IT laws and patents

This book is a part of the course by Jaipur National University, Jaipur.This book contains the course content for IT laws and patents.

JNU, JaipurFirst Edition 2013

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JNU makes reasonable endeavours to ensure content is current and accurate. JNU reserves the right to alter the content whenever the need arises, and to vary it at any time without prior notice.

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Index

ContentI. ...................................................................... II

List of FiguresII. ..........................................................VI

List of TablesIII. ......................................................... VII

AbbreviationsIV. ......................................................VIII

Case StudyV. ................................................................ 97

BibliographyVI. ......................................................... 106

Self Assessment AnswersVII. ................................... 109

Book at a Glance

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Contents

Chapter I ....................................................................................................................................................... 1General Overview of Intellectual Property .............................................................................................. 1Aim ................................................................................................................................................................ 1Objectives ...................................................................................................................................................... 1Learning outcome .......................................................................................................................................... 11.1 Introduction .............................................................................................................................................. 21.2 The Concept of Intellectual Property ....................................................................................................... 21.3 Different Categories of IP Instruments .................................................................................................... 3 1.3.1 Copyright ................................................................................................................................. 3 1.3.2 Trademarks and Service Marks ................................................................................................ 4 1.3.3 A Geographical Indication (GI) ............................................................................................... 4 1.3.4 Industrial Design ...................................................................................................................... 4 1.3.5 Patents ...................................................................................................................................... 5 1.3.6 Layout Design (topography) of Integrated Circuits ................................................................. 5 1.3.7 Undisclosed Information .......................................................................................................... 51.4 Rationale Behind Intellectual Property .................................................................................................... 61.5 Rights of the Owner of the IP, Other Individuals and the Society – Striking A Balance ........................ 71.6 Enforcement of IPRs ................................................................................................................................ 71.7 IP and the Constitution of India ............................................................................................................... 8Summary ...................................................................................................................................................... 9References ..................................................................................................................................................... 9Recommended Reading ............................................................................................................................... 9Self Assessment ........................................................................................................................................... 10

Chapter II ................................................................................................................................................... 12Intellectual Property Rights in India ....................................................................................................... 12Aim .............................................................................................................................................................. 12Objectives .................................................................................................................................................... 12Learning outcome ........................................................................................................................................ 122.1 Introduction ............................................................................................................................................ 132.2 History of IP Legislation ....................................................................................................................... 13 2.2.1 Patents ................................................................................................................................... 13 2.2.2 Trademarks ............................................................................................................................. 14 2.2.3 Designs ................................................................................................................................... 14 2.2.4 Copyright ............................................................................................................................... 142.3 Overview of IP Law in India .................................................................................................................. 14 2.3.1 The Indian Patent Law ........................................................................................................... 14 2.3.2 Indian Copyright Law ............................................................................................................ 15 2.3.3 Indian Trade Mark Law ......................................................................................................... 15 2.3.4 Indian Designs Law ............................................................................................................... 162.4 IP Acts Enacted By India ....................................................................................................................... 162.5 Major International Treaties Signed By India ....................................................................................... 16Summary ..................................................................................................................................................... 17References ................................................................................................................................................... 17Recommended Reading ............................................................................................................................. 17Self Assessment ........................................................................................................................................... 18

Chapter III .................................................................................................................................................. 20Copyright: An Introduction to History and Evolution of Copyright .................................................... 20Aim .............................................................................................................................................................. 20Objectives .................................................................................................................................................... 20Learning outcome ........................................................................................................................................ 203.1 History and Evolution of Copyright ...................................................................................................... 21

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3.2 Works Protected .................................................................................................................................... 22 3.2.1 General Conditions for Protection ........................................................................................ 22 3.2.2 Which Works are Protected? .................................................................................................. 233.3 Rights in Copyright ............................................................................................................................... 24 3.3.1 Economic Rights .................................................................................................................... 24 3.3.2 Moral Rights ......................................................................................................................... 253.4 Term of Protection ................................................................................................................................ 263.5 Limitations & Exceptions ..................................................................................................................... 263.6 Ownership and Transfer of Copyright ................................................................................................... 27Summary ..................................................................................................................................................... 29References ................................................................................................................................................... 29Recommended Reading ............................................................................................................................. 29Self Assessment ........................................................................................................................................... 30

Chapter IV .................................................................................................................................................. 32Patent Basics ............................................................................................................................................... 32Aim .............................................................................................................................................................. 32Objectives .................................................................................................................................................... 32Learning outcome ........................................................................................................................................ 324.1 Introduction ........................................................................................................................................... 334.2 Conditions of Patentability ................................................................................................................... 33 4.2.1 Patentable Subject Matter ..................................................................................................... 33 4.2.2 Industrial Applicability (utility) ............................................................................................. 34 4.2.3 Novelty .................................................................................................................................. 34 4.2.4 Inventive Step (Non-Obviousness) ....................................................................................... 35 4.2.5 Disclosure of invention .......................................................................................................... 364.3 Drafting and Filing a Patent Application ............................................................................................... 36 4.3.1 Identification of Invention ..................................................................................................... 36 4.3.2 Practical Aspects of Drafting Patent Applications ................................................................. 364.4 Processing of Patent Application ........................................................................................................... 38 4.4.1 Examination as to Form ......................................................................................................... 39 4.4.2 Examination as to Substance ................................................................................................. 40 4.4.3 Publication of Notice and Opposition .................................................................................... 40 4.4.4 Grant and Publication ............................................................................................................ 41Summary ..................................................................................................................................................... 42References ................................................................................................................................................... 42Recommended Reading ............................................................................................................................. 42Self Assessment ........................................................................................................................................... 43

Chapter V .................................................................................................................................................... 45Patents, Designs, Trademarks and CGPDTM ......................................................................................... 45Aim .............................................................................................................................................................. 45Objectives .................................................................................................................................................... 45Learning outcome ........................................................................................................................................ 455.1 Introduction ........................................................................................................................................... 465.2 Office of the Controller General of Patents, Designs and Trademarks (CGPDTM) ............................ 46 5.2.1 The Patents Office ................................................................................................................. 46 5.2.2 Industrial Designs Wing ........................................................................................................ 475.3 Patent Information System (PIS) .......................................................................................................... 47 5.3.1 Patent Search Services .......................................................................................................... 47 5.3.2 Patent Copy Supply Service ................................................................................................. 47 5.3.3 Trademarks Registry ............................................................................................................. 48 5.3.4 Geographical Indications Registry (GIR) ............................................................................. 48 5.3.5 Awareness Programmes ........................................................................................................ 485.4 Trademark Rules and Procedure ............................................................................................................ 48

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5.5 Designs: Rules and Procedure ............................................................................................................... 50 5.5.1 Benefits of Design Registration ............................................................................................ 51 5.5.2 Essential Requirements for Registration ................................................................................ 51Summary ..................................................................................................................................................... 53References ................................................................................................................................................... 53Recommended Reading ............................................................................................................................. 53Self Assessment ........................................................................................................................................... 54

Chapter VI .................................................................................................................................................. 56Patent Cooperation Treaty (PCT) and Patent Law Treaty (PLT) ......................................................... 56Aim .............................................................................................................................................................. 56Objectives .................................................................................................................................................... 56Learning outcome ........................................................................................................................................ 566.1 Introduction ............................................................................................................................................ 576.2 International Patent ................................................................................................................................ 576.3 Basic Objectives of PCT ........................................................................................................................ 57 6.3.1 Patent Cooperation Treaty (PCT) and Patent Law Treaty (PLT) ........................................... 58 6.3.2 Filing an International Application ........................................................................................ 58 6.3.3 International Search ............................................................................................................... 59 6.3.4 International Publication ........................................................................................................ 60 6.3.5 International Preliminary Examination .................................................................................. 61 6.3.6 National Phase ....................................................................................................................... 626.4 Advantages of the PCT System .............................................................................................................. 62 6.4.1 Advantages for the Patent office ............................................................................................ 62 6.4.2 Advantages for the Applicant ................................................................................................. 63 6.4.3 Advantages for the National Economy and Industry ............................................................. 636.5 Provisions of the Patent Law Treaty (PLT) and the Regulations ........................................................... 64 6.5.1 Filing Date Requirements ...................................................................................................... 64 6.5.2 Standardised Application and Forms ..................................................................................... 65 6.5.3 Restriction on Mandatory Representation ............................................................................. 65 6.5.4 Restriction on Requiring Evidence ........................................................................................ 66 6.5.5 Restriction on Requirements to Submit a Copy of an Earlier Application and

Translation thereof ................................................................................................................ 66 6.5.6 Single Communication .......................................................................................................... 66 6.5.7 Relief in Respect of Time Limits and Reinstatement of Rights ............................................ 66 6.5.8 Correction and Addition of Priority Claim and Restoration of Priority Right ....................... 67 6.5.9 Paper and Electronic Communication ................................................................................... 67Summary ..................................................................................................................................................... 68References ................................................................................................................................................... 68Recommended Reading ............................................................................................................................. 68Self Assessment ........................................................................................................................................... 69

Chapter VII ................................................................................................................................................ 71Overview of the U.S., European, and Japanese Patent Systems Structure .......................................... 71Aim .............................................................................................................................................................. 71Objectives .................................................................................................................................................... 71Learning outcome ........................................................................................................................................ 717.1 Introduction ............................................................................................................................................ 727.2 Overview of the United States Patent System ....................................................................................... 72 7.2.1 Patent by US Norms .............................................................................................................. 72 7.2.2 Term of US Patent .................................................................................................................. 73 7.2.3 Criteria for Patentability ........................................................................................................ 73 7.2.4 Contents of Patent Application .............................................................................................. 74 7.2.5 Processing of Patent Application ........................................................................................... 74 7.2.6 Comparison of the U.S. Patent System with Other Patent Systems ...................................... 75

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7.3 European Patent Convention .................................................................................................................. 76 7.3.1 Structure and Procedures ....................................................................................................... 77 7.3.2 Comparison with US Patent System ...................................................................................... 787.4 Japanese Patent System .......................................................................................................................... 80 7.4.1 Comparison of Japanese Patent Systems with US Patent System ......................................... 81Summary ..................................................................................................................................................... 83References ................................................................................................................................................... 83Recommended Reading ............................................................................................................................. 83Self Assessment ........................................................................................................................................... 84

Chapter VIII ............................................................................................................................................... 86Role of Patents in Promoting Invention, Innovation and Technology Development ........................... 86Aim .............................................................................................................................................................. 86Objectives .................................................................................................................................................... 86Learning outcome ........................................................................................................................................ 868.1 Introduction ............................................................................................................................................ 878.2 Justification for Patents .......................................................................................................................... 878.3 Intellectual Property in Knowledge Economy ....................................................................................... 878.4 Patents as an Instrument of Rights and Privileges ................................................................................. 88 8.4.1 Proprietary Rights and Privileges .......................................................................................... 88 8.4.2 Patent Applications as Gold Mine of Information ................................................................. 908.5 New Technologies and Patents .............................................................................................................. 91 8.5.1 Computer Software Protection and Patent ............................................................................. 91 8.5.2 Biotechnology and Patents ..................................................................................................... 91 8.5.3 Patent and Technology Development .................................................................................... 928.6 Licensing Expertise ................................................................................................................................ 93Summary .................................................................................................................................................... 94References ................................................................................................................................................... 94Recommended Reading ............................................................................................................................. 94Self Assessment ........................................................................................................................................... 95

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List of Figures

Fig. 5.1 The workflow in the processing of trademarks applications .......................................................... 50Fig. 5.2 Design application flow chart ......................................................................................................... 52Fig. 8.1 Inventions-innovation-profits-R&D-invention: A virtuous cycle ................................................... 89Fig. 8.2 Japanese inventions-innovation-profits-R&D-invention ................................................................ 89

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List of Tables

Table 7.1 Comparison of patent specifications for Japan, PCT, USA, and EPC ......................................... 81Table 7.2 Major differences between the U.S., Japanese, and European patent systems ............................ 82

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Abbreviations

ALAI - Association Littéraire et Artistique InternationaleARIPO - African Regional Industrial Property OrganizationBTG - British Technology GroupCB - Copyright BoardCGPDTM - Controller General of Patents, Designs and TrademarksDIPP - Department of Industrial Policy and PromotionEPC - European Patent ConventionEPO - EuropeanPatentOfficeGATT - General Agreement on Tariffs and TradeGI - Geographical IndicationGIR - Geographical Indications Registry IP - Intellectual PropertyIPC - InternationalPatentClassificationIPO - IntellectualPropertyOfficeIPR - Intellectual Property RightsJPO - JapanesePatentOfficeMITI - Ministry of International Trade and IndustryNRDC - National Research Development CorporationOAPI - African Intellectual Property OrganizationPCT - Patent Cooperation TreatyPIS - Patent Information SystemPLT - Patent Law TreatyPO - PatentOfficeincludingtheDesignsWingSAPA - Subscriber Advance Payment SchemeTLO - TechnologyLicensingOfficeTMR - Trademarks Registry TRIPS - Trade Related Aspects of the Intellectual Property RightsUSPTO - UnitedStatesPatentandTrademarkOfficeWCT - WIPO Copyright TreatyWIPO - World Intellectual Property OrganizationWTO - World Trade Organisation

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Chapter I

General Overview of Intellectual Property

Aim

The aim of this chapter is to:

introduce the different categories of intellectual property •

elucidate concept of intellectual property•

explain the rationale behind IP •

Objectives

The objectives of this chapter are to:

explain trademarks and service marks•

explicate IP and the constitution of India•

elucidate enforcement of IPRs•

Learning outcome

At the end of this chapter, you will be able to:

understand the concept of copyright•

describe concept of intellectual property•

identify different categories of intellectual property•

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1.1 IntroductionThis is an age of Knowledge Economy; the economy which is propelled by Intellectual Property (IP). The IP embedded products enjoy competitive advantage in the open market economy. What exactly is IP?

We encounter intellectual property in everyday lives. The design on the bed sheet and the pillow covers, the bed and other items of furniture in the house, the cereals for breakfast, the pasteurised milk in tetra pack, the soft drinks and their bottles, the television, the personal computer, the gas stove, the microwave, the refrigerator, the vehicles, theweighingmachine,thebooks,thefilms,themusiccassettes,thetiles,thepaints,andpracticallyeverythingweuse is the product of human ingenuity, knowledge and skill, besides labour and capital and falls under some kind of intellectual property that had to be respected before the item could be lawfully manufactured.

1.2 The Concept of Intellectual PropertyThe concept of intellectual property (IP) will be understood better if we understand what is meant by the term property. To a lay person property means some material object belonging to a particular person. The concept of ownership is critical to the concept of property. Ownership means the right to possess, use and dispose of the property and exclude the others. If a society does not recognise ownership, it will have no concept of property. In the legal sense, property refers to the bundle of rights that the law confers on a person by virtue of the ownership and possession of an object.

However, a material object under one’s possession may not amount to much as property if it does not become a resource to satisfy some human want or need. Man by exertion of his intellect, either in the form of ideas or technology, converts a natural resource into something of utility, making it an item of property.

Two factors significantly influence the value of an object as property.Thefirst is scarcity,which refers to itsavailability in relation to the need. The scarcer is a thing in relation to the demand for it, the higher is its value. The secondimportantfactorinfluencingthevalueofanobjectistheknowledgeofitsuseoruses.Thehigherthevalueof an object, the more zealously is it guarded as a ‘property’.

What rights constitute the bundle of rights that are termed as property? These rights deal with various aspects of the relationship between persons and their property, such as: ownership and possession; use and enjoyment of the fruits of its application; exclusion of others from use and application of the property; and transfer of rights in the property.

The property can relate to a tangible thing for example, land or buildings, or to an intangible thing for example, a copyright. In the former case they are referred to as tangible or corporeal property, in the latter case they are known as intangible or incorporeal property.

Tangible property has a big advantage over intangible property: the fact of possession of a physical object by the owner ensures that any other person is excluded from using it. It is not so with the creations of the mind, say, an invention or a book which can be reproduced otherwise.

This brings us to the concept of intellectual property. It is simply the property created by the application of human mind.Itisnon-physical(intangible)anditderivesitsvaluefromidea(s).ThereisnouniformdefinitionofIP.Thedomain of IP is expanding fast as knowledge and information become key drivers of techno-economic growth and of societal progress in general.

IP is a dynamic area; as science and technology make rapid advances, and as competition for markets becomes everfiercer,humaningenuityisthrowingupevernewideasandnewerproducts.Newerareasareemergingwithclaims for recognition as IP. They have to be accommodated as IP either in one of the existing categories or in new categories that have to be created. Thus while copyright originally was concerned with works of literature and artistic works gradually its scope expanded to cover works of drama, music, photography, cinematography, audio-visual recordings, performances, broadcasts and now computer programmes.

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Among the successful new categories to be recognised as entitled to the status of IP are: ‘Geographical Indications’ which combine in themselves appellations of origin and indication of source and accord special treatment to wines and spirits; lay out design (topography) of integrated circuits, which has been recognised as an independent form of IP under the Agreement on Trade Related Aspects of the Intellectual Property Rights (TRIPS Agreement) of the World Trade Organisation (WTO). Genetic resources, and traditional knowledge and folklore have made strong claims for protection as IP. Galloping advances in the realm of internet and convergence may be the harbinger of new forms of IP.

1.3 Different Categories of IP InstrumentsIP has been generally divided into two main branches viz., (a) Industrial Property, and (b) Copyright.

Industrial property consists of rights relating to inventions, trademarks, industrial designs and geographical indications.

Copyrightprotectsrightsrelatedtocreationofhumanmindinthefieldsofliterature,scientific,music,artandaudio-visual works, etc. Related rights protect performances of performing artists, phonograms and broadcasts. Related rights and neighbouring rights are terms used interchangeably.

The TRIPS Agreement of the WTO recognises seven categories of intellectual property rights (IPRs), which had already been enshrined in various treaties administered by the World Intellectual Property Organisation (WIPO) since the late 19th century:

Copyright and Related Rights •Trademarks, Trade names and Service marks •Geographical Indications •Industrial Designs •Patents •Layout Designs of Integrated Circuits •Undisclosed Information •

1.3.1 CopyrightIt is granted in respect of original literary, musical, artistic or audio-visual works – the creations of authors, playwrights, composers,artists,filmmakers.Therightsundercopyrightinclude:rightsofreproduction,communicationtothepublic, adaptation and translation of work. Copyright is now spoken together with the related or neighbouring rights as one category. Though originality in expression is a requirement for copyright, the quality of the works is not an issue at all. It is to be noted that though the copyright subsists in works which are the creation of ideas, it is not theideathatthecopyrightprotects,butmerelytheexpressionoftheideaasfixedinaparticularform.Ifanauthorthinks up the plot of a story, it is not the idea of the plot that is entitled for protection under a copyright but only the writtenformofthestoryflowingfromtheidea.Anyotherpersoncancomeupwithadifferentlywrittenstoryonthe same idea and have a valid claim for a copyright over it. If a painter has a copyright in a painting which depicts sunrise no one else can legally copy that painting without his / her permission.

However, there is no copyright in the idea of sunrise and anybody is free to paint sunrise as per his / her own imagination, and everyone will be entitled to copyright in one’s own creation. The copyright is in the painting, not in the idea of sunrise. Copyright is an inherent right that commences since the completion of the work as an expression of the idea. Copyright comes with the doctrine of ‘fair use’, which includes use of the work for purposes of criticism, comment, news reporting, teaching and education, scholarship and research. Fair use does not constitute infringement. We may also remember that unlike patents or registered designs, copyright confers no monopoly rights. In fact if two persons can produce precisely similar work demonstrably working independently of each other, each one will have the legal right to his / her own creation. It should be reiterated that registration is not required for a work to be protected. A copyright work is protected from its creation.

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1.3.2 Trademarks and Service MarksThey are distinctive symbols, signs, logos that help the consumer to distinguish between competing goods or services and are a major part of the goodwill a company enjoys in the trade. A trade name is the name of an enterprise, which also individualises the enterprise in the minds of the customers. They are therefore protected as IP. Thus a trade mark is a sign that individualises the goods of a given enterprise and distinguishes them from the goods of its competitors. You may be quite familiar with the distinctive marks of Pepsi-Cola and Coca-Cola Companies. Similarly in passenger cars a characteristic star in front, or a characteristic treelike T, enclosed in an ellipse and displayed in thefrontandtherearofavehicleimmediatelyproclaimsthatthefirstvehicleisfromtheMercedesandthesecondone is from the Tata’s stable. Trademarks invariably come to symbolise quality of goods or services in the customer’s mind. However, there is no requirement in law that trade mark has to meet any quality standards. If quality is not maintained, customers will shift to another brand. A trade mark is required to be distinctive and not deceptive. If you market goods of fake leather under the trade mark ‘Realeather’ you will be taken in by a deceptive trademark.

1.3.3 A Geographical Indication (GI)Itisasignusedongoodsthathaveaspecificgeographicaloriginandpossessqualitiesorareputationthatareduesolelytotheplaceoforigin,forexample,itsspecificclimate,soilormethodofproduction.Suchgoodsenjoyanadvantage over competing goods solely because of their geographical origin, which thus becomes a kind of IP and is protected. A GI is different from a trade mark. A trade mark is a sign that distinguishes the product and services of an enterprise from those of another. The owner of a trade mark is entitled to exclude others from using the trade mark. A GI merely tells that a product is produced in a certain place and has certain characteristics which are due to theplaceofproductionlikespecificsoil,orclimateormethodofproduction.Itcanbeusedbyallproducerswhomake their products in a place designated by the GI and share the same qualities. Some best known examples of GI are: Champagne (special kind of sparkling wine originating in the French region of that name; Kolhapuri chappals from Kolhapur, India). The Paris Convention for the Protection of Industrial Property uses two terms in the context of geographical indication: appellation of origin and indication of source. Indication of source on a product merely indicates that the product originates in the place indicated. Appellation of origin indicates not only the place of origin but also the essential quality link between the product and the area of its origin. Protection of GI can be done in many ways: through a sui generis legislation or through decrees, or through registration or through reliance on tort of ‘passing off’ (which basically says that unfair trade practices should not be used). GI can also be protected bycollectivemarksbelongingtoagroupoftradersorproducersoracertificationtrademarkthatdoesnotbelongtoanyone;theunderstandingforitsregistrationisthatanyonewhomeetsthespecifiedconditionscanuseit.

1.3.4 Industrial DesignAn industrial design is the ornamental or aesthetic aspect of an article; it may consist of three dimensional features such as shape or surface, or of two-dimensional features such as patterns, lines or colour. The design serves as a tool for product differentiation and lures customers by enhanced visual appeal. Industrial designs are applied to a wide variety of products of industry or handicraft: from watches, jewellery, fashion and other luxury items to industrial and medical implements; from house ware, furniture, electrical appliances to vehicles and architectural structures; from practical goods and textile designs to leisure items such as toys.

An industrial design is distinguished from trade mark primarily because it is constituted by the appearance of a product, which is not necessarily distinctive, whereas a trade mark is necessarily to be distinctive to serve as a sign forproductdifferentiation.Thefunctionsof,andthejustificationforprotectingindustrialdesignsandtrademarksare quite different. Designs must relate to the appearance of the object which is not determined by technical or functional necessity. Designs enhance the visual appeal and add to the commercial value of the product; they also facilitate the marketing and commercialisation of the product. For registration a design needs to be new and original, though the notion of these qualities may vary from country to country. In certain conditions, an industrial design can be protected under copyright law or the law against unfair competition.

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1.3.5 PatentsA patent is a statutory right granted for a limited period to an inventor in respect of an invention to exclude any other person from manufacturing, using or selling the patented product or from using the patented process, without duepermission.UndertheTRIPSAgreementoftheWTO,inventionsinallfieldsoftechnology,whetherproductsor processes; are patentable if they meet the three criteria of novelty, involving an inventive step and being capable of industrial application. Patents are one of the oldest forms of IP protection.

1.3.6 Layout Design (topography) of Integrated CircuitsThis is a relatively new area in IP which has appeared with computer technology and has acquired importance as the technology makes rapid advances. The programming instructions on a computer chip are implemented through a circuitry printed on semiconductor layers. The design of circuitry on the chip requires great investment of knowledge, skills and capital and these needs to be protected as IP. The right in topography aims to prevent copying of the layout design but reverse engineering to come up with improved design is regarded as fair. It may also be noted that while for claiming a patent an invention is required to meet the criteria both of novelty and inventive step, a layout design is only required to be original. Protection of layout design confers no monopoly right; independent development of a design, identical with a protected design is permitted.

1.3.7 Undisclosed InformationUndisclosed information gets recognition as a kind of IP that needs to be protected under the TRIPS Agreement. Earlier to it, the WIPO treaty (1967) and the Paris Convention recognised unfair competition as a part of IP. Unfair competition includes all acts contrary to honest practices in industrial or commercial matters; undisclosed information restricts honest practices to protection of trade secrets. The TRIPs Agreement (Article 40) does refer to the control of Anti-Competitive Practices in Contractual Licences; the Agreement also empowers member-States to make in their national legislation suitable provisions to prevent abuse of IPRs.

The intellectual property thus vests in a creation of human mind involving knowledge, labour and skill. It is the resultofsustainedintellectualapplicationandeffortsofinventors,authorsandothercreativepersons,includingfirstadaptersandisapowerfulfactorofproductionandwealthgenerationinamoderneconomy.TheIPisasignificantfactor in gaining competitive advantage over rivals in the trade and industry as the entire idea of IP is to protect the owner against its unlawful use by any person or party offering same or similar products or services.

IPRs, as their exercise has evolved in practice, can secure for the owner a broad range of advantages depending on the national law; for example, IPRs can effectively block imports or exports of relevant goods, or they can be used to divide markets, or restrict movement of goods produced by an enterprise from one territory to another. To fully comprehend the consequences of a national legislation in matters of IPR, it is important to grasp the purpose the law seeks to serve by creating these private rights in property. The chain of production to distribution of goods involves thefollowingmajorsteps:manufacture;firstsalebythemanufacturer;subsequentsales;exports/imports;use,otherdealings. It is for the state to decide in which steps it should intervene to grant exclusive rights to the owner to ensure just reward for creative activity and best techno-economic returns for the State and the society.

A point to appreciate here is that IP is concerned with the human capacity to produce something new and offer it for public use. The property does not lie in the thing so produced and offered but in the owner’s rights over the creation of his/her intellect. This intellectual property is intangible, and though in each case it is associated with a tangible object, it is independent of the object itself. Again, what IP protects is the use or value of ideas and not the abstract ideas themselves; there are no rights, hence no property, over the ideas per se.

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1.4 Rationale Behind Intellectual PropertyJust as one goes back to the concept of ‘property’ to appreciate better the meaning of intellectual property, one maylooktothejustificationsadvancedforprotectionof tangiblepropertytoappreciate thejustificationforIP.Withinthecapitalistsystemsuchjustificationcomesfromtwoangles:thelabourjustificationandthepersonalityjustification.

Thelabour justificationwaspropoundedbyLockewhoviewedthelabourofanindividualasbelongingto theindividual and when one takes from the State what Nature has provided to it – some ‘goods’ akin to ‘commons’ – and mixes one’s labour with it, one creates property for one self. Labour adds value to the goods and converts ‘commons’ into property. The creation of social value both by converting commons into goods and adding more value to goods by investment of labour deserves to be rewarded to encourage people to be innovative as also to perform better.

In moving from the tangible property to the intellectual property, both the views – rewarding innovation as well as rewarding value creation – have relevance. The society has to encourage people to strive to be innovative and come up with creative solutions to generate wealth and welfare as also to add value to existing goods and services.

Locke’s idea of occurrence of commons in abundance in the primitive stage is apt in the consideration of intellectual property because ideas are always around us in abundance; this is the public domain. The IPRs do not appropriate the ‘public domain’ – the ‘commons’ are no body’s private property. The IP law takes care of it by ensuring that no protection is given to either the everyday ideas, or highly extraordinary ideas like advances in mathematics. The IP law takes care that nobody unduly appropriates ‘public domain’ by ensuring that the rights are available only for a limited period after which the intellectual creation comes to the public domain.

Herewedrawattentiontoarathersubtleparallelbetweenthefieldsoftangiblepropertyandtheintangibleintellectualproperty.Inthefieldoftangiblepropertytherightsofslavesasgeneratorsofpropertywerenotrecognised.Evennow the labour of housewife fetches no remuneration, and remains unrecognised as generator of wealth. Similarly, in the realm of IP the traditional knowledge and folklore, is yet to gain solid recognition as IP, and enjoys no commensurate protection as the creation of knowledge, skills and ideas, developed and perfected by local communities overcenturies.Thisonlyconfirmstheviewthatpropertylaws,whetherforthetangiblepropertyortheintellectualpropertyreflectpowerrelationsinsociety.

ThejustificationforIPfromthe‘personality’angleregardspropertyasamechanismofexpressionofone’spersona.Hegel is the main proponent of this view: property is the embodiment of personality. Thus property is a very personal andprivatethingandneedstobeprotected.Inthecaseoftheintellectualproperty,however,thisjustificationmayapply in varying degrees to subject matters of different categories of IP. While products of art, music and literature andtrademarksmayreflectthepersonalityoftheircreatortoaremarkabledegree,theinventionsorengineeringdesigns may not really support the personality thesis.

