General Introduction

Intellectual property (Concept)Intellectual property (IP) is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law.[1] Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and designs. Common types of intellectual property include copyrights, trademarks, patents, industrial design rights and trade secrets in some jurisdictions.Although many of the legal principles governing intellectual property have evolved over centuries, it was not until the 19th century that the term intellectual property began to be used, and not until the late 20th century that it became commonplace in the United States.[2] The British Statute of Anne 1710 and the Statute of Monopolies 1623 are now seen as the origin of copyright and patent law respectively.[3]

HistoryModern usage of the term intellectual property goes back at least as far as 1867 with the founding of the North German Confederation whose constitution granted legislative power over the protection of intellectual property (Schutz des geistigen Eigentums) to the confederation.[4] When the administrative secretariats established by the Paris Convention (1883) and theBerne Convention (1886) merged in 1893, they located in Berne, and also adopted the term intellectual property in their new combined title, the United International Bureaux for the Protection of Intellectual Property. The organisation subsequently relocated to Geneva in 1960, and was succeeded in 1967 with the establishment of the World Intellectual Property Organization (WIPO) by treaty as an agency of the United Nations. According to Lemley, it was only at this point that the term really began to be used in the United States (which had not been a party to the Berne Convention),[2] and it did not enter popular usage until passage of the Bayh-Dole Act in 1980.[5]

"The history of patents does not begin with inventions, but rather with royal grants by Queen Elizabeth I (1558-1603) for monopoly privileges... Approximately 200 years after the end of Elizabeth's reign, however, a patent represents a legal [right] obtained by an inventor providing for exclusive control over the production and sale of his mechanical or scientific invention... [demonstrating] the evolution of patents from royal prerogative to common-law doctrine."[6]

In an 1818 collection of his writings, the French liberal theorist, Benjamin Constant, argued against the recently introduced idea of "property which has been called intellectual."[7] The term intellectual property can be found used in an October 1845 Massachusetts Circuit Court ruling in the patent case Davoll et al. v. Brown., in which Justice Charles L. Woodbury wrote that "only in this way can we protect intellectual property, the labors of the mind, productions and interests are as much a man's own...as the wheat he cultivates, or the flocks he rears." (1 Woodb. & M. 53, 3 West.L.J. 151, 7 F.Cas. 197, No. 3662, 2 Robb.Pat.Cas. 303, Merw.Pat.Inv. 414). The statement that "discoveries are...property" goes back earlier. Section 1 of the French law of 1791 stated, "All new discoveries are the property of the author; to assure the inventor the property and temporary enjoyment of his discovery, there shall be delivered to him a patent for five, ten or fifteen years."[8] In Europe, French author A. Nion mentioned propriété intellectuelle in his Droits civils des auteurs, artistes et inventeurs, published in 1846.The concept's origins can potentially be traced back further. Jewish law includes several considerations whose effects are similar to those of modern intellectual property laws, though the notion of intellectual creations as property does not seem to exist – notably the principle of Hasagat Ge'vul (unfair encroachment) was used to justify limited-term publisher (but not author) copyright in the 16th century.

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[9] The Talmud contains the prohibitions against certain mental crimes (further elaborated in the Shulchan Aruch), notably Geneivat da'at ( דעת גניבת , literally "mind theft"), which some have interpreted[10] as prohibiting theft of ideas, though the doctrine is principally concerned with fraud and deception, not property.

ObjectivesFinancial incentiveThese exclusive rights allow owners of intellectual property to benefit from the property they have created, providing a financial incentive for the creation of and investment in intellectual property, and, in case of patents, pay associated research and development costs.[11] Some commentators, such as David Levine and Michele Boldrin, dispute this justification.[12]

Economic growthThe existence of IP laws is credited with significant contributions toward economic growth.[citation

needed] Economists estimate that two-thirds of the value of large businesses in the U.S. can be traced to intangible assets.[citation needed] "IP-intensive industries" are estimated to generate 72 percent more value added (price minus material cost) per employee than "non-IP-intensive industries".[13][dubious – discuss]

A joint research project of the WIPO and the United Nations University measuring the impact of IP systems on six Asian countries found "a positive correlation between the strengthening of the IP system and subsequent economic growth." [14] Other models, such as the Nash equilibrium, would not expect that this correlation necessarily means causation: The Nash equilibrium model predicts that patent holders will prefer to operate in countries with stronger IP laws.[neutrality is disputed] In some of the cases, as was shown for Taiwan[15]after the 1986 reform, the economic growth that comes with a stronger IP system might be due to an increase in stock capital from direct foreign investment.

CriticismThe term itselfFree Software Foundation founder Richard Stallman argues that, although the term intellectual property is in wide use, it should be rejected altogether, because it "systematically distorts and confuses these issues, and its use was and is promoted by those who gain from this confusion." He claims that the term "operates as a catch-all to lump together disparate laws [which] originated separately, evolved differently, cover different activities, have different rules, and raise different public policy issues" and that it creates a "bias" by confusing these monopolies with ownership of limited physical things, likening them to "property rights".[16] Stallman advocates referring to copyrights, patents and trademarks in the singular and warns against abstracting disparate laws into a collective term.Lawrence Lessig, along with many other copyleft and free software activists, have criticized the implied analogy with physical property (like land or an automobile). They argue such an analogy fails because physical property is generally rivalrous while intellectual works are non-rivalrous (that is, if one makes a copy of a work, the enjoyment of the copy does not prevent enjoyment of the original).[17]

LimitationSome critics of intellectual property, such as those in the free culture movement, point at intellectual monopolies as harming health, preventing progress, and benefiting concentrated interests to the detriment of the masses,[18][19] and argue that the public interest is harmed by ever expansive monopolies in the form of copyright extensions, software patents andbusiness method patents.There is also criticism[by whom?] because strict intellectual property rights can inhibit the flow of innovations to poor nations. Developing countries have benefitted from the spread of developed country technologies, such as the internet, mobile phone, vaccines, and high-yielding grains. Many intellectual property rights, such as patent laws, arguably go too far in protecting those who produce innovations at

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the expense of those who use them.[citation needed] The Commitment to Development Index measures donor government policies and ranks them on the "friendliness" of their intellectual property rights to the developing world.Some libertarian critics of intellectual property have argued that allowing property rights in ideas and information creates artificial scarcity and infringes on the right to own tangible property. Stephan Kinsella uses the following scenario to argue this point:[I]magine the time when men lived in caves. One bright guy—let's call him Galt-Magnon—decides to build a log cabin on an open field, near his crops. To be sure, this is a good idea, and others notice it. They naturally imitate Galt-Magnon, and they start building their own cabins. But the first man to invent a house, according to IP advocates, would have a right to prevent others from building houses on their own land, with their own logs, or to charge them a fee if they do build houses. It is plain that the innovator in these examples becomes a partial owner of the tangible property (e.g., land and logs) of others, due not to first occupation and use of that property (for it is already owned), but due to his coming up with an idea. Clearly, this rule flies in the face of the first-user homesteading rule, arbitrarily and groundlessly overriding the very homesteading rule that is at the foundation of all property rights.[20]

Other criticism of intellectual property law concerns the tendency of the protections of intellectual property to expand, both in duration and in scope. The trend has been toward longer copyright protection[21] (raising fears that it may some day be eternal).[22][17][23][24] In addition, the developers and controllers of items of intellectual property have sought to bring more items under the protection. Patents have been granted for living organisms,[25] and colors have been trademarked.[26] Because they are systems of government-granted monopoliescopyrights, patents, and trademarks are called intellectual monopoly privileges, (IMP) a topic on which several academics, including Birgitte Andersen[27] and Thomas Alured Faunce[28]have written.In 2005 the RSA launched the Adelphi Charter, aimed at creating an international policy statement to frame how governments should make balanced intellectual property law.

Intellecual Property- An Industry Perspective; Applications; Advantages

Intellectual property rights is a legal concept that confers rights to owners and creators of the work, for their intellectual creativity. Such rights can be granted for areas related to literature, music, invention etc, which are used in the business practices. In general, the intellectual property law offers exclusionary rights to the creator or inventor against any misappropriation or use of work without his/her prior knowledge. Intellectual property law establishes an equilibrium by granting rights for limited duration of time.

Every nation has framed their own intellectual property laws. But on international level it is governed by the World Intellectual Property Organization (WIPO). The Paris Convention for the Protection of Industrial Property in 1883 and the 'Berne Convention for the Protection of Literary and Artistic Works' in 1886 were first conventions which have recognized the importance of safeguarding intellectual property. Both the treaties are under the direct administration of the WIPO. The WIPO convention lays down following list of the activities or work which are covered by the intellectual property rights -

Industrial designs Scientific discoveries Protection against unfair competition Literary, artistic and scientific works Inventions in all fields of human endeavor Performances of performing artists, phonograms and broadcasts

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Trademarks, service marks and commercial names and designations All other rights resulting from intellectual activity in the industrial, scientific, literary or artistic

fields.

Types of Intellectual Property RightsIntellectual Property Rights signifies to the bundle of exclusionary rights which can be further categorized into the following heads-

CopyrightCopyright, one of the form of intellectual property law, offers exclusive rights for protecting the authorship of original & creative work like dramatic, musical and literary in nature. Symbolized as "©", here the term 'exclusive rights' mean that the holder has the right to determine who will be credited with the work, who will perform the work and who will be benefited financially from it. However, copyright does not extend any protection to the facts, methods of operation, system, ideas except to the ways in which they can be expressed.

Being a copyrighted item does not mean that other person can't use or write on subject matter of particular item. For e.g, if a person has written on a new motor cycle and he has copyrighted his article then it means that other person can't use that article but he is free to write his thoughts on the similar motor cycle. Copyright holder does not hold the rights by themselves. Instead of it they relinquish it to publishers or big companies by entering into the contractual agreement. Generally copyright is enforceable as a civil cases but in some jurisdiction, there are criminal infringement statutes. Criminal Sanctions are made for targeting the counterfeiting work. There are innumerable factors which determine the length of the duration term. Like the nature of work, the status of work i.e, whether it is published or unpublished and finally whether the work has been created by single person or group. Generally in various part of the world, the copyright has been granted for whole life of the author plus for 50 or 70 years.

Indian Copyright Act, 1957The Indian copyright act facilitates the owner for reproducing or reusing their copyrighted items, to prepare its derivate, to public their work and to distribute copies of their creative items. Copyright aims to protect the work of creator, transformed in a tangible form of expression. It includes art work, plays, movies, shows, various types of music, sound and songs, books, manuscripts, written work and all types of images, photos, pictures, drawings, graphics.

Copyright RegistrationCopyright comes into effect as soon as the work is done and no formalities are required to be follow. However, certificate of copyright registration and entries made there upon serves as the prima facie evidence, at the time of any dispute, in the court. But there is a procedure exist for registering the both published/unpublished work in the Register of Copyrights, maintained in the Copyright Office of the Department of Education. If the work has been registered as the unpublished in the Register of Copyright but subsequently it is published then the requisite changes can be make by the applicant in the Register of Copyright with addition to prescribed fees.

Procedure of CopyrightIt is required to be in written form duly signed and authenticated by assignor or by his authorized agent. It should legibly specified the amount of work and rights which are assigned to the other person. To

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avoid emergence of conflict in near future, time with duration and territorial area should be explicitly mentioned. It should clearly specify the royalty which is required to be paid to author or his legal representative. The mentioned assignment should be clearly subject to termination, extension on terms & conditions duly agreed and signed by both parties. There are some acts which have been put under the head of 'copyright infringements' -

Preparing infringing copies for the purpose of selling or hiring or let them to be hire by third party.

Authorizing for the performance of work in such public places where such performance gives result to the copyright infringement.

Making distribution of the infringe copies for trading with a motto of affecting prejudicially the copyright owner interests.

Public exhibiting the infringing copies for the purpose of trade. Importing the infringing copies into the India.

