business law ipr in india

7/29/2019 Business Law IPR in India

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BUSINESS LAW

INTELLECTUAL PROPERTY RIGHTS

IN INDIA


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INDEX

Introduction to Intellectual Property

Rights...................3

Protecting Intellectual Property

Rights...................3

Reasons for the growing importance of Intellectual Property

Rights...........................3

Why Intellectual Property infringements happen?

..........................4

India in Intellectual Property Rights protection: An International

purview...7

Structure of Intellectual Property Offices in

India..................8

Domestic laws related to

IPR...9

Intellectual Property Rights in computer

software....................10

Indian Copyright

Act...................11


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Department of Industrial Policy and Promotion (DIPP) and

IPR...............................................12

Intellectual Property Appellate Board (IPAB)

..................12

Impact of

Modernization.................13

Current Issues related to Intellectual Property Rights protection in

India................15

Conclusion and future

ahead.16

Bibliography

20

Introduction to Intellectual Property:

The term Intellectual Property (IP) reflects the idea that its subject matter is the product of

the mind or the intellect. These could be in the form of Patents, Trademarks,

Geographical Indications and Industrial Designs, Layout-Designs (Topographies) of

Integrated Circuits, Plant Variety Protection and Copyright.

Intellectual Property, protected through law like any other form of property, can be a

matter of trade, that is, it can be owned, bequeathed, sold or bought. The major features


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that distinguish it from other forms are their intangibility and non-exhaustion by

consumption.

Intellectual Property is the foundation of knowledge-based economy. It pervades all

sectors of economy and is increasingly becoming important for ensuring competitiveness

of the enterprises.

Protecting Intellectual Property Rights:

Experts say that in coming years, corporate battle for supremacy will neither be for market share

on the streets of Bangalore nor Mumbai nor in Dalal Street or Wall Street for large sums of

money. It will not be fighting global cost competitiveness either. It will be before the judicialforum in public visibility and finally behind closed doors with the help of private arbitrators, and

the subject matter of dispute will be intellectual property.

The corporate world is already spending an increasingly large amount of time and money either

defending or obstructing grant of or prevention of the use of IPR (intellectual property rights).

Reasons for the growing importance of Intellectual Property Rights:

India joining the WTO agreement on TRIPs is a recent phenomenon. In such a scenario, there are

two influences impacting the corporate:

1. The markets are getting restructured on the back of IPR, and provide a kind of

first-mover advantage and a strategic opportunity to re-write the market

equation. This is a positive influence.

2. A barrieragainst competition, and ability to realize monopoly or super normal

rent/returns. This is a not-so-socially-positive move, yet is powerful and

strategically important.

The most important factor in such a situation is the faith that the IPR once granted will be a

talisman against competition and any infringement can be fought through the legal system and

the predator punished with penalties. However, the peculiarities of the patent system have made


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India Inc. sit up and think again about whether the legal forum is the best way to protect the

commercial interests of the patentees innovation. Mature corporate are for sure moving away

from litigation as a way to deal with or protect their property rights.

Why Intellectual Property infringements happen?

A close look at some of the known and contested infringements shows that the existence of three

factors simultaneously encourages the predator to be adventurous:

1. Innovators of new products often are under compulsion to recover their costs through

product pricing, and this very model of recovery sows the seeds for infringement.

Higher the R&D (research and development) expense, higher the pricing premium

and larger is the menace of infringement. Often, a market for low-tech products gets

created quickly and at a significant price discount.

2. The spurious sellers and sophisticated reverse engineers who sell a variant of the

original product, which are two sides of the same coin, and hence, response will have

to be different.

3. The way we fund commercial research can also be the culprit. Or it can also be that

the inventor over-engineers the product and ends with a classic market dilemma.

However, there are more factors to the growing infringement of Intellectual Property:

Successful infringers are smart guys, and they have the ability to either reverse engineer

the product at lower costs and/or quickly pass it off in the market as original. They

understand and exploit the imperfections of technology and the market.

The real problem is not about reverse engineering or developing a copycat at half the cost.