Amajorrecognitionforthepersonalityjustificationofpropertyisseeninthemoralrightsunderthecopyrightlaw.These are deemed to be the inalienable rights of the author to safeguard the integrity of the work against any change that would damage the author’s reputation or the message of the work.

Clearly a completely satisfactory rationale for intellectual property protection is not available either from the labour angleorthepersonalityangle.DifferentcategoriesofIPwouldappeartoderivedifferentdegreesofjustificationfromdifferent angles. Patents and industrial designs would be better supported from the labour point of view; copyrights andtrademarkswouldfindbetterjustificationfromthepersonalityangle.TheentiredomainoftheIP,however,isservedbetterwhenboththeviewsaretakentogetherasjustificationfortheprotectionofproperty.

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Underlying premises From the foregoing discussions, it is seen that the IPRs are based on three underlying premises:

Creative activity culminating in IP can be increased by measures aimed to encourage it. Also, it will not be •generated in economically adequate quantity for public use without economic incentives. Grant of legal monopoly powers, even if for a limited period is the only way to ensure adequate economic •benefitsasjustrewardforthecreationofIP.The provisions of the global IP regime ensure just economic returns to the creation of IP while safeguarding •the interest of other entrepreneurs and the society in general.

1.5 Rights of the Owner of the IP, Other Individuals and the Society – Striking A Balance Itwillbewelltorememberherethatwhateverbethejustificationfortheprotectionofintellectualproperty,therecanbe no absolute rights in IP because all individual rights are subject to the recognition of, and respect for, the rights of other individuals and the rights of the society. It is the role of the State and the purpose of the law to harmonise conflictingclaimsandachieveabalance.Besides,theState,throughtheinstrumentalityoflaw,strivestoreachdefinitegoalsinkeepingwiththeaspirationsofthesociety.Thepropertyrightsarethereforegenerallytemperedwith considerations of distributive justice.

Protection of individual property is important but it is equally important in a democratic polity that the State create conditions and necessary structures for people to have wide-spread access to opportunities. It is this balancing responsibilityoftheStatewhichisreflectedintheIndianLaw:whileprivatepropertyisstronglyrespectedandlegally protected, it is no more a fundamental right.

In a competitive world while creativity and continuous innovation is absolutely necessary to remain on the scene, it is also equally important to ensure that one’s ideas, products and designs are not copied without authorisation. Similarly one must learn how to acquire lawfully another person’s ideas, products and designs for further reproduction and useinone’sownbusiness.EssentiallyIPRsaredefinedinthenegativeandmeanttostopothersfromcopyingorcounterfeiting of the protected application, or expression of an idea without due permission. In the case of patents even a person who arrives at the same invention independently of the owner of the right is prohibited to exploit it without a licence from the owner of the right. In other forms of the IP e.g. for copyright or trade mark, absolute monopoly of the owner of the right may be suitably diluted. However, it should be clear that the grant of IPRs is to be seen in the context of rights of others, which are not to be ignored, and the public interest which remains paramount. The Intellectual Property Rights also confer no privilege on the products of the person owning the right in trade.

Inthefieldofintellectualproperty,therightsoftheindividualowneraresoughttobebalancedwiththerightsof others, including the wider public interest, by several means like limiting the period during which exclusive IPRs are available to a reasonable degree; making preservation of life, environment, peace, morality as paramount conditions in granting IPRs – if the IPR would have an adverse impact on any of these, it is not granted; providing for compulsory licensing, or even revocation of patent, under certain circumstances e.g. if the owner abuses the right simplytoblockotherswiththeresultthatthebenefitsoftheIPdonotflowtothepublicatreasonablecost,etc.

1.6 Enforcement of IPRsWhile most contracts lay down clearly and in detail the rights and obligations of contracting parties, any disputes that arise in connection with the contract can be resolved on the basis of provisions in the contract itself. What is different with IPR is the fact that it is aimed at excluding others from doing certain things as regards the IP even without the existence of a formal contract between them and the owner of the right. The effectiveness of IPRs is clearly dependent on how speedily they can be enforced with reasonable cost.

As requirement of space for storage of information and means and cost of copying tumble down with the advance of information and communication technologies, the scale and incidence of copying/reproduction have greatly increased.Piracyandcounterfeitingisthescourgeoftheworldtrade.Inbooks,films,music,computerprogrammes,pharmaceuticals and consumer goods, infringement of IPR on commercial scale is rampant.

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While national laws provide legal remedies for violations of IPRs, the TRIPS Agreement lays down the provisions which must be included in the national IP laws and regulations of all member countries of the WTO to enable effective enforcement of IPRs. The remedies are meant to deter incidence of future infringement without harming legitimate trade, while safeguarding against the abuse of IPRs.

The TRIPS Agreement prescribes a number of requirements for a due process in IP law like fair and equitable procedures, not being unduly complicated or costly and not entailing unreasonable time limits or unwarranted delays, right tobeheardandgiveevidence,right towrittendecision, judicialreview,etc. includingindemnificationofdefendant against abuse of enforcement procedures. The remedies that the Courts may grant can be both injunctive and compensatory relief. The defendant may be asked to deliver up the infringing material for destruction as a requirement of justice.

1.7 IP and the Constitution of IndiaTheConstitutionofIndiamakesnospecificmentionofintellectualproperty.PropertyintheConstitutiongenerallymeans tangible property. However, IP as a form of property can be put under Article 300A which deals with property and be entitled to a legal right.

Expertshavespottedpossibilitiesofaconflictbetween the IP, specially thecopyright,and theconstitutionallyguaranteed freedom of speech and expression. The Courts have zealously upheld this fundamental freedom. In a case of any restriction on speech and expression, the perspective of the rights of viewers and listeners, is likely to get precedence over the perspective of the rights of broadcasters. Any rights (monopolies) that undermine the right to freedom of speech and expression may face a challenge.

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Summary The concept of intellectual property follows the concept of physical property which is inalienably linked to the •concept of ownership of an article and means the right to possess, use and dispose of the article (property). Intellectual property is the creation of human intellect and is intangible (incorporeal) whereas the physical •property is tangible (corporeal). Property means a bundle of rights in relation to the object owned. They concern ownership and possession; •use and enjoyment of the fruits of application of the property; and the exclusion of others from such use and enjoyment, and the transfer of rights in the property. The TRIPS Agreement under the WTO recognises seven categories of IP viz. copyright and related rights, •trademarks and service marks, geographical indication industrial designs, patents, layout designs of integrated circuits and undisclosed information. However, the domain of IP is expanding and soon new claimants may arise due to rapid advances in science and technology. TherationalebehindIPflowsfromthelabourangleorthepersonalityangle.•The State, and through it the global IP regime, seeks to strike a balance between the interests of the creator of •the IP and the interests of the other entrepreneurs and the Society in general.The, TRIPS Agreement of the WTO prescribes enforcement measures to be incorporated in national laws for •ensuring effective, speedy and cheap remedies against violation of IPRs. TheConstitutionofIndiamakesnospecificmentionofIP.However,thereisnothingintheconstitutionthat•would bar treatment of IP under property clauses.

ReferencesIntroduction to intellectual property rights• . [Online]Available at: <http://webserver.ignou.ac.in/schools/sos/ipr_web2/IPR_Awareness/Web%20pages/FINAL%20UNIT%201.htm> [Accessed 29 June 2012].What is intellectual property?• [Online]Available at: <http://www.wipo.int/about-ip/en/> [Accessed 29 June 2012].Intellectual Property Rights• [Video Online] Available at: <http://www.youtube.com/watch?v=RCxWl5rIXL8> [Accessed 29 June 2012].Intellectual Property Rights part-I• [Video Online] Available at: <http://www.youtube.com/watch?v=GeA3TrMVfd8> [Accessed 29 June 2012].Durham, A. L., 2004. • Patent Law Essentials: A Concise Guide. Greenwood Publishing GroupElias, S. & Stim, R., 2004. • Patent, Copyright & Trademark: An Intellectual Property Desk Reference. Nolo.

Recommended ReadingMaskus, K. E., 2000. • Intellectual Property Rights in the Global Economy. Institute for International Economics.McJohn, S. M., 2008. • Intellectual Property: Examples & Explanations. Wolters Kluwer Law & Business.Bouchoux, D. E., 2012. • Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets. 4th ed., Delmar Cengage Learning.

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Self Assessment_______________ means the right to possess, use and dispose of the property and exclude the others.1.

Ownershipa. Propertyb. Objectivityc. Disposald.

Howmanyfactorssignificantlyinfluencethevalueofanobjectasproperty?2. One a. Twob. Five c. Sixd.

Which concept is critical to the concept of property?3. Scarcitya. Technologyb. Intellectual propertyc. Ownershipd.

IP has been generally divided into _______ main branches.4. twoa. threeb. eightc. tend.

Which of the following statements is true?.5. Intellectual property consists of rights relating to inventions, trademarks, industrial designs and geographical a. indications. Industrial property consists of rights relating to copyright.b. Industrial property consists of rights relating to inventions, trademarks, industrial designs and geographical c. indications. Copyright act consists of rights relating to inventions, trademarks, industrial designs and geographical d. indications.

The _______ Agreement prescribes a number of requirements for a due process in IP law like fair and equitable 6. procedures.

TRIPSa. RITPSb. IPLc. IP treatyd.

IP as a form of property can be put under which article that deals with property and be entitled to a legal 7. right?

Article 50Ba. Article 300Ab. Article 350Cc. Article 32Cd.

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The rationale for IP has to be sought both in the labour angle and the ________ angle together, rather than in 8. any of them singly.

technicala. intelligenceb. personalityc. legald.

____________________ may consist of three dimensional features such as shape or surface, or of two-9. dimensional features such as patterns, lines or colour.

Industrial designa. Geographical Indicatorb. Copyright actc. TRIPSd.

What is required to be distinctive and not deceptive symbols, signs, logos that help the consumer to distinguish 10. between competing goods or services?

Propertya. Objectsb. Industrial servicec. Trade Markd.

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Chapter II

Intellectual Property Rights in India

Aim

The aim of this chapter is to:

introduce history of IP legislation•

elucidate the Indian patent law•

explain the concept of IP law in India•

Objectives

The objectives of this chapter are to:

explain patents•

explicate Indian copyright law•

elucidate Indian trade mark law•

Learning outcome

At the end of this chapter, you will be able to:

understand Indian designs law•

describe trademarks•

enlist major international treaties signed by India•

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2.1 IntroductionThe protection of intellectual property rights in India continues to be strengthened. There is a well-established statutory, administrative and judicial framework to safeguard rights, whether they relate to patents, trademarks, copyright or industrial designs. Well-known international trademarks have been protected in India even when they were not registered in India. The new Trademark Act allows registration of service marks. Hence, Court’s recognition of service marks in the past has been now given statutory protection. Computer software companies have successfully curtailed piracy through court orders. Computer databases have been protected. The courts, under the doctrine of breachofconfidentiality,accordedanextensiveprotectionoftradesecrets.Righttoprivacy,whichisnotprotectedeven in all developed countries, has been recognised in India. Steps are being taken by the Government of India to strengthen and modernise the intellectual property administration system, including patent information services, trademarksregistrationandpatentofficesinIndia.

The tradition of scholarship and intellectual creativity in India goes back to a few millennia. Yet the concept of Intellectual Property Rights in the modern sense is rather new and would appear to have no cultural moorings or sanction in our country. The history of intellectual property rights in India backed by enforceable legal provisions scarcely goes back to 150 years.

2.2 History of IP Legislation IntellectualpropertylegislationwasintroducedintotheinternationaltradingsystemfortheveryfirsttimebytheAgreement on Trade-Related Aspects of Intellectual Property Rights or TRIPS, the international agreement that exists to set down standards for various forms of IP regulation as applied to the members of the World Trade Organisation (WTO). TRIPS was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.

2.2.1 Patents ThefirstIndianstatuteonpatentswaspassedin1856grantingsomeexclusiverightstoinventorsfor14years.Ithadtobere-enactedwithsomemodificationastheActof1859.Itgrantedtoinventorsof‘newmanufacture’exclusiverights to make, sell and use the invention in India, or to authorise someone to do so. Its scope was expanded to include designs, under ‘the new manufacture’ in the Patents and Designs Protection Act 1872. Then the Inventions and Designs Act of 1888 was introduced, and later the Indian Patents and Designs Act 1911, (which was modelled largely on the British Patents and Designs Act 1907). After independence in 1947, the Government felt the need for a more effective patent legislation.

The existing situation with regard to patents was reviewed by two expert committees: one, headed by Justice Rajagopal Iyengar, and another headed by Bakshi Tek Chand. It was revealed that the MNCs, who owned90% of all patents in India, had misused patents largely to ensure a protected market in India for their products, denying availability of many essential goods to people a competitive prices. The Patents Bill following the reports of these CommitteeswasdebatedforadecadewhenfinallytheIndianPatentsAct1970wasenacted.Itwashighlyacclaimedby, amongst others, UNCTAD, as a most progressive patent law and inspired similar legislation in many developing countries.Itclearlycodifiedinventionsthatcouldnotbepatented,permittedpatentingofonlyprocess,notproducts,ofmanufactureinthefieldsoffood,drugsandmedicinesandsubstancesproducedbychemicalprocesses.Thetermof patent was in the case of process relating to food, medicines and drug, 5 years from the sealing of the patent or 7 year from the date of patent whichever was earlier; in case of other process patents, it wa14 years; it had provision for ‘licences of right’ and compulsory licensing in some circumstances; it provided for use of inventions for government purposes, acquisition of invention by Central Government and revocation of patents in public interest

Following India’s membership of the WTO and her obligations under the TRIPS Agreement, the Indian Patents Act 1970, was amended by Patents (Amendment) Ac1999 and Patents (Amendment) Act 2002, which came into force on May 2, 2003.The Provisions of the present Act are in line with the TRIPS Agreement.

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2.2.2 TrademarksNo specific legislation existedon trademarkbefore 1940.However, remedies for violationof trademarkwereavailableundertheIndianPenalCode1860andSpecificReliefAct,1877.TheTradeMarksAct,1940wasreplacedby the Trade and Merchandise Marks Act, 1958, which has now been repealed and replaced by the Trade Marks Act, 1999.

2.2.3 DesignsDesigns continued to be governed by the provisions of the Indian Patents and Design Act, 1911, until the Designs Act, 2000 was passed.

2.2.4 CopyrightIn matters of Copyright the English Copyright Act, 1842 was deemed applicable to India, though it was never expressly declared to be so. The application of the Copyright Act, 1911 of England was extended to India as a British dominion. The Indian Copyright Act, 1914 introduced criminal sanctions for infringement and continued till the copyright act 1957 came into force on 21.1.1958. This was necessitated as much by the changed status of India as an independent nation as by that advancement of technology of reproduction and communication. The Act had several original features; registration of copyright was voluntary; administrative machinery for registration of copyright was established; the government was empowered protect copyright of citizens from other countries. It hasbeenamendedsincetheni1983,1992,1994,and1999–thelastone,afterIndiaratifiedtheTRIPSAgreementas a member of the WTO.

Besidesthesefourprincipalfieldsforintellectualpropertyprotection,namely,patentstrademarks,industrialdesignsand copyright, India has enacted the IP laws for geographical indications of goods, protection of plant varieties and farmers’ rights, semiconductor IC layout designs, information technology, and biodiversity.

2.3 Overview of IP Law in IndiaTheIndianLawtograntandregulateprotectionofintellectualpropertyinvariousfieldsofIPhasnowbeenalignedto the requirements and provisions as visualised under the TRIPS Agreement of the WTO.

2.3.1 The Indian Patent LawThe law relating to patents is laid down in the Indian Patents Act (1970) as amended by Patents (Amendment) Act, 1999andPatents(Amendment)Act,2002.Someofthemoresignificantchangesintroducedbytheseamendmentsin the original Act of 1970are as follows:

There is no restriction now on Indians applying for patents abroad•Thedefinitionofterm‘invention’isfullyconsistentwiththeTRIPSAgreementandincludesbothproductsand•processesinallfieldsoftechnology.Beforeamendmentonlymethodsorprocessesofmanufacturerelatingtofood, medicines and drugs were patentable. Thelistofitemsthatarenottocountasinventionsforgrantofpatentshasbeenmodifiedtoincludeexclusions•permitted by the TRIPS Agreement. Earlier an invention was not patentable if its primary or intended use would be ‘contrary to law or morality or injurious to public health.’ Now it will not be considered an invention if its ‘primary or intended use or commercial exploitation’ could be contrary to public order or morality or which causes serious prejudice to human animal or plant life or health or to the environment. Also ‘discovery of any living thing or non-living substance occurring in nature’ is not regarded as an invention under the amended Act. The rights of the patentee have been brought in line with the provisions of the TRIPS Agreement, as necessitated •by changes permitting product patents.Reversal of burden of proof when infringement of a process patent occurs has been included in accordance •with the TRIPS Agreement. It is now for the defendant to prove that the process is patented process alleged to be infringed.

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The term of patent is now uniform 20 years as required by the TRIPS. Earlier, for a process patent, relating to •anitemoffood,medicineordrugitwasfiveyearsfromthedateofsealingofthepatentorsevenyearsfromthe date of application whichever period was shorter, and fourteen years from the date of patent in respect of any other invention. The provision of licenses of right has been omitted and compulsory licensing brought in line with TRIPS•Provisions for exclusive marketing rights have been included.•Provisions for parallel import of patented products have been included.•Protection of biodiversity and traditional knowledge, under ‘inventions not patentable’ category.•

The Act makes the Controller General of Patents, Designs and Trademarks appointed under the Trade Marks Act, 1999 as the controller of Patents with powers of a civil court.

2.3.2 Indian Copyright LawThe Copyright Act, 1957, as amended in 1999 governs the copyright law in India. It came into force on January 15, 2000.Ithasestablishedacopyrightoffice,undertheimmediatecontroloftheRegistrarofCopyrights,tofacilitateregistration of copyright. It has also established a Copyright Board (CB) with Registrar of copyrights as its Secretary. The CB is meant to hear and settle certain kinds of disputes arising under the Act.

TheActdefinesvariouscategoriesofworksinwhichcopyrightsubsists,andhasinteralia,provisionsfordeterminationoffirstownershipofcopyright,thescopeofrightsconferred;assignmentandlicensingofcopyright;compulsorylicensing and the circumstances in which it could be granted; performing rights of societies; broadcasting rights; authors special rights; international copyrights. The Act sets out in detail what constitutes infringement and what does not; civil and criminal remedies against infringement and remedies against threat of legal proceedings without any ground.

The Indian copyright law is in conformity with the provisions of the TRIPS Agreement of the WTO. It is also in line with the provisions of the Berne Convention for the Protection of Literary and Artistic Works (Brussel Text, 1948), and the Universal Copyright Convention (1952); India is a member of both conventions.

2.3.3 Indian Trade Mark LawThe Trade Marks Act, 1999 lays down the law governing trade marks in India.

It extends the scope of protection by registration of trade marks to services, besides goods. It provides for a single registerandsimplifiestheprocedureforregistration.Itrecogniseswellknownmarksasadistinctcategory,andprovides for registrationofcollectivemarks,ownedbyanassociationofpersons. Itfirmlydiscouragespersontempted to exploit other person’s good name in business through false or misleading means.

The Controller-General of Patents, Designs and Trade Marks is the Registrar of Trademarks. The act establishes an appellate board with the same powers as is vested in civil court; any proceedings before the Board are deemed as judicial proceedings.

Several measures have been taken to simplify trade mark law and procedure, offer better protection and make enforcement more effective, e.g. a single application for registration in more than one class; increasing the term of protection from 7 years to 10 years; enhancing punishment to bring it at par with the copyright law; making trade mark offences cognizable.

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2.3.4 Indian Designs LawThe Designs Act 2000 lays down the law for protection of industrial designs in India. The Controller-General of Patents, Designs and Trade Marks is the Controller of Designs.

TheActinteraliadefines‘original’andenlargesthescopeofdefinitionsof‘article’and‘design’;itspellsoutwhatdesignsshallnotberegistered,bringsintheinternationallyfollowedsystemofclassificationinplaceoftheIndiansystem provides for restoration of lapsed designs and maintaining the register of designs of computer; the two year period of secrecy of a registered design is revoked and document for transfer of right in a registered design is required to be compulsorily registered. More grounds have been added for cancellation of registration cancellation proceedings are to be initiated before the Controller of Designs instead of a High Court. Infringement attracts heavier penalties; the initial period of registration is enhanced from 5 years to 10 years, extendable by a further period of 5 years. It provides for control of anti-competitive practices in contractual licences. Appeal against an order of the control lies to the High Court.

2.4 IP Acts Enacted By IndiaIndia has enacted the following IP Acts:

The Patents Act, 1970, as amended by the Patents (Amendment) Act, 1999, and the Patents (Amendment) Act, •2002The Copyright Act, 1957 as amended in 1999•The Trade marks Act, 1999•The Designs Act, 2000 •The Geographical Indications of Goods (Registration and Protection) Act, 1999•The Protection of Plant Varieties and Farmers Rights Act, 2001•Integrated Circuit Layout Designs Act, 2000•The Biological Diversity Act, 2002 •

2.5 Major International Treaties Signed By India The important treaties signed by India are listed below:

The Convention Establishing the World Intellectual Property Organisation•The Paris Convention for the Protection of Industrial Property •The Berne Convention for the of Literary and Artistic works•The Patent Cooperation Treaty •The Geneva Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of •their Phonograms. The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of •Patent Procedure The Universal Convention of Copyrights •

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SummaryThe protection of intellectual property rights in India continues to be strengthened. There is a well-established •statutory, administrative and judicial framework to safeguard rights, whether they relate to patents, trademarks, copyright or industrial designs.Intellectualpropertylegislationwasintroducedintotheinternationaltradingsystemfortheveryfirsttimeby•the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPS, the international agreement that exists to set down standards for various forms of IP regulation as applied to the members of the World Trade Organisation (WTO). Thefirst Indian statute onpatentswas passed in 1856granting some exclusive rights to inventors for 14•years. The application of the Copyright Act, 1911 of England was extended to India as a British dominion.•The Copyright Act, 1957, as amended in 1999 governs the copyright law in India. •The Trade Marks Act, 1999 lays down the law governing trade marks in India.•The Designs Act 2000 lays down the law for protection of industrial designs in India. •

ReferencesIP India: Legal Resources for Indian Intellectual Property Advocates and Professionals• [Online] Available at :< http://ipmall.info/hosted_resources/ip_india.asp> [Accessed 2 July 2012].Intellectual property rights: the Indian scenario• [pdf] Available at: <http://egyankosh.ac.in/bitstream/123456789/820/1/UNIT%203.pdf> [Accessed 5 July 2012].Intellectual property law basics• [Video Online] Available at: <http://www.videojug.com/interview/intellectual-property-law-basics-2> [Accessed 5 July 2012].Intellectual property defined• [Video Online] Available at: <http://www.videojug.com/interview/intellectual-property-defined-3>[Accessed5July2012].Cook, T., 2011. • A User’s Guide to Patents. Bloomsbury Publishing.Davis, J., 2005. • Intellectual Property Law, Volume 2 of Butterworth Core Text Series. Oxford University Press.

Recommended ReadingSubramanian, R. & Shave, L., 2011. • Access to Knowledge in India: New Research on Intellectual Property, Innovation and Development. Bloomsbury USA.Gupta, T. S., 2011. • Intellectual Property Law in India. Kluwer Law International.R Ian McEwin. 2011. • Intellectual Property, Competition Law and Economics in Asia. Hart Publishing.

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Self AssessmentThe first Indian statute on patents was passed in 1856 granting some exclusive rights to inventors 1. for____________.

14 yearsa. 20 yearsb. 7 yearsc. 1 yeard.

The Provisions of the present Patent Act are in line with which agreement?2. WTOa. TRIPSb. IPc. PCTd.

Which of the following statemets is true?3. The WTO Act, 1940 was replaced by the Trade and Merchandise Marks Act, 1958.a. The Trade Marks Act, 1940 was replaced by the Logo and Services Marks Act, 1958.b. The Trade Marks Act, 1940 was replaced by the Trade and Merchandise Marks Act, 1960.c. The Trade Marks Act, 1940 was replaced by the Trade and Merchandise Marks Act, 1958.d.

India has enacted the IP laws for geographical indications of goods, protection of plant varieties and farmers’ 4. rights, ____________, information technology, and biodiversity.

historical placesa. creation of living thingsb. semiconductor IC layout designsc. animal protectiond.

Thedefinitionofterm_________isfullyconsistentwiththeTRIPSAgreementandincludesbothproductsand5. processesinallfieldsoftechnology.

inventiona. discoveryb. productionc. intellectual propertyd.

__________ of any living thing or non-living substance occurring in nature is not regarded as an invention 6. under the amended Act.

Growtha. Productionb. Discoveryc. Creationd.

The term of patent is uniform ________ as required by the TRIPS7. 5 yearsa. 20 yearsb. 25 yearsc. 40 yearsd.

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The _____ is meant to hear and settle certain kinds of disputes arising under the Act.8. CBa. IP b. WTOc. CGd.

The Controller-General of Patents, Designs and Trade Marks is the ________ of Trademarks.9. Directora. Ownerb. Controllerc. Registrard.

Indian Designs Law provides for control of which practices in contractual licences?10. designinga. patentingb. anti-competitivec. protectived.

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Chapter III

Copyright: An Introduction to History and Evolution of Copyright

Aim

The aim of this chapter is to:

introduce history and evolution of copyright•

elucidate rights in copyright•

explain right of reproduction and other associated rights •

Objectives

The objectives of this chapter are to:

explain the economic rights•

explicate general conditions for protection•

elucidate right of reproduction and other associated rights•

Learning outcome

At the end of this chapter, you will be able to:

understand the moral rights•

describe rights in copyright•

enlist limitations & exceptions of rights•

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3.1 History and Evolution of CopyrightModern copyright law has evolved from the historic struggles to balance the rights of the authors and publishers to economicbenefitwiththeneedsoftheuserstohaveaccesstoinformation.“Thelegaltheoriesunderlyingcopyrightdiffer greatly from country to country” (Sam Ricketson, The Berne Convention for the protection of literary and artisticworks:1886-1896).Whatevertheirjustifications,copyrightlegislationsallconcurintheirobjectivesandresults, that is to provide creators with means of earning their living through the granting of exclusive rights. These rights are to be balanced by the public interest, which postulates that knowledge should be disseminated and not impeded. It is generally admitted that the exclusive rights that are granted to authors constitute an incentive that encourages them to devote time and effort to creative activities. Hence subsequent dissemination of works will occurtothegreatestbenefitofthepublic.

ThefirstknownStatutetogiveprotectionwastheActofAnneof1709,whichgrantedtotheauthorsandtheir•successors title protection for their books against their copying without their authorisation. Beforehand, with the advent of the Gutenberg machine (printing press), privileges in the form of exclusive printing rights were given by national authorities to printers and publishers, who enjoyed the monopoly to undertake these activities. In England, for example, a royal charter was granted to the Stationers’ Company. However the purpose was not to protect principally the rights of authors but to control certain types of religious or seditious literature. Other national laws followed the Statute of Anne and were enacted in different countries. •Subsequently copyright protection was also granted to foreign authors through bilateral treaties. This protection •was not comprehensive, nor systematic, and it lacked uniformity. There was a need for a multilateral treaty, offering minimum satisfactory standards or protection with a universal approach. ThisneedwasmetbythesigningandratificationoftheBerneConventionin1886.TheBerneConventionwas•theresultofastrong“lobbying”oftheALAI(AssociationLittéraireetArtistiqueInternationale),anassociationregrouping authors and publishers and presided over by Victor Hugo. Three basic principles have been laid down in the Berne Convention:

Minimum standard of protection (content, scope and duration) for a work; �Foreign works are to be protected in each member state in the same manner as the protection available to �works of nationals; Protection is automatic – no need for registration or notice or deposit. �

At a later stage, The 1952 Universal Copyright Convention• wasratifiedasacompromise,mainlyinordertomake room for the US (not a member of Berne at that time) and allow it to join the international arena. The main difference with the Berne Convention is that in the latter the protection is automatic. Whereas in the Universal Convention if a country (such as the US), requires under its domestic law compliance with formalities (suchasdeposit,registration,notice,notarialcertificates,paymentoffeesormanufactureorpublicationinthatContractingState)asaconditionofcopyrightprotection,itshallregardtheserequirementsassatisfiedwithrespect to published works of non nationals if they bear the symbol © accompanied by the name of the copyright proprietorandtheyearoffirstpublicationplacedinsuchmannerandlocationastogivereasonablenoticeofclaim of copyright. (But the US has since joined the Berne Convention, and the Universal Convention has lost some of its interest). The scope of copyright has been expanded further by the TRIPS Agreement so as to include computer programs •(assimilated to literary works) as well as data bases, as subject matter of protection under copyright law. Recent international developments also allow for works to be protected in the context of the Internet. The WIPO •Copyright Treaty (WCT), concluded in 1996, addresses the challenges posed by today’s digital technology, thus ensuring that copyright owners will be adequately and effectively protected when their works are disseminated through new technology and communications systems such as the Internet.