Advantages of CopyrightCopyright helps in protecting the original published/unpublished work, that can be fall under the different heads of literature, musical, dramatic, artistic and intellectual. If we say the economic and social development of the nation relies upon the creativity skills of its people, then there would be no exaggeration. Copyright helps in making a protective shield, which is conducive for the growth rate of writers, artists, producers, musicians, cinematographic artists and induce them towards indulging into more creative work. By copyrighted their creation, copyright holder can enjoys following rights -

One can use, re use, reproduce the copies and can sell the copies. One can import or export whole or part of work. One is free to create any derivative work. One can publicly demonstrate its work. One can sell or pass its rights to other person. One can indulge in transmitting or displaying work by radio or video.

Copyright Protection for Foreign WorkIn case of the foreign work, only those work of nations are protected in India which are the member of the Berne Convention for the Protection of Literary and Artistic Works, Universal Copyright convention and the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement through the International Copyright Order. Similarly to grant protection to the Indian work in throughout the world, India has also entered into the below international conventions on copyright and neighboring (related) rights -

Berne Convention for the Protection of Literary and Artistic works. Universal Copyright Convention. Multilateral Convention with the motto of protecting the producers of phonograms against the

phonograms duplication done unauthorizedly. Trade Related Aspects of Intellectual Property Rights Agreement (TRIPS).

Copyright Law Administrating BodyThe Indian Government has established Copyright Enforcement Advisory Council (CEAC) as an apex body for dealing in copyright related issues. No special courts have been set up for hearing cases pertaining to

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copyright related matters. The act facilitates the person to either contact directly to the board or take the help of normal courts regarding copyright issues. The board is not only taking care of infringe cases but also govern all the issues related to copyright in India. The Copyright Board is quasi judiciary in nature and it comprises of 2 or more but less than 14 members. The chairman of the board enjoys the same level that of High Court Judge.

Registered Copyright Societies in India

Society for Copyright Regulation of Indian Producers for Film and Television The Indian Performing Right Society Limited Phonographic Performance Limited

PatentA patent is termed as the exclusionary rights given by the government or the authorized authority to its inventor for a particular duration of time, in respect of his invention. It is the part of the intellectual property right, which connotes with all those rights which are granted to any person for protecting its invention, process, discovery, composition or new useful development etc. from its further usage without any authentication. If more than two persons have jointly applied for patent license, both will own the patent separately. The original word 'patent' has come up from the latin term 'patere', which means 'to lay open' or 'available for public usage'. Sometimes it is also related to the term 'letters patent', which marks to the royal decree granting exclusive rights to patentee. Unlike copyright, patent is not granted on giving mere suggestion or idea. An idea of mere manufacturing machine does not comes under the purview of obtaining patent.

The roots of patents can be tracked back into the ancient Greek cities, where one person found out the new recipe and was given 1 year exclusive right of making food. The modern sense of patents were originated in 1474, when the Republic of Venice issued a decree and made it mandatory to communicate all new discovered products to the Republic, after they have been put into practice. The decree was enacted to prevent the usage of same products by the other persons. With the statues of monopolies, under the kingship of James I in 1623, a declaration was made which made it obligatory to patent the 'projects of new invention'. Afterwards, in the regime of Queen Anne (1702-1714), the writing description of new invention has been enacted by the lawyers of English court. These developments laid down the foundation of United States modern patent laws. In Italy, first patent was issued by the Republic of Florence in 1421.

Oftentimes patents are wrongfully understood as a right to use the invention. Reversely, it is the right which excludes other persons from using, making or importing the particular product or invention but for a fixed duration of tenure. The patent provides the protection period of usually 20 years from the date of filling the application, which can vary in throughout the world. Like of a property right, patent rights can also be sold, mortgaged, licensed, transferred to a third party. One can completely write off/abandon patent rights granted to him. The ability to transfer the patent rights to a third party, increases its liquidity. After obtaining patent license, more often inventors sell it off to third parties. Then third parties use it as they themselves have originally made the patented inventions. However, patent doesn't give any exploitation rights to patent holder. Many new inventions are the outcome of improvement done on prior one. For e.g, an inventor uses the patented keyboard designs and adds new features onto it and obtains patent on its improvised version. In future, he can build his new keyboard design only after getting approval from the patent holder of the original keyboard design, if the prior

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patent is still in force. On the other side, owner of the improved keyboard design can patent his invention and excludes its original patent holder from usage of its invention.

Generally both natural person or an whole entity can apply for a patent. However, it is somehow necessitated in almost all nations, to give the name of inventor(s) in the public record and what is the procedure they have followed in acquiring the exclusive rights for inventions. To successfully enacting the patent laws within its national territorial, every country has their own patent offices. For requesting the patent license, a written application is needed to be file in the patent office within jurisdiction for granting the patent license for the particular geographical area over which its is required. The application contains a description of making and usefulness of the intended patent product. The written description filed by the applicant is known as the patent specification. It contains the specifications of figures, biological composition or computer code, as a reference to the subject matter of patent application. The specification provided is sometimes accustomed with the illustrative drawings of invention. In some nations, like the USA, applicant is required to detail the best and effective method of making and practicing the invention. In the end of the application, the patent application is required to mention about the claims.

The procedure of granting patents and the rules abide on the patentee are different in every country as per their national laws and international treaties. Therefore, patents are sometimes characterized as the territorial in nature. In many nations, certain areas such as business methods and mental work do not come under the purview of patent. Like the United States of America, covers the research work under patent head and it may be termed as infringement with the discovery of any new invention, which is headed towards by using the already patented invention. But Australian patent law rules out infringement exceptions for those who conduct research on the invention. Many nations have implemented their patent law which except its inventor exclude other people from usage, selling, manufacturing or importing the patented invention.

Generally patent is enforceable in civil lawsuits. Like in USA, hearing for patent infringement case is undertaken in the United States federal court. Usually patent holder gets monetary compensation from any past patent infringement and seeks for injunction, which in turns prohibit the other party to involve in any infringement case in nearby future. In case of infringement, patent holder needs to establish that the infringer has actually undergone in practicing patented invention. One of the drawback from patent holder part in complete asserting of patent in civil cases, is the ability of accused infringer to challenge the validity of patent and its holder. There are innumerable examples in which patents have been declared invalid during the civil court litigation. The set of rules for patent legislation on the basis of which respective patent can be declared invalid, vary from one nation to another.

For facilitating the efficient use of patent on the global map, the Patent Law Treaty or PLT has been signed in this direction by 53 nations and 1 intergovernmental organization-the European Patent Organization. The treaty was signed on 1st June 2000 in Geneva, Switzerland. Its purpose is to easier the official procedures required to be followed while obtaining the filling date for patent application, the form and content of application. But due to its restrictions to some of the formalities, it has confined only to a particular class group. Therefore, the term 'Substantial Patent Law Treaty'(SPLT) has come into effect which is used interchangeably with the PLT. Whereas the PLT is confined only to some formalities, the SPLT goes further in harmonizing substantive requirements of novelty, inventive step, utility, sufficient disclosure etc.

Classification of Patent Application

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On the basis of filling the application in the office, patent application can be classified under following heads -

National Patent Application :These are filed in the national patent office to obtain patent license from that country. One can directly file the application, or it may be from regional office or it can be an international application under the Patent Corporation Treaty, after entering into the national boundary.

Regional Patent Application :Such applications have their effect in number of countries. The European Patent Office (EPO) grants patent which can be effective in few or all nations coming under the head ' European Patent Convention' (EPC). As one patent application allows access into the number of nations, it results into the curtailing of cost, which would otherwise be incurred in obtaining license separately in different nations.

International Patent Application :The Patent Corporation Treaty (PCT) is operated by the World Intellectual Property Organization (WIPO). The PCT allows applicant to file single patent application in only 1 language. Known as an international application, this enables in granting patent license in any of the nation comes under the PCT. The WIPO completes all the patent application formalities in a centralized manner. After filing of patent application, examination is done by an International Searching Authority (ISA), which in turns will generate International Search Report (ISR) along with a written opinion about patentability of invention. The ISA handed over ISR to the applicant after the 9 months of first filing of application and 16 months after priority date in case of subsequent filing. If the ISR is not in English, it is translated into English for publication purpose. The international application is required to be published after 18 months of filing date or priority date by the International Bureau (IB) of WIPO, situated in Geneva, Switzerland. Proceeding the patent application via PCT treaty allows patent license in large number of countries.

Advantages of Patent

Patents assist in powering the research and development. Many corporations have huge budget set aside for extensive research and developments. Without the covering shell of patent, extensive spending of R&D would be less or go insignificant, which will limit the chances of technological growth. Such companies would hesitate in spending bulk amount on research activities, as any other third person can easily exploit their new developments.

With an accordance to the meaning of 'patent', it allows and encourages the holder to publicly disclose the innovations in public domain for societal needs. If patent holder will not get any legal protection, then they would tend to keep their invention as a secret, as any disclosure would amount to the loss of license holder rights.

Such companies which involve high fixed cost and low marginal cost, like computer processors software, pharmaceuticals, face high commercialization cost of testing , setting up of factory etc. Unless such companies do not have any protective shield for competing with marginal cost, they will hesitate in moving ahead. Patent allows them to purely concentrate on manufacturing process.

It allows inventor to maintain monopoly on the invention for a specified period of time. Generally a patent application must possessed of one or two claims, which are new, innovative and commercially viable.

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TrademarkThe trademark or trade mark, symbolized as the ™ and ®, is the distinctive sign or indication which is used for signifying some kind of goods or/and services and is distinctively used across the business organization or by an individual for identifying and uniquely classifying the source or their products and/or services among consumers and making a distinction of its products or services from the other entities. One of the part of the intellectual property law, trademark signifies to the name, word, phrase, logo, image, design, symbol or combination of any or all of these elements. The trademark grants rights to the owner which in turns may take or can commence legal proceedings in case of infringement of trademark. However registration is not compulsory in trademark. The owner of common law trademark can also file the suit but in case of the unregistered mark, the protection granted will only be confined only to that geographical area within which it has been used or in that area into which it is expected to be expand.

Informally the term 'trademark' is used for distinguishing those characteristics or attributes which helps in identifying any individual. When the word 'trademark' is used in context of services rather than products, it may called service mark. When the trademark is used for describing the product or service, instead of making a distinction from the third parties then it is popularly called generalized trademark. As any sign which is attributed of doing the essential required functions of the trademark may be headed under the term 'trademark'. It may include various non-conventional signs like shapes(three dimensional trademarks), smells, sounds, moving images, taste, color and even texture. The extent to which these non conventional trade marks are recognized or even protected varies from one jurisdiction to another.

Advantages of TrademarksThe trademark owner is conferred upon the 'exclusionary rights' which says that the owner enjoys the right of using the registered trademark and can indicate it by using the symbols- ™ and ® in relation of those goods and services for which the owner has registered the trademark. At the time of any infringement, the owner can take upon the case in the court. Trademark provides the guarantee for the unchanged quality and helps in creating and advertising the products and services in public.

International Trademark LawsDue to the increasing globalization of trading activities, it becomes necessary to integrate the trademark law and policy, nucleus of which must be constancy in its various activities. The following trademark laws have candidly enable the industrial market across the world to save their time and resources by allowing the centralized filing system and completion of various procedures related to it.

Agreement on Trade-Related Aspects of Intellectual Property Rights : Administered by the World Trade Organization (WTO), the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is the international agreement which laid down the minimum standards for different parts of the intellectual property (IP) regulation. In the year 1994, the said agreement was negotiated at the end of the Uruguay round of the general agreement on tariffs and trade (GATT). The TRIPS encompasses of the various requirements which laws in different countries are required to abide for along with the specification of the procedures, remedies and disputes. In the Article 15(1) of TRIPS, 'sign', which has been used in part or form of the 'trademark' in the trademark legislation of various jurisdiction in throughout the world.