It is the lack of access to complimentary assets and facilities which are still holding

infringements at lower-than-possible levels.


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The Belief that the violator can get away with or at best minimal damage is a critical

requirement and is based on a clear appreciation of the imperfections of the law, be it its

structure and evolutionary nature or its lax implementation.

Successful infringers have a realistic understanding and the ability to exploit the

imperfections of the technology, market and the legal protection the inventor enjoys. This

is in sharp contrast to the patent-holder who swears by his often over-engineered product,

justifies its high pricing and hangs to the patent as a talisman.

A patent, to begin with, can be thought of as a three-way contract, between the inventor,

the granting Government and the public at large. The problem starts here, as at the stage

of patenting the inventor has little knowledge of the source, form and time of the possible

challenge, from the vaguely defined public at large. The patentee compounds this

problem by working to obtain a patent as an end in itself.

There are several reasons why making patents work commercially is important:

Cognitive bias of the administrator: Commercially successful patents have been so not

because of the legal protection they enjoy, but because of the way they work the patent to

be commercially efficient.

Though the innovation process in industries differs, the legal process has a one-size-fits-

all approach. A dispute in a judicial forum does not guarantee success for the original inventor, despite

its impartiality. Research has shown that cognitive bias is sharper in patent and

intellectual property issues. The context of a challenge/infringement is not necessarily the

same as the original grant of the patent. The law on the subject is still young and

evolving.


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Lifespan of products and technology is becoming shorter, but the judicial process is

becoming longer. A patent gives its holder a protection of two decades and the possibility

that the product/technology is succeeded by the next generation during this period is very

high. Technology and pharma companies are examples of how a technology can become

dated in a few years a two decade patent protection in most cases is irrelevant.

It will be to the infringers delight to drag the dispute in a judicial forum for a decade, as

by then, few other generations of technology/invention would have happened. Winning

an infringement suit does not automatically lead to injunction on the infringer, as the

courts consider it only on demonstration of its need.

Patent protection versus catch-up time: In reality, what the inventor enjoys is essentially a

catch-up time before the invented around version hits the market.

The protection strategies of the inventor should therefore revolve around: a) lengthening

the catch-up time, and b) when the catch up is about to happen, move to your next

advantage, which means becoming a serial inventor. Reverse engineering a well-oiled

R&D set-up is not as easy as reverse engineering a product.

Research has shown that catch-up time works effectively in certain industries such as auto

parts, pharma and telecommunication, and not so in the case of electrical parts industry.


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Mechanisms which are required to achieve a longer catch-up time include technology

bundling, technology concealing, and cross licensing.

In intellectual property (IP) protection, India is rated higher than China and the Czech

Republic, but comes behind the US, the UK, Canada and Taiwan, according to Ernst &

Young and Indian Semiconductor Association report on the semiconductor sector

competitiveness.

In a benchmarking study, E&Y and ISA found that barring the Czech Republic, India hasthe least number of US patent applications and grants to its credit. This is because design

companies in India, being captive arms of multinational companies and third party service

providers, handle some portions of projects rather than execute the entire IP or product

development projects on turnkey basis. However, the report found that there could be

several small Indian companies creating IP but not filing for a US patent owing to the

substantial cost involvement.

India in Intellectual Property Rights protection: An International purview

A UN agency, namely, World Intellectual Property Organization (WIPO) based in

Geneva administers treaties in the field of intellectual property. India is a member of WIPO.

Department of Industrial Policy & Promotion is the nodal Department in the Government of

India for all matters concerning WIPO.

India is also member of 2 major treaties, namely, Paris Convention for the Protection of

Industrial Property (relating to patents, trademarks, designs, etc.) of 1883 and the Berne

Convention for the Protection of Literary and Artistic Works (relating to copyright) of 1886.


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Apart from these, India is also a member of the Patent Cooperation Treaty (PCT) which

facilitates obtaining of patents in several countries by filing a single application.

India is also a member of the World Trade Organization (WTO). The WTO agreement,

inter-alia, contains an agreement on IP, namely, the Agreement on Trade Related Aspects

of Intellectual Property (TRIPS). This Agreement made protection of intellectual

property an enforceable obligation of the Member States. TRIPS Agreement sets out

minimum standards of intellectual property protection for Member States.

India has complied with the obligations contained in the TRIPS Agreement and

amended/enacted IP laws.

Bilateral cooperation agreements (MoUs) have been entered into with UK, France, USA,

European Patent Office and Japan. These focus on human resources development, capacity

building and awareness and outreach activities.

Multilateral Cooperation: India has an active cooperation programme in intellectual

property matters with WIPO. These, inter alia, include organization of joint seminars and

workshops and study programmes besides technical assistance by WIPO experts.

Structure of Intellectual Property Offices in India:
http://ipindia.nic.in/ipr_bilaterals/dipp_bilaterals.htmhttp://ipindia.nic.in/ipr_bilaterals/dipp_bilaterals.htm


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Domestic laws related to IPR:

There are various laws related to IPR in India:

The Copyright Act 1957

The Patents Act 1970

The Trademarks Act 1999

The Designs Act 2001

The Patents Rules 1972

The Copyrights Rules 1958

The Design Rules 2000

The Trade Rules 2001

The Geographical Indications Act 1999

The Semiconductors Integrated Circuits Layout-Design Act, 2000

The Information Technology Act 2000

The framework of IPR laws has undergone a lot of changes over the last few years around the

world with well established minimum bench marks or standards. India too has witnessed the

enactment of major legislative initiatives with regard to stronger protection of IPRs in harmony

with our obligations under TRIPS. These include:

1. The Patents (Amendment) Act, 2005.

2. The Trade Marks Act, 1999 which repeals and replaces the Trade and Merchandise

Marks Act, 1958.


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3. A legislation for the protection of geographical indications called the Geographical

Indications of Goods (Registration & Protection) Act, 1999.

4. The Designs Act, 2000 which replaced the Designs Act, 1911.

Intellectual Property Rights in computer software:

In India, the Intellectual Property Rights (IPR) of computer software is covered under the

Copyright Law. Accordingly, the copyright of computer software is protected under the

provisions of Indian Copyright Act 1957. Major changes to Indian Copyright Law were

introduced in 1994 and came into effect from 10 May 1995. These changes or amendments made

the Indian Copyright law, one of the toughest in the world.

The amendments to the Copyright Act introduced in June 1994 were in themselves, a landmark

in the India's copyright arena. For the first time in India, the Copyright Law clearly explained:

the rights of a copyright holder

position on rentals of software

the rights of the user to make backup copies

The amendments imposed heavy punishment and fines for infringement of copyright of

software.

Most software is easy to duplicate and the copy is usually as good as original, the Copyright Act

was greatly in demand. According to this Act, the infringer can be tried under both civil and

criminal law.

According to section 16 of this Act, it is illegal to make or distribute copies of copyrighted

software without proper or specific authorisation. The only exception is provided by section 52

of the Act, which allows a backup copy purely as a temporary protection against loss, distribution

or damage to the original copy. The 1994 amendment to the Copyright Act also prohibits the sale

or hiring, or any offer for sale or hire of any copy of the computer program without specific

authorisation of the Copyright holder.


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A civil and criminal action may be instituted for injunction, actual damages (including infringer's

profits) or statutory damages per infringement etc. With these amendments, even the criminal

penalties have substantially increased. Section 63 B, stipulates a minimum jail term of 7 days

which can be extended up to 3 years. The Act further states the fine ranging from Rs. 50,000 to 2,

00,000.

Government agencies have been very actively participating in protecting of the rights of the

copyright holder. Both Ministry of Information Technology and Ministry of Human Resource

Development have been active in incorporating amendments to the Indian Copyright Act. These

agencies are now helping the law enforcing agencies e.g. the Police in enforcing the law. Today,

NASSCOM officers and those of these government agencies are committed to enforce copyright

laws and eradicate the menace of software piracy.