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3.2 Works Protected Thesubject-matterofcopyrightprotectionincludeseveryproductionintheliterary,scientificandartisticdomain,whatever the mode or form of expression.

3.2.1 General Conditions for Protection Two conditions are generally required in order for a work to enjoy protection:

a work has to be original (positive condition) •a protection can extend only to expression but not to ideas (negative condition) •other conditions•

For a work to enjoy copyright protection, it must be an original creation. The concept of originality requires some clarification.Firstofallitisimportanttobearinmindthatan“original”creationdoesnotmeanthattheideasinthework need to be new or original. Originality relates only to the form in which they are expressed, be it literary or artistic.Thisbeingsaid,thedefinitionoforiginalityisnotuniformandmaydifferfollowingdifferentlegaltraditions.In countries where common law system applies (such as India), for a work to be original, it should be the product of yourownmind.Fromthatperspectiveoriginalitymeansthattheworkhasnotbeencopiedfromanotherwork.Sufficeit that a minimum amount of skill, labour and judgement is displayed by the author, the requirement of originality isfulfilled.Howeverincountrieswherecivillawsystemapplies,inorderforaworktobeoriginalitshoulddisplaysome amount of creativity on the part of the author that may entail more than mere skill and labour.

Of a slightly different nature, but copyrightable on the above principle are the works known as “derivative works”.

Derivative works are works based on other pre-existing works, from which they derive. Works like translations, movie versions of plays or stories, dolls created out of popular cartoon characters, are derivative works. Do they enjoycopyright?Thepersonmakingthederivativeworkhasexpendedenoughskill,labourorcreativity“forthelatter to be regarded as an intellectual creation deserving of protection in its own right” (Sam Ricketson, The Berne Convention for the protection of literary and artistic works).Originality consists here in recasting, transforming or adaptingtheinitialwork.Inthisinstancecopyrightinsuch“recast,transformedoradapted”creationsislimitedtothe original contributions of the ‘deriving’ creator. But one has to bear also in mind that in this instance the author of the transformed or translated work should seek permission from the copyright holder of the initial work from which he derived his work, barring which he may be infringing the rights of the latter, and could thus be prevented from exploiting his own translation, movie version or doll.

The second requirement of copyright ability is that the work is an ‘expression’ of, rather than an ‘idea’ as such. As with facts, similarly with ideas: they are there as common properties, available freely in the public domain.

Copyright does not extend to ideas, but only to the expression of thoughts. For example the idea of taking a picture of a sunset is not protected by copyright. Therefore, anyone may take such a picture. But a particular picture of a sunset taken by a photographer may be protected by copyright. In such a case, if someone else makes copies of the photograph, and starts selling them without the consent of the photographer, that person would be violating the photographer’s rights.

Otherconditions:Insomecountries,worksareexcludedfromprotectioniftheyarenotfixedintangibleform;forexample, a work of choreography would be protected once the movements were written down in dance notation orrecordedonvideotape.Inmanyothercountriesthough,aworkisprotectedeventhoughitisnotfixedinanymaterial form. The Berne Convention leaves these matters open to the member countries (see Article 2 (5)). In order toknowwhetherfixationisrequiredasaconditionforprotectioninaparticularcountry,itisadvisabletoreadthenational copyright legislation of that country.

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3.2.2 Which Works are Protected?Thesubject-matterofcopyrightprotectionincludeseveryproductionintheliterary,scientificandartisticdomain,whatever the mode or form of expression.

Theexpressions“literary”and“artistic”mightindicatethatonlyworkswhichhaveliteraryorartisticmeritwillbe protected. But this is not the case as protection is independent of the quality or the value attaching to the work. The latter will be protected whether it be considered, according to taste, a good or a bad literary or musical work or a beautiful or ugly painting. It is not necessary, to qualify for copyright protection, that works should pass a test of imaginativeness, of inventiveness. The work is protected even when it has little in common with literature, art or science. Courts have thus extended protection to business letters, contract forms, examination papers, a weight loss program, railway timetables, purely technical guides, engineering drawings, or maps.

Exceptionstothegeneralrulearemadeincopyrightlawsbyspecificenumeration;thuslawsandofficialdecisionsormere news of the day is generally excluded from copyright protection. It is to be noted that in some other countries suchofficialtextsarenotexcludedfromcopyrightprotection;thegovernmentistheownerofcopyrightinsuchworks, and exercises those rights in accordance with the public interest.

Practically all national copyright laws provide for the protection of the following types of works: Literaryworks:Novels,shortstories,poems,andanyotherwritings,irrespectiveoftheircontent(fictionornon-•fiction),length,purpose(amusement,education,information,advertisement,propaganda,etc.),form(handwrittentyped, printed; book, pamphlet, single sheets, newspaper, magazine); whether published or unpublished; in most countries“oralworks”,thatis,worksnotreducedtowriting,(suchaslectures,addressesandsermons)arealsoprotected by the copyright law, Musical works: Whether serious or light; songs, choruses, operas, musicals, operettas; if for instruction, whether •for one instrument (solos), a few instruments (sonatas, chamber music, etc.), or many (bands, orchestras); Artistic works: whether two-dimensional (drawings, paintings, etchings, lithographs, etc.) or three-dimensional •(sculptures,architecturalworks),irrespectiveofcontent(representationalorabstract)anddestination(“pure”art, for advertisement, etc.); Maps and technical drawings; •Photographic works; irrespective of the subject matter (portraits, landscapes, current events, etc.) and the purpose •for which made; motionpictures(“cinematographicworks”):whethersilentorwithasoundtrack,andirrespectiveoftheirpurpose•(theatricalexhibition,televisionbroadcasting,etc.),theirgenre(filmdramas,documentaries,newsreels,etc.),length,methodemployed(filming“live”,cartoons,etc.),ortechnicalprocessused(picturesontransparentfilm,video tapes, DVDs, etc.); Dramatic works, such as plays; •Choreographic works (such as ballet, be it classical or modern) and entertainments in dumb show; •Computer programs •

Manycopyrightlawsalsoprotect“worksofappliedart”(artisticjewellery,lamps,wallpaper,furniture,etc.).Someregard phonograph records, tapes and broadcasts also as works. But the latter are generally protected under the category of related rights.

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3.3 Rights in Copyright There are two types of rights protected by copyright:

Economic rights• :Whichallowtheownertoderivefinancialrewardfromtheuseandexploitationofthework;and Moral rights• : Which highlight the personal link existing between the author and the work?

3.3.1 Economic RightsThe owner of copyright in a protected work may use the work as he wishes—but not without regard to the legally recognised rights and interests of others—and may exclude others from using it without his authorisation. Therefore, therightsbestowedbylawontheownerofcopyrightinaprotectedworkarefrequentlydescribedas“exclusiverights” to authorise others to use the protected work (or not to authorise such use by others).

Whatismeantby“using”aworkprotectedbycopyright?Mostcopyrightlawsdefinetheactsinrelationtoaworkwhich cannot be performed by persons other than the copyright owner or without his authorisation. Following are the examples of such acts:

Right of reproduction and other associated rights The right of the owner of copyright to prevent others from making copies of his works is the most basic right under copyright. Such right applies to reproductions made in any manner or form. For example, making of copies of a protected work is the act performed by a publisher who wishes to distribute copies of a text-based work to the public, whether in the form of printed copies or in digital media such as CD-ROMs. Other examples include photocopying a book, downloading a computer program, printing a cartoon character on a T-shirt, making post cards of a painting, etc.

Such rights comprise also recording activities. Recording music and words of a song on CDs requires the producer of the phonogram to obtain authorisation from the authors of both the music (composer) and the lyrics to reproduce their compositions on the phonogram. Under the laws of some countries, the maker of a sound recording must also obtain the authorisation of the performers who play the music and who sing or recite the words.

Likewise recording on video-cassettes or DVDs of a play initially written to be performed live, for the purpose of being subsequently shown to a larger audience, is an act or reproduction that requires appropriate authorisation from the author of the play. Therefore, the right to control the act of reproduction is the legal basis for many forms of exploitation of protected works.

Other rights are recognised in national laws in order to ensure that the basic right of reproduction is respected. For example, some laws include a right to authorise distribution of copies of works. The right of distribution is usually subjecttoexhaustionuponfirstsaleorothertransferofownershipofaparticularcopy,whichmeansthat,afterthefirstsaleofthatcopyitspurchasermaydisposeofitwithoutthecopyrightowner’sfurtherpermission,forexample,by giving it away or even by reselling it. Another right which is achieving wider and wider recognition, including in the TRIPS Agreement is the right to authorise rental of copies of certain categories of works, such as musical worksincludedinphonograms,audiovisualworks,andcomputerprograms.Therightofrentalisjustifiedbecausetechnological advances have made it very easy to copy these types of works; experience in some countries has shown that copies were made by customers of rental shops, and therefore, that the right to control rental practices was necessary in order to prevent violation of the copyright owner’s right of reproduction. Finally, some copyright laws include a right to control importation of copies as a means of preventing erosion of the principle of territoriality of copyright; that is the legitimate economic interests of the copyright owner would be endangered if he could not exercise the rights of reproduction and distribution on a territorial basis.

Translation and adaptation rights The acts of translating or of adapting a work protected by copyright require the authorisation of the copyright owner.

“Translation”meanstheexpressionofaworkinalanguageotherthanthatoftheoriginalversion.

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“Adaptation”isgenerallyunderstoodasthemodificationofaworkfromonetypeofworktoanother,forexampleadaptinganovelsoastomakeamotionpicture,orthemodificationofaworksoastomakeitsuitablefordifferentconditions of exploitation, for example adapting an instructional textbook originally prepared for higher education intoan instructional textbook intended for studentsata lower level.Likewise,afilmproducerwho intends toproduceafilmbasedonanoveloraplayshouldalsoobtaintheauthorisationoftheauthortomakeanadaptationof the play or novel.

Bear in mind however that translations and adaptations are themselves works protected by copyright. Therefore, in order, for example, to reproduce and publish a translation or adaptation, the publisher must have the authorisation both of the owner of the copyright in the original work and of the owner of copyright in the translation or adaptation.

Performing rights Another act requiring authorisation is the act of public performance: Examples include performing plays or music liveorreadingbooksorpoetrybeforeanaudience,playingrecordedmusicorshowingfilmsorvideosinpublic,delivering lectures in public, and letting a broadcast be seen or heard in public.

Broadcasting rights A major category of acts restricted by copyright consists of the acts of broadcasting works and of communicating works to the public by means of wires or cables. When a work is broadcast, a wireless signal is emitted into the air which can be received by any person, within range of the signal, who possesses the equipment (radio or television receiver) necessary to convert the signal into sounds or sounds and images.

When a work is communicated to the public by cable, a signal is diffused which can be received only by persons who possess such equipment linked to the cables used to diffuse the signal. In principle, according to the Berne Convention for the Protection of Literary and Artistic Works, owners of copyright have the exclusive right of authorising both the wireless broadcasting and the diffusion by cable of their works.

The broadcasting and diffusion by cable of works protected by copyright have given rise to new problems resulting from technological advances which may require a review by governments of their national copyright legislation. The advances include the use of space satellites to extend the range of wireless signals, the increasing possibilities of linking radio and television receivers to signals diffused by cable, and the increasing use of equipment able to record sound and visual images which are broadcast or diffused by cable. Recent international developments also allow for works to be protected in the context of the Internet.

The WIPO Copyright Treaty (WCT), concluded in 1996, addresses the challenges posed by today’s digital technology, thus ensuring that copyright owners will be adequately and effectively protected when their works are disseminated through new technology and communications systems such as the Internet

3.3.2 Moral Rights The Berne Convention requires member countries to grant to authors:

The right to claim authorship of the work. That is basically the right of the creator to have his or her name •mentioned as the author, in particular when the work is used. Therighttoobjecttoanydistortion,mutilationorothermodificationof,orotherderogatoryactioninrelation•to, the work which would be prejudicial to the author’s honour or reputation.

These rights are independent of the usual economic rights and they are to remain with the author even after he has transferred his economic rights. It follows that moral rights may be exercised even after the author has parted with his economic rights. Hence if an author of a novel has transferred his right to publish and distribute the novel to a publisher, the latter becomes the new owner of the publication rights, under the terms of the contract. However the authorretainstherighttoclaimauthorshipofthework,forexample,ortoobjecttononauthorisedmodificationsto the work.

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3.4 Term of Protection Copyrightisnotapermanentright.Thelawprotectscopyrightonlyforaspecificperiodandaftertheexpiryofthatperiod, the work passes off into the public domain. A major point to remember is that this period is usually under international conventions a minimum of life time of an author + 50 years. Once the term has expired, the work is in the“publicdomain”.Thereafter,everybodywillbefreetousethework,withoutobtainingaspecificauthorisationfrom the copyright owner.

However the Berne Convention allows for shorter terms of protection in some cases (for example the minimum term of protection for photographic works is 25 years from the making of the work). And as the term provided for in international conventions is a minimum standard to be respected by member countries, some national laws also provide for a longer period. For example, the 1992 Amendment to the Indian Copyright Act of 1957 has raised this period from +50 (as it then was) to +60 (as it is now).

3.5 Limitations & Exceptions Limitations on the rights of authors and other owners of copyright concerns particular acts of exploitation, normally requiringtheauthorisationoftheownerofrights,whichmay,undercircumstancesspecifiedinthelaw,bedonewithout authorisation. These limitations take into account, social, educational and other public policy considerations. International Treaties, as well as national laws, allow to freely use limited portions of a work for certain purposes, such as news reporting, or making quotations in a way compatible with fair practices, or by way of illustration for teaching.

There are two basic types of limitations in this category: Free uses• : which are acts of exploitation of works that may be carried out without authorisation and without an obligation to compensate the owner of rights for the use; Non-voluntary licenses• : Under which the acts of exploitation may be carried out without authorisation, but with the obligation to compensate the owner of rights.

Examples of free uses include: the making of quotations from a protected work, provided that the source of the quotation, including the name of the author, is mentioned and that the extent of the quotation is compatible with fair practice; use of works by way of illustration for teaching purposes; and use of works for the purpose of news reporting,. In some countries when the broadcasting of a work has been authorised, many national laws permit the broadcastingorganisationtomakeatemporaryrecording(“ephemeralrecording”)oftheworkforthepurposesofbroadcasting,evenifnospecificauthorisationoftheactofrecordinghasbeengiven.

In respect of the right of reproduction, the Berne Convention contains also a general rule, rather than explicit detailed limitations:Article9(2)providesthatmemberStatesmayprovideforfreereproductionin“certainspecialcases”wheretheactsdonotconflictwithanormalexploitationoftheworkanddonotunreasonablyprejudicethelegitimateinterests of the author”. Under this general exception, numerous laws contain provisions allowing reproduction of a work exclusively for the personal, private and non-commercial use of individuals. However, the ease and quality of this individual copying, made possible by audio taping or videotaping and even more recent technological improvements, has led some countries to narrow the scope of such provisions. Certain legal systems allow copying but incorporate a mechanism for payments to be made to the owners of rights in order to compensate for the prejudice to their economic interests, through a fee imposed on sales of blank tapes and / or tape recorders.

As noted above, non-voluntary licenses allow use of works in certain circumstances without the authorisation of the ownerofrights,but,requirethatcompensationbepaidinrespectoftheuse.Suchlicensesarecalled“non-voluntary”because they are authorised by the law and do not result from the exercise of the copyright owner’s exclusive right to authorise particular acts. Non-voluntary licenses were usually created in circumstances where a new technology for the dissemination of works to the public had emerged, and where the national legislature feared that owners of rights would prevent the development of the new technology by refusing to authorise use of works. This was true intheBerneConvention,whichrecognisedtwoformsofnon-voluntarylicenses:firstly,toallowthemechanicalreproductionofmusicalworksandsecondlyforbroadcasting.Itshouldbenoted,however,thatthejustificationfor

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non-voluntary licenses is called increasingly into question, since effective alternatives now exist for making works available to the public based on authorisations given by the owners of rights, including in the form of collective administration of rights.

3.6 Ownership and Transfer of CopyrightTheownerofcopyrightinaworkisgenerally,atleastinthefirstinstance,thepersonwhocreatedthework,thatis to say, the author of the work.

There can be exceptions to this general principle. Such exceptions are regulated by the national law. For example, the national law may provide that, when a work is created by an author who is employed for the purpose of creating that work, then the employer, not the author, is the owner of the copyright in the work.

Itistobenoted,however,thatthe“moralrights”alwaysbelongtotheauthorofthework,whoevermaybetheowner of the copyright.

In many countries, copyright (with the exception of moral rights) may be assigned. This means that the owner of the copyright transfers it to another person or entity, who becomes the owner of the copyright An assignment may apply to all economic rights or only to one (example the reproduction right) or a few of them (reproduction and translation rights, for example). It may be limited also to a territory (assignment of the right to publish in India) and to a period of time (assignment for the entire term of copyright or for a more limited term, say 20 years). The assignee (person to whom the right has been transferred) becomes the owner of the copyright, with respect to the right,(orrights),termandterritoryforwhichtheassignmenthasbeengranted.Forexample,ifanIndianauthor“X”hasassignedhisrighttoreproducehisnovelwritteninEnglish,toapublisher“Y”,andthattheassignmentislimitedtoaperiodof20yearsandtoIndia,theownershiprightsofpublisher“Y”wouldbelimitedonlytoreproductionsof the book that take place in India and for a term of 20 years. Anybody who reproduces the novel in India within thetermof20yearsbutwithout“Y”sauthorisationwillhaveinfringedhiscopyright.ButapublicationofthesamenovelthattakesplaceoutsideIndiadoesnotneed“Y”sauthorisation,andwillnotthereforeconstituteaviolationof the latter’s copyright.

Assignments ought to be distinguished from licenses. Licensing means that the owner of the copyright remains the owner but authorises or enables someone else to exercise all or some of his rights subject to possible limitations. When such authorisation or license extends to the full period of copyright and when such authorisation or license extends to all the rights (except, of course, the moral rights) protected by copyright, the licensee is, vis-à-vis third parties and for all practical purposes, in the same position as an owner of copyright.

The Copyright (Amendment) Bill 2012 has been passed by both Houses of Parliament, and will become law as soon as the President gives assent and it is published in the Gazette of India. Here are some important amendments.

Provisions for persons with disabilitiesIndia now has amongst the most progressive exception for persons with disabilities, alongside countries like Chile. Under the amendments, sections 51(1)(zb) and 31B carve out exceptions and limitations for persons with disabilities. Earliers.52(1)(zb)dealtonlywithformatsthatwere“specialdesignedonlyfortheuseofpersonssufferingfromvisual, aural, or other disabilities”. Thanks to a campaign mounted by disability rights groups and public interest groupssuchasCIS,itnowcovers“anyaccessibleformat”.Section52(1)(zb)allowsanypersontofacilitateaccessby persons with disabilities to copyrighted works without any payment of compensation to the copyright holder, and anyorganisationworkingthebenefitofpersonswithdisabilitiestodosoaslongasitisdoneonanon-profitbasisand with reasonable steps being taken to prevent entry of reproductions of the copyrighted work into the mainstream. Evenfor-profitbusinessesareallowedtodosoiftheyobtainacompulsorylicenceonawork-by-workbasis,andpaytheroyaltiesfixedbytheCopyrightBoard.

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Extension of fair dealing to all worksThelawearlierdealtwithfairdealingrightswithregardto“literary,dramatic,musicalorartisticworks”.Nowit covers all works (except software), in effect covering sound recordings and video as well. This will help make personalcopiesofsongsandfilms,tomakecopiesforresearch,tousefilmclipsinclassrooms,etc.

Creative commons open licensing get a boostThe little-known of the Copyright Act, which deals with the right of authors to relinquish copyright, have been amended. While earlier one could only relinquish parts of one’s copyright by submitting a form to the Registrar ofCopyrights,nowasimplepublicnoticesuffices.Additionally,s.30oftheAct,whichrequiredlicencestobeinwriting and signed, now only requires it to be in writing. This puts Creative Commons, the GNU Public Licence, and other open licensing models, on a much surer footing in India.

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SummaryModern copyright law has evolved from the historic struggles to balance the rights of the authors and publishers •toeconomicbenefitwiththeneedsoftheuserstohaveaccesstoinformation.The scope of copyright has been expanded further by the TRIPS Agreement so as to include computer programs •(assimilated to literary works) as well as data bases, as subject matter of protection under copyright law. Recent international developments also allow for works to be protected in the context of the Internet. •The WIPO Copyright Treaty (WCT),• concluded in 1996, addresses the challenges posed by today’s digital technology, thus ensuring that copyright owners will be adequately and effectively protected when their works are disseminated through new technology and communications systems such as the Internet.The little-known of the Copyright Act, which deals with the right of authors to relinquish copyright, have been •amended. While earlier one could only relinquish parts of one’s copyright by submitting a form to the Registrar ofCopyrights,nowasimplepublicnoticesufficesAdditionally, s.30 of the Act, which required licences to be in writing and signed, now only requires it to be in •writing. This puts Creative Commons, the GNU Public Licence, and other open licensing models, on a much surer footing in India.

ReferencesCopyright office in India• . [Online]Available at: <http://www.copyright.in/register_copyright_deposit.html> [Accessed 26 June 2012].Egyankosh. • Copyright: an introduction . [pdf]Available at: <http://www.egyankosh.ac.in/bitstream/123456789/852/1/BLOCK%201.pdf> [Accessed 26 June 2012].Intellectual property law basics• [Video Online] Available at: <http://www.videojug.com/interview/intellectual-property-law-basics-2> [Accessed 5 July 2012].Intellectual property defined• [Video Online] Available at: <http://www.videojug.com/interview/intellectual-property-defined-3>[Accessed5July2012].Cornish, W. R. & Llewelyn, D., 2003. • Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights. Sweet & Maxwell.Bently, L. & Sherman, B. 2008. • Intellectual property law. Oxford University Press.

Recommended ReadingFishman, J. D. S., • The Copyright Handbook: What Every Writer Needs to Know. 11th ed., Nolo.Netanel, W., • Copyright’s Paradox, Oxford University Press.McJohn, S. M., 2009. • Copyright: Examples & Explanations.2nd ed., Aspen Publishers.

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Self AssessmentCopyright legislations all concur in their objectives and results, to provide ________ with means of earning 1. their living through the granting of exclusive rights.

inventorsa. discoverersb. creatorsc. lawyersd.

It is generally admitted that the exclusive rights that are granted to authors constitute an _________ that 2. encourages them to devote time and effort to creative activities.

incentivea. workb. workstationc. promotiond.

The scope of copyright has been expanded further by which agreement so as to include computer programs 3. (assimilated to literary works) as well as data bases?

WTO agreementa. WIPO agreementb. Writers agreementc. TRIPS agreementd.

Which of the following statements is true? 4. Voluntary licensesa. allow use of works in certain circumstances without the authorisation of the owner of rights, but, require that compensation be paid in respect of the use.Non-voluntary licensesb. allow use of works in certain circumstances without the authorisation of the owner of rights, but, require that compensation be paid in respect of the use.Non-voluntary licensesc. allow use of works in certain circumstances only with the authorisation of the owner of rights, but, require that compensation be paid in respect of the use.Non-voluntary licensesd. do not allow use of works in certain circumstances without the authorisation of the owner of rights, but, require that compensation be paid in respect of the use.

The subject-matter of copyright protection includes every production in the literary, __________ and artistic 5. domain, whatever the mode or form of expression.

legala. historicb. geographicc. scientificd.

There are how many types of rights protected by copyright?6. threea. twob. fivec. oned.

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_________allowtheownertoderivefinancialrewardfromtheuseandexploitationofthework.7. Moral rightsa. Economic rightsb. Legal rightsc. Modificationrightsd.

_____________ highlight the personal link existing between the author and the work.8. Moral rightsa. Modificationrightsb. Economic rightsc. Legal rightsd.

Whatisgenerallyunderstoodasthemodificationofaworkfromonetypeofworktoanother?9. Similaritya. Copyrightb. Adaptationc. Privacyd.

Copyrightisnotapermanentright;thelawprotectscopyrightonlyforaspecificperiodandaftertheexpiryof10. that period, the work passes off into the____________.

private domaina. public domainb. author’s domainc. personal domaind.

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Chapter IV

Patent Basics

Aim

The aim of this chapter is to:

introduce how to identify an invention for patenting •

elucidate various conditions of patentability •

explain what rights patents provide •

Objectives

The objectives of this chapter are to:

explain disclosure of invention•

explicate patentable subject matter•

elucidatedraftingandfilingapatentapplication•

Learning outcome

At the end of this chapter, you will be able to:

understand practical aspects of patent drafting•

describe procedure of application processing•

identifydraftingandfilingapatentapplication•

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4.1 Introduction Apatentisadocument,issued,uponapplication,byagovernmentofficeoraregionalofficeactingforseveralcountries, which describes an invention and creates a legal situation in which the patented invention can normally be exploited only with the authorization of the owner of the patent. The exploitation can be in form of manufacture, use, sellorimport.Inventionmeansasolutiontoaspecificprobleminthefieldoftechnology.Aninventionmayrelateto a product or a process. The protection conferred by the patent is for limited time. Generally it is for 20 years.

In some countries, certain inventions may be protectable through registration under the name of utility model. The requirements are somewhat less strict than for patentable inventions, in particular in respect of inventive step. In comparison with patents the fees for utility model are lower, and the duration of protection is shorter, but otherwise the rights are similar.

In principle, the patented invention may not be exploited in the country by persons other than the owner of the patent unless the owner agrees to such exploitation. Thus while the owner is not given a statutory right to practice his invention, he is given a statutory right to prevent others from commercially exploiting his invention, which is frequently referred to as a right to exclude others from making, using or selling the invention. The right to take action against any person exploiting the patented invention in the country without his agreement constitutes the patent owner’smostimportantright,sinceitpermitshimtoderivethematerialbenefitstowhichheisentitledasarewardfor his intellectual effort and work, and compensation for the expenses which his research and experimentation leading to the invention have entailed.

It should be emphasized, however, that while the State may grant patent rights, it does not automatically enforce them, and it is up to the owner of a patent to bring an action, usually under civil law, for any infringement of his patent rights.

Simply put, a patent is the right granted by the State to an inventor to exclude others from commercially exploiting theinventionforalimitedperiod,inreturnforthedisclosureoftheinvention,sothatothersmaygainthebenefitofthe invention. The disclosure of the invention is thus an important consideration in any patent grant in procedure.

4.2 Conditions of Patentability Aninventionmustmeetseveralcriteriaifitistobeeligibleforpatentprotection.Theseinclude,mostsignificantly,that the invention must consist of patentable subject matter, the invention must be industrially applicable (useful), it mustbenew(novel)itmustexhibitasufficientinventivestep(benon-obvious),andthedisclosureoftheinventionin the patent application must meet certain standards.

4.2.1 Patentable Subject Matter In order to be eligible for patent protection, an invention must fall within the scope of patentable subject matter. The generalruleisthatpatentprotectionshallbeavailableforinventionsinallfieldsoftechnology.

Examplesoffieldsoftechnologywhichmaybeexcludedfromthescopeofpatentablesubjectmatterare:Discoveries of materials or substances already existing in nature•Scientifictheoriesormathematicalmethods;•Plant or animal varieties, or essentially biological processes for the production of such plant or animal varieties, •other than microbiological processes; Schemes, rules or methods, such as those for doing business, performing purely mental acts or playing • games; and Methods of treatment for humans or animals, or diagnostic methods practiced on humans or animals though •the products for use in such methods are not excluded.

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4.2.2 Industrial Applicability (utility)An invention, in order to be patentable, must be of a kind which can be applied for practical purposes; it should not be purely theoretical. If the invention is intended to be a product or part of a product, it should be possible to make that product. And if the invention is intended to be a process, or part of a process, it should be possible to carry that process out or use it in practice.

Applicability and industrial applicability are expressions reflecting, respectively, thepossibilityofmakingandmanufacturing in practice, and that of carrying out or using in practice.

The word industrial in the same expression has a very special meaning in the terminology of patent laws. In common language, an industrial activity means a technical activity on a certain scale, and the industrial applicability of an invention means the application (making, use) of an invention by technical means on a certain scale.

4.2.3 Novelty Novelty is a fundamental requirement in any examination as to substance and is an undisputed condition of patentability. It must be emphasized, however, that novelty is not something which can be always proved or established; only its absence can be proved.

An invention is new if it is not anticipated by the prior art. Prior art is, in general, all the knowledge that existed prior totherelevantfilingorprioritydateofapatentapplication,whetheritexistedbywayofwrittenororaldisclosure.The question of that should constitute prior art at a given time is a subject of some debate.

One viewpoint is that the determination of prior art should be made against a background of what is known only in the protecting country. This would exclude knowledge from other countries, if it was not imported into the country before the making of the invention, even if that knowledge was available abroad before the date of the making of the invention.