The Madrid system for the international registration of marks : The madrid system is seen as the pivotal international system for enabling the trademark

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registration in more than one jurisdiction. It offers the centrally administered system for achieving the trademark registrations in the jurisdiction of member nations by extending and facilitating the protection of the international registration obtained through the World Intellectual Property Organization. The international registration is said to be based on the application or registration which is acquired by the trademark applicant within its home jurisdiction. The foremost benefit derived from the madrid system is that it facilitates the trademark owner in obtaining trademark protection in multiple jurisdictions by filing the application only in 1 jurisdiction on the payment of one set of fees. This system allows the applicant to make amendments and complete registration process across all the jurisdictions by applying through the single administrative process. Moreover, it is easy to extend the international registration coverage to the other member jurisdictions at any given point of time.

Trademark Law Treaty : The trademark law treaty aims to establish the system through which jurisdictions of member nations agree for standardizing the various procedural requirements of the registration process in connection to the trademark.

The Communal Trademark System : It is the super national trademark system which is prevalent in the European union.

Trademark Laws in IndiaThe Indian trademark law defines the trademark as the signature, device, word, invented word, letter, numeral, brand, name written in the particular style, the shape of goods other than those for which the mark is intended to be used, or any combination thereof or the combination of colors etc. Except in certain cases, the trademark may also signified by the name of living or dead person. The trademark helps in making an identification of the goods and services along with its origin. It helps the trademark holder to advertise its products or/and services and also creates a good image in the mind of its final consumer but the trademark chosen should be capable of making a distinction between the goods or services of different people. Furthermore, it should not be deceptively identical to the existing mark of the other person and should not be such that which is restricted in the act.

In India, any person who claims to be the trademark proprietor can apply for the trademark registration of the goods and services. For registration, the application can be filed in the Trademark Office, in whose jurisdiction the principal place of your business falls. If the principal office is not situated in India then the applicant can file the application in the trademark office in whose jurisdiction the lawyer appointed by the applicant is situated. In case it is the company which is yet to be formed then anyone can apply for the registration on the behalf of the company. It is prudent to make a proper search in the trademark office for ensuring that your registration may not be canceled due to the similarity of the proposed mark to the already existing one. In India, the registration term of the trademark is 10 years which can be renewed further for next 10 years by paying the renewal fees.

In India, only the trademark proprietor whose trademark has been registered can put the symbol ® into use. If any use the symbol without the registration of mark he/she will be held under illegal use of the trademark. If anyone is engage in selling or providing services by using the false trademark he/she will be entitle to the penalty of minimum 6 months which may extend to maximum of 3 years and with the fine of not less than Rs.50,000 and which can extend to Rs.2,00,000.

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Trade SecretsTrade secret points towards a formula, pattern, any instrument, design which is kept confidential and through which any business or trade can edge over its rival and can enjoy economic gain. Trade secrets can be anything from a chemical compound, manufacturing process, design or preserving materials or even a list of consumers or clients. It is also known as "confidential information" or "classified information". To be safeguarded under trade secrets, the matter should be 'secret'. Though the definition of trade secret is variable as per the jurisdiction but there are following elements that are found to be same -

is not known by the public. provides some financial sort of gain to its holder. involves reasonable efforts from the holder side for maintaining secrecy. importance of data or information to him or for his rivals. the ease by which information could be learned or duplicated by others.

Any enterprise or an organization can safeguard its confidential data or information by entering into non disclosure agreement with its employees. Such law of protecting confidential matters offers monopoly in respect of any secret data and information. Trade secrets offer protection for an indefinite time period. Unlike patent it does not expire.

Every company invests its time and resources into discovering information regarding refinement of its various activities and operations. If other company will be allowed to use the same knowledge then the chance of first company survival and dominance into the industrial arena would be vitiated. When trade secrets are recognized then the inventor of such knowledge is entitled to consider that as part of the intellectual property.

Unlike of patent, copyright, there is no particular international treaty(s) for trade secrets. Moreover there is no global law for standardizing definition of trade secrets. Trade secrets are gaining recognition year by year in throughout the world. It has been said that the major technologies in the world are protected under the head of trade secret instead of patent. The 'North American Free Trade Agreement' (NAFTA) and the agreement on 'Trade Related Aspects of Intellectual Property' (TRIPs) ratified during the Uruguay round of the 'General Agreement on Tariffs and Trade' (GATT) have there specific provisions which point towards increase in the protection granted to trade secrets. Furthermore there has been a rising trend particularly in Asian nations of using the domestic statues which direct towards trade secrets protection.

Trade Secrets ProtectionTrade secrets are kept secret and thus not disclosed to the public at large. The owner or creator takes concurrent steps and prevent his knowledge from slipping out his hands to its rival side. In exchange of getting the chance to be appointed by the holder of trade secrets, a worker will ready to sign a contract not to disclose any material information and data of his employer. Any negligence or violation of the same will means an imposition of financial penalties. Other business associates or companies with whom the inventor is engaged are often signed a same contract and any negligence will lead to fine or penalties.

If any company by unlawful means try to find out trade secrets of other company then he will be held legally responsible under that country's act in which it has been happened. If trade secret has been

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obtained via industrial espionage, then it will be called illegal and the person or company involved in it shall be found guilty for legal liability.

Trade Secrets InfringementMisappropriate use of trade secrets can be called an unfair practice. The Uniform Trade Secrets Act of the USA defines misappropriation as -

Acquiring trade secrets related of other by a person who has strong belief or reason that it was acquired by wrongfully doings.

Disclosing or using trade secrets of other person without any implied consent of its owner.

As per the Uniform Trade Secrets Act 'improper means' include "theft, bribery, misrepresentation, breach or inducement of a breach of duty to maintain secrecy, or espionage through electronic or other means."

Tips for safeguarding Trade Secrets

Put a sign or any mark on various computer files and documents related to trade secrets which you are intended to keep confidential.

Allow the accessibility of trade secrets only to those people who have authentic reason to know the information. The reason should be material and benefits you in business.

Make it obligatory for everyone using trade secret to sign a non disclosure agreement. It should describe every minute detail about trade secret applicability like how the person will use trade secret, what will happen if he will pass over this agreement etc.

All employees should consider trade secrets as confidential data or information even if he is unaware about the trade secret.

Always keep your trade secret in a private and restricted zone.

Utility Model The utility model is the intellectual property right for protecting the inventions. It is somehow

described as the statutory monopoly which is bestow upon for the fixed duration of time in exchange to the inventor for the offering of the sufficient teaching of the invention and permitting the other person, possessing the ordinary skills of the relevant art, of performing the invention. The rights granted under the utility model are somewhat identical to those conferred upon by the patent but are more considerable for using the term 'incremental inventions'. Sometimes words like 'petty patent', 'innovation patent', 'minor patent' and 'small patent' are used in reference of the utility model. Such models are considered to be more suitable particularly for the small scale enterprises, which in turns make the 'minor' improvements with the adaption of the existing products. Utility models are more commonly used for the mechanical innovations.

The utility model rights are recognized as the registered rights which provide the owner 'exclusivity' protection in terms of the invention. In general context the invention must be new and should encompasses the inventive step and able for lending itself to the industrial usage, which would be protected through the utility model. It is possible to grant utility model without

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following the lengthy process of examination. Unlike patents, utility model rights are granted for shorter time span, say 6 or 10 years, without the renewal or extension possibility and it follows less stringent requirements. These models are comparatively cheaper in obtaining and maintaining. The utility model of German and Austrian is known as the "Gebrauchsmuster", which in turns have influenced the model of other nations like Japan. The utility model working in Indonesia and Finland is termed as 'Petty Patent'. Such models are deemed to be more suitable for small and medium size enterprises which make few improvements. These are primarily found to be used for mechanical innovations also.

The origin of utility model goes back to the period of 1891 in Germany where it was enacted with a motto of filling the gap. During that time the patent office of Germany provided patents only to those inventions which were new and showed some degree of creativeness. But it was found that there were good number of the technical solutions which consisted of the industrial creation having some technical or constructive complexity. Such small inventions were not patented but the German legislature was of the view that they deserved to be protected due to the possession of their high economic value. Therefore it was decided of creating the set of exclusive rights, other than the patents and which was appropriate for safeguarding such minor inventions. It comes in the form of the utility model rights. Soon after many other nations also joined up the club in providing utility model in their respective territories. Like Poland, Japan, Spain, Italy, Portugal. Afterwards the list has also been extended with the adoption of the utility model by Greece, Finland, Denmark and Austria. Utility model safeguards the technical inventions which comply with the requirements of novelty and industrial usages with some sort of 'inventive' touch.

Usually the procedure of obtaining the utility model right requires fulfillment of simple registration procedure. There are some sort of formal requirements which are only required to fulfill for enjoying the utility model rights. The application is required to be divided as per the number of devices to be registered. Drawings which are required to be bring under the utility model protection should be attached with the applications along with the prescribed fees. There is no particular system for checking the application for utility model registration. Instead of examining whether the filed application is novel or not, examiners check that the application meets the desired requirements and is not against the societal orders, application is clear with no misleading facts. If the application fails to comply with basic requirements then a notice will be sent to applicant and ask him to amend it. If the applicant fails to do so then the proposed application will no longer exist. Those applications which have been scrutinized and pass through the formality checking levels are required to be registered. The registration rights will be instituted without passing through any hard core examination. The applicant will pay registration fees. After registering of utility rights same will be published in the official gazette to let the public know about any such utility model rights. Once all these requirements have been fulfilled, the person will be granted such rights. Generally the applicant can obtain utility model after the 6 months of the application filing. Different rules are followed in various nations across the world. In Spain, there comes an opposition stage after the formal examination of the

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application. The third party having the legitimate interests can oppose the utility model registration and can proof that the invention is missing one of the protection requirement prescribed by the law. Similarly in German, Austria, Finland and Denmark the applicant can ask the patent office for writing the 'report on the state of the art', which would help in determining that whether the invention is novel or not and whether it consists of the inventive skills or not. But such report does not have any legal enforcement and therefore office should provide utility model registration despite of what the report says.

Geographical Indication

Geographical Indication (GI) signifies to the name or sign, used in reference to the products which are corresponding to the particular geographical area or somewhat related to the origin like town, region or nation. Thus GI grants the rights to its holder which acts as the certification mark and shows that the specified product consists of the some qualities and is enjoying good reputation due to its origin from the specified geographical location. The Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement has defined the 'geographical indications rights' as the exclusionary rights for the indicator which identify the goods originated within the member nations territories, or area or region of that territory, where the reputation or other attributes of the goods is essentially related to the geographic origin of the place. Geographical indications are the part of the intellectual property law therefore like any other law the regulation and govern conditions of GI also varies from one country to another as high differences have been found out in the use of generic terms across the world. Such case is prominent for food and beverage which more commonly use the geographic terms. Geographical Indications are aimed towards identifying the source of the product and is considered as the valuable business tool.

The global trade has made it crucial of harmonizing the various approaches and methods which the governments use for registering the GIs in their respective territories. The first initiative was taken in the year 1883 as the Paris Convention on trademarks which was followed by the more elaborative provisions of the Lisbon Agreement in the year 1958 for the Protection of Appellations of Origin and their Registration. In the year 1994 during the conclusion of the negotiations on the WTO Agreement on Trade Related Aspects of Intellectual Property Rights all WTO members were decided to lay down certain standards for the GIs protection in their respective countries. The Article 22 of the TRIPS Agreement emphasis on the obligations of the government for providing legal opportunities within their territories for safeguarding the GI use and curbing its misappropriate use.

