INTRODUCTION TO

INTELLECTUAL PROPERTY

RIGHTS

Dr Bidhan Mahajon

PG Scholar VPSV Ayurveda College,Kottakkal

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IP Evolution

Property Right

INTELLECT – PROPERTY – RIGHT

Idea Expression COPYRIGHT

Idea Innovation Invention PATENT

Idea Quality + Identity TRADEMARK

Idea Appearance DESIGN

Idea Keep Confidential No Disclosure

TRADE SECRETS

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What is Intellectual Property?

Definition by WIPO

Intellectual property (IP) refers to

creations of the mind:

inventions, literary and artistic

works, and symbols, names,

images, and designs used in

commerce.4

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Paris Convention for Protection of Industrial Property

1967 ( 1989)

Berne Convention for the Protection of Literary and

Artistic Works 1971 ( 1990)

Trade-related aspects of Intellectual Property

Agreement 1994 ( 1995)

WCT ( digital agenda)

PCT 2004

International Convention for IP

Creativity (Creation Of The Mind)

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

– Design new “inventions”

– Produce “works of art”

– Solve problems in new ways, or

develop a new idea based on an

“original” knowledge.

– Novel or unconventional approach.6

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

!!

Think Away Think Away From The From The

BoxBox

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Industrial Property

a. Trademarks

b. Patent

c. Industrial designs

d. Confidential information

E Geographical Indications

Copyright

Intellectual property

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Industrial Property Rights

The right to prevent others from•using•manufacturing•distributing

products processes applications trade names geographical names ideas designs

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Name

Logotype

SymbolSlogan

Shape

Color

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PATENT TRADE MARK

Validity of protection

when and where registered

when and where registered

Refers toproducts processes

applications

names, logo, shape, symbol, color, domain

Criterianovelty, level of inventiveness

no confusion, generic name

Website www.epo.orghttp://

oami.europa.eu

Duration20 years, not renewable

6-10 years, renewable

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Duration of protection

YEARS RENEWABLE

Patents 20 (6) No

Trade marks 6-10 Yes

Designs 6-10 Yes

Copyright70 year

after deathNo

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NATIONAL INTERNATIONAL

WHERE

Each country where you seek protection

WIPO system for 77 countries

FEESNational fees for each country One fee

LANGUAGE

Translation into national languages One language

WHEN

May be convenient if limited number of countries or no alternative

If protection in more countries is needed.

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Not allowed / not valid

• Violation of public order and morale

• Copy of earlier registration (bad faith)

• Withdrawal from register

• Not in use ( 5 years)

• Evolution into generic name

• Formica, cellophane, compact disc

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Patents• product, process, applications• Registration :difficult to prove “novelty”• limited duration

Trade mark• name, symbol, shape• Registration : do not create confusion• renewable

IPR : only protection when registered (excl. copyrights)

In a nut shell

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Paris Convention

Protection for industrial property

Trade mark

Patent

Unfair competition

Governed by domestic legislation

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Berne Convention

Protection of literary and artistic work

Governed by national legislation

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Wipo Copyright Treaty

Digital agenda.

Technological measures such as

circumvention of technological maesures.

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TRIPS 1994 (1995)

Additional to Paris and Berne.

Minimum requirement.

Most favoured nation treatment.

Strong enforcement procedure.

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Patent Cooperation Treaty

Making it easier to make paten application

Designated country.

International phase to national phase

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Basic principle of international convention

Laying down the minimum requirement for the

national legislation.

“members may but shall not be obliged to implement

more extensive protection in their law than is required

by the agreement. TRIPS 1(1)

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The principle of national treatment

“Each members shall accord to the nationals of other

Members treatment no less favourable than it accord

to its own national”

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Obligation of convention

State to state

Not open to individual.

Example : India v USA.

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The Laws For Intellectual Property Protection

Copyright Act 1987

Trademarks Act 1976

Patent Act 1983

Industrial Design Act 1996

Geographical Indications Act 2000

Law of Tort

-passing-off

Confidential information

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Protection for Copyright

Protection given by law for a term of years to the

composer, author etc… to make copies of their work..

Work include literary, artistic, musical,films, sound

recordings,broadcasts.

Commercial and moral rights.

No registration provision.

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Protection for trade marks

Commercial exploitation of a product

To identify the product, giving it a name

“mark” includes a device, brand, heading, label, ticket,

name, signature,word, letter, numeral or any

combination.

Does not include sound or smell

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Trade marks (cont.)

Can either be registered or not registered

Advantages of registered trade marks

Application can be made for goods and services

Perform certain function such as indication of

quality,identifying a trade connection

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Choosing the correct mark

Compare the trade mark “Dove” to using the mark

“crows”.

Would the “Frog restaurant ” be acceptable?

Would Marksman and Weekend Sex be acceptable?

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Protection for patent

Basic idea of granting a patent

“ the applicant applied to the government for the right

of patent and in return for the monopoly given he

must disclose everything about the invention in the

patent document” ( the description)

Duration 20 years.

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Patent (cont.)

Patent for invention

Patent can be applied for a product or a process.

Patentable invention must be new,involves an

inventive step and industrially applicable

Priority date- first to file

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The national routeThe Paris routeThe PCT route

The various route for application

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Protection for industrial designs

Protection for industrial designs that are new or original

Design are feature of shape, configuration, pattern or

ornament

The design must be applied to an article

The design must be applied by an industrial process.

Appeal to the eye.

