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LawQuest 2010. All Rights Reserved
Presented by
Poorvi Chothani, Esq.LawQuest, Mumbai
www.lawquestinternational.com
Intellectual Property and
Employment Considerations ofDoing Business in India
2nd International Business Conference
at Tallinn, Estonia
May 26 28, 2010
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Doing Business in India
Some Forms of Doing Business Agent
Distribution
Representative Office
Liaison Office
Branch Office
Project Office
Joint Venture
Wholly Owned Subsidiary
Private Limited Companies
Public Limited Companies
Limited Liability Partnerships
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Some Important Issues
Intellectual Property Laws
Employment Laws
Issues Related to Expatriates
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IP India and Global Laws
Member of the World Trade Organization (WTO)
Trade Related Aspects of Intellectual Property RightsTRIPS Compliant
Berne Convention
Paris Convention
Universal Copyright Convention
Patent Cooperative Treaty
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Relevant Indian IP Laws
The Copyright Act, 1957 and the Copyright Rules, 1958
The Patents Act, 1970 and the Patents Rules, 2003* with relevant
Rules and Amendments
The Trademarks Act, 1999 and the Trademarks Rules, 2000
The Biological Diversity Act, 2002
The Geographical Indication of Goods (Registration and Protection)
Act, 1999
The Designs Act, 2000and the Designs Rules, 2001* with relevant
Rules and Amendments
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Trademarks
Common Law Protection
First to Use
Proposed to Be Used
Similar Marks
Phonetic Similarity
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Protection of International Trademarks
Famous Marks - Statutory Protectionsince 2003
earlierprotected under common law Needs to be well known in at least one relevant
section of the public in Indiaimportant criteriaamong many others
Registration of Trademarks Takes aboutTwo years
Madrid Protocol
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Copyrights Significant Provisions
Protection give to qualifying international and workspublished in India International protection in Berne Convention countries
Work For Hire Employer-employee relationship
Consultant or contractor relationship
Joint ownership joint working
Compulsory Licensing Lack of working copyright
Contd
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Copyrights Significant Provisions
Version Recordings
Broad fair use exceptions
Non-commercial personal use deemed as fair use anddoes not constitute infringement.
Inalienable moral rights
Waiver Concept does not apply to computer software
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Indian Patent Applications
Patent Applications for: inventions originating in India; or
involving an Indian resident inventor
must first be filed in India, unless a foreign filing licensehas been granted by the Indian Patent Office
Registration takes three to four years
PCT Applications two to three years
First to File vs. First to Invent
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Patents - Some Special Provisions
Compulsory licenses for export of medicines to countries whichhave lack of infrastructural or production capacity for meeting
public health emergencies
Patents need to be worked Reporting requirement every
calendar year
Compulsory licensing of patents that have not been worked
In case of Infringement - Only civil remedy of injunction,
damages, and accounts for profits
Research and Experimental Use
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Patents - Significant Provisions
Patents Joint Owners
- Consent
- Accounting
- Rights
- Infringement
- Responsibilities
Computer Programs and business methodsper
se not patentable
Protection of computer programs as trade secrets
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Assignment of IP Rights
Of Copyright
Territory
Term
Lapse
Consent
Of Patents
Joint Owner Needs Consent of other owner(s) toassign rights
Valid only if in writing and registered in India
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Data Privacy and Protection
No Specific Statute
Existing legislation provides limited protection
Information Technology Act - limited protection againstcertain types of data misuse or computer offencesinvolving unauthorized access to data on computers andnetworks
E.g. hacking, damage to computer source code, virusintroduction
Civil and criminal remedies available
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Legal Framework for Data Privacy
The Constitution of India
The Information Technology Act, 2000 Protects against computer offences
Provides for both civil and criminal remedies
The Specific Relief Act, 1963 To enforce specific performance provisions in the contract
against the Indian service provider
The Indian Penal Code, 1860 andCriminal Procedure Code of 1973 (corporealproperty)
To prosecute incidents of theft and criminal breach of trust andfraud
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Other Protection
Specific Relief Act to Enforce Protective ContractualProvisions
Indian Penal Code: Limited criminal recourse available:
To prosecute incidents of theft, criminal breach of trust and fraudinvolving data
Laws extend to offenses against corporeal property only
Common Law Remedies: Civil damages and injunctive
relief available: Breach of contract
Breach of confidence
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Enforcement
In India, the enforcement system for IP rightsincludes: Civil remedies
Criminal penalties
Settlement out of court without trial
Compensatory damages
No punitive damages
Criminal prosecution in trademark and copyrightand in certain cases for patents, but not in designscases
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Introduction to Employment Laws
Industrial Laws
Social Security
Limited Social Security Schemes
Executives and Managers
Concept of Employment-At-Will
Employing Foreign Nationals
Termination of Employment
Winding Up a Business
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Other Issues
Taxation of Employees
Tax Deduction at Source
Repatriating Funds
Taxation of Salary Paid Abroad
Double Taxation Agreements and Tax Credits
C f
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IPR, Confidentiality, Negative
Covenants, Non-Compete Clauses
Ownership and Management of Intellectual
Property Rights
Confidentiality, Data Protection, Privacy
Non-Compete Clauses
Restrictive Covenants
Dispute Resolution
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LawQuests Areas of Practice
Areas of Practice
Corporate Law
Intellectual Property Law
Real Estate Law
Employment Law
Global Work Permits and
Business Visas
The U.S. The U.K.Canada India
Poland Mauritius
Australia New Zealand
Singapore The Philippines
About LawQuest
Provides Client Centric Legal Solutions
Member of the NY State Bar Association, the
ABA, IBA
Member of the American Immigration
Lawyers Association
Founder Member of the Global Migration
Action Group in AILA
Former Member of the Alliance of Business
Immigration Lawyers (ABIL) Member of the European Association of
Attorneys A Worldwide Network of Lawyers
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Thank You
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