Another viewpoint is based on the differentiation between printed publications and other disclosures such as oral disclosures and prior use, and where such publications or disclosures occurred.

The disclosure of an invention so that it becomes part of the prior art may take place in three ways, namely:By a description of the invention in a published writing or publication in another form•By a description of the invention in spoken words uttered in public, such a disclosure being called an oral •disclosureBy the use of the invention in public, or by putting the public in a position that enables any member of the public •to use it, such a disclosure being a disclosure by use.

Publication in tangible form requires that there be some physical carrier for the information, a document in the broad sense of the term, and that document must have been published, that is to say, made available to the public in any manner such as by offering for sale or deposit in a public collection. Publications include issued patents or published patent applications, writings (whether they be manuscript, typescript, or printed matter), pictures including photographs,drawingsorfilms,andrecordingwhethertheybediscsortapesineitherspokenorcodedlanguage.Today, publication on the Internet must increasingly be taken into consideration.

Oral disclosure, as the expression suggests, implies that the words or form of the disclosure are not necessarily recorded as such and includes lectures and radio broadcasts.

Disclosure by use is essentially a public, visual disclosure such as by display, sale, demonstration, unrecorded television broadcasts and actual public use.

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A document will only destroy the novelty of any invention claimed if the subject matter is explicitly contained in the document. The subject matter set forth in a claim of an application under examination is thus compared element by element with the contents of each individual publication. Lack of novelty can only be found if the publication by itself contains all the characteristics of that claim, that is, if it anticipates the subject matter of the claim.

Lack of novelty may however, be implicit in the publication in the sense that, in carrying out the teaching of the publication, a person having ordinary skill in the art would inevitably arrive at a result falling within the terms of theclaim.Generallyspeaking,lackofnoveltyofthiskindwillonlyberaisedbythePatentOfficewherethereisno reasonable doubt as to the practical effect of the prior teaching.

4.2.4 Inventive Step (Non-Obviousness) In relation to the requirement of inventive step (also referred to as non-obviousness),the question as to whether or nottheinventionwouldhavebeenobvioustoapersonhavingordinaryskillintheartisperhapsthemostdifficultof the standards to determine in the examination as to substance

The inclusion of a requirement like this in patent legislation is based on the premise that protection should not be given to what is already known as part of the prior art, or to anything that the person with ordinary skill could deduce as an obvious consequence thereof.

The expression ordinary skill is intended to exclude the best expert that can be found. It is intended that the person belimitedtoonehavingtheaveragelevelofskillreachedinthefieldincountryconcerned.

It should be noted that novelty and inventive step are different criteria. Novelty exists if there is any difference between the invention and the prior art. The question, is there inventive step? only arises if there is novelty. The expression inventive step conveys the idea that it is not enough that the claimed invention is new, that is, different from what exists in the state of the art, but that this difference must have two characteristics. Firstly, it must be inventive, that is,theresultofacreativeideaanditmustbeastep,thatis,itmustbenoticeable.Theremustbeaclearlyidentifiabledifference between the state of the art and the claimed invention. This is why, in some jurisdictions, there is the concept of an advance or progress over the prior art.

Secondly,itisrequiredthatthisadvanceorprogressbesignificantandessentialtotheinvention.

In order to assess the nature of the differences which are relied upon as constituting an inventive step, account has to be taken of the prior art as a whole. Thus, as distinct from the assessment of novelty, the subject matter of the claim under examination is compared not with each publication or other disclosure separately, but with the combinations thereof, insofar as each such combination is obvious to the person having ordinary skill in the art. The combination maybeglobal,whereastheclaimmaydefineasetofsubjectmatterknownseparately,forinstanceanewformofwashing machine including a particular type of motor coupled to a particular type of pump.

For the inventive step to be denied, it is necessary that not only the combination, but also the choice of the combined elements, is obvious. It is the sum of the differences that have been discovered which must be compared with the prior art and judged as to obviousness, and not each of the new elements taken individually, except where there is no technical link between them.

In most cases, it is useful to assess inventive step in relation to three aspects, namely:the problem to be solved;•the solution to that problem; and•the advantageous effects, if any, of the invention with reference to the background art.•

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If the problem is known or obvious, the examination will bear on the originality of the solution claimed. If no inventive step is found in the solution, the question becomes whether or not the result is obvious or whether it is surprising either by its nature or by its extent. If a person having ordinary skill in the art would have been able to pose the problem, solve it in the manner claimed, and foresee the result, the inventive step is lacking.

4.2.5 Disclosure of inventionAn additional requirement of patentability is whether or not the invention is sufficiently disclosed in the application.

Theapplicationmustdisclosetheinventioninamannersufficientlyclearfortheinventiontobecarriedoutbyapersonskilledintheartorinthatfieldoftechnology.

The description should set out at least one mode for carrying out the invention claimed. This should be done in terms of examples, where appropriate, and with reference to the drawings, if any. In some countries, the description is required to disclose the best mode for carrying out the invention known to the applicant.

4.3 Drafting and Filing a Patent ApplicationDraftingandfilingofapatentapplicationinvolvesomesteps,whicharediscussedinthissection.

4.3.1IdentificationofInventionThefirsttaskindraftingapatentapplicationistheidentificationoftheinvention.Thisinvolves:

summarizing all the necessary features which in combination solve a particular technical problem; and •an examination of this combination to determine whether it would, according to one’s own judgment or after •professionallegaladvice,fulfiltherequirementsforpatentability,especiallyinventivestep.

It is during this process that a full comprehension of the essence of the invention is obtained, and this is important in helping to draft the description and claims.

Often the invention contains more than one new feature. It is essential to identify the critical feature or features and to have an explanation of why they contribute to an effective solution to the problem. There are two important reasons for this. First, the claims should be as broad as possible; the broadest claim is the one restricted by the least numberoffeatures.Second,havingidentifiedthecriticalfeaturesandtheireffect,itisthennecessarytoaskhowelsemaythiseffectbeachieved,thatis,canthespecificfeaturesbesubstitutedoralteredwhilestillachievingtheend result. This is important not only in drafting the claims, which must be wide enough to cover these substitutes or alternatives, but also in the description of the invention which must include details of the substitutes or alternatives so that the broad claim can be supported by the description.

4.3.2 Practical Aspects of Drafting Patent ApplicationsDrafting practices and requirements differ from country to country. However, there are typically three basic requirements to be complied with in the drafting of a patent application.

Firstly, there is a requirement that the application should relate to one invention only, or to a group of inventions so linked as to form a single general inventive concept. This requirement, referred to as unity of invention, is particularly important when claims are being drafted.

Secondly,thedescriptionshoulddisclosetheinventioninamannersufficientlyclearandcompletefortheinventionto be evaluated, and to be carried out by a person having ordinary skill in the art. This is of fundamental importance, since one of the main functions of the description is to provide new technical information to third parties. An importantphrasetonoteinthisrequirementisapersonhavingordinaryskillintheart.Thisallowsforasimplifieddescription since it can be assumed that the reader will be an informed reader having the background knowledge which makes it unnecessary to describe every basic detail of the invention.

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Thirdly, for the application to proceed, it must contain claims which determine the scope of the protection. The claims must be clear and concise and fully supported by the description. This third basic requirement is important since the claims are the basis of interpretation of patent protection. It is from the claims that third parties are able to knowwhattheymaydoandwhattheymaynotdo.Theclaimsmaynotbesignificantlybroaderordifferentfromthat which has been described.

Thefirstsectionofthedescriptiontypicallycontainstwoelements,namely,thetitleoftheinventionandabriefstatementofthetechnicalfieldinwhichtheinventionlies.Usuallythisstatementisintheformofashortintroductoryparagraphwhichcommenceswiththephrase“Thisinventionrelatesto......”

In the second section, the background of the invention is described. In drafting this section, the patent agent usually sets out any existingproblemsor difficultieswhich the inventionovercomes.Anyprevious solutions to thoseproblemsordifficultiesshouldbedescribed,preferablyinawaywhichclearlysetsoutthedifferencebetweenthepresent and previous solutions. This section may also describe the object of the invention, that is to say, what the invention sets out to achieve. The second section of the description is important to provide a good understanding of the invention and to put it into perspective against the prior art.

The third section of the description provides a summary of the invention in such terms that it may be readily understood.Thepatentagentwillnormallydescribetheinventionfirstingeneraltermswhichcorrespondtothosehe intends to use in the main claim. By using this technique, the agent can avoid any disputes that might arise based ondifferencesbetweentheinventiondescribedandtheinventionasdefinedintheclaims.Thisdescriptionoftheinvention in general terms is usually followed by a series of paragraphs which set out different preferred features of the invention. These paragraphs usually form the basis for dependent claims which follow the broad main claim.

In the fourth section of the description, two elements are generally found, namely a brief description of the drawings, if drawings are appropriate, and a detailed description of one or more embodiments of the invention. If the invention relates to some form of mechanical object, for example, drawings illustrating plan, elevation and sectional views of that object could be used. Elements of the drawings which are described are numbered in the drawings and these numbers are utilized in the description of the embodiment.

Where the invention is an electrical circuit, drawings can be used effectively to show the connections between the various elements or components of the circuit. Again these elements or components should be numbered for ease of reference. Normally the drawings should contain no textual matter. Exceptions, however, may be made when single descriptive words can be used where they do not interfere with the lines of the drawings. Thus in any drawing illustrating an electrical circuit, for example, standard components may be indicated in the drawings by boxes which may be labelled.

Similarly,wheretheinventionrelatestoaprocess,drawingsmayshowablock,schematicorflow-sheetdiagram,and blocks or boxes contained therein may be labelled as appropriate.

Wheretheinventionisinthechemicalfield,thedrawingmaybethechemicalformulaofoneormorecompounds.Where the invention is of a metallurgical nature, the drawing may be a diagram such as a phase diagram of the components.

Itisusualforthedescriptionoftheembodimenttoincludeapassagewhichbrieflydescribestheactualoperationof the invention. If the device, for example, is a machine or an electrical circuit, the manner in which the machine or electrical circuit operates is extremely helpful in understanding the invention.

Theclaimsarethecentreortheheartofanygrantedpatentbecausetheydefinetheprotectionwhichisthepurposeofthepatent,thatistosay,theydefineclearlythescopeoftheexclusiverightsprovidedbythepatent.Thereforeit is the most important task in the work of the patent agent when preparing the application, to produce a wording oftheclaimswhichdefinestheinventionintermsofthetechnicalfeaturesdisclosedinthedescriptionandwhichdoes not contain any reference to commercial advantages.

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The series of claims drafted by the patent agent generally commences with a broad main claim followed by a number of claims of narrower scope. The patent agent drafts the succeeding claims more narrowly, and hopefully this results in stronger claims which could withstand any anticipation by more relevant prior art which might be produced by aPatentOfficeduringexamination,orbythirdpartiesduringanyoppositionorinvalidationproceeding.Itshouldbe emphasized that there must be some element of additional invention in each succeeding claim in order for it to be stronger.

The narrower claims following the broad main claim usually refer back to one or more of the preceding claims. They are therefore usually called dependent claims. The features introduced in each of the dependent claims must findsomebasisinthedescription.Thereitisusuallyexplainedthatthesearepreferredfeatureswhichproduceabetter technical form of the invention.

The last element of a patent is the abstract. The abstract presents a short summary of the description and the claims. It serves the purpose of enabling third parties to obtain quick information about the essential contents of the invention. It must be emphasized that it is not used to interpret the scope of protection.

Theguidingprincipleisthattheabstractshouldbesodraftedthatitcanefficientlyserveasascanningtoolforpurposes of searching in the particular art. Thus the abstract has to be as concise as the disclosure permits. Generally speaking,itcontainsbetween50and150words.Whilefilingordraftingapatentapplication,youwillbeapproachinga patent agent or attorney. As an inventor you should share the complete invention with him. The agent may not be abletodraftagoodspecificationintheabsenceofdetailsabouttheinvention.Thefollowingpointsshouldbekeptin mind while discussing with the patent agent:

Provide complete details of the invention as well as failures on the way to the invention.•Do not get offended if the agent asks you questions like where did you get the idea from or did you copy the idea •from somewhere or are you keeping other inventors working with you on the inventorship or have you published the invention or disclosed it in a seminar/conference or have you displayed the invention in an exhibition? A patentdocumentisatechno-legaldocument;henceallprecautionsaretobetakenrightfromthefirststep.Thepatent agent could consult/refer to your notes or laboratory logbooks. This will help him to explain the inventive stepinaprecisemanneranddraftagoodspecificationandassociatedclaims.Explain the central theme of the invention and novelty, inventiveness and utility of the invention clearly.•Share the entire prior art documents in your possession with the patent agent.•If you have developed an improved version of your competitor’s product/process, admit it and be totally honest. •This would help the attorney in drafting precise claims and avoid excessive claims, which might be struck down.A detailed description of the best way of putting the invention into practical use, results of your tests and trials, •etc., including all failures and defects should be given to the patent agent.

Duringthecourseofthefilingandgrantofapatentapplication,itisimportanttorespondquicklyandaccuratelyto queries which the patent agent may have. The client should keep the patent attorney informed of any new developmentsinthefieldofinventioncarriedbythepatenteeorsomeoneelse.

4.4 Processing of Patent ApplicationLetusnowfollowtheprogressofanapplicationthroughthePatentOffice.Therearethreemainareasofactivityworthy of some comments, namely:

examination as to form;•search; and •examination as to substance.•

In each of these areas of activity, the normal procedure is for a dialogue to be carried out, mainly in writing, between anexaminerinthePatentOffice,andtheapplicant.Thepatentagentactsasago-betweeninthesensethathereceivescommunicationsfromthePatentOffice,advisestheapplicantastotheappropriatecourseofaction,takestheapplicant’sinstructions,andrespondsaccordinglytothePatentOffice’scommunications.

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4.4.1 Examination as to FormPrior to examination as to form, the application is checked to ensure that all the requirements necessary to accord theapplicationafilingdate,havebeensatisfied.Thisisafundamentalchecksinceifafilingdateisnotestablished,theapplicationwillbetreatedasifithadnotbeenfiled,anditproceedsnofurther.Thefilingdateisimportantinthe general scheme of things since it constitutes the date from which certain actions are calculated, such as the term of the patent, and, where appropriate, determines the priority date of any subsequent application in another country underthetermsoftheParisConventionfortheProtectionofIndustrialProperty.Thefilingdate(orprioritydate)is also relevant to the evaluation of novelty and inventive step. The right of priority may be based on a national, regionalorinternationalapplicationfiledlessthantwelvemonthsearlier.Itseffectistosubstitutethedateoftheearlierfilingforthedateofthenationalfilingandthisisparticularlyimportantwithrespecttotherelevantpriorartfor evaluating novelty and inventive step.

The right of priority is available in all countries which are party to the Paris Convention or the TRIPS Agreement. It should be noted however, that under some national laws, priority rights are granted on a bilateral basis of reciprocity for countries not parties to the Paris Convention. The right of priority offers great practical advantages to an applicant who seeks protection in one or more other countries. The applicant is not required to present all applications in his own country and in foreign countries at the same time, since he has up to twelve months to decide in which foreign countries he desires protection. The applicant can use that period to organize, with due care, the steps to be taken to secure protection in the various countries of interest to him.

Examinationastoformisnormallycarriedoutassoonasanapplicationhasbeenaccordedafilingdate.Basicallythiscovers the following points: the representation by a patent attorney, if any, the contents of the request, the statement concerning the inventor, the physical requirements governing the description, the claims and the drawings, and the inclusionofanabstract.Theapplicantisgivenanopportunitytocorrectanydefectsidentifiedduringexaminationastoform,andifsuchdefectsarenotcorrectedwithinaspecifiedtime,thePatentOfficerejectstheapplication.

Depending on the examination procedure provided in the relevant law, the search will be conducted either separately from and prior to, or at the same time as, the examination as to substance. In either case, the objective of the search istodeterminethepriorartinthespecificfieldtowhichtheinventionrelates.InconductingthesearchthePatentOfficechecks itsdocumentationcollectiontoascertainwhetheranydocumentsexistwhichdescribeasolutionwhich is the same as or similar to that described in the application.

If the search is conducted separately from the examination as to substance, a search report will be forwarded to the applicant setting out:

a list of the documents located during the search, which disclose subject matter•the same as or closely resembling the invention; and•the claims in the application that should be compared with each of those documents.•

The report may also give an indication of the scope of the search that is the type of documents which may have beensearched,thetimespancovered,andthespecificareasoftechnologysearched.

The search itself is a documentary search in a collection of patent documents that is primarily arranged for search purposesaccordingtothespecificareasoftechnology.

These patent documents may be supplemented by articles from technical journals and other so-called non-patent documents.Thistotalcollectionofdocumentsisusuallyreferredtoasthesearchfile.

ThePatentOfficemayconductthesearchonlyinrespectofdocumentsinthesearchfile.Itmayadditionallycarryout an online computer search of one or more commercial databases, as well as on the Internet. The search does not extend to disclosures other than publications and, in particular, does not seek to determine whether disclosure has taken place by public use. This type of disclosure, if any, will only be taken into account during the examination as tosubstanceifthatusehasbeenbroughttotheattentionofthePatentOfficebysomethirdparty’saction.

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Thesearchitselfwillfirstcoveralldirectlyrelevanttechnicalfields,andmaythenhavetobeextendedtoanalogousfields,buttheneedforsuchextensionmustbejudgedbytheexaminerineachindividualcase,takingintoaccountthe outcome of the search in the directly relevant areas of technology. However, you must remember that whilst completeness is the ideal of the search, this ideal may not necessarily be obtained. This is because of such factors astheinevitableimperfectionsofanyclassificationandinformationretrievalsystem,andmaynotbeeconomicallyjustifiedifthecostistobekeptwithinreasonablebounds.

4.4.2 Examination as to SubstanceTheaimoftheexaminationastosubstanceprocedureistoensurethattheapplicationsatisfiescertainconditionsof patentability. In essence, this is to prevent the grant of a patent where:

theinventionisexcludedfrompatentprotectionbyspecificprovisionsinthelegislation;or•the invention is not new, does not involve an inventive step and/or is not industrially applicable; or•theinventionisnotsufficientlydisclosedinaclearandcompletemannerinthe•documentsfiled.•

In the same way as with examination as to form, the applicant is given the opportunity to remove any objections raisedduringtheexaminationastosubstancephase,andifhefailstodosowithinaspecifiedtime,thePatentOfficewill refuse the grant of a patent. It is in the interest of both the applicant and the public that there exists the possibility to amend the application. Not onlycandeficienciesbeeliminatedandthusabetterpatentgrantsecured,butalsoamendmentstoclarifythedisclosurewillresultinabetterdescriptionoftheinventionandamoreprecisedefinitionofthescopeofprotection.

Not all amendments are permissible. As a general rule, an amendment is not allowable if it goes beyond the original disclosure in the application.

Itshouldbenotedthatsincethepurposeofanypatentlawistoprotectinventions,thePatentOfficewillonlyrefuseto grant a patent if the results of the examination clearly preclude the grant. In general, any doubt is resolved in theapplicant’sfavour,sincefinaladjudicationonthevalidityorotherwiseofapatentisusuallypossibleviathecourts.

4.4.3 Publication of Notice and OppositionWhether or not there is an examination as to substance, some jurisdictions provide for an opposition procedure which may be instituted either before or after the grant of a patent. An opposition procedure is designed to allow third parties to present objections to the grant of a patent.

Sothatoppositionsmaybefiled,thepublicmustbeinformedofthecontentoftheapplication,andthisisdonebythePatentOfficebypublicationofanoticeinanofficialjournalorgazettetotheeffectthat:

the application is open to public inspection; and/or•thePatentOfficewill,unlessoppositionisfiledwithinaprescribedperiod,grantapatent;or•a patent has been granted on the application.•

Thegroundsuponwhichanoppositionmaybefiledareprescribedbytherelevantlegislation.Generallyspeaking,it should be possible for an opposition to be based on non-compliance with any substantive requirement. However, the law in some countries restricts an opposition to certain substantive requirements only. Typically these grounds arelackofnovelty,inventivesteporindustrialapplicability,insufficientdisclosureoftheinvention,orthefactthatanamendmentmadetoapatentapplicationhasgonebeyondtheoriginaldisclosureintheapplicationasfiled.Somejurisdictionsmakeitpossibletofileanoppositiononthegroundthattheapplicanthasnorighttoapatent.

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4.4.4 Grant and PublicationIf and when the examination process has reached a conclusion favourable to the applicant, that is to say all the necessaryrequirementsastoformandsubstancehavebeenfulfilled,andassumingnooppositionhasbeenfiledorthatanyoppositionhasbeenunsuccessful,thePatentOfficewillgrantapatentontheapplication.ThisinvolvescertainactionsonthepartofthePatentOffice.

Firstly, when the patent is granted, the details of the patent are entered into the Patent Register. The Register usually contains bibliographic data such as the patent number, the name and address of the applicant/patentee, the name of theinventor,theoriginalapplicationnumber,thefilingdate,certainpriorityapplicationdetailsandthetitleoftheinvention. It does not contain any technical information.

Additionally in countries where annual fee payments are required in order to maintain the patent in force, the Register will contain details of when such fees have been paid, and may also list any details of licenses or assignments which may have been recorded.

The Register can thus be very useful to third parties especially competitors of the patentee, because it reveals the actualstatusofthepatent.InsomecountriesthecourtsacceptacertifiedcopyofanextractfromtheRegisterasbeing proof of the correctness of the position recorded in respect of the patent.

Secondly,thePatentOfficepublishesinanOfficialGazette,areferencetothegrantofthepatentwiththeprescribedbibliographicdata.TheentryintheOfficialGazettemayalsocontaintheabstractorthemainclaim,andifthereare drawings, the most illustrative drawing.

Thirdly,aCertificateofGrantisissuedtotheapplicant,whichisthelegaldocumentestablishinghisownershipofthe patent. A copy of the granted patent is also issued at the same time.

Lastly,thePatentOfficepublishesthepatentdocumentitselfinprintedform.CopiesofthepatentdocumentaremadeavailablebythePatentOfficeforusebyPatentLibraries,etc.,asasourceoftechnicalinformation,andtothirdpartiessubjecttothepaymentofafee.ManyOfficesalsopublishtheapplication18monthsaftertheprioritydateorfilingdate.

As stated above, in order to keep the patent in force, each year, for the term of the patent, a prescribed renewal ormaintenancefee,usuallyhastobepaidtothePatentOffice.Insomecountries,whereforexampleadeferredexamination system exists, the maintenance fee is payable even before the patent is granted. In some countries the maintenancefeeisnotrequiredannuallybutmaybepaid,forexample,sayeverythreetofiveyears.Asmallnumberof countries do not require the payment of maintenance fees.

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SummaryApatentisadocument,issued,uponapplication,byagovernmentofficeoraregionalofficeactingforseveral•countries, which describes an invention and creates a legal situation in which the patented invention can normally be exploited only with the authorization of the owner of the patent. Inventionmeansasolutiontoaspecificprobleminthefieldoftechnology.•In principle, the patented invention may not be exploited in the country by persons other than the owner of the •patent unless the owner agrees to such exploitation.Aninventionmustmeetseveralcriteriaifitistobeeligibleforpatentprotection.Theseinclude,mostsignificantly,•that the invention must consist of patentable subject matter, the invention must be industrially applicable (useful), itmustbenew(novel)itmustexhibitasufficientinventivestep(benon-obvious),andthedisclosureoftheinvention in the patent application must meet certain standards.Drafting practices and requirements differ from country to country.•An additional requirement of patentability iswhether or not the invention is sufficiently disclosed in the•application.Novelty is a fundamental requirement in any examination as to substance and is an undisputed condition of •patentability.

ReferencesBasics of Patents• . [pdf] Available at: <http://egyankosh.ac.in/bitstream/123456789/833/1/UNIT%201.pdf > [Accessed 11July 2012].Inventor basics• . [Online] Available at :< http://www.inventorbasics.com/Patent%20Basics.htm> [Accessed 11July 2012]How To Get A Provisional Patent?• [Video Online] Available at: <http://www.youtube.com/watch?v=cfzwNogVORg&feature=related> [Accessed 11July 2012]Innovation and patents• . [Video Online] Available at: <http://www.youtube.com/watch?v=KiXj02bpL1g&feature=related> [Accessed 11July 2012]2010. • What is a Patent? American Bar Association.Pienkos, J. T., 2004. • The Patent Guidebook. American Bar Association.

Recommended ReadingAttorney, R. S., 2012. Patent, • Copyright & Trademark: An Intellectual Property Desk Reference. NOLO.Attorney, D. P., 2011. • PatentItYourself:YourStep-by-StepGuidetoFilingattheU.S.PatentOffice. Nolo. Grissom, F. & Attorney, D. P., 2008. • Inventor’s Notebook: A Patent It Yourself Companion, 5th ed. Nolo.

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Self AssessmentIn some countries, certain inventions may be protectable through registration under the name of 1. _______________.

utility modela. similarity modelb. patent modelc. registration modeld.

Which of the following statements is true?2. In comparison with patents the fees for utility model are higher, and the duration of protection is shorter, a. but otherwise the rights are similar.In comparison with patents the fees for utility model are lower, and the duration of protection is longer, but b. otherwise the rights are similar.In comparison with patents the fees for utility model are lower, and the duration of protection is shorter, but c. otherwise the rights are similar.In comparison with patents the fees for utility model are lower, and the duration of protection is shorter, but d. the rights are different.

In order to be eligible for patent protection, an invention must fall within the scope of patentable 3. ___________.

utility modela. subject matterb. draftc. abstractd.

Which of the following statements is true?4. Thegeneralruleisthatpatentprotectionshallbeavailableforinventionsinallfieldsofhistory.a. Thegeneralruleisthatpatentdraftsshallbeavailableforinventionsinallfieldsoftechnology.b. Thegeneralruleisthatpatentprotectionshallnotbeavailableforinventionsinallfieldsoftechnology.c. Thegeneralruleisthatpatentprotectionshallbeavailableforinventionsinallfieldsoftechnology.d.

There are typically how many basic requirements to be complied with in the drafting of a patent application?5. twoa. threeb. fourc. fived.

Which is the last element of a patent?6. Abstracta. Titleb. Rulesc. Summaryd.

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The _______ can be very useful to third parties especially competitors of the patentee, because it reveals the 7. actual status of the patent.

Abstracta. Guidelinesb. Registerc. Patentd.

It is in the interest of both the applicant and the _______ that there exists the possibility to amend the 8. application.

patenteea. attorneyb. lawyerc. publicd.

A ___________ document is a techno-legal document.9. patenta. abstractb. summaryc. registerd.

The entry in the ___________ may also contain the abstract or the main claim, and if there are drawings, the 10. most illustrative drawing.

Registera. OfficialGazetteb. Manualc. Brochured.

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Chapter V

Patents, Designs, Trademarks and CGPDTM

Aim

The aim of this chapter is to:

introduce patent information system•

elucidate trademarks registry •

explain essential requirements for registration•

Objectives

The objectives of this chapter are to:

explain patent search services•

explicate geographical indications registry•

elucidate trademarks registry•

Learning outcome

At the end of this chapter, you will be able to:

understand patent copy supply service•

describe trademark rules and procedure•

identifybenefitsofdesignregistration•

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5.1 Introduction The pace of development of technology and trade, including the advances in information and communication technology, forced harmonisation of intellectual property laws across the globe, as embodied in the TRIPS Agreement. However,theglobalaspirationsforflourishingfreeandfairtradecanmeetaseriousstumblingblockiftheprocessofgrantingIPRscannotkeeppacewiththeadvancementoftechnology.ThismeansthattheIPofficesacrosstheworldwillhavetofindwaystospeeduptheirprocessessothatthetimebetweenthefilingofanapplicationforprotectionof IP, and the time of the actual grant of the statutory IP instrument conferring the IPR has to be compressed as much as possible. For this change to come, there has to be urgency to expedite things, a modernisation of infrastructure andsystemsandstrategiccooperationandcoordinationamongnational,regionalandinternationalIPoffices,sothatthecountriescanderivemaximumbenefitsbyexploitingsynergyoffacilitiesandsystemsworld-wide.

TheIntellectualPropertyOffice(IPO)differsfromcountrytocountryintermsoforganisationstructureandeventasks. There could be different IPOs to deal with different kinds of intellectual property (IP) or there could be one officetodealwiththewholerangeofIP.InIndia,thereisoneoffice,theofficeoftheControllerGeneralofPatents,DesignsandTrademarks,whichalsodealswithGeographicalIndications.Thereisaseparateofficeforcopyrights,and for semiconductor integrated circuits layout-designs there is a separate registry. IndiaaftertheadventoftheWTOhasputingreatefforttowardsmodernisingitsIPoffices.

5.2OfficeoftheControllerGeneralofPatents,DesignsandTrademarks(CGPDTM)TheOfficeoftheCGPDTMisasubordinateofficeoftheDepartmentofIndustrialPolicyandPromotion(DIPP).