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Commercialization strategies

Novelty

Effect of failure to register before marketing

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Protection for geographical indications

Meaning “ an indication which identifies any goods

as originating in a country or territory, or a region or

locality where a given quality, reputation or other

characteristic of the goods is essentially attributable

to their geographical origin”

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Protection for geographical indication

Product must come from a particular geographical territoryUses a name link to the particular geographical nature of the territorySuch as labu sayung from the sayung Perak,Batik Trengganu,batik Kelantan etc.To stop others from using

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Examples of GI

Swiss made

Swiss chocolates

Sarawak pepper

Salted egg

Sweet tamarind

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Product Patents In India

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TRIPS

The TRIPS (Trade Related

Aspects of Intellectual Property

Rights) Agreement came into

being with the establishment of

the WTO (World Trade

Organization) effective from 1st

January, 1995.40

WIPO

• UN organization dedicated to

promoting the use and protection of

works of the human spirit.

• Headquarters in Geneva, Switzerland.

• 185 nations as member states.

• Manages all IPs.

• Training through Academy and

Seminars41

What is a Patent ?

A patent is a protection given to a

patentee for an invention for a limited

term by the government for disclosing the

invention

Right to exclude others from using your

invention.

Owner has a qualified right to use the

invention.

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A Conditional grant

Balance of Rights and Obligations

Subject to other laws of land

Granted to owner of invention/

assignee

What is a Patent?

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Three Statutory Pillars of

PATENTABILITY

1. Novelty (new)

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

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

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Patent - Patentability

An invention can be patented if it is

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

(PRIOR ART)

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

Art”

• Must have INDUSTRIAL APPLICATIONMust be UsefulMust have Utility

• Must not be covered by Sec. 3 and Sec. 4.45

Non-Obvious

THE DIFFERENCES BETWEEN THE

CLAIMED INVENTION and the PRIOR ART

are such that the subject matter as a

whole WOULD NOT HAVE BEEN OBVIOUS

at the time the invention was made to a

PERSON SKILLED IN THE ART, to which

the subject matter pertains.

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Inventive StepSection 2(1)(ja):

"inventive step" means a feature of

an invention that involves

technical advance as compared to

the existing knowledge or having

economic significance or both

and that makes the invention not

obvious to a person skilled in

the art.47

Utility / Industrial Application

• Be Useful

• Must work / be workable

• At least one recognized,

verifiable and practical end-use

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Patentability Filter Prior use/ prior publication/ prior disclosure

Industrial applicability

Novelty

Non-obviousness: inventiveness

Sec. 3 - Not patentable

Written description / enablement

requirements

Application/ specification/ claims

Patent prosecution

Maintenance / Defense after grant 49

What is not Patentable

(a) Frivolous, Contrary To Natural Laws

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

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

Non- living Substances

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

Patents Act, 1970

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What is not Patentable

(e) Mere Admixture (SYNERGY)

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

(g) Omitted (Testing Methods)

(h) Method Of Agriculture Or Horticulture;

(i) Method Of Treatment.

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

Exception: Microorganisms

Patents Act, 1970

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What is not Patentable

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

Algorithms;

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

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

(n) A Presentation Of Information;

(o) Topography Of Integrated Circuits;

(p) Traditional Knowledge

Patents Act, 1970

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Trademarks

Word Mark

Device Marks(Signs, Symbols, Logos)

Collective Marks

Certification Marks

Service Marks

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

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

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

Trademarks

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Notification dated 14th

February, 2012 issued by CGPDTM regarding Pu

blication of list of International Non Proprietary

Names declared by the WHO

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Copyrights & Related Rights

Copyright is a legal

term describing

rights given to

creators for their

literary and artistic

works.

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Copyright - ExtensionIT Revolution !

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

Indian Copyright Amendment Bill

Passed by Rajya Sabha on 17th May, 2012

Passed by Lok Sabha on 22nd May, 2012

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IPR And Copyright

Avoid verbatim reproduction (Plagiarism) -

Likely to cause Copyright violations.

Always acknowledge / obtain prior permission.

Abstract / Summary may be written in one’s

own language / quote the source.

“Copyright” / “All rights reserved”

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

Quoting Medical References from Journals and Books

Copyright violations could lead to criminal/civil suits

Could lead to imprisonment too !58

Therapeutic Goods Legislation

Amendment (Copyright), 2011

Australia

To block frivolous

Copyright

infringement suits in

Pharma / Medicine

product inserts.59

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

× Use of internet for selling /

marketing

× Downloading from Internet (except

for personal use)MUST ALWAYS HONOUR IPRs

(Copyrights, Patents, Trademarks etc.)

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G.I.(Geographical Indications)

Name or sign used on

goods originating from

specific geographical

origin or location and

possess qualities,

reputation or

characteristics that are

essentially attributable to

that place of origin.61

Geographical Indication

India, as a member of the World Trade Organization

(WTO), enacted the Geographical Indications of Goods

(Registration & Protection) Act, 1999 has come into

force with effect from 15th September 2003.

Geographical Indications of Goods

(Registration & Protection) Act, 1999

Geographical Indications of Goods

(Registration & Protection) Rules, 2002

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Industrial Designs Ornamental or Aesthetic aspect of

an article.

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

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

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

Khale Sangeeta

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Designs

Indian Designs Act, 2000 & Rule, 2001

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

of industrial production. Aimed to enact a detailed classification of

design to conform to the international

system and To take care of the proliferation of design

related activities in various fields.

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Ministry of Industry & Commerce

Office of the ControllerGeneral of Patents, Designs

And Trademarks

Designs wing(Kolkatta)

Patent office( Kolkatta, Delhi,

Mumbai, Chennai)

Trade Marks Registry( Kolkatta, Delhi,

Mumbai, AhmedabadChennai)

GeographicalIndications

Registry( Chennai)

Patent Information

Service( Nagpur)

Organization Structure – IP Offices