introduction to ipr

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Intellectual Property Rights in e-learning environment

ByBuddhi Prakash Chauhan

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Learning Objectives

At the end of this module, the participants should be - aware of various IPR issues effecting education and

research. conversant with patenting procedures and regulations

in India able to understand importance of IPR in a given

situation and suggest a suitable approach Able to appreciate implication of IPR regulations and

management in e-learning environment.

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Structure of the Module

– IPR management and strategies– Introduction to Intellectual Property Rights – Interpreting and drafting patent specifications– IPR management strategies in academic institutions– Some issues related to IPR and e-learning

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Introduction to Intellectual Property Rights

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Intellectual Property - Meaning

Property Intellectual Property Industrial Property

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Property

Ownership or right to own something Anything which can be owned Exclusive right to the possession, use or

disposal Tangible or intangible Generally, possession is the proof of

ownership Usually, a cost or value is assigned

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Property

Property

Real /ImmovableProperty Personal /Movable Property

TangibleLand, Buildings etc

IntangibleRights of Way

Restrictive Covenants

TangibleTables, clothes, etc

IntangibleStocks, Intellect

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Intellectual Property

Intangible personal property Usually deals with information, knowledge and skill Difficult to prove possession and ownership. Reproduction, transfer and distribution-

– Easy, fast and difficult to control. Special measures/instruments are required to protect. Intellectual Property Rights are usually termed as

Negative Rights- civil and criminal remedies

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Industrial Property

Intellectual Property Industry or business oriented Often used interchangeably with Intellectual

Property.

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Intellectual Property - Types

Patents Design, Semiconductor circuits Copy Rights Trade Mark/service marks/trade names Geographical Indicators Trade Secrets, know-how, Goodwill, Name

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Patent

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Patent Rights

Exclusive right (monopoly) in consideration of the disclosure of the new

invention Relates to

Art, process, method or manner of manufactureMachine, apparatus or other articleSubstance, produced by manufacture

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Patent Rights

– To use or exercise an invention ( make, use, sell or distribute the article or substance)

– Granted for a limited period (5/7/14/20)– Chose in action or negative rights- prevents

others to use the invention– Territorial, India– Assign, transfer, license, sale

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What is Patentable?

1. An new invention – New- Product or Process

Inventive Step– Technical advance as compared to existing knowledge or

having economic significance or both Invention not obvious to a person skilled in the art

– Capable of industrial application2. Should not be specifically excluded under

Patents Act, 1970

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Anticipation by prior use

Not commercially worked in India. Adaptation of known process to make new

article Use include sale, gifts, samples Commercial success is not conclusive of an

inventive steps

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Anticipation by prior use

Exceptions– Display or demonstration in an exhibition notified by Central

Government– Working of invention by any person without consent of the

inventor, after such exhibition– Publicly worked within one year before priority date, for the

purpose of reasonable trial, if such trial is reasonably necessary

– Use after filing provisional specification– Use after filing the basic convention application

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Anticipation by Prior Knowledge

Not publicly known any where in the world Does not form the state-of-art Includes all forms of communication including

patents, paper presentation, oral communication where the recipient is free to use or further communicate

Includes knowledge by import

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Anticipation by Prior knowledgeExceptions

Publication without consent (If patent filed as soon as you come to know)

Communication to the Government for investigation or for ascertaining merits of the invention

Paper presented to a learned society, and forming part of its Transactions (If patent filed within 6 months)

Published in the patent specification filed by another person who has wrongly obtained the invention from the original inventor.

In a patent specification filed in India before 1st Jan 1912. If known to people bound by secrecy or confidentiality Publication after filing provisional specifications or basic

conventional application.