After the advent of the WTO, the approach to intellectual property in India has acquired new urgency and the administration of IP is recognised as a vital component of strategy to become globally competitive and safeguard national interests in trade. There has been great emphasis on rationalising the administration of IP and modernising theIPOfficetobeprompt,efficientandeconomy-conscious.TheofficeoftheCGPDTMadministersthefollowingActs:

The Patents Act, 1970 as amended from time to time; •The Designs Act, 2000; •The Trademarks Act, 1999; and •The Geographical Indications of Goods (Registration and Protection) Act, 1999. •

TheCGPDTMdirectsandsupervisesthefollowingoffices:ThePatentOfficeincludingtheDesignsWing(PO)•The Patent Information System (PIS) •The Trademarks Registry (TMR) •The Geographical Indications Registry (GIR) •

5.2.1ThePatentsOfficeTheHeadOfficeofPatentsisinKolkata.Theregionaloffices,havingterritorialjurisdictiononazonalbasisareinMumbai(2offices),DelhiandChennai.TheTrademarksRegistryisatMumbaiandtheGeographicalIndicationsRegistry at Chennai.

Computerisedinformationisavailableaboutstatusofpatentapplications,receiptforfilingofpatentapplicationsetc. Digitisation, including scanning of records of patents and designs has been done. The website, www.ipindia.nic.in gives updated information.

ThePatentOfficebringsoutanofficialjournalunderthenameThePatentOfficeJournal.

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ThePatentOfficealsohandlesinternationalapplicationsfiledunderthePatentCooperationTreaty(PCT)designatingIndia.Italsoprovidedforfilingofproductpatentapplicationsrelatedtopharmaceuticalandagrochemicalsinthemail box prior to January 1, 2005, and had established a system for grant of exclusive marketing rights as required under the TRIPS Agreement.

Undermodernisationofpatentoffices,e-mailconnectivityhasbeenestablishedbetweenoffices,onlinesearchfacilitieshavebeenprovided,andISDNfacilityhasbeenprovidedtotheofficestoensureuninterruptedconnectivity.

5.2.2 Industrial Designs Wing The work processes and infrastructure support have been comprehensively revamped. The Designs Wing has made a transition from the paper-based examination procedures to an IT based system. Computerised records, online search facilities,auserfriendlywebsiteandadigitallibrarymakethewingatrulymodernoffice.

5.3 Patent Information System (PIS) TheofficeofthePIShasbeenfunctioningatNagpursince1980.Ithasfollowingobjectives:

Toobtainandmaintainacomprehensivecollectionofpatentspecificationandpatentrelatedliteratureona•world-wide basis; To provide technological information contained in patent or patent-related literature through publication services, •search services and patent copy supply service; To meet statutory obligation regarding novelty search under the Patent Act, 1970. •

The PIS is meant to serve a wide spectrum of clientele including users in R&D establishments, Government Organisations, Private Industries, Business and Investors. It has a rich collection of patent documentation including patentsfromIndia(since1912),USA(since1951),UK(1952-98),EuropeanPatentOffice(since1978),PCT(since1978), Australia (since 1975), Japan (since 1976 – only bibliographic data and abstracts of Japanese patents).

The PIS Offers following Services: Patent Information Services. The services come with appropriate fees. •Subscriber Advance Payment Scheme (SAPA) •

Users interested in getting patent information regularly have the facility to pay an amount of not less than Rs.1000/- (higher amounts to be in multiple of 1000) in advance into an account in their name opened with the PIS, Nagpur. The cost of services rendered by the PIS to the client is adjusted against this account.

5.3.1 Patent Search Services The search request in the standard format is to be conveyed to the PIS. The service includes the following searches:

CurrentAwarenesssearch(providesmonthlyupdateonspecifictechnology).•State of Art search (provides overview of the State-of-Art). •Bibliographic search (provides bibliographic data on patent document for 1978-98). •English Equivalent Patent search (English language equivalent patents for patents in non-English language). •Equivalent Family Patent search (Bibliographic details of the family members of a patent). •Assistedsearch(usersallowedtouseCD-ROMandMicrofilm/fischedataofthePIS).•

5.3.2 Patent Copy Supply Service

IndianPatent:Aprintedcopyandaphotostatcopyaresuppliedatafixedcharge.•ForeignPatent:Ifthepatentisavailablein-house,itisprovidedatafixedchargeperpatent.Ifitisnotavailable•in-house and has to be procured from the WIPO, there is an additional charge per patent. Copy of abstract/main claim of a patent comes at a charge•

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5.3.3 Trademarks Registry TheHeadOfficeoftheRegistryislocatedatMumbai;fourbranchofficesarelocatedatKolkata,Chennai,NewDelhi and Ahmedabad; they have their own territorial jurisdictions. The Controller General of Patents, Designs and Trademarks is the Registrar of Trademarks. Applications for registration, renewal or cancellation of trademarks are received at the Trademarks Registry (TMR) where they are processed. The TMR performs statutory functions as laid down in the Trademarks Act, 1999.

The register of trademarks contains the record of all registered trademarks with names addresses and description of proprietors, users, assignments and transmission conditions and limitations and particulars of registered users. A digital library of 1, 50, 000 trademarks and 1,250 Trademarks Journals on CD-ROMs has been created.

5.3.4 Geographical Indications Registry (GIR) As envisaged in the Geographical Indications of Goods (Registration and Protection) Act, 1999, a Geographical Indications Registry, located at Chennai, has come into existence. The Controller General of Patents, Designs and Trademarks is the Registrar of Geographical Indications. The Registry is responsible for the registration and protection of Geographical Indications; and performing statutory functions as mandated by the Act, 1999.

The register of GIs contains a record of all material particulars in respect of the registered GIs and the authorised users.

5.3.5 Awareness Programmes TheIPOfficeshavebeendoingcommendablework inspreadingawarenessof IPandrelated issues throughaservice of short term programmes organised in collaboration with a number of national and international bodies likeWIPOAcademy,Asia-PacificRegionalForumonPolicyInitiatives,localchambersofcommerce,IndianDrugManufacturers Association, Indian Agricultural Research Institute, IITs, Technology Information Forecasting And Assessment Council (TIFAC), etc.

5.4 Trademark Rules and ProcedureThe Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating to Trade Marks in India

ThesalientfeaturesofthisActbrieflyareassetoutintheStatementofObjectsandReasonsannexedtotheTradeMarks Bill:

Providing for registration of trade mark for services, in addition to goods;•Registration of trademarks, which are imitation of well known trademarks, not to be permitted, besides enlarging •the grounds for refusal of registration mentioned in clauses 9 and 11. Consequently, the provisions of defensive registration of trademarks are proposed to be omitted;Amplificationsoffactorstobeconsideredfordefiningawellknownmark;•Doing away with the system of maintaining registration of trade marks in Part A and Part B with different legal •rights,andtoprovideonlyasingleregisterwithsimplifiedprocedureforregistrationandwithequalrights;Simplifying the procedure for registration of registered user and enlarging the scope of permitted use; •Providing enhanced punishment for the offences relating to trade marks on par with the Copyright Act, 1957 •to prevent the sale of spurious goods;ProvidinganAppellateBoardforspeedydisposalofappealsandrectificationapplicationswhichatpresentlie•before High Courts;TransferringthefinalauthorityrelatingtoregistrationofcertificationtrademarkstotheRegistrarinsteadof•the Central Government;Providing enhanced punishment for the offences relating to trade marks on par with the present Copyright Act, •1957, to prevent the sale of spurious goods; Prohibiting use of someone else’s trademarks as part of corporate names, or name of business concern;•

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Extension of application of convention country to include countries which are members of Group or union of countries and Inter-Governmental Organisations.

Incorporatingotherprovisions,likeamendingthedefinitionof“trademarks;provisionsforfilingasingleapplicationfor registration in more than one class, increasing the period of registration and renewal from 7 to 10 years; making trade mark offences cognizable, enlarging the jurisdiction of Courts to bring the law in this respect on par with the copyright law, amplifying the powers of the Court to grant ex parte injunction in certain cases and other related amendments to simplify and streamline the trade mark law and procedure.

The Trade & Merchandise Mark Act, 1958 has been revised and replaced by the Trade Mark Act, 1999.

The current law of trademarks contained in the Trade Marks Act, 1999 is in harmony with two major international treaties on the subject, namely The Paris Convention for Protection of Industrial Property and TRIPS Agreement to both of which India is a signatory.

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FILING OF APPLICATION/CASH RECEIPTS

SCANNING/ VIENNA CODIFICATION

APPL. NO. ALLOTMENT

DATA ENTRY

Accepted

Intellectual Property Appellate

Board

Objected

Show cause hearing

Refused/Withdrawn/Abandoned

Journal Publication (Manuscript, Hindi

translation, scanning composing)

Registration (Manuscript checking/ preparation of

RegnCertificates,Checkingfor associated marks)

Opposition (Fixing of hearing/ production of evidence

delivery of judgement on merits) Hearings are taken

byHearingofficers

Renewal, Post registration Changes etc

Application to proceed for registration

If opposition is allowed and

application is reused

Either review

Examination and examination report

dispatched

Await for opposition

or

Fig.5.1Theworkflowintheprocessingoftrademarksapplications(Source: http://ipindia.nic.in/tmr_new/TMR_Manual/DraftManual_TMR_23January2009.pdf)

5.5 Designs: Rules and ProcedureIndustrial designs refer to creative activity which result in the ornamental or formal appearance of a product and design right refers to a novel or original design that is accorded to the proprietor of a validly registered design. Industrial designs are an element of intellectual property. Under the TRIPS Agreement, minimum standards of protection of industrial designs have been provided for. As a developing country, India has already amended its national legislation to provide for these minimal standards.

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The essential purpose of design law it to promote and protect the design element of industrial production. It is also intendedtopromoteinnovativeactivityinthefieldofindustries.TheexistinglegislationonindustrialdesignsinIndia is contained in the New Designs Act, 2000 and this Act will serve its purpose well in the rapid changes in technologyandinternationaldevelopments.Indiahasalsoachievedamaturestatusinthefieldofindustrialdesignsand in view of globalisation of the economy, the present legislation is aligned with the changed technical and commercial scenario and made to conform to international trends in design administration.

ThisreplacementActisalsoaimedtoinactamoredetailedclassificationofdesigntoconformtotheinternationalsystemandtotakecareoftheproliferationofdesignrelatedactivitiesinvariousfields.

ADesignreferstothefeaturesofshape,configuration.pattern,ornamentationorcompositionoflinesorcoloursapplied to any article, whether in two or three dimensional (or both) forms. This may be applied by any industrial processormeans(manual,mechanicalorchemical)separatelyorbyacombinedprocess,whichinthefinishedarticle appeals to and judged solely by the eye. Design does not include any mode or principle of construction or anything which is mere mechanical device. It also does not include any trade mark or any artistic work.

5.5.1BenefitsofDesignRegistrationThe registration of a design confers upon the registered proprietor the exclusive right to apply a design to the article in the class in which the design has been registered. A registered proprietor of the design is entitled to a better protection of his intellectual property. He can sue for infringement, if his right is infringed by any person. He can license or sell his design as legal property for a consideration or royalty. Registration initially confers this right for tenyearsfromthedateofregistration.Itisrenewableforafurtherperiodoffiveyears.Ifthefeeforextensionisnot paid for the further period of registration within the period of initial registration, this right will cease. There is provisionfortherestorationofalapseddesigniftheapplicationforrestorationisfiledwithinoneyearfromthedate of cessation in the prescribed manner.

5.5.2 Essential Requirements for RegistrationA design should:

be new or original•Not be disclosed to the public anywhere by publication in tangible from or by use or in any other way prior to •thefillingdate,OFwhereapplicable,theprioritydateoftheapplicationforregistration.Besignificantlydistinguishablefromknowndesignsorcombinationofknowndesigns.•Not comprise or contain scandalous or obscene matter.•Not be a mere mechanical contrivance.•Be applied to an article and should appeal to the eye.•Not be contrary to public order or morality•

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Filing of applications

Non compliance of objections(s) No responsetooffice communication

Abandoned

Refusal Re-examination

Numbering and dating of applications

Examination of applications

Communication for objection(s)

Hearing if objection(s) is

contested

Compliance of objection(s)

Appeal to high court

In case of allowance of appeal Notificationinthe officialjournal

Issueofcertificate

Waiving/removal of objection(s) Acceptance

Removal of objection(s)

No objection

Fig.5.2Designapplicationflowchart(Source: http://ipindia.nic.in/ipr/design/Design_RegistrationBooklet/RegistrationBooklet_05February2010.pdf)

Despite the possible existence of stray instances of rewarding inventions under pre capitalist systems, it may be claimed that granting patents and other intellectual property registration for new products and processes is an innovation made by capitalism. Patents were used as devices to advance knowledge and bring the new knowledge eventually (that is, after the expiry of the patent life or through licensing) into the public domain. But they were alsousedasinstrumentsofcompetitiveness-bytheindividualfirmagainstallpotentialoractualcompetitors,andby governments in their bid to strengthen their own countries against foreigners.

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SummaryTheglobalaspirationsforflourishingfreeandfairtradecanmeetaseriousstumblingblockiftheprocessof•grantingIPRscannotkeeppacewiththeadvancementoftechnology.ThismeansthattheIPofficesacrosstheworldwillhavetofindwaystospeeduptheirprocessessothatthetimebetweenthefilingofanapplicationfor protection of IP, and the time of the actual grant of the statutory IP instrument conferring the IPR has to be compressed as much as possible.TheIntellectualPropertyOffice(IPO)differsfromcountrytocountryintermsoforganisationstructureand•even tasks. There could be different IPOs to deal with different kinds of intellectual property (IP) or there could beoneofficetodealwiththewholerangeofIP.InIndia,thereisoneoffice,theofficeoftheControllerGeneralofPatents,DesignsandTrademarks,whichalso•dealswithGeographicalIndications.Thereisaseparateofficeforcopyrights,andforsemiconductorintegratedcircuits layout-designs there is a separate registry. TheOfficeoftheCGPDTMisasubordinateofficeoftheDepartmentofIndustrialPolicyandPromotion(DIPP).•TheCGPDTMdirectsandsupervisesthePatentOfficeincludingtheDesignsWing(PO),thePatentInformationSystem (PIS), the Trademarks Registry (TMR), the Geographical Indications Registry (GIR) The current law of trademarks contained in the Trade Marks Act, 1999 is in harmony with two major international •treaties on the subject, namely The Paris Convention for Protection of Industrial Property and TRIPS Agreement to both of which India is a signatory.Adesignreferstothefeaturesofshape,configuration,pattern,ornamentationorcompositionoflinesorcolours•applied to any article, whether in two or three dimensional (or both) forms. This may be applied by any industrial processormeans(manual,mechanicalorchemical)separatelyorbyacombinedprocess,whichinthefinishedarticle appeals to and judged solely by the eye.

ReferencesManual for Trademark Practice and Procedure• , [pdf] Available at: <http://ipindia.nic.in/tmr_new/TMR_Manual/DraftManual_TMR_23January2009.pdf> [Accessed 12 July 2012].OfficeoftheControllerGeneralofPatents,DesignsandTrademarks.[pdf]Availableat:<http://egyankosh.•ac.in/bitstream/123456789/873/1/UNIT%2013.pdf> [Accessed 12 July 2012].Bagchi, A. K. & Bhattacharya, U. K., • Indian Patents as Competitive Instruments Dream and Reality.Durham, A. L., 2004. • Patent Law Essentials: A Concise Guide. Greenwood Publishing Group.Cilliers, L., • Difference between registered designs, patents and trademarks. [Video Online] Available at: <http://www.youtube.com/watch?v=CUu7qplvtjc> [Accessed 16 July 2012].Garcia, A., • Differences between Patent, Trademark and Copyright: Massachusetts Attorney Explains [Video Online] Available at: <http://www.youtube.com/watch?v=BUwYi3__yVM&feature=related> [Accessed 16 July 2012].

Recommended ReadingHenri, J. A., Charmasson & John Buchaca, J., 2008. • Patents, Copyrights & Trademarks For Dummies, 2nd ed., For Dummies. Attorney, S. E., 2010. • Trademark: Legal Care for Your Business & Product Name, 9th ed., Nolo. Singer, B., 2012. • Patents, Trademarks, Designs, Copyrights, Nabu Press.

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Self AssessmentInIndia,thereisoneoffice,theofficeoftheControllerGeneralofPatents,DesignsandTrademarks,which1. also deals with___________.

Historical Indicationsa. Geographical Indicationsb. Local Indicationsc. Soil Indicationsd.

TheOfficeoftheCGPDTMisasubordinateofficeofwhichdepartment?2. Department of Industrial Policy and Promotion.a. Department of History and anthropologyb. Department of Intellectual propertyc. Department of Design policyd.

The________directsandsupervisesthePatentOfficeincludingtheDesignsWing.3. WIPOa. Department of Industrial Policy and Promotionb. CGPDTMc. WTOd.

TheofficeoftheCGPDTMadministersthe________________.4. WTOa. Industrial actb. Archaeology policyc. Designs Act, 2000d.

ThePatentOfficealsohandlesinternationalapplicationsfiledunderthe_____________designatingIndia.5. Patent Law Treatya. Patent Cooperation Treatyb. WIPO treatyc. Intellectual property actd.

Which of the following statements is false?6. PISobjectiveistoobtainandmaintainacomprehensivecollectionofpatentspecificationandpatentrelateda. literature on a world-wide basis; PIS objective is to provide technological information contained in patent or patent-related literature through b. publication services, search services and patent copy supply service; PIS objective is to meet statutory obligation regarding novelty search under the Patent Act, 1970. c. PIS objective is to control the PCTd.

Which of the following Services is not offered by PIS?7. Patent Information Services a. Patent copy servicesb. Patent home deliveryc. Patent search services d.

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If a foreign patent is not available in-house and has to be procured from the_____ , at an additional charge.8. WIPOa. WTOb. CGPDTMc. PISd.

Applications for registration, renewal or cancellation of trademarks are received at the ____________ where 9. they are processed.

PISa. Trademarks Registryb. TISc. PatentSearchOfficed.

A__________referstothefeaturesofshape,configuration,pattern,ornamentationorcompositionoflinesor10. colours applied to any article, whether in two or three dimensional (or both) forms.

Patentsa. Trade Markb. Designc. Copyrightd.

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Chapter VI

Patent Cooperation Treaty (PCT) and Patent Law Treaty (PLT)

Aim

The aim of this chapter is to:

introducethestepsofapplicationprocessingunderPCTfiling•

elucidate the provisions of PLT•

explain Patent Cooperation Treaty (PCT)•

Objectives

The objectives of this chapter are to:

explaindifferentphasesofpatentfilingunderPCT•

explicate the advantages of PLT•

elucidate the objectives of PCT•

Learning outcome

At the end of this chapter, you will be able to:

understand Patent Law Treaty (PLT)•

describedifficultiesfacedinfilingseparatenationalpatents•

enlist the advantages of PCT system•

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6.1 IntroductionThenationalpatentsystemrequiresthefilingofindividualpatentapplicationsforeachcountryforwhichpatentprotection is sought, with the exception of the regional patent systems such as the African Intellectual Property Organisation (OAPI) system, the Harare Protocol system established in the framework of the African Regional Industrial Property Organisation (ARIPO), the Eurasian patent system and the European patent system. Under thetraditionalParisConventionroute,youcanclaimthepriorityofanearlierapplication,forapplicationsfiledsubsequentlyinforeigncountriesbutsuchlaterapplicationsmustbefiledwithinl2monthsofthefilingdateoftheearlierapplication.Thisinvolvesthepreparationandfilingofpatentapplicationswithinoneyearoffirstfilingforall countries in which the protection for invention is sought. This means expenses for translation, patent attorneys in thevariouscountriesandpaymentoffeestothepatentoffices,allatatimewhenyougenerallydonotknowwhetheryou are likely to obtain a patent or whether the invention is really new compared with the state of the art.

Filingofpatentapplicationsunderthenationalsystemmeansthateverysinglepatentofficewithwhichanapplicationisfiledhastocarryoutaformalexaminationofeveryapplicationfiledwithit.Wherepatentofficesexaminepatentapplicationsastosubstance,eachofficehastomakeasearchtodeterminethestateoftheartinthetechnicalfieldof the invention and has to carry out an examination as to patentability.

The principal difference between the national patent system and the regional patent systems such as those mentioned aboveisthataregionalpatentisgrantedbyonepatentofficeforseveralStates.Otherwise,theproceduretobefollowed is the same in all the cases.

6.2 International PatentSeptember 1966, the Executive Committee of the International (Paris) Union for the Protection of Industrial Property invited BIRPI (the predecessor of WIPO) to undertake urgently a study of solutions to reduce the duplication of the effortbothforapplicantsandnationalpatentoffices.Inthefollowingyears,anumberofBIRPImeetingsprepareddrafts and a Diplomatic Conference held in Washington, D.C., in June l970 adopted a treaty called the Patent Cooperation Treaty. The Patent Cooperation Treaty or PCT entered into force on January 24, 1978, and became operational on June 1, l978, with an initial 18 Contracting States.

The progress of the PCT demonstrates the certainty that many more countries, developing as well as developed, willbecomepartytothePCTintheyearsaheadandthatitsuse,evidencedbythenumberofapplicationsfiled,willcontinuetoincreasesignificantly.

To harmonize and streamline formal procedures in respect of national and regional patent applications and patents, thePatentLawTreaty(PLT)wasadoptedonJune1,2000ataDiplomaticConferenceinGeneva.Withasignificantexceptionforthefilingdaterequirements,thePLTprovidesmaximumsetsofrequirementswhichtheofficeofaContracting Party may apply. It may not lay down any other formal requirements in respect of matters dealt with by this Treaty.

Any State which part of the Paris Convention is for the Protection of Industrial Property or which is a member of WIPO may become party to the PLT. In addition, any intergovernmental organisation may become party to the Treaty under some conditions.

6.3 Basic Objectives of PCTAsitsnamesuggests,thePatentCooperationTreatyisanagreementforinternationalcooperationinthefieldofpatents.Itisoftenspokenofasbeingthemostsignificantadvanceininternationalcooperationinthisfieldsincetheadoption of the Paris Convention for protection of industrial property. It is, however, largely a treaty for rationalisation andcooperationwithregardtothefiling,searchingandexaminationofpatentapplicationsandthedisseminationof the technical information contained therein. The PCT does not provide for the grant of international patents. The taskofandresponsibilityforgrantingpatentsremainsexclusivelyinthehandsofthepatentofficesof,oractingfor, the countries where protection is sought. The PCT does not compete with but, in fact, complements the Paris Convention. Indeed, it is a special agreement under the Paris Convention open only to States which are already party to that Convention.

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6.3.1 Patent Cooperation Treaty (PCT) and Patent Law Treaty (PLT)The principal objective of the PCT is, to improve on the previously established means of applying in several countries forpatentprotectionforinventions.This,actsbothintheinterestsoftheusersofthepatentsystemandtheofficeswhich have responsibility for administering it.

To achieve its objective, the PCT:Establishesaninternationalsystemwhichenablesthefiling,withasinglepatentoffice(thereceivingoffice),of•a single application (the international application) in one language having effect in each of the countries party to the PCT which the applicant names (designates) in the application.Providesfor theformalexaminationof theinternationalapplicationbyasinglepatentoffice, thereceiving•office.Subjects each international application to an international search which results in a report citing the relevant •prior art (mainly published patent documents relating to previous inventions) which may have to be taken into account in deciding whether the invention is patentable.Provides for centralised international publication of international applications with the related international •searchreports,aswellastheircommunicationtothedesignatedoffices.Provides an option for an international preliminary examination of the international application, which gives the •applicantandsubsequentlytheofficesthathavetodecidewhetherornottograntapatent,areportcontainingan opinion as to whether the claimed invention meets certain international criteria for patentability.

The procedure described above is commonly called the international phase of the PCT procedure. The national phase pertainstothelastpartofthepatentgrantingprocedure,whichisthetaskofthedesignatedoffices,i.e.,thenationalofficesof,oractingfor,thecountrieswhichhavebeendesignatedintheinternationalapplication.

InPCTterminology,areferencetonationaloffice,nationalphaseornationalfeesincludesthereferencetotheprocedurebeforearegionalpatentoffice.

Inmoredevelopedcountrieswith agreaternumberofpatent applications,patentofficeshavebeen strugglingfor years with heavy workloads (leading to delays) and with questions of how best to allocate resources, so as to ensure that the patent system yields the greatest return from the available manpower. Under the PCT system, by thetimetheinternationalapplicationreachesthenationaloffice,ithasalreadybeenexaminedastoformbythereceivingoffice,beensearchedbytheInternationalSearchingAuthorityandpossiblyexaminedbyanInternationalPreliminary Examining Authority. These centralised procedures of the international phase thus reduce the workload ofthenationalpatentoffices.

Further main objectives of the PCT are to facilitate and accelerate access by industry and other interested sectors to technical information related to inventions and to assist developing countries in gaining access to technology.

6.3.2 Filing an International ApplicationAnynationalorresidentofaPCTContractingStatecanfileaninternationalapplication.YoucanfiletheInternationalapplicationswiththenationaloffice,whichwillactasaPCTreceivingoffice.Inaddition,theInternationalBureaucanactasareceivingofficeasanoptionfornationalsandresidentsofallPCTContractingStates.

Aninternationalapplicationhastheeffect,asoftheinternationalfilingdate,ofanationalapplicationinthosePCTContracting States which you designate for a national patent in your application. It has the effect of a regional patent application in those PCT Contracting States which are party to a regional patent treaty, providing they are designated for a regional patent (that is, an ARIPO patent, a Eurasian patent, a European patent or an OAPI patent).

The PCT prescribes certain standards for international applications. An international application which is prepared in accordance with these standards will be acceptable, so far as the form and contents of the application are concerned,toallthePCTContractingStates,andnosubsequentmodificationsbecauseofvaryingnationalorregional

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requirements (and the cost associated therewith) will become necessary. No national law may require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for by the PCT.

Onlyasinglesetoffeesisincurredforthepreparationandfilingoftheinternationalapplicationandtheyarepayableinonecurrencyandatoneoffice,thereceivingoffice.Paymentofnationalfeestothedesignatedofficesisdelayed.ThenationalfeesbecomepayablemuchlaterthanforafilingbythetraditionalParisConventionroute.

Thefeespayabletothereceivingofficeforaninternationalapplicationconsistofthreemainelements:Thetransmittalfee,tocovertheworkofthereceivingoffice;•The search fee, to cover the work of the international searching authority; and•The international fee, to cover the work of the International Bureau.•

An applicant who is a natural person and who is a national of and resides in a State whose per capita national income isbelowacertainlevel,basedonincomefiguresusedbytheUnitedNationsfordeterminingitsscaleofassessmentsfor contributions to it, is entitled to a sizable reduction of certain PCT fees, including the international fee. If there are several applicants, each must satisfy the above-mentioned criteria.

ThelanguageinwhichaninternationalapplicationcanbefileddependsupontherequirementsofthereceivingofficewithwhichtheapplicationisfiledandoftheInternationalSearchingAuthoritywhichistocarryouttheinternationalsearch.ThemainlanguagesinwhichinternationalapplicationsmaybefiledareChinese,English,French, German, Japanese, Russian and Spanish. Other languages also accepted, so far, are Danish, Dutch, Finnish, Norwegian and Swedish.

Thereceivingoffice,afterhavingaccordedaninternationalfilingdateandmadeaformalcheck,sendsacopyofthe international application to the International Bureau of WIPO (the record copy) and another copy (the search copy)totheInternationalSearchingAuthority.Itkeepsathirdcopy(thehomecopy).Thereceivingofficealsocollects all the PCT fees and transfers the search fee to the International Searching Authority and the international fee to the International Bureau.

6.3.3 International SearchEvery international application is subjected to an international search, that is, a high quality search of the patent documentsandothertechnicalliteratureinthoselanguagesinwhichmostpatentapplicationsarefiled(English,Frenchand German, and in certain cases Chinese, Japanese, Russian and Spanish). The high quality of the international search isassuredby thestandardsprescribed in thePCTfor thedocumentation,staffqualificationsandsearchmethodsoftheInternationalSearchingAuthorities,whichareexperiencedpatentofficersthathavebeenspeciallyappointed to carry out international searches by the Assembly of the PCT Union (the highest administrative body created under the PCT) on the basis of an agreement to observe PCT standards and time limits.

The followingoffices havebeen appointed to act as InternationalSearchingAuthorities: theAustralianPatentoffice,theAustrianPatentoffice,theChinesePatentoffice,theEuropeanPatentoffice,theJapanesePatentoffice,theRussianPatentoffice,theSpanishPatentandTrademarkoffice,theSwedishPatentofficeandtheUnitedStatesPatentandTrademarkoffice.

Each International Searching Authority is required to have at least the prescribed PCT minimum documentation, properly arranged for search purposes, which can be described in general as comprising the patent documents, as from 1920, of the major industrialised countries, together with agreed items of non-patent literature. The International Searching Authority, in making the search, must make use of its full facilities, i.e., the PCT minimum documentation and any additional documentation it may possess. The obligation to consult at least the PCT minimum documentation guarantees a high level of international searching.

