INTELLECTUAL

PROPERTY LAWS
BACKGROUND
In Great Britain ,the concept had origins from the exercise of royal prerogative to
grant monopolies. First enactment in India in 1856,allowing exclusive rights to
inventors for 14 years.
Right to property existed only for tangible goods(movable & immovable) and a
need existed for incorporeal or intangible property too like
goodwill/patents/copyrights etc.
Signing of GATT(WTO) Agreement in 1994.Potential knowledge was regarded as
a creator of wealth and laws were needed to protect such creators.
International Patent Cooperation Treaty signed in the year 1970.
Clauses relating to Trade Related Intellectual Property Rights (TRIPS) made it
mandatory for India to introduce product patents for drugs/food
products/chemicals by 1/1/2005. This was made applicable even where only
process patents were permitted earlier.


TRIPS----7 CATEGORIES OF INTELLECTUAL
PROPERTY
Patents
Copyrights
Trade marks
Geographical indications
Industrial designs
Integrated circuits
Trade secrets/confidential information


DEVELOPMENTS IN INDIA
The Patents Act of 1856 got amended in 1872,1883,1888, and
in 1911 it was renamed as Patents & Designs Act.
In 1957, the Justice Rajagopala Ayyangar & Venkiteswaran
Committee was constituted to revise patent laws and based on
this report, the Patents Act 1970 was enacted. The rules for the
act were published in 1971 & the Act came into force on
20/4/1972.

INDIAN LAWS
1) PATENTS ACT 1970
2) COPYRIGHT ACT 1957
3) TRADE MARKS ACT 1999

THE NEED: TO STIMULATE TECHNICAL
PROGRESS
To give an opportunity to acquire exclusive rights in an invention
to stimulate technical progress in four ways:
1) Encourage research & invention
2) Induce an inventor to disclose discoveries without secrecy.
3) Reward for expenses of developing inventions to the stage of
commercial viability.
4) Induce VCs to invest capital in new lines of production

PATENT
It is protection extended to an inventor, by granting to the
inventor for a limited period, a monopolistic right by way of grant
of patent for inventing a new and useful article or a new process
of manufacture or improvement of an existing article which has
industrial application. The inventor who holds the exclusive
rights is granted the patent & called the Patentee. Patentee
holds the exclusive LICENSE. Patentee can prevent others from
using the patented invention (article or process) till the expiry of
patented period and thereafter anyone can use it. After the
period, the patentee also is obliged to work the invention on a
commercial scale.
INVENTION--DEFINITION
Any new product or process involving an inventive step and
capable of industrial application. Can be machine, apparatus or
other articles produced by manufacture. It can be improvement
of an art, method of manufacture or even a new application of
an existing product.
Must be new & useful. Must have novelty & utility
INVENTIONS
Must be an invention & not discovery
One invention one patent
Can be a substance or a process
Where it is impossible to bifurcate the article & process, only
one patent is given
INVENTIONS NOT PATENTABLE
Frivolous contentions claiming anything obvious or contrary to well
established natural laws.
Inventions contrary to public order & morality
Mere discovery of a new property or new use of a known substance which
does not enhance efficacy of that substance.
Mere discovery of a scientific principle.
Mere discovery of a machine/apparatus without resulting in any new product
A method of agriculture/horticulture
Mathematical/business method or computer programme or use of algorithms.
Topography of integrated circuits.
INVENTIONS NON PATENTABLE
Invention relating to atomic energy.
Literary, dramatic, musical, cinematographic works or TV production.
Invention which is traditional knowledge or a duplication of known properties
of traditionally known components.
Mere presentation of information
Method of performing mental act or of playing a game.
WHO CAN APPLY
True & first inventor
Assignee of true & first inventor
Legal representative of True & first inventor or Assignee after
their death
Applicant from a convention country.
WHO CANNOT APPLY
A national of any country which does not accord to Indian
citizens, the same right in respect of grant of patents as
accorded to its own nationals.
LEGAL MACHINERY
Headed by CONTROLLER OF PATENTS.
Head office at Kolkata followed by branch offices in metros.
Has a team of examiners reporting to him.
Constitutes a opposition board as & when required.
A Register of copyrights is maintained.
Procedure for Application is on the same lines as that of
patents.
PROCEDURE
Every Application has to be for one invention only and in the prescribed form
It should be filled & submitted in the Patent Office ( in
Delhi/Mumbai/Chennai/Kolkata) with provisional or complete specifications.
International applications can also be made under Patent cooperation
treaty.
Every Application for patent would be published.
When a request for examination is made by applicant, the Controller refers
the Application & Specification to an Examiner who has to prepare a report
after studying the proposal & testing sample. He has to check veracity of
claims made by applicant and if it is the subject matter of an existing patent.
Controller can then make objections which Applicant has to rectify.
APPLICATION & SPECIFICATION
All applications need to be accompanied by specification which may be filed along
with the application or within 15 months from the date of filing patent application.
SPECIFICATION: (FINAL)
It describes the title of invention, name/address/nationality of applicant.
General nature of invention, field of application and the anticipated result.
Best method of performing the invention.
Scope of invention for which protection is claimed.
Abstract of technical information ( in about 150 words)
In the event of mention of biological material in specification, then the same has to
be deposited with the authorized institution on the date of patent application and
specification shall contain characteristics of material, depository information
disclosure of source etc.



DRAWINGS & SAMPLES
Applications have to be accompanied by drawings in A4 size sheet &
sequentially numbered.
Samples to be furnished only if required by controller.
Maximum size (length) of sample/prototype is one foot.
Controller may allow amendment of application or of specification
Patent for Addition is also permitted by controller.
Priority date for claims: The date of filing complete specification is reckoned
as the priority date for claims.
OPPOSITION PROCEEDINGS
Every patent application is published.
After Application for patent is published, but before granting of patent,
any person can on specific grounds, give notice of opposition to
Controller against granting of patent. Likewise a provision exists for
such notice within one year of granting a patent.
Controller constitutes an opposition board for getting their report of
recommendations.
Thereafter the controller may give both the Applicant & opponent an
opportunity to be heard, before orders are passed to maintain, amend
or revoke the patent.
ISSUE OF PATENT
Once the Controller finds the application in order, he grants the patent
& the date is entered in the Register of Patents.
Date of granting patent is normally the date of filing Patent Application.
Term of patent is 20 years from the date of issue.
Patentee will have exclusive rights to prevent third parties from the act
of making/using/selling or importing the patented article in India.
When the patent applies to the class notified by central Govt. or used
in defense purpose, the Controller may restrict publishing of
information.
The number of Patent applications have increased from a mere 4000
in the year 2002 but it increased to 17000 in the year 2005 & 25000 in
2006.


PATENT REGISTRATION ABROAD
An applicant desirous of making an application for patent outside India must
first apply for the same in India and then apply for the same abroad after a
lapse of 6 weeks.
Written authorization of Controller to be obtained.
No directions for secrecy should be given
Controller must obtain prior permission of Central Government before granting
permission.
International application for patent has to be made in accordance with Patent
Cooperation Treaty.

PATENT INFRINGEMENT & SPECIAL POWERS OF
GOVERNMENT
In the event of infringement of patent rights, the following remedies
can be had from the court:
Compensation for damages
Injunction
Penalties
Seizure of goods
The Government has special powers to ensure that patentees put
license to appropriate commercial use & do not exploit the monopoly
status by overcharging for the product/process. In the event of failure,
they can grant Compulsory license to any other interested party after
expiry of 3 years.
Copyright Act 1957
ART ROGERS VS. JEFF KOONS
Can you build upon anothers work to create your own piece?
Koons was forced to go for a monetary settlement with Rogers.
ASSOCIATED PRESS VS STEPHARD FAIREY

The Hope poster of 2008 US Presidential campaign (Mannie Garcia)
INDIAN CASES
Barbara Bradford Vs Sahara Media
A woman of substance Vs Aparajitha ( Subir Bhowmik)
Indian Performing Rights Society Vs Eastern India Motion Pictures

WHY THIS PROTECTION
When patentee gets protection for inventions a need was felt
for creators of art, literature, music & film so that the creator
decides how fruits of his talent, labor & skill should be
reproduced.
The object was sustenance & fostering of creativity
Protection against misappropriation of goodwill.
Amendment in 1995 included computer programmes, tables and
compilations including databases as envisaged under GATT.


BACKGROUND
Like patents, many provisions of British laws had been borrowed to try
similar cases in our country. However in the year 1957, Indian
Copyright Act was passed & it became effective from 21/1/1958.
Thereafter it was amended in 1983,1984,1992,1994,1995 & 1999 to
bring it in conformity with Bern convention, Universal Copyright
convention, & agreements in WTO under TRIPS.
Provisions are similar to Patent Act 1970.
The Act envisages a mechanism for registration of copyright, but it is
optional from the creators perspective.
EXCLUSIVE MONOPOLISTIC RIGHT TO USE/COPY & RIGHT TO
PROHIBIT OTHERS FROM COPYING OF A WORK
WHO GETS COPYRIGHT
The original creator, assignees or legal heirs as in the case of patents.
Copyright is related to expression & not ideas.
Employers can have ownership of a creation if it is produced by someone
under a contract of service or apprenticeship.
Likewise if a person commissions another to make a film/portrait then the
person commissioning becomes the owner
In respect of cinematographic film & sound recording, the producer becomes
the owner.
Owner of copyright may grant interest in the right by issuing license to
authorized agent who can publish after 7 years from the first publication of
work.
License to translate foreign literary or dramatic work may be applied after
three years from its publication.
LEGAL MACHINERY
Headed by REGISTRAR OF COPYRIGHTS.
There is also a board constituted by about 14 members called
the Copyright board again headed by REGISTRAR.
It functions by having three member benches and the Copyright
board is deemed to be a civil court.
As in the case of patents, a Register of copyrights is maintained
with the Registrar.
Procedure for Application is on the same lines as that of
patents.
WHAT IS COVERED
I----Literary works(excl computer programmes, tables &
compilations, including computer data bases & dramatic works.
II----Musical works
III---Artistic works
IV---Cinematograph films
V---Sound recordings
VI----Computer programmes, tables & compilations, including
computer data bases

