ipr act (1)

Intellectual Property Rights

UNIT 5

ROGERS VS. KOONS

CARIOU VS. PRINCE

GENERATE IDEAS….. AND OWN

THEM…..IPR !

Think Away From The Box

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.5

•IP is a field of law that aims at protecting the knowledge created through human effort in order to encourage and promote further creativity.

•Pharma companies invest crores of Rupees on R&D and get new drugs and if they don’t get their returns , they would not invest in R&D

Why Protection Of Intellectual Property ?

•Not only creators of Intellectual Property but also the public gets the benefit from protecting IP.

•Owner will have monopoly and be able to charge excessive prices for his work, which would harm the public.

Intellectual Property

IP PORTFOLIOPatent US7395821

TrademarkMulti-

Haler™

Design No.

211208

Trade SecretKnow-how

Copyright

TM (Amend) Bill, 2009 passed by

Rajya Sabha on 10/08/2010

Novel & Inventive

External Appearance

Confidential Informn

&Undisclosed Tech

Package Insert/ Information

Leaflet

CONTENTS PATENT ACT 1970: Procedures and

application for patents – Patentable inventions – Surrender and Revocation – Infringement and remedies.

COPY RIGHT ACT 1957: Registration – Assignment and licensing – infringement and remedies.

TRADEMARK ACT 1999: Procedure for registration – refusal of registration – infringement – registered user.

PATENTS ACT, 1970A 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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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 STEP

Non-obvious to a person “Skilled in the Art” Must have INDUSTRIAL APPLICATION

Must be UsefulMust have Utility

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INVENTIVE STEP

“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.

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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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PROCEDURE FOR REGISTRATION OF PATENT 1. For patent registration an application along with

the relevant document and information needs to be submitted to the office of registrar of patents.

2. All the application for patent accompanied by complete specification are examined substantively.

3. A first examination report stating the objections is communicated to the applicant or his agents.

4. Application or complete specification may be amended in order to meet the objections.

5. Normally all the objections must be met within 15 months from the date of the first examination report.

PROCEDURE FOR REGISTRATION OF PATENT

6. Extension of time for three months is available, but application for extension therefore must be made before the expiry of normal period of 15 months.

7. If the entire objections are not complied with within the normal period or within the extended period, the application will be abandoned.

8. When the application is found to be suitable for acceptance, it is published in the gazette on India.

PROCEDURE FOR REGISTRATION OF PATENT

9. If the application is not opposed or the opposition is decided in favour of the applicant or is not refused, the patent is granted or sealed on payment of sealing fee within 6 months from the date of advertisement. However it is extendable by 3 months.

10. The “Register of Patents “will be kept in the patent office and its branch office.

11. Register of patents will contain full details of the patent, patent number, the name and address of the patentees, notification of assignment, renewal particulars etc.

Intellectual Property – Patents : Infringements? Infringement Remedies Use by a person other than the patentee or his

assignee or licensee would be an infringement of the patent.

The plaintiff on satisfying the court about the infringement would be entitled to the following reliefs –

1) interlocutory injunction2) damages3) account of profits

When the subject-matter of a patent is a process for obtaining a product, the onus is on the defendant to prove that the process used by him is different from the patented process.

COPY RIGHT ACT 1957

What is Copyright ?

Copyright is a legal term describing rights given to creators for their literary and artistic works.

The exclusive right given by law for a certain term of years to an author, composer etc. (or his assignee) to print, publish and sell copies of his original work”

(Oxford English Dictionary)

Copyright in form or expression, not in idea: “There is nothing in the notion of copyright to prevent a

second person from producing an identical result...”

TERM OF COPYRIGHT Depends on nature of work/owner of

copyright and whether the work has been published

Most works: 60 years

Broadcast Reproduction: 25 years

COPYRIGHTWhat is covered by Copyright ?

The kinds of works covered by copyright include : literary works such as novels, poems, plays, reference works, newspapers and computer programs; databases; films, musical compositions, and choreography; artistic works such as paintings, drawings, photographs and sculpture; architecture; and advertisements, maps and technical drawings.

COPYRIGHT - EXTENSIONIT Revolution !

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

Copyright Amendment Bill, 2010

Amitabh Bachchan to copyright his voice!

COMPUTER SOFTWAREIncludes Programme Manuals Punched Cards Magnetic Tapes/Discs Computer printouts Computer programmes

REGISTRATION OF COPYRIGHT

1. The Copyright Office has been set up to provide registration facilities to all types of works and is headed by a Registrar of Copyrights

2. The applications for registration of works can be filled at the counter provided at the Copyright Office from 2.30 P.M. to 4.30. P.M. from Monday to Friday.

3. The applications are also accepted by post.

4. On-line registration through “E-filing facility “ has also been provided.


5. Application for registration is to be made on Form IV

6. Separate applications should be made for registration of each work

7. Each application should be accompanied by the requisite fee prescribed.

8. The applications should be signed by the applicant or the advocate in whose favor a Power of Attorney has been executed.


9. Both published and unpublished works can be registered.

10. Three copies of published work may be sent along with the application. If the work to be registered is unpublished, a copy of the manuscript has to be sent along with the application for affixing the stamp of the Copyright Office in proof of the work having been registered


11. When a work has been registered as unpublished and subsequently it is published, the applicant may apply for changes in particulars entered in the Register of Copyright in Form V with prescribed fee.