Indian Copyright Act :

"Computer Programme" has been included in "Literary Works". The definition reads as follows:

"Literary Work" includes computer programmes, tables and compilations including

computer databases.

"Computer Programme" means a set of instructions expressed in words, codes, and

schemes or in any other form, including a machine-readable medium, capable of causing

a computer to perform a particular task or achieve a particular result.

"Author" means in relation to any literary, dramatic, musical or artistic work, which is

computer, generated the person who causes the work to be created.

"Computer includes any electronic or similar device having information processing

capabilities".

Markets are churning rapidly on the back of IPR and old equations being re-written with

significant economic impact. The IPR law is still young and evolving. What India needs at this

juncture is a forum with teeth, to balance and protect the inventor, the predator and, of course, the

market. What one needs is not another judicial forum, but a forum of inventors, infringers, and

the market.


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Department of Industrial Policy and Promotion (DIPP) and Intellectual Property Rights

(IPRs):

DIPP is concerned with legislations relating to Patents, Trade Marks, Designs and Geographical

Indications. These are administered through the Office of the Controller General of Patents,

Designs and Trade Marks (CGPDTM), subordinate office, with headquarters at Mumbai as

under:

a) The Patents Act, 1970 (amended in 1999, 2002 and 2005) through the Patent

Offices at Kolkata (HQ), Mumbai, Chennai and Delhi.

b) The Designs Act, 2000 through the Patent Offices at Kolkata (HQ), Mumbai,

Chennai and Delhi.

c) The Trade Marks Act, 1999 through the Trade Marks Registry at Mumbai (HQ)

Chennai, Delhi, Kolkata and Ahmedabad.

d) The Geographical Indications of Goods (Registration & Protection) Act, 1999 through

the Geographical Indications Registry at Chennai.

The Controller General of Patents, Designs and Trade Marks (CGPDTM) is also in-charge of theOffice of the Patent Information System, Nagpur and the Intellectual Property Training Institute,

Nagpur. The office has 446 personnel in the patents and designs Offices and 291 personnel in

trademarks and geographical indication Offices. Along with the legislation, rules have also been

amended to install a user-friendly system for processing of IP applications.

Intellectual Property Appellate Board (IPAB):

An Intellectual Property Appellate Board (IPAB) has been set up at Chennai to hear appealsagainst the decisions of Registrar of Trademarks, Geographical Indications and the Controller of

Patents. The following are some of the responsibilities:

IP Legislations
http://www.ipindia.nic.in/http://www.ipindia.nic.in/http://www.ipindia.nic.in/http://ipindia.nic.in/ipr/patent/patact_99.PDFhttp://ipindia.nic.in/ipr/patent/patentg.pdfhttp://ipindia.nic.in/ipr/patent/patentg.pdfhttp://ipindia.nic.in/ipr/patent/patent_2005.pdfhttp://ipindia.nic.in/ipr/design/design_act.PDFhttp://ipindia.nic.in/tmr_new/tmr_act_rules/tmr_act.pdfhttp://ipindia.nic.in/ipr/gi/gi_act.PDFhttp://www.ipab.tn.nic.in/http://www.ipindia.nic.in/http://www.ipindia.nic.in/http://ipindia.nic.in/ipr/patent/patact_99.PDFhttp://ipindia.nic.in/ipr/patent/patentg.pdfhttp://ipindia.nic.in/ipr/patent/patent_2005.pdfhttp://ipindia.nic.in/ipr/design/design_act.PDFhttp://ipindia.nic.in/tmr_new/tmr_act_rules/tmr_act.pdfhttp://ipindia.nic.in/ipr/gi/gi_act.PDFhttp://www.ipab.tn.nic.in/


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Copyright is protected through Copyright Act, 1957, as amended in 1999 - administered

by the Department of Higher Education.

Layout of transistors and other circuitry elements is protected through the Semi-conductor

Integrated Circuits Layout-Design Act, 2000 - administered by the Department of

Information Technology.

New varieties of plants are protected through the Protection of Plant Varieties and

Farmers Rights Act, 2001 - administered by the Department of Agriculture and

Cooperation.

Article 39 of the TRIPs Agreement mandates protection of test data submitted to

regulatory authorities for obtaining marketing approvals against unfair commercial use.

A Committee under the chairmanship of Secretary, Department of Chemicals and Petro-

chemicals has examined this issue and submitted its Report to the Government.

Impact of Modernization:

The growing role of India in international IPR routines and the realization about their

importance has led to a surge in the number of such declarations and filings in India. The

following figures suggest so:

1. Patents:

The filing of patent applications has increased from 4824 in the year 1999-2000 to 28,882

applications in the year 2006-2007.

The number of applications examined has gone up to 14,119 in 2006-07 against the figure

of 2824 in the year 1999-2000.

Statistics for patent filing:

1999-

20002000-01 2001-02 2002-03 2003-04 2004-05 2005-06 2006-07

Applications

filed4824 8503 10,592 11,466 12,613 17,466 24,415 28,882

Applications

Examined2824 4264 5104 9538 10,709 14,813 11,569 14,119
http://education.nic.in/CprAct.pdfhttp://www.mit.gov.in/download/siclda.pdfhttp://www.mit.gov.in/download/siclda.pdfhttp://www.mit.gov.in/download/siclda.pdfhttp://agricoop.nic.in/PPV&FR%20Act,%202001.pdfhttp://agricoop.nic.in/PPV&FR%20Act,%202001.pdfhttp://chemicals.nic.in/DPBooklet.pdfhttp://education.nic.in/CprAct.pdfhttp://www.mit.gov.in/download/siclda.pdfhttp://www.mit.gov.in/download/siclda.pdfhttp://agricoop.nic.in/PPV&FR%20Act,%202001.pdfhttp://agricoop.nic.in/PPV&FR%20Act,%202001.pdfhttp://chemicals.nic.in/DPBooklet.pdf


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Patents

Granted1881 1318 1591 1379 2469 1911 4320 7359

Scope of Patentability

Section 2: Definitions and Interpretations

1. Clause (j) defines invention as follows : - 'invention' means a new product or process involving

an inventive step and capable of industrial application; In order to limit patentable subject matter

it is suggested that the definition of invention could be changed as follows : 'invention' means a

basic new product or process involving inventive step and capable of industrial application. The

scope of patentable inventions can be contained only through the definition of invention.

2. Clause (ta) defines pharmaceutical substance as follows: - 'pharmaceutical substance' means

any new entity involving one or more inventive steps. The above definition is quite broad and not

specific. Even Mashelkar Committee on R&D for pharmaceuticals had made re-commendation in

this respect. The definition ought to be as follows: (ta) 'pharmaceutical substance' includes new

drug molecule involving one or more inventive steps.

What is not patentable?

Clause (d) reads as follows: - the mere discovery of a new form of a known substance

which does not result in the enhancement of the known efficacy of that substance or the

mere discovery of any new property or new use for a known substance or of the mere use

of a known process, machine or apparatus unless such known process results in a new

product or employs at least one new reactant.

The explanation under clause (d) reads as follows : Explanation :- For the purposes of this clause,salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of

isomers, complexes, combinations and other derivatives of known substance shall be considered

to be the same substance, unless they differ significantly in properties with regard to efficacy.


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The above explanation can give different interpretations for different purposes. Moreover when

new molecules only are to be patentable salts, esters, etc. and other derivatives of the known

substance should not be treated as patentable inventions. The purpose of clause (d) and

explanation should be to contain the patentable subject matter. The explanation should be either

deleted or modified as follows: Explanation :- For the purposes of this clause, salts, esters, ethers,

polymorphs, metabolites, pure form, particle size, isomers, complexes, combinations and other

derivatives of known substance shall not be patentable.

New clause (ja) may be incorporated as follows : - inventions which do not strictly meet

the criteria of industrial application e.g. stem cell, partial gene fragments, research tools,

PCR technique, machine based embedded bio-informatics software, genomic information

and data base. Clause (j) in the Patents Act reads as follows: - plants and animals in whole or any part

thereof other than micro-organisms but including seeds, varieties and species and

essentially biological processes for production or propagation of plants and animals.