EXCLUSIONS
Use of copyrighted form for private use, research criticism or
review.
Computer programmes---making copies/backup for the purpose
of which it was supplied.
Reporting current events in a newspaper, magazine or by
broadcast or in a cinematographic film or by means of
photographs.
For judicial proceedings
In any work prepared by the secretariat or a legislature
exclusively for use of members

EXCLUSIONS
Copy made in accordance with law.
Reading in public any reasonable extract from a published literary or
dramatic work
Publication of short passages of literary, dramatic, musical or artistic
work for educational purposes.
Reproduction of the original literary, dramatic, musical or artistic work
by a teacher/student.
Making up to three copies of a book for a public library if the book is
not published in India
Reproduction or publication of any judgment or order of a
court/tribunal unless it has been prohibited by the court.
TERM OF COPYRIGHT
For literary, dramatic, musical or artistic work published during the lifetime of its
author, the term is 60 years from the beginning of the next calendar year
following the death of author.
For work published anonymously or pseudonymously it is 60 years from the date
of publishing the original work. But if before death the identity is disclosed, then
the first provision applies.
In posthumous works it is 60 years from the beginning of next calendar year from
date of first publishing of the work
For photographs, cinematographic films, sound recording or work of
Government/PSU it is 60 years following the next calendar year from the date of
first publishing.
Broadcasting reproduction right is given to broadcasting companies for a period
of 25 years though the performers right subsists for 50 years.

INFRINGEMENT & PENALTIES
Civil remedies as in the case of patents exist, giving right for
claiming damages & injunction suit.
Rights also exist under criminal laws & the offender could be
imprisoned from 6 months to 3 years.
Fines may also be imposed ranging from Rs.50000 to Rs.3 lacs.
TRADE MARKS ACT 1999

Replaced the erstwhile Trade & merchandise marks act 1958.
Like in the case of patents/copyrights some borrowed
provisions existed in the pre-independence period but a formal
enactment came in the year 1999 & effective from 15/9/2003
incorporating most of the requirements under TRIPS.
The highest authority is the Registrar of Trade Marks and he
issues the license.
Exclusive monopolistic right to use a certain mark/symbol/logo
etc.
The Applicant/assignees/legal heirs have the right.
TRADE-MARK MEANING, OBJECT, FUNCTIONS
Visual symbol in the form of a word, device or label applied to articles
of trade/commerce.
Object: To indicate to public that goods are manufactured by a
particular person as distinguished from those manufactured by others.
Function: Identifies product & its origin, guarantees unchanged quality,
advertises & creates an image of the product.
LAW IS BASED ON THE CONCEPTS OF DISTINCTIVENESS &
DECEPTIVE SIMILARITY.
Procedure for Application is more or less on the same lines as that of
patents.
EFFECT OF REGISTRATION
Unregistered Trade mark deprives a person of any legal right
Like patents/copyrights assignment of right is permitted so long
as it is recorded with the registrar.
A Company can register its trade mark before commencement
of its business. However its non-use could result in removal
from register.
A person other than registered proprietor can be registered as a
registered user.
Collective marks can also be registered to distinguish
goods/services of members of an association
REGISTRATION-PROVISIONS
Inclusion of service mark for seven classes of services like
banking/insurance/chit funds/real estate/lodging/entertainment
advertising etc.
Duration is for 10 years. A single Application can be used for
registration of a trade mark in more than one class.
Expanded definition: Trade mark also included shapes of
goods/packaging/combination of colors so long as it could
distinguish goods/services of one from another.
Certification mark can also be included.
Erstwhile passing off action is also brought within purview
INFRINGEMENT & PENALTIES
As in the case of Copyright, both civil & criminal action can be
taken for infringement. Use of identical or deceptively similar
marks are classified as cognizable offence, attracting penalties
from Rs.50000 to 2 lacs & imprisonment from 6 months to 3
years




COMPETITION ACT 2002
THE NEED
Repealing of MRTP Act 1969 & dismantling of MRTP
Commission
Curbing of restrictive trade practices which defeat competition
arise from Anti-competitive agreements
Prohibition of use of dominant position
Regulation on Combination.
Setting up of Competition Commission