection of a natural or induced mutant, or of a somaclonal variant, the selection of a variant individual from plants of the initial variety, backcrossing, or transformation by genetic engineering.

NDUS• Any variety would be novel if the propagating/harvested material

has not been sold in India for one year and abroad for four years (for trees & vines 6 years) before date of filing of registration application. If variety has become matter of common knowledge other than the aforesaid manner, the novelty is not lost

• Distinct: if it is clearly distinguishable by at least one essential characteristic from any another variety whose existence is a matter of common knowledge in any country at the time of filing of the application

• 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: if its essential characteristics remain unchanged after repeated propagation or, in the case a particular cycle of propagation, at the end of each such cycle.

Breeders’ rights• To produce, sell, market, distribute, import or export the variety • Successor- licensee-agent- no third party transfer• Authorisation requirement if repeated use/ use as initial variety• Restrictions to rights

– Revocation of certificate– No annual retention fee– Against public order , morale– Against public interest– Compulsory licensing- reasonable requirement– EDV-use of farmers’ variety without their authorisation

Farmers’ rights• Benefit sharing• Compensation

• Rights as breeder• Recognition as conserver• Continue local seed transactions• Free services• Prevalence over breeder’s rights in certain matters

–EDV authorization

• Protection from innocent infringement

Protection of Plant Variety and Farmers Rights Authority

• Chairperson, 15 members, Registrar General (ex-officio member secretary)

• Committees of authority• Registration of various varieties • Maintenance of national register of plant variety• Documentation, indexing and cataloguing of farmers’

varieties• Developing, characterisation and documentation varieties

registered under the Act • Benefit sharing: invite claim of benefit sharing • Explicitly indicate amount of claims • Compulsory licensing • Compensations

Biological Diversity Act 2002

• President signature- 5th Feb 2003• Enforcement- 15th April 2004• NBA- 1st October 2003• 16 members- 1+3+7+5

– National Biodiversity Fund-royalties, fees– Committee on agro-biodiversity

• State Biodiversity Board- 1+5+5– State Biodiversity Fund

• Biodiversity Mgmt Committee-1+6– Local Biodiversity Fund-local levy– People’s biodiversity registers

Definitions

• "benefit claimers" means the conservers of biological resources, their byproducts, creators and holders of knowledge and information relating to the use of such biological resources, innovations and practices associated with such use and application.

• "biological diversity" means the variability among living organisms from all sources and the ecological complexes of which they are part, and includes diversity within species or between species and of eco systems;   ‑

• "biological resources" means plants, animals and micro organisms or parts ‑thereof, their genetic material and by products‑ (excluding value added products) with actual or potential use or value, but does not include human genetic material;  

• "bio survey and bio utilization‑ ‑ " means survey or collection of species, subspecies, genes, components and extracts of biological resource for any purpose and includes characterization, inventorisation and bioassay;  

Regulations for Access

• No person referred to in sub section (2)‑ shall, without previous approval of the National Biodiversity Authority, obtain any biological resource occurring in India or knowledge associated thereto for research or for commercial utilization or for bio survey and ‑bio utilization.   ‑

• Results of research not to be transferred to certain persons without approval of National Biodiversity Authority  

– For the purposes of this section, "transfer" does not include publication of research papers or dissemination of knowledge in any seminar or workshop, if such publication is as per the guidelines issued by the Central Government.

• These provisions shall not be applicable in case of collaborative research projects if these projects

– Conform to the policy guidelines issued by GOI– Approved by the GOI 

• No person, who is a citizen of India or a body corporate, association or organization which is registered in India , shall obtain any biological resource for commercial utilization, or bio survey and bio utilization for commercial utilization ‑ ‑except after giving prior intimation to the State Biodiversity Board concerned:  

• REPOSITORIES

Transfer of Resource/ knowledge

• No person who has been granted approval under section 19 shall transfer any biological resource or knowledge associated thereto which is the subject matter of the said approval except with the permission of the National Biodiversity Authority

• The National Biodiversity Authority shall while granting approvals under section 19 or section 20 ensure that the terms and conditions subject to which approval is granted secures equitable sharing of benefits arising out of the use of accessed biological resources, their by products, innovations and practices ‑associated with their use and applications and knowledge relating thereto in accordance with mutually agreed terms and conditions between the person applying for such approval, local bodies concerned and the benefit claimers.

•   • Joint IPR/ Developmental activity/ joint sharing/ venture capital fund/ Direct

Payments  

Regulations- IPR

• No person shall apply for any intellectual property right, by whatever name called, in or outside India for any invention based on any research or information on a biological resource obtained from India without obtaining the previous approval of the National Biodiversity Authority before making such application.  

• The National Biodiversity Authority may, while granting the approval under this section, impose benefit sharing fee or royalty or both or impose conditions including the sharing of financial benefits arising out of the commercial utilization of such rights.  

• The provisions of this section shall not apply to any person making an application for any right under any law relating to protection of plant varieties enacted by Parliament.  

• "commercial utilization" means end uses of biological resources for commercial utilization such as drugs, industrial enzymes, food flavours, fragrance, cosmetics, emulsifiers, oleoresins, colours, extracts and genes used for improving crops and livestock through genetic intervention, but does not include conventional breeding or traditional practices in use in any agriculture, horticulture, poultry, dairy farming, animal husbandry or bee keeping;  

NBA- approvals• Approvals for what?

– Obtaining any biological resource, knowledge associated, bio-survey or bio utilization

– Research result transfer– IP protection, collaborations, third party transfers

• Who needs approval?– Not citizen of India, NRI’s– Corporate organizations not registered in India,

registered but has any non-Indian participation in share capital/ management

• Prior intimation to SBB if bioresource collecting for commercial purpose

NBA-procedures

• Transfer of research results to foreign nationals, NRI’s, companies– Application-5000/-, 3 months

• Applying for IP protection– Application- 500/-, 3 months– Not applicable under PVFR act 2001

• Third party transfers– Application-10000/-, 6 months

• Appeals to NBA, to high court

NBA regulations- general features

• Benefit sharing formula guidelines- monitory other benefits

• Formula case by case• Mutual agreements, time frame of benefits• Individuals, groups, organizations direct payments

through district administration• Terms and conditions, 5% service charge• Civil court powers-Judicial proceedings• Non-bailable offence, penalties• Opposition of IPR granted in any other country

Geographical Indications a Community IP

The Geographical Indications of Goods (Registration and

Protection) Act 1999

Geographical location

Geo-climatic features Specially attained skills

Special characteristics

Reputation

Product (goods) Services

Some Examples of GI

• Textiles and Handicrafts– Kalamkari, pochampally, nirmal toys; bukhara carpets, hereke

carpets

• Fruits and nuts– Kesari, Alphonso, Dashari, Chounsa, Makhana, Nagpur orange;

seville oranges, jaffa oranges

• Ayurvedic products medicinal plants– Triphala,Chayavanprash, Njavara rice, Kalimoonch rice,

Ashvagandha

• Alcoholic & non alcoholic beverages– Feni, Zumai, zutuilling,yuu; ruou, sake, mezcal, tequila, sherry

wine, rioja wine, bordeaux, champagne, chablis

– Darjeeling tea, nilgiri tea; Rooibos tea

Some Examples of GI

• Food grains– Pokkali rice/ Jeerakshala, Gandhakshala /Basmati rice (pusa

basmati, shaheen basmati, basmati pak, tarawadi basmati, Dehrdun basmati), tandur dal; Arroz de valencia rice

• Animal and meat products– Kadaknath, chegu goat,Jamunapari goat (paneer) ongole bull;

carora, malbuner sausages (Liechtenstein)

• Miscellaneous products– Masticatory (paan); food recipes (chicken tikka, hyderabadi

biryani; swiss fondue); timbers; bhedaghat marbel; gangajal-korytnicka minerala voda; special skills required (khurja ceramics-delft ceramics, Ferozabad glass-belgian glass, toledo steel- Munger country made pistols, gur

• Rural niche products– Desi ghee, sirka; feta cheese, sherry vinegar

Claw back provisions- Parma ham case

• Proscuitto di Parma –GI of Italy- Parma Ham

• Consorzio del Prosciutto di Parma- TM in canada

Trademark TM Act 99- goods & services

• Mark-trademark• Collective mark• Certification mark• Associated mark• Well known mark• Smell mark• Sound marks/ Service marks• Shape marks- natural shapes• Technical effect

GI and Trademarksupremacy of GI (refusal or invalidation of TM)

• If confuse or misled as to true place of origin 22.3TRIPS/ 25.a– Swiss Watch or Swiss taste chocolate

• If goods have provided additional protection under section 25.b in accordance with 23.2 TRIPS– Champagne fruit juice, Bordeaux biscuit, Bordeaux

fungicide, Red label tea– American Basmati- in India– American Basmati- in USA

GI and Trademarksupremacy of TM (refusal or invalidation of GI)

• Has been applied/registered or acquired through use in good faith before commencement of GI Act or before filing of a GI registration application (24.5 TRIPS/ 26.1)- Nilgiri Tea/Kadaknath chicken

• TM prevail over GI in certain legal situation (24.7TRIPS/ 26.4)

Copyright

• Indian copyright Act 1957

• Amendments- 1981, 1984, 1994, and 1999 (w.e.f. 15 January 2000)

• Authors ownership

• Farmers’ ownership

• Substantial copying

Designs Act 2000

Features of shape, configuration, pattern or ornament or composition of lines or color or combination thereof applied to any article whether two dimensional or 3D or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined- article capable of being made and sold- does not include mode or principle, any trademark

Registration- Ownership

• Registration at Kolkatta office for 10 years initially extendable to further 5 years

• Registration confers upon the registered proprietor ‘copyright’ in the design for the period of registration. Copyright means the exclusive right to apply a design to the article belonging to the class in which it is registered