INTELLECTUAL PROPERTYINTELLECTUAL PROPERTY

CHAPTER 3 CHAPTER 3 ENTREPRENEURSHIPENTREPRENEURSHIP

Chapter ObjectivesChapter Objectives

To understand the importance of To understand the importance of intellectual property in modern businessintellectual property in modern businessTo explain the laws protecting trademarks, To explain the laws protecting trademarks, patents, designs, copyrights and other patents, designs, copyrights and other intellectual propertyintellectual propertyTo describe the procedure for registration To describe the procedure for registration of trademarks, patents, etc.of trademarks, patents, etc.To develop a strategy for building and To develop a strategy for building and protecting intellectual propertyprotecting intellectual propertyTo comprehend the significance of trade To comprehend the significance of trade secrets and other confidential informationsecrets and other confidential information

IP Laws in IndiaIP Laws in India

IP laws in India cover the following:IP laws in India cover the following:

TrademarksTrademarks

CopyrightCopyright

PatentsPatents

Geographical indication of goodsGeographical indication of goods

DesignsDesigns

Others including Semiconductor layout Others including Semiconductor layout designs, plants and farmer rights and designs, plants and farmer rights and biological diversity.biological diversity.

Interesting TrademarksInteresting Trademarks

numbers can be trademarks like in the case of numbers can be trademarks like in the case of 501 tea and 555 cigarettes501 tea and 555 cigarettessymbols like those of Mercedes Benz or apple symbols like those of Mercedes Benz or apple computerscomputersletters like in 3M, IBM, NIITletters like in 3M, IBM, NIITOrange cellphone service has successfully Orange cellphone service has successfully managed to include the colour orange as its managed to include the colour orange as its trademark. trademark. sound like MGM’s ‘roar of the lion’ can also be a sound like MGM’s ‘roar of the lion’ can also be a trademarktrademarkSumitomo tyres has registered a rose like smell Sumitomo tyres has registered a rose like smell as its trademarkas its trademark

Assignment of TrademarksAssignment of Trademarks

Trademark searchTrademark search

Application for registrationApplication for registration

Receipt and examinationReceipt and examination

Acceptance, advertisement and Acceptance, advertisement and oppositionopposition

CancellationCancellation

Particulars of ApplicationParticulars of Application

The class of goods for which the mark is The class of goods for which the mark is sought. Classes can be textiles, food and sought. Classes can be textiles, food and confectionery, machine tools, etc. confectionery, machine tools, etc. Definition of goods which is sought to be Definition of goods which is sought to be registeredregisteredDetails of the applicant including name, Details of the applicant including name, age, occupation, address and nationalityage, occupation, address and nationalityWhether the trademark is in use or is Whether the trademark is in use or is proposed to be used. If in use, applicant proposed to be used. If in use, applicant must specify by whom and for what must specify by whom and for what period.period.

Infringement of TrademarksInfringement of Trademarks

The allegedly infringing mark must be The allegedly infringing mark must be either identical or deceptively similar to either identical or deceptively similar to the registered trademark;the registered trademark;The goods / services in relation to which The goods / services in relation to which the allegedly infringing mark is used must the allegedly infringing mark is used must be specifically covered by the registration be specifically covered by the registration of the registered trademark;of the registered trademark;The use of the allegedly infringing mark The use of the allegedly infringing mark must be in the course of trade; andmust be in the course of trade; andThe use must be in such a manner as to The use must be in such a manner as to render the use likely to be taken as being render the use likely to be taken as being used as a trademark.used as a trademark.

CopyrightCopyright

Copyright confers protection to:Copyright confers protection to:

Literary worksLiterary works

Dramatic worksDramatic works

Musical workMusical work

Artistic worksArtistic works

Cinematographic films and sound Cinematographic films and sound recordingsrecordings

Dimensions of Copyrights Dimensions of Copyrights

Idea ExpressionIdea Expression

OriginalityOriginality

FixationFixation

Fair useFair use

Creators can prohibit others to:Creators can prohibit others to:

reproduce the work in any form, such reproduce the work in any form, such as print, sound .video, etcas print, sound .video, etc

record the work in a compact discs, record the work in a compact discs, cassettes, etccassettes, etc

broadcast it in any formbroadcast it in any form

translate it to other languagestranslate it to other languages

use the work for a public use the work for a public performance, like a stage drama or performance, like a stage drama or musical performancemusical performance

PatentsPatents

The following are criteria for The following are criteria for patentability:patentability:

NoveltyNovelty

UtilityUtility

Inventive stepInventive step

The following are not patentable:The following are not patentable:Inventions which are frivolous or contrary Inventions which are frivolous or contrary to established natural lawsto established natural lawsInventions, the primary use of which, are Inventions, the primary use of which, are contrary to morality or can cause harm to contrary to morality or can cause harm to humans or the environmenthumans or the environmentThe mere discovery of a scientific principle The mere discovery of a scientific principle without manifesting it in a productwithout manifesting it in a productDiscovery of a new use of an existing Discovery of a new use of an existing substancesubstanceA new method of agricultureA new method of agricultureA business methodA business methodA manufacturing process A manufacturing process