Micro-organisms and non-biological and micro-biological processes are under mandated

review in the WTO. The review was initiated in 1999 and till now final decision has not

yet been taken. In addition to this no definition of micro-organism has been provided in

the amended Act or even in the TRIPS Agreement. Micro-organisms occur in nature,

there is genetically modified micro-organism and then they perform certain activities.

Since micro-organism occurs in nature they are discoveries and not inventions and as

such they should not be patentable. Genetically modified micro-organisms perform

certain activities and as such only specific activity can be patented only as process

patents. Because of these reasons it is desirable that micro-organisms are excluded from

patentability.

Section 5: The amended Act provides that Section 5 shall be omitted. However, it is

important to be more specific about the scope of patentability. Because of the new scope

of patentability Section 5 should read as follows: Section 5 - Patents shall be available for

basic new inventions including pharmaceutical substances as defined in Section 2 clause

(ta) whether products or processes in all field of technologies provided that they are new,


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involve an inventive step and are capable of industrial application excluding inventions

not patentable as stipulated under Section 3.

Section 11 A Sub-section (7) The third proviso of this sub-section reads as follows : -

provided also that after the patent is granted in respect of applications made under sub-

section (2) of section 5, (Mail Box applications filed during 1995-2004) the patent holder

shall only be entitled to receive reasonable royalty from such enterprises which have

made significant investment and were producing and marketing the concerned product

prior to the 1st day of January 2005 and which continue to manufacture the products

covered by the patent on the date of grant of the patent and no infringement proceedings

shall be instituted against such enterprises. Even the provisions in sub-clause (7) about

'reasonable royalty' and 'significant investment' can create unnecessary claims and

objections to meet the objectives of allowing enterprises to continue manufacturing of the

product if the patents are granted. In addition the applications should be dealt with only

on the basis of proposed new definitions of invention and pharmaceutical substances.

Section 25

Section 117 A in sub-section 2 provides for sections for which appeals shall lie to the appellate

board. The amended version of this section provides that only sub-section (4) of Section 25

relating to post-grant opposition would be appealable. No appeal possibility is thus available in

regard to pre-grant opposition. It is important that even any decision taken relating to pre-grant

opposition should also be appealable both by the patent applicant and the opponent. In view of

this, it would be appropriate if decisions taken under the entire Section 25 become appealable.

Does Indian patent law stifle innovation?

Ultimately, the debate boils down to whether disallowing patents on incremental innovation will

discourage firms from doing fresh research.

Section 3(d) forces firms to focus efforts on innovation and hardcore research instead of

tinkering with known substances

The aggressive posture of the Geneva-based IFPMA and the Washington-based PhRMA on the

Madras High Court Order rejecting the Novartis challenge to Sec 3 (d) of the Indian Patents Act


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is not surprising because the Indian Patent Act will now become a model law for several

developing countries, defeating the IFPMA and PhRMA objective of establishing a TRIPs-plus

IPR regime.

Likewise, the threat of depriving Indians of new research products seems hollow. If they do not

register their patents in India, the domestic industry has the proven capability to reverse-

engineer the same and provides them at much lower prices. If they register the patent and do not

work it, India's patent law has adequate mechanism to deal with such situations and ensure that

the product is available to the needy.

More importantly, what is there in the new Section 3(d) that is causing heartburn? It creates a bar

to differentiate discovery from invention. The patent applications that cannot cross the bar are

treated as "trivial changes" not eligible for patents.

Novartis argued in the Madras high court that the bar be removed as it is not clearly defined.

This would have allowed trivial changes to slip through and be eligible for patents. The logical

thing was to seek a clearer definition of the bar than seeking its removal. But obviously, that

would not have served the purpose of those wanting to patent trivial changes.

2. Trademarks:

The backlog of unexamined trademark applications of approximately 5 lakh cases has

been brought down to zero.

Renewal of Trademarks certificates are now being done instantaneously in clear cases and

new applications are examined within one week.

