INTRODUCTION TO

INTELLECTUAL PROPERTY

RIGHTS

atPharmexcil, Ahmedabad26th July, 2012

by Dr. Gopakumar G. NairAdvisor to Pharmexcil, IndiaGopakumar Nair AssociatesUrl: www.gnaipr.netEmail: gopanair@gnaipr.net

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IP Evolution

Property Right

INTELLECT – PROPERTY – RIGHT

Idea Expression COPYRIGHT

Idea Innovation Invention PATENT

Idea Quality + Identity TRADEMARK

Idea Appearance DESIGN

Idea Keep Confidential No Disclosure

TRADE SECRETS

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What is Intellectual Property?

Definition by WIPO

Intellectual property (IP) refers to

creations of the mind:

inventions, literary and artistic

works, and symbols, names,

images, and designs used in

commerce.3

Creativity (Creation Of The Mind)

Creativity is the ability to – Think / come up with new idea

–Design new “inventions”

– Produce “works of art”

– Solve problems in new ways, or

develop a new idea based on an

“original” knowledge.

–Novel or unconventional approach.4

Generate Ideas…..Generate Ideas…..And Own Them…..IPR And Own Them…..IPR

!!

Think Away Think Away From The From The

BoxBox

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IP Portfolio

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Patent US7395821

TrademarkMulti-Haler™

Design No.

211208

Trade SecretKnow-how

Copyright

Novel & Inventive

External Appearance

Confidential Informn&

Undisclosed Tech

Package Insert/ Information Leaflet

Brand Name

Product Patents In India

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TRIPS

The TRIPS (Trade Related

Aspects of Intellectual Property

Rights) Agreement came into

being with the establishment of

the WTO (World Trade

Organization) effective from 1st

January, 1995.9

WIPO

• UN organization dedicated to

promoting the use and protection of

works of the human spirit.

• Headquarters in Geneva, Switzerland.

• 185 nations as member states.

• Manages all IPs.

• Training through Academy and

Seminars10

TRIPS – Article 27Patentable Subject Matter1. Subject to the provisions of paragraphs 2 and 3, patents shall

be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.

[1] Subject to paragraph 4 of Article 65, paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.

2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law.

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TRIPS – Article 27Patentable Subject Matter

3. Members may also exclude from patentability:(a) diagnostic, therapeutic and surgical methods for the

treatment of humans or animals;(b) plants and animals other than micro-organisms, and

essentially biological processes for the production of plants or animals other than non-biological and microbiological processes. However, Members shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof. The provisions of this subparagraph shall be reviewed four years after the date of entry into force of the WTO Agreement.

[1] For the purposes of this Article, the terms "inventive step" and "capable of industrial application" may be deemed by a Member to be synonymous with the terms "non-obvious" and "useful" respectively.12

What is a Patent ?

A patent is a protection given to a

patentee for an invention for a limited

term by the government for disclosing the

invention

Right to exclude others from using your

invention.

Owner has a qualified right to use the

invention.

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A Conditional grant

Balance of Rights and Obligations

Subject to other laws of land

Granted to owner of invention/

assignee

What is a Patent?

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Three Statutory Pillars of

PATENTABILITY

1. Novelty (new)

2. Inventive Step (non-obvious) (Sec 2(1)(ja))

3. Industrial Applicability (utility) (Sec 2(1)(ac))

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Patent - Patentability

An invention can be patented if it is

• NOVEL: Must be New, Must DISTINGUISH from “State of the Art”

(PRIOR ART)

• Must have INVENTIVE STEPNon-obvious to a person “Skilled in the

Art”

• Must have INDUSTRIAL APPLICATIONMust be UsefulMust have Utility

• Must not be covered by Sec. 3 and Sec. 4.16

Non-Obvious

THE DIFFERENCES BETWEEN THE

CLAIMED INVENTION and the PRIOR ART

are such that the subject matter as a

whole WOULD NOT HAVE BEEN OBVIOUS

at the time the invention was made to a

PERSON SKILLED IN THE ART, to which

the subject matter pertains.