Patent Filing processPatent Filing process

Filing applicationFiling application

Publication of the applicationPublication of the application

First examination reportFirst examination report

GrantGrant

Post-grant oppositionPost-grant opposition

Assigning Use of PatentAssigning Use of Patent

A patent holder may assign a patent to a 3A patent holder may assign a patent to a 3 rdrd party. party. Their agreement will have the following elements:Their agreement will have the following elements:The term of the agreementThe term of the agreementThe territorial exclusivity of the rightsThe territorial exclusivity of the rightsFinancial terms including payments of fixed and Financial terms including payments of fixed and variable amounts to the patent holdervariable amounts to the patent holderSpecification of production capacities to be set up Specification of production capacities to be set up and marketing budget to be committedand marketing budget to be committedCommitments from the patent holder regarding Commitments from the patent holder regarding performance of the inventionperformance of the inventionAny other provisions which may be deemed Any other provisions which may be deemed necessarynecessary

Geographical Indication of GoodsGeographical Indication of GoodsThe GI should pertain to a defined territoryThe GI should pertain to a defined territoryA given quality or reputation should be A given quality or reputation should be attributable to goods originating from that attributable to goods originating from that regionregionRegistration of a GI confers the right to Registration of a GI confers the right to use the GI in relation to goods for which GI use the GI in relation to goods for which GI is registeredis registeredAlso, right to obtain relief in case of Also, right to obtain relief in case of infringementinfringementRights under GI Act, cannot be assigned, Rights under GI Act, cannot be assigned, transferred or transmitted. transferred or transmitted.

DesignsDesigns

Criteria for registration:Criteria for registration:The design has to be originalThe design has to be originalDesigns are registered only when they can be Designs are registered only when they can be applied to an articleapplied to an articleAn article, in turn, is defined as any article of An article, in turn, is defined as any article of manufacture and any substance, artificial or manufacture and any substance, artificial or natural, and includes any part of an article natural, and includes any part of an article capable of being made and sold separately.capable of being made and sold separately.The elements of design must be capable of The elements of design must be capable of existence separate from the article on which they existence separate from the article on which they have been applied.have been applied.The design must be of a distinctive nature and The design must be of a distinctive nature and must appeal to people.must appeal to people.

The following designs will not qualify The following designs will not qualify for protection under the Design Act:for protection under the Design Act:

Methods or principles of constructionMethods or principles of construction

Features dictated by functionFeatures dictated by function

A mechanical deviceA mechanical device

A trademarkA trademark

Designs which can be construed as Designs which can be construed as immoralimmoral

Other IP LawsOther IP Laws

The Protection of Plant and The Protection of Plant and Varieties and Farmer Rights Act, Varieties and Farmer Rights Act, 2001 2001

The Biological Diversity Act, 2002 The Biological Diversity Act, 2002

Semiconductor Integrated Circuits Semiconductor Integrated Circuits Layout Act, 2000Layout Act, 2000

Non Disclosure AgreementNon Disclosure Agreement

NDA should have the following elements:NDA should have the following elements:An NDA should define what information is confidential. An NDA should define what information is confidential. Agreements should have clauses on restrictions on Agreements should have clauses on restrictions on disclosure, copy and use of informationdisclosure, copy and use of informationRestrictions on use of information when in employment and Restrictions on use of information when in employment and upon termination of employment. upon termination of employment. Requirements relating to return of confidential documents Requirements relating to return of confidential documents and paperwork upon termination of associationand paperwork upon termination of associationSpecification of penal clauses like withholding salary, Specification of penal clauses like withholding salary, imposing fines, etcimposing fines, etcAddition of non-compete clause in an NDA prevents Addition of non-compete clause in an NDA prevents employees and vendors from setting up competing employees and vendors from setting up competing businesses or helping competitors. businesses or helping competitors. Care should be also taken to ensure that employees do not Care should be also taken to ensure that employees do not violate the rights of third parties.violate the rights of third parties.

Protecting Trade SecretsProtecting Trade Secrets

Employees should be made to realize their responsibility to Employees should be made to realize their responsibility to protect confidential material. protect confidential material. Employees should be educated to identify confidential Employees should be educated to identify confidential materialmaterialData and information which is confidential should be Data and information which is confidential should be marked as such. marked as such. Access to sensitive material or sensitive areas of the Access to sensitive material or sensitive areas of the workplace should be restricted on a need to know basisworkplace should be restricted on a need to know basisInteractions and disclosure to third parties should be Interactions and disclosure to third parties should be channeled through specified responsible employeeschanneled through specified responsible employeesWhen leaving an organization, an employee should be When leaving an organization, an employee should be reminded of his obligations with respect to confidential reminded of his obligations with respect to confidential information through an exit interview. information through an exit interview.