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What is not Patentable Being not an invention

Frivolous, obvious, contrary to well established natural laws; Primary or intended purpose is contrary to law, morality, public

health, life and environment Mere discovery of scientific principle or formulation of abstract

theory Mere discovery of new Form or Property or Use of a known

substance, unless it results in better efficiency Mere use of known process, machine or apparatus unless it results

in a new product, OR employs at least one new reactant. Admixture of two or more substances aggregating the properties of

components, or a process thereof

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Mere arrangements, re-arrangement or duplication of known devices each functioning independently in a known way

Method of agriculture and horticulture Process for treatment of human beings or

animals for curing the disease or their value addition, or value addition to their products

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Plants and animals or their parts (except microorganisms), and essentially biological processes for their propagation

Mere scheme or rule or method of performing mental act (puzzle, games, quizzes)

Subject matter of copyright literary, artistic work, software

Aggregation or duplication of traditional knowledge

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Patent Rights

Certain Statutory Monopoly rights – for a defined period 20 years– subject to certain conditions

Chose in action or negative rights- prevents others to use the invention

Enforceable only where the patent is granted (India). Laws related to any movable property are applicable.

– Exclusive right to make, use, sell or distribute the article or substance.

– Use or exercise the method or process.– Assign, transfer the patent

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Patent Rights-conditions

Use subject to other laws, regulations and licenses- safety, pollution, trade restriction etc.

Use by the Government (Sec 47)– for the purpose of its own use. Limited use/no

commercial activity, restricted definition of government, no fee or royalty)

– Import of machines, products etc– Use or manufacture of products, and process

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Exercise of patent rights, for the purpose of the Government (sec 100)

– By the person authorized in writing by Central Government– Wider definition of Government– Take over of right to make, sell or distribute goods as well as

Patent– Governments rights not subject to any agreement signed by

patentee and any third party– On terms (royalty) as agreed between the Government and

patentee or as determined by the High Court u/s 103. – Patentee has to be notified as soon as practicable.

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Acquisition by the Government– For public purpose, defense use– Notification in the official gazette– Payment of compensation, as agreed between the

patentee and government or decided by the High Court

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Patentee can not abuse the patent rightsCompulsory Licensing (Sec 93) If the reasonable requirement of the public are not satisfied or

invention is not available to the public at reasonable price Controller may grant compulsory license on an application by any

interested person under terms and conditions as he deems fit. Reasonable royalty and feecto patentee, reasonable profit to licensee and reasonable price to public.

Controller to make sure the licensee uses the patent to full extent Controller may cancel patentees’ rights to use or assign s well as

cancel the existing licenses given by patentee.

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Compulsory License (Sec 97)– Declaration by Central Government for compulsory

licensing in public interest.– Interested part can apply to the controller for

license, who can give compulsory license on the terms he deem fit.

Free Use by public- – for experiment or research, education; without

consent of patentee.

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Licensing of related patents – If a patent can not be worked without the other patent, licensee

of first patent can apply for licensing of the related patent License of rights

– On an application made by the Central Government– If the controller is satisfied that reasonable requirement of the

public are not met in respect of a patent– Endorsement as License of Rights.– License to any interested party after three years from the date

of sealing

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Renewal– Every year by paying the prescribed fee.

Commercial Working-– Patents are granted to encourage invention and

commercial working of invention. Patent may be revoked or compulsorily licensed, if not commercial worked.

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Patent Revocation

By Central Government in public interest (s. 66) Related to atomic energy by the controller(s. 65) Revocation due to non working (s. 89) By high court on a petition from Central Government or

an interested person, for non-compliance of request to use the invention on reasonable terms (s. 64)

By high court on a petition by a person or during infringement suit- if the patent was grant wrongly (non conformance to the Act) (s. 64)

By the party by surrender proceedings (s 63)

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Infringement-remedies

Civil remedy– Injunction– Damages– Accounts of profit/ royalty– Delivery or destruction of infringing articles

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Patenting Procedure - Stages

Application- – Provisional Specifications– Complete Specification

Acceptance Publication of Application(>18 months)-open to public Examination (on request within 48 months) Opposition Grant or sealing Renewal

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Application

Applicant- – true or first Inventor or – assignee or– legal representative

Inventors – Who have contributed to patentable features of invention.– Who have made intellectual contribution to the final outcome– Who provides the ideas,– Persons who merely carry out instructions, experimentation

etc are not inventors

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Application- Provisional specifications

Are not generally examined Used to file the patent even before the

complete results are available. Useful for market testing, before filing the

complete specification. Useful for getting the priority over similar

patents.

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Application

Complete Application– Directly– After the provisional specification (12+3 months)– Convention application. (12 months)

Cognate inventions- may be combined by the Controller

Convention Application- within 12 months of filing the basic application in a convention country, with complete specifications

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Complete Specification

Fully and particularly describe the invention Disclose the best method of performing Claims defining the scope of the invention Claims only for a single invention Claims to be clear and succinct and fairly

based on the matter disclosed Abstract to provide technical information

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Complete Specifications

Title, inventors names, applicants names, summary, international patent classification etc.

Prior art – deficiency/problem Object of the invention Description of the inventions, examples Claims Charts and drawings Abstract

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Examination

On a request within 48 months of priority date. Deemed withdrawn if no request is made.

Examine, investigate and report w.r.t. – compliance of the Act and Rules– Any lawful grounds for objections under the act– Anticipation by publication in patent specification filed in India

after Jan 1, 1912 but before priority date.– anticipation by publication in a patent specification filed in India

on or after the priority date– Anticipation by publication in any other document elsewhere– Anticipation by prior use

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Follow up of examination

Amendment, division, combine, Refuse to proceed with the application Refuse the application – if not an invention Refuse to accept for anticipation Requirement to be fulfilled within 15+3 months,

else application lapses

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Acceptance and Publication

Immediately after examination in the Gazette of India , part III section 2.

Available for public inspection and opposition proceedings Acceptance can be delayed on request of applicant

(maximum 18 months from the first communication) Publication can be restricted prohibited at the request of

Central Government, in the interest of security of India. – Patent process can continue, – available to government for use, – no renewal fee is charged as long as notification in force.

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Opposition

Pre-grant opposition – Within 4+1 months of publication, on the grounds

Wrongful obtaining of invention from the plaintiff Anticipation by prior publications Anticipation by prior use Priority date Lack of inventive steps Subject of any claim not an invention in terms of Act Not sufficiently and clearly describe the invention or method Convention application not made with in 12 months

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Grant or sealing

If no opposition, – Favourable Examination report– All objections, or deficiency comleted on time

Opposition proceedings settled in favour of applicant

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Cost for Indian Patent

Items For individuals othersFiling 1000 4000

Early Publication 2500 10000

Renewal (3rd to 6th Yr) 500 2000

Renewal (7th to 10th yr) 1500 6000

Renewal (11th- 15th) 3000 12000

Renewal (16th-20th) 5000 20000

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PCT Application

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Patent Cooperation Treaty

An agreement for international cooperation in patents Adopted in a Diplomatic Conference Washington, 1970 Came into force on Jan 24, 1978 and became

operational on June 1, 1978 with 18 contracting states 1000 contracting states India became 98th contracting state on December 7,

1998. About 5 lakh applications have been filed so far

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PCT Route to file patent

Does not grant a patent Simplifies and renders more effective and more

economical means to file international patent Filing at a single patent office (receiving office)

a single application (international application) Standard international novelty search Centralized publication Option for international preliminary examination

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PCT Application - Procedure

International Application Phase National Application phase

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International Application Phase

Single application to Receiving Office in contracting state

India receiving office- Patent office, Calcutta, Mumbai, Chennai, New Delhi

Language of filing- depending on the receiving office. India- English, Hindi

Any resident or national in contracting state can file. Application can also be filed in International Bureau,

Geneva International filing date/priority date

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International Application Phase

Standard format- acceptable to all contracting states

PCT Request (PCT/RO/101) 3-4 copies Description with one or more claims Abstract Drawings, if any Power of attorney/ GPA

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International Application-Fees Transmittal Fee-to cover the work of RO

– Rs 1500 (individuals) Rs 5000 for other legal entities– For certified copy of priority documeny and transmittal of the same Rs 1000

(individuals) Rs 3000 (other lagela entities) Search fee- International search authority

– AT- $ 180, AU- $ 488, CN- $100, US $ 700, *EP-$1002, SE $895 *International fee- International Bureau

– Basic fee- $ 455, Designation fee -$98 (max 8)– Supplement per sheet in excess of 30 sheets $ 10

Preliminary examination fee- to international Preliminary Examination Authority- (handling fee + examination fee

– Au- AU$ 260+ 450*, AT- AT$ 2020+2200, CN CNY equiv to CHF 233+CNY 800, US $162+750, SE SEK 1250+ 4200, EP EUR 148+1533* (* 75 % reduction for Indian nationals)

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International Application-Search

By International Search Authority– CN, AU, AT, EP, SE, US

High quality of the patent documents and other literature in most language.