12. The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author.

RECENT COPYRIGHT CASES

Chetan Bhagat Vs 3 Idiots

• Oct, 2010 - Kolkata HC declares that Sa Re Ga Ma has the right to grant License.

• April 2010 - Kolkata HC restrains the use of the song Apni Toh Jaise Taise’ from ‘Laawaris’ in the movie ‘Houseful’.

FACTORS DETERMINING INFRINGEMENT Copying Causal Connection Subconscious Copying Indirect Copying

Substantial Taking Unaltered copying Extent of defendant’s alteration Character of Plaintiff’s and Defendant’s

works Nature and Extent of Plaintiff’s Effort

REMEDIES FOR COPYRIGHT INFRINGEMENT

Remedies for Copyright Infringement

Civil Criminal Administrative

CIVIL REMEDIESCivil Remedies

Injunction Damages Accounts Costs

CRIMINAL REMEDIESCriminal Remedies

Cognizable Offences

Imprisonment up to 3 years

Fine up to 200,000 INR

•A trade mark or service mark is a word symbol or device used to indicate the source, quality and ownership of a product or service.•A trade mark or service mark helps in identifying and distinguishing the products or services for one•Examples:

TRADEMARK ACT 1999

•Trade mark is defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

•A mark includes “Device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours, and any combination thereof.”

Trade Marks & Service Marks

∂ Brands refers to marks which are branded on the goods or services – a process of applying mark on goods constituting the trade mark – e.g. McDonald for restaurants, VIP for suitcases, etc.

∂ Label and ticket mean a composite mark containing various features incl. devices, words, usually painted on paper and attached to the goods themselves.

∂ Name is the words signifying a name, surname or a personal name or an abbreviation thereof

∂ Color – a combination of colors can be considered as a trademark-e.g. color combinations used in drug capsules.

Intellectual Property – Trade Marks

∂ Sound – sound or a sequence of sound can be registered as a trade mark – e.g. ‘the roar of the lion’ sound has been registered by MGM pictures; the ‘Tarzan Yell” has been registered as Edgar Rice Burroughs Inc.

∂ Smell – Registration of smell as a trademark has been permitted as a trade mark. A smell reminiscent of roses applied to tyres was registered for sumitomo tyres

∂ Containers fall within the definition of trade mark.

Intellectual Property – Trade Marks

REGISTRATION OF A TRADEMARK

1. The first step is conducting a trademark search so as to ensure that the logo or name in respect of which you intend to register a trademark is not identical to an existing logo or name.

2. Ensure that your business logo or name is not confusingly similar to an already registered trademark.

3. The trademark application to be made to the Trademark Registry.

4. If the application is in respect of one class, the fee is INR 3500. if the application is in multiple classes, the fee being INR 3500 multiplied by the number of Classes.


5. The application must be in the prescribed format.

6. The application must be filed by the applicant or his agent. The agent must be a legal practitioner or a person registered as a trademarks agent.

7. An applicant may apply for an expedited examination procedure for the scrutiny of his trademark application, stating reasons as to why such procedure is necessary.


8. After the application has been filed, the Trademarks Registry shall search whether an identical mark or a mark which is deceptively similar to the mark applied for, already exists, in respect of the same goods and services or similar goods and services.

9. The trademark application shall be published in the Trade Marks Journal within six months of its acceptance of by the Registrar.


10. After this stage, there is an elaborate opposition process in place under Indian trademark law.

11. If no objection is filed, or if the objection is dismissed by the Registrar, he shall enter the trademark in the register and a Registration Certificate shall be issued.

12. The trademark is valid for ten years, but may be renewed afterward. (Renewal fees typically range between INR 2500 to INR 5000, except for certification marks).

SCOTCH WHISKEY UK VS GOLDEN BOTTLING Filed a suit in Delhi High Court seeking to

restrain an Indian whiskey manufacturer from using the name “Red Scot” or any other name containing the word “scot” to sell its product.

Court held that the Indian whisky manufacturer cannot use the word “scot” or “scotch”

Court directed Golden Bottling to pay damages of USD 0.11 million and to pay USD 0.0069 million as litigation cost to the scotch whiskey association

SONY VS AASHISH ELECTRONIC Sony Corporation has been selling products

under the trademark SONY in India since the year 1983 The registration of the mark SONY exists in 193 countries of the world

Sony Corporation has a wholly owned Indian subsidiary by the name Sony India Limited which uses SONY on all its products

In January 2001, Sony Corporation first learned about AASHISH ELECTRONIC's activities of using the mark SONNY on electrical goods In spite of due notice from Sony Corporation, AASHISH ELECTRONIC failed to desist from use of the mark SONY or SONNY

SONY VS AASHISH ELECTRONIC The court granted interim injunction

against AASHISH ELECTRONIC from using the mark SONY or any of its variant on Electronic goods

YAHOO VS SANKET INDUSTRIES US based Yahoo Inc., owner of the

registered Trademark YAHOO filed a suit seeking to restrain Sanket from manufacturing and marketing its silver mint (supari) under the brand name Yahoo

The Delhi High Court, in an interim order, restrained Mumbai based Sanket Industries, from using the brand name 'Yahoo' to promote its beverages and tobacco (gutka) products