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The results of the international search are given in an international search report, which is normally made available to youasanapplicantbythefourthorfifthmonthaftertheapplicationisfiled.Thecitationsofdocumentsofrelevantprior art in the international search report enable you to calculate your chances of obtaining a patent in or for the countries designated in the international application, and to decide whether it is worthwhile to continue to seek protection for the invention in the designated States.

An international search report which is favourable, that is, in which the citations of prior art would appear not to preventthegrantofapatent,assistsyouinthesubsequentprosecutionoftheapplicationbeforethedesignatedoffices.If a search report is unfavourable, you have the opportunity to amend the claims in the international application to better distinguish the invention from the state-of-the-art or to withdraw the application before it is published.

Theinternationalsearchreportassistsdesignatedoffices,inparticularofficeswhichdonothavetechnicallyqualifiedstaff and an extensive collection of patent documents arranged in a manner suitable for search purposes, in examining applications and otherwise evaluating the inventions described.

The International Searching Authority sends the international search report to the applicant and to the International Bureau. The International Bureau includes the search report in the international publication of the international applicationandsendsacopytothedesignatedoffices.

6.3.4 International PublicationInternational publication serves two main purposes:

To disclose to the public the invention, i.e., in general, the technological advance made by the inventor; and•To set out the scope of the protection which may ultimately be obtained•

The International Bureau publishes a PCT pamphlet which contains a front page setting out bibliographic data furnishedbytheapplicant,togetherwithdatasuchastheInternationalPatentClassification(IPC)symbolassignedby the International Searching Authority, the abstract and also the description, the claims, any drawings and the international search report. If the claims of the international application have been amended, the claims are published bothasfiledandasamended.Internationalpublicationoccurs,ingeneral,l8monthsaftertheprioritydateoftheinternational application.

Thepamphlet ispublishedin thelanguageof theinternationalapplicationasfiled, if that languageisChinese,English, French, German, Japanese, Russian or Spanish. If, however, the international application is published in Chinese, French, German, Japanese, Russian or Spanish, the title of the invention, the abstract and the international searchreportarealsopublishedinEnglish.Iftheinternationalapplicationhasbeenfiledinanyotherlanguage,itis translated and published in English.

The publication of each pamphlet is announced in the PCT Gazette, which lists the published international applications in the form of entries reproducing data taken from the front pages of the pamphlets. Each issue of the PCT Gazette alsocontainsaClassificationIndex,allowingtheselectionofthepublishedinternationalapplicationsbytechnicalfields.

These publications, the pamphlet and the PCT Gazette, are distributed free of charge by the International Bureau on a systematic basis to all PCT Contracting States. They are now also available in CD-ROM format in searchable form. To the public, they are supplied on request, against payment of a fee.

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6.3.5 International Preliminary ExaminationOnceyoureceivetheinternationalsearchreportasanapplicant,youcanmakeaspecificrequestforinternationalpreliminaryexaminationbyfilingademandinwhichthedesignatedStatesareelected.Thisenablesyoutoobtainanopinion as to whether the claimed invention meets any or all of the criteria of patentability, i.e., whether it appears to be novel, whether it appears to involve an inventive step and whether it appears to be industrially applicable. AfeeforinternationalpreliminaryexaminationisduewhenademandisfiledwiththeInternationalPreliminaryExamining Authority, together with a handling fee to cover the work of the International Bureau. Applicants from certain States are entitled to a sizable reduction of the handling fee.

As in the case of the International Searching Authorities, the International Preliminary Examining Authorities are appointedbytheAssemblyofthePCTUnion.TheofficeswhichhavebeenappointedarethesameasthoseappointedasInternationalSearchingAuthorities,withtheexceptionoftheSpanishPatentandTrademarkoffice.Theresultsof the international preliminary examination are given in a report which is made available to the applicant and the electedoffices(whicharetheofficesof,oractingfor,theelectedStates)throughtheInternationalBureau,whichisalsoresponsiblefortranslatingthereportintoEnglish,ifrequiredbyanyelectedoffice.

The opinion on the patentability of the invention, on the basis of the international criteria provides the applicant withanevenstrongerbasisforcalculatingthechanceofobtainingapatent,andtheelectedofficeshaveabetterbasis for their decision whether to grant a patent. In countries where patents are granted without examination as to substance, the international preliminary examination report will provide a solid basis for parties interested in the invention (e.g., for licensing purposes) to evaluate the validity of such patents.

Usually upon publication of the international application (but at the latest by the end of the 19th month after the prioritydate),theInternationalBureaucommunicatestheinternationalapplicationtothedesignatedoffices.Thecopy communicated will be used for the subsequent prosecution of the international application before those officessincethePCTisonlyasystemforfilingandnotforgrantingpatents.Patentgrantingistheexclusivetaskandresponsibilityofthedesignatedoffices.Inpractice,morethanhalfoftheseofficeshavewaivedtheweeklycommunications of copies of published international applications and receive, instead, a free-of-charge complete collection on CDROM of all such applications.

A CD-ROM workstation is also provided by the International Bureau. The main advantages of the CD-ROM format arerapidaccessviacomputerandthelimitedstoragespacerequired.Inanycase,adesignatedofficeisentitledtoreceive,uponspecificrequest,copies(onpaper)oftheinternationalapplications,andofrelateddocuments,inwhich it is designated.

Whenaninternationalpatentapplicationhasbeenfiled,thenationalproceduresinrelationtothemajorityofthedesignatedofficesaredelayeduntiltheendofthe30th month from the priority date (there are some exceptions;—evenlongerdelaysareavailablebeforesomeoffices).Thedelaynormallygivesyou18monthsmorebeforeyouhavetofulfilthenationalrequirementsthanifyoudonotusethePCT.Thisadditionaltimecanbeveryusefulforevaluating the chances of obtaining patents and of exploiting your invention commercially in the various designated countries, and for assessing both the technical value of your invention as well as the continued need for protection in those countries.

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6.3.6 National PhaseAfter having received an international search report and, where appropriate, an international preliminary examination report, and after having had the possibility of amending the application, you are now in a good position to decide whether there is a chance of obtaining patents in the designated States. If you see no likelihood, you can either withdraw the application or do nothing. In the latter case, the international application will lose the effect of a national application and the procedure will automatically come to an end. In such a case you have saved yourself of great expense,namely,thecostsinvolvedinfilingseparatenationalapplicationsunderthetraditionalParisConventionroute.Youhavenotpaidforapplicationsandtranslationsforthenationaloffices,youhavenotpaidfeestothoseoffices,andyouhavealsonotappointedlocalagents:allthisisrequiredunderthetraditionalParisConventionroutewithin l2 months from the priority date, and must be done without having the basis for evaluating the likelihood of obtaining a patent, which is afforded under the PCT by the international search report and, optionally, the international preliminary examination report.

Where you decide to continue the procedure, and only in that event, you must pay the prescribed national fees to the designated(orelected)officesand,ifrequired,furnishtotheseofficestranslationsoftheinternationalapplicationintotheirofficiallanguage.Youmayalsohavetoappointalocalagent.Oncenationalprocessingstarts,thenormalnationalproceduresapply,subjecttospecificexceptionsarisingoutofthePCTprocedure,forexample,mattersofform and contents of the international application, and the provision of copies of the priority document.

6.4 Advantages of the PCT SystemPCTisafacilitatingtreatyandoneofmostsignificantadvancementininternationalcooperationinthefieldofpatents. The principle objective of the PCT is o provide a more effective and more economical means for applying for patent protection in several countries.

6.4.1AdvantagesforthePatentofficeMoreandmorepatentofficeshavetoconsiderhowtoemploytheiravailablemanpowertothegreatestadvantage.This is true because of the number of patent applications which they must handle. In a country in the process of development, the number will surely rise considerably in the future as a consequence of an increase in the country’s industrialactivity.Alsothepatentofficesarebeingrequiredtofulfiltheexpandingroleofprovidingtechnicaladvisoryservices to local industry, either in terms of advising on available technologies or in connection with national research and development activities. This responsibility comes because of available patent documentation and technically trainedstaff.ThePCTassistspatentofficesinmeetingthesedemandsinvariousways.

Patent office can expect to employ their availablemanpower to handlemore patent applications, since thoseapplicationscomingviathePCThavealreadybeenverifiedwithregardtocompliancewithformalrequirementsduring the international phase.

Patentofficecansavepartofthecostofpublishing.Iftheinternationalapplicationhasbeenpublishedinanofficiallanguageofthecountry,theycanforgopublicationaltogether.Countrieshavingadifferentofficiallanguagemaylimit themselves to publishing only a translation of the abstract which accompanies international applications. Copies of the full text of the international application could be supplied upon request to interested parties.

ThePCTdoesnotaffecttherevenueofdesignatedofficesunlesstheydecidevoluntarilytogivearebateonnationalfees in view of the savings they make through the PCT, and in order to make the use of the international application routemoreattractivetotheapplicant.Inanycase,themostprofitablesourceofrevenueformostofficesisfromannual or renewal fees, which are not affected by the Treaty.

Examiningpatentofficebenefit,inrespectofmostapplicationsfiledbyforeigners,fromaninternationalsearchreport and an international preliminary examination report. Their search costs are also thereby reduced.

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Non-examiningofficesreceiveanapplicationwhichhasalreadybeenexaminedastoform,whichisaccompaniedbyaninternationalsearchreportandpossiblybyaninternationalpreliminaryexaminationreport.Thiswillputtheoffice,and the national industry affected by a patent and/or interested in licensing, in a much better position compared to the systemoffilingnationalorregionalapplications.Nationalauthoritiesinvolvedinapprovinglicensingagreementslikewisebenefitfromthegreatervalueofapatentgrantedonthebasisofaninternationalapplication.

PatentofficesofStatespartytotheHarareProtocol,totheEurasianPatentConventionortotheEuropeanPatentConvention which opt to close the national route are not involved in the processing of international applications designatingsuchStates.Choosingthisoptionisthereforeparticularlyadvisableifthenationalpatentofficeislesswellequippedthantheregionalofficeandisnotpreparedtoreceiveandprocessincreasingnumbersofapplications.

6.4.2 Advantages for the ApplicantYoumayfileyourapplicationinyourowncountry(or,whereapplicable,withthecompetentregionaloffice,orwiththeInternationalBureauasreceivingoffice)witheffectinforeigncountries,andhavemoretimetomakeupyourmind as to those foreign countries in which you wish to seek protection. In a typical case, you have spent much less money in the stage prior to a granted patent than otherwise.

IfyoudonotusetheinternationalprocedureofferedbythePCT,youmuststartpreparationsforfilingabroadthreeto six months before the expiration of the priority period. You must prepare translations of the application and have themputintoadifferentformforeachcountry.UnderthePCT,youneedtofileonlyoneapplication(theinternationalapplication),withinthepriorityyear,witheffectinallStatesthatyoudesignate,whichmaybefileduntilthelastday of the priority year, may be identical both as to language and form with your own national application.

The cost of further translation has to be met eventually, but not until eight (or 18) months later than under a procedure which does not use the PCT, and only if you, having evaluated the international search report and, where available, the international preliminary examination report also, are still interested in the countries concerned. If not, you can save all subsequent costs.

6.4.3 Advantages for the National Economy and IndustryInternational applications will be pursued in the national phase only if you believe, after seeing the results of the international search and usually also the international preliminary examination, that there are sound economical and technical reasons to do so. Thus, patents granted on the basis of international applications will usually provide a sounder basis for investment and transfer of technologies.

Technological progress is an essential factor of national economic development. It is recognised that real technological progress cannot be achieved or cannot continue in a country, however industrialised, without constant stimulation of domestic inventive activities and at the same time importation (via licenses) of advanced technologies from foreign countries. Since the PCT system greatly facilitates the obtaining of patent protection on an international level, and since the patents granted through the PCT route have been subjected to high-quality international search and usually also international preliminary examination, more and more applicants are seeking patent protection on an international level through the PCT, thus preparing the route for technology transfer and licensing agreements.

With more licensed technology, foreign investment will be stimulated. And with more advanced technologies and more investment, there will be increased levels of local employment and the technical skills of the local work force will be enhanced. As the level of economic and technological development rises, an increasing number of nationals willuseandgreatlybenefitfromthePCTsystemwhentheyseekpatentprotectionabroadfortheirinventions,thusaiding in the penetration of export markets by local industry.

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The economies of many developing countries are growing rapidly; more investment and technology transfer in various areas, depending on the country concerned, are needed, as well as the creation and modernisation, locally, of certain types of industries (manufacturers, etc.) and services. Since foreign investors and licensors are relatively more interested in investing in and transferring technologies to a country whose economy is growing and where production costs are relatively low, the PCT will often serve as an indispensable part of the country’s strategy to foster its growing economy and to promote the steady rise of its economic and technological level.

A further important advantage of the PCT for developing countries lies in its information effect. It can be very difficulttoobtainacompletepictureofallthepatentdocumentspublishedinmanycountriesandmanylanguagesand of the most recent state-of the-art resulting from them. Since many important inventions are the subject of PCT applications, developing countries have, through the international publication of these applications, early and easier access to modern technological information. The access will be early, because international applications are published 18 months after the priority date of the application. It will be easier, because the application will be published in one of the most important languages and, where not in English, with an English-language abstract, and because the international search report, published together with the application, will make it easier to evaluate thetechnologydisclosedintheapplication.PatentofficesofPCTContractingStatesareentitledtoreceive,freeof charge, a copy of all published international applications, of the PCT Gazette, and of any other publication of general interest published by the International Bureau in connection with the PCT.

The PCT offers distinct advantages for developing countries participating in this system of international patent cooperationandrequiresnopaymentofcontributions.ThatthereissufficientawarenessoftheseadvantagesisconfirmedbytheimpressivenumberofdevelopingcountriesalreadypartytotheTreaty.

6.5 Provisions of the Patent Law Treaty (PLT) and the RegulationsAccording to Article 3, the PLT applies to national and regional applications that are applications for patents for invention, applications for patents of addition and divisional applications for patents for invention or for patents of addition. These terms are to be construed in the same sense as the corresponding terms in Article 2(i) of the PCT. ThePLTalsoappliestointernationalapplicationsforpatentsforinventionandforpatentsofadditionfiledunderthe PCT once the international applications have entered into the national phase. It also applies to the time limits for the entry of international applications into the national phase under PCT Articles 22 and 39(1).

As regards patents, the PLT applies to all patents for invention, and to patents of addition, which have been granted bytheofficeofaContractingPartyorbyanotherofficeonbehalfofthatContractingParty.

6.5.1 Filing Date RequirementsThegrantofafilingdateisessentialinviewofdecidingwhohasaprioritytoobtainapatentineachcountryandof determining prior art and patentability of the invention. It is also relevant to claiming a right of priority under the Paris Convention as well as to the calculation of the term of patent protection.

Article5ofthePLTsetsuprequirements,forobtainingafilingdateandprocedurestoavoidlossofthefilingdatebecauseofafailuretocomplywithotherformalityrequirements.Inprinciple,theofficeofanyContractingPartyshallaccordafilingdatetoanapplicationonthebasisofthreesimpleelements.Theseare:(i)Anindicationthatwhatwasfiledisintendedtobeapatentapplication;(ii)indicationswhichidentifytheapplicantand/orallowtheapplicant to be contacted; and (iii) a part which on the face of it appears to be a description.

A Contracting Party may, however, accept evidence that establishes the identity of, or allows a contact to, the applicant in the place of indications referred to in (ii) above, or accept a drawing in the place of a part referred to in (iii)above.Further,forthepurposeofobtainingafilingdate,anapplicantmayfileadescriptioninanylanguage,althoughitmaybeneededtofileatranslationlater.

Article5alsoprovidesfortherulestoestablishafilingdatewhereapartofthedescriptionordrawingismissingfromtheinitiallyfiledapplication,orwherethedescriptionsand/ordrawingsarereplacedbyareferencetoanotherapplication.

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6.5.2 Standardised Application and FormsThe PLT establishes a single internationally standardised set of formal requirements for national and regional applications. In order to avoid having international double standards, the formal requirements in respect of international applications under the PCT are incorporated into the PLT, wherever appropriate. The provisions in this respect are:

In accordance with Article 6(1), the requirements relating to the form or contents of international applications under the PCT, both concerning the international phase and the national phase, are incorporated by reference into the PLT, with minor exceptions.

The contents of the request of an international application under the PCT are also incorporated by reference •into the PLT (Article 6(2)(a)).The PLT Rule 3(2) provides that a Contracting Party shall accept request forms that are based on the PCT •request form.

In addition to the request form, the Treaty provides for the establishment of several additional Model International FormsthathavetobeacceptedbyallofficesofContractingParties(Article8(3)).TheseForms,whichwillbeestablished by the Assembly, relate to the following communications:

A power of attorney;•A request for recordation of change in name or address;•A request for recordation of change in applicant or owner;•Acertificateoftransfer;•A request for recordation, or cancellation of recordation, of a license;•A request for recordation, or cancellation of recordation, of a security interest; and•A request for correction of a mistake.•

ByusingtheModelInternationalForms,thatis,fillinginasingleformandfilingitwithanyofficeofaContractingParty,applicantsandotherpartiesareassuredthatnoofficemayrefusethecommunicationonthebasisofnon-compliance with formality requirements.

6.5.3 Restriction on Mandatory RepresentationThe PLT allows a Contracting Party to require that an applicant, owner or other interested person appoint a representativeforthepurposesofanyprocedurebeforetheoffice,exceptforcertainlimitedprocedures(Article7(2)). These limited procedures are:

Thefilingofanapplicationforthepurposesofthefilingdate;•The mere payment of a fee;•Thefilingofacopyofanearlierapplicationforthepurposeofestablishingafilingdatewhereapartofthe•descriptionoradrawinghasbeenmissingfromtheinitialfiling;Thefilingofacopyofapreviouslyfilledapplicationforthepurposeofestablishingafilingdatewherethe•description and any drawings have been replaced by a reference;Theissueofareceiptornotificationbytheofficeinrespectofanyprocedureunder(i)to(iv).•

Althoughanapplicantorownermaycarryoutthesepermittedproceduresvis-à-vispatentofficesinforeigncountrieswithout engaging any representative, in accordance with Article 8(6) and Rule 10(2), a Contracting Party may require that the applicant or owner nevertheless provide an address for correspondence and/or for legal service on the territory of that country.

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6.5.4 Restriction on Requiring EvidenceIn order to reduce any unnecessary burden on applicants, the PLT provides that the evidence in the support of formal contents of an application, declarations of priority or the authentication of translations may only be required where theofficehasareasonabledoubtastotheveracityoftheindicationsortheaccuracyofthetranslationsubmittedbythe applicant (Article 6(6)). Such a limitation with respect to evidence is also applicable to the indications contained in other communications such as a power of attorney (Rule 7(4)), a request for recordation of change in name or address (Rule 15(4)), etc.

However, concerning a request for recordation of change in applicant or owner and a request for recordation, or cancellation of recordation, of a license or a security interest, the PLT expressly allows a Contracting Party to require limited documentation supporting the fact of such change or license, respectively. As regards a signature, a ContractingPartymayrequireevidenceonlywheretheofficehasareasonabledoubtastoitsauthenticity(Article8(4)(c)).Otherwise, the office cannot require any attestation, notarization, authentication, legalisationor othercertificationofasignature(Article8(4)(b)),exceptinthecaseofdigitalsignatures(Rule9(6)).

6.5.5 Restriction on Requirements to Submit a Copy of an Earlier Application and Translation thereof Rule4(3)prohibitsaContractingPartytorequireacopyoracertifiedcopyoftheearlierapplicationorthepreviouslyfiledapplication if suchearlierapplicationorpreviouslyfiledapplicationhasbeenfiledwith theofficeof thatContracting Party.

Thesameappliestothecaseswheretheofficecouldobtainthecopyorthecertificationfromotherofficesthroughadigitallibrarywhichisacceptedbythatofficeforthatpurpose.Further,Rule4(4)providesthattheofficemayrequirea translation of the earlier application only where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable.

6.5.6 Single CommunicationThe PLT allows an applicant or owner to consolidate a number of similar requests in one communication under certain circumstances (Rule 7(2) (b)). For example, a Contracting Party shall accept a single power of attorney if it relates to one or more applications and/or patents of the same person.

6.5.7 Relief in Respect of Time Limits and Reinstatement of RightsThe PLT provides three types of relief procedures:

Thefirstisanextensionofthetimelimit,foratleasttwomonths,whereanapplicantorownerrequeststhe•extension prior to the expiration of the time limit (Article 11(1)(i)).The second is an extension of the time limit, for at least two months, where an applicant or owner requests the •extension after the expiration of the unobserved time limit (Article 11(1)(ii)).The third is continued processing (Article 11(2)).•

AContractingPartyisnotobligedtoprovidethefirsttypeofextension.However,itisobligedtoprovideeitherthesecond type of extension or continued processing, if the circumstances meet the requirements under the Treaty and theRegulations.Reliefundertheseprovisionsislimitedtonon-compliancewithatimelimitfixedbytheofficeforanactioninaprocedurebeforetheoffice.Itdoesnotapplytotimelimitsfixedbylegislation.

The PLT also provides safeguard provisions if you, as an applicant or owner, have failed to meet a time limit and, as a consequence, have lost your rights with respect to an application or patent unintentionally or in spite of all due care required by the circumstances (Article 12). Reinstatement of rights shall be granted if a request to that effect is made, and all the relevant requirements are complied with, in a time limit of not less than two months from the date on which the reason of the non-compliance with the time limit is removed, or of not less than 12 months from the expiration of the missed time limit, whichever is shorter (Rule 13(2)). In contrast to the relief in respect of time limits, reinstatement of rights is applicable to all time limits, including time limits set by legislation.

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6.5.8 Correction and Addition of Priority Claim and Restoration of Priority RightAs in the case of international applications under the PCT (PCT Rule 26bis), PLT Article 13(1) and Rule 14(1) to (3) provide for the possibility of addition and correction of priority claims for national/regional applications.

The PLT also provides for a remedy for the loss of a priority right due to innocent non-compliance with related time limitsintwocases.Thefirstis,whereanapplicationisfiledaftertheexpirationofthe12-monthpriorityperiod,under certain conditions, you are entitled to the restoration of the priority right if the failure to claim a priority within 12 months occurred in spite of all due care taken by you, or was unintentional and the circumstances meet certain conditions.

Theapplicationhastobefiled,andarequestforrestorationshouldbemade,inatleasttwomonthsfromthedateon which the priority period expired, but before the completion of any technical preparation for publication of the application.

The second is where you cannot submit a copy of an earlier application within 16 months from the priority date becauseofadelayintheofficewithwhichyourearlierapplicationwasfiled.Inordertosafeguardyouinsuchcases, Article 13(3) and Rule 14(6) and (7) provide for restoration of priority rights.

6.5.9 Paper and Electronic CommunicationThegoalofthePLTconcerningpaperandelectronicfilingistofacilitatetheimplementationofelectronicfilingofapplicationsandothercommunications,totheadvantageofbothofficesandtheirusers,whileensuringtheco-existence of both paper and electronic communications at the global level. The principle under the PLT is that any contractingpartyisneitherobligedtoacceptthefilingsofcommunicationinelectronicformorbyelectronicmeans(Article8(1)(b))norobligedtoexcludethefilingofcommunicationsonpaper(Article8(1)(c)).

Rule8(1)providesthat,ingeneral,allContractingPartiesshallpermitthefilingofapplicationsandcommunicationsonpaperuntilJune2,2005.Afterthatdate,aContractingPartymayimplementfullelectronicfiling(i.e.,excludepaperfiling),oritmaycontinuetoacceptpaper.However,evenafterJune2,2005,applicantscanusepaperinallofficesforthepurposesofacquiringafilingdateandcomplyingwithatimelimit.

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SummaryFilingofpatentapplicationsunderthenationalsystemmeansthateverysinglepatentofficewithwhichan•applicationisfiledhastocarryoutaformalexaminationofeveryapplicationfiledwithit..The principal difference between the national patent system and the regional patent systems such as those •mentionedaboveisthataregionalpatentisgrantedbyonepatentofficeforseveralStates.To harmonize and streamline formal procedures in respect of national and regional patent applications and •patents, the Patent Law Treaty (PLT) was adopted on June 1, 2000 at a Diplomatic Conference in Geneva. Withasignificantexceptionforthefilingdaterequirements,thePLTprovidesmaximumsetsofrequirements•whichtheofficeofaContractingPartymayapply.Itmaynotlaydownanyotherformalrequirementsinrespectof matters dealt with by this Treaty. Any State which part of the Paris Convention is for the Protection of Industrial Property or which is a member •of WIPO may become party to the PLT. In addition, any intergovernmental organisation may become party to the Treaty under some conditions.•PCTisafacilitatingtreatyandoneofmostsignificantadvancementininternationalcooperationinthefieldof•patents. The principle objective of the PCT is o provide a more effective and more economical means for applying for •patent protection in several countries.

ReferencesPatent Cooperation Treaty (PCT) and Patent Law Treaty (PLT).• [pdf] Available at: <http://egyankosh.ac.in/bitstream/123456789/836/1/UNIT4.pdf> [Accessed 16 July 2012].Patent Cooperation Treaty.• [pdf] Available at: <http://www.wipo.int/treaties/en/registration/pct/> [Accessed 16 July 2012].Is the Patent Law Treaty Right for the United States?• [Video Online] Available at: <http://vimeo.com/14571061> [Accessed 16 July 2012].ForeignfilingpatentapplicationsviathePatentCooperationTreatyandParisConvention• . [Video Online] Available at: <http://www.youtube.com/watch?v=M8iF6nH5nsk> [Accessed 16 July 2012].Cook, T., 2011. • A User’s Guide to Patents. Bloomsbury Publishing.Davis, J., 2005. • Intellectual Property Law, Volume 2 of Butterworth Core Text Series. Oxford University Press.

Recommended ReadingNolff, M., 2001.• TRIPS, PCT and Global Patent Procurement, 1st ed., Springer. Cohn, R. & Russell, J. 2012. • Patent Cooperation Treaty. VSD. Winner, E. P. & Denberg, A. W., 2005. • International Trademark Treaties with Commentary. Oxford University Press, USA.

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Self AssessmentA______patentisgrantedbyonepatentofficeforseveralStates.1.

nationala. regionalb. universalc. internationald.

The national phase pertains to the ________ of the patent granting procedure, which is the task of the designated 2. offices.

initial parta. firstsessionb. last partc. middle leveld.

To harmonize and streamline formal procedures in respect of national and regional patent applications and 3. patents, which treaty was adopted?

Patent Co operation treatya. Patent Law Treatyb. WIPO treatyc. IP treatyd.

The task of and responsibility for granting patents remains exclusively in the hands of the _________of, or 4. acting for, the countries where protection is sought.

patentofficesa. WIPOofficeb. WTOofficec. UniversalPatentOfficed.

WhicharticleofthePLTsetsuprequirementsforobtainingafilingdateandprocedurestoavoidlossofthe5. filingdatebecauseofafailuretocomplywithotherformalityrequirements?

Article 10a. Article 3b. Article 6c. Article 5d.

The PLT provides _______ types of relief procedures.6. threea. twob. fivec. tend.

The principle objective of the _______ is to provide a more effective and more economical means for applying 7. for patent protection in several countries.

PLTa. PCTb. IPTc. WIPOd.

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A Contracting Party is not obliged to provide which type of extension?8. Basica. Secondb. Firstc. Fifthd.

PatentofficesofStatesparty to the_______, to theEurasianPatentConventionor to theEuropeanPatent9. Convention.

Harare Protocola. Indian Protocolb. Standard Protocolc. International Protocold.

Which of the following statements is false? 10. Thefeespayabletothereceivingofficeforaninternationalapplicationconsiststhetransmittalfee,tocovera. theworkofthereceivingoffice;Thefeespayabletothereceivingofficeforaninternationalapplicationconsiststhesearchfee,tocovertheb. work of the International Searching Authority; andThefeespayabletothereceivingofficeforaninternationalapplicationconsiststheinternationalfee,toc. cover the work of the International Bureau.Thefeespayabletothereceivingofficeforaninternationalapplicationconsiststhehomedeliveryfee.d.

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Chapter VII

Overview of the U.S., European, and Japanese Patent Systems Structure

Aim

The aim of this chapter is to:

elucidatethecontentsofapplicationfiledforUSpatent•

explainthenormsofpatentfilingintheUS•

Compare U.S. patent system with other patent systems•

Objectives

The objectives of this chapter are to:

explain processing of patent application•

explicate European patent convention•

elucidate the Japanese patent system•

Learning outcome

At the end of this chapter, you will be able to:

understand the processing of application in US system•

describetheproceduresofpatentfilingunderEuropeanpatentconvention•

compare the US, EPC and Japanese patent systems •

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7.1 IntroductionCompetition in high technology industries is increasingly becoming global. And with the harmonization of intellectual property regimes, international patent portfolio has become an important weapon in this competitive global environment. This is one of the strongest of intellectual property rights, and thus the most sought after. The patent holder enjoys a 20-year exclusive right to commercially work on a protected invention. Strong patent rights can ensure cross licensing of inter-dependent technologies, secure access to new product or geographic markets, and attract favourable funding from investors. For a patent to be obtained the inventor or an assignee must be the firsttosubmitanapplicationwiththePatentOffice(IPO)whichsufficientlydescribesanoveladvancenoteasilyanticipated by one skilled in the technical art. But patent protection is not without its limitations. One is that the application is publicly laid open 18 months after its submission and an awarded patent is published. Both actions will disclose your revolutionary invention to the world. Thus, even if the application is in the end rejected, any proprietary informationdisclosednolongerqualifiesfortradesecretprotectionandwillbecomepriorart.Theinventormustalso consider the expense involved in pursuing even a clearly patentable invention. Not only are there application fees and periodic maintenance cost over the life of the patent, expensive professional advice is often necessary in processing an application.