Geographical Indication Act in IndiaIn India the geographical indications regime is regulated by the Geographical Indications of Goods (Registration & Protection) Act, 1999 and the Geographical Indication of Goods (Regulation and Protection) Rules, 2002. However registering of the GI is not compulsory in the India as the owner of

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the unregistered GI can also enforce the actions with the help of passing off against the infringer but it is recommendable to register the GI as the registration certificate acts as the prima facie evidence in the court at the time of arising of any dispute and no additional evidence is required to proof the validity. Examples of some of the popular geographical indicators are- Basmati Rice, Kanjeepuram Sarees, Darjiling Tea. In the Indian act, geographical indication is used for identifying the goods from a particular geographical location and its origin. It encircles the agriculture goods, natural goods and is extended up to the manufacture goods also. In order to register the geographical indication, the goods should possess the unique characteristic, reputation with other qualities attributed to its geographical origin, for e.g, climate, quality of soil, processing methods etc. Normally the geographical indicators signify to the rights of community or a group therefore, an individual cannot register geographical indication on his/her name. The Indian Geographical Indication Act has established the Geographical Indication Registry, the statutory body, for completing the geographical indication registration. The body prepares the Register of Geographical Indications which is prepared in two parts- Part A and Part B. While Part A consists of the important attributes of the goods along with the name of the registered owner whereas Part B details down the various rules which are related to the geographical indicator authorized users registration.

To register the geographical indication, any organization or association of people or the statutory authority can apply for the registration. They need to file the application which should consists of the statement that how the geographical indications are related to the quality and with other characteristic features which are the result of the geographical environment, encompasses of the natural qualities and human factors, unique methods of production, processing and preparation, which occurs within the said geographical area. It is required that the class of goods which have been chosen should be covered under the registration. The applicant is needed to give the geographical map of the area in which the goods have been produced along with the descriptory methods of the geographical indicators appearance of the goods. The applicant can file the single application for varied classes of goods but separate fees is required to be paid for each class of goods. However for the registration of foreign indications, the submitted application should detail down the address of the services which are situated in the India. The submitted application may either be accepted fully or conditionally. If the application has been rejected or has been accepted partially then the registrar is required to record in writing the reasons of rejection or conditionally acceptance. After the application acceptance it will be publicized in the Geographical Indication Journal and within the 3 months of its publication, any person who oppose against the application and can request for the opposition proceedings. The registrar will sent the copy of the opposition to the applicant who in turns is required to counter the statement within 2 months of the receipt of the opposition copy. But if the applicant fails to comply with the specified time duration then the application would have been considered rejected. After the furnishing of the evidence by the applicant, the registrar will provide a chance to both parties for the oral hearing and after that the matter will be settled down through the quasi-judicial manner. In case of the foreign entities who are interested in lodging the opposition, are needed to submit the security for costs.

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The initial registration of the geographical indication holds its validness for 10 years. The Indian act has given gracing period of 2 years for restoring back the registration of those geographical indications which have been canceled due to the failure of paying the renewal fees. At the time of the geographical indications infringement there are two types of remedies which have been clearly specified in the act- Civil remedies which cover the injunction damages, which in turns include the delivery of the infringed goods for the destructive purpose and forfeiting of the goods which bear upon the fake representation of the original geographical indication. However the criminal remedies may include of the punishment to the offender minimum to 6 months which can extended maximum to 3 years with the minimum Rs.50,000 fine and maximum to Rs.2,00,000. If the same offense is repeated in the future again then the minimum sentence becomes of 1 year with minimum Rs.2,00,000 fine.

Industrial Design RightsIndustrial design rights are defined as the part of the intellectual property rights which confers the rights of exclusivity to the visual designs of objects which are generally not popular utilitarian. It safeguards the appearance, style, design of the industrial object such as spare parts, textiles, furniture. According to the Industrial Design Society of America (IDSA), "Industrial Design (ID) is the professional service of creating and developing concepts and specifications that optimize the function, value and appearance of products and systems for the mutual benefit of both user and manufacturer." As these designs consist of the aesthetic features therefore they do not provide any protection to the technical features of the article. The origin of design rights can be traced back in the United Kingdom as 'Designing and Printing of Linen Act' (1787).

Designs are used in different products and across the various industries like medical, handicrafts, jewelry, electrical appliances etc. It precludes of any trademark or artistic type of work. In India the ever first design related legislation was enacted by the British Government and was popularly named as the Designs Act, 1911. The Hague Agreement in concern to the international deposit of industrial designs, the WIPO administered treaty, the procedure of the international registration has been laid down. The applicant intended to enjoy the industrial design rights can file the application with the WIPO or in the national office of the nations which are member of the treaty. Due to the application filing with the WIPO, the designs will be protected in various member nations of the treaty. If the right holder wants to protect its rights in multiple jurisdictions then it is required to seek protection separately from each nation. India has still not accepted the Hague System for the International Registration of Industrial Designs, which offers the industrial design owner the right of protecting its design product in various countries on mere filling of the application with the international bureau of the WIPO.

Advantages of Industrial Design RightsIndustrial designs help in making any product or item more beautiful and appealing ,henceforth they help in increasing commercial viability of product and increases its market potentiality. The

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industrial design registration helps in safeguarding the ornamental or aesthetic elements of the article. Whenever an industrial design is being registered it gives an exclusionary rights to owner against unauthorized use like copying or imitation by third party without his consent. This in turns facilitate fair flow of investment. An effectual system also helps in benefiting public by encouraging fair and effective competition and trading practices which at large bolster the creativity and the final result comes in the form of attractive and beautiful products. Safeguarding of industrial designs help in the overall economic development which promote creativity in the industrial arena.

Industrial Design Rights in IndiaIn present scenario, the Designs Act, 2000 and the Designs Rules, 2001 are governing the India's design law. The industrial design registration grants the proprietor the exclusionary rights of selling, importing and applying it to any product. India has adopted the 'first to file' system, which means that the right holder should file the application on the earliest point of time to rule out the possibility of any other person claiming for the rights of the intended designs. All such persons can apply for the industrial design rights if they are the proprietor of the design and as far as the design is new, not previously published in any nation, reproducible through the industrial means, not against to the public order, distinct from the known designs, not consists of any obscene material, eye catching. According to the designs law in India, the proprietor can file for the design application only if they have their business center in India otherwise they are required to file the application through the attorney/agent who will in turns design search, prepare file and finally done the prosecution of the application. The applicant or its assignee can also file the application directly with the filling of the requisite information. Applicants will be examined by the design offices for ascertaining the availability of the intended designs.

The applicant must respond to any objection within the period of 3 months and if he fails to comply with this time limit then the application would be considered to be rejected. Therefore, on the basis of the responses of the objections filed by the applicant, the Controller of Designs determines that whether the application should be accepted or canceled or should be put up for the hearing. The registration of design is valid for the period of 10 years which can be extended further for 5 years on the payment of renewable fees. One can transfer the rights of the industrial designs to other person or party with the help of an assignment, transmission or license. Registered designs are kept to be open for public inspection only after they publish in the office gazette by paying the prescribed fees.

There are some artistic work which is not possible to be registered as the design- a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality, a work of architecture, any other work of artistic craftsmanship. In case of the piracy of the registered designs, then the person who has contravene the copyright in the design would be held liable for the fine not exceeding to Rs.25,000 and maximum to Rs.50,000. The registration of design can be canceled at any time after filing the cancellation petition with the prescribed fees to the Controller of Designs.

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Advantages of Intellectual Property RightsIntellectual property rights help in providing exclusive rights to creator or inventor, thereby induces them to distribute and share information and data instead of keeping it confidential. It provides legal protection and offers them incentive of their work. Rights granted under the intellectual property act helps in socio and economic development.

Intellectual Property Rights in IndiaIndia has defined the establishment of statutory, administrative and judicial framework for protecting the intellectual property rights in the Indian territory, whether they connotes with the copyright, patent, trademark, industrial designs or with other parts.

Tuning with the changing industrial world, the intellectual property rights have continued to strengthen its position in the India. In 1999, the government has passed the important legislation in relation to the protection of intellectual property rights on the terms of the worldwide practices and in accordance to the India's obligations under the Trade Related Aspects of Intellectual Property Rights. It consists of -

The Patents(Amendment) Act, 1999 which was passed on 10th March, 1999 in the Indian Parliament for amending the Patents Act of 1970 which in turns facilitate to establish the mail box system for filing patents and accords with the exclusive marketing rights for the time period of 5 years.

The Trade Marks Bill, 1999 was passed in the India parliament during the winter session for replacing the Trade and Merchandise Marks Act, 1958. It was passed on 23rd December, 1999.

The Copyright(Amendment) Act, 1999 was passed by both upper house and lower house of the Indian parliament and was later on signed by the Indian president on 30th December, 1999.

The sui generis legislation was approved by both houses of the Indian parliament on 23rd December, 1999 and was named as the Geographical Indications of Goods (Registration & Protection) Bill, 1999.

The Industrial Designs Bill, 1999 was passed in the Upper House of the Indian parliament for replacing the Designs Act, 1911.

The Patents (Second Amendment) Bill, 1999 was introduced in the upper house of the parliament for further amending the Patents Act 1970 and making it compliance with the TRIPS.

Along with the above legislative measures, the Indian government has introduced several changes for streamlining and bolstering the intellectual property administration system in the nation. Several projects concerning to the modernizing of the patent information services and trademark registry have been undergone with the help of the World Intellectual Property Organization/ United Nations Development Programme.

PATENT CLAIMS

Patent claims are the part of a patent or patent application that defines the scope of protection granted

by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent,

or the protection sought in a patent application. The claims are of the utmost importance both

during prosecution and litigation.

For instance, a claim could read:

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"An apparatus for catching mice, said apparatus comprising a base for placement on a surface, a

spring member..."

"A chemical composition for cleaning windows, said composition comprising 10–15% ammonia, ..."

"Method for computing future life expectancies, said method comprising gathering data including X,

Y, Z, ..."

A patent is a right to exclude others from making, using, selling or offering for sale the subject matter

defined by the claims. In order to exclude someone from using a patented invention in a court, the

patent owner, or patentee, needs to demonstrate that what the other person is using falls within the

scope of a claim of the patent. Therefore, it is more valuable to obtain claims that include the minimal

set of limitations that differentiate an invention over what came before, i.e. the so-called prior art. On

the other hand, the fewer the limitations in a claim, the more likely it is that the claim will cover or "read

on" what came before and be rejected during examination or found to be invalid at a later time for lack

of novelty.

History

Patents have not always contained claims. In many European countries, patents did not contain claims

before the 1970s. It was then often difficult (and subjective) to decide whether a product infringed a

patent, since the sole basis to know the extent of protection was the description, in view of the prior art.

Claims have been necessary parts of U.S. patent applications since the enactment of the Patent Act of

1836.[1]

However, even among patent legal systems in which the claims are used as the reference to decide the

scope of protection conferred by a patent, the way the claims are used may vary substantially.

Traditionally, two types of claiming system exist:

the central claiming system, according to which the claims identify the "centre" of the

patented invention. The exact scope of the protection depends on the actual nature of theinventor’s

contribution to the art in the concerned technology.

the peripheral claiming system, according to which the claims identify the exact periphery, or

boundary, of the conferred protection. In this system, the burden of drafting good claims is much

higher on the patent applicant (or on his counsel). The applicant receives the protection he or she

requested and almost nothing more, provided that the invention isnew and non-obvious. This

theoretically makes it easier for third parties to examine whether infringement may exist or not.

No patent system today is a purely either central or peripheral, but the system used in Germany and

most of the other countries of continental Europe is considered more central than the system currently

used in the United Kingdom, the United States, and especially Japan, which are more peripheral.[citation

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needed] In recent years, Japan's system has become more peripheral,[2] while the system used in the United

States has become less peripheral.[3][dubious – discuss]

Requirements and structure

In most modern patent laws, patent applications must have at least one claim, which are critical defining

elements of the patent and the primary subject of examination. In some patent laws however, a date of

filing may be obtained for an application which does not contain any claim.[4]

Under the European Patent Convention (EPC), a claim must define the matter for which the protection is

sought in terms of technical features. These technical features can be either structural (e.g. a nail,

a rivet) or functional (e.g. fastening means).

A claim may include the following parts (the terminology and requirements may however significantly

differ from one legislation to another):

A preamble that recites the class of the invention, and optionally its primary properties, purpose, or

field: "An apparatus..." "A therapeutic method for treating cancer..." "A composition having an

affinity for protein X..." This preamble may also reference another claim and refine it, e.g., "The

method of claim 1..." (See "dependent claim" below.). However, under the European Patent

Convention, the preamble has a different meaning. In an independent claim, it is everything which

precedes the expression "characterized in that" or "characterized by".[5]

A "transitional" phrase that characterizes the elements that follow. The phrases "comprising",

"containing" and "including" are most often used and (under some patent laws, specifically US)

preferable, as it means "having at least the following elements..." and are therefore open (inclusive)

and do not exclude additional limitations. The phrases "consisting of" and "consisting essentially of"

are (under some patent laws, specifically US) more limiting, as they mean "having all and only" or

"virtually only" and are therefore closed (exclusive). In the US, the phrase "consisting of" excludes

additional limitations, while the phrase "consisting essentially of" excludes additional limitations

that would "materially affect the basic and novel characteristic(s) of the claimed invention".[6]

A set of "limitations" that together describe the invention: "an X, a Y, and a Z connected to the X and

the Y." The elements should be described as though they interact or cooperate to achieve the

desired result.[7] The distinction between elements and limitations is explained in the article All

elements test.

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Optionally, a purpose clause that further describes the overall operation of the invention, or the goal

that the invention achieves ("wherein the Z simultaneously controls the X and Y," or "wherein the Z

accomplishes purpose W by controlling X and Y," etc.)[citation needed]

Interpretation or claim construction

The claims often comprise precise language. Certain words commonly used in claims have specific legal

meanings determined by one or more court decisions. These meanings may be different from common

usage. For instance, the word "comprises", when used in the claims of a United States patent, means

"consists at least of". By contrast, the word "consists" means "consists only of", which may lead to a very

different scope of protection.

Furthermore, in U.S. patent practice at least, inventors may "act as their own lexicographer" in a patent

application. That means that an inventor may give a common word or phrase a meaning that is very

specific and different from the normal definition of said word or phrase. Thus a claim must be

interpreted in light of the definitions provided in the specification of a patent. The specification of a

patent is a written description of how to make and use the invention (see also: sufficiency of disclosure).

Construction, whether of a patent or any other document, is of course not directly concerned

with what the author meant to say. There is no window into the mind of the patentee or the

author of any other document. Construction is objective in the sense that it is concerned with

what a reasonable person to whom the utterance was addressed would have understood the

author to be using the words to mean. Notice, however, that it is not, as is sometimes said, "the

meaning of the words the author used", but rather what the notional addressee would have

understood the author to mean by using those words. The meaning of words is a matter of

convention, governed by rules, which can be found in dictionaries and grammars. What the

author would have been understood to mean by using those words is not simply a matter of

rules. It is highly sensitive to the context of and background to the particular utterance. It

depends not only upon the words the author has chosen but also upon the identity of the

audience he is taken to have been addressing and the knowledge and assumptions which one

attributes to that audience.[8]

Basic types and categories

There are two basic types of claims:

the independent claims, which stand on their own, and

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the dependent claims, which depend on a single claim or on several claims and generally

express particular embodiments as fall-back positions.

The expressions "in one embodiment", "in a preferred embodiment", "in a particular

embodiment", "in an advantageous embodiment" or the like often appear in the description of

patent applications and are used to introduce a particular implementation or method of carrying

out the invention.[9] These embodiments usually correspond to a dependent claim or could form

the basis of a dependent claim. Each dependent claim is, by law, more narrow than the

independent claim upon which it depends. Accordingly, it might appear that there would be little

purpose to the dependent claim. In reality, however, there are at least three advantages to the

patent applicant in submitting and obtaining a full string of dependent claims:

Clarification of the independent claim language: Independent claims are typically written with

very broad terms, to avoid permitting competitors to circumvent the claim by altering some

aspect of the basic design. But when a broad term is used, it may raise a question as to the

scope of the term itself. For example, does a "base" include a "set of legs"? A dependent claim,

including the phrase, "wherein said base comprises a set of legs," if allowed by the patent

examiner, clarifies that it does. In practice, dependent claims are often used to home in on the

inventor's preferred embodiment of the invention (e.g., the actual product design that the

inventor intends to use.) The independent claim broadly describes the invention; dependent

claim #1 describes the invention in a narrower aspect that more specifically describes the

preferred embodiment; dependent claim #2 is narrower still; etc.

Possible invalidity of base claim: It is impossible to know, when beginning the application

process and even at the time of patent issuance, if a patent claim is valid. This is because any

publication dated before the application's priority date and published anywhere on earth in any

language can invalidate the claim (excluding publications by the inventor published during the

grace period in certain countries such as U.S., Canada and Japan). Furthermore, even

applications that were not yet published at the time of filling, but have a priority date prior to

the priority date of the application, can also invalidate the claim. As it is impossible to gain an

absolute and complete knowledge of every publication on earth, not to mention unpublished

patent applications, there is always some degree of uncertainty. If the independent claim is

determined to be invalid, however, a dependent claim may nevertheless survive, and may still

be broad enough to bar competitors from valuable commercial territory.

Claim differentiation: In United States patent law, under the doctrine of claim differentiation,

each claim is presumed to cover a different aspect of the invention than in each other claim.

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This doctrine may be relied upon to help maintain broad claim scope in the case where a claim

standing alone might be construed as having either a broad or a narrow interpretation. If a

dependent claim is added that depends from this "parent" claim but is specifically drawn to the

narrower interpretation, then the parent claim must necessarily be different - i.e., it must be

the broader interpretation.[citation needed] As construed in the courts, the doctrine of claim

differentiation dictates that it would be "improper for the courts to read into an independent

claim a limitation explicitly set forth in a dependent claim."Environmental Designs Lid. v. Union

Oil Co. of California, 713 F.2d , 699 (1984). . This means that if an independent claim recites a

chair with a plurality of legs, and a dependent claim depending from the independent recites a

chair with 4 legs, the independent claim is not limited to what is recited in the dependent

claim. The dependent claim protects chairs with 4 legs, and the independent claim protects

chairs with 4 legs as well as chairs having 2, 3, 5 or more legs.

Under the European Patent Convention, when a claim in one particular category (see below),

e.g. a process claim, depends on a claim from a different category, e.g. a product claim, it is

not considered to be a dependent claim but an independent claim. Under U.S. law, this is still

counted as a dependent claim, regardless of the class change.[citation needed]

The rules of claim drafting also permit "multiple dependent claims" that reference more than

one other claim, e.g.: "3. The method of claims 1 or 2, further comprising..." The rules for this

are quite specific: specific claims must be referenced ("the method of any of these other

claims" is incorrect); the claims must be referenced in the alternative ("the method of claims

1 and 2" is incorrect); etc. While still acceptable, this claim style is seldom used in the U.S.

because it is counted for filing fee purposes according to the number of claims that it

references. Thus, if the claim depends from three former claims, it is counted for fee

purposes as three dependent claims. In light of the "excess claim" fees currently imposed by

the USPTO, this tactic can quickly become expensive. Multiple dependent claims are,

however, very commonly used in other jurisdictions, including Canada and Europe[10][11][citation

needed]

Claims can also be classified in categories, i.e. in terms of what they claim. A claim can refer

to

a physical entity, i.e. a product (or material) or an apparatus (or device, system, article, ...).

The claim is then called respectively "product claim" or "apparatus claim"; or

an activity, i.e. a process (or method) or a use. The claim is then called respectively "process

claim" (or method claim) or "use claim".

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Special types of claims

Main article: List of patent claim types

In addition to the above basic claim types, there are also many special types of claim which

are used in different circumstances. Sometimes a particular claim form is required by law if a

patent is to be granted for a particular invention, such as for a second medical use of a

known substance where the "Swiss-type" claim might be required. Another reason to use a

particular claim might be to catch a particular class of infringer.

The procedure for getting a patent (Legal Process)

Patent rights are granted by national Patent Offices, and so patent protection for an invention must be sought in each country individually. The procedure generally involves three steps. First, the person (or company) seeking patent protection must file a patent application at the Patent Office.

Second, the Patent Office then performs a novelty search, which involves checking all the literature available to it to find documents that describe the invention in part or in whole. In this search, only documents that were published before the date of filing of the application are to be considered.

And third, an Examiner decides on the patentability of the invention in light of the report of the novelty search. The applicant of course has the right to discuss the findings of the Examiner, to argue about interpretation of the literature found, and to limit the scope of his patent if necessary. If, after that, there is still an invention left, the applicant is granted a patent for it.

The patent application

The first step in getting a patent on an invention is writing a patent application. In this application, the inventor must disclose the invention in sufficient detail for the average skilled person to be able to reconstruct it. This way, anyone should be able to rebuild the invention and apply it himself once the patent rights run out.

A patent application typically consists of six parts:

1. A statement identifying the field of the invention, or the type of apparatus, device, method or other object it relates to.

2. An introductory portion, which describes what is known at the time of writing with respect to this field, and which identifies a problem, disadvantage or need that exists therein.

3. A brief description of the invention, stating the measures taken in the apparatus or method according to the invention, and the advantages or solutions it brings.

4. A detailed description, in the above-mentioned level of detail. This detailed description should mention all aspects of the invention. In some countries it is even required to describe the best way to practice the invention (the "best mode"). In any case, the description should fully describe all aspects of the invention. The detailed description is almost always accompanied by a number of figures. The figures are usually found at the end of the application, except for US patent applications, where they are present at the beginning.

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5. A number of claims. A claim can be regarded as a definition of what the inventor is trying to claim as "his" invention. There are two types of claims. Independent claims stand on their own; they provide a complete definition. If something else matches the definition of the independent claim, it infringes on the patent. The dependent claims refer back to the independent claims, and provide additional (optional) measures. Should an independent claim be declared invalid, the dependent claims referring back to that claim can be used as a fallback position.Claims can be defined in various categories, such as apparatus, arrangement, device, method, system, computer program, medicine, and so on.

6. An abstract, which gives a short description of what the invention is about. The abstract is not legally binding and does not serve to identify the scope in any way - that's what the claims are for. The abstract is there to help readers quickly examine the relevance of the patent.

Writing a patent application is a tricky business, especially when it comes to claim writing. It is common for an inventor to write a detailed description and figures himself, while the claims and the brief description are written by a patent attorney based on the information in the detailed description.

While the claims define the invention, they are to be interpreted in the light of the wording as used in the rest of the application. So, for instance, if a claim uses the word "round", then normally that means exclusively perfectly round. The description, however, might include a phrase like "The shape does not have to be perfectly round", in which case a slight deviation is permissible to still fall under the definition of the claim. The description might even say "The word 'round' is used here to mean any kind of geometrical shape, including but not limited to square, rectangular, elliptical or curved in any other way", in which case almost any shape would be considered to fall under the heading 'round'. Or, as a common saying goes, a patent drafter is his own lexicographer. For more information regarding the scope of a patent and claim interpretation, seeDetermining the scope of a patent.

The publication

A patent application is published 18 months after it has been filed (or 18 months after its priority application, if any, has been filed). This way, the world is informed about the fact that a patent can be expected on that particular invention. Someone else using the invention could then switch to a different technology, or make reservations to pay for a license once the patent is granted. He could also start looking for relevant prior art (for example, documents on his own use of the invention before the filing date) to get the patent annulled if it is granted eventually.

Until November 2000, the US patent office did not publish applications, but instead only published the granted patents. This meant that someone else using the invention would not have any time to take preventive action. The reason for not publishing is that it robs the inventor from the chance of withdrawing the application if it becomes apparent he will be unable to get a patent on it. Once it has been published, the invention is there for all to see, and the inventor has lost control. If the patent application is subsequently rejected, the inventor can't gain exclusivity through his patent nor through keeping the invention a trade secret.

During the examination process, the applicant has the chance to modify his claims, and sometimes part of the description. This means that the patent as granted might differ

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substantially from the patent application as published. The patent as granted is also published, and the rights granted by a patent becomes effective upon publication.

The novelty search

In order to determine whether an invention is patentable, it must be compared against what was known at the day before the day of filing of the application. This is known as the state of the art. Documents that were not available until on the day of filing are to be disregarded because they were not part of the state of the art at the day of filing (see When is something prior art against a patent?).

Some countries, most notably the USA, have a so-called "grace period". Publications by the inventor during the grace period, which can range to up to one year before the filing of the patent application, are also not considered to be part of the state of the art. However, this of course only applies to the patent application for the countries in which such a grace period exists. In other countries, the document will be considered of part of the state of the art.

While in general the term "document" it used, in practice any revelation regarding the invention is to be considered to be in the state of the art. So, if the invention was publicly shown at an exhibition before the date of filing, then the presentation is considered to be part of the state of the art. If the inventor told someone about the invention before filing a patent application, then that oral disclosure is part of the state of the art. If such an exhibition or oral disclosure describe all the features of the invention, then the invention is not novel with respect to the state of the art. Proving that the inventor in fact did orally disclose the invention before the patent application was found can be rather difficult, though.

Almost always, the searcher will only consider databases containing printed publications because they are the easiest to search. Based on what he finds in those databases, he draws up a search report which gets published next to the patent application. The applicant can than evaluate the search results and decide whether there is anything patentable left. If so, the patent application moves to the next stage: the examination.

The examination

In this stage, the patent application is compared against the state of the art by an Examiner, who makes a determination whether the invention is novel and whether it involves an inventive step. In order to accurately determine what the invention is, each patent application contains a number of claims at the end of the application. These claims define the invention and indicate for what patent protection is sought. So, the application may describe in very broad wording how the apparatus according to the invention to be constructed, but if the claims described only one specific example, than that specific example is considered to be the invention, regardless of the rest of the application.

To determine whether the invention is novel and involves an inventive step, the Examiner only looks at the claims. If all the elements that are mentioned in the claims are also found in a single document that is part of the state of the art, then the invention is not novel. If the invention is novel, but adding the missing features is considered to be obvious, then the invention lacks an inventive step. The Examiner communicates his findings to the applicant, in the form of a so-called Office Action or Communication.

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Generally, the applicant will disagree with the findings of the Examiner. He can then respond to the Communication of the Examiner by pointing out the certain features of the claim are missing in the state of the art, or that a combination of documents made by the Examiner is not proper. He may also introduce additional features in claims, so as to distinguish the invention as claimed from the state of the art.

Often, a claim is followed by a series of so-called dependent claims, which list additional features. Adding a new feature to a claim is then often done by combining the first, independent claim with one or more of the dependent claims. For example, the first claim may describe a method of compressing an image that works by applying run-length encoding on continuous areas of the image. A subsequent dependent claim could then give the additional feature of reducing the number of colors in the color palette. If run-length encoding of continuous areas is found to be present in the state of the art, then the first claim is rejected for lack of novelty. The applicant could then combine the dependent claim and the independent claim to overcome this objection.

The Examiner then has to consider whether a method of compressing an image involving RLE coding and palette adjusting is known in the state of the art. He could then, for example, locate another document which explains that a good compression level is achieved by reducing the number of colors in the palette, and use this document as an argument that the invention lacks an inventive step. The applicant would then have to find a new feature to add to the independent claim or withdraw his application. If the Examiner can find no such document and no such hint anywhere in other documents, then the application apparently does involve an inventive step, and the Examiner will grant a patent.

Of course, a patent is not immune after grant. It is possible to invalidate a patent at any moment based on the fact that it is not novel or that it is obvious over the prior art, as long as the appropriate evidence can be given.

Owning IPR- Ex. Patent

A patent gives its owner the right to exclude others from making, using or selling an invention. In most countries this right only applies to commercial activities by others. And it is usually allowed to use a patented invention for research purposes.

The scope of a patent is exclusively determined by the claims. Something infringes a patent only if it has all the elements of a claim in the patent, or performs all the steps of a claim. As this could lead to unfair situations, most countries have developed the so-called doctrine of equivalence. With this doctrine, there can still be infringement if an element in the allegedly infringing product is an equivalent of an element in the claim that does not occur literally in this product.

The rights granted by a patent

Using the inventionA patent gives its owner the right to exclude others from using an invention. Strictly speaking, it does not grant its owner the right to use the invention himself, since there may be other patents held by others that are necessary for that. For example, to build a car you need an engine, a transmission and wheels. Each of these could be protected by one or more patents held by different entities. This would mean that

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none of them could build a car without the permission of the others. However, any of them could stop an outsider from building a car.

The rights to the invention held by the patent owner are typically formulated very broadly. US law sums it up very nicely by granting the owner the right to "make, use or sell" the invention.

Commercial and noncommercial useIn most European countries, the exclusive exploitation rights granted by a patent are restricted to commercial exploitation. A private person who builds the patented invention in his own home for his own personal goals cannot infringe on a patent. The reasoning behind this is that such a situation cannot harm the patent holder.

US law is more strict. It forbids anyone from making, using or selling the invention, even when the use is strictly personal. Of course, since patent infringement lawsuits are very expensive, a private person is rarely if ever prosecuted for using the invention in his own home. Such a situation could occur when a private person offers on his website a piece of software that uses someone else's patented technology. The patent holder may feel that the freely available software threatens his commercial product, and then decide to use the patent to prevent the distribution of the free product.

Studying the inventionIt is always permissible to use a patented invention for research purposes. Such study may give new insights in possible uses of the invention, or possible alternatives to what is described in the patent. This might even result in new patents for the alternatives, or in workarounds.

Of course, the "research" should not simply be a commercial exploitation in disguise.

The scope of a patent

The claimsThe scope of a patent is exclusively determined by the claims. The specification may describe the invention quite broadly and mark almost everything as being optional, but if the claims state the invention contains some element, then that element is mandatory nonetheless.

Claim drafting and interpretation is an arcane art. Over the years courts have interpreted claim language more strictly. In response, patent practitioners have taken to using more generic terms and legally more secure phrasing. For instance patents today more and more often use functional terms ("means for receiving an electrical signal" rather than "an antenna").

Something infringes a patent if it has all the elements of a claim in the patent, or performs all the steps of a claim. It does not have to match all the claims, a single one will do. However, it is important that it matches all elements in that single claim. Most patent courts take this requirement quite strictly and will not easily ignore an element in a claim unless it is clearly irrelevant. One often-heard argument against ignoring an

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element is that patent writers are aware of the strict interpretation and so would not put in an element unless necessary. Therefore, an element that is present in the claim must have been deemed necessary and so may not be ignored.

Infringement through equivalenceIn practice, claim infringement determination is not quite as simple as this. Often elements in the claim are not literally the same as in the allegedly infringing product. As this could lead to unfair situations, most countries have developed the so-called doctrine of equivalence. When using this doctrine, the courts determine if the feature in the allegedly infringing product is an equivalent of the element in the claim. When something is an equivalent is something that strongly depends on the wording of the patent and the state of the case law at the time. For example, if the patent clearly states "The word 'water' in this specification should be read as meaning any fluid with property X", then any fluid with property X is seen as an equivalent of 'water' for the purpose of determining infringement.

The more well-known it is that certain elements have equivalents, the less likely it is that a court will accept infringement under the doctrine of equivalence. For example, everyone knows a nail is equivalent to a screw, and that the accepted general term is 'fastening means'. If a claim then nevertheless mentions the use of a nail to connect two elements, the chance that a court will rule the use of a screw to be equivalent is small. After all, when the patent does not use the general term, the author must have had a reason to use the specific term.

Unfortunately, the concept of equivalence and how it is applied varies greatly from country to country and from patent to patent. Sometimes new laws or case law significantly change the scope of a patent.

Other relevant factorsAnother complicating factor is that often during the prosecution at the various patent offices, the applicant will present arguments showing that the elements in the claim are different from those in the prior art, to overcome an objection that the claimed invention is not novel. So, for example, the applicant may argue that, in this invention, 'nail' should be read specifically as a nail, which makes it different from the prior art which uses a screw. If this is successful, he will be granted a patent that mentions 'nail' as an element in the claim.

However, he should not be able to then prosecute an infringer who uses screws instead of nails. This is referred to as 'file wrapper estoppel' or 'prosecution history estoppel'. In practice, it means that you have to study the correspondence between applicant and patent office to determine if any such arguments have been made.

There are also more specialist issues, such as the priority date of the patent and the individual claims. However, these are very difficult.

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TRIPS

Overview: the TRIPS Agreement

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property.

The areas of intellectual property that it covers are: copyright and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting organizations); trademarks including service marks;geographical indications including appellations of origin; industrial designs;patents including the protection of new varieties of plants; the layout-designs of integrated circuits; and undisclosed information including trade secrets and test data.

The three main features of the Agreement are:

Standards. In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. Each of the main elements of protection is defined, namely the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection. The Agreement sets these standards by requiring, first, that the substantive obligations of the main conventions of the WIPO, the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) in their most recent versions, must be complied with. With the exception of the provisions of the Berne Convention on moral rights, all the main substantive provisions of these conventions are incorporated by reference and thus become obligations under the TRIPS Agreement between TRIPS Member countries. The relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement, which relate, respectively, to the Paris Convention and to the Berne Convention. Secondly, the TRIPS Agreement adds a substantial number of additional obligations on matters where the pre-existing conventions are silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to as a Berne and Paris-plus agreement.

Enforcement. The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement procedures. In addition, it contains provisions on civil and administrative procedures and remedies, provisional measures, special requirements related to border measures and criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that must be available so that right holders can effectively enforce their rights.

Dispute settlement. The Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.

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Origins: into the rule-based trade system....

Ideas and knowledge are an increasingly important part of trade. Most of the value of new medicines and other high technology products lies in the amount of invention, innovation, research, design and testing involved. Films, music recordings, books, computer software and on-line services are bought and sold because of the information and creativity they contain, not usually because of the plastic, metal or paper used to make them. Many products that used to be traded as low-technology goods or commodities now contain a higher proportion of invention and design in their value — for example brandnamed clothing or new varieties of plants.

Creators can be given the right to prevent others from using their inventions, designs or other creations — and to use that right to negotiate payment in return for others using them. These are “intellectual property rights”. They take a number of forms. For example books, paintings and films come under copyright; inventions can be patented; brandnames and product logos can be registered as trademarks; and so on. Governments and parliaments have given creators these rights as an incentive to produce ideas that will benefit society as a whole.

The extent of protection and enforcement of these rights varied widely around the world; and as intellectual property became more important in trade, these differences became a source of tension in international economic relations. New internationally-agreed trade rules for intellectual property rights were seen as a way to introduce more order and predictability, and for disputes to be settled more systematically.

The Uruguay Round achieved that. The WTO’s TRIPS Agreement is an attempt to narrow the gaps in the way these rights are protected around the world, and to bring them under common international rules. It establishes minimum levels of protection that each government has to give to the intellectual property of fellow WTO members. In doing so, it strikes a balance between the long term benefits and possible short term costs to society. Society benefits in the long term when intellectual property protection encourages creation and invention, especially when the period of protection expires and the creations and inventions enter the public domain. Governments are allowed to reduce any short term costs through various exceptions, for example to tackle public health problems. And, when there are trade disputes over intellectual property rights, the WTO’s dispute settlement system is now available.

The agreement covers five broad issues:

how basic principles of the trading system and other international intellectual property agreements should be applied

how to give adequate protection to intellectual property rights how countries should enforce those rights adequately in their own territories how to settle disputes on intellectual property between members of the WTO special transitional arrangements during the period when the new system is being introduced.

