ip in it : global strategy

8/14/2019 IP in IT : Global Strategy

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IP in IT:Global Strategy

Prof. Anil B. Suraj

Intellecture SeminarSeries

Copyright, Brain League IP Services,

Non-commercial use is permitted


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Session Objectives

To recognize the importanceof TRIPs in ensuring globalstandards

To understand the prevalent

criteria to establish andenforce IPRs


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Interests inGlobalization

Rebuilding by developedeconomies UN, IBRD, IMF,GATT/ITO

Strategic incorporation ofdeveloping nation concerns UNCTAD & Part-IV GATT

Building of consensus in WTO


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IPRs General Bases

Economic (and technological)rationale aids overalldevelopment

Social benefits PublicDomain and Basic Research

Legal monopoly fairregulation within territory


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Forms of IPRs

Patents Patents Act, 1970

Copyrights Copyright Act, 1957

Trade Marks Trade Marks Act,1999

Industrial Designs Designs Act,2000


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Forms of IPRs

Layout Designs of ICs Semiconductor IntegratedCircuits Layout-Design Act, 2000

Geographical Indications Geographical Indications of

Goods (Registration andProtection) Act, 1999


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Forms of IPRs

Plant varieties Protection ofPlant Varieties and FarmersRights Act, 2001

Traditional Knowledge partlyby Biological Diversity Act, 2002

Trade Secrets Contractual no legislation in India


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COPYRIGHTS

Statutorily provided privilege toauthors, aiming towards: Creative and Intellectual enrichment of the

public

Progress of Scientific and useful Arts(literary, artistic, musical, dramatic,cinematographic films, sound recordingsand now performances & broadcasting)

Bundle of rights right to makecopies; communicate to the public;make adaptations and allow

translations


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Mark

Includes a device, brand, heading,label, ticket, name, signature, word,letter, numeral

Also packaging, combination ofcolours

Or any combination thereof

Sound = inherently distinctive and to

be graphically represented


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Trade mark

Any Mark capable of: Being represented graphically; and Distinguishing goods/services of

one person from those of others

3 objectives: to identify origin; to advertise the brand; and to indicate quality


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IC Layout-Designs

Layout Designs eligible for IPRprotection:

Originality uncommon product ofintellect

Not commercially exploited (formore than 2 years)

Inherently distinctive

Distinguishable from otherregistered designs


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IC Layout Designs

Use or sale of whole or original part ofregistered layout-design withoutpermission is an infringement

No violation if used for scientificevaluation, analysis, research or teaching

Creation of an independent originallayout-design from analysis can beseparately registered

l i f


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Evolution of IPRregime

Early 17th Century MonopoliesStatute Maximum flexibility to national

governments no global enforcement

Paris Convention (1883); BerneConvention (1886); MadridAgreement (1891)

Minimum obligations but with flexibilities National Treatment; and Reciprocal

obligations though not mandated


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TRIPs Regime

TRIPs (1995) commonminimum institutional framework what about flexibilities?

Scope of Patents

Patentability criteria

Enforcement mechanisms

TRIP R i


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TRIPs Regime Salient Features

Basic Principles

MFN status; National Treatment

Forms of IPRs and bases ofprotection

Aiming for uniformity

Multilateralism impact on national

laws


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TRIPs Features

Special Provisions forDeveloping nations

Accent on technology transfer &promotion Brazil & Koreacomparison

Enforcement Mechanisms

Civil and Criminal; Border measures


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Enforcement of IPRsKey lessons from Indiaand across the Globe

i


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Large expectations driven by small initiatives!!


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High stakes

IBM v. Amazon = dispute over 5e-commerce based patents valued more than $10 bn

Transmeta v. Intel = disputeover patents in power savingchips valued at about $100 bn

RIM v. NTP = Blackberrytechnology settled at over $600

mn


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High Stakes

Volkswagen take over of RollsRoyce - $712 mn but missedthe most important asset!!