The patent rights granted under an Indian Patent Act extend only throughout the territory of India and are not enforceable in another country. However, businesses and inventors often discover that their intellectual property may be valuable in foreign markets as well as in India. For example you wish to obtain patent protection for the inventioninUSAinadditiontoIndia,youhavetofileandbegrantedapatentbyUnitedStatesPatentandTrademarkOffice(USPTO).Assuch,thequestionarisesofhowtoobtainpatentprotectioninforeigncountries.Almosteverycountry has its own patent law, and when you desire a patent in a particular country, you must make an application for patent in that country, in accordance with that country’s requirements. Patentability rules are not uniform across the world and it should not be assumed that Indian provisions are the international standard. Inconsistent novelty and inventive step provisions raise the possibility that activities, which do not affect Indian prior art, may still destroy patentability in other countries. In some instances an application in one country will be counted as prior art inasecond,andastrategyofparallelfilingisnecessarytoretainforeignnovelty.Fortunately,Indiaisamemberof several patent treaties including the Paris Convention Treaty, Patent Cooperation Treaty, (PCT) and European PatentConvention(EPC)thatofferthelocalinventorcertainfilingprivilegesoverseas

7.2 Overview of the United States Patent SystemThe U.S. patent system is in an accelerating race with human ingenuity and investments in innovation. In many respectsthesystemhasrespondedwithadmirableflexibility.

7.2.1 Patent by US NormsPriortoGATT,apatentcouldbedefinedasagrantbytheUnitedStatesgovernmentgivingthepatentownertherightforaspecifiedperiodoftimetoexcludeothersfrommaking,usingorsellinganinventionwithintheUnitedStates,its territories, and possessions. As of January 1, 1996 (the effective date of this aspect of the GATT legislation), the definitionofapatenthasbeenexpandedtogiveadditionalrightstothepatentowner:therighttoexcludeothersfromoffering to sell a patented invention in the United States and from importing a patented invention into the United States during the patent term. A patent obtained in the United States affords no protection in foreign countries.

AnyonemayfileforapatentintheUnitedStates,regardlessofage,sex,ornationalityiftheapplicantisthetrueinventor of the subject matter claimed in the application. The applicant is required to sign the patent application and execute a sworn statement that he or she is the true inventor.

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Whenwethinkofpatents,inventionssuchasthetelephoneandtheradiocomefirsttomostusminds.However,there are actually three different kinds of patents, each type carrying a different set of requirements:

Utility patent: This is the type of patent that the general public is most familiar with. It covers any new, useful, •and unobvious process, machine, article of manufacture, composition of matter, or any new, useful, and unobvious improvement thereof.Plant patent: This type of patent protects any distinct and new variety of plant (other than those which are tuber •propagated or a plant found in an uncultivated state) which has been asexually reproduced. Design Patent: This type of patent covers any new (original) and ornamental design for an article of manufacture. •The design patent protects only the appearance of the article and not its function or structure.

7.2.2 Term of US PatentPrior to GATT:

Utility patents and plant patents were both granted for a term of seventeen years from the date of issuance. The •17-year term applied to any patent that expired prior to June 8, 1995.The 17-year patent term of utility patents was extendible under certain circumstances involving regulatory •review (as by the Food and Drug Agency, for example) of a product covered by the patent before commercial marketing or use of that product.Design patents were (and will continue to be) granted for 14 years from the date of issuance (as the GATT rules •regarding patent term do not apply to design patents).

After GATT:In general, the term of post-GATT utility patents and plant patents begins on the date of issuance and ends 20 •yearsfromthedateoffiling.ThisruleappliestoallUnitedStatespatentsthatissuefrompatentapplicationsfiledonorafterJune8,1995.The term of so-called transitional patents is automatically the greater of the old 17-year term or the new 20-year •term. This rule applies to:

All United States utility patents and plant patents that were in force (i.e., issued and unexpired) on June 8, �1995(regardlessoffilingdate);andAll United States utility patents and plant patents issuing on or after June 8, 1995 that are based on an �applicationfiledpriortoJune8,1995.

Even though the term of an existing patent may be extended for up to 3 years by the application of these transitional rules, the enforceable rights of the patent owner during that bonus term are limited with respect to activities of an infringer that began prior to June 8, 1995. The availability of post-term extension for utility patents due to pre-marketing regulatory remains unchanged •under the new GATT legislation. However, under post-GATT rules, the 20-year patent term may also be extended up to 5 years for delays due to interferences, secrecy orders imposed for reasons of national security, and/or successful appeals to the Board of Patent Appeals and Interferences or the federal courts. Any extension available under the new rules is in addition to any extension available for pre-marketing regulatory review as provided in existing law.

7.2.3 Criteria for PatentabilityTheUnitedStates followwhat is sometimescalledafirst-to-invent standard. Inotherwords, theapplicant forpatent must not merely be an actual inventor in the sense that he did not knowingly copy the work of another. The applicantmustbethefirstinventorandnothaveabandoned,suppressedorconcealedtheinvention.Eventhoughan individual conceives an invention all by himself, and it is entirely original to the best of his knowledge, a patent willbedeniedifhisinventioncanbefoundinthepriorart,definedtobeeverybitofinformationthatisaccessibleto the general public.

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In general, an invention is considered to be old, and therefore not patentable, if it was: Known or used by others in this country before being invented by the applicant for patent; or •Patented or described in a printed publication in the United States or a foreign country before being invented •by the applicant for patent.

Inordertopreservehisrights,aninventormustfileaUnitedStatespatentapplicationwithinoneyearaftertheinvention is in public use or on sale in this country and within one year after being patented or described in a printed publication anywhere in the world.

7.2.4 Contents of Patent ApplicationFollowing are various parts of the application:Specification:Thisisthefirstpartoftheapplication.Itcontainsadescriptionoftheinventionthatissopreciseand complete that it will enable any person who is skilled in the art to make and use the invention without undue experimentation. It must also contain a description of the best mode known to the inventor for carrying out the invention.

Claim(s): Each claim consists of one complete sentence, the purpose of which is to inform the public of what will infringe the patent. A claim is essentially a metes and bounds description which encapsulates the invention and distinguishes it from all prior art. Because there is precise type of vocabulary and sentence structure that is used in patent claims, an inventor is creating a very real risk that his patent will be denied if he attempts to draft patent claimsonhisinventionhimself,althoughheisallowedtodosobythepatentoffice.

Drawing(s): A drawing is usually required for patent applications involving apparatus and articles of manufacture, andmaybe requiredby thepatentExaminer foralmostany typeofsubjectmatter.Thepatentofficehasveryspecificrequirementsforthesizeandqualityofdrawings,andtherefore,shouldnormallybedonebyadraftsmanwith experience in this area. Plant patent drawings should be artistically executed, and must be in colour if colour is a distinguishing characteristic of the new variety. Photographs are now accepted for plant patents.

Oath: The patent application also must contain the inventor’s oath that he believes himself to be the original and firstinventorofthesubjectmatterclaimedintheapplication.

Filing Fee: The fee for a utility patent is $750, for a design patent it is $330, and for a plant patent $520. These fees arereducedbyhalfiftheapplicanthassmallentitystatus.Otherfeessuchassurchargesforfilinganincompleteapplication may also be assessed.

7.2.5 Processing of Patent ApplicationEachpatentapplicationisassignedtothespecificgroupofExaminerswhoareinchargeoftheclassofpatentsthattheinventionfallsinto.Applicationsarenormallytakenupforexaminationintheordertheyarefiled,sousuallyno further action will be taken for several months due to the backlog of pending applications. When the Examiner doesbeginherexamination,shewillfirststudytheapplicationtomakesurethatallthelegalrequirementshavebeen met. If so, she will then make a search of the prior art and make a preliminary decision. By a document called anOfficeAction,thePatentandTrademarkOfficewillnotifytheinventororhispatentattorneyoftheExaminer’sdecision.Inthevastmajorityofcases,thefirstOfficeActionwillbearejection.

The inventor will then have between 30 days and 6 months to respond to the rejection by pointing out the errors in theexaminer’sreasoning.Theapplicationwillthenbere-examined,andtheinventorwillreceiveasecondOfficeAction,whichisusuallymadefinal.Ifitisarejection,theinventormaythenappealorfileacontinuationapplicationto preserve his rights.

A strict secrecy is maintained over all patent applications until the patent actually issues. At that time the Patent and TrademarkOfficemakesitscompletefileonthepatentavailableforinspectionbyanyonewhoisinterested.

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OncetheExaminerdecidesthatapatentshouldbeawarded,theU.S.PatentandTrademarkOfficewillsendtheinventor what is called a Notice of Allowance. At this point the inventor may request that any errors in the patent be corrected. To cause the patent to actually issue, the inventor must pay an issue fee within three months. About threeorfourmonthsafterthePatentandTrademarkOfficereceivestheissuefee,thepatentwillissueandarecordof it will be made available to the public. The issue fee for a utility patent is $1300, for a design patent $470, and for a plant patent $630 (all reduced by half for small entities).

Maintenancefeesmustbepaidatspecifiedintervalsinordertokeeputilitypatents(butnotdesignpatentsorplantpatents) in force. In general, these fees are due 3.5, 7.5 and 11.5 years after the issue date of the patent, but upon payment of an additional surcharge, they may also be paid at any time during a six-month grace period after the due date. Unless each maintenance fee (and any applicable surcharge) is paid by the end of the grace period, the patent will expire automatically on the 4th, 8th, or 12th anniversary of the issue date, as the case may be. Currently, the firstmaintenancefeeis$890;thesecondis$2050;andthethirdis$3150.Allmaintenancefeesarequotedwithoutsurcharge and are reduced by half for small entities.

If two or more inventors apply separately for a patent on substantially the same invention then, if the invention is patentable,aproceedingknownasapatentinterferencewillbedeclaredbythePatentandTrademarkOfficetodeterminethefirstinventor.Eachpartytotheinterferencemustpresentevidencetoprovethedateonwhichhemadethe invention. Any party who is unable to produce such evidence will not be allowed to claim a date of invention whichisearlierthanthedateonwhichhispatentapplicationwasfiled.Inthesimplestsituation,thepersonwhoprovesthatheconceivedtheinventionfirstwillprevail;however,undercomplicatedfactualsituationsthefirsttoconceivemaynotbedeterminedtobethefirstinventorforpatentpurposes.Sinceconceptionanddiligentreductionto practice determine who is entitled to the patent, it is very important that the inventor keep good records.

7.2.6 Comparison of the U.S. Patent System with Other Patent SystemsThe patent system in the United States differs in several ways from what may be considered to be the worldwide norm. Currently, with some exceptions such as pharmaceuticals and medical devices, a U.S. patent has a term beginning onthedateonwhichapatentisissuedandending20yearsfromthedatetheapplicationwasfiled.Thismeansthatthe patent term does not begin while the application is pending; it begins only when the patent is actually granted. Itcanbeamatterofyearsbeforeapatentisgrantedfromthetimethepatentapplicationisfirstfiled.

Mostotherpatentsystemshavepatenttermsthatrunforafixedtermfromthedatethepatentapplicationwasfirstfiled.Forinstance,theUnitedKingdom,Germany,France,Japan,Canada,andmanyothercountrieshavepatenttermsof20yearsfromfirstfilingofthepatentapplication.

The United States is unique in its approach to the allocation of patent rights. In the United States, patent rights are grantedtothefirsttoinventratherthantheuniversallyacceptedapproachofthefirsttofile.ConsequentlytheUnitedStateshasauniqueInterferenceSystemthatitusestodeterminewhichpartywasthefirsttoinvent.

The basic principles of novelty, utility, and non-obviousness apply as prerequisites to patentability in the United States. However, with regard to the determination of both novelty and non-obviousness, what constitutes prior use or public knowledge (prior art) differs considerably from standards commonly adopted elsewhere. Although subject matter described in a printed publication or patent will constitute prior art, whether or not it is published or patented in the United States, the same is not true of subject matter in public use or known to the public. In these latter cases, only use or knowledge within the United States or its territories constitutes prior art. Many countries determine the applicability of prior art without geographic limitations.

The United States grants a one-year grace period from the time that an invention is disclosed to the public to the time thatthepatentapplicationmustbefiled.Inotherwords,aslongasanapplicationforapatentisfilednotmorethanone year from the date the subject matter is publicly disclosed, the applicant may obtain a patent. Elsewhere, the patentapplicationmustbefiledbeforeanydisclosureismadetothepublic.Thus,inothercountries,theinventors’freedom of use and publication of their inventions is greatly restricted. Some countries seek an intermediate level of freedom. For example, a six-month grace period for use or public display, but only where the use is found to be experimental and the public display is at an exhibition.

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The United States requires that the best mode for working the invention be disclosed as part of the patent application. Most countries impose no such requirement, and therefore an inventor may possibly hide the best way of using or making the patented product or process. However, this practice is antithetical to the underlying purpose of a patent system because it hinders disclosures of technological innovations.

EffectivefromNovember29,2000,theUnitedStatespublishespatentapplicationsthatarealsofiledabroad18monthsaftertheU.S.filingdate,unlesstheapplicantrequestsotherwiseuponfilingandstatesthattheinventionhasnotbeenandwillnotbethesubjectofanapplicationfiledinaforeigncountry.

This publication allows American inventors to see an English language translation of the technology that their foreign counterparts are seeking to protect in the United States at a much earlier point. It gives applicants a reasonable head start and allows others to understand the state of the art so that they can improve upon it and make wise R&D investment decisions.

Finally, the United States requires maintenance fees to be paid at 3.5 years, 7.5 years, and 11.5 years after the original grant of a patent, while other countries require annual maintenance fees.

7.3 European Patent ConventionThe European Patent Convention (EPC) or Convention on the Grant of European Patents of October 5, 1973 is a legal text instituting the European Patent Organisation and the system according to which European patents are granted.

TheEPCgoesevenbeyondwhatthePatentCooperationTreatyestablishes.AnapplicantfilesasingleEuropeanPatent Application and designates the countries in Europe in which he wants to have patent protection. The European PatentOffice(EPO)performsanoveltysearchandpreparesasearchreport.Usingthissearchreport,theExaminingDivision (three Examiners) then determines the patentability of the invention. The procedure is comparable to the national procedure, except in that it has only been performed once regardless of how many European countries were designated.

If the Examining Division decides that the invention is patentable, the EPO grants a European Patent. This is a slightly misleading name, since it does not grant any traditional patent rights. Rather, it grants the applicant, in the countries he designated, the same rights as would have been granted in the case of a national application. A European Patent is therefore sometimes referred to as a bundle of rights. Despite the name, the EPO is not an organisation within the European Union. Also non-EU members are party to the EPC.

Once a European Patent has been granted, anyone has the right to oppose it within nine months after grant. If the patent is then found to be invalid, it is revoked in all countries simultaneously. After these nine months, the patent can only be revoked separately for each country in which it was granted. This is substantially more expensive and time-consuming.TheEPO,however,isnotthefinalauthorityonpatentmattersinEurope.AEuropeanpatenteffectivelygrants its owner national patents in every country that is party to the EPO (or those countries the owner designated). Issues of validity and infringement must be dealt with according to the national patent law in each country.

In particular, a European patent can only be declared invalid by a court in one country for that country. Article 16(4) oftheBrusselsConventiononJurisdictionandEnforcementspecificallystatesthatissuesrelatedtotheregistrationof a right are exclusively the domain of the country in which that registration took place. This means that someone wanting to invalidate a European patent that was granted in 18 countries must start 18 separate court proceedings. Of course,oncethefirstfewproceedingsarewon,therestshouldberelativelysimpleandmaynotevenbenecessary,since the patent owner will be unlikely to actually enforce his patent after that.

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Europe does not have an equivalent of the US Court of Appeals for the Federal Circuit, which means that in principle every country can rule differently on patent matters. There are some restrictions. Article 69 of the EPC gives a basic principle on determination of the scope of the right and the way in which it should be interpreted. There is currently no single European Union-wide patent. Since the 1970s, there has been concurrent discussion towards the creation of a Community Patent in the European Union. In May 2004 however, this has led to a stalemate and the prospect of a single EU-wide patent is receding.

7.3.1 Structure and ProceduresThe EPC is separate from the European Union, and its membership is different: Switzerland, Liechtenstein, Turkey, Monaco, Bulgaria and Romania are members of the EPO but are not members of the EU, while the opposite is true for Latvia, Lithuania and Malta. The EPC provides a legal framework for the granting of European Patents, viaasingle,harmonizedprocedurebeforetheEuropeanPatentOffice.AsinglepatentapplicationmaybefiledattheEuropeanPatentOfficeatMunichoratitsbranchatTheHagueoratanationalpatentofficeofaContractingState, if the national law of the State so permits. This latter provision is important in countries (such as the United Kingdom)inwhichitisanoffenceforaUKresidenttofileapatentapplicationabroadwithoutobtainingclearancethroughtheUKPatentOfficefirst.

EuropeanPatentapplicationscanbefiledeitherinEnglish,French,orGerman.Thislanguageisthendesignatedasthe language of proceedings for the application process. A national of a country in which none of these languages isofficialwouldbeatadisadvantageifthisweretheonlyprovisionso,suchpeople(orcompanies)canfileintheirownlanguageandfileatranslationsubsequently.Feereductionsarealsoavailableinthesecircumstancestooffsetthe extra translation cost. On grant, the European patent must be brought into effect in the European countries in which protection is actually required. In some countries, if the language of proceedings (the language in which the patentwaspublished)isanofficiallanguage,thentheprocessisaformalityorthepatentisautomaticallyeffectivewithoutproceduralsteps.Otherwise,atranslationintoalocallanguagemustbefiled.

At this point, the European Patent is effectively treated as a bundle of national rights, and a national law applies. This has particular relevance to renewal, revocation, and infringement. The only centrally executed procedure after grant is the Opposition Procedure, governed by the EPC, which allows third parties to oppose the grant of a European Patent. It is a quasi-judicial process, subject to Appeal, which can lead to amendment or even revocation of a European Patent. It has often arisen that a European Patent has been subject of litigation at a national level (for example an infringement dispute) and Opposition Proceedings in the EPO simultaneously. This can lead to legally difficultandexpensivesituations.

The European Patent system covers an area in which many languages are spoken. To obtain patent protection in individualcountriesseparatelywouldbelogisticallydifficult,andwouldleadtoveryhighinitialcoststoprepareapplication documents in each language. The European Patent Convention delays the need to obtain these translations until after grant of a European Patent, thus ensuring that a patentee is able to assess realistically the need to pay for so many translations.

In common with other patent application processes, the application procedure includes a prior art search and a patentability examination, before a patent can be granted.

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7.3.2 Comparison with US Patent SystemCurrently, for ICT-related inventions the two most important areas to obtain patent protection are probably the United States and West-European countries. Twenty European countries are currently member to the European Patent Convention, and it is possible to obtain patent protection in those countries through a single procedure before theEuropeanPatentOffice.

While quite a few aspects of patent law have been harmonized internationally, there still are many important differences between the two systems.

Firsttofileversusfirsttoinvent:WhentwopeopleapplyattheEPOforapatentonthesameinvention,thefirstpersontohavefiledtheapplicationwillgetthepatent(assumingtheinventionispatentable,ofcourse).Thisholdsevenifthesecondpersondidinfactcomeupwiththeinventionfirst.Theonlythingthatcountsisthefilingdate.

In the USA, a slightly different approach is used. In case of two applications for the same invention (a so-called interference),adeterminationismadewhoinventeditfirst.Thisusuallyinvolvesexamininglaboratorylogbooks,establishingdatesforprototypesandsoon.Ifthepersonwhofiledlaterisfoundtohaveinventedearlier,hemaybe awarded the patent.

Grace period:Iftheinventionhasbecomepubliclyavailableinanywaybeforethepatentapplicationwasfiled,theapplicationwillberejected(Article54EPC).“Publiclyavailable”includessellingtheinvention,givingalectureabout it, showing it to an investor without a non-disclosure agreement (NDA), and publishing it in a magazine, and so on. It does not make a difference whether the person making it publicly available is the inventor, one of the inventors, or an independent third party.

The USA has a one-year grace period (35 US Code section 102). This means that the inventor can freely publish his invention without losing patent rights. However, this only applies for the USA. If an inventor does so, he automatically loses all potential patent rights in Europe (as well as many other countries in the world).

Best mode requirement: US patent law requires the inventor to include the best way to practice the invention in the patent application (35 US Code sections 112). This way, the inventor cannot get a patent and still keep some essential or advantageous aspect a secret.

In contrast, European patent law has no such requirement. At least one way of practicing the invention must be included in the application (Article 83 EPC), but there is nothing that states this way must be the best way, or even a good way.

Publication of patent applications: Until recently, US patents were only published after grant. This has been changed, andnowintheUSpatentapplicationsarepublished18monthsaftertheirfilingdate,unlesstheyhavebeenwithdrawnortheyarefiledwithanon-publicationrequest,statingthattheapplicationisUSonly.

This is very similar (except for the request) to the European situation, where all patent applications are published 18monthsaftertheirfilingdate,unlesstheyhavebeenwithdrawn.Ifthenoveltysearchhasbeencompletedbythattime, the search report is included with the publication.

The publication of a patent application is not an indication of the patentability of the invention in any way. It only means that the application is 18 months old. In the past, people used to the US system of publishing only granted patents could incorrectly assume that anything published by the EPO was a granted patent.

You can tell the difference between an application and a granted patent in two ways. First, the number in the top-right cornerhasan“A”whenthepublicationisanapplicationanda“B”whenitisapatent.Second,grantedEuropeanpatents do not have an abstract on the front cover.

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Rights conferred by a granted patent: A US patent is a property right which is enforceable in the whole territory of the USA. It allows the patent holder to prevent anyone from making, using or selling in the USA the patented invention. This is because the US patent law (35 US Code) is a federal statute.

In contrast, the European Patent Convention is a treaty signed by twenty-seven European countries, namely Austria, Belgium, Bulgaria, Switzerland, Cyprus, the Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, Greece, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Portugal, Romania, Slovenia, Slovakia, Sweden, Turkey and the United Kingdom. Patents under the EPC are granted by the European Patent Office(EPO)inMunich.AgrantedEuropeanpatentundertheEPCconferstoitsownerthesamerightasanationalpatentinthoseEPCcountrieselectedbytheapplicant.So,essentially,aEuropeanpatentchangesintoa“bundle”of national patents. This means that, once granted, a European patent can only be annulled by separate proceedings ineachelectedcountry.However,duringthefirstninemonthsafterthegrantofthepatent,anyonecanstartancountries at once.

Opposition after grant:WithinninemonthsafterthegrantofaEuropeanpatent,anyonecanfileanoppositionwith the EPO, stating why this patent should not have been granted (of course with arguments and evidence). The patent holder and the opponent can then debate with each other. Finally, the EPO will take a decision based on facts and arguments presented by both sides.

Usually, after the parties presented their case to the EPO (by exchanging numerous letters with each other), the patent holder and the opponent present their case during Oral Proceedings at the EPO in Munich. After these proceedings,usuallyafinaldecisionismadebytheEPO,althoughsometimestheproceedingsarethencontinuedagain in writing. Both parties can appeal the decision, which once again results in an exchange of letters followed by Oral Proceedings.

While the USA has a re-examination procedure, it does not work the same as an opposition. In a re-examination, anyone can present reasons and evidence to the USPTO to challenge the validity of a granted patent. However, it is then the patent holder who engages in a discussion with the USPTO examiner to establish the validity of the reasons. The challenger is not a part of these proceedings.

Inventive step: The two most important requirements in European patent law are that, to be patentable, an invention must be novel and involve an inventive step (Article 52 EPC). This is comparable to the US requirement that the invention must be novel and must not be obvious (35 US Code sections 102 and 103). In fact, the Patent Cooperation Treaty,whichstreamlinesthefilingprocessinitsmembercountry,alsorequiresthataninventionbenovelandinvolveaninventivestep,butstatesthatbeingnon-obviousissufficienttoinvolveaninventivestep.

However, the EPO has a more strict interpretation of this term. A European patent application involves an inventive step if it solves a technical problem in a non-obvious way. Note that this introduces two extra requirements: it must solve a problem (no problem solved means no inventive step), and that problem must be technical (solving economic problems means no inventive step).

To determine the technical problem, one operates as follows. First, a determination is made whether the invention is novel. If it is; then the prior art document that shares the most features with the invention (or most closely resembles the invention in some other way) is chosen as the closest prior art. The differences are then compared to determine a problem that is solved by the invention.

Forexample,iftheinventionrelatestoabikewithareflector,andtheclosestpriorartisabikewithnolightsatall, the technical problem is to enhance the visibility of the driver during dark weather conditions. This problem issolvedbyaddingareflectortothebike,sincethereflectorallowsotherroadparticipantstoseethedriveronhisbikeinthedarkduetothelightreflectingonit.

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The next question is whether the solution would be obvious when solving the technical problem. In the above example, the common solution for cars, airplanes and other objects like signal towers would be to add a headlight to signal the presence of the object. Following the common approach, a skilled person would add a headlight to the bike. This would make the solution non-obvious, so that the invention involves an inventive step. It should perhaps be pointed out that ‘skilled person’ and ‘obvious’ do not mean the same in patent law as they do in real life.

Of particular importance is that the technical problem is not determined with hindsight. Often, when confronted with an invention, the immediate reaction is that it is obvious, because the solution appears so natural. This would notdojusticetotheeffortneededtoarriveattheinvention.Ifeveryonewassatisfiedwiththesuboptimalsolution(e.g. a bike with a headlight, which requires a dynamo that must be charged by human effort), then the insight that a different approach might be better, could very well constitute an invention.

Two-part claims: European patents and applications typically (virtually always) contain so-called two-part claims. That is, a claim lists some features, then contains thephrase “characterised in that”or “with an improvementcomprising”, and then one or more further features. Those latter features are what constitutes the invention (and so are often called the characterising features). The former features are found in the prior art.

Ifanapplicationisfilledwithone-partclaims,thefirstthingthatwillhappenisthattheExamineridentifiestheclosestprior art (the document that shares the most features with the invention, or most closely resembles the invention in some other way) and requests that the claim be delimited there from.

In contrast, US patent applications (and patents) will almost always have one-part claims. If you see a two-part claiminaUSpatent,chancesarethepatentisownedbyaEuropeanfirm.IntheUS,ifyouusetwo-partclaims(alsocalled“Jepsonclaims”,afterthefirstpatentattorneytousethem),anythingbeforethecharacterisingportionisregardedtobepriorartbydefinition.Iftheapplicantbyaccidentputanovelfeatureinthepre-characterisingportion, it’s regarded as prior art and may damage the patentability.

In Europe, if the applicant puts a feature in the pre-characterising portion of a claim which does not, in fact, occur in the closest prior art, he is simply asked to move that feature to the characterising portion. This happens frequently, as often the applicant starts out with a document he found himself as closest prior art, but during the examination another document is regarded as closer prior art, and then the claim needs to be adjusted. However, this does not affect the patentability directly.

7.4 Japanese Patent SystemIn Japan, patent rights are protected by the Patent Act of 1959, which has been frequently amended. Japanese patent law,firstcodifiedin1895,waspatternedaftertheGerman[Prussian]CodeofCivilProcedure,butborrowedaspectsfrom the French Civil Procedure. Although judicial precedent is considered, statutory law prevails. Administrative guidanceanddiscretioninfluencedecisions.

TheJapanesePatentOffice(JPO)administerstheexaminationandgrantingofpatentrightsinJapan.TheJPOisan agency of the Ministry of International Trade and Industry (MITI) and is under the direct supervision of both MITI’s Machinery and Information Industries and Trade Policy Bureaus. The Patent Commissioner is a senior, careerMITIofficialappointedbytheMITIMinister.Afteratwo-tothree-yeartermheusuallyretirestoapositionasanadvisertoprivateindustry.TablebrieflyoutlinesthecomparisonbetweenpatentspecificationstobedraftedforfilingaJapanesepatentvis-à-visotherInternationalpatentdocumentsdiscussedabove.

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7.4.1 Comparison of Japanese Patent Systems with US Patent SystemWhen comparing the Japanese patent system with that in the United. States, you are faced with systems shaped by fundamentally different purposes. Although Japanese patent laws resemble both those in Europe and the United States, Japan interprets and uses its patent regime distinctively. Japan measures its rewards for invention in terms ofsocialratherthanindividualbenefits.