Basic principles: national treatment, MFN, and balanced protection

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As in GATT and GATS, the starting point of the intellectual property agreement is basic principles. And as in the two other agreements, non-discrimination features prominently: national treatment (treating one’s own nationals and foreigners equally), and most-favoured-nation treatment (equal treatment for nationals of all trading partners in the WTO). National treatment is also a key principle in other intellectual property agreements outside the WTO.

The TRIPS Agreement has an additional important principle: intellectual property protection should contribute to technical innovation and the transfer of technology. Both producers and users should benefit, and economic and social welfare should be enhanced, the agreement says.

How to protect intellectual property: common ground-rules

The second part of the TRIPS agreement looks at different kinds of intellectual property rights and how to protect them. The purpose is to ensure that adequate standards of protection exist in all member countries. Here the starting point is the obligations of the main international agreements of the World Intellectual Property Organization (WIPO) that already existed before the WTO was created:

the Paris Convention for the Protection of Industrial Property (patents, industrial designs, etc) the Berne Convention for the Protection of Literary and Artistic Works(copyright).

Some areas are not covered by these conventions. In some cases, the standards of protection prescribed were thought inadequate. So the TRIPS agreement adds a significant number of new or higher standards.

Copyright

The TRIPS agreement ensures that computer programs will be protected as literary works under the Berne Convention and outlines how databases should be protected.

It also expands international copyright rules to cover rental rights. Authors of computer programs and producers of sound recordings must have the right to prohibit the commercial rental of their works to the public. A similar exclusive right applies to films where commercial rental has led to widespread copying, affecting copyright-owners’ potential earnings from their films.

The agreement says performers must also have the right to prevent unauthorized recording, reproduction and broadcast of live performances (bootlegging) for no less than 50 years. Producers of sound recordings must have the right to prevent the unauthorized reproduction of recordings for a period of 50 years.

Trademarks

The agreement defines what types of signs must be eligible for protection as trademarks, and what the

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minimum rights conferred on their owners must be. It says that service marks must be protected in the same way as trademarks used for goods. Marks that have become well-known in a particular country enjoy additional protection.

Geographical indications A place name is sometimes used to identify a product. This “geographical indication” does not only say where the product was made. More importantly, it identifies the product’s special characteristics, which are the result of the product’s origins.

Well-known examples include “Champagne”, “Scotch”, “Tequila”, and “Roquefort” cheese. Wine and spirits makers are particularly concerned about the use of place-names to identify products, and the TRIPS Agreement contains special provisions for these products. But the issue is also important for other types of goods.

Using the place name when the product was made elsewhere or when it does not have the usual characteristics can mislead consumers, and it can lead to unfair competition. The TRIPS Agreement says countries have to prevent this misuse of place names.

For wines and spirits, the agreement provides higher levels of protection, i.e. even where there is no danger of the public being misled.

Some exceptions are allowed, for example if the name is already protected as a trademark or if it has become a generic term. For example, “cheddar” now refers to a particular type of cheese not necessarily made in Cheddar, in the UK. But any country wanting to make an exception for these reasons must be willing to negotiate with the country which wants to protect the geographical indication in question.

The agreement provides for further negotiations in the WTO to establish a multilateral system of notification and registration of geographical indications for wines. These are now part of the Doha Development Agenda and they include spirits. Also debated in the WTO is whether to negotiate extending this higher level of protection beyond wines and spirits.

Industrial designs Under the TRIPS Agreement, industrial designs must be protected for at least 10 years. Owners of protected designs must be able to prevent the manufacture, sale or importation of articles bearing or embodying a design which is a copy of the protected design.

Basic requirements for a patent

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If an invention is considered to be in a permissible field of endeavor, it still must pass a substantive examination before a patent can be granted for it. There are three important requirements that an invention must satisfy: the invention must be novel, the invention must be inventive, and the invention must have industrial applications. When assessing the novelty and inventiveness of an invention, only documents published before the day of filing (or day of filing of the priority application, if there is one) are to be taken into account. These documents are often referred to as "the state of the art" or "the prior art".

Novelty

The first requirement for any invention is that it is novel in the absolute sense. That is, it was not available to the public in any way before the filing date of the patent, and was not described in any publication before that date either (see When is something prior art against a patent?). Some countries, most notably the USA, have a so-called "grace period". Publications by the inventor during the grace period, which can range to up to one year before the filing of the patent application, are not regarded when determining the novelty of the invention.

The novelty requirement is fairly strict: the complete invention must be described in one single document for that document to be considered novelty-destroying. To take the canonical example, if the invention describes that something is connected to a wall with a nail, and the publication describes the very same system except with the use of a screw instead of a nail, then the invention is novel with respect to that publication.

In some cases, the determination of novelty can get extremely picky. For example, if a publication describes a chemical process involving the use of between 5 and 15% of a specific substance, and the invention lies in the use of exactly 10% of that substance, then the invention is novel because the value of 10% was not mentioned in the publication. On the other hand, if the invention lies in the use of exactly 15% of that substance, then the invention is not novel.

Of course, a skilled person will generally understand that a nail can easily be replaced by a screw or that he could choose, for example, a value of 10% in the method. However, in patent law, is it considered to be a matter of obviousness, and not of novelty. In some cases, this distinction can be very important.

Obviousness

Even if an invention is found to be novel in the strict sense, it may still be unpatentable because it is considered to be obvious to a person skilled in the art. It should be stressed that the term obvious is a legal term of art, and is used in a sense quite different from the ordinary meaning of the word. Further, the legal interpretation of the term obviousness varies from country to country.

In general, it can be said that something is obvious if it can be demonstrated that the literature at the time of the invention contains a suggestion or a hint to apply that measure in a situation in which it was applied in the invention. It is not permitted to use hindsight when assessing obviousness. The invention could lie in the insight that several measures are to be combined, and in hindsight the combination could then appear obvious. But it was only obvious after the inventor made the combination!

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So, for example, something is obvious when it is mentioned in a standard text book, or when a document explicitly refers to another document, which other document completely describes the additional measure. It is, however, in general not obvious merely when was in fact described in a publication. It must be demonstrated that the skilled person would be led to that publication and would apply it in a situation as it occurred in the patent.

The European Patent Office has a slightly more strict interpretation of this requirement, and uses the term "inventive step" to stress this. An invention involves an inventive step if it provides a solution to a technical problem which can be found in the state of the art, and this solution is not obvious for a person skilled in the art. If no technical problem can be found, there is no inventive step. How this works in practice is discussed in more detail in When is an invention obvious?.

The requirement for an inventive step is also present in the Patent Cooperation Treaty (PCT) but a footnote remarks that the term "inventive step" may be read as "not being obvious".

Industrial application

The third requirement for patent protection mainly aims to distinguish between aesthetical and scientific inventions. The term "industry" should be interpreted very broadly; it also includes agriculture. It does exclude methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practice on the human or animal body. Perpetual motion machines also fail to meet this requirement.

In the US, the third requirement is referred to as "utility"; however, interpretation and scope of this term is generally the same as that of the industrial application. International patent treaties often use "utility" and "industrial application" as synonyms.

Introduction to Biotechnological Patents

Research and development in the life sciences is extremely costly and time-consuming. The pharmaceutical industry provides a good example of the time-scales and funding one needs in order to bring a drug or biological product to market, and most academic or other research programmes do not have these resources available.

However, in order to leverage funding or to recoup your investment in research, there is usually one prerequisite required by private and, increasingly, public funders - a clearly defined patent right to the invention. Consequently, without patent protection for usable inventions, investments in science diminish.Background to Biotechnological Patents

The patent system has evolved over the past four centuries to afford patent monopolies to certain individuals who have invested effort and ingenuity in devising new or better solutions to existing problems. Patent monopolies are granted to such individuals as an incentive for them to exploit their patented inventions without having to fend off unfair competition. As a consequence of this, the patent system stimulates further innovation, as competitors advance the field while attempting to find alternative ways of solving the same or similar problems. Far from stifling innovation, patents have been instrumental in fostering advances in technology.

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How can I obtain patent protection for my life sciences invention?

As you will see from our enclosed patent brochure, all inventions must be novel, inventive and useful in order to be eligible for patent protection. Biotechnological or life sciences inventions are no exception, but it is the manner in which these requirements are addressed that can curb or extend the patent protection you acquire. Certain sections of local and foreign patent legislation deal specifically with inventions relating to biological processes or products and these requirements must be adhered to. Furthermore, only inventions and not mere discoveries are eligible for patent protection - an invention goes further than a mere discovery, as it provides a practical application of the discovery in order to provide a solution to a problem.Examples of life science inventions which may be eligible for patent protection:

Listed below are examples of life sciences inventions that may be eligible for patent protection. These patent examples should not be considered exhaustive or complete, but serve merely as a guide as to what may possibly be patented in your discipline. Your invention may, of course, encompass several of these artificial classifications and you eventual patent application will most likely be a mosaic covering several aspects of each of these patent classes.

Genetic engineering patentsIsolated DNA sequences, proteins to which functions have been ascribed, and other metabolites are usually viewed in patent terms as chemical compounds, much like a new organic drug molecule. The unique sequence of the nucleotides or amino acids that you have uncovered constitutes a novel biological molecule (much like a novel chemical molecule) and may thus be patentable. In addition, vectors containing your nucleotide sequence and cells containing the vector/DNA may also be patented, provided they are new.

Microbiological sciences patentsSouth African patent law provides specifically for the patenting of microbiological processes (such as fermentation or brewing) and the products derived therefrom. This would obviously include genetically modified organisms used in such processes, which may also be eligible for patent protection. In addition, new microbes that you have isolated, purified and cultured are generally considered patentable, provided they can fulfill the usefulness patent requirement described above. There are, however, certain preconditions for patent applications regarding the depositing of sample materials that have to be met - this is discussed below.

Plant and Animal sciences patentsAccording to the patent laws of several countries, one cannot obtain patent protection for plant or animal varieties, or essentially biological processes for the production of plants or animals. However, as there has been no South African case law addressing this aspect of patent law, one has to look further afield to European and UK patent court decisions. It appears from the European Biotech Directive and the UK Patent Office practice manual that patent claims to a genetically modified plant per se (and not to a plant variety) are allowable in a patent application. While this difference may seem pedantic, it represents the difference between a patent application that may be considered valid and one that is invalid. The term "essentially biological processes" for plant or animal production refer generally to the process of obtaining new varieties by traditional breeding methods - plants or animals obtained in this way are not considered patentable. Should you have originated a new plant variety by conventional breeding, however, this may be protected by way of a Plant Breeders' Rights application in South Africa, and not a patent. The USA is the exception to this and issues so-called Plant Patents. Please let us know

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should you require patent assistance in this regard.

Similarly, patent claims to animals obtained by traditional breeding methods are not allowable at most Patent Offices, but a genetically modified animal is considered patentable in the UK, Europe and USA. There is currently no equivalent in the animal sciences field to the protection offered by Plant Breeders' Rights.

Diagnostics patentsPrimers used for diagnostic purposes may be protected by way of patents, as well as kits containing such primers. Single nucleotide polymorphisms and expressed sequence tags may under certain strict conditions be considered patentable and of use in diagnostics, but they may fall foul of the utility patent requirement discussed above. In addition, novel antigens and receptors that you have located may also be protected by way of a patent, provided you have ascribed a function to them. Novel monoclonal antibodies and immunological tests (such as ELISA tests) using novel antibodies are also worthy of patent protection. In addition, other novel diagnostic tests may also be patentable.

Pharmaceutical and chemical sciences patentsNovel purified chemical or pharmaceutical compounds are patentable, as well as their pharmaceutically acceptable isomers and salts. Crude extracts in which a compound is enriched may also be patentable, depending on the level of enrichment relative to the natural, unfractionated state. Importantly, novel pharmaceutical carriers may also be patented. Patent protection may also be obtained for pharmaceutical compositions containing your novel pharmaceutical compound.