As against only 8,010 registrations in 1999-2000, 13 times more TMs were registered in

2006-07, that is, 109,361.

3.38 lakh trademark certificates were issued during the last 3 years whereas only 1.65

lakh marks were registered in 64 years (since 1940 to 2004).

Statistics for trademarks:

1999-2000 2000-01 2001-02 2002-03 2003-04 2004-05 2005-06 2006-07


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Filed 66,378 84,275 90,236 94,120 92,251 78,996 85,699 1,03,419

Examined 42,500 70,115 1,59,735 2,49,003 89,958 72,091 79,200 85,185

Registered 8010 14,202 6204 11,190 39,762 45,015 1,84,325 1,09,361

3. Geographical Indications:

39 Geographical Indications products have been registered since September, 2003. These

include Darjeeling Tea, Chanderi Saree, Pochanpally Ikat, Solapur Chaddar, Mysore Silk,

Kullu Shawl, Bidriware, etc.

4. Designs:

The filing of applications for Design has increased from 2874 in 1999-2000 to 5372 in

2006-07.

The number of applications examined has also gone up to 5179 in 2006-07 against the

figure of 2067 in 1999-2000.

The number of Designs registered has also increased from 1382 in 1999-2000 to 4431 in

2006-07.

Current Issues related to Intellectual Property Rights protection in India:

Establishment of NIIPM: The Government has approved a proposal for establishment

of a National Institute for Intellectual Property Management (NIIPM) at Nagpur. The Institute

will perform training, education, research and think tank functions.

Modernization of IP Offices: Modernization of IP Offices will provide additional

human resources, higher level of computerization to support on-line processing, strengthening

of data-base and novelty search facilities, awareness generation activities, accession to

international treaties/conventions is being taken up in 11th Five Year Plan.


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Madrid Protocol on Trademarks: Madrid Protocol, administered by WIPO, is a

simple, facilitative and cost effective system for registration of International Trademarks.

Indias membership of Madrid Protocol will help Indian companies to register their trade marks

in the member countries of the Protocol through a single application. An exercise to amend the

Trade Marks Act is underway to enable joining the Madrid Protocol.

ISA and IPEA: A proposal is under consideration to seek recognition for the Indian

Patent Office as an International Searching Authority (ISA) and International Preliminary

Examining Authority (IPEA) under the Patent Co-operation Treaty. ISA and IPEAs provide

search reports on novelty and examination reports on patentability of inventions.

Mashelkar Committee: The Government of India has set up a technical expert group

under the chairmanship of former Director General of CSIR (Dr. R.A. Mashelkar) to examine

the following two patent law issues:

o Whether it would be TRIPS compatible to limit the grant of patent for

pharmaceutical substance to new chemical entity or to new medical entity

involving one or more inventive steps; and

o Whether it would be TRIPS compatible to exclude micro-organisms from

patenting.

Conclusion and future ahead:

Currently IPR laws relate to Geographical Indications, Industrial Designs and layout

designs of Integrated Circuits. Protection of Undisclosed Information (Trade Secrets) is

still not within the ambit of Customs Laws. Section 11(2) and has to be amended.

Formulation of Rules which would lay down detailed procedures enabling IPR holders to

approach Customs authorities for enforcement of IPR laws at borders which is already

under the active consideration of the Board.


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Training courses to sensitize customs officers on IPR and their role in enforcing IPR at

borders to be organized on a large scale.

Amendments are needed under Copyrights Act, Trade Marks Act and other IPR laws to

empower Central Excise officers to seize counterfeit goods manufactured in India and

take appropriate action under Central Excise Act 1944 to prevent illicit manufacturing of

counterfeit goods.

Bibliography:

1. www.nipoonline.org

2. www.iprindia.com

3. www.iprlawindia.org

4. www.laws4india.com/ipr.asp

5. www.indianembassy.org/policy/ipr/ipr_2000.htm

6. www.ficci.com/media-room/speeches-presentations/2007/apr/gauri/AniceJoseph.ppt

7. www.dipp.nic.in/ipr.htm


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