In the United States, the patent system exists to provide an incentive for innovation by rewarding an inventor with the right to exclude others from practicing his or her invention. That reward is made in exchange for a full, complete, and enabling disclosure of the invention to the public. In contrast, the Japanese system is more focused on the goal of promoting Japanese industry and technology development by disseminating patent information. The currentsystemencouragescorporatestrategiesthatpromoteextensivefilings,cross-licensing,andstrategicfilings.Public disclosure and long patent pendency can be used as a tool to dilute or prevent any reward to the inventor. Table summarises the major differences between the different patent systems.

ComparisonofPatentSpecificationsforJapan,PCT,USA,andEPC

Japan PCT USA EPC

(1) Title of the Invention(2) Claim(s)(3) Description of the

Invention a) Field of Industrial

Applicationb) Prior Art c) Problems to be

Solved by the Invention

d) Means to Solve the Problems

e) Work or Operation of the Invention

f) Working Examplesg) Effects of the

Invention(4) Brief Explanation of

the Drawing (if any)(5) Abstract

(1) Title of the Invention(2) Technical Field(3) Background Art(4) Disclosure of the

Invention(5) Brief Description of

Drawings(6) Best mode for

Carrying out the Invention

(7) Industrial Applicability

(8) Claim(s)(9) Abstract

(1) Title of the Invention(2) Cross-References

toRelated Applications (if any)

(3) Reference to a“MicroficheAppendix” (if any)

(4) Background of the Inventiona) Field of the

Inventionb) Description of the

Prior Art(5) Brief Summary of the Invention(6) Brief Description of

the Drawings(7) Detailed Description(8) Claim or Claims(9) Abstract of the

Disclosure

(1) Title of the Invention(2) Technical relief to

which the Invention Belongs

(3) Related background Art

(4) Disclosure of the Invention

(5) Brief Description of the Drawings

(6) Description of Special Embodiment

(7) Industrial Applicability

(8) Claim(s)(9) Abstract

Table7.1ComparisonofpatentspecificationsforJapan,PCT,USA,andEPC(Source: http://egyankosh.ac.in/bitstream/123456789/837/1/UNIT%205.pdf)

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Major differences between the U.S., Japanese, and European Patent Systems

Patent systems features United States(US PTO) Japan (JPO) Europe (EPO)

Patents granted on the basisoffirst-to-file?

Filing permitted in any language?

Are patent applications published?

Can patent examination be deferred?

Patent term

Grace period (amount of timeinventorshavetofilepatent applications after their inventions have been made public)

Pre-grant opposition?

Compulsory licensing

Legal systems

Patent commissioners

Patent documents

No

Yes

No, kept secret until patent is granted

No

20yearsfromfilingforapplicationfiledafterJune 8, 1995.

1 year with no restrictions on disclosure by inventor

No

Only for national security

Common law

Political appointee

Public good

Yes

Not

Yes, 18 months after filingprioritydate

Yes, for 7 years after filingI

15 years from date of publication for purposes of opposition, but not more than 20 years from fillingI.

6 months with restricted disclosure permitted.

Yes

Yes

Civil

Professional bureaucrat

Copyright

Yes

No, but accepts English, French,German, or anyofficiallanguageof member state of European Patent Convention

Yes, 18 months after fillingprioritydate

Yes, 6 months after 18 month publication

20yearsfromfiling

6 months with restricted disclosure permitted.

No

Laws of member states control

Civil/UK common law

Professional bureaucrat

Varies

Table 7.2 Major differences between the U.S., Japanese, and European patent systems(Source: http://egyankosh.ac.in/bitstream/123456789/837/1/UNIT%205.pdf)

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SummaryThe patent rights granted under an Indian Patent Act extend only throughout the territory of India and are not •enforceable in another country. However, businesses and inventors often discover that their intellectual property may be valuable in foreign •markets as well as in IndiaPriortoGATT,apatentcouldbedefinedasagrantbytheUnitedStatesgovernmentgivingthepatentowner•therightforaspecifiedperiodoftimetoexcludeothersfrommaking,usingorsellinganinventionwithintheUnited States, its territories, and possessions. The European Patent Convention (EPC) or Convention on the Grant of European Patents of October 5, 1973 is •a legal text instituting the European Patent Organisation and the system according to which European patents are granted. In Japan, patent rights are protected by the Patent Act of 1959, which has been frequently amended. •Japanesepatentlaw,firstcodifiedin1895,waspatternedaftertheGerman[Prussian]CodeofCivilProcedure,•but borrowed aspects from the French Civil Procedure. Although judicial precedent is considered, statutory law prevails.Administrativeguidanceanddiscretioninfluencedecisions.

ReferencesOverview of the US, European, and Japanese Patent Systems• . [pdf] Available at: <http://egyankosh.ac.in/bitstream/123456789/837/1/UNIT%205.pdf> [Accessed 17 July 2012].Japan Patent attorneys association• . [Online] Available at: <http://www.jpaa.or.jp/english/patent/unique_jpo_practices.html> [Accessed 17 July 2012].Lemley, M., • Patent Law with Prof. Mark Lemley Part 2. [Video Online]. Available at: <http://www.youtube.com/watch?v=osxhplB2FMY> [Accessed 17 July 2012].Patent Law and Policy• , [Video Online]. Available at: <http://www.youtube.com/watch?v=mPWx14aGE6o&feature=related> [Accessed 17 July 2012].Luginbuehl, S. 2011. • European Patent Law: Towards a Uniform Interpretation. Edward Elgar Publishing.Kawaguchi, H. 2007.• The essentials of Japanese patent law: cases and practice. Kluwer Law International.

Recommended ReadingAdelman, M. J., Rader, R. R. & Klancnik, G. 2007. • Patent Law in a Nutshell. 1st ed., Thomson West.Ruth Taplin, R., 2004. • Valuing Intellectual Property in Japan, Britain and the United States. Routledge. Kawaguchi, H., 2006. • The Essentials of Japanese Patent Law: Cases and Practice. Kluwer Law International.

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Self AssessmentStrong patent rights can ensure _________of inter-dependent technologies, secure access to new product or 1. geographic markets, and attract favourable funding from investors.

re-licensinga. cross licensingb. no licensingc. pre-licensingd.

What must the inventor consider when pursuing even a clearly patentable invention?2. Expensea. Profitb. Logicc. Satisfactiond.

Which is a type of patent that the general public is most familiar with; it covers any new, useful, and unobvious 3. process, machine, article of manufacture, composition of matter, or any new, useful, and unobvious improvement thereof.

Public patenta. Confidentialpatentb. Commercial patentc. Utility patentd.

_________ protects any distinct and new variety of plant (other than those which are tuber propagated or a plant 4. found in an uncultivated state) which has been asexually reproduced.

Biology patenta. Soil patentb. Plant patentc. Geographical Indicatord.

_____________ is a type of patent covers any new (original) and ornamental design for an article of 5. manufacture.

Design Patenta. Industrial Patentb. Commercial Patentc. Utility Patentd.

Which of the following statements is true? 6. The patent rights granted under an International Patent Act extend only throughout the territory of India and a. are not enforceable in another country.The patent rights granted under an Indian Patent Act extend through any country.b. The patent rights granted under an Indian Patent Act extend only throughout the territory of Asia and are c. not enforceable in another countryThe patent rights granted under an Indian Patent Act extend only throughout the territory of India and are d. not enforceable in another country

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If there is a two-part claim in a US patent, chances are the patent is owned by a _____________7. Africanfirma. Europeanfirm.b. Asianfirmc. Britishfirmd.

In two-part claims patents, the latter features are what constitutes the_________; the former features are found 8. in the prior art.

rulesa. introductionb. inventionc. applicationd.

The two most important requirements in __________are that, to be patentable, an invention must be novel and 9. involve an inventive step.

European patent lawa. Asian patent lawb. British patent lawc. U.S. patent lawd.

_____________ requires the inventor to include the best way to practice the invention in the patent 10. application.

European patent lawa. US patent lawb. Indian patent lawc. Japanese patent lawd.

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Chapter VIII

Role of Patents in Promoting Invention, Innovation and Technology Development

Aim

The aim of this chapter is to:

elucidate the patent process•

explain the dependence of economic growth on R&D investment•

elucidate new technologies and patents•

Objectives

The objectives of this chapter are to:

explain the patent process•

explicate computer software protection and patent•

elucidate biotechnology and patents•

Learning outcome

At the end of this chapter, you will be able to:

understand biotechnology and patents•

describe the role of patent as an instrument of rights and privileges•

understand how the patent are a mine of information on technology and industry•

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8.1 IntroductionJoseph A. Schumpeter in 1911 announced a theory which placed innovation and entrepreneurship, at the heart of economic development. He saw invention by itself as economically irrelevant, unless some entrepreneur, driven by profitmotive,couldtransformitintoaninnovationwhichyieldedeconomicbenefit.Healsorealisedthateconomiesgrow through a process of ‘creative destruction’ in which new innovations replace earlier, inferior technologies to give better products and increased productivity. In 1950s Robert Solow suggested that technological progress was the key factor in the growth of an economy (labour and capital being the other two factors, besides technology to lead to economic output). His studies suggested that growth in labour and capital could account for only 50% of the growth of GDP of the USA from 1909 to 1949, and the remaining 50% (the Solow residual) of the growth should be attributed to technological progress. Later, Edward Denison concluded that 40% of the increase in the income per capita in the USA from 1929 to 1957 was the result of advance in knowledge. The advance of knowledge since the studies of Solow and Denison has proceeded at a much faster pace. The contribution of technology progress to economic growth today has to be much larger. In fact, today’s economy, particularly in developed countries, is knownasknowledgeeconomy,dependingheavilyonadvancesinscienceandtechnologyinallfieldsofhumanendeavour.Andtheadvancesinscienceandtechnologyaregreatlyinfluencedbytherecognitionofintellectualproperty rights, particularly related to inventions i.e. patents.

8.2JustificationforPatentsEconomicGrowth,R&DInvestment,ProfitMotive,RegulatoryEnvironmentPost 1980, technological progress as the key factor in economic growth gets increased attention; the role of government policy in influencing technologyprogressalsocomesunderfocus.PaulM.Romerrecognisedaccumulationofknowledge as the driving force behind economic growth, as also the role of enhanced human capital through education andtrainingintheincreaseofpercapitaincome.Henotedthatprofitmotiveintheindustryledtotechnologicalprogress, which resulted in products with special technical features that could be patented and that were for public good.

Romer’s prescription for economic growth was: (a) invest in research as against in accumulation of capital; (b) invest in human resources to augment the level of human capital. Grossman and Helpman, studying a large number of industriesconfirmedthatindustriesinvestinnewtechnologydrivenbyprofitmotive.Amoreinsightfulobservationcame from them: the institutional, legal and economic environments of a country, among other things, determine the profitabilityofinvestmentsintechnologywhichinturninfluencesthepaceanddirectionoftechnologicalchange.

8.3 Intellectual Property in Knowledge EconomyThe last quarter of the twentieth century saw a veritable knowledge revolution simultaneously in several areas specially,informationandcommunication,artificialintelligence,digitaltechnology,e-commerce,biotechnology,medicine, advanced materials, space engineering, etc. Science and technology got so thoroughly intertwined with economy and commerce that intellectual property could no more be kept separate from international trade law.

Though it is not possible to demonstrate the economic impact of intellectual property protection directly because it is not easy to isolate it from a number of other factors, there are several indirect indicators to suggest that IP protectionimpactstheflowofForeignDirectInvestment(FDI)intoacountry.FDIiscloselylinkedtotheinflowoftechnology,andinvestmentinprojectsofsocio-economicdevelopment.LowIPprotectiondiscouragesflowoftechnology and skilled manpower and works against the faster development of industry. There is reason to believe that IP protection enhances the quality of human capital and the rate and direction of technological change.

The justification for patents started as the need to reward and encourage inventive activity, and safeguard theeconomic interest of inventor, who invests considerable amount of knowledge, skill, labour and capital in coming up with an invention that could be used for production of economic value. This reward to the creative inventor and protection of his interest against commercial exploitation of his invention by another person through copying was considered necessary to ensure that such inventive activity in society is increased and that inventions are brought into the production system. This way the economy grows increasing social welfare and prosperity of the people. In the knowledge economy today, there has been a subtle shift in the perception about patents: they are seen not only as

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an instrument for the encouragement of inventive creativity and protecting interests of the inventor, but even more as an instrument of economic policy. Patents as strategic tool for economic growth perform four functions:

They facilitate technology transfer and FDI;•They stimulate R&D in the universities and research centres;•They serve as catalyst of new technologies and new businesses; and•They empower businesses, particularly small and medium enterprises (SMEs) with regard to IP asset •accumulation, management and use.

The patent system tries to ensure an equitable balance between the interests of the inventor and the interests of the society through various devices. Patent gives the inventor monopoly rights over exploitation of his invention. If the patented invention is a product, the inventor gets an exclusive right to prevent any person, unauthorised by him, from making, using, selling or importing the product. If the invention is a process, the owner’s right prevents any unauthorised person from using, selling or importing that process.

However,suchexclusiverightscomeataprice.Theinventorisobligedtodisclosehisinventioninsufficientdetailand in such a manner that a person skilled in the art can use the invention. The term of the right is also restricted to a few years; generally 20, at the end of which the invention passes off into the public domain.

Besides detailed disclosure and limitation on the term, there are other provisions which are permitted to be incorporated in the national patent laws to ensure that the rights conferred by a patent are not misused or abused. Such measures include provisions for compulsory licensing, use of patents for government purposes, even revocation of license under certain circumstances, besides the overriding primacy of preservation of life, environment, peace, or morality while granting any patent.

We shall now see how a patent system helps in promoting technology development, which presupposes increased technologicalinventionsasaresultofflourishingR&Dactivity,andtransformationofinventionsintoinnovations.Technologydevelopmentisalsoconsiderablyaidedbytheinflowandacquisitionofforeigntechnologyfacilitatedby an adequate IP protection regime.

Thefinalobjectiveofapatentsystemistoencouragecreativityandinventivenessinthepeopleandharnessitsproduct for generating wealth and public good. Patents impact inventive and innovative activity in two very distinct ways:

as an instrument of rights and privileges;•as a mine of technological information•

8.4 Patents as an Instrument of Rights and PrivilegesPatent rights are territorial in nature and governed by the domestic patent laws. It means that a patent right holder in the US has rights only in the US territories. For securing the same rights, one needs to redo the patent rights securing process in each country of the business interest from the prospective of commercialisation of the invention

8.4.1 Proprietary Rights and PrivilegesThe immediate effect of the grant of a patent for an invention is that the inventor is effectively shielded from the heat of market competition if he wants to commercially exploit his invention, for the term of the patent. He gets time and opportunity to recover his costs in terms of money, time, knowledge and skill invested to come up with theinvention,asalsotomakeaneatprofitthroughlicensefeesandroyalties.Ifhealsoturnsaproducerhimself,asmaybedictatedbybusinessacumen,hecanearnprofitsondirectsalesofproducts.Hecanalsocombinelicensingwithdirectproduction.TheprofitenablesfurtherinvestmenttobemadeinR&Dactivityleadingtomoreinventions,and innovations and further expansion of business. This becomes a self-fuelling process under the benign umbrella of the patent system. Of course, the promise of the patent can be realised only if the invention, due to its improved featuresortotalnovelty,ortechnicalefficiency,capturesthefancyofthemarket.Thepatentonlyhelpstokeepthecompetition at bay for a limited period; it does not assure consumer acceptance. The consistent emphasis on R&D

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that the self- propelling inventive cycle generates leads to augmentation of human capital through education and training; it further adds to higher levels of technological inventions.

Inventions

Commercial exploitation (Profits)

R&D Innovation

Fig.8.1Inventions-innovation-profits-R&D-invention:Avirtuouscycle(Source: http://egyankosh.ac.in/bitstream/123456789/822/4/FINAL%20UNIT5.pdf)

The success of one inventor may often have an inspirational effect on others, whose creativity and ingenuity is channelled into new inventions.

Itwillbenotedthattheforegoingdiscussionisbasedontheassumptionthatprofitmotiveisanecessaryandsufficientreason for creative people to exert themselves to create new inventions and that they may not want to undertake suchactivityifthereisnofinancialincentive.Thoughtherecouldbesomedifficultyinsuchaproposition,therecan be no doubt that protection granted by a patent is a very welcome and much-needed relief to inventors, in the absence of which the chances of an invention moving on to the stage of production and then, reasonably, succeeding in the market would greatly suffer.

The spectacular rise and performance of the Japanese industry offer irrefutable proof that patent sustains the cycle from R&D to economic growth, passing through the following stages:

R&D Invention

Profit

New Product

Patenting

Commercial exploitation

Investment

Fig.8.2Japaneseinventions-innovation-profits-R&D-invention(Source: http://egyankosh.ac.in/bitstream/123456789/822/4/FINAL%20UNIT5.pdf)

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TowardstheendoftheNineteenthcenturytherewasasignificantgapintheloomindustryofJapanandtheEurope.Efforts of the Japanese entrepreneurs, including S.Toyota, over the years to catch up with the European industry failed. In the early twentieth century Toyota invented an automatic loom improving upon the European loom. The companyobtainedanumberofpatents‘tocomplementandfinetunetheinvention’andpassedontheexclusiverightto manufacture and sell the automatic loom in any country other than Japan, China and the USA to Platt Brothers & Co. For a sum of £1,00,000, which it invested for further R&D and set up an automobile company.

The role of patents as an incentive for R&D leading to invention needs to be considered in the context of changing nature of R&D endeavour. It may be recalled that research today is a highly systematised and organised venture requiringaveryhighdegreeofscientificandtechnicalknowledgeandsophisticationanditisoftenagroupeffort.The requirement of funds for R&D may often be enormous. Such R&D can be appropriately taken up at a large corporatescalewherepatentsmaynotalwaysbeverymaterialininfluencingdecisionsoninvestmentinR&D.In fact in the case of some outstanding inventions, a company may have sound business reasons for not taking a patent and making the most of the invention by keeping it secret. A patent after all involves complete disclosure and protects IP inventions for a limited period alone. However, it is true that despite the presence of large MNCs and theirsterlingcontributiontoscientificandtechnologicalprogressofmankind,adisproportionatelylargenumberofimportant inventions still come from small and medium enterprises and individual inventors, and for them patents exerciseadecisiveandbeneficialinfluence.

8.4.2 Patent Applications as Gold Mine of InformationPatent applications contain a wealth of information which can be put to several strategic uses. Reading them with care can serve many purposes. One has to go to patent applications to ensure that one will not be infringing any existing patent by a proposed activity. An intelligent reading of patent applications can tell what areas of research are being actively pursued by what groups, and where does the frontier of research in an area lie. Patent information can help in monitoring global technological changes and shift in emphasis on research areas, emergence of new areas and fading of interest in certain areas, which in turn can help one to forecast technological developments and industry cycles. This exercise can equip the organisation to re- order and reorient its R&D priorities and programmes.

Information contained in patent applications can be advantageously used to identify a technology one would like to import, after a comparative evaluation of similar technologies, or identify a business partner one would like to forgelinkswith,oridentifyaninstitutionorfirmwhereonecanfindausefulclientforitsowntechnologiesandproducts or identify a partner to take up collaborative R&D.

Patent search is required not only for determining novelty (prior art), but for going through claims in patent application so that one’s own claims can be drafted intelligently, comprehensively and with care, not only to eliminate possibilities of infringement of any patent but to ensure that one’s own claims cover as wide a ground as can be sustained by the invention.Theapplicationscontainalotofdatathatthrowlightonthetechnologyactivitynotonlywithinspecificcompanies but within industry sectors and within countries. These can be invaluable tools for corporate planning and devising industrial policy. They are helpful for a variety of purposes, e.g., monitoring technological progress and direction of technological effort and making industry forecasts including market demand which help in arriving at investment and policy decisions.

IP Australia’s advice neatly sums up what patent information can do for researchers and businesses: It prevents one from wasting time and resources in reinventing the wheel.•It informs one of the technology available for licensing and also of technologies that are freely available in the •public domain, either because their patents have expired, or they were never patented in the country.It is a good source of information on the research activities of a company for its competitors. Technical information •ofnewprocessesandproductsispublishedinpatentspecificationmuchbeforetheyappearonthemarket.Itisasureindicatoroftheemergingtreadsintechnologyandemergingnewplayersinafield.•And of course, it can save one from infringing patents and incurring heavy legal costs and penalties.•

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8.5 New Technologies and PatentsOverthelastthreedecadesthetechnologyhasadvancedwithoverwhelmingrapidityandseveralnewfieldsoftechnological endeavour have emerged; computers, electronics, digital technology, biotechnology, genomics, nanotechnology, high performance materials, robotics, etc. Not all the advances could be accommodated within the old concepts and framework of intellectual property. New technologies also brought with them new questions, newdilemmasandtheIPsystemhadtorespondwithneededdynamismandflexibility.

We shall consider two of the newer technology sectors, namely, computer technology and biotechnology in some detail as their impact on the concepts and the policy of intellectual property has been the greatest and of a fundamental nature. Questions about the extent of patent protection or even whether there should be protection at all for certain inventions started emerging. They necessitated introduction of new instruments of protection of intellectual property, and expanded or circumscribed scopes of protection offered by existing instruments of IP. A primary concern in grappling with the emerging situation has always been that IP policy must aid and not hinder a pioneering industry which by nature involves risks.

8.5.1 Computer Software Protection and PatentLife today is not imaginable without computers, while patent could take care of inventions in hardware – chips in computersandothermicroprocessorbasedelectronicproductsposedlittledifficultyinIPprotection.Acomplexityarises in cases where an apparatus is inalienably dependent upon the software to perform its functions. The focus of research in computer industry today lies in the software domain. Thus, in a few countries the computer hardware and software are protected both by the patent law and the copyright law, and which law will apply in any particular case depends on the nature of the IP at hand.

Article27.1oftheTRIPSAgreementrequiresthatpatentsbeavailableinallfieldsoftechnology,providedthattheyare new, involve an inventive step and are capable of industrial application, subject to certain limited exceptions. This broad requirement of patentability has prompted a discussion of the subject of where to draw the line between copyright and patent protection for computer programs.

In a number of countries, software-related inventions are patentable subject matter if they have a technical character or involve technical teaching, i.e., an instruction addressed to a person skilled in the art on how to solve a particular technical problem using particular technical means. In other words, software-related inventions should have a technical effect. Provided that the software produces a technical effect, it is then necessary to examine whether the conditionsofpatentabilityarefulfilled.

8.5.2 Biotechnology and PatentsAdvancesinthefieldofbio-sciencesandbiotechnologyseemsettogivetheworlditsnextmajorindustrialwaveaftercomputer. Biotechnology harnesses biological processes in living systems. Advances in human genome sequencing andanimalandplantgeneticsprojectaninfinitepotentialforbiotechnologyindiscoveryofnewdrugs,treatmentofdiseasesanddisabilities,asalsoinagricultureanddevelopmentoffoodproducts.Anewfieldofprotonomics,which deals with the relationship of genomes and proteins, is emerging, with great promise; it requires use of supercomputers. Sophisticated techniques like recombinant DNA, cell fusion and embryonic manipulation are regularly employed as research tools in biotechnology.

The point of interest for us is that besides a high degree of knowledge and skills, biotechnological research is highly capital intensive. To attract private investment in biotechnological research, as indeed for all other research requiring large investment Innovation and Technology Development of capital, protection for IP becomes an absolute necessity. What applies to genomics applies with a greater degree of relevance to protomic research, which being highly knowledge and capital intensive, can be taken up by only a limited number of companies/organisations. The role of IP becomes critical in such situation. Because the task of reconciling the commercial interest of entrepreneur’s and investorswiththelargerpublicinterestbecomesmoredifficult,becausestakesareverylarge,involvingnotonlyeconomic growth but also the human health and longevity, food and nutrition, and the development of science and technology themselves.

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Encouraging invention in agriculture through protecting it as intellectual property offers hope to overcome problems of food shortage and malnutrition which have so persistently plagued the developing countries. The agricultural R&D in developing countries is largely done through public funding. The effort needs to be supplemented by privately funded R&D in view of pressing urgency. In developed countries, such R&D is largely done in private sector. To attract technology from private sector patent protection is a proven way.

8.5.3 Patent and Technology DevelopmentThis is a most important issue, for developing countries in particular. There is a great asymmetry in R&D effort between the developed and the developing countries. Presently developed countries account for 96% of the global expenditure on R&D. In developing countries, R&D is mainly funded by government or agencies of the government, and most of the research is carried out at the publicly funded universities or research institutions.

An often felt lacuna in a system where R&D is largely funded by public sector is that research results remain at the bench-scale, and are not taken through up-scaling to a level where they could be brought into the production system and generate wealth for the national economy. As the vital lap from invention to innovation requires much larger funds than were required for the R&D for the invention, the research institution/university needs involvement of a commercial partner, who is usually to be a private party. For this to happen it is necessary to forge an alliance between the researchers in the university system and the public-funded laboratories on the one hand, and the industry on the other. This relationship should be facilitated by the government policy for indigenous technology development as an essential component for the growth of the national economy.

Thefirststepinthetransferofanewlydevelopedtechnologyfromthelaboratorytotheindustryisthattheresearchersand the research institution must have a motivation to do so, and the entrepreneur must have a minimal assurance that there is a reasonable chance that the technology, though as yet commercially unproven, will be successful in commercial production. Both these objectives are met by encouraging research institutions to seek patents for their invention and permit them to license the patents to private parties. A patented technology yields monetary returns on investment in research, and carries greater assurance for the licensee. The returns from licensing fee, royalty and possibly consultancy & collaboration fee for getting involved in development work can be invested in part for taking up further R&D projects, and in part for giving incentives to the research-team. If universities and research institutions are encouraged to patent their inventions and keep to themselves the returns from licensing the patents, it gives a powerful incentive to these institutions to take the research to its logical conclusion. As the entrepreneur has personal stakes and interest in the technology, even if embryonic, the developmental effort is much sincere and serious. As a result the virtuous invention cycle gets strengthened and accelerated.

Thefirstlicenseeofanewlydevelopedtechnologyfromauniversityoraresearchinstitutehastoinvesthugesumsto adapt and develop it for commercial production. This investment may be of the order of 50 to 100 times the cost of the licensing fee. In view of this the licensee may ask for exclusive right over the technology to commercialise the invention, as otherwise other licensees will come in competition with him without having invested anything on the ‘development’ work, and would thus get an unfair advantage.

Ifthefirstlicenseedoesnothaveanexclusivelicense,hemayalsofeeldeterredfrommakinganyimprovementand adaptation of the technology for fear of infringement of the patent and thus being on the wrong side of the law. This would hurt the interest of the licensing institution, as the half-baked technology will have little appeal and continue to fetch low license fee. It will also be harmful for the economy as the technology will be denied a chance to be optimised and fully developed for production.

However, there would be cases where non-exclusive licensing might be a better option to ensure wider dissemination of technology. This will happen in cases where there is little need for development and a standard technology is on offer. Thus there can be no uniform prescription for licensing. The issue has to be decided depending on the nature of technology and the overall good of all parties including the public. In the case of a fundamental technology with public and academic interests, a voluntary, non-exclusive licensing may be desirable.

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8.6 Licensing ExpertiseFor effective technology transfer from lab-to-industry it is necessary that the research institutes and universities have technology licensing expertise. Presently, it is generally lacking in most developing countries. Universities, specially,finditdifficult.

What does licensing expertise involve? Essentially there are three components of it; knowledge of IP laws; knowledge of technology and its industrial potential; skills to negotiate. Though an external licensing agent can be an option, it is better to develop licensing skills in-house. Some of the staff members can be specially trained in, or through, an outside agency. Such training canbeorganisedwiththehelpofnationalIPoffice,technologytransferagencies,IPattorneys,LawInstitutesandother relevant institutions. International agencies like WIPO can be approached for assistance and help. As technology generationactivitybecomessignificantinauniversity,itcanestablishadedicatedofficefortechnologylicensing.

The USA passed the Bayh-Dole Act in 1980 to deal with the commercialisation of federally-funded inventions. The Act allowsuniversities,non-profitcorporationsandsmallbusinessestopatentandcommercialisetheirfederallyfundedinventions, and allows federal agencies to license their technologies to provide more incentives to businesses.

Japan adopted a different model – a consortium approach to take up publicly-funded national projects. Several consortiaofgovernmentinstitutesandprivatefirmsweresetupin1970sand80’s.Publicfundinggraduallydriedup,leavingbasicresearchresultsunutilised.TheJapaneseGovernmentthenpassedaTechnologyLicensingOfficeLaw in 1998. Under it, a TLO could be set up subject to certain conditions to help technology transfer contracts betweenuniversitiesandprivatefirms.ThegovernmentwouldgivefinancialassistancetotheTLOtohelpwithitsadministrativecosts.ATLOdoesnothavetopaytheapplicationfeewhilefilingapatent.Universitiesareencouragedto devise general IP regulations with regard to their inventions to encourage invention. The TLO mechanism comes handy to the industry in identifying inventions that they need and then in contacting universities through TLO.

AnoteworthyinitiativehascomefromIndonesia.SpecialofficesformanagementofIParebeