DBA 1761 INTELLECTUAL PROPERTY RIGHTS.pdf

INTELLECTUAL PROPERTY RIGHTS

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1 ANNA UNIVERSITY CHENNAI

UNIT I

INTRODUCTION TO INTELLECTUALPROPERTY

1.1 INTRODUCTION

Invention is the process of devising and producing by independent investigation,experimentation, and mental activity something which is useful and which was not previouslyknown or existing. An invention involves such high order of mental activity that the inventoris usually acclaimed even if the invention is not a commercial success. Inventiveness is theform of creativity leading to invention.1

Creativity is the ability to solve problems, create products or raise issues in a “domain”(e.g. cooking, engineering, law, music) that is initially novel but is eventually accepted inone or more cultural settings.

Innovation, which may or may not include invention, is the complex process of

Introducing novel ideas into use or practice and includes entrepreneurship as an integralpart. Innovation is usually considered noteworthy only if it is a commercial success. Thussociety benefits from innovation, not from invention alone, and often there is a significantlapse of time from invention to innovation.

1.2 AN OVERVIEW OF INTELLECTUAL PROPERTY

Intellectual property rights are a bundle of exclusive rights over creations of the mind,both artistic and commercial. The former is covered by copyright laws, which protectcreative works, such as books, movies, music, paintings, photographs, and software, andgive the copyright holder exclusive right to control reproduction or adaptation of suchworks for a certain period of time.

The second category is collectively known as “industrial properties”, as they aretypically created and used for industrial or commercial purposes. A patent may be grantedfor a new, useful, and non-obvious invention and gives the patent holder a right to preventothers from practicing the invention without a license from the inventor for a certain periodof time. A trademark is a distinctive sign which is used to prevent confusion among productsin the marketplace.

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An industrial design right protects the form of appearance, style or design of an industrialobject from infringement. A trade secret is an item of non-public information concerningthe commercial practices or proprietary knowledge of a business. Public disclosure oftrade secrets may sometimes be illegal.

KEY OBJECTIVES

After reading this chapter, you will be able to understand:

Introduction, Invention and Creativity to Intellectual Property Rights Basic types of Intellectual property and its forms Importance and protection of Intellectual Property Rights An Overview of Intellectual Property Rights (IPR), Patents, Industrial Designs,

Plant Varieties, copyrights, Trademarks, Geographical Indications.

1.3 IMPORTANCE- PROTECTION OF IPR

Intellectual property plays an important role in an increasingly broad range of areas,ranging from the Internet to healthcare to nearly all aspects of science and technology andliterature and the arts. Understanding the role of intellectual property in these areas manyof them still emerging often requires significant new research and study. To promote informeddiscussion of the intellectual property, education and awareness in this field is important.

Today, possession of land, labor and capital are just not enough for a country tosucceed. Creativity and innovation are the new drivers of the world economy. The policiesadopted by a country shall determine the nations well being and further as to how it isdeveloping the trapped intellectual capital. An effective intellectual property system is thefoundation of such a strategy. Within knowledge-based, innovation-driven economies, theintellectual property system is a dynamic tool for wealth creation providing an incentive forenterprises and individuals to create and innovate; a fertile setting for the development of,and trade in, intellectual assets; and a stable environment for domestic and foreign investment.

1.4 IMPORTANCE OF INTELLECTUAL PROPERTY

Intellectual property protection is the key factor for economic growth and advancementin the high technology sector. They are good for business, benefit the public at large andact as catalysts for technical progress. Whether IPRs are a good or bad thing, the developedworld has come to an accommodation with them over a long period. Even if theirdisadvantages sometimes outweigh their advantages, by and large the developed worldhas the national economic strength and established legal mechanisms to overcome theproblems so caused. Insofar as their benefits outweigh their disadvantages, the developedworld has the wealth and infrastructure to take advantage of the opportunities provided. Itis likely that neither of these holds true for developing and least developed countries.(Extracts from Report on Commission on IPR London September 2002).


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Why care about IPR?

Patents benefit none other than the owner of the IP and add value to all industrial aswell as business concerns and laboratory discoveries and in doing so provide incentivesfor private sector investment into their development. Anyone in the above business shouldhave an independent Research and development (R&D) center. Offering free R&D andprocesses in over enthusiasm must be avoided.

Globalization and the rapid proliferation of technology have elevated the importanceof intellectual property protection for small and medium sized enterprises (SMEs). Theintangible nature of intellectual property and the worldwide inconsistency of standardpractices create challenges for those businesses wishing to protect their inventions, brands,and business methods in foreign markets. The three most common vehicles for protectingintellectual property are patents, trademarks, and copyrights.

The Biotechnology Industry Organization advocates a strong and effective intellectualproperty system. Strong intellectual property protection is essential to the success, and insome instances to the survival, of the biotechnology companies in this country. For thesecompanies, the patent system serves to encourage development of new medicines anddiagnostics for treatment and monitoring intractable diseases, and agricultural products tomeet global needs. While giving holistic interpretation to TRIPS agreement public healthshould be the prime consideration rather than merely protecting the interest of the companies.

In the era of knowledge age or information age, the fundamental unit of most productsand services is information— in one or another form. Have you seen that n-number ofwebsites, virtual enterprises and virtual products? All these rest upon the cornerstone of‘information’: in digital or non-digital form. These have become the top IPR issues, thisInternet shall bring several new IPR issues to the fore. In several cases such information isof proprietary nature, hence, the investment in that information product, knowledge productor the virtual product must be protected to encourage other similar initiatives. With increasingworldwide access to electronic distribution, the damage caused by piracy to contentproducers may completely destroy the value built in their intellectual property.

The same context is valid in the case of companies who have earned consumerrecognition for their brand names and trade marks. A recognized brand name or trademark represents the goodwill that has been built into the product or service. Consumerstend to associate the recognized brand name or trade mark with certain characteristics thatare specific to that name or mark. Therefore, companies should manage, protect andsafeguard the investment in the related intellectual property rights. Not only this, they shouldbe vigilant if anyone else is misusing or causing infringement of this Intellectual property.

That is the crux of the intellectual property rights: to give credit where, and when, it isdue. With the emergence of the knowledge society and virtual products, the issue ofsafeguarding the investment in the information-based products has certainly gained high

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importance. We, as consumers or producers in the information chain, cannot afford to beignorant about the intellectual property rights!! Thus protection of IPR has definite (tangible)benefits, such as to propagate innovative culture, profitability, market leadership and helpscreation of wealth for the individual and the nation. India falling one among the developingcountries have miles to go, as she has a vulnerable collection of traditional, oral, folklore,customary, agricultural, traditional medicinal like Ayurveda etc. and besides not havingmuch wealth and infrastructure, lack of awareness of IPRs among all stratas of people, isa major set back to a developing country like India.

Definition of Intellectual Property : - This term includes, in the broadest sense, allrights resulting from intellectual activity in the industrial, scientific, literary, or artistic fields.Most often one thinks of property as either movable property (e.g.,a radio or a coat) orimmovable property (e.g., a house or land). One characteristic of these forms of propertyIs their tangible existence. In comparison, intellectual property law confers property rightson intangibles. Intellectual property has been characterized as:

Classification of Intellectual Property:- Intellectual property in general is broken downinto two major branches: industrial property and copyright law. A term of French origin, “industrial property” (properties industrial) cover artistic, musical, and literary works.

The concept of Intellectual Property: - In general, the most important feature of propertyis that the proprietor or owner may use his property as he wishes and that nobody else canlawfully use his property without his authorization. Of course, there are certain recognizedlimits for the exercise of that right. For example, the owner of a piece of land is not alwaysfree to construct a building or whatever dimension he wishes, but must respect the applicablelegal requirements and administrative decisions.

1.5 TYPES OF IPR

7 TYPES OF IPR UNDER WTO

1. Patent- Idea – Invention which is New, Useful & Non obvious

2. Designs – Pattern or Structure

3. Trademark – Signs like Logo ,Symbol, Brand etc; used to identify goods or services

4. Copyright – Expression of an Idea

5. Geographical Indication – Goods known for its geographic origin

6. Lay out Designs for Integrated circuits

7. Undisclosed information (Trade secret ) – Innovation or Know How


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1.5.1 Patents

A patent is a legal monopoly granted for a limited time to the owner of an invention. Itempowers the owner of an invention to prevent others from manufacturing, using, importingor selling the patented invention. Patent Act, 1970 as amended in the years 1998 and1999 along with Patent Rules, 1972 govern patents in India. This page gives informationas to Indian Law on Patents and has full texts of Legislation’s, Cases and InternationalConventions.

1.5.2 Trade Mark

Trademark means any mark used represent or identify a product or its maker. In amarket economy trademarks are most important because it is the biggest assets of acompany that really sells the products. This page gives information as to Indian Law ontrademark and has full texts of Legislation’s, Cases and International Conventions.

A Trademark can be generally defined as a sign or mark that individualizes anddistinguishes the goods of a given enterprise from the goods of other enterprises.

1.5.3 Design

Design means any features of shape, configuration, pattern, ornament or compositionof lines or colours, industrially applied to an article or to a part, that gives aesthetic value tosuch article. Designs Act, 2000 deals with protection of industrial design in India. Thispage gives information as to Indian Law on Designs and has full texts of Legislation’s,Cases and International Conventions.

What is a Design? Design can be described as the totality of the ornamental or aestheticaspects of a useful article. Manufactures of diverse products such as shoes, clothing,consumer appliances, automobiles, furniture and computer software invest billions of dollarsto develop industrial designs to make their products more attractive to consumers

1.5.4 Geographical Indications

Geographical indication is an indication that identifies a good as originating in a territorywhere a given quality, reputation or other characteristic of the good is essentially attributableto its geographical origin.

THE GEOGRAPHICAL INDICATIONS OF GOODS (Registration andProtection) RULES, 2000 Short title and commencement.

(1) These rules may be called the GEOGRAPHICAL INDICATIONS OF GOODS(Registration and protection) Rules, 200.

(2) They shall come into force on the date on which the Act comes into force.

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(3) Definitions.- In this rules, unless the context otherwise requires,a. “Act” means the GEOGRAPHICAL INDICATIONS OF GOODS (Registration and Protection) Act, 1999 (XLI of 1999; b) “agent” means a person authorized under Section 76.

1.5.5. Copyright

Copyright is a bundle of exclusive rights granted by statute to the author of the worksto exploit or authorize the exploitation of the copyright work, based on international normslike Berne Convention, Trade Related Aspects of Intellectual Property Rights (TRIPs)Agreement and WIPO Copyright Treaty (WCT). The copyright works in which rightssubsist are ‘original’ Literary, dramatic, musical and artistic works, and cinematographyfilms and sounds recording. This page gives information as to Indian Law on Copyrightand has full texts of Legislation’s, Cases and International Conventions.

1.5.6. Trade Secret

Trade secret is a formula pattern, physical device, idea, process, compilation ofinformation or other information that provides the owner of the information with a competitiveadvantage in the marketplace, and is treated in a way that can reasonably be expected toprevent the public or competitors from learning about it.

The law relating to Trade Secrets/Confidential Information/Commercial Secrecy isnot well develop0ed in India. There is no legislation regulating this area of law. Indiafollows common law approach of protection based on the case laws. However, there isno decision of the Honorable Supreme Court laying down the law. The decisions of theHigh Court involving the issues of Trade Secret were decided based on the Copyright/Design protection laws also.

1.5.7. Integrated Circuits

A semiconductor chip is a device that gives effect to program instructions through acircuity fixed on a semiconductor material in a layered form. Popular examples of suchchips are ROMs, RAMS etc. that the form the basis of computer software.

The semi Conductor Integrated Circuits Layout – Design Act, 2000.

WHEREAS the Final Act embodying the results of the Uruguay Round of MultilateralTrade Negotiations done at Marrakesh oin the 15th day of April, 1994 provides forestablishment of the world Trade Organization; AND WHEREAS the Agreement on TradeRelated Aspects of Intellectual Property Rights is part of the said final Act

TRANSFER OF TECHNOLOGY

Technological competence is critical to, both development of an economy and in thecompetitiveness in the marketplace. Technology Transfer is the movement of technologyfrom the holders of the technology to the recipients of it. INTERNATIONALARRANGEMENTS FOR TRANSFER OF TECHNOLOGY – UNCTD In this


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deliberation on the international arrangements for transfer of technology, the commissiontook note of the secretariat document available for consideration under this item. Thecompendium on transfer of technology provisions is a welcome contribution and should beupdated, as necessary, and widely disseminated.

The following chart clearly explains the classification of property

PATENT LAW IN INDIA

PROPERTY

PRIVATE

PUBLIC

TANGIBLE

PROPERTY

INTANGIBLE

PROPERTY

MOVABLE PROPERTY

IMMOVABLE

PROPERTY

INTELLECTUAL

RIGHT TO INDIVIDUAL REPUTATION

SECURITIES

PATENT

COPYRIGHT

INDUSTRIAL

DESIGN TRADE SECRET

PATENT

PRODUCT PATENT

The following chart clearly explains the classification of Intellectual property

INTELLECTUAL

PROPERTY

INDUSTRIAL PROPERTY

LITERARY PROPERTY

TRADE MARKS

INDUSTRIAL

DESIGNS LAYOUT DESIGNS

Etc. COPYRIGHTS NEIGHBORING RIGHTS

PROCESS PATENT

PERFORMERS RIGHTS

BROADCASTING RIGHTS

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The history, the nature and working of the Patents and the legislation relating thereto,has been succinctly summarized in an article, by JUSTICE as. ANAND of the SupremeCourt of India which is quite illuminating. Indian patent law has its roots in the UK Patentslaw. However, unlike Great Britain where the concept of a patent originated from theexercise of the Royal Prerogative to grant monopolies, in India a patent has always beenthe sole creation of statutes of Indian Legislature. The first Indian law relevant to Patentswas enacted in 1856 for grant of exclusive privileges to inventors. This Act was however,found defective and was re-enacted in 1859. In 1872 the Patents and Designs ProtectionAct was passed followed by Inventions Act of 1883 and Invention and Designs Act of1888. Subsequently, Indian Patents Act and Designs Act, 1911 was passed which replacedall previous legislations.

The Indian Patent law excludes inter alias the following inventions from patentability ifthey are- -

a. contrary to law and morality,

b. frivolous,

c. mathematical formulae or abstract theory,

d. living organisms per se,

e. methods of agriculture and horticulture,

f. foods and drugs per se,

g. business methods and

h. Topography of integrated circuits.

YEAR ACTS/AMENDMENTS 1856 The act vi of 1856 on protection of inventions based on the british

patent law of 1852. Certain exclusive privileges granted to inventors of new manufacturers for a period of 14 years.

1859 The act modified as act xv; patent monopolies called exclusive privileges (making. Selling and using inventions in india and authorizing others to do so for 14 years from date of filing specification).

1872 The patents & designs protection act. 1883 The protection of inventions act.


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1.6. LAW RELATING TO PATENTS IN INDIA

In India, the national legal regime pertaining to patents is contained the patents Act,1970 as amended by the Patents Amendment Act, 1999.This legislation has been enactedto amend and consolidate the law relating to Patents. The object f the patent law has beensummed up by the Supreme Court India in M/s. Bishwanath prasad Radhey shyam vs.M/s. Hindustan Metal Industries, as under, which is self-explanatory. The object of Patentlaw is to encourage scientific research, new technology and industrial progress. Grant ofexclusive privilege to own, use or sell the method or the product patented for a limitedperiod, stimulates new inventions of commercial utility.

The price of the grant of the monopoly is the disclosure of the invention at the patentOffice, which, after the expiry of the fixed period of the monopoly, passes into the publicdomain.

Definition of Patent: - The word Patent originated from the Latin word “Patene”which means ‘to open’. The concept of patent system is very old one. One of theearliest systems was that originating in England during the reign of Queen Elizabeth

A Patent is a legal document issued by the Government to an inventors his heirs,assigns, etc. It defines an “invention” and grants the right to prevent others from making,using, or selling the “invention’ in the country. The rights exist for a definite period from thedate of grant.

Therefore, patent is a limited monopoly right granted by the Government to an inventorto use, exploits, work and sell his invention in respect of either a process or a product. Thepatent must be in respect of an invention and not of a discovery. The invention must benew, useful and industrially applicable.

1.7 SALIENT FEATURES OF PATENT

The fundamental principle of patent law is that a patent is granted only for an inventionwhich must be new and useful. In other words it must have novelty and utility. It is essentialfor the validity of a patent that it must be the investors own discovery as opposed to meremodification of what was already known before the date of the patent.

1888Consolidated as the inventions & designs act.

1911The Indian patents & designs act.

1972The patents act (act 39 of 1970) came into force on 20th April 1972.

1999On March 26, 1999 Patents (Amendment) Act, (1999) Came Into Force From 01-01-1995.

2002The Patents (Amendment) Act 2002 Came Into Force From 2oth May 2003

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The following propositions appears to be well-settled in relation to patents:

The patent must be in respect of an invention and not a discovery.

In respect of one single invention there must be one single patent.

A Patent may be in respect of a substance or in respect of a process.

In order to be patentable, the invention must be new, it must involve an inventivestep and it must be industrially applicable.

1.8 ORIGINALITY OF INVENTIONS

All the inventions in the literary sense are not inventions under the Act. The legislaturehas taken care to exclude certain items from the scope and purview of patents, by treatingthem as not being inventions. Section 3 of the Act lists out certain items as not inventions.They are

a. An invention which is frivolous or which claims anything obviously contrary to wellestablished natural laws;

b. An invention the primary or intended use or commercial exploitation of whichwould be contrary to law or morality of which would be contrary to law or moralityor injurious to public health; human, animal or plant life or to environment.

c. The mere discovery of a scientific principle or the formulation of an abstract theory;or discovery of nay living or non-living substances occurring in nature.

d. The mere discovery of any new property or new use for a known substance or ofthe mere use of a known process, machine or apparatus unless such known processresults in a new product or employs at least one new reactant;

e. A substance obtained by a mere admixture resulting only in the aggregation of theproperties of the components thereof or a process for producing such substance;

f. The mere arrangement or rearrangement or duplication of known devices eachfunctioning independently of one another in a known way;

g. A method of agriculture or horticulture; and

h. Any process for the medicinal, surgical, curative, prophylactic or other treatmentof human beings or any process for a similar treatment of animals to render themfree of disease or to increase their economic value or that of their products etc.

The second prerequisite of an invention is that it must be new. Novelty of an inventionplays a significant role in the grant of patent. In other words, what has been patented oncecannot be the subject matter of another patent because it is no longer new. The SupremeCourt has observed, speaking through justice Sarkaria in Biswanath Prasad vs.Hindusthan Metal Industries, as under, which is quite relevant in this context.


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“The fundamental principle of patent law is that a patent is granted only for a inventionthat must be new and useful. That is to say, it must have novelty and utility. It is essential forthe validity of a patent that it must be the inventor’s own discovery as opposed to mereverification of what was already known before the date of the patent”.

1.9 KINDS OF PATENTS

Generally, the patents can be classified into two types viz

1. Process Patents and

2. Product Patents.

Process Patent: Process patent means that when a substance is invented or produced, apatent is not granted to the substance itself but it is only the method or the process ofmanufacture of a substance that is granted a patent. Therefore the Patent is granted to theprocess but not to the product, in this kind of patent.

Product Patents: In Product Patents, the Patent is granted not to the method or processof manufacture of a substance but to the substance itself. Therefore, in this kind of patent,it is the product that is covered and protected.

1.10 RIGHTS OF PATENTEES

As we have already discussed, a patent is a grant conferring certain monopoly rightson the grantee for a definite period, subject to certain conditions. A grant of patent givesthe patentee the exclusive right to make or use the patented article or use of the patentedprocess. Apart from this right a patentee has also the powers to assign the patent, grantlicenses under and deal with it otherwise; for any consideration. However, these rights arenot absolute and are circumscribed by various conditions and limitations.

The Patent Act, 1970 contains various provisions in Section 24, Chapter IVA, Sections24-A to 24-F, 28, 48, 50, 53, 63 and 58 etc. relating to the specified or implied rights ofthe patentees. For the sake of convenience and easy comprehension, the same have beensummarised as under:

Rights in respect of Patents Granted before the Patents Act, 1970 commenced(Under Section 48):

Once a patent is granted, the patentee has the exclusive right to make use, exercise,sell or distribute the patented article or substance in India. In case of a process patent hehas the right to use or exercise the method or process. These rights can be exercised notonly by the patentee but also by his agents or licensees. This right to exploit the patent canbe graphically explained as under:

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Rights granted to patentees in respect of patents granted Under the Act (Sec 48etc.)

Once a patent is granted, the patentee has the exclusive right to make use, exercise,sell or distribute the patented article or substance in India. In case of a process patent hehas the right to use or exercise the method or process. These rights can be exercised notonly by the patentee but also by his agents or licensees. This right to exploit the patent canbe graphically explained as under:

Right to assign and license

A patentee is vested with the power to assign, grant licenses or to deal with the patentfor a consideration. This is in a case where the patentee himself is not willing to work thepatent. If there are more than one owner of the patent, the co-owner can assign his shareof the patent or grant licenses in respect thereof, provided the other co-owners consentand permitted by the controller.

Right to surrender the patent

Under Section 63 of the Act, the patentee has the right to surrender his patent. Apatentee, at any time by giving notice in the prescribed manner. When such an offer ismade, the controller should advertise the offer with a view to notifying every person otherthan the patentee whose name appears in the register as having an interest in the patent. Itis necessary to protect the interests of persons like licensees, equitable assignees, andothers with whom the patentee might have contractual obligations which are dependent onthe continuance of the patent.

Rights before sealing

The patentee enjoys certain rights even before the sealing of the patent also, underSection 24 of the Act. Under this provision, on and from the date of advertisement of theacceptance of a complete specification and until the date of sealing of patent, the applicantwill be entitled to the like privileges and rights as if a patent for the invention had beensealed on the date of advertisement of acceptance of the complete specification. However,the applicant will not be entitled to institute any legal proceedings for infringement until thepatent has been sealed.

Right to apply for “patents of addition”

Chapter IX of the Act, Sections 54 deal with “patents of addition”. A patent of additionis the improvement or modification of an invention disclosed in the complete specificationof the “main invention”. Under Section 54 of the Act, a patentee has a right to apply for a“patent of addition” relating to his ‘main invention’.


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Right in case of “infringements”

Infringement is the violation of the violation of the rights conferred by the grant ofpatent. It consists in the violation of any of the rights like the exclusive right to make, use,exercise, sell or distribute the invention in India. Whenever a patent is infringed, the patenteehas a right to institute suits in a court of law, not inferior to a District Court having jurisdictionto try the suit. The patentee may bring in suit for declaration, injuction and also for damagesand account of profits

Right to make a convention application

Every patentee in India has a right to make a convention application or a “basicapplication”, for protection of his patent in other convention countries, in case of internationalinstruments being signed by India and those other convention countries. Generally, thisright is dependent on the principle of ‘reciprocity’ and ‘national treatment’ in internationallaw. However, this position is proposed to be changed under the 2002 (Am) Act whichprovides for filing of an International application under the PCT.

Right to make a convention application

If a Patent is lost or destroyed or its non-production is explained satisfactorily to thecontroller, the patentee has a right to apply for a duplicate patent; and

Right to be supplied copies and certificates

Certified copies of any entry in the register, or certificates of or extracts from patents,specifications and other public documents in the patent office or from the registers andother records kept there, may be obtained by the patentees and also others by paying theprescribed fee.

1.11. LIMITATIONS OF THE RIGHTS OF PATENTEES

It has been already mentioned here before that the rights of the patentees are notabsolute. They are subject to many limitations and restrictions which are mentioned brieflyhereunder.

Use for Experiment, Research and Teaching

Any machine, article or apparatus in respect of which patent is granted or any processpatent may be used by any person for the purpose only of experiment or research includingthe imparting of instructions to pupils; not withstanding the rights of the patentee.

Use by Government

Any patented product or process may be used by the Government for its exclusiveuse or on behalf of it. The Government may also import such product or patent. Obviously,such a provision has been made in the interest of public service.

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Compulsory Licenses

If the patent has not been worked so as to satisfy the reasonable requirements of thepublic at a reasonable price, the controller may grant compulsory licenses to any applicantto work the patent. Further the central Government also has the power to declare thatcompulsory licenses should be granted in respect of any patent or class of patents. Thecontroller decides the terms of the license.

In case of patents related to food, medicine or drug they are deemed to be endorsedwith the words “Licenses of right” after the expiration of three years from the date ofsealing. The legal effect of such an endorsement is that, any person interested in workingthe patented invention may require the patentee to grant him a licensee on terms mutuallyagreed upon or settled by the controller.

Invention for Defense Purposes

Certain inventions relevant for defence purposes may be subjected secrecy provisionsby the controller. He may direct restrict or prohibit the publication or communication ofinformation relating to such inventions. In such an event application will not be refused butthe complete specification if accepted, will not be advertised and no patent will be grantedfor the invention. During the continuance of such directions, the central Government mayuse the invention by debarring the applicant from using it provided the royalties are paid tohim.

Use in Foreign Vessels etc.

Where a vessel or aircraft registered in a foreign country or a land vehicle owned bya foreigner comes to India or its territorial waters temporarily or accidently, the patentedarticle, substance or process may be used in such vessels, and aircrafts etc., without infringingthe rights of the patentee legally. Such a use must be for its actual needs or in the consultationor working of the aircraft, or land vehicle only to a foreign vessel, aircraft or land vehicleowned by residents of only those countries which confer similar rights on the residents ofIndia. In other words, this right and limitation are based on the principle of national treatment.

1.12. DUTIES OF PATENTEE

The patent granted confers not only certain rights on the patentee but also imposescertain duties and obligations. If the patent is not used and the granted monopoly is abused,compulsory license may be granted to any person who is willing to work the patent or eventhe patent also may be revoked. It is the implied duty of the patentee to work the patent isIndia in such a manner so as not to deprive the reasonable requirements of the public andalso to make the products of patent available to the public at reasonable prices. Further,the patentees are restrained from making baseless and unjustifiable threats of an action forinfringement of the patent. Similarly, every patentee should submit periodical statements to


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the controller as to the extent to which the patented invention has been worked on acommercial basis in India. Failure to supply such information is punishable.

1.13 INFRINGEMENT OF PATENTS

The monopoly of a patentee over his patent may be violated by unscrupulous elements.If the rights in relation to patent are infringed, the patented has right to take recourse tolegal action. What constitutes infringement of a patent is not defined in the Patents ac,1970. However it may be understood as violation of the monopoly rights of the patenteeto make, use, exercise, sell or distribute the invention in India.

Infringer is a person who actually manufacturers a patented article without authorization,or uses a patented process likewise. Similarly any one who uses, exercises sells ordistributes a patented article or process without any lawful authority would be an infringer.However an innocent use of a patent, use for experiments and instructions, use of inventionin foreign vessels do not amount infringements

Where the infringer has taken all the essential features claimed in the patent, whilemanufacturing an article, it will be a direct infringement. Where he uses all features claimedin the patent but alters one or more unessential feature then also it will be an infringementbut since it is indirect it is called ‘colorable imitation’. Copying the ‘essential features’ ofthe invention is sometimes referred to as taking the ‘pith and marrow’ of the invention.

Time of Infringement Remedy for infringement Limitation period Who can file a suit? Who may petition the High Court Who may be sued? Defenses available to Defendants Relieves that may be granted

THE DESIGNS ACT, 1911

Definitions: -In this Act, unless there is anything repugnant in the subject or context:“design” - means only the features of shape, configuration, pattern or ornament appliedto any article by any industrial process or means, whether manual, mechanical or chemical,separate or combined, which in the finished article appeal to and are judged solely by theeye; but does not include any more or principle of construction or anything which i sinsubstance a mere mechanical device, and does not include any trade mark as defined inclause (v) of sub-section (1) of section 2. of the Trade and Merchandise Marks Act,1958, or property mark as defined in section 479 of the Indian Penal Code

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Registration of Designs

The Controller may, on the application of any person claiming to be the proprietorof any new or original design not previously published in India, register the designunder this Part.

The application must be made in the prescribed form and must be left at the PatentOffice in the prescribed manner and must be accompanied by the prescribed fee.

The same design may be registered in more than one class, and, in case of doubtas to the class in which a design ought to be registered, the Controller may decidethe question.

The Controller may, if he thinks fit, refuse to register any design presented to himfor registration; but any person aggrieved by any such refusal may appeal to theCentral Government.

An application which, owing to any default or neglect on the part of the applicant,has not been completed so as to enable registration to be

A Design when registered shall be registered of the date of the application forregistration,

Certificate of registration

The Controller shall grant a Certificate of registration to the proprietor of the designwhen registered.

The Controller may, in case of loss of the original certificate, or in any other casein which he deems it expedient, furnish one or more copies of the certificate.

Copyright in Registered Designs

When a design is registered, the registered proprietor of the design shall, subjectto the provisions of this Act, have copyright in the design during five years from thedate of registration.

If before the expiration of the said five years application for the extension of theperiod of copyright is made to the Controller in the prescribed manner, the Controllershall, on payment of the prescribed fee, extend the period of copyright for a secondperiod of five years from the expiration of the original period of five years.

If before the expiration of such second period of five years application for theextension of the period of copyright is made to the Controller in the prescribedmanner, the Controller may, subject1Dany roles under this act, on payment of theprescribed fee, extend the period of copyright for a third period’ of five years fromthe expiration of the second period of five years.


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Relevant provisions of geographical indications ofgoods

Geographical identification”, in relation to goods, means identification

Which identifies’ such goods as ‘agricultural goods, natural goods or Manufacturedgoods’ as originating, or manufactured in the territory, of a country, ‘or a region or localityin that territory, where a given quality reputation or other characteristic of such goods isessentially attributable to its geographical origin and in case where such goods aremanufactured goods one of the activities of either the production or of processing orpreparation of the goods concerned takes place in such territory, region or locality, as thecase may be,

Explanation; --For the purposes of this clause, any name which is not the name of acountry, region or locality of that country shall also be considered as the geographicalindication if it relates to a specific geographical area and is used upon or in relation toparticular goods originating from that country, region or locality, as the case may be;

“Goods” means any agricultural, natural or manufactured goods or any goods ofhandicraft or of industry and includes foodstuff;

“Indication” includes any name, geographical. or figurative representation or anycombination of them conveying or suggesting the geographical origin of goods towhich it applies;

“Name” includes any abbreviation of a name; “Package” includes any case, box, container, covering, folder, receptacle, vessel,

casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopperand cork;

“Prescribed” means prescribed by rules made under this Act; “Producer” in relation to goods, means any person who,-

1.14. THE REGISTER AND CONDITIONS FOR REGISTRATION

Registrar of Geographical Indications:—

The controller General of Patents, Designs and Trade Marks appointed under sub-section (1) of section 3 of the Trade Marks Act, 1999, shall be the Registrar of GeographicalIndications.

The Central Government may appoint such officers with such designations as it thinksfit for the purpose of discharging, under the superintendence and direction of the Registrar,such functions of the Registrar under this Act, as he may from time to time authorize themto discharge

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For the purposes of this Act, a record called the Register of Geographical Indicationsshall be kept at the head office of the Geographical Indications Registry, whereinshall be entered all registered geographical indications with the names, addressesand descriptions of the proprietors, the names, addresses and descriptions ofauthorized user and such other matters relating to registered geographical indicationsas may be prescribed and such registers may be maintained wholly or partly oncomputer.

Notwithstanding anything contained in sub-section (1), it shall be lawful for theRegistrar to keep the record-s wholly or partly in computer floppies or diskettesor in any other electronic form, subject to such safeguards as may be prescribed

Where such register is maintained wholly or partly in computer floppies or diskettesor in any other electronic form under sub-section (1), any reference in this Act toany entry in the register shall be construed as the reference to the entry as maintainedon computer floppies or diskettes or in the other electronic form, as the case maybe.

No notice of any trust, express or implied or constructive, shall be entered in theregister and no such notice shall be receivable by the Registrar.

Subject to the superintendence and direction of the Central Government, the registershall be kept under the control and management of the Registrar

REVIEW QUESTIONS

1) Define Invention, Innovation and Creativity2) Discuss importance of IPR3) Classify IPR4) Explain Copy rights and Trademark5) Discuss salient features of Patent laws in India6) Discuss kinds of Patents and the rights of a patentee7) Discuss limitations of the rights of patentees


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UNIT II

INTERNATIONAL PROTECTION OFINTELLECTUAL PROPERTY RIGHTS

2.1. ESTABLISHMENT OF WIPO

The roots of the World Intellectual Property Organization go back to 1883, whenJohannes Brahms was composing his third Symphony, Robert Louis Stevenson was writingTreasure Island, and John and Emily Roebling were completing construction of NewYork’s Brooklyn Bridge.

The need for international protection of intellectual property became evident whenforeign exhibitors refused to attend the International Exhibition of Inventions in Viennain 1873 because they were afraid their ideas would be stolen and exploited commerciallyin other countries.

1883 marked the birth of the Paris Convention for the Protection of IndustrialProperty, the first major international treaty designed to help the people of one countryobtain protection in other countries for their intellectual creations in the form of industrialproperty rights, known as:

inventions (patents)

trademarks

industrial designs

The Paris Convention entered into force in 1884 with 14 member States, which setup an International Bureau to carry out administrative tasks, such as organizing meetings ofthe member States.

In 1886, copyright entered the international arena with the Berne Convention forthe Protection of Literary and Artistic Works. The aim of this Convention was to helpnationals of its member States obtain international protection of their right to control, andreceive payment for, the use of their creative works such as:

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novels, short stories, poems, plays;

songs, operas, musicals, sonatas; and

drawings, paintings, sculptures, architectural works.

Like the Paris Convention, the Berne Convention set up an International Bureau tocarry out administrative tasks. In 1893, these two small bureaux united to form aninternational organization called the United International Bureaux for the Protection ofIntellectual Property (best known by its French acronym BIRPI). Based in Berne,Switzerland, with a staff of seven, this small organization was the predecessor of the WorldIntellectual Property Organization of today - a dynamic entity with 184 member States, astaff that now numbers some 938, from 95 countries around the world, and with a missionand a mandate that are constantly growing.

As the importance of intellectual property grew, the structure and form of theOrganization changed as well. In 1960, BIRPI moved from Berne to Geneva to be closerto the United Nations and other international organizations in that city. A decade later,following the entry into force of the Convention Establishing the World Intellectual PropertyOrganization, BIRPI became WIPO, undergoing structural and administrative reformsand acquiring a secretariat answerable to the member States.

In 1974, WIPO became a specialized agency of the United Nations system oforganizations, with a mandate to administer intellectual property matters recognized by themember States of the UN.

In 1978, the WIPO Secretariat moved into the headquarters building that has nowbecome a Geneva landmark, with spectacular views of the surrounding Swiss and Frenchcountryside.

WIPO expanded its role and further demonstrated the importance of intellectualproperty rights in the management of globalized trade in 1996 by entering into a cooperationagreement with the World Trade Organization (WTO).

The impetus that led to the Paris and Berne Conventions - the desire to promotecreativity by protecting the works of the mind - has continued to power the work of theOrganization, and its predecessor, for some 120 years. But the scope of the protectionand the services provided have developed and expanded radically during that time.

In 1898, BIRPI administered only four international treaties. Today its successor,WIPO, administers 24 treaties (three of those jointly with other international organizations)and carries out a rich and varied program of work, through its member States and secretariat,that seeks to:


NOTES


harmonize national intellectual property legislation and procedures, provide services for international applications for industrial property rights, exchange intellectual property information, provide legal and technical assistance to developing and other countries, facilitate the resolution of private intellectual property disputes, and marshal information technology as a tool for storing, accessing, and using valuable

intellectual property information.

The World Intellectual Property Organization (WIPO) is a specialized agency of theUnited Nations. It is dedicated to developing a balanced and accessible internationalintellectual property (IP) system, which rewards creativity, stimulates innovation andcontributes to economic development while safeguarding the public interest.

WIPO was established by the WIPO Convention in 1967 with a mandate from itsMember States to promote the protection of IP throughout the world through cooperationamong states and in collaboration with other international organizations. Its headquartersare in Geneva, Switzerland. The Director General is Francis Gurry.

IP PROTECTION –WTO & WIPO

A streamlined and efficient patent protection, in addition to the industry’s maturingrelationship with capital markets is the hallmarks of a country’s global leadership.

In contrast, most developing countries do not have strong IPR regimes and suffernegative effects of “brain drain”. The reason being, lack of effective copyrightlaws, which force scientists and technicians to immigrate to countries, wherecompetitors protect their research from unfair exploitation.

The World Trade Organization (WTO) is the only global international organizationdealing with the rules of trade between nations. At its heart are the WTO agreements,negotiated and signed by the bulk of the world’s trading nations and ratified in theirparliaments. The goal is to help producers of goods and services, exporters, andimporters conduct their business.

The World Trade Organization (WTO) is the only international organization dealingwith the global rules of trade between nations. Its main function is to ensure thattrade flows as smoothly, predictably and freely as possible.

WHAT IS WTO?

Location : Geneva, SwitzerlandEstablished : 1 January 1995Created by : Uruguay Round negotiations (1986-94) Membership : 149 countries (on 11 December 2005)Budget : 175 million Swiss francs for 2006

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Secretariat staff : 635Head : Pascal Lamy (Director-General)

Functions

Administering WTO trade agreements

Forum for trade negotiations

Handling trade disputes

Monitoring national trade policies

Technical assistance and training for developing countries

Cooperation with other international organizations

2.2. THE 10 BENEFITS OF WTO

1. The system helps promote peace

2. Disputes are handled constructively

3. Rules make life easier for all

4. Freer trade cuts the costs of living

5. It provides more choice of products and qualities

6. Trade raises incomes

7. Trade stimulates economic growth

8. The basic principles make life more efficient

9. Governments are shielded from lobbying

10. The system encourages good government

The World Intellectual Property Organization (WIPO) is an internationalorganization dedicated to promoting the use and protection of works of the humanspirit. These works — intellectual property — are expanding the bounds of scienceand technology and enriching the world of the arts. Through its work, WIPO playsan important role in enhancing the quality and enjoyment of life, as well as creatingreal wealth for nations.

With headquarters in Geneva, Switzerland, WIPO is one of the 16 specializedagencies of the United Nations system of organizations. It administers 23 internationaltreaties dealing with different aspects of intellectual property protection. TheOrganization counts 183 nations as. Please visit the links below for more information— both general and specific — on WIPO.


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Status: An intergovernmental organizationMember States: 183Staff: 915 from 94 countriesTreaties Administered: 23Guiding Principles:

Transparency

Accountability

Consensus

To promote the protection of intellectual property throughout the world throughco-operation among States and, were appropriate, in collaboration with any otherinternational organization

To ensure administrative co-operation among the intellectual property Unions, thatis, the “Unions” created by the Paris and Berne Conventions and several sub-treaties concluded by members of the Paris Union.

Promotion of intellectual property protection worldwide

Promotion of creative and intellectual activity

Facilitation of technology transfer and dissemination of literary and artistic works

Modernization and strengthening of administrative systems

1883:Paris Convention

1893: BIRPI

1970: WIPO

1974: Specialized Agency of UN

WIPO Today

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2.3. WTO – WIPO COOPERATION AGREEMENT

How WIPO Works

The terms governing WIPO’s mandate, functions, finances and procedures are setout in the WIPO Convention.

Member States

WIPO’s Member States determine the strategic direction and activities of theOrganization. They meet in the Assemblies, committees and working groups.

There are currently 184 Member States, i.e. over 90 percent of the countries of the world.

Secretariat

The WIPO Secretariat, or International Bureau, is based in Geneva. WIPO staff,drawn from more than 90 countries, include experts in diverse areas of IP law and practice,as well as specialists in public policy, economics, administration and IT.

The respective divisions of the Secretariat are responsible for coordinating the meetingsof Member States and implementing their decisions; for administering the international IPregistration systems; for developing and executing the programs designed to achieve WIPO’sgoals; and for providing a repository of IP expertise to assist its members.

Core Tasks of WIPO

WIPO’s activities are conducted within the strategic framework set out in the biennialProgram and Budget document and are driven by demand from Member States. They fallbroadly into the following areas.

S.NO. Article Purpose

1. Article 1 Convention, Standards and Emblem accepted

2. Article 2 Laws and Regulations

3. Article 3 Implementation of article 6 ter of Paris convention for

the purpose of TRIPS agreement.

4. Article 4 Legal-Technical assistance and Technical cooperation.

5. Article 5 Final clause-Entry into force, amendment of this

agreement


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Developing international IP laws and standards

WIPO is responsible for promoting the progressive development and harmonizationof IP legislation, standards and procedures among its Member States. This includes furtherdevelopment of international laws and treaties regarding patents; trademarks, industrialdesigns and geographical indications; and copyright and related rights.

WIPO is also working with Member States to explore IP issues in the area oftraditional knowledge, traditional cultural expressions and genetic resources.

WIPO handles the administration of 24 international treaties (16 on industrial property;7 on copyright; plus the convention creating WIPO).

Delivering global IP protection services

WIPO administers fee-based services, based on international agreements, whichenable users in member countries to file international applications for patents (PCT), andinternational registrations for trademarks (Madrid system), designs (Hague System), andappellations of origin (Lisbon System).

WIPO administers four IP classification systems, which organize the mass ofinformation concerning inventions, trademarks, and industrial designs into indexed,manageable structures for easy retrieval.

WIPO’s Arbitration and Mediation Center offers dispute resolution services tobusinesses and individuals, including in the growth area of Internet domain name disputes.

Encouraging the use of IP for economic development

WIPO runs a range of programs aimed at increasing the effective use of IP bydeveloping nations as a tool for economic development. Programs include technicalassistance in support of member countries’ initiatives to improve their IP legislative,institutional and human resources framework; strategies for innovation promotion and IPexploitation; economic studies and material to inform public policy choices.

Promoting better understanding of IP

WIPO creates and disseminates a wealth of public outreach material. This aims toencourage creativity and innovation; and to increase understanding of how to protect andbenefit from the resulting IP. Seminars and information products also target specific groups,such as creators, small and medium-sized enterprises, research institutions and policy-makers. Other awareness-raising activities contribute to Member States’ efforts in thearea of enforcement of IP rights.

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Providing a forum for debate

WIPO meetings regularly bring together stakeholders from governments, rights-holders’groups and civil society in order to facilitate constructive debate on current challenges.WIPO also commissions and publishes studies on emerging issues.

2.4. GATTThe General Agreement on Tariffs and Trade (GATT)Introduction

The General Agreement on Trade and Tariff (GATT) was set up on October 30,1947 in Geneva with 23 countries as its founder members, and India was one of them. Itwas originally set up as a temporary arrangement to bring about trade liberalisation. Indiahas always been an active champion of multilateral trade negotiations. GATT later becamean important and permanent set-up to attend to all trade issues among member countries.Its membership also got enlarged to practically all the members of the United Nations,except the communist countries and East European countries.

2.4.1 Objectives of GATT

The broad aim of GATT has been to reduce the trade restrictions put up by individualnations in pursuit of their narrow national interests. The goal was to achieve throughmultilateral negotiations, settling of all trade disputes through a set of rules and regulationsevolved by GATT for its members.

The other objective was to aim at tariff concessions for exports and imports amongthe countries, with a view to aim at developing the full use of the resources of the world andexpanding trade. GATT always permitted exception to its general rules, which require theeventual elimination of all import restrictions. It was always subject to safeguards intendedto protect legitimate interests of other trading nations. The most important exceptions givenby GATT were the special protection given to agriculture by most nations and allow manyimport restrictions to protect the farmers. Their rules also made import restrictions toprotect the farmers. Their rules also made exceptions in the case of countries, which werein ‘balance of payments’ difficulties.

2.4.2. Work done by the GATT

From 1947 to 1967, GATT sponsored six rounds of multilateral trade negotiationsmainly with a view to bring down the trade barriers by persuading countries to bring downtheir import levies with a view to greater exchange of goods and more trade flow. The sixthround brought the weighted average tariff of major trading nations to be reduced by 2% onraw materials and 7.7% on industrial products.


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GATT played a prominent role in the settlement of trade disputes between twocountries. GATT played a useful role between 1947 and 1973. But in the seventies therewere many changes, which occurred in the world economy. The fixed system exchangerate was moving towards a floating system of exchange parity. The oil prices quadrupled in1973, and threatened to increase further. There was a worldwide economic recession in1974-75. Many of the developing countries had diversified their export base, and werebecoming competitors to developed countries.

In 1974, the next round of multilateral negotiations were commenced by GATT, andit was concluded in 1979 at Tokyo, and was referred to as ‘Tokyo round of negotiations.’Here tariffs were lowered by 27% to an average level of 5%. Certain non-tariff barrieragreements and codes were also agreed to.

An eighth round of trade negotiations under the auspices of GATT was launched inthe mid eighties. This was known as Uruguay Round. Apart from the usual exercise tobring down the trade barriers, it also attempted to draft trading rules to cover four majorsectors, not previously regulated. These were agriculture, services, investment, and intellectualproperty rights (patents, trademarks copyrights etc). It was also decided that an institutionalframework was to be given to GATT, and thus was born World Trade Organisation (WTOwhich was to replace GATT as an apex trade policy body.

The discussions, many times very vociferous, continued for eight long years. Many ofthe developing countries put forward their view strongly to protect their economies, and inthe Intellectual Property Rights discussion India played a prominent part and changingmany of the original stringent changeover for the developing countries. It also protectedthe age old traditions of the farmers to have the right to their own seed protection andvarious other clauses which may have a bearing on our agriculture.

The discussions dragged on and ultimately a deadline was given that it should becompleted at a conference in Morocco and the new organisation – WTO – should comeinto existence on 1st January 1995. Accordingly all the countries who are members of theGATT signed the WTO agreement and lodged the instrument of ratification on January 1,1995.

2.4.3. Patent Cooperation Treaty

Summary of the Patent Cooperation Treaty (PCT) (1970)

The Patent Cooperation Treaty makes it possible to seek patent protection for aninvention simultaneously in each of a large number of countries by filing an “international”patent application. Such an application may be filed by anyone who is a national or residentof a PCT contracting State. It may generally be filed with the national patent office of thecontracting State of which the applicant is a national or resident or, at the applicant’soption, with the International Bureau of WIPO in Geneva.

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If the applicant is a national or resident of a contracting State which is party to theEuropean Patent Convention, the Harare Protocol on Patents and Industrial Designs (HarareProtocol), the Bangui Agreement, or the Eurasian Patent Convention, the internationalapplication may also be filed with the European Patent Office (EPO), the African RegionalIndustrial Property Organization (ARIPO), The African INtellectual Property Organization(OAPI) or the Eurasian Patent Office (EAPO), respectively.

The Treaty regulates in detail the formal requirements with which any internationalapplication must comply.

The filing of a PCT application automatically has the effect of the designation of allPCT contracting States. The effect of the international application in each designated Stateis the same as if a national patent application had been filed with the national patent officeof that State.

The international application is subjected to what is called an “international search.”That search is carried out by one of the major patent offices [1] and results in an “internationalsearch report,” that is, a listing of the citations of published documents that might affect thepatentability of the invention claimed in the international application. In addition, a preliminaryand non-binding, written opinion on whether the invention appears to meet the patentabilitycriteria in light of the search report results is also issued.

The international search report and the written opinion are communicated to theapplicant who, after evaluating their content, may decide to withdraw his application, inparticular where the content of the report and opinion suggest that the granting of patentsis unlikely, or he may decide to amend the claims in the application.

If the international application is not withdrawn, it is, together with the internationalsearch report, published by the International Bureau. The written opinion is not publishedat this time.

If the applicant decides to continue with the international application with a view toobtaining national (or regional) patents, he can, in relation to most contracting States, waituntil the end of the thirtieth month from the priority date to commence the national procedurebefore each designated Office by furnishing a translation (where necessary) of the applicationinto the official language of that Office, paying to it the necessary fees and acquiring theservices of local patent agents.

If the applicant wishes to make amendments to the application, for example, in orderto overcome documents identified in the search report and conclusions made in the writtenopinion, and to have the potential patentability of the “as-amended” application reviewed,the optional international preliminary examination may be used. The result of the preliminaryexamination is an international preliminary report on patentability (IPRP Chapter II) whichis prepared by one of the major patent offices [2] and which contains, once again, a


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preliminary and non-binding opinion on the patentability of the claimed invention. It providesthe applicant with an even stronger basis on which to evaluate his chances of obtainingpatents, and, if the report is favorable, a stronger basis on which to continue with hisapplication before the national and regional patent Offices.

The procedure under the PCT has great advantages for the applicant, the patentoffices and the general public:

(i). applicants have up to 18 months more than if they had not used the PCT to reflecton the desirability of seeking protection in foreign countries, to appoint local patentagents in each foreign country, to prepare the necessary translations and to paythe national fees;

(ii). applicants can rest assured that, if their international application is in the formprescribed by the PCT, it cannot be rejected on formal grounds by any PCTcontracting State patent Office during the national phase of the processing of theapplication;

(iii).on the basis of the international search report and the written opinion, applicantscan evaluate with reasonable probability the chances of their invention beingpatented;

(iv).applicants have the possibility during the optional international preliminaryexamination to amend the international application and thus put it in order beforeprocessing by the various patent Offices;

(v). the search and examination work of patent Offices can be considerably reducedor eliminated thanks to the international search report, the written opinion and,where applicable, the international preliminary report on patentability which arecommunicated to the national and regional Offices together with the internationalapplication;

(vi).since each international application is published together with an international searchreport, third parties are in a better position to formulate a well-founded opinionabout the potential patentability of the claimed invention; and

(vii).for applicants, international publication puts the world on notice of theirapplications, which can be an effective means of advertising and looking for potentiallicensees.

2.5. PATENT COOPERATION TREATY

(PCT) – a multilateral treaty which became effective in 1978 that eliminates someof the duplication involved when obtaining patent protection for the same inventionin several countries. More than 40 nations are signatories of the PCT; with thePCT it is possible to file and prosecute a single international application, which hasthe same effect as filing a separate application in each PCT nation that the inventordesignates at the time of filing the application.

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The treaty that facilitates filing of international applications between 40 (Sept. 1988)member countries. It permits the applicant to file a single international applicationthat will be equivalent to a national filing in each of the countries designated on theapplication.

The Patent Cooperation Treaty (PCT) provides a unified procedure for filing patentapplications to protect inventions worldwide, or more precisely in about 125countries.

A single filing results in a single search accompanied with a written opinion (andoptionally a preliminary examination), after which the examination (if provided bynational law) and grant procedures are handled by the relevant national or regionalauthorities.

It simplifies the process of obtaining patents in many countries. A PCT applicationfor the invention of interest is filed with the PCT authorities, which preliminarilyassess the invention’s patentability.

The assessment helps one decide if the cost and effort of pursuing patent protectionfor the invention in specific countries is justifiable. The PCT is administered by theWorld Intellectual Property Organization (WIPO) in Geneva

PCT is becoming more and more popular among the (115) member countries.According to the statistic of World Intellectual Property Organization (WIPO),nearly 104,000 International applications under the PCT were filed representing14.3% increase on the number of applications filed in 2000. Major user of PCTare: USA 38% GERMANY 13% JAPAN 11% U.K. 62% FRANCE 4%

Other countries that have taken part in the PCT International application are India,Columbia, Equator, Philippines, Oman, Zambia and Tanzania.

2.5.1. Ultimately, the PCT

brings the world within reach; postpones the major costs associated with international patent protection; provides a strong basis for patenting decisions; and is used by the world’s major corporations, research institutions and universities

when they seek international patent protection.

The PCT created a Union, which has an Assembly. Every State party to the PCT isa member of the Assembly.


NOTES


The Assembly of the PCT Union has established a special measure to the benefit of(1) natural persons who are nationals of and reside in States whose per capita nationalincome is below US$ 3,000, and (2) applicants, whether a natural person or not, who arenationals of and reside in States which are classed as least developed countries by theUnited Nations. That benefit consists of a reduction of 75 percent of certain fees under theTreaty.

Details concerning the PCT can be obtained by consulting the PCT website as wellas the PCT Applicant’s Guide, published by WIPO in English and French (there are alsoChinese, German and Japanese editions, which are not published by WIPO) and the PCTNewsletter, published by WIPO in English.

The PCT was concluded in 1970, amended in 1979 and modified in 1984 and in2001.

It is open to States party to the Paris Convention for the Protection of IndustrialProperty (1883). Instruments of ratification or accession must be deposited with the DirectorGeneral of WIPO.

2.6 TRIPS AGREEMENT

THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUALPROPERTY RIGHTS (TRIPS)

The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights(TRIPS), negotiated during the Uruguay Round, introduced intellectual property rules forthe first time into the multilateral trading system. The Agreement, while recognizing thatintellectual property rights (IPRs) are private rights, establishes minimum standards ofprotection that each government has to give to the intellectual property right in each of theWTO Member countries. The Member countries are, however, free to provide higherstandards of intellectual property rights protection.

The Agreement is based on and supplements, with additional obligations, the Paris,Berne, Rome and Washington conventions in their respective fields. Thus, the Agreementdoes not constitute a fully independent convention, but rather an integrative instrumentwhich provides “Convention–plus” protection for IPRs.

The TRIPS Agreement is, by its coverage, the most comprehensive internationalinstrument on IPRs, dealing with all types of IPRs, with the sole exception of breeders’rights. IPRs covered under the TRIPS agreement are:

(a) Copyrights and related rights;(b) Trade marks;(c) Geographical Indications;

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(d) Industrial Designs(e) Patents(f) Layout designs of integrated circuits; and(g) Protection of undisclosed information (trade secrets).

The TRIPS agreement is based on the basic principles of the other WTO Agreements,like non-discrimination clauses - National Treatment and Most Favoured Nation Treatment,and are intended to promote “technological innovation” and “transfer and dissemination”of technology. It also recognizes the special needs of the least-developed country Membersin respect of providing maximum flexibility in the domestic implementation of laws andregulations.

Part V of the TRIPS Agreement provides an institutionalized, multilateral means forthe prevention of disputes relating to IPRs and settlement thereof. It is aimed at preventingunilateral actions.

2.6.1. (a) Copyrights and related rights

Part II Section 1 (Article 9 to Article 14) of the TRIPS agreement deals with theminimum standard in respect of copyrights.

Copyright is a right given by the law to creators of literary, dramatic, musical andartistic works and producers of cinematograph films and sound recordings. It is a bundleof rights including, inter alia, rights of reproduction, communication to the public, adaptationand translation of the work. There could be slight variations in the composition of the rightsdepending on the work.

The Copyright Act, 1957 protects original literary, dramatic, musical and artistic worksand cinematograph films and sound recordings from unauthorized use. Unlike the casewith patents, copyright protects the expressions and not the ideas. There is no copyright inan idea. The general rule is that a copyright lasts for 60 years. In the case of originalliterary, dramatic, musical and artistic works the 60-year period is counted from the yearfollowing the death of the author. In the case of cinematograph films, sound recordings,photographs, posthumous publications, anonymous and pseudonymous publications, worksof government and works of international organizations, the 60-year period is countedfrom the date of publication.

The Copyright Act, 1957 came into effect from January 1958. This Act has beenamended five times since then, i.e., in 1983, 1984, 1992, 1994 and 1999, with theamendment of 1994 being the most substantial. The Copyright Act, 1957 continues withthe common law


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THE TRIPS AGGREEMENT

Agreements on Trade Related aspects of Intellectual Property rights (TRIPs) cameinto effect on January 1,1995. It was a major outcome of the Uruguay Round ofmultilateral trade negotiations, which led to the establishment of the World TradeOrganization (WTO).

Developing country members of the WTO have had to comply with all the provisionsof TRIPS since January 1, 1996. For developing countries, the transitionalarrangements incorporated into TRIPS allow a gradual phasing-in a period of 5years till January 1, 2000.

Such a phasing-in period is also permitted to former centrally planned economies,which are now in the process of transition to the market economy.

Copyrights in the TRIPS Agreement

Protection of works covered by Berne Convention. (Art.9) Protection of computer programs as literary works and of compilations of data.

(Art.10) Recognition of rental rights, at least for phonograms, computer programs, and for

cinematographic works. (Art.11) Recognition of a 50 years’ minimum term for works owned by juridical persons,

and for performers and phonogram producers. (Art 12) Exceptions to exclusive rights must be limited to special cases, which do not conflict

with a normal exploitation of the work and do not unreasonably prejudice thelegitimate interests of the rights-holder. (Art 13)

Recognition of rights of performers, producers, of phonograms and broadcastingorganizations. (Art.14)

Developments elsewhere have brought about a certain degree of convergence incopyright regimes in the developed world.

The Copyright Act is compliant with most international conventions and treaties in thefield of copyrights. India is a member of the Berne Convention for the Protection of Literaryand Artistic Works of 1886 (as modified at Paris in 1971), and the Universal CopyrightConvention of 1951. Though India is not a member of the Rome Convention of 1961, theCopyright Act, 1957 is fully compliant with the Rome Convention provisions.

Two new treaties, collectively termed as Internet Treaties, were negotiated in 1996under the auspices of the World Intellectual Property Organization (WIPO). These treatiesare called the ‘WIPO Copyrights Treaty (WCT)’ and the ‘WIPO Performances andPhonograms Treaty (WPPT)’. These treaties were negotiated essentially to provide forthe protection of the rights of copyright holders, performers and producers of phonogramsin the Internet and digital era. India is not a member of these treaties as yet.

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2.6.2. (b) Trademarks

Part II Section 2 (Article 15 to Article 21) of the TRIPS agreement contains theprovisions for minimum standards in respect of Trademarks.

A trademark is a distinctive sign which identifies certain goods or services as thoseproduced or provided by a specific person or enterprise. Its origin dates back to ancienttimes, when craftsmen reproduced their signatures, or “marks” on their artistic or utilitarianproducts. Over the years these marks evolved into today’s system of trademark registrationand protection. The system helps consumers identify and purchase a product or servicebecause its nature and quality, indicated by its unique trademark, meets their needs. Atrademark provides protection to the owner of the mark by ensuring the exclusive right touse it to identify goods or services, or

Trademark in the TRIPS Agreement:

Protectable subject matter includes any sign, combination of signs capable ofdistinguishing the goods or services from others. Registration depends ondistinctiveness end use. (Art 15)

Rights on the owners of registered trademark conferred to prevent third party nothaving his consent, from using in course of trade relating to identical goods/ services.(Art. 16)

Exception to exclusive rights must be limited and take into account the legitimateinterest of the trademark owner and of third parties. (Art. 17)

The minimum term of protection is seven years, indefinitely renewable.(Art.18) Requirements for use are to be limited in terms of both the minimum period of non-

use and the admissibility of reasons for non-use. (Art.19) Special requirements for use are limited, as well as the conditions of licensing and

assignment of trademarks. (Art 20) A trademark may be assigned without transfer of the business to which it

belongs.(Art. 21)

To authorize another to use it in return for a payment. The period of protection varies,but a trademark can be renewed indefinitely beyond the time limit on payment of additionalfees. Trademark protection is enforced by the courts, which in most systems have theauthority to block trademark infringement.

There are two international treaties governing Trademarks - the Madrid AgreementConcerning the International Registration of Marks and the Madrid Protocol.

In India, the Trade Marks Act, 1999 was passed on 30th December 1999 and cameinto force on 15th September 2003. Before commencement of this Act, the Trade &Merchandise Marks Act governed the protection of trademarks in India, which has nowbeen replaced by the Trade Marks Act. The Trade Marks Act, 1999 is in coherence with


NOTES


the provisions of the TRIPS Agreement. The new Act provides for registration of trademarksfor services in addition to goods, and has increased the period of registration and renewalfrom 7 yrs to 10 yrs.

2.6.3 (c) Geographical Indications (GI)

Section 3 Part II (Article 22 to Article 24) of the TRIPS Agreement contains theprovisions for minimum standards in respect of geographical indications.

Geographical Indications of Goods are defined as that aspect of intellectual propertywhich refers to the geographical indication referring to a country or to a place situatedtherein as being the country or place of origin of that product. Typically, such a nameconveys an assurance of quality and distinctiveness which is essentially attributable to thefact of its origin in that defined geographical locality, region or country. Under Articles 1 (2)and 10 of the Paris Convention for the Protection of Industrial Property, geographicalindications are covered as an element of IPRs.

GI in the TRIPS Agreement

Legal means shall be provided to prevent use of an indication in a manner thatmisleads the public or when it constitutes unfair competition, and to invalidate atrademark if the public is misled as to the true place of origin. (Art.22)

Additional protection is conferred on geographical indications for wines and spirits,including ways of protecting homonymous indications. (Art.23)

Negotiations shall be undertaken to establish a multilateral system of notificationand registration, aimed at increasing the protection of indications for wines andspirits.(Art.24)

Exceptions to the required protection may be based on prior and continuous useof an indication, prior application or registration in good faith of a trademark, or onthe customary use of the indication. (Art.24)

Obligations only relate to geographical indications that are protected in their countryof origin. (Art 24)

In India, the Geographical Indications of Goods (Registration and Protection) Act,1999 came into force with effect from 15th September 2003. This Act seeks to providefor the registration and protection of Geographical Indications relating to goods in India.The Controller General of Patents, Designs and Trade Marks is also the registrar for theGeographical Indications, and the Geographical Indications Registry is located at Chennai.

2.6.4. (d) Industrial Designs (ID)

Section 4, Part II (Article 25 and Article 26) of the TRIPS Agreement contains theprovisions for minimum standards in respect of Industrial designs.

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Industrial designs are an element of intellectual property. Industrial designs refer to creativeactivity, which result in the ornamental or formal appearance of a product. Design rightsrefer to a novel or original design that is accorded to the proprietor of a validly registereddesign. But it does not include any mode or principle or construction or any thing which isin substance a mere mechanical device.

India has already amended its national legislation to provide for these minimal standards.The essential purpose of the Designs Act, 2000 is to promote and protect the designelement of industrial production. It is also intended to promote innovative activity in thefield of industries. The present legislation is aligned with the changed technical andcommercial scenario and conforms to the international trends in design administration.

Under the Designs Act, the designs would not include any trade mark, as defines inthe Trade Marks Act or property mark or artistic works as defined in the Copyright Act.

The duration of the registration of a design is initially ten years from the date ofregistration, but in cases where claim to priority has been allowed the duration is ten yearsfrom the priority date. This initial period of registration may be extended by further periodof 5 years on an application before the expiry of the said initial period of

Industrial Design in the TRIPS Agreement:

Protection to new or original designs. (Art.25) Protection for textile designs through industrial design or copyright law. (Art 25). Exclusive rights can be exercised against acts for commercial purposes, including

importation. (Art 26) Minimum Term of Protection is ten years. (Art 26)

Copyright

The proprietor of a design may make an application for such an extension as soon asthe design is registered.

2.6.5. (e) Patents

Section 5 Part II of the TRIPS Agreement (Article 27 to Article 34) contains theprovisions for standards in respect of the Patents.

A Patent is an exclusive right granted by a country to the inventor to make, use,manufacture and market the invention that satisfies the conditions of novelty, innovativenessand usefulness Members are required to comply with the Paris Convention for the Protectionof Industrial Property.

Introduction of Patent Law in India took place in 1856 whereby certain exclusiveprivileges to the inventors of new inventions were granted for a period of 14 years. Presently,


NOTES


the patent provisions in India are governed by the Patents Act, 1970. The Indian PatentsAct is fully compatible with the TRIPS Agreement, following amendments to it; the lastamendment being in 2005 by the Patents (Amendment) Act, 2005.

Product patents in the field of pharmaceuticals and agro-chemicals have beenintroduced by deleting Section 5 of the Patents Act. Those inventions which are considereda mere discovery of a new form of a known substance or mere discovery of a new propertyor new use will not be considered patentable. A provision for patenting of software that isembedded in hardware has also been introduced in the Patents Act.

The term of every patent is now for 20 years from the date of filing. Provisions for thepre-grant opposition to the grant of patents have also been incorporated in the Act. Earliersuch provisions were available only for post-grant opposition. The filing date of a patentapplication and its complete specification will now be the

Patents in the TRIPS Agreement:

Patents shall be granted for any inventions, whether products or processes, in allfield of technology, provided they are new, involve an inventive step and are capableof industrial application. No discrimination in respect to place of invention. Exceptionavailable for diagnostic, therapeutic and surgical methods of treatment for humansor animals, as well as plants and animals and essentially biological processes forthe production thereof. (Art.27)

Exclusive right to owners against third party for using subject matter includingprocess of patent, without his consent. (Art 28)

Inventions shall be disclosed in a manner, which is \sufficiently clear and completefor a skilled person in the art to carry out the invention. (Art. 29)

Limited exceptions to the exclusive rights provided such exception do not conflictwith normal exploitation of the patent. (Art.30)

Revocation/forfeiture is subject to judicial review. (Art 32)

The term of protection shall be at least 20 years from the date of application.(Art.33)

Reversal off the burden of proof in civil proceedings relating to infringement ofprocess patents is to be established in certain cases. (Art.34)

International date of filing for the patent as per the provisions of the PatentCooperation Treaty

A provision has also been introduced in the Patents Act to enable the grant ofcompulsory licenses for the export of medicines to countries with limited or no manufacturingcapacities to meet emergent public health situations. The law effectively balances and

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calibrates intellectual property protection with public health concerns and national security.This provision is in line with the Decision of the WTO of 30 August 2003 on theImplementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement andPublic Health.

2.6.6. (f) Layout Designs of Integrated Circuits

Articles 35 to 38 of Section 6/Part II of the TRIPS agreement contains the provisionsfor protection of rights in respect of Layout Designs of Integrated Circuits.

The basis for protecting integrated circuit designs (Topographies) in the TRIPSAgreement is the Washington Treaty on Intellectual Property in Respect of IntegratedCircuits, 1989. India is a signatory to this international agreement.

In India, the IPRs on the layout designs of integrated circuits are governed by theSemiconductor Integrated Circuits Layout-Design Act, 2000.

Under this Act, a layout-design shall be considered original if it is the result of itscreator’s own intellectual efforts and is not commonly known to the creators of layout-designs and manufacturers of semiconductor integrated circuits at the time of its creation.But a layout-design, which is not original, or which has been commercially exploited anywherein India or in a convention country; or which is not inherently distinctive; or which is notinherently capable of being distinguishable from any other registered layout-design, shallnot be registered as a layout-design. But if a layout-design which has been

Lay out Design in the TRIPS Agreement:

Protection in accordance with Treaty on Intellectual Property in Respect ofIntegrated Circuit. (Art.35)

Protection shall extend to layout designs as such and to the industrial articles thatincorporate them. (Art.36)

Bona fide purchasers of products involving infringing layout designs shall be liableto pay compensation to the rights-holder after. (Art.37)

Term of protection is a minimum of 10 years notification. (Art 38)

Commercially exploited for not more than two years from the date on which anapplication for its registration has been filed either in India or in a convention country shallbe treated as not having been commercially exploited.

The registration of a layout-design shall be only for a period of ten years countedfrom the date of filing an application for registration or from the date of first commercialexploitation anywhere in India or in any country whichever is earlier. No person shall beentitled to institute any proceeding to prevent, or to recover damages for, the infringementof an unregistered layout-design.


NOTES


2.6.7. (g) Protection of undisclosed information

Article 39 of Section 7 Part II of the TRIPS agreement elaborates on the protectionsof trade secrets.

A Trade Secret or undisclosed information is any information that has been intentionallytreated as secret and is capable of commercial application with an economic interest. Itprotects information that confers a competitive advantage to those who possess suchinformation, provided such information is not readily available with or discernible by thecompetitors. They include technical data, internal processes, methodologies, survey methodsused by professional pollsters, recipes, a new invention for which a patent application hasnot yet been filed, list of customers, process of manufacture, techniques, formulae, drawings,training material, source code, etc. Trade Secrets can be used to protect valuable “knowhow” that gives an enterprise a competitive advantage over its competitors.

The Agreement provides that natural and legal persons shall have the possibility ofpreventing information lawfully within their control from being disclosed to, acquired by orused by others without their consent in a manner contrary to honest commercial practices.Further, parties are required to protect against unfair

Trade Secrets in the TRIPS Agreement

Undisclosed information is to be protected against unfair commercial practices, ifthe information is secret, has commercial value and is subject to steps to keep itsecret.

Secret data submitted for the approval of new chemical entities for pharmaceuticaland agrochemical products should be protected against unfair commercial useand disclosure by governments. commercial uses, undisclosed or other dataobtained as a condition of approving the marketing of pharmaceutical or ofagricultural chemical products.

There is no specific legislation regulating the protection of trade secrets. India followscommon law approach of protection based on contract laws.

2.7 ISSUES UNDER NEGOTIATIONS IN THE TRIPS COUNCIL OF THE WTO

A. Relationship between TRIPS Agreement and the Convention on Biological Diversity(CBD) and Protection of Traditional Knowledge.

B. Additional protection to geographical indications (GIs) to products other than winesand spirits.

C. Multilateral GI Register for wines and spirits.

D. Non-Violation and Situation Complaints.

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2.8 BERNE CONVENTION

Summary of the Berne Convention for the Protection of Literary and Artistic Works(1886)

The Convention rests on three basic principles and contains a series of provisionsdetermining the minimum protection to be granted, as well as special provisions availableto developing countries which want to make use of them.

(1). The three basic principles are the following:(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 which were first published in such aState) must be given the same protection in each of the other contracting States asthe latter grants to the works of its own nationals (principle of “national treatment”)[1].

(b).Such protection must not be conditional upon compliance with any formality(principle of “automatic” protection) [2].

(c). Such protection is independent of the existence of protection in the country oforigin of the work (principle of the “independence” of protection). If, however, acontracting State provides for a longer term than the minimum prescribed by theConvention and the work ceases to be protected in the country of origin, protectionmay be denied once protection in the country of origin ceases [3].

(2). The minimum standards of protection relate to the works and rights to be protected, and the duration of the protection:a) As to works, the protection must include “every production in the literary, scientific

and artistic domain, whatever may be the mode or form of its expression” (Article2(1) of the Convention).

b) Subject to certain permitted reservations, limitations or exceptions, the followingare among the rights which must be recognized as exclusive rights of authorization: the right to translate, the right to make adaptations and arrangements of the work, the right to perform in public dramatic, dramatico-musical and musical works, the right to recite in public literary works, the right to communicate to the public the performance of such works, the right to broadcast (with the possibility of a contracting State to provide for

a mere right to equitable remuneration instead of a right of authorization), the right to make reproductions in any manner or form (with the possibility of

a contracting State to permit, in certain special cases, reproduction withoutauthorization provided that the reproduction does not conflict with the normalexploitation of the work and does not unreasonably prejudice the legitimateinterests of the author, and with the possibility of a contracting State to provide,in the case of sound recordings of musical works, for a right to equitableremuneration),


NOTES


the right to use the work as a basis for an audiovisual work, and the right toreproduce, distribute, perform in public or communicate to the public that audiovisualwork [4].

The Convention also provides for “moral rights,” that is, the right to claim authorshipof the work and the right to object to any mutilation or deformation or other modificationof, or other derogatory action in relation to, the work which would be prejudicial to theauthor’s honor or reputation.

c) As to the duration of protection, the general rule is that protection must be granteduntil the expiration of the 50th year after the author’s death. There are, however,exceptions to this general rule. In the case of anonymous or pseudonymous works,the term of protection expires 50 years after the work has been lawfully madeavailable to the public, except if the pseudonym leaves no doubt as to the author’sidentity or if the author discloses his identity during that period; in the latter case,the general rule applies. In the case of audiovisual (cinematographic) works, theminimum term of protection is 50 years after the making available of the work tothe public (“release”) or—failing such an event—from the creation of the work. Inthe case of works of applied art and photographic works, the minimum term is 25years from the creation of such a work [5].

(3) Countries regarded as developing countries in conformity with the established practiceof the General Assembly of the United Nations may, for certain works and undercertain conditions, depart from these minimum standards of protection with regard tothe right of translation and the right of reproduction.

The Berne Union has an Assembly and an Executive Committee. Every country memberof the Union which has adhered to at least the administrative and final provisions of theStockholm Act is a member of the Assembly. The members of the Executive Committeeare elected from among the members of the Union, except for Switzerland, which is amember ex officio.

The establishment of the biennial program and budget of the WIPO Secretariat—asfar as the Berne Union is concerned—is the task of its Assembly.

The Berne Convention, concluded in 1886, was revised at Paris in 1896 and atBerlin in 1908, completed at Berne in 1914, revised at Rome in 1928, at Brussels in 1948,at Stockholm in 1967 and at Paris in 1971, and was amended in 1979.

The Convention is open to all States. Instruments of ratification or accession must bedeposited with the Director General of WIPO.

2.9 ROME CONVENTION

Summary of the Rome Convention for the Protection of Performers, Producers ofPhonograms and Broadcasting Organisations (1961)

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The Convention secures protection in performances of performers, phonograms ofproducers of phonograms and broadcasts of broadcasting organizations.

1. Performers (actors, singers, musicians, dancers and other persons who performliterary or artistic works) are protected against certain acts they have not consentedto. Such acts are: the broadcasting and the communication to the public of theirlive performance; the fixation of their live performance; the reproduction of such afixation if the original fixation was made without their consent or if the reproductionis made for purposes different from those for which they gave their consent.

2. Producers of phonograms enjoy the right to authorize or prohibit the direct orindirect reproduction of their phonograms. Phonograms are defined in the RomeConvention as meaning any exclusively aural fixation of sounds of a performanceor of other sounds. When a phonogram published for commercial purposes givesrise to secondary uses (such as broadcasting or communication to the public inany form), a single equitable remuneration must be paid by the user to theperformers, or to the producers of phonograms, or to both; contracting States arefree, however, not to apply this rule or to limit its application.

3. Broadcasting organizations enjoy the right to authorize or prohibit certain acts,namely: the rebroadcasting of their broadcasts; the fixation of their broadcasts; thereproduction of such fixations; the communication to the public of their televisionbroadcasts if such communication is made in places accessible to the public againstpayment of an entrance fee.

The Rome Convention allows exceptions in national laws to the above-mentionedrights as regards private use, use of short excerpts in connection with the reporting ofcurrent events, ephemeral fixation by a broadcasting organization by means of its ownfacilities and for its own broadcasts, use solely for the purpose of teaching or scientificresearch and in any other cases—except for compulsory licenses that would be incompatiblewith the Berne Convention—where the national law provides exceptions to copyright inliterary and artistic works. Furthermore, once a performer has consented to the incorporationof his performance in a visual or audiovisual fixation, the provisions on performers’ rightshave no further application.

Protection must last at least until the end of a period of 20 years computed from theend of the year in which:

(a). the fixation was made, for phonograms and for performances incorporated therein; (b). the performance took place, for performances not incorporated in phonograms; (c). the broadcast took place, for broadcasts. (However, national laws ever more

frequently provide for a 50-year term of protection, at least for phonograms andfor performances.)


NOTES


WIPO is responsible, jointly with the ILO and UNESCO, for the administration ofthe Rome Convention. These three organizations constitute the Secretariat of theIntergovernmental Committee set up under the Convention and consisting of therepresentatives of 12 Contracting States.

The Convention does not provide for the institution of a Union or a budget. It establishesan Intergovernmental Committee composed of Contracting States, that considers questionsconcerning the Convention.

This Convention is open to States party to the Berne Convention for the Protectionof Literary and Artistic Works (1886) or to the Universal Copyright Convention. Instrumentsof ratification or accession must be deposited with the Secretary-General of the UnitedNations. States may make reservations with regard to the application of certain provisions.

REVIEW QUESTIONS

1) Explain the core task of WIPO2) Explain salient features of GATT3) Discuss the importance of TRIPS agreement4) Discuss the impact of PCT5) Write notes on

(i). Bern convention(ii). (ii) Rome convention

6) Salient features of WIPO

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NOTES


UNIT III

PATENTS3.1. INTRODUCTION TO PATENTS- OVERVIEW

A patent is a set of exclusive rights granted by a state to an inventor or his assigneefor a limited period of time in exchange for a disclosure of an invention.

The procedure for granting patents, the requirements placed on the patentee and theextent of the exclusive rights vary widely between countries according to national laws andinternational agreements. Typically, however, a patent application must include one or moreclaims defining the invention which must be new, inventive, and useful or industrially applicable.In many countries, certain subject areas are excluded from patents, such as business methodsand mental acts. The exclusive right granted to a patentee in most countries is the right toprevent others from making, using, selling, or distributing the patented invention withoutpermission.[1]

The term patent usually refers to a right granted to anyone who invents or discoversany new and useful process, machine, article of manufacture, or composition of matter, orany new and useful improvement thereof. The additional qualification utility patents isused in the United States to distinguish them from other types of patents but should not beconfused with utility models granted by other countries. Examples of particular species ofpatents for inventions include biological patents, business method patents, chemical patentsand software patents.

Some other types of intellectual property rights are referred to as patents in somejurisdictions: industrial design rights are called design patents in some jurisdictions (theyprotect the visual design of objects that are not purely utilitarian), plant breeders’ rights aresometimes called plant patents, and utility models or Gebrauchsmuster are sometimescalled petty patents or innovation patents. This article relates primarily to the patent foran invention, although so-called petty patents and utility models may also be granted forinventions.

Certain grants made by the monarch in pursuance of the royal prerogative weresometimes called letters patent, which was a government notice to the public of a grant of

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an exclusive right to ownership and possession. These were often grants of a patent-likemonopoly and predate the modern British origins of the patent system. For other uses ofthe term patent see Land patents, which were land grants by early state governments inthe USA. This reflects the original meaning of letters patent that had a broader scope thancurrent usage.

3.2. KEY OBJECTIVES


A general view about Patents and an introduction Historical development, concepts on Novelty, Utility, Non-Obviousness. An idea about Patentable and Non Patentable Inventions. Basic procedure for Filing of patents and its acquisition. The different compulsory Licenses & patent offices in India and jurisdiction.

PATENTS—WHAT IT IS

A Patent is an intellectual property right relating to inventions and is the grant ofexclusive right, for limited period, provided by the Government to the patentee, in exchangeof full disclosure of his invention, for excluding others, from making, using, selling, importingthe patented product or process producing that product for those purposes. The purposeof this system is to encourage inventions by promoting their protection and utilization so asto contribute to the development of industries, which in turn, contributes to the promotionof technological innovation and to the transfer and dissemination of technology. Under thesystem, Patents ensure property rights (legal title) for the invention for which patent hasbeen granted, which may be extremely valuable to an individual or a Company. One shouldmake the fullest possible use of the Patent System and the benefits it provides. Patent rightis territorial in nature and a patent obtained in one country is not enforceable in othercountry. The inventors/their assignees are required to file separate patent applications indifferent countries for obtaining the patent in those countries.

Historical development

3.3. HISTORY OF INDIAN PATENT SYSTEM

The first legislation in India relating to patents was the Act VI of 1856. The objectiveof this legislation was to encourage inventions of new and useful manufactures and toinduce inventors to disclose secret of their inventions. The Act was subsequently repealedby Act IX of 1857 since it had been enacted without the approval of the sovereign. Freshlegislation for granting ‘exclusive privileges’ was introduced in 1859 as Act XV of 1859.This legislation contained certain modifications of the earlier legislation, namely, grant ofexclusive privileges to useful inventions only and extension of priority period from 6 to 12months. The Act excluded importers from the definition of inventor. The 1856 Act was


NOTES


based on the United Kingdom Act of 1852 with certain departures including allowingassignees to make application in India and also taking prior public use or publication inIndia or United Kingdom for the purpose of ascertaining novelty.

The Act of 1859 provided protection for invention only and not for designs whereasUnited Kingdom had been protecting designs from 1842 onwards. To remove this lacuna,the ‘Patterns and Designs Protection Act’ (Act XIII) was passed in 1872. This Act amendedthe 1859 Act to include any new and original pattern or design or the application of suchpattern to any substance or article of manufacture within the meaning of ‘new manufacture’.The Act XV of 1859 was further amended in 1883 by XVI of 1883 to introduce a provisionto protect novelty of the invention, which prior to making application for their protectionwere disclosed in the Exhibitions of India. A grace period of 6 months was provided forfiling such applications after the date of the opening of such Exhibition.

In 1888, new legislation was introduced to consolidate and amend the law 7 relatingto invention and designs in conformity with the amendments made in the UK law. Themodifications introduced in the Indian law, by Act V of 1888, over the UK legislation,inter alia, includes :

Shifting of authority to administer the Act from the Home department to Secretaryto Government of India;

Extension of the jurisdiction of the Act to other courts apart from High Courts ofMadras, Calcutta and Bombay;

Reduction in the fee from Rs. 100 to Rs. 10 only at filing stags; Graduation of fee as to amend approximately with the increasing value with the

invention acquires as it becomes more commonly known and used. Provision for detailed disclosure of the invention, including best mode of working

the invention in full clear, concise and exact terms so as to enable any personskilled in the art or science to make use of the invention;

Provision of powers to call for a model of the invention; Change of time for filing petition in respect of patent granted in United Kingdom

from 12 months from the ‘letters patent’ to 12 months from the ‘date of sealing’; Powers to extend the term of exclusive privileges by 7 years ordinarily and 14

years in exceptional cases. Provision for granting compulsory licence where invention is not made accessible

to public, on reasonable terms; Appointment of Agents to encourage filing by foreign inventor; Introduction of provision for protection of new or original design; Provision for counting the grace period for filing application for invention displayed

in the Exhibition from the date of admission of the invention into the Exhibitioninstead of the date of the opening of the Exhibition.

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In 1911, the Indian Patents and Designs Act, 1911, (Act II of 1911) was brought inreplacing all the previous legislations on patents and designs. This Act brought patentadministration under the management of Controller of Patents for the first time. This Actwas amended in 1920 to provide for entering into reciprocal arrangements with UK andother countries for securing priority. In 1930, further amendments were made to incorporate,inter-alia, provisions relating to grant of secret patents, patent of addition, use of inventionby Government, powers of the Controller to rectify register of patent and increase of termof the patent from 14 years to 16 years. In 1945, another amendment was made to providefor filing of provisional specification and submission of complete specification within ninemonths.

After Independence, it was felt that the Indian Patents & Designs Act, 1911 was notfulfilling its objective. It was found desirable to enact comprehensive patent law owing tosubstantial changes in political and economic conditions in the country. Accordingly, theGovernment of India constituted a committee under the Chairmanship of Justice (Dr.)Bakshi Tek Chand, a 8 retired Judge of Lahore High Court, in 1949, to review the patentlaw in India in order to ensure that the patent system is conducive to the national interest.The terms of reference included —

(a) to survey and report on the working of the patent system in India;(b) to examine the existing patent legislation in India and to make recommendations

for improving it, particularly with reference to the provisions concerned with theprevention of abuse of patent rights;

(c) to consider whether any special restrictions should be imposed on patent regardingfood and medicine;

(d) to suggest steps for ensuring effective publicity to the patent system and to patentliterature, particularly regarding patents obtained by Indian inventors;

(e) to consider the necessity and feasibility of setting up a National Patents Trust;(f) to consider the desirability or otherwise of regulating the profession of patent agents(g) to examine the working of the Patent Office and the services rendered by it to the

public and make suitable recommendations for improvement; and(h) to report generally on any improvement that the Committee thinks fit to recommend

for enabling the Indian Patent System to be more conducive to national interest byencouraging invention and the commercial development and use of inventions.

The Committee submitted its interim report on 4th August, 1949 with recommendationsfor prevention of misuse or abuse of patent right in India and for amendments to sections22, 23 & 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Actsof 1919 and 1949. The main recommendations of the Committee were as follows:-


NOTES


a. Any interested person may apply for a compulsory licence or revocation of the patenton any of the following grounds, namely —(i). patented invention, being capable of being commercially worked in India, is not

being commercially worked therein to the fullest possible extent;(ii). demand for the patented article in India is not being met to an adequate extent or

on reasonable terms;(iii).commercial working of the invention in India is being prevented or hindered by the

importation of the patented articles; and(iv).the refusal of the patentee to grant a licence or licences on reasonable terms,

whereby the commercial or industrial activities in India are prevented or hindered;

b. for obtaining relief against abuse of patent rights, an application can be made to theController of Patents and Designs any time after the sealing of the patent and the orderof the Controller to be appealable before the 9 appellate authority which should be anad-hoc Special Tribunal nominated by the Central Government consisting of –

(i). a sitting or retired judge of a High Court ( as the President),(ii). a barrister or advocate of not less than ten years standing, preferably conversant

with patent law and procedure, and(iii).a technical expert in the particular subject with which the patent in question is

concerned The functions of the Special Tribunal should be judicatory and notadvisory, and its decisions should be final and it should have the power toaward costs.

The committee also observed that the Patents Act should contain clear indication toensure that food and medicine and surgical and curative devices are made available to thepublic at the cheapest price commensurate with giving reasonable compensation to thepatentee.

Based on the above recommendation of the Committee, the 1911 Act was amendedin 1950 (Act XXXII of 1950) in relation to working of inventions and compulsory licence/revocation. Following grounds were provided for making applications for compulsorylicence:

(a) patented invention, being capable of being commercially worked in India, is notbeing commercially worked therein to the fullest possible extent;

(b) demand for the patented article in India is not being met to an adequate extent oron reasonable terms;

(c) commercial working of the invention in India is being prevented or hindered bythe importation of the patented articles;

(d) the refusal of the patentee to grant a licence or licences on reasonable terms, thecommercial or industrial activities in India are prevented or hindered;

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(e) a market for the export of the patented article manufactured in India is not beingsupplied;

(f) the working or efficient working in India of any other patented invention whichmakes a substantial contribution to the establishment or development of commercialor industrial activities in India is unfairly prejudiced; and

(g) conditions of licence unfairly prejudiced the establishment or development ofcommercial or industrial activities in India. The time period prescribed for makingthe applications was “at any time after expiration of three years from the date ofsealing.” The application could also be made by the licencee. The term, ‘patentedarticle’ included any article made by a patented process. Other provisions wererelated to endorsement of the patent with the words ‘licence of right’ on anapplication by the Government so that the Controller could grant licences. In1952, an amendment was made to provide 10 compulsory licence in relation topatents in respect of food and medicines, insecticide, germicide or fungicide anda process for producing substance or any invention relating to surgical or curativedevices, through Act LXX of 1952 . The compulsory licence was also availableon notification by the Central Government. Based on the recommendations of theCommittee, a bill was introduced in the Parliament in 1953 (Bill No.59 of 1953).However, the bill lapsed on dissolution of the Lok Sabha.

In 1957, the Government of India appointed Justice N. Rajagopala AyyangarCommittee to examine the question of revision of the Patent Law and advise governmentaccordingly. The report of the Committee, which comprised of two parts, was submittedin September, 1959. The first part dealt with general aspects of the patent law and thesecond part gave detailed note on the several clauses of the lapsed bill of 1953. The firstpart also dealt with evils of the patent system and solution with recommendations in regardto the law. The committee recommended retention of the patent system, despite itsshortcomings. This report recommended major changes in the law which formed the basisof the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on21st September, 1965, which, however, lapsed. In 1967, an amended bill was introducedwhich was referred to a Joint Parliamentary Committee and on the final recommendationof the Committee, the Patents Act, 1970 was passed. This Act repealed and replaced the1911 Act so far as the patents law was concerned. However, the 1911 Act continued tobe applicable to designs. Most of the provisions of the 1970 Act were brought into forceon 20th April, 1972 with the publication of the Patents Rules, 1972.

The salient features of the Patents Act, 1970 are:

Elaborate definition of invention No product patents for substances intended for use as food, drugs and medicines

including the product of chemical processes Codification of certain inventions as non-patentable Mandatory furnishing of information regarding foreign application


NOTES


Adoption of absolute novelty criteria in case of publication Expansion of the grounds for opposition to the grant of a patent Exemption of certain categories of prior publication, prior communication and

prior use from anticipation Provisions for secrecy of inventions relevant for defence purposes Provision for use of inventions for the purpose of Government or for research or

instruction to pupils Reduction in the term of patents relating to process in respect of substances capable

of being used as food or as medicine or drugs Enlargement of the grounds for revocation of a patent Provision for non-working as ground for compulsory licences, licences of right,

and revocation of patents Additional powers to Central Government to use an invention for purposes of

government including Government undertakings Prevention of abuse of patent rights by making restrictive conditions in licence

agreements/contract as void11 Provision for appeal to High Court on certain decisions of the Controller Provision for opening of branches of the Patent Office.

This Act remained in force for about 24 years till December 1994 without any change.An ordinance effecting certain changes in the Act was issued on 31st December 1994,which ceased to operate after six months. Subsequently, another ordinance was issued in1999. This ordinance was later replaced by the Patents (Amendment) Act, 1999 that wasbrought into force retrospectively from 1st January, 1995. The amended Act provided forfiling of applications for product patents in the areas of drugs, pharmaceuticals and agrochemicals though such patents were not allowed. However, such applications were to beexamined only after 31st December, 2004. Meanwhile, the applicants could be allowedExclusive Marketing Rights (EMRs) to sell or distribute these products in India, subject tofulfilment of certain conditions.

The second amendment to the 1970 Act was made through the Patents (Amendment)Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May, 2003 with theintroduction of the new Patents Rules, 2003 by replacing the earlier Patents Rules, 1972.Salient features of the Patents (Amendment) Act, 2002 were:

Further codification of non patentable inventions 20 years term of patent for all technology Provision for reversal of burden of proof in case of process patents Provisions of compulsory licences to meet public health concerns Deletion of provision of licence of right

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Introduction of system of deferred examination Mandatory publication of applications after 18 months from the date of filing Provision for process patent for micro organisms Establishment of Appellate Board Provision for parallel imports Provision for exemption from infringement proceedings for use of a patented

invention for obtaining regulatory approval for a product based on that patentedinvention

Provision to protect biodiversity and traditional knowledge.

The third amendment to the Patents Act, 1970 was introduced through the Patents(Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later replacedby the Patents (Amendment) Act, 2005 (Act 15 Of 2005 ) on 4th April, 2005 which wasbrought into force from 1st January, 2005. The salient features of this amendment are-

Extension of product patents to all fields of technology including food, drugs,chemicals and micro organisms12

Deletion of the provisions relating to Exclusive Marketing Rights (EMRs)

Introduction of a provision for enabling grant of compulsory licence for export ofmedicines to countries which have insufficient or no manufacturing capacity tomeet emergent public health situations

Modification in the provisions relating to opposition procedures with a view tostreamlining the system by having both pre-grant and postgrant opposition in thePatent Office

Strengthening the provisions relating to national security to guard against patentingabroad of dual use technologies

Rationalisation of provisions relating to time-lines with a view to introducing flexibilityand reducing the processing time for patent application.

3.4. NOVELTY, NON-OBVIOUSNESS AND INDUSTRIAL APPLICABILITY

Section 2. Definitions and interpretation.—

(j) “invention” means a new product or process involving an inventive step and capableof industrial application;

“Inventive step” means a feature of an invention that involves technical advance ascompared to the existing knowledge or having economic significance or both and thatmakes the invention not obvious to a person skilled in the art;


NOTES


(l) “new invention” means any invention or technology which has not been anticipated bypublication in any document or used in the country or elsewhere in the world before thedate of filing of patent application with complete specification, i.e., the subject matter hasnot fallen in public domain or that it does not form part of the state of the art; (m “patent”means a patent for any invention granted under this Act; A patent is granted for an invention.An invention is defined in section 2(1)(j) as “a new product or process involving an inventivestep and capable of industrial application.” Therefore, the criteria for an invention to bepatentable are –

(i). it must be novel;(ii). it must have an inventive step; and(iii).it must be capable of industrial application.

Further, the invention should not fall under any of the categories of “Inventions NotPatentable” mentioned under sections (3) and (4) of the Patents Act, 1970.

NOVELTY OF INVENTION

3.2.1 General Principle: An invention is considered new (novel) if it has not beenanticipated by publication in any document any where in the world or used in the countryor prior claimed in an application for patent in India or form part of the knowledge, oral orotherwise, available within any local or indigenous community in India or elsewhere beforethe date of filing of patent application or date of priority, that is, the subject matter has notfallen in the public domain or that it does not form part of the state of the art.22 3.2.2Although the term ‘state of the art’ has not been defined under the Patents Act, the followinggeneral principles are applied by the Patent Office to determine the novelty of an inventionduring the examination procedure by applying provisions of section 13, read with theprovisions of sections 29 to34

An invention is not considered to be novel

(a) if it has been anticipated by publication before the date of filing of the applicationin any of the specifications filed in pursuance of application for patent in India onor after 1st January, 1912.

(b) if it has been anticipated by publication made before the date of filing or the dateof priority of the application in any of the documents in any country; or

(c) if it has been claimed in any claim of any other complete specification filed inIndia, which was filed before the date of application though published after thedate of that application.

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Inventive Step (Non-Obviousness)

3.9.1 After establishing the novelty, an invention is assessed for inventive step. Theinvention is not considered to involve an inventive step, if it is obvious to a person skilled inthe art on the date of priority. Inventive step is assessed on 34 the basis of publisheddocuments or otherwise and is defined in the Act as under:

“Inventive step” means a feature of an invention that involves technical advance ascompared to the existing knowledge or having economic significance or both and thatmakes the invention not obvious to a person skilled in the art. [Section 2(1)(ja)]

3.9.2 Further, section 2(1)(l) defines “new invention” as “any invention or technologywhich has not been anticipated by publication in any document or used in the country orelsewhere in the world before the date of filing of patent application with completespecification, i.e. the subject matter has not fallen in public domain or that it does not formpart of the state of the art.”

Industrial Applicability

3.25.1 The third criteria of patentability is that the invention should be capable ofindustrial application. It is defined in Section 2 (1) (ac) of the Patents Act, 1970.

Section 2 (1) (ac) “ Capable of Industrial application”, in relation to an invention,means that the invention is capable of being made or used in an industry.

3.25.2 If the subject matter is devoid of industrial application it does not satisfy thedefinition of “invention” for the purpose of the Act. Ordinarily, “Industry” is taken in itsbroad sense as including any useful and practical, as distinct from intellectual or aestheticactivity. It does not necessarily imply the use of a machine or the manufacture of a productand covers such thing as a process for dispersing fog or a process of converting energyfrom one form to another

3.25.3 Vague and speculative indication of possible objectives that might or might notbe achievable by carrying out further research with the tool as described may not besufficient for fulfilment of the requirement of industrial 52 applicability. The purpose ofgranting a patent is not to reserve an unexplored field of research for an applicant.

3.25.4 Methods of testing are generally regarded as capable of industrial applicationif the test is applicable to the improvement or control of a product, apparatus or processwhich itself is capable of industrial application. It is therefore advisable to indicate thepurpose of the test if this is not otherwise apparent.

3.25.5 Processes or articles alleged to operate in a manner which is clearly contraryto well-established physical laws, such as perpetual motion machines, are regarded as nothaving industrial application, as was held in Paez’s Application (BL O/176/83) and Webb’sApplication (BL O/84/88).


NOTES


3.25.6 An invention for a method of treatment of the human or animal body by surgeryor therapy or of diagnosis practised on the human or animal body is not taken to becapable of industrial application.

3.25.7 Parts /pieces of the human or animal body to be used in transplants are objectedas not being capable of industrial application.

3.5. PATENTABLE AND NON-PATENTABLE INVENTIONS

WHAT IS PATENTABLE INVENTION

A new product or process, involving an inventive step and capable of being made orused in an industry. It means the invention to be patentable should be technical in natureand should meet the following criteria - 3

i) Novelty : The matter disclosed in the specification is not published in India orelsewhere before the date of filing of the patent application in India.

ii) Inventive Step: The invention is not obvious to a person skilled in the art in thelight of the prior publication/knowledge/ document.

iii) Industrially applicable: Invention should possess utility, so that it can be madeor used in an industry.

WHAT IS NOT PATENTABLE

The following are Non-Patentable inventions within the meaning of the Act: -

(a) an invention which is frivolous or which claims anything obviously contrary to wellestablished natural laws;

(b) an invention the primary or intended use or commercial exploitation of whichcould be contrary to public order or morality or which causes serious prejudice tohuman, animal or plant life or health or to the environment;

(c) the mere discovery of a scientific principle or the formulation of an abstract theory(or discovery of any living thing or non-living substances occurring in nature);

(d) the mere discovery of a new form of a known substance which does not result inthe enhancement of the known efficacy of that substance or the mere discovery ofany new property or mere new use for a known substance or of the mere use ofa known process, machine or apparatus unless such known process results in anew product or employs at least one new reactant ;

Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,pure form, particle size, isomers, mixtures of isomers, complexes, combinations and otherderivatives of known substance shall be considered to be the same substance, unless theydiffer significantly in properties with regard to efficacy.

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(e) A substance obtained by a mere admixture resulting only in the aggregation of theproperties of the components thereof or a process for producing such substance;

(f) The mere arrangement or re-arrangement or duplication of known devices eachfunctioning independently of one another in a known way;

(g) A method of agriculture or horticulture;(h) any process for the medicinal, surgical, curative, prophylactic,diagnostic,

therapeutic or other treatment of human beings or any process for a similar treatmentof animals to render them free of disease or to increase their economic value orthat of their products.

(i) plants and animals in whole or any part thereof other than micro-organisms butincluding seeds, varieties and species and essentially biological processes forproduction or propagation of plants and animals;

(j) a mathematical or business method or a computer programme per se or algorithms;(k) a literary, dramatic, musical or artistic work or any other aesthetic creation

whatsoever including cinematographic works and television productions;(l) a mere scheme or rule or method of performing mental act or method of playing

game;(m) a presentation of information;(n) topography of integrated circuits;(o) an invention which in effect, is traditional knowledge or which is an aggregation or

duplication of known properties of traditionally known component or components.(p) Inventions relating to atomic energy and the inventions prejudicial to the interest

of security of India.

3.6. PROCEDURE FOR FILING PATENTS

3.6.1. Filing of Application for Patent

DOCUMENTS REQUIRED FOR FILING AN APPLICATION

1. Application form in duplicate (Form 1).2. Provisional or complete specification in duplicate. If the provisional specification is

filed, it must be followed by the complete specification within 12 months.(Form2).

3. Drawing in duplicate (if necessary).4. Abstract of the invention in duplicate.5. Information & undertaking listing the number, filing date & current status of each

foreign patent application in duplicate (Form 3).

6. Priority document (if priority date is claimed) in convention application,when directedby the Controller. 8


NOTES


7. Declaration of inventor-ship where provisional specification is followed by completespecification or in case of convention/PCT national phase application (Form 5).

8. Power of attorney (if filed through Patent Agent).9. Fee (to be paid in cash/by cheque/by demand draft) (See Schedule I).

(Note: The cheque or demand draft should be payable to the “Controller of Patents”drawn on any schedule bank at a place where the appropriate office is situated).

3.6.2 Section 7. Form of application

(1) Every application for a patent shall be for one invention only and shall be made inthe prescribed form and filed in the patent office.

(1A) Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.

(1B) The filing date of an application referred to in sub-section (1A) and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.

(2) Where the application is made by virtue of an assignment of the right to apply fora patent for the invention, there shall be furnished with the application, or withinsuch period as may be prescribed after the filing of the application, proof of theright to make the application.

(3) Every application under this section shall state that the applicant is in possession ofthe invention and shall name the person claiming to be the true and first inventor;and where the person so claiming is not the applicant or one of the applicants, theapplication shall contain a declaration that the applicant believes the person sonamed to be the true and first inventor.

(4) Every such application (not being a convention application or an application filedunder the Patent Cooperation Treaty designating India) shall be accompanied bya provisional or a complete specification.

3.6.3 Rule 6. Leaving and serving documents

(1) 87Any application, notice or other document authorised or required to be filed,left, made or given at the patent office, or to the Controller or to any other personunder the Act or these rules, may be tendered by hand or sent by a letter addressedto the Controller at the appropriate office or to that person through post or registeredpost or speed post or courier service or by electronic transmission dulyauthenticated. If it is sent by post or registered post or speed post or courierservice or by electronic transmission duly authenticated, it shall be deemed tohave been filed, left, made or given at the time when the mail containing the samewould have been delivered in the ordinary course of post or registered post orspeed post or courier service, or by electronic transmission duly authenticated, as

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the case may be. In proving such sending, it shall be sufficient to show that the mailwas properly addressed and transmitted:

(2) Any written communication addressed to a patentee at his address as it appearson the register of patents or at his address for service given under rule 5, or to anyapplicant or opponent in any proceedings under the Act or these rules, at theaddress appearing on the application or notice of opposition, or given for service,shall be deemed to be properly addressed.

(3) All notices and all written communications addressed to a patentee, or to anyapplicant or opponent in any proceedings under the Act or these rules, and alldocuments forwarded to the patentee or to the said applicant or opponent, shall,except when they are sent by special messenger, be sent by registered post orspeed post or courier service or by electronic transmission duly authenticated.

(4) The date of a notice or a written communication addressed to a patentee or to anyapplicant or opponent in any proceedings under the Act and these rules shall bethe date of dispatch of the said notice or written communication, by registeredpost or speed post or courier or fax or electronic transmission duly authenticated,as the case may be, unless otherwise specified under the Act or these rules.

(5) In case of delay in receipt of a document or a communication sent by the patentoffice to a party to any proceedings under the Act or these rules, the delay intransmitting or resubmitting a document to the patent office or doing any act by theparty may be condoned by the Controller if a petition for such condonation ofdelay is made by the party to the Controller immediately after the receipt of thedocument or a communication along with a statement regarding the circumstancesof the fact and evidence in support of the statement: Provided that the delaycondoned by the Controller shall not exceed the period between the date onwhich the party was supposed to have received the document or communicationby ordinary course of mail or electronic transmission and the actual date of receiptof the same.

Whether “Any other person under the Act” under the ambit of rule 6 includes, the“Patent Agent” apart from the Controller and the Patent Office when read with Section2(1)(s) was considered (in the case)*. The Controller held that the expression “any otherperson under the Act or Rules” in rule 6 would mean that whenever there is a bi-party ormulti-party proceedings viz. an 88 opposition under section 25, 61, or 92 of the Act, theparties to the proceedings are required to serve certain documents such as statements andevidence on each other, under intimation to the Controller and also on the Controller. Inthe course of any of the said proceedings if any document has been sent by one party tothe other party and to the Controller by post sufficiently in advance, then if there is a postaldelay as a result of which the other party or the Controller receives the said documentslate, the delay involved will be condoned by the Controller under Rule 6 and the documentswill be taken on record and deemed to have been received on the due date.


NOTES


Accordingly, I cannot accept with regard to the expression “any other person underthe Act or the Rules” as including Patent agent to whom his client has send the documents.”

Patent application can also be filed electronically from any remote location through e-filing system.

3.6.4. Rule 7. Fee

(1) The fees payable under section 142 in respect of the grant of patents and applicationsthere for, and in respect of other matters for which fees are required to be payableunder the Act shall be as specified in the First Schedule.

(a) The fees, payable under the Act may either be paid in cash or through electronicmeans or may be sent by bank draft or cheque payable to the Controller of Patentsand drawn on a scheduled bank at the place where the appropriate office is situated.If the draft or cheque is sent by post, the fees shall be deemed to have been paidon the date on which the draft or cheque would have reached the Controller in theordinary course of mail.

(b) Cheques or drafts not including the correct amount of commission and cheques onwhich the full value specified therein cannot be collected in cash shall be acceptedonly at the discretion of the Controller.

(c) Where a fee is payable in respect of a document, the entire fee shall accompanythe document.

(3) In case an application processed by a natural person is fully or partly transferred to aperson other than a natural person, the difference, if any, in the scale of fee(s) betweenthe fee(s) charged from a natural person and the fee(s) chargeable from the personother than the natural person in the same matter shall be paid by the new applicantwith the request for transfer.

(4) Fees once paid in respect of any proceeding shall not ordinarily be refundedirrespective of whether the proceeding has taken place or not.

(i). Subject to the approval of the Controller, any person may deposit money in advanceand request the Controller to realise any fee payable by him from the said depositand in such case the date of the receipt of the request to realise the fee or the dateon which the request to realise the fee is deemed to have been received, whicheveris earlier, shall be taken as the date of payment of the fee: 89 Provided that therequisite amount of money is available at the credit of the person making suchrequest.

(ii). Subject to the approval of the Controller, any person may discontinue the depositof money in advance and in such case the balance, if any, shall be refunded.

3.6.5. Forms

(1) The Forms set forth in the Second Schedule with such variations as the circumstancesof each case may require shall be used for the purposes mentioned therein.

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(2) Where no Form is so specified for any purpose, the applicant may adopt anyForm specified in the Second Schedule with such modifications and variations asmay be required.

3.6.6. Size, etc., of documents

(1) All documents and copies of documents, except affidavits and drawings, sent toor left at the patent office or otherwise furnished to the Controller shall be writtenor typewritten or printed either in Hindi or in English language (unless otherwisedirected or allowed by the Controller) in large and legible characters with deepindelible ink with lines widely spaced upon one side only of strong white paper ofa size A4 of approximately 29.7 centimetres by 21 centimetres with a margin of atleast 4 centimetres on the top and left hand part and 3cm on the bottom and righthand part thereof. Any signature which is not legible or which is written in a scriptother than Hindi or English shall be accompanied by a transcription of the nameeither in Hindi or in English in block letters: Provided that any document includingdrawing, if any, may also be filed in electronic form along with a copy of it on whitepaper: Provided further that in case the application for patent discloses sequencelisting of nucleotides and/or amino acids, the same shall be filed in electronic form.

(2) Additional copies of all documents shall be filed at the appropriate office, if requiredby the Controller.

(3) Names and addresses of applicants and other persons shall be given in full togetherwith their nationality and such other particulars, if any, as are necessary foridentification.

3.6.7. Period within which proof of the right under section 7(2) tomake the applicationshall be furnished. :-

Where, in an application for a patent made by virtue of an assignment of the right toapply for the patent for the invention, if the proof of the right to make the application is notfurnished with the 90 application, the applicant shall within a period of six months afterfiling of such application furnish such proof. Explanation.— For the purposes of this rule,the six months period in case of an application corresponding to an international applicationin which India is designated shall be reckoned from the actual date on which thecorresponding application is filed in India.

3.6.8. Order of recording applications

The applications filed in a year shall constitute a series identified by the year of suchfiling. In case of an application filed corresponding to an international application in whichIndia is designated, such application shall constitute a series distinct from the rest of theapplications identified by the year of filing of corresponding applications in India


NOTES


3.6.9 Information and Undertaking regarding foreign applications.-

(1) The statement and undertaking required to be filed by an applicant for a patentunder sub-section (1) of section 8 shall be made in Form 3. (1A). The periodwithin which the applicant shall file the statement and undertaking under sub-section(1) of section 8 shall be ^six months] from the date of filing the application.Explanation.—For the purpose of this rule, the period of six months in case of anapplication corresponding to an international application in which India is designatedshall be reckoned from the actual date on which the corresponding application isfiled in India.

(2) The time within which the applicant for a patent shall keep the Controller informedof the details in respect of other applications filed in any country in the undertakingto be given by him under clause (b) of sub-section (1) of section 8 shall be :sixmonths from the date of such filing.

(3) When so required by the Controller under sub-section (2) of section 8, the applicantshall furnish information relating to objections, if any, in respect of novelty andpatentability of the invention and any other particulars as the Controller may requirewhich may include claims of application allowed within six months from the date ofsuch communication by the Controller.

3.6.10 Provisional and Complete specifications

(1) Where an application for a patent (not being a convention application or anapplication filed under the Patent Cooperation Treaty designating India) isaccompanied by a provisional specification, a complete specification shall be filedwithin twelve months from the date of filing of the application, and if the completespecification is not so filed, The application shall be deemed to be abandoned.

(2) Where two or more applications in the name of the same applicant are accompaniedby provisional specifications in respect of inventions which are 91 cognate or ofwhich one is a modification of another and the Cont roller is of opinion that thewhole of such inventions are such as to constitute a single invention and may properlybe included in one patent, he may allow one complete specification to be filed inrespect of all such provisional specifications.

Provided that the period of time specified under sub-section (1) shall be reckonedfrom the date of filing of the earliest provisional specification. (3) Where an application fora patent (not being a convention application or an application filed under the PatentCooperation Treaty designating India) is accompanied by a specification purporting to bea complete specification, the Controller may, if the applicant so requests at any time withintwelve months from the date of filing of the application, direct that such specification shallbe treated, for the purposes of this Act, as a provisional specification and proceed with theapplication accordingly. (4) Where a complete specification has been filed in pursuance ofan application for a patent accompanied by a provisional specification or by a specification

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treated by virtue of a direction under sub-section (3) as a provisional specification, theController may, if the applicant so requests at any time before 2[grant of patent], cancelthe provisional specification and post-date the application to the date of filing of the completespecification.3.6.11. Contents of specifications

1. Every specification, whether provisional of complete, shall describe the inventionand shall begin with a title sufficiently indicating the subject matter to which theinvention relates.

2. Subject to any rules that may be made in this behalf under this Act, drawings may,and shall, if the Controller so requires, be supplied for the purposes of anyspecification, whether complete or provisional; and any drawings so supplied shall,unless the Controller otherwise directs be deemed to form part of the specification,and references in this Act to a specification shall be construed accordingly.

3. If, in any particular case, the Controller considers that an application should befurther supplemented by a model or sample of anything illustrating the invention oralleged to constitute an invention, such model or sample as he may require shall befurnished before the application is found in order for grant of a patent, but suchmodel or sample shall not be deemed to form part of the specification.

4. Every complete specification shall—(a) fully and particularly describe the invention and its operation or use and the

method by which it is to be performed;(b) disclose the best method of performing the invention which is known to the

applicant and for which he is entitled to claim protection; and 92(c) end with a claim or claims defining the scope of the invention for which protection

is claimed(d) be accompanied by an abstract to provide technical information on the invention:

Provided that; (i) the Controller may amend the abstract for providing better informationto third parties; and (ii) if the applicant mentions a biological material in the specificationwhich may not be described in such a way as to satisfy clauses (a) and (b), and if suchmaterial is not available to the public, the application shall be completed by depositing thematerial to an international depository authority under the Budapest Treaty and by fulfillingthe following conditions, namely:— (A) the deposit of the material shall be made not laterthan the date of filing the patent application in India and a reference thereof shall be madein the specification within the prescribed period; (B) all the available characteristics of thematerial required for it to be correctly identified or indicated are included in the specificationincluding the name, address of the depository institution and the date and number of thedeposit of the material at the institution;(C) access to the material is available in the depositoryinstitution only after the date of the application of patent in India or if a priority is claimedafter the date of the priority; (D) disclose the source and geographical origin of the biologicalmaterial in the specification, when used in an invention.


NOTES


(1) In case of an international application designating India, the title, description,drawings, abstract and claims filed with the application shall be taken as the completespecification for the purposes of this Act.

(2) The claim or claims of a complete specification shall relate to a single invention, orto a group of inventions linked so as to form a single inventive concept, shall beclear and succinct and shall be fairly based on the matter disclosed in the specification.

(3) A declaration as to the inventorship of the invention shall, in such cases as may beprescribed, be furnished in the prescribed form with the complete specification orwithin such period as may be prescribed after the filing of that specification,

(4) Subject to the foregoing provisions of this section, a complete specification filedafter a provisional specification may include claims in respect of developments of,or additions to, the invention which was described in the provisional specification,being developments or additions

3.6.12 Specifications

(1) Every specification, whether provisional or complete, shall be made in Form 2.

(2) A specification in respect of a divisional application under section 16 shall containspecific reference to the number of the original application from which the divisionalapplication is made.

(3) A specification in respect of a patent of addition under section 54 shall contain aspecific reference to the number of the main patent, or the application for the mainpatent, as the case may be, and a definite statement that the invention comprises animprovement in, or a modification of, the invention claimed in the specification ofthe main patent granted or applied for.

(4) Where the invention requires explanation through drawings, such drawings shallbe prepared in accordance with the provisions of rule 15 and shall be suppliedwith, and referred to in detail, in the specification: Provided that in the case of acomplete specification, if the applicant desires to adopt the drawings filed with hisprovisional specification as the drawings or part of the drawings for the completespecification, it shall be sufficient to refer to them in the complete specification asthose left with the provisional specification.

(5) Irrelevant or other matter, not necessary, in the opinion of the Controller, forelucidation of the invention, shall be excluded from the title, description, claims anddrawings.

(6) Except in the case of an application (other than a convention application or anapplication filed under the Patent Cooperation Treaty designating India) which isaccompanied by a complete specification, a declaration as to the inventorship ofthe invention, shall be filed in Form 5 with the complete specification or at any time

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before the expiration of one month from the date of filing of the complete specification,as the Controller may allow on an application made in Form 4. Explanation,—Forthe purposes of this rule, the date of filing of the complete specification with respectto an application corresponding to an international application in which India isdesignated shall be reckoned from the actual date on which the correspondingapplication is filed in India.a. The abstract as specified under clause (d) of sub-section (4) of section 10,

accompanying the specification shall commence with the title of the invention.The title of the invention shall disclose the specific features of the inventionnormally in not more than fifteen words

b. The abstract shall contain a concise summary of the matter contained in thespecification. The summary shall indicate clearly the technical field to whichthe invention belongs, technical problem to which the invention relates and thesolution to the problem through the invention and principal use or uses of theinvention. Where necessary, the abstract shall contain the chemical formula,which characterises the invention.

c. The abstract may not contain more than one hundred and fifty words.d. If the specification contains any drawing, the applicant shall indicate on the

abstract the figure, or exceptionally, the figures of the drawings which mayaccompany the abstract when published. Each main feature mentioned in theabstract and illustrated by a drawing shall be followed by the reference signused in that drawing.

e. The abstract shall be so drafted that it constitutes an efficient instrument for thepurposes of searching in the particular technical field, in particular by makingit possible to assess whether there is a need to consult the specification itself.

(8) The period within which reference to the deposit shall be made in the specificationunder sub-clause (A) of clause (ii) of sub-section (4) of section 10 shall be threemonths from the date of filing of the application.

3.7 COMPULSORY LICENCES

The Indian Patent Law has provided for adequate powers to the Controller of Patentsto issue compulsory licenses to deal with the following extreme and/or urgent situations.

A) Section 84—To prevent the abuse of patent as a monopoly and to make way forcommercial exploitation of invention by an interested person.

B) Sections 92 (1) and 92 (3)—Circumstances of national emergency or extremeurgency.

C) Section 92 A—For exports of pharmaceutical products to foreign countries withpublic health problems.

(A) Section 84—The law provides for compulsory license under section 84 of theIndian Patent Act, to prevent the abuse of patent as a monopoly and to make way


NOTES


for commercial exploitation of invention by an interested person. Under this section,any person can make an application for grant of compulsory licence for a patentafter three years, from the date of grant of that patent, on any of the followinggrounds:

a. The reasonable requirements of the public with respect to the patented inventionhave not been satisfied;

b. The patented invention is not available to the public at a reasonably affordableprice.

c. The patented invention is not worked in the territory of India.

Moreover, Section 89 specifies and explains the general purposes of grantingcompulsory license under Section 84 as:

(i). That the patented inventions are worked on a commercial scale in the territoryof India without undue delay and to the fullest extent that is reasonablypracticable;

(ii). That the interests of any person for the time being working or developing aninvention in the territory of India under the protection of a patent are not unfairlyprejudiced.

Further, the subsection 6 of Section 84 elaborates that the Controller shall take intoaccount the following factors while considering the application under section 84.

1. The nature of the invention, the time which has elapsed since the sealing of thepatent and the measures already taken by the patent or licensee to make full use ofthe invention;

2. The ability of the applicant to work the invention to the public advantage;

3. The capacity of the applicant to undertake the risk in providing capital and workingthe invention, if the application were granted;

4. As to whether the applicant has made efforts to obtain a license from the patenteeon reasonable terms and conditions and such efforts have not been successfulwithin a reasonable period as the Controller may deem fit. Notably, Section 90 ofthe Act also empowers the controllers to settle the terms and conditions forcompulsory licences.

(B) Sections 92 (1) and 92 (3)—Both these sections enable the Central Governmentand the Controller, respectively, to deal with circumstances of national emergencyor circumstance of extreme urgency related to public health crises by grantingrelevant compulsory licences.

(C) Section 92 A—Provides for compulsory licensing of patents relating to themanufacture of pharmaceutical products for export to countries with public health

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problems. Thus, this section is an “enabling provision” for export of pharmaceuticalproducts to any country having insufficient or no manufacturing capacity in thepharmaceutical sector in certain exceptional circumstances, to address public healthproblems. Such country has either to grant compulsory license for importation orissue a notification for importation into that country.

3.8. PATENT OFFICES AND JURISDICTION

An applicant or first mentioned applicant in case of joint applicants can file applicationfor patent at the appropriate Patent Office under whose jurisdiction he normally resides orhas his domicile or has a place of business or the place from where the invention actuallyoriginated. For the applicant, who is non-resident or has no domicile or has no place ofbusiness in India, the address for service in India or place of business of his patent agentdetermines the appropriate patent office where applications for patent can be filed.

Territorial Jurisdiction of Appropriate Office for the Applicants

Case Studies

Case history 1 Joya Williams, 41-year old administrative assistant had worked for the director of

Global brand marketing Coco-Cola Their competitors have informed the fact that coke information was stolen through

an employee The stolen information was bargained for $1.5 million Phone records of William were tracked. The policemen discovered that she was

the source for the stolen information

Office Territorial Jurisdiction

Patent Office Branch,

Mumbai

The States of Maharashtra, Gujarat, MadhyaPradesh,

Goa and Chhattisgarh and the Union Territories of

Daman and Diu & Dadra and Nagar Haveli


Chennai

The States of Andhra Pradesh, Karnataka, Kerala,

Tamil Nadu and the Union Territories of Pondicherry

and Lakshadweep .


New Delhi

The States of Haryana, Himachal Pradesh,Jammu and

Kashmir, Punjab, Rajasthan, Uttar Pradesh,

Uttaranchal, Delhi and the Union Territory of

Chandigarh.

Patent Office,

Kolkata

The rest of India.


NOTES


The accused employee was fired Case history 2 Besides Williams two other were charged for en routing and bargaining their trade

secrets A law suit was filed in Atlanta court and the case was attended by Judge Joel

Feldman for nearly 45 minutes The judge approved $23,000 bond for Williams A video clipping was also exhibited expressing the simple act that Williams was in

search of some documents and had stuffed them in her bag.

REVIEW QUESTIONS

(1) Discuss the historical development of Indian Patent system(2) Explain the provisions relating to

(i). Novelty(ii). Non- Obviousness(iii).Industrial applicability

(3) Explain the procedure for filing PatentsExplain the legal provisions relating to compulsory licenses

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NOTES


UNIT IV

COPYRIGHTS, TRADEMARKS, OTHERINTELLECTUAL PROPERTY RIGHTS

4.1. KEY OBJECTIVES

After reading this chapter, you will be able to understand

The various Copyrights and its related rights

Different patterns of Trade Marks and rights arising from Trademark registration

Definitions for Industrial Designs and Integrated circuits

Protection of Geographical Indications at both the national and International levels

Application Procedures

4.2. PATENTS AND TECHNOLOGICAL DEVELOPMENT

Facilitate transfer and investment

Disseminate initial knowledge as free input (“public good”) to produce furtherknowledge as output (“private good”)

Limit “free riders” not “innovators”

Encourage licensing arrangements

Catalyze new technologies and businesses

ADVANTAGES OF PATENT

Patent acts as tradable industrial asset for the enterprise and, thus the strength ofpatent portfolio of the company is the indication of the good economic health ofthe company

Patents provide inventive and creative ideas for further R&D in the field

After the term of patent is over, or when the patent is not kept in force, the patentedinvention is available to the public for free use

Patent as Information source is enormous and wide

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80% of the information is first published only in the patent documents and notelsewhere.

The patent information is well classified according to the International PatentClassification System to enable easy search and use.

The scientific knowledge contained in the patent specification helps as a “steppingstone” for further research.

The Patent information is free to be utilized after the term of the Patent expires orwhen the Patent ceases to be in force.

Patent Information plays a pivotal role in Technology Transfer.

4.2.1. Advantages in Patenting Inventions

Patents create additional source of revenue

By ignoring patents, companies miss out on a very important competitive advantagebrought in by patents

Patent division have started generating 90% of profit margins Patents act as entry ticket for new foreign markets Major issues that impede effective IP implementation in Indian industries are listed

below Lack of IP-awareness among managers, engineers, scientists and students

(especially in patents) Patent rights are territorial by nature. Should an innovator file his inventions in his

motherland alone or in those countries where there is market potential for theinventions?

Cost of filing a US patent is around $35000 or 15.5 lakhs Such an amount may be productively spent in other activities associated with

development of an organization Huge amount spent in patenting an innovation must be recovered before the

technology becomes obsolete By preventing the competitor from forging/ recreating/ illicit usage of the invention

there is no assurance that the intellectual creation would be accepted by the targetcustomers

4.2.2. Barriers in Patenting Inventions

Bureaucratic, time consuming painful process associated with filing patent. Patentfiling process lacks transparency

An inventor must wait for minimum of six months and a maximum of five yearsafter the research work is complete and suitable formalities are taken care.


NOTES


With in that period the inventor must not publish the outcome of research work orsuch technology must not be available for commercial exploitation.

The patented innovations are subjected to technology obselence with in that period

LICENSE

License is obtained so as to prevent others using the invention.

It may be exclusive, non exclusive or limited.

An exclusive license excludes all other persons including the patentee from theright to use the inventions.

An expressed license is one in which permission to use the patents in the expressedterms. Implied license does not grant such a permission.

MONOPOLY RIGHTS

A Monopoly right obtained as a consequence of patentee been granted to use hisinvention exclusively by him i.e., sell, manufacture, mortgage.

The exclusive right in enjoyed by the patentee is called monopoly right.

4.3. EXCLUSIVE MARKET RIGHTS

DEFINITION:

The minimum standards on eight ipr conferred so as to obtain a protection againstanticompetitive practices in contractual license is called exclusive market right.

This new provision has been incorporated in the Patents Act, 1970 as amendedby The Patents (Amendment) Act, 1999 with effect from 1st January, 1995.

Under this amendment to the Patents Act, 1970 it is now possible to make anapplication for patent claiming for a substance itself intended for use or capable ofbeing used as Medicine or Drug, excepting the intermediate for the preparation ofdrug.

EXCLUSIVE MARKET RIGHTS

However that India has the privilege, under WTO regime, of a ten years transitionperiod.

Thus application for product claims for medicine or drug will not be processeduntil the end of 2004.

But Exclusive Marketing Rights (EMR) can be obtained for that application ifcertain conditions as stated below are fulfilled:

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EXCLUSIVE MARKET RIGHTS

1. Where an invention has been made in India or outside India and before filing sucha claim in India, application for the same invention claiming identical article orsubstance in a Convention Country (WTO) has been filed on or after 1st January,1995 and a patent has been granted on or after the date of making a claim forarticle or substance in India and approval to sell or distribute has been obtained inthe said Convention Country on the basis of the test done on or after 1st January,1995.

2. Where an invention has been made in India and before filing such a claim theapplicant has made an application for patent on or after 1st January, 1995 formethod or process of manufacturing the identical article or substance and patenthas been granted in India on or after the date of making of the product claim.

3. Marketing approval of the article or substance has been obtained from theappropriate authority in India provided that the application for patent has not beenrejected by the Controller on the basis of the report of the Examiner that theinvention is not an invention (Section - 3) or the invention is an invention on whichno patent can be granted (Section - 4).

Duration

EMR will be valid for a period of five years or till the date of grant of the patent ordate of rejection of the application for the grant of patent whichever is earlier.

BARRIERS IN PATENTING INVENTIONS

Major issues that impede effective IP implementation in Indian industries are listedbelow

Lack of IP-awareness among managers, engineers, scientists and students(especially in patents)

Patent rights are territorial by nature. Should an innovator file his inventions in hismotherland alone or in those countries where there is market potential for theinventions?

Cost of filing a US patent is around $35000 or 15.5 lakhs

DESIGNS

A Design means beautifying an industrial product to attract the consumer public.

By registering the design, adopted for the purpose of shaping, configuration orornamentation of a vendible industrial product.

The Government confers upon the originator the exclusive Design Rights for alimited term.


NOTES


Thus, patents and designs embrace the production stage of an industrial activity.

A Design means beautifying an industrial product to attract the consumer public.

By registering the design, adopted for the purpose of shaping, configuration orornamentation of a vendible industrial product.

The Government confers upon the originator the exclusive Design Rights for alimited term.

Thus, patents and designs embrace the production stage of an industrial activity.

COPYRIGHTS

What is a work ?

A work means any of the following , namely, a literary, dramatic, musical or artisticwork, a cinematograph film, or a sound recording.

What is a copyright ?

A Copyright is a protection offered to the authors of literary, dramatic, artistic, producersof cinematograph films,sound recordings and another intellectual properties. A Copyrightprotects the particular manner in which a work’s contents and ideas are expressed

TRADEMARKS

Trademark may be defined as a name, word, device label, signature etc that uniquelyidentifies a brand manufactured by particular organization from others.

Any sign capable of distinguishing the goods or services of an undertaking fromthose of others may constitute a trade mark

Period seven years

If use is condition for registration, non use for three years will result in cancellation

Its origin dates back to ancient times, when craftsmen reproduced their signatures,or “marks” on their artistic or utilitarian products. Over the years these marksevolved into today’s system of trademark registration and protection.

The system helps consumers identify and purchase a product or service becauseits nature and quality, indicated by its unique trademark, meets their needs.

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Well established Trademarks are considered as indicators of Quality Trademark can be popularized & then registered If a registered Mark is used & maintained properly,the registration can last forever.

Registered mark not used continuously for 5 years gets cancelled

TRADE NAME

Trade name is nothing but a word, jargon, symbol or a combination of all three so asto identify the business or its goodwill.

Trade name performs a function similar to trademark. It also identifies the goodsmanufacture by an organization in a unique fashion under honest concurrentusage of trademarks

GEOGRAPHICAL INDICATIONS

Geographical Indications of Goods are defined as that aspect of industrial property,which refers to the geographical indication referring to a country or to a place,situated therein as being the country or place of origin of that product.

Quantities features of certain goods have impact of geographical conditionsprevailing within it. The manufacturer’s association may apply for such registrations.Geographical indications do protect the interest of remote territories and augmentthe import and exports of the nation.

Portion inherited knowledge, indigenous architectural designs and knowledge aboutherbal medicines could preserve under this category.


NOTES


Example

Champagne Wine (France)

Swiss Chocolates (Switzerland)

Darjeeling Tea (India)

GI is valid for a period of ten years WIPO is in charge of the administration of a number of international agreements

which deal partly or entirely with the protection of geographical indications (see, inparticular, the Paris Convention for the Protection of Industrial Property, and theLisbon Agreement for the Protection of Appellations of Origin and Their InternationalRegistration).

Furthermore, through the work of the Standing Committee on the Law ofTrademarks, Industrial Designs and Geographical Indications, made up ofrepresentatives of member States and interested organizations, WIPO exploresnew ways of enhancing the international protection of geographical indications.

A trademark is a sign used by an enterprise to distinguish its goods and servicesfrom those of other enterprises. It gives its owner the right to exclude others fromusing the trademark.

A geographical indication tells consumers that a product is produced in a certainplace and has certain characteristics that are due to that place of production.

It may be used by all producers who make their products in the place designatedby a geographical indication and whose products share typical qualities

If a geographical term is used as the designation of a kind of product, rather thanan indication of the place of origin of that product, this term does no longer functionas a geographical indication.

Where that has occurred in a certain country over a substantial period of time, thatcountry may recognize that consumers have come to understand a geographicalterm that once stood for the origin of the product.

For example, “Dijon Mustard,” a style of mustard originally from the French townof Dijon - to denote now a certain kind of mustard, regardless of its place ofproduction.

GI IN AGRICULTURE PRODUCTS The use of geographical indications is not limited to agricultural products. They

may also highlight specific qualities of a product which are due to human factorsthat can be found in the place of origin of the products, such as specific manufacturingskills and traditions.

That place of origin may be a village or town, a region or a country.

An example for the latter is “Switzerland” or “Swiss,” which is perceived as ageographical indication in many countries for products that are made in Switzerlandand, in particular, for watches.

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NOTES


UTTAR PRADESH

ITEMS ASSOCIATED

GEOGRAPHICAL LOCATION

Glass products / Leather products Petha (Sweet) Agra Locks in brass and iron / scissors Aligarh

Guava Allahabad Banarasi Sarees Azamgarh Carpets, Woolen Carpets Bhadohi Suriyawan

Homeopathic Medicine Buland Shar, Anupshahr Melons Etah- Soron Glass bangles / Glass wares, Scientific equipments Glass bangles / Glass tube, Glass jar Firozabad

Jasrana Shikohabad

Handloom cloth / Bed sheets Tyre Tube

Ghaziabad, Pilkhua, Loni

Handloom Cloth Gorakhpur

ITEMS ASSOCIATED GEOGRAPHICAL LOCATION

Bricks Hamipur Gohand

Handloom Cloth Handloom Ranipur

Jhansi Hamipur

Leather work Kanpur Dehat Sikandra

Leather goods, cotton cloth, woolen garment Kanpur Nagar Kanpur

Bone Ash Brass wares

Kheri Ole Dhakwa

Chicken work Crockery, Pottery Chicken work Mango

Lucknow Chinhat Kakori Malihabad and Mahona


NOTES


HIMACHAL PRADESH

ITEMS ASSOCIATED GEOGRA PHICAL LOCATION

Khadi Cloth Silken Sarees Handloom Cloth

Mau Amila Ghosi Maunath Bhanjan

Brassware Brassware

Moradabad Chandausi Hasanpur

Handloom fabrics Charthawal

Muzafarnagar

Catechu Bhinga

Pratapgarth

Knives Rampur Khadi Cloth Nakur

Saharanpur

Electrical Goods Pipri

Sonbhadra

Silken Sarees Silken Sarees

Varanasi Kotwa Lohta

Marble Goods Carpets

Mizapur Chunar

ITEMS ASSOCIATED GEOGRAPHICAL LOCATION

Shawls Kulu Caps Kulu Shawls Kinnaur Caps Kinnaur Chappals Chamba Tea Kangra

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RAJASTHAN

ITEMS ASSOCIATED GEPGRAPHICAL LOCATION

Bikaneri Bhujia Bikaner Kota Stone Kota

Bhandhej Rajasthan Green Pickle and Onion and Marwadimathaniya

Rajasthan

Chhitar Stone of Jodhpur Jodhpur

Yellow Stone of Jodhpur Jodhpur Bikaneri Bhujia Bikaner Kota Stone Kota


Rajasthan

Chhitar Stone of Jodhpur Jodhpur Yellow Stone of Jodhpur Jodhpur

Mats of Salawas (Jodhpur) Jodhpur Bikaneri Bhujia Bikaner Kota Stone Kota


Rajasthan

Chhitar Stone of Jodhpur Jodhpur Yellow Stone of Jodhpur Jodhpur

Mats of Salawas (Jodhpur) Jodhpur Granite of Jallore Jallore Heena (Mehndi) of Sojat Sojat

Jink Badala Rajasthan Paohpadra / Meekalsar Ki Matkiya Rajasthan Sevan Grass of Jaisalmere Jaisalmere Bantonite Rajasthan

Ker, Kumti, Sangri (Khejedi Vatpad)

Rajasthan


NOTES


PUNJAB

WEST BENGAL

ITEMS ASSOCIATED

GEOGRAPHICAL LOCATION

Pulkari – A handicraft Punjab

Kotkpura Dhoda- A sweet Kotakpur

Amristari Papad & Warian Amristar

Patialvi uti Patiala

Muktsari Juti Punjabi Juti Mukstar

Fazilka Juti Fazilka

Patiala Nallah Patiala

Sarson Da Sag Punjab

SNO ITEMS

ASSOCIATED

GEOGRAPHICAL

LOCATION

1. Murshidabad silk Murshidabad

2. Bishnupur Baluchuri Bishnupur

3. Dhanekhali Saree Dhanekhal

4. Santipur Tant Santipur

5. Phuliar Tant Phuliar

Handicraft:

1. Dokra West Bengal

2. Bankura & Bisnupur

Terakota

West Bengal

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MADHYA PRADESH

4.4. LAYOUT DESIGNS

4.4.1. Layout Design of Integrated Circuits

Reaffirmation of the treaty on intellectual property in respect of integrated circuits.Lobbied by the US Hardware/Software industry.

Reproduction of a protected layout; importing selling or otherwise distributing forcommercial purposes a layout design or an integrated circuit incorporating aprotected layout or an article incorporating such an integrated circuit, not possiblewithout right-holders permission.

FOOD

SNO ITEMS

ASSOCIATED

GEOGRAPHICAL

LOCATION

1. Bardhamaner Mihidana Bardhaman

2. Bardhamaner Sitabhog Bardhaman

3. Kolkatat Rosogolla Kolkata

4. Shaktigath Lancha Shaktigarh

5. Krishanagarar Sarvaja Krishnanagar

6. Darjeeling Tea Darjeeling

SNO ITEMS

ASSOCIATED

GEOGRAPHICAL

LOCATION

1. Chanderi Saree Chanderi


NOTES


4.4.2. Trade Secrets

Creates a system by which holders of secret information are not forced to partwith to government or other bodies.

Where secret information (best reports of chemicals and pharmaceuticals) is givento government, data to be kept secret.

“Secret” information: information not generally known; has commercial value; personin control of the information has taken steps to keep it secret.

Such a system is created where holders of secret information are not forced topart with to government or other bodies.

Where secret information (best reports of chemicals and Pharmaceuticals isgiven to government, data to be kept secret.

A trade secret is information that provides a business with a competitive advantage.

The following section provides examples of circumstances where trade secretprotection was approved or denied

Courts have provided trade secret protection to:

Formula

Patterns

Plans

Designs

Physical devices

Processes

Software

Know-how

Please keep in mind that different courts may reach contrary conclusions concerningtrade secret status with respect to what may appear to be identical matters.

4.4.3. Formula

Formula is a group of symbols that make a mathematical statement or aconventionalized statement expressing some fundamental principle or arepresentation of a substance using symbols for its constituent elements.

It establishes a right direction for making something worthwhile or lucrative A formula (i.e., a recipe that allows one to create a product) can be a trade secret

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4.4.4. Cocacola

Common formulas found to be trade secrets in the food, drug, and cosmeticsindustry include formulas for butter flavoring, cheese, breakfast cereal, seasoningfor fried chicken, special diet rations for dogs, mixed alcoholic beverages, lipstick,and hair conditioner

The Coca-Cola Company has put numerous security measures in place to keepits formula a secret.

In fact, the formula gives the Coca-Cola Company a significant business advantagein the soda market, as there is no other soda that tastes the same

Formulae for a lemon-flavored soft drink, recipes and cooking procedures for commondishes such as BBQ chicken and bakery goods were all denied trade secret protection.

4.4.5 Pattern

A pattern is a form, template, or model (or, more abstractly, a set of rules) that canbe used to make or to generate things or parts of a thing.

If the things that are generated have enough in common for the underlying patternto be inferred or discerned, in which case the things are said to exhibit the pattern.

The detection of underlying patterns is called pattern recognition

4.4.6 Plan

A Plan is a proposed or intended method of getting from one set of circumstancesto another

They are often used to move from the present situation, towards the achievementof one or more objectives or goals

4.4.7 Design

Design is a decorative or artistic work. It may also be termed as an arrangementscheme

4.5. COURTS HAVE FOUND THE FOLLOWING TO BE TRADE SECRETS:

Circuitry for an advanced minicomputer Colour TV circuitry Schematics for an analog circuit Plans and specifications for gears and rollers of a photo-processing machine plans

for drilling equipment Plans and designs for a veneer dryer

Molds for the manufacture of street markers

Design for a grating.


NOTES


4.5.1 Physical Devices

Physical device is a device that has some physical implementation. It is an actual piece of hardware, not an emulated device. It is used in manufacturing can be a trade secret.

4.5.2 Physical DevicesThese devices include

A device for manufacturing radio parts Machinery and equipment used to manufacture polyethylene Machinery and equipment used to manufacture saw grade diamonds A computer tool used to service microprocessor-based elevators, a tool for making

a pressure-sensing mechanism A machine for inking carbon paper and ribbons, and an adhesive-tape machine

4.5.3. Process Process is a generalized method of doing something, generally involving steps or

operations that are usually ordered and/or interdependent. A process, method or technique used to make the final end product can also be a

trade secret.

4.5.4 Process Examples of processes found to be trade secrets include: A process to manufacture foam crash pads A process to treat metal, a process to manufacture fiberglass A method and procedure to manufacture epoxy resin rods A process to manufacture potassium sulfate A process for an environmentally sound method to manufacture coated paper

KNOW-HOW Know-how is information that enables a person to accomplish a particular task or

to operate a particular device or process. Information and experiential expertiserelated to using formulas or processes. Know-how can be a trade secret.

Examples of trade secrets in this area include: Know-how pertaining to the construction of plant chemicals, methods for testing

procedures to assure the quality of raw material Know-how to ascertain whether CAT scanning equipment and components are

operating according to specifications and to identify malfunctions

Methods to manufacture typewriters

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NOTES


4.6. PATENTS VS TRADE SECRETS

In some cases, even where an invention would meet the criteria of patentability,SME’s may opt for maintaining their invention as a trade secret rather than applyfor patent protection

The decision as to whether to apply for protection or to maintain the inventionsecret is one that should be taken on a case-by-case basis depending on a widevariety of factors.

It is crucial, first of all, for SME’s to know that trade secrets are protected, as longas certain actions are taken to keep the trade secret confidential

This may imply the need for signing confidentiality agreements with employeesand/or non-disclosure agreements with partners

CASE STUDIES

CASE HISTORY:1

Joya Williams, 41-year administrative assistant had worked for the director ofglobal brand marketing coco-cola

Their competitors have informed the fact that coke information was stolenthrough an employee

The stolen information was bargained for $1.5 million Phone records of William were tracked. The policemen discovered that he was

the source of stolen information The accused employee was fired

CASE HISTORY:2

Besides Williams other two were charged for en routing and bargaining their tradesecrets

A law suit was filed in Atlanta court and the case was attended by judge JoelFeldman for nearly 45 minutes

The judge approved $23,000 bond for Williams A video clipping was also exhibited expressing the simple act that Williams was in

search of some documents and had stuffed in her bag

CASE HISTORY:3

The accused had verified that the liquid container with a white label is supposed tobe new product to be launched

She was prevented from discussing the secrets to any one other than their lawyers


NOTES


VERDICT

The court is yet to pronounce the final verdict in this case

CASE HISTORY:

The accused had verified that the liquid container with a white label is supposed tobe new product to be launched

She was prevented from discussing the secrets to any one other than their lawyers

VERDICT

The court is yet to pronounce the final verdict in this case

PATENTS VS TRADE SECRETS

SNO. PATENTS TRADE SECRETS 1 Patenting is an IP protection

procedure through legal registration of the invention and prevention of competitors from recreation or illicit usage

Trade secret is an IP conservation method by keeping intellectual creations a secret

2 Cumbersome and expensive registration procedure exist for patenting an innovation

Substantial efforts may be required to keep the secret confidential.

3 Some special privileges such as licence and EMR are granted to patentee for disclosing his invention

Trade secrets do not prevent companies independently developing the same invention from patenting or commercializing it. Opportunities for licensing the product will be limited

4 The monopoly granted is valid for a limited period-usually 20 years. If the patents are not renewed at appropriate time, the technology is open to public

No such time frame is fixed. The producer can continue to use it as long as the technology or the process is not known to the competitors

5 Well-drafted remedial measures are prescribed by the legislation for patent infringement. Civil remedies are normally invoked to protect the interest of lawful owner of the patent

The degree of protection for trade secrets is significantly lower. Exclusivity over the invention will be lost if and/or when the secret becomes public

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4.7 MANAGING INTELLECTUAL PROPERTY RIGHTS

IPR POLICY: CAN ONE SIZE FIT ALL?

Need to define (F)RAND (a possible enhancement) In (F)RAND context, IPR claims (and timeliness) should be made mandatory and

be controlled Companies’ IPR strategies change over time and depending on market segments/

competitive positioning IPR strategy can be both open and proprietary (see IBM) Technologies/standards IPR : threat of fear, uncertainty & doubt Range of policies is probably the model to explore

INTELLECTUAL PROPERTY RIGHTS MANAGEMENT

The only resource in which poor people are rich is their knowledge. Protection of theintellectual property rights becomes necessary to ensure knowledge based approach towork. The activities necessary to achieve this goal are:

To coordinate with various intellectual property institutions and attorneys to mobilizepro bono or paid help for grassroots innovators to file patents, trademark andother means of IP protection and also directly file applications on their behalf.

To pursue with the government authorities, the possibility of nif providingthe certificate of inventions/unique traditional knowledge accompanied by mediumterm protection so as to reduce transaction costs of the IP offices and the innovators.

To coordinate with WIPO and other international patent offices to secure IP protectionfor grassroots innovators globally wherever applicable.

To provide assistance to innovators to enter into licensing arrangements withentrepreneurs for transferring technologies.

To help pool part of the license fee obtained from the innovators towards aninnovation fund for supporting innovators.

To help in prior art search so that innovators can maintain their competitive edge. To screen ongoing patents on Indian traditional knowledge so as to oppose the

improperly granted patents, particularly dealing with knowledge/innovations/practices entered in the National Register.


NOTES


TECHNOLOGY TRANSFER Developing countries, in particular, see technology transfer as part of the bargain

in which they have agreed to protect intellectual property rights. The TRIPSAgreement includes a number of provisions on this. For example, it requiresdeveloped countries’ governments to provide incentives for their companies totransfer technology to least-developed countries (Article 66.2).