Total value of IPRs owned by USis estimated at about $6 trillion

IPR valuations in M&As risingthe stakes further


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IP Litigation

If negotiations fail then litigate forcompensation Alcatel-Lucent matter record verdict of

compensation = $1.53 bn

Suing could estrange potential partners(IPTV venture) negotiate for licensing

EU enforcement mechanism variesamong member nations a commondirective for software patents failed


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Litigation Remedies

Injunctions temporary (immediate)and permanent (final)

Damages or compensation based

on account on profits Actuals; Loss of Goodwill; Deterrent Microsoft cases in India - > Rs.1 crore

Legal and other costs Police and Court Commissioners

Liti ti R di


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Litigation Remedies

Copyrights & TMs registration is bestproof else, legal presumptions apply Passing off

Civil remedy enforceable by a DistrictCourt compensatory and injunctions NASSCOM matter

Criminal remedy law provides forminimum imprisonment and fines offenceis cognizable and non-bailable


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Prevalence of Piracy

Total counterfeit trade = $624 bn

Total online piracy = $84 bn

Top Hollywood studios spend morethan $40 mn on counter-measures

Software piracy: Global = 35%; India =73%; China = >90%


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Online infringements

Online auctions, sales or passingoff of proprietary software eBay; iOffer

Monumental task of monitoring

China has 5 auction sites, 8 lakhwebsites and about 2 lakhregistered cyber cafes!!

Online counter


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Online counter-measures

New breed of Cyber investigators set a thief to catch a thief!!

Fictitious impersonations in chatrooms and internet message boards

Counter attacks through hacking

Privacy concerns and fraudulent acts

M i F t f th IT


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Main Features of the ITAct

Information Technology Act, 2000

Allows for admissibility of electronicevidence in general procedure

Defines essential terms computer,network/resource/system, electronic

record, data, information, securesystem, etc.

C b C i d


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Cyber Crimes andPenalties

Section 43 damage tocomputer or computer system destroy, alter, delete, add,

modify or rearrange anycomputer resource Fines up toRs. 1 Crore !!

Factual factors = unfairadvantage; amount of losscaused; the repetitive nature


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Cyber Offences

Tampering/copying computer sourcecode or related documents 3 yrs + 2lakhs

Hacking into computer resource 3 yrs+ 2 lakhs

Breaching confidentiality of electronicdocuments 2 yrs + 1 lakh

Publishing or transmitting obscenematerial in electronic form = 5 yrs + 1lakh

Extra-territoriality application of the law if Indian computer is affected


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Liability in Cyberspace

Deep pocket strategy ISPs;Credit Card agencies

Service Providers are exemptedfrom liability if lack of knowledgedespite due diligence

Comprehensive Search & SeizurePowers given to the Police


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Principles of

Patentability


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What is a Patent?

Patent a monopoly right to aninventor

20 year period of monopoly grantedfor inventions that satisfy:

Novelty

Inventive Step or Non-obviousness

Utility or industrial application

What can you do with


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What can you do witha Patent?

Section 48 of the Patents Act,1970: Make Use Sell Distribute Import

the invention within India

Effect of Patents only territorial

Subject Matter of


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Subject Matter ofPatents

Must relate to any new processand/or a new product improvements also considered

across any field of technology(TRIPs)

Any process, machine,manufacture, composition ofmatter or material


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Non-patentability

Section 3 of the Patents Act, 1970enlists:

Frivolous or opposed to natural laws;

Mere discovery or an abstractformulation;

No new product or reactant;

Mere admixture or aggregation; Mere arrangement of known devices;


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Non-patentability

Section 3 enlists : Mere method of a mental act or game;

Mere presentation of information;

Mathematical or Business methods;

Computer programs per se oralgorithms;


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US Case Studies

Gottschalk v. Benson (1972) NO unless there is a physical effect

Diamond v. Diehr (1981) YES ifpart of an otherwise patentableprocess with a tangible result

State Street Bank (1998) YES useful computation is in itself atangible result


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EU Case Studies

EPO Board In re Vicom Systems (1987) YES mathematical method must bedirected to technical process Digital processing of images

Though not tangible or concrete, its utility wasof technological character

In re Sohei (1996) YES despite mix oftechnical and non-technical elements iffor an ultimate technical solution


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Patentability Novelty

Prior art (not just documents) i.e., open to public before thepriority date (first filing ofprovisional application)

Known, used, published,patented elsewhere, offered forsale, abandoned, in priority

elsewhere

Prior disclosure must havebeen clear (and inevitable)

Patentability:


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Patentability:Non-Obviousness

Not State of the art notpreviously known or used publicly

Obvious as to a personordinarily skilled in the art ahypothetical construction

Identify inventive step; comparecombined prior knowledge;establish similarities; evaluate if itis obvious to skilled person


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Patentability: Utility

Current contemporaryrequirement

Substantial and significant value

Credible to be made and to beused

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