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Inventive StepSection 2(1)(ja):

"inventive step" means a feature of

an invention that involves

technical advance as compared to

the existing knowledge or having

economic significance or both

and that makes the invention not

obvious to a person skilled in

the art.18

Utility / Industrial Application

• Be Useful

• Must work / be workable

• At least one recognized,

verifiable and practical end-use

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Patentability Filter Prior use/ prior publication/ prior disclosure

Industrial applicability

Novelty

Non-obviousness: inventiveness

Sec. 3 - Not patentable

Written description / enablement

requirements

Application/ specification/ claims

Patent prosecution

Maintenance / Defense after grant 20

What is not Patentable

(a) Frivolous, Contrary To Natural Laws

(b) Contrary To Public Order Or Morality, Prejudice To Human, Animal Or Plant Life Or Health Or To The Environment;

(c) Mere Discovery Of Scientific Principle, Abstract Theory, Living Thing Or

Non- living Substances

(d) Mere Discovery Of New Form, New Property, New Use Of A Known Process, Machine Or Apparatus (EFFICACY)

Patents Act, 1970

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What is not Patentable

(e) Mere Admixture (SYNERGY)

(f) Mere Arrangement, Re-arrangement, Duplication of known devices.

(g) Omitted (Testing Methods)

(h) Method Of Agriculture Or Horticulture;

(i) Method Of Treatment.

(j) Plants, Animals, Including Seeds Varieties, Species, Biological Processes.

Exception: Microorganisms

Patents Act, 1970

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What is not Patentable

(k) Mathematical Or Business Method Or A Computer Program Per Se Or

Algorithms;

(l) Literary, Dramatic, Musical Or Artistic Work, Other Aesthetic Work

(m) Mere Scheme, Rule, Method Of Performing Mental Act, Playing Game;

(n) A Presentation Of Information;

(o) Topography Of Integrated Circuits;

(p) Traditional Knowledge

Patents Act, 1970

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Trademarks

Word Mark

Device Marks(Signs, Symbols, Logos)

Collective Marks

Certification Marks

Service Marks

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Must be graphically represented Must be distinctive / distinguishable Must not be descriptive Must not be deceptively similar to

known /well-known marks /Generics• ORS: ORS-L, ORZ• Cefixime – ZIFI, CEFI, Cefixin

Avoid –Geographical Indications / Deities National Leaders / Heroes / Symbols / Laudatory words

Trademarks

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Notification

dated 14th February, 2012

issued by CGPDTM

regarding Publication of list

of International Non

Proprietary Names declared

by the WHO26

Copyrights & Related Rights

Copyright is a legal

term describing

rights given to

creators for their

literary and artistic

works.

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Copyright - ExtensionIT Revolution !

RecordingsBroadcastingsAudio visual worksComputer programsDigital databasesInternet/webCable and Satellite T.V.

Indian Copyright Amendment Bill

Passed by Rajya Sabha on 17th May, 2012

Passed by Lok Sabha on 22nd May, 2012

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IPR And Copyright

Avoid verbatim reproduction (Plagiarism) -

Likely to cause Copyright violations.

Always acknowledge / obtain prior permission.

Abstract / Summary may be written in one’s

own language / quote the source.

“Copyright” / “All rights reserved”

“Do not use, reprint, reproduce or distribute without prior permission”

Quoting Medical References from Journals and Books

Copyright violations could lead to criminal/civil suits

Could lead to imprisonment too !29

Therapeutic Goods Legislation

Amendment (Copyright), 2011

Australia

To block frivolous

Copyright

infringement suits in

Pharma / Medicine

product inserts.30

Be Aware / Beware of the Web / Domain in the new global regime.

× Use of internet for selling /

marketing

× Downloading from Internet (except

for personal use)MUST ALWAYS HONOUR IPRs

(Copyrights, Patents, Trademarks etc.)

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G.I.(Geographical Indications)

Name or sign used on

goods originating from

specific geographical

origin or location and

possess qualities,

reputation or

characteristics that are

essentially attributable to

that place of origin.32

Geographical Indication

India, as a member of the World Trade Organization

(WTO), enacted the Geographical Indications of Goods

(Registration & Protection) Act, 1999 has come into

force with effect from 15th September 2003.

Geographical Indications of Goods

(Registration & Protection) Act, 1999

Geographical Indications of Goods

(Registration & Protection) Rules, 2002

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Industrial Designs Ornamental or Aesthetic aspect of

an article.

3-D or 2-D features such as shape or surface, patterns, lines or color.

Industrial designs are applied to products of industry and handicraft, technical and medical instruments, watches, jewelry, house wares, electrical appliances, luxury items, vehicles, architectural structures, textile designs.

Does not protect any technical features of the article to which it is applied to.

Khale Sangeeta

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Designs

Indian Designs Act, 2000 & Rule, 2001

(amended upto 2008). To promote and protect the design element

of industrial production. Aimed to enact a detailed classification of

design to conform to the international

system and To take care of the proliferation of design

related activities in various fields.

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