Least-developed countries want this requirement to be made more effective. InDoha, ministers agreed that the TRIPS Council would “put in place a mechanismfor ensuring the monitoring and full implementation of the obligations”. The counciladopted a setting up this mechanism in February 2003. It details the informationdeveloped countries are to supply by the end of the year, on how their incentivesare functioning in practice.

This is now being implemented, and will be reviewed in full when the TRIPS Councilmeets in November 2003. At the same time, the question of technology transfercontinues to be raised under various TRIPS headings such as TRIPS and PublicHealth.

REVIEW QUESTIONS

(1) Explain the rights of Copy rights(2) Write short note on Trade secrets(3) Discuss the need and importance of managing individual designs(4) Explain the procedures involved in protecting geographical indications(5) How to register for Trade marks?

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NOTES



NOTES


UNIT V

LEGAL ASPECTS OF INTELLECTUALPROPERTY RIGHTS

5.1. KEY OBJECTIVES


Application of Infringement of Patents and its remedies

Modification of granted patents and protection against unfair competition.

Detailed idea about the Copyright and related rights, Trade Marks, Industrial design,Integrated circuits and Geographic indications

Enforcement of Intellectual Property Rights

Infringement of Patent and Remedies

The roots of the World Intellectual Property Organization go back to 1883, whenJohannes Brahms was composing his third Symphony, Robert Louis Stevenson was writingTreasure Island, and John and Emily Roebling were completing construction of NewYork’s Brooklyn Bridge.

The need for international protection of intellectual property became evident whenforeign exhibitors refused to attend the International Exhibition of Inventions in Viennain 1873 because they were afraid their ideas would be stolen and exploited commerciallyin other countries.

1883 marked the birth of the Paris Convention for the Protection of IndustrialProperty, the first major international treaty designed to help the people of one countryobtain protection in other countries for their intellectual creations in the form of industrialproperty rights, known as:

inventions (patents) trademarks

industrial designs

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NOTES


The Paris Convention entered into force in 1884 with 14 member States, which setup an International Bureau to carry out administrative tasks, such as organizing meetings ofthe member States.

In 1886, copyright entered the international arena with the Berne Convention for theProtection of Literary and Artistic Works. The aim of this Convention was to helpnationals of its member States obtain international protection of their right to control, andreceive payment for, the use of their creative works such as:

novels, short stories, poems, plays;

songs, operas, musicals, sonatas; and

drawings, paintings, sculptures, architectural works.

Like the Paris Convention, the Berne Convention set up an International Bureau tocarry out administrative tasks. In 1893, these two small bureaux united to form aninternational organization called the United International Bureaux for the Protection ofIntellectual Property (best known by its French acronym BIRPI). Based in Berne,Switzerland, with a staff of seven, this small organization was the predecessor of the WorldIntellectual Property Organization of today - a dynamic entity with 184 member States, astaff that now numbers some 938, from 95 countries around the world, and with a missionand a mandate that are constantly growing.

As the importance of intellectual property grew, the structure and form of theOrganization changed as well. In 1960, BIRPI moved from Berne to Geneva to be closerto the United Nations and other international organizations in that city. A decade later,following the entry into force of the Convention Establishing the World Intellectual PropertyOrganization, BIRPI became WIPO, undergoing structural and administrative reformsand acquiring a secretariat answerable to the member States.

In 1974, WIPO became a specialized agency of the United Nations system oforganizations, with a mandate to administer intellectual property matters recognized by themember States of the UN.

In 1978, the WIPO Secretariat moved into the headquarters building that has nowbecome a Geneva landmark, with spectacular views of the surrounding Swiss and Frenchcountryside.

WIPO expanded its role and further demonstrated the importance of intellectualproperty rights in the management of globalized trade in 1996 by entering into a cooperationagreement with the World Trade Organization (WTO).

The impetus that led to the Paris and Berne Conventions - the desire to promotecreativity by protecting the works of the mind - has continued to power the work of theOrganization, and its predecessor, for some 120 years. But the scope of the protectionand the services provided have developed and expanded radically during that time.


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In 1898, BIRPI administered only four international treaties. Today its successor,WIPO, administers 24 treaties (three of those jointly with other international organizations)and carries out a rich and varied program of work, through its member States and secretariat,that seeks to:

harmonize national intellectual property legislation and procedures, provide services for international applications for industrial property rights, exchange intellectual property information, provide legal and technical assistance to developing and other countries, facilitate the resolution of private intellectual property disputes, and marshal information technology as a tool for storing, accessing, and using valuable

intellectual property information.

The World Intellectual Property Organization (WIPO) is a specialized agency of theUnited Nations. It is dedicated to developing a balanced and accessible internationalintellectual property (IP) system, which rewards creativity, stimulates innovation andcontributes to economic development while safeguarding the public interest.

WIPO was established by the WIPO Convention in 1967 with a mandate from itsMember States to promote the protection of IP throughout the world through cooperationamong states and in collaboration with other international organizations. Its headquartersare in Geneva, Switzerland. The Director General is Francis Gurry.

How WIPO Works

The terms governing WIPO’s mandate, functions, finances and procedures are setout in the WIPO Convention.

Member States

WIPO’s Member States determine the strategic direction and activities of theOrganization. They meet in the Assemblies, committees and working groups. See decision-making bodies.

There are currently 184 Member States, i.e. over 90 percent of the countries of theworld. Click here for a regularly updated list of members and membership criteria, withlinks to further information by country.

Secretariat

The WIPO Secretariat, or International Bureau, is based in Geneva. WIPO staff,drawn from more than 90 countries, include experts in diverse areas of IP law and practice,as well as specialists in public policy, economics, administration and IT.

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The respective divisions of the Secretariat are responsible for coordinating the meetingsof Member States and implementing their decisions; for administering the international IPregistration systems; for developing and executing the programs designed to achieve WIPO’sgoals; and for providing a repository of IP expertise to assist its members.

Organigram

Director General

NGOs, IGOs, Civil Society

WIPO works with a wide spectrum of stakeholders, including other intergovernmentalorganizations, non-governmental organizations, representatives of civil society and of industrygroups. Some 250 NGOs and IGOs currently have official observer status at WIPOmeetings. See the list of WIPO observers and admission criteria.

Program and Budget

Every two years WIPO’s Director General presents a Program and Budget documentto Member States for approval. This details objectives, performance measures andbudgetary planning for all proposed program activities.

WIPO is unusual among the family of UN organizations in that it is largely self-financing.About 90 percent of the Organization’s budgeted expenditure of 626 million Swiss francsfor the 2008-2009 biennium will come from earnings from the services which WIPOprovides to users of the international registration systems (PCT, Madrid system, The HagueSystem etc.). The remaining 10 percent will be made up mainly of revenue from WIPO’sarbitration and mediation services and sales of publications, plus contributions from MemberStates. These contributions are relatively small. The five largest contributing countries eachdonate about one-half percent of the Organization’s budget.

Financial Regulations and Rules

The financial activities of WIPO are governed by the Financial Regulations and Rules.

Modification of granted patents

The Patent Opposition System allows any party desiring to do so the opportunity tofile an opposition to a granted patent after the patent right is granted. The goal of the PatentOpposition System is to increase public confidence in the patent system. When an oppositionis filed, the Patent Office re-examines the appropriateness of its initial decision to grant thepatent and remedies any flaws that are discovered.

While defective patent rights should be corrected rapidly, any defect in the descriptionin the grounds for opposition or evidence in written opposition to a patent make it difficultfor an examiner, patent right holder, etc. to understand the intention of the party who filedthe opposition. This could lead to complication in examination of the opposition.


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The patent right holder will be informed of the reason for cancellation, if such a decisionis arrived at by the Chief Appeals Examiner, and given the opportunity to submit writtenopinion or demand for correction. However, unlike the procedure for amendment of thepatent specification in the examination stage, for the patent right holder to file a demand forcorrection the same form as the written demand for trial for correction or invalidation isrequired.


1. General Obligations

2. Civil and Administrative Procedures and Remedies

3. Provisional Measures

4. Special Requirements Related to Border Measures

5. Criminal Procedures

Acquisition and Maintenance of Intellectual Property Rights and Related Inter-PartsProcedures


5.2. GENERAL OBLIGATIONS

Article 411. Members shall ensure that enforcement procedures as specified in this Part are

available under their law so as to permit effective action against any act ofinfringement of intellectual property rights covered by this Agreement, includingexpeditious remedies to prevent infringements and remedies which constitute adeterrent to further infringements. These procedures shall be applied in such amanner as to avoid the creation of barriers to legitimate trade and to provide forsafeguards against their abuse.

2. Procedures concerning the enforcement of intellectual property rights shall be fairand equitable. They shall not be unnecessarily complicated or costly, or entailunreasonable time-limits or unwarranted delays.

3. Decisions on the merits of a case shall preferably be in writing and reasoned. Theyshall be made available at least to the parties to the proceeding without unduedelay. Decisions on the merits of a case shall be based only on evidence in respectof which parties were offered the opportunity to be heard.

4. Parties to a proceeding shall have an opportunity for review by a judicial authorityof final administrative decisions and, subject to jurisdictional provisions in a Member’slaw concerning the importance of a case, of at least the legal aspects of initialjudicial decisions on the merits of a case. However, there shall be no obligation toprovide an opportunity for review of acquittals in criminal cases.

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5. It is understood that this Part does not create any obligation to put in place ajudicial system for the enforcement of intellectual property rights distinct from thatfor the enforcement of law in general, nor does it affect the capacity of Membersto enforce their law in general. Nothing in this Part creates any obligation withrespect to the distribution of resources as between enforcement of intellectualproperty rights and the enforcement of law in general.

5.3. CIVIL AND ADMINISTRATIVE PROCEDURES AND REMEDIES

Article 42 Fair and Equitable Procedures

Members shall make available to right holders civil judicial procedures concerningthe enforcement of any intellectual property right covered by this Agreement. Defendantsshall have the right to written notice which is timely and contains sufficient detail, includingthe basis of the claims. Parties shall be allowed to be represented by independent legalcounsel, and procedures shall not impose overly burdensome requirements concerningmandatory personal appearances. All parties to such procedures shall be duly entitled tosubstantiate their claims and to present all relevant evidence. The procedure shall providea means to identify and protect confidential information, unless this would be contrary toexisting constitutional requirements.

Article 43 Evidence

1. The judicial authorities shall have the authority, where a party has presentedreasonably available evidence sufficient to support its claims and has specifiedevidence relevant to substantiation of its claims which lies in the control of theopposing party, to order that this evidence be produced by the opposing party,subject in appropriate cases to conditions which ensure the protection of confidentialinformation.

2. In cases in which a party to a proceeding voluntarily and without good reasonrefuses access to, or otherwise does not provide necessary information within areasonable period, or significantly impedes a procedure relating to an enforcementaction, a Member may accord judicial authorities the authority to make preliminaryand final determinations, affirmative or negative, on the basis of the informationpresented to them, including the complaint or the allegation presented by the partyadversely affected by the denial of access to information, subject to providing theparties an opportunity to be heard on the allegations or evidence.

Article 44 Injunctions

1. The judicial authorities shall have the authority to order a party to desist from aninfringement, inter alia to prevent the entry into the channels of commerce in theirjurisdiction of imported goods that involve the infringement of an intellectual property


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right, immediately after customs clearance of such goods. Members are not obligedto accord such authority in respect of protected subject matter acquired or orderedby a person prior to knowing or having reasonable grounds to know that dealing insuch subject matter would entail the infringement of an intellectual property right.

2. Notwithstanding the other provisions of this Part and provided that the provisionsof Part II specifically addressing use by governments, or by third parties authorizedby a government, without the authorization of the right holder are complied with,Members may limit the remedies available against such use to payment ofremuneration in accordance with subparagraph (h) of Article 31. In other cases,the remedies under this Part shall apply or, where these remedies are inconsistentwith a Member’s law, declaratory judgments and adequate compensation shall beavailable.

Article 45 Damages

1. The judicial authorities shall have the authority to order the infringer to pay the rightholder damages adequate to compensate for the injury the right holder has sufferedbecause of an infringement of that person’s intellectual property right by an infringerwho knowingly, or with reasonable grounds to know, engaged in infringing activity.

2. The judicial authorities shall also have the authority to order the infringer to pay theright holder expenses, which may include appropriate attorney’s fees. In appropriatecases, Members may authorize the judicial authorities to order recovery of profitsand/or payment of pre-established damages even where the infringer did notknowingly, or with reasonable grounds to know, engage in infringing activity.

Article 46 Other Remedies

In order to create an effective deterrent to infringement, the judicial authorities shallhave the authority to order that goods that they have found to be infringing be, withoutcompensation of any sort, disposed of outside the channels of commerce in such a manneras to avoid any harm caused to the right holder, or, unless this would be contrary to existingconstitutional requirements, destroyed. The judicial authorities shall also have the authorityto order that materials and implements the predominant use of which has been in thecreation of the infringing goods be, without compensation of any sort, disposed of outsidethe channels of commerce in such a manner as to minimize the risks of further infringements.In considering such requests, the need for proportionality between the seriousness of theinfringement and the remedies ordered as well as the interests of third parties shall be takeninto account. In regard to counterfeit trademark goods, the simple removal of the trademarkunlawfully affixed shall not be sufficient, other than in exceptional cases, to permit releaseof the goods into the channels of commerce.

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Article 47 Right of Information

Members may provide that the judicial authorities shall have the authority, unless thiswould be out of proportion to the seriousness of the infringement, to order the infringer toinform the right holder of the identity of third persons involved in the production anddistribution of the infringing goods or services and of their channels of distribution.

Article 48 Indemnification of the Defendant

1. The judicial authorities shall have the authority to order a party at whose requestmeasures were taken and who has abused enforcement procedures to provide toa party wrongfully enjoined or restrained adequate compensation for the injurysuffered because of such abuse. The judicial authorities shall also have the authorityto order the applicant to pay the defendant expenses, which may include appropriateattorney’s fees.

2. In respect of the administration of any law pertaining to the protection orenforcement of intellectual property rights, Members shall only exempt both publicauthorities and officials from liability to appropriate remedial measures where actionsare taken or intended in good faith in the course of the administration of that law.

Article 49 Administrative Procedures

To the extent that any civil remedy can be ordered as a result of administrativeprocedures on the merits of a case, such procedures shall conform to principles equivalentin substance to those set forth in this Section.

5.4. PROVISIONAL MEASURES

Article 501. The judicial authorities shall have the authority to order prompt and effective provisional

measures:a) to prevent an infringement of any intellectual property right from occurring, and in

particular to prevent the entry into the channels of commerce in their jurisdiction ofgoods, including imported goods immediately after customs clearance;

b) to preserve relevant evidence in regard to the alleged infringement.2. The judicial authorities shall have the authority to adopt provisional measures inaudita

altera parte where appropriate, in particular where any delay is likely to causeirreparable harm to the right holder, or where there is a demonstrable risk of evidencebeing destroyed.

3. The judicial authorities shall have the authority to require the applicant to provide anyreasonably available evidence in order to satisfy themselves with a sufficient degree ofcertainty that the applicant is the right holder and that the applicant’s right is beinginfringed or that such infringement is imminent, and to order the applicant to provide a


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security or equivalent assurance sufficient to protect the defendant and to preventabuse.

4. Where provisional measures have been adopted inaudita altera parte, the partiesaffected shall be given notice, without delay after the execution of the measures at thelatest. A review, including a right to be heard, shall take place upon request of thedefendant with a view to deciding, within a reasonable period after the notification ofthe measures, whether these measures shall be modified, revoked or confirmed.

5. The applicant may be required to supply other information necessary for the identificationof the goods concerned by the authority that will execute the provisional measures.

6. Without prejudice to paragraph 4, provisional measures taken on the basis of paragraphs1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to haveeffect, if proceedings leading to a decision on the merits of the case are not initiatedwithin a reasonable period, to be determined by the judicial authority ordering themeasures where a Member’s law so permits or, in the absence of such a determination,not to exceed 20 working days or 31 calendar days, whichever is the longer.

7. Where the provisional measures are revoked or where they lapse due to any act oromission by the applicant, or where it is subsequently found that there has been noinfringement or threat of infringement of an intellectual property right, the judicialauthorities shall have the authority to order the applicant, upon request of the defendant,to provide the defendant appropriate compensation for any injury caused by thesemeasures.

8. To the extent that any provisional measure can be ordered as a result of administrativeprocedures, such procedures shall conform to principles equivalent in substance tothose set forth in this Section.

5.5. SPECIAL REQUIREMENTS RELATED TO BORDER MEASURES

Article 51 Suspension of Release by Customs Authorities

Members shall, in conformity with the provisions set out below, adopt procedures toenable a right holder, who has valid grounds for suspecting that the importation of counterfeittrademark or pirated copyright goods may take place, to lodge an application in writingwith competent authorities, administrative or judicial, for the suspension by the customsauthorities of the release into free circulation of such goods. Members may enable such anapplication to be made in respect of goods which involve other infringements of intellectualproperty rights, provided that the requirements of this Section are met. Members may alsoprovide for corresponding procedures concerning the suspension by the customs authoritiesof the release of infringing goods destined for exportation from their territories.

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Article 52 Application

Any right holder initiating the procedures under Article 51 shall be required to provideadequate evidence to satisfy the competent authorities that, under the laws of the countryof importation, there is prima facie an infringement of the right holder’s intellectual propertyright and to supply a sufficiently detailed description of the goods to make them readilyrecognizable by the customs authorities. The competent authorities shall inform the applicantwithin a reasonable period whether they have accepted the application and, wheredetermined by the competent authorities, the period for which the customs authorities willtake action.

Article 53 Security or Equivalent Assurance

1. The competent authorities shall have the authority to require an applicant to providea security or equivalent assurance sufficient to protect the defendant and thecompetent authorities and to prevent abuse. Such security or equivalent assuranceshall not unreasonably deter recourse to these procedures.

2. Where pursuant to an application under this Section the release of goods involvingindustrial designs, patents, layout-designs or undisclosed information into freecirculation has been suspended by customs authorities on the basis of a decisionother than by a judicial or other independent authority, and the period providedfor in Article 55 has expired without the granting of provisional relief by the dulyempowered authority, and provided that all other conditions for importation havebeen complied with, the owner, importer, or consignee of such goods shall beentitled to their release on the posting of a security in an amount sufficient to protectthe right holder for any infringement. Payment of such security shall not prejudiceany other remedy available to the right holder, it being understood that the securityshall be released if the right holder fails to pursue the right of action within areasonable period of time.

Article 54 Notice of Suspension

The importer and the applicant shall be promptly notified of the suspension of therelease of goods according to Article 51.

Article 55 Duration of Suspension

If, within a period not exceeding 10 working days after the applicant has been servednotice of the suspension, the customs authorities have not been informed that proceedingsleading to a decision on the merits of the case have been initiated by a party other than thedefendant, or that the duly empowered authority has taken provisional measures prolongingthe suspension of the release of the goods, the goods shall be released, provided that allother conditions for importation or exportation have been complied with; in appropriatecases, this time-limit may be extended by another 10 working days. If proceedings leading


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to a decision on the merits of the case have been initiated, a review, including a right to beheard, shall take place upon request of the defendant with a view to deciding, within areasonable period, whether these measures shall be modified, revoked or confirmed.Notwithstanding the above, where the suspension of the release of goods is carried out orcontinued in accordance with a provisional judicial measure, the provisions of paragraph 6of Article 50 shall apply.

Article 56 Indemnification of the Importer and of the Owner of the Goods

Relevant authorities shall have the authority to order the applicant to pay the importer,the consignee and the owner of the goods appropriate compensation for any injury causedto them through the wrongful detention of goods or through the detention of goods releasedpursuant to Article 55.

Article 57 Right of Inspection and Information

Without prejudice to the protection of confidential information, Members shall providethe competent authorities the authority to give the right holder sufficient opportunity tohave any goods detained by the customs authorities inspected in order to substantiate theright holder’s claims. The competent authorities shall also have authority to give the importeran equivalent opportunity to have any such goods inspected. Where a positive determinationhas been made on the merits of a case, Members may provide the competent authoritiesthe authority to inform the right holder of the names and addresses of the consignor, theimporter and the consignee and of the quantity of the goods in question.

Article 58 Ex Officio Action

Where Members require competent authorities to act upon their own initiative and tosuspend the release of goods in respect of which they have acquired prima facie evidencethat an intellectual property right is being infringed:

a. the competent authorities may at any time seek from the right holder any informationthat may assist them to exercise these powers;

b. the importer and the right holder shall be promptly notified of the suspension.Where the importer has lodged an appeal against the suspension with the competentauthorities, the suspension shall be subject to the conditions, mutatis mutandis,set out at Article 55;

c. Members shall only exempt both public authorities and officials from liability toappropriate remedial measures where actions are taken or intended in good faith.

Article 59 Remedies

Without prejudice to other rights of action open to the right holder and subject to theright of the defendant to seek review by a judicial authority, competent authorities shallhave the authority to order the destruction or disposal of infringing goods in accordance

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with the principles set out in Article 46. In regard to counterfeit trademark goods, theauthorities shall not allow the re-exportation of the infringing goods in an unaltered state orsubject them to a different customs procedure, other than in exceptional circumstances.

Article 60 De Minimis Imports

Members may exclude from the application of the above provisions small quantitiesof goods of a non-commercial nature contained in travellers’ personal luggage or sent insmall consignments.

5.6 CRIMINAL PROCEDURES

Article 61 Members shall provide for criminal procedures and penalties to be appliedat least in cases of wilful trademark counterfeiting or copyright piracy on a commercialscale. Remedies available shall include imprisonment and/or monetary fines sufficient toprovide a deterrent, consistently with the level of penalties applied for crimes of acorresponding gravity. In appropriate cases, remedies available shall also include the seizure,forfeiture and destruction of the infringing goods and of any materials and implements thepredominant use of which has been in the commission of the offence. Members may providefor criminal procedures and penalties to be applied in other cases of infringement ofintellectual property rights, in particular where they are committed wilfully and on acommercial scale.

Acquisition and maintenance of intellectual property rights and related inter-partsprocedures

Article 62

1. Members may require, as a condition of the acquisition or maintenance of theintellectual property rights provided for under Sections 2 through 6 of Part II,compliance with reasonable procedures and formalities. Such procedures andformalities shall be consistent with the provisions of this Agreement.

2. Where the acquisition of an intellectual property right is subject to the right beinggranted or registered, Members shall ensure that the procedures for grant orregistration, subject to compliance with the substantive conditions for acquisitionof the right, permit the granting or registration of the right within a reasonableperiod of time so as to avoid unwarranted curtailment of the period of protection.

3. Article 4 of the Paris Convention (1967) shall apply mutatis mutandis to servicemarks.

4. Procedures concerning the acquisition or maintenance of intellectual property rightsand, where a Member’s law provides for such procedures, administrative revocationand inter partes procedures such as opposition, revocation and cancellation, shallbe governed by the general principles set out in paragraphs 2 and 3 of Article 41.


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5. Final administrative decisions in any of the procedures referred to under paragraph 4shall be subject to review by a judicial or quasi-judicial authority. However, there shallbe no obligation to provide an opportunity for such review of decisions in cases ofunsuccessful opposition or administrative revocation, provided that the grounds forsuch procedures can be the subject of invalidation procedures.

5.7 PROTECTION AGAINST UNFAIR TRADE COMPETITION

Protection against unfair competition has been recognised as one of the main objectivesof intellectual property system. It does not grant exclusive rights to the owners with respectto the subject concerned, like in the case of patents, trade marks, etc. Infact, it prohibitsany act of competition that is contrary to honest practices in industrial or commercialmatters, referred to as “unfair competition”.