Standards prescribed by PCT as to documentation, staff requirement, search methods etc.

Report within 4-5 months- No comments on the value of invention, but list if citation on prior art.

Report to the applicant and IB, copy to designated office

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International Publication

PCT pamphlet PCTGazette (paper & electronic) Generally 18 months after priority date In the language in which it has been filed, if its

Chinese, German, English, French, Japanese, Russian or Spanish, else translated into one of these

Bibliographic detail, abstract and search report also published in English

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International Preliminary Examination

Optional Valid only for elected states Report to the elected states through IB Translation in English if required by IB

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International Application- transmittal to designated states

Within 20 months (if no preliminary search) Within 30 months (if preliminary search) Copy of the application along with search

report, prel examination report forwarded by IB to designated states.

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National Phase application

Applicant to file national phase application after 12 months of priority date in each designated country

Separate fee for each country Application is processed as per national law,

and separate certificate is issued.

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Design, Copyrights, Trade Marks and Trade Secret

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Design

Feature of shape, configuration, pattern or ornament applied to any article by any industrial process or means whether manual, mechanical or chemical; separate or combined, which in the finished article appeal to, and are judged solely by, the eye.

New or original design Not previously published in India

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Design-Registration

Under Designs Act 2000 Term- 10years, renewable for a second 5-year

term.Controller of Patents

CalcuttaBranches at Delhi, Chennai and Mumbai

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Copyright

Exclusive right given by law for a certain term of years to an author, composer, designer, etc to print, publish, and sell copies of his original work.

Applies to literary, dramatic, musical work, computer program, artistic work, irrespective of the media- paper, cinematographic films including sound track and video films, records, CDs, tapes, DVDs, VCDs …

Given to a person or organization responsible for creation/intellectual input, skill to a work.

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Copyright: Registration

Governed by-Copyright Act, 1957 (amended 1983, 1984, 1992 and

1994)Copyright Rules, 1958

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Copyright: The rights

To reproduce and store in any material form and medium To issue copies to the public To perform in public or communicate to the public To make film or recording in respect of the work Translation, adaptation and to do the above in respect of

translation and adaptation. To sell or give on hire, or offer for sale or hire any copy of

the computer program, regardless of whether such copy has been sold or given on hire on earlier occasions.

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Copyright: The term

Personal Literary Works- Lifetime of the author plus 60 years.

For films, records, corporate publications etc 60 years

Broadcasts and performances 50 years*

*1999 amendment

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Trade Marks

A visual symbol or mark (word, label, letters, numerals, device depicting animals, birds, human beings etc or a combination of these) placed on goods to distinguish a product manufactured by a company from similar products.

Service Marks, collective marks

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Trade Mark- Functions

Identifies the product and its origin Indirectly guarantees its unchanged quality Helps to advertise the product

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Trade Mark- Registration

Registration under The Trade Marks Act, 1999– The person who first uses or proposes to use is entitled for

registration– Honest concurrent use– Must be distinctive– must not be deceptive, – must not be descriptive, and – should not be specifically excluded from registration, such as

common names, geographical place names,names of colours, obscene or offensive words, words against law or morality etc.

– Not directly intended to give a quality assurance

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Trade Mark- Registration

Term-10 years; renewable every 10 years. Rights-

– Exclusive right to use in relation to goods for which it has been registered.

– Licensing or assign– Obtain relief in case of infringement, passing off.

Civil as well as criminal remedies.

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Trade Secrets

Information, including a formula, pattern, compilation, program, device, method, technique or process, that-

Derives independent economic value, actual or potential by-

– Not being generally known (to persons who can use and obtain economic value from its disclosure or use); and

– Not being readily ascertainable by proper means by other persons who can use, obtain economic value from its disclosure or use

Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

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Trade Secrets

No law to protect Contractual obligations- Employment contract,

breach of trust, secrecy clauses, non disclosure agreements

Organizational policies and rules Procedures to maintain and control records

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