Method of treatment patentsSouth African, British and European patent laws specifically exclude from patentability methods of treatment by surgery, diagnosis, or therapy, if practised on the human or animal body. However, the following may under certain circumstances be included in a patent application and may be used to address the restriction on therapeutic treatments in patents:

A substance or composition for use in a method of treatment; and The use of a substance in the manufacture of a medicament to treat a disease.

Medical sciences patentsDue to the patent restriction on methods of treatment, diagnosis or surgery mentioned above, surgical techniques are specifically excluded from patent protection in these regions. However, instruments for use in surgery, diagnosis or therapy may be patented. In addition, diagnosis based upon a sample obtained from the body is allowable and should, accordingly, be limited to in vitro applications in a patent application.Further notes pertaining to biotechnological inventions and patents

With the great increase in biotechnological patent filings based upon new and advanced sequencing and fractionation technologies, foreign examining Patent Offices have introduced more onerous requirements on patent applicants filing patent applications for technologies relating to this field, in order to counter the granting of overbroad patents. The patent examiners' objections relate particularly to the patent requirements for inventiveness, utility and sufficiency of disclosure. We require a full disclosure of your invention in order to fully and clearly describe the invention in sufficient detail in the

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patent application. Although South Africa no longer requires patent applicants to disclose the best method of performing an invention in the patent specification, this patent requirement is still required by the Patent Offices of numerous foreign jurisdictions and it is a requirement that persons skilled in the field of your technology be able to replicate your results by following the instructions in the patent specification without undue experimentation. Similarly, one cannot obtain general patent protection for DNA sequences of a novel gene in a number of species if one has only sequenced a single vertebrate or invertebrate example. Description of the species usually does not allow protection for the genus in patents in the biosciences. We can only protect what you have invented at the time of filing the patent application and cannot artificially extend your patent rights to protect aspects that you have not shown experimentally in the patent application.

Also, DNA sequences for which no function has been demonstrated are generally not considered patentable any longer. On-line motif shopping is not enough and experimental results confirming the predicted function(s) are increasingly being called for by foreign examining patent offices.Micro-organisms and sufficiency of description in patent applications

As stated above, it is a requirement of patent law that the invention be sufficiently described in the patent application. In the complex field of biotechnology, it is not always possible to fully describe a microorganism in terms of physical, chemical and genetic characteristics in a patent specification. South Africa is a signatory to the Budapest Treaty which provides a solution to this patent problem - patent applicants may deposit a sample of the organism (as claimed in the patent specification) at a recognised patent depository and in doing so may overcome patent examiners' arguments as regards insufficiency of description of the microorganism in the patent application. The deposit number of the sample must be reflected in the patent specification and the deposit must have been made before or at the time of filing the patent application. Please feel free to contact us regarding the depositing of microbiological samples for your patent applications.Does obtaining patent protection preclude me from publishing my results?

No - however, you must always first file a provisional patent application before publishing your results, should you wish to protect your patent rights. You may publish your results immediately following the filing of your provisional patent application - you need not wait two or three years until your patent is granted. However, if you publish your results following the filing of your provisional patent application then you are committed to obtaining final patent protection in South Africa and any other foreign countries where you require protection. If your patent application lapses or is not completed timeously then you will lose all patent rights to your invention. As you have by then most likely published the results (and subsequently lost your patent rights), competitors may be free to copy your research without fear of prosecution. Your patent strategy and timelines should thus be seen as integral to your research planning.

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A biological patent is a patent relating to an invention or discovery in biology. It can be a composition of matter, a method for obtaining or using one or more thereof, or a product combining such things. Even when a natural biological substance itself is patented (apart from any associated process or usage), this has been permitted in the United States as long as they are sufficiently "isolated" from their naturally-occurring states. Prominent historical examples of such patents on isolated products of nature include adrenaline, insulin, vitamin B12, and unmodified genes (the latter becoming its own notable controversy as of late).

ISSUES

The 1970s marked the first time when scientists patented methods on their biotechnological inventions

with recombinant DNA. It wasn’t until 1980 that patents for whole-scale living organisms were

permitted. In Diamond v. Chakrabarty, the U.S. Supreme Court established the patentability of living

matter, provided it was truly "man-made." The subject for this particular case was a genetically-

engineered bacterium that was specifically modified to help clean up and degrade oil spills.

Since that 1980 court case, there has been much patenting of biological matter. Companies and

organizations, like the University of California, have patented entire genomes.[1] In 1998, the U.S. Patent

and Trademark Office (PTO) issued a broad patent claiming primate (including human) embryonic stem

cells, entitled "Primate Embryonic Stem Cells" (Patent 5,843,780). On 13 March 2001, a second patent

(6,200,806) was issued with the same title but focused on human embryonic stem cells.

Recently, there has been a slowdown and backlash against patenting biological material worldwide.

[edit]Controversy

Some believe that natural occurrences are not invented and thus should not be patentable. This is

especially true if the biological matter being patented can be found in humans, such as sequences

of DNA, which invokes a range of political and ethical arguments. The legal reasons for the controversy

can vary by different countries' standards for patentability. In the US, an invention must have some

"utility" but not necessarily an identified industrial application. According to Nielson and Whittaker

(2002), the “notion of ‘utility’ is less specific, it means it is useful” [2]. Beyond utility/usefulness, the US

also requires that inventions be new/novel and non-obvious.

Many outside the United States feel that the patenting of stem cells was rash and are seeking to reverse

patent rulings. In December 2006, Germany made an important precedent when it annulled the validity

of a stem cell patent. The German Federal Patent Court declared that anything made from human tissue

cannot be patented. The European Patent Office has ruled that certain stem cell lines, derived from

destruction of human embryos, were not to be granted a European patent.[3] Worldwide, people are

questioning the validity of stem cell patents. Wisconsin Alumni Research Foundation has sought to gain

approval for its US patent in Europe without success.

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The backlash against stem cell patents is also occurring in the United States, but to a lesser degree.

Currently, an appeal against the patents is being processed by two non-profit organizations: The

Foundation for Taxpayer & Consumer Rights and Public Patent Foundation along with molecular

biologist Jeanne Loring of the Burnham Institute. They are fighting the validity of the patents by arguing

that two of the patents cover a technique published in 1992, already patented by an Australian scientist.

Another claim is that the techniques tied up with the patents are rendered obvious under a 1990 paper

and two textbooks.

Advocates who speak against biological patents suggest that the techniques and processes associated

with the discovery could be patentable but not the actual biological matter itself. For example, an

advocate against biological patents would suggest that a gene associated with cancer should not be

patented, but the test used to detect the gene could be.

There is some political and ethical controversy over whether these patents advance technology by

providing scientists at companies and universitieswith an incentive to create, or if they hinder basic

bench research via litigation or threat of litigation. The case that there are negative effects on basic

research appears to be mostly driven by academic law professors, and not by practicing university

scientists. See for example this page at The Hastings Center's website and this document at the journal,

Academic Medicine. There is data showing that gene patents have little to no effect on basic university

research provided at the Science Progress Blog.

There is also some controversy over whether and to what extent companies controlling gene patents

hinder clinical research and practice. One of the points raised in the 2009 Myriad case, was that Myriad

allegedly made efforts to prevent clinical trials to explore just how good their test was[citation needed] and that

Myriad's enforcement of its patent rights has prevented patients from receiving second opinions

regarding their test results.

Finally, the general controversy over the price of medical treatments comes into play. By strictly

enforcing its patent rights, Myriad has been able to charge a premium price for BRCA testing. [4]

While there is some controversy concerning the patenting of isolated genes and the way those patents

are used, and there is controversy concerning patents on the diagnostic uses of genes (the real source of

dispute in the Myriad court case), it is difficult to find controversy surrounding patents on genes that are

used to manufacture therapeutic proteins (for an example of patents on therapeutic proteins, the drug

candidate that is the subject of the early part of the movie 'Extraordinary Measures' was covered in part

by a classic gene patent, US Patent 6,770,468.[2]) There is also little controversy concerning the role of

gene patents in the chemical industry—for instance in the manufacture of enzymes used in consumer

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products or industrial processes.[3] In descriptions of the controversy over "gene patents", it is rare to

find references to these everyday uses of genes and gene patents.[citation needed]

In September 2010 in Australia, Melissa Parke, a member of Parliament, announced that she intends to

make a motion calling for amendments to the Patents Act so gene patents would no longer be

recognized for reasons similar to those in the Myriad case, discussed below. A news article on this

is here.

[edit]

Current Issues:

Gene patents ruled invalid by a U.S. federal court; ruling being appealed

A complaint against Myriad Genetics and the U.S. Patent and Trademark Office filed in 2009 by

professional medical organizations, doctors, and patients, all represented by theAmerican Civil Liberties

Union, sought to invalidate and discontinue all patents for naturally-occurring genes, which have thus

far been issued on the grounds that such genes are "isolated and purified" to a non-naturally-occurring

state. Myriad owns some of its patents; some were licensed from University of Utah. Specific claims, but

not all claims, in seven of Myriad's 23 patents on BRCA1 and BRCA2 were challenged in the complaint.

The challenged claims covered the isolated genes as well as diagnostic methods.

Many people working in the patent field had predicted that the courts would throw out this case.[3]

However, the case was accepted, and all the challenged claims were ruled invalid on March 29, 2010

by United States District Court Judge Robert W. Sweet, a judge in the U.S. District Court for the Southern

District of New York.[2][3]

The claims that had not been challenged still stand.[3][5]

Judge Sweet's 152–page decision ruled that the challenged claims to the isolated gene sequences had

been "improperly granted" because they claimed unpatentable subject matter; the claims to the

diagnostic methods were found invalid under the recent In re Bilski decision.[3] Because the case could

be decided with patent law, Judge Sweet did not look at the challenge on First Amendment grounds and

dismissed them without prejudice.[3][5] In his decision handed down March 29, 2010, the judge rejected

the legal equivalency between 'chemical compositions' like purified adrenaline and DNA. In his

opinion [4] Judge Sweet said: "The information encoded in DNA is not information about its own

molecular structure incidental to its biological function, as is the case with adrenaline or other chemicals

found in the body...this informational quality (of DNA) is unique among the chemical compounds found

in our bodies, and it would be erroneous to view DNA as 'no different' than other chemicals previously

the subject of patents....DNA, in particular the ordering of its nucleotides, therefore serves as the physical

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embodiment of laws of nature - those that define the construction of the human body…the preservation

of this defining characteristic of DNA in its native and isolated forms mandates the conclusion that the

challenged composition claims are to unpatentable products of nature."

The decision could prove far-reaching for the biotechnology field.[6][7]

However, on March 30, 2010, Myriad announced that it will appeal the decision.[8] On June 16, 2010,

Myriad filed its Notice of Appeal.

On October 29, 2010 the United States Department of Justice filed an amicus brief in this case.

The U.S. amicus brief supports Judge Sweet's decision on gene patents in some respects, and argues

against it in others. The amicus brief makes a distinction, on the one hand, between DNA that is isolated

and altered, and on the other hand, DNA that has simply been isolated. It argues that isolated and

altered DNA should be patentable, whereas DNA that is simply isolated should not be patentable. It

reads: "...the district court erroneously cast doubt on the patent-eligibility of a broad range of manmade

compositions of matter whose value derives from the information encoding capacity of DNA. Such

compositions—e.g., cDNAs, vectors, recombinant plasmids, and chimeric proteins, as well as countless

industrial products, such as vaccines and genetically modified crops, created with the aid of such

molecules—are in every meaningful sense the fruits of human ingenuity and thus qualify as "'human-

made inventions'" eligible for patent protection.... The district court therefore erred in invalidating the

challenged composition claims, such as claim 2 of the '282 patent, that are directed solely to cDNAs. The

district court correctly held, however, that genomic DNA that has merely been isolated from the human

body, without further alteration or manipulation, is not patent-eligible."[9]

ISSUES Contd.,

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