The acts of unfair competition not only adversely affect the competitors, which tendto lose their customers and market share; but also affect consumers as they are likely to bemisinformed and mislead and tend to suffer economic and personal prejudice.

The following acts of unfair competition are closely related to IP and are directlyrelevant to consumer protection:- all acts of such a nature as to create confusion by anymeans whatever with the establishment, the goods, or the industrial or commercial activities,of a competitor false allegations in the course of trade of such a nature as to discredit theestablishment, the goods, or the industrial or commercial activities, of a competitor indicationsor allegations the use of which in trade is liable to mislead the public as to the nature,manufacturing process, characteristics, suitability for their purpose or quantity, of the goods.

Whatever form unfair competition may take, it is in the interest of the honest andlegitimate entrepreneur, the consumer and the public at large that they should be preventedfrom it as early and as effectively as possible. Free and fair competition between enterprisesis considered to be the best means of satisfying supply and demand in the economy as wellas of serving the interests of consumers and economy as a whole. This stimulates innovationand productivity and leads to the optimum allocation of resources in the economy; reducescosts and improves quality; as well as accelerates economic growth and development.Hence, In India, the Government has formulated a Competition Policy which protects theinterests of consumers and producers by promoting and sustaining a fair competition.

Further, fair play in the market place cannot be ensured only by the protection ofindustrial property rights. A wide range of unfair acts, such as misleading advertising, violationof trade secrets, etc., are usually not dealt with by specific laws on intellectual property.Thus, it is necessary to enforce Unfair Competition law to supplement the intellectual propertylaws and to grant fair protection to consumers. Data Exclusivity: Protection against unfaircommercial practice.

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Introduction:

Data exclusivity is one of the most interesting issues in the current discussion onpharmaceutical intellectual property policy-making globally. It is aimed at protecting andsafeguarding pharmaceutical registration files, i.e. the data submitted by companies toregulatory authorities. The underlying logic of data exclusivity suggests that it is an expressionof trade secrets and, as such, should be independent of patents. Compared with patents,the market power of data exclusivity is, in theory, less restrictive, mainly because it doesnot legally prevent other companies from generating their own registration data.

One of the highly debated and controversial “TRIPS compliance” agenda, whichcould impact Indian domestic pharma’s future growth profile, is data exclusivity. Eventhough, the industry has serious concerns in adopting this provision, the global growth ofIndian pharma makes it imperative for India to provide confidence and assurance to ouroverseas partners and clients. We must convince them that we prefer “compliance” withinflexibilities, without prejudicing domestic national public health interests.

The transitional period of ten years, given to developing nations to conform to theTRIPS agreement ended on December 31, 2004. This opened up the pharmaceuticalsector to product patent regime which gave exclusive rights to the inventor to use and sellhis product, patented since 1995 for a period of 20 years. Coming under TRIPS obligations,India amended its 1970 Act and consequently, introduced product patent regime in 2005,amidst a flurry of protests by public interest groups across the country.

For the good of many, for the benefit of many- the ancient system of Indian medicinebelieved in this holy principle for thousands of years. When it came to patient care andtreatment, it was always “people before profits”. Even in the modern age of medicines,India plays a significant role in global access to medicines. In fact, it is one of the world’’slargest exporters of cheap generic drugs — mainly to poor countries of Africa and Asiathat do not have drug producing abilities.

Understanding the provisions of TRIPS:

One of the main reasons why companies are in favour of data exclusivity provisions isbecause, it takes around 8-10 years of intensive clinical research and trials and an investmentof between $800 million to $1.2 billion to bring a new drug into the market. Further, by itsvery nature, R&D is a high risk business. MNC’’s seem to further strengthen their argumentin support of data exclusivity by citing Article 39.3 of TRIPS, namely- WTO Membersshould protect “undisclosed test or other data” against “unfair commercial use” and“disclosure”.

Conversely, nowhere does TRIPS state that countries should provide “exclusive rights”to the originator of the data for a given period. Rather, TRIPS simply refers generally to theneed for “data protection”. Data protection against unfair commercial misuse, as mentioned


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in TRIPS, is totally different from data exclusivity. Therefore, the use of data by the DrugController is a legitimate, non-commercial use and is TRIPS compliant.

a) Interpreting Article 39.3

Article 39.3 requires countries to protect undisclosed registration data about newchemical entities i) against disclosure and ii) against unfair commercial use. Thus, regulatoryauthorities may not publish registration data, or share it with third parties (e.g. genericcompetitors). This is a clear requirement.

But there is some debate as to what exactly is meant by ‘’unfair commercial use’’.Does the use of bio-equivalence studies instead of full clinical trials represent ‘’unfaircommercial use’’? Clearly, there is no ‘’unfair commercial use’’ by the generic company.The generic manufacturer never uses the originator’’s data and does not even have accessto them. Meanwhile, the regulatory authorities also do not normally use the originator’’sdata — though, as mentioned above, they may (indirectly) rely on them. But even if theregulators uses those data, this is not commercial use, since the regulatory agency is not acommercial organisation. Legal experts have also pointed out that, in the context of Article39 of TRIPS, the term ‘’unfair commercial use’’ refers to, and prohibits, practices such asindustrial espionage. However, it was not meant to provide exclusive rights—nor was itmeant to interfere with the work of a government body, tasked with protecting the public.Article 39.3 does not need protection for data that is already public; Protection is requiredonly for new chemical entities (NEC). Hence, countries have considerable discretion indefining “new” and can exclude applications for second indications, formulations, etc. Beforegranting protection, regulators can ask applicants to prove that the data, for which protectionis sought, is the result of significant investment. Thus, Article 39.3 only seeks protectionagainst unfair commercial use and countries are allowed considerable discretion in defining‘’unfair’’ use, keeping in mind its spirit that the health authorities must not disclose testdata, submitted by companies. b) Article 39.3 does not endorse exclusive rights Dataexclusivity does not have major implications, since the period of data exclusivity wouldnormally be shorter than the patent duration.

It is also clear from the above that data exclusivity is not related to patent protection.A few years ago, the US and its powerful drug multinationals, after successfully managingthe WTO agreement on TRIPs and Public Health in its favour, started actively pursuing fora data exclusivity provision for drugs in the Indian regulatory system.The ultimate goal wasto incorporate the data exclusivity condition into the patent rules of

The argument of data exclusivity conferring absolute and dictatorial rights topharmaceutical companies stands baseless, on the contrary it recognizes and gives welldeserved economic returns for its efforts, which is, oftentimes data arising out of manyyears of research and clinical trials and is very expensive to produce. It is viewed that DataProtection is very different from data exclusivity. Contrary to India’’s stand, the EU and

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US are of the opinion that article 39.3 also covers data exclusivity and they have adoptedsimilar legislation to provide data exclusivity to innovator, the duration of which may exceedup to 10 years in EU and 5 years in US. However, it needs to be understood that the mainobjective of Article 39.3 is to restrict and stop ‘’unfair commercial use’’ or unfair competition.Therefore, it is vital to analyze ‘’unfair commercial use’’ at this juncture. c) Unfair commercialuse According to Article 39.1 of TRIPS, “in the course of ensuring effective protectionagainst unfair competition as provided in Article 10bis of the Paris convention (1967),members shall protect...data submitted to governments or governmental agencies inaccordance with paragraph 3.” Thus, the obligation of the members is to protect datasubmitted to the government or government agencies in the course of ensuring effectiveprotection against unfair competition as provided in Article 10bis of the Paris convention.Even though, Article 39.3 uses the term “unfair commercial use” instead of unfaircompetition”, the purpose and the meaning of the word “unfair commercial use” conveythe same meaning. Article 10bis of the Paris convention defines unfair competition as “anyact of competition contrary to honest practices in industrial or commercial matters”.

Further WIPO in its model provisions of unfair competition law (model law) 1996,which essentially gives effect to Article 10bis, does not give any exclusive rights onundisclosed information. According to WIPO, “repression of unfair competition is notconcerned with exclusive rights, but is directed against acts of competition contrary tohonest practices in industrial or commercial matters, e.g. in relation to undisclosed information(trade secrets).” The model law does not indicate that a fixed term of protection ofundisclosed information is what is necessary for effectively implementing the above-mentioned article of the Paris convention. More importantly, under the discipline of unfaircompetition, protection is not based on the existence of “property” rights. Further, accordingto the commission on intellectual property rights, innovation and public health (CIPIH),appointed by the World Health Organization, Article 39.3 “does not create property rights,nor a right to prevent others from relying on the data for the marketing approval of thesame product by a third party, or from using the data except where unfair (dishonest)commercial practices are involved”. Additionally, the commission on intellectual propertyrights (CIPR) recommends that countries may allow health authorities to approve equivalentgeneric substitutes by ‘’relying on’’ the original data. Therefore, the debate on Article 39.3revolves around whether to include or to leave data exclusivity from the interpretation ofthe said article. On the analysis of the text of WIPO, as mentioned above, it can be arguedthat repression of unfair competition does not advocate any kind of exclusive rights. Thus,the enjoyment of market exclusivity to pharmaceutical companies or the innovator on thebasis of Article 39.3 is not at all a possibility— especially as the word ‘’exclusivity’’ is notmentioned anywhere in the Article.


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Conclusion:

Its interesting to note that the committee for the Protection of Undisclosed Informationwas formed under Article 39.3 of the TRIPS Agreement, under the chairpersonship ofSatwant Reddy, Secretary, Ministry of Chemicals and Fertilizers. This committee hadrecently finalised a proposal for a five-year term of data exclusivity (DE) for India. However,the proposal put forward by the Satwant Reddy report, which would allow multinationalsexclusive use of their costly data for three to five years with adequate safeguards, is stillbeing considered, given that this might not do justice to India’’s obligations to TRIPS.

Developing countries like India should implement data protection legislation thatfacilitates the entry of generic competitors, whilst providing appropriate protection forconfidential data. This may be done in a variety of TRIPS-compatible ways. There is noneed to enact legislation in order to create exclusive rights where no patent protectionexists or to extend the effective period of the patent monopoly beyond its proper term.

With regard to the question of research in generic drugs, it is known that genericdrugs don’’t require the same amount of documents; in fact it would be a very small fraction.Why should anyone be interested in the results of the original drug? There would be enoughevidence developed over years from the usage of the original drug, establishing the suitabilityof the molecule or formulation. So, what can we look forward to in the future? India shouldnot impose restrictions for the use of or reliance on such data in ways that would excludefair competition or impede the use of flexibilities built in TRIPS”[21] Instead, it shouldemphasise the public health aspects of data exclusivity rather than merely considerthecorporate gains of a few pharmaceutical companies

Suit for infringement

Sections 104 to 117 deal with the suits concerning infringement of patents. ChapterXVIII describes the jurisdiction of courts, burden of proof, declaration of non-infringement,pleas of defence, reliefs available in a suit for infringement and other related matters.

Jurisdiction: An action for infringement of a patent must be instituted by way of a suitin any District Court or High Court having the jurisdiction to try the suit. Where a counterclaim for revocation of the patent is made by the defendant, the suit, along with the counterclaim, will be transferred to the High Court for decision (Section 104). The cause of actionfor fiI ing the suit must have arisen at a place within the jurisdiction of the court where thesuit is filed.

Suit for infringement: A suit for infringement can be filed by the patentee, Jr his exclusivelicensee or assignee or co-owner or any person authorised by the patentee. A suit for theinfringement must be filed within 3 years from the :late of infringement. It can be filed onlyafter the patent has been sealed. However, he can claim damages caused to him byinfringement committed :luring the period between the date Of advertisement of acceptanceof complete

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Burden of proof in case of suits concerning infringement In any suit for infringement ofa patent, where the subject matter of patent IS a process for obtaining a product, the courtmay direct the defendant to prove, evocation of a patent in the earlier chapter under theheading ‘revocation, patent.’ The grounds of revocation may be pleaded as defence in asuit n infringement.

The defences are:

a. that the invention was claimed in a valid claim of earlier priori date contained in thecomplete specification of another pate

b. that the patentee is not entitled to the patent;

c. that the patent was wrongfully obtained in contravention of the person entitled;

d. that the subject of claim is not an invention within the meaning

e. that the invention as claimed is not new having regard to what v, publicly known orpublicly used in India or elsewhere before t expiry date of the claim;

f. what the invention as claimed is obvious and does not involve an inventive step;

g. that the invention is not useful;

h. that the complete specification does not sufficiently and describe the invention andthe metho by which it is to be performed

i. that the scope of any claim of the complete specification is sufficiently and clearlydefined or is

j. that the patent was obtained on a false suggestion or representing

Reliefs against infringement

Where a suit is filed for infringement of a patent, the plaintiff is entitled to the followingremedies under Section 108. They are:

An action for infringement of a patent must be instituted by way of suit in any DistrictCourt or a High Court havingjurisdiction to try the suit. It can be instituted only after thepatent has been sealed. There is no infringement in an invalid patent. A suit for infringementof a patent which has expired may be brought in oider to claim damages sustained duringthe term of the patent. The purpose of the injunction is to prevent apprehended use of thepatentee’s statutory

monopoly, as defined in his claim. The reliefs of damages and an account of profits arealternatives and may not both be awarded or ordered in respect of the same infringement.The purpose of an account of profits is not to punish the defendant but to prevent his unjustenrichment.


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Injunction:

The relief of injunction is the most common effective and important relief. In cases ofurgency the wide discretionary power have been conferred upon the court to grant interim-injunction subject to certain conditions. An injunction will be granted as general rule wherethe validity of the patent and infringement are conclusively established. However the grantof an injunction is discretionary. Where an injunction is granted, it is important to limit thescope of the injunction to prohibit acts, which if carried out would infringe the patent.

That there is aprimafacie case that the patent is valid and infringed.That the balanceof convenience is in favour of the injunction being granted.In the absence of interiminjunction, the plaintiff will suffer an irrepairable loss.

Before granting an interim injunction the court will also take into consideration, thefollowing factors: (1) whether it is possible to compensate the plaintiffby award of damageswhen he succeeds at the trial (2) remaining term of the patent and (3) whether the defendant’strade is new one or an old one.

‘In a suit of infringement the plaintiff is entitled to injunction ifhe establishes his case.For the grant of temporary injunction, principles applicable to the infringement of patentaction are that there is a prima facie case that the patent is valid and infringed, that thebalance of convenience is in favour of injunction being granted and that the plaintiffwillsuffer an irrepairable loss. I

An interim injunction will not be granted if the patent which has been obtained by theplaintiff is a recent one and there is a serious controversy about the validity of the grant ofpatent itself. Iffrom the objections raised by the defendant, it is clear that a serious controversyexists as to whether or not the invention claimed by the plaintiff is new one or a newmanufacture or whether or not the invention involves any new inventive skill having regardto what was known or used prior to the date of the patent, courts will not grant an interiminjunction restraining the defendant from pursuing his normal business activity. The interiminjunction will not be granted if the defendant dispute the validity of the grant.2

The Delhi High Court refused to grant injunction where there is the validity of thegrant of patent is challenged. It held that if it is endeavoured to be shown that the patentought not to have been granted, the court will not interfere by issuing a temporary injunction.3If the patent is more than six years old and there is been actual user, it would be safe for thecourt to proceed upon this presumption.4

In Rajpraksh Vs. Mangat Ram Chowdhury 5 the ingredients ofldfringements arediscussed. The patented article or where there is a process, then the process, has to becompared with the infringing article of process to find out whether the patent has beeninfringed. Unessential features in an infringing article or process are of no account. If theinfringing goods are made with the same object in view which is attained by the patented

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article then a minor variation does not take action for infringement of patent the one as tothe invalidity of a plaintiff’s patent and the grounds of insufficiency of description, want ofnovelty, absence of inventive steps and want of utility was rightly placed on the defendant.

In case of infringement of a patent, the onus of proving the infringement lies upon theplaintiff, who has not only to prove the patent in his favour, but also to prove that the patentis being infringed by resorted to a process patented by the plaintiff. In doing so, he mustprove that the defendant has produced the patented articles or used the patented process,and to that end, the burden is on hi~ to prove that article seized by him and produced incourt is the article produced by the defendant. 1

Damages or account of profits

The next relief available to the plaintiff is the award of damages. The relief of damagesor account of profits are available in the alternative. The court has a discretion to awarddamages in lieu of or in addition to an injunction in certain cases where injury to the claimant’slegal right is small or which is capable of being estimated in money or which can be adequatelybe compensated by a small money payment or the case is one in which it would beoppressive to the defendant to grant an injunction.

Restriction on power of court to grant damages or account of profits: Section III laysdown certain restrictions on the power of court to grant damages or account of profits. Itcannot be granted under the following circumstances:

1. Where the defendant was not aware and no reasonable grounds for believing thatthe patent existed

2. Where any infringement was committed after the failure to pay any renewal feewithin the prescribed period and before any extension of that period.

3. Where the specification has been amended, the infringement was committed beforethe date of amendment unless it was shown that the original specification wasframed in good faith and with reasonable skill and knowledge.

Apart from these circumstances, the reI ief of damages or account of profits may beawarded for a partially valid specification. This is provided under Section 114 of the Act.

Seizure, forfeiture or destruction

The plaintiff is also entitled to another remedy by virtue of amendment made in theyear 2002 with effect from 20.5.2003. Clause (2) of Section 108 has been inserted by thePatents (Amendment) Act, 2003, which provides additional remedy of seizure, forfeitureor destruction of goods without payment of any compensation. It says, that the court mayalso order that the goods which are found to be infringing and materials and implement, thepredominant use of Patents.

The particulars of the breaches, constituting the alleged infringements of his/her rights.


NOTES


Threat of infringement proceedings

Section 106 provides the reliefs like a declaration or an injunction or damages in thecase of groundless threats of infringement proceedings. The patent right is a statutory rightand in case of any infringement, the patentee is entitled to institute a suit against the infringer.But without filing any suit for infringement. If he threatens any other person by means ofcirculars or advertisements or by communications, orally or in writing he can be stoppedby any aggrieved person. This type of threatening is generally given to a rival manufacturer,dealer with a view to stop the suspected infringement without having recourse to expensiveinfringement proceedings.

The Section 106 says that where any person threatens any other person by circularsor advertisements or by communications, orally or in writing addressed to that person orany other person, with proceedings for infringement of a patent. any’ person aggrievedmay bring a suit against him praying for the following reliefs, that is to say

(a) a declaration to th~ effect that the threats are unjustifiable; (b) an injunction againstthe continuance of the threats;(c) such damages, if any as he has sustained thereby.A mere notification of the existence ofa patent does not constitute a threat ofproceedings within the meaning of this section.

Section 107 speaks about the defences available to the defendant in a suit forinfringement. Infringement is violation of a right. It is unlawful making or selling or using apatented invention. A suit for infringement will arise only after the patent has been sealed.Repairing of a patented article to prolong the life of the article is permitted, but one mustnot make new one under the guise of repairing it. Under Section 47, the use of any patentedarticle for the purpose of experiment or research for imparting of instructions to pupils isnot an infringement.

5.8 INFRINGEMENT OF COPYRIGHT IN A DESIGN

Section 22 (1) speaks about fraudulent and obvious imitations. Imitation is commonin both cases. In the case of fraudulent imitation the imitation need not be obvious. Mereintention to deceive is enough. In the case of obvious imitation, it is necessary that theimitated article is very closer to the registered article. It is not necessary that the designmust be exact reproduction of the registered design. Both the designs must be viewed as awhole and it must be viewed through the eyes of a consumer.

The factors to be considered

In order to establish piracy, the following must be established:a. that the copyright in the design exists;b. that the design or a fraudulent or an obvious imitation thereof has been applied to

the article alleged to be pirated one;

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c. that the design or its imitation has been applied without the licence or writtenconsent of the registered proprietor;

d. that the article to which the design has been applied comes within the scope ofdescription of goods covered by the registration;

e. that the application of the design has been made for the purpose of sale of article;and

f. that the defendant has applied the design or caused the design to be applied ordone anything with a view to enable the design to be so applied to the article, orthe defendant has imported for the purpose of sale the article bearing the design orits imitation without the consent of the registered proprietor or the defendant haspublished or exposed or caused to be published or exposed for sale the offendingarticle knowing that it is pirated or infringing article.

In this case, the plaintiffs were registered proprietors of a certain design for printingsaris. The defendants imported into Bombay, ten cases (boxes) of Japanese print which isidentical with or a fraudulent imitation of the registered design ofthe plaintiffs and that thedefendants applied the design to the goods contained in the ten cases without the licenceor consent of the plaintiffs. The court observed:

“It is not necessary in the case of every design or pattern in order to bring it within thestatute that it must be exact reproduction of the registered design or that the words‘fraudulent or obvious imitation in the section must be construed to mean exact reproduction.Where there was no novelty or originalty about the registered design or pattern but it wasmerely a particular arrangement of old and well known kinds of work, quite a small changewould make a great difference. It is only in cases where there is no novelty or originaltyabout the design that exact reproduction of the registered design would amount to aninfringement of such a design and quite a small change, however trifling it may be, wouldmake a great difference.”

Who is an infringer? In Mohammed Abdul Kareem V s. Mohammad Yasin I, thecourt has answered the question who is an infringer of a design. He is,

i. a person who has applied the design or a fraudulent or obvious imitation thereof tothe article for the purpose of sale without the licence or consent of the proprietor

ii. a person who has caused to be applied the design or its imitations as aforesaid;

iii. a person who has done anything with a view to enable the design to be applied asaforesaid; .

iv. a person who has imported for the purpose of sale a pirated article without theconsent of the registered proprietor; and

v. a person who has published or exposed or caused to be published or exposed forsale a pirated article knowing that it is pirated article.


NOTES


Burden of proof: It is for the plaintiff to prove that the defendant had knowledge ofplaintiff’s right in a design. Further he has to establish that both the designs are similar andit is an obvious imitation of the registered design of the plaintiff.

In Nikki Tasha (India) Pvt. Ltd. Vs. Faridabad Gas Gadgets!, the Delhi HighCourt discussed that where an injunction can be granted. In this case the plaintiff got theregistration with regard to a product known as KITCHENETE which is a combination ofgas burner, grill and oven. The plaintiff sought permanent injunction against the defendantwho under the name of NAV JYOTI, are manufacturing, selling and advertising LPG Gas,cooking range similar in design to the registered designs of plaintiff. While refusing to grantinjunction in favour of plaintiff, the court observed: An interlocutory injunction will notnormally be granted where damages wi1l provide an adequate remedy if the claim succeed.The court will not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit. Where the design is of a recent date, noinj unction should be granted. Moreso, when there is a serious question as to the validity ofthe design to be tried in the suit, an application for cancellation has been made where aperson has entered as a proprietor of a registered design, that is under the Act no conclusiveproof that the plaintiff is proprietor of the designs, but only a prima facie evidence that heis the proprietor.

Damages or compensation

Apart from the grant of injunction, the proprietor is also entitled the relief of damages.The infringer will be liable for every contravention of Section 22 to pay the registeredproprietor of the design, a sum not exceeding Rs. 25,000/which is recoverable as a contractdebt. The total sum recoverable in respect of anyone design will not exceed Rs. 50,000/-. If the proprietor elects to bring a suit for the recovery of damages for any such contraventionand an injunction against the repetition thereof, the infringer is liable to such damages asmay be awarded and to be restrained accordingly.

Deliver up of infringing articles

Section 22 provides the remedy of deliver up of articles. The plaintiff may also ask forrendition of accounts by the defendants to show the profits earned by the defendant byunlawfully using the design. The plaintiff would contend that the profit earned by thedefendant would be the loss sustained by him which he would claim as damages.

REVIEW QUESTIONS

1. Write short note in “Patent Infringement”2. How to modify granted patents3. Suggest suitable strategies for protecting unfair competitions4. Explain the ways of enforcing the Intellectual Property Rights

5. Briefly examine the laws related to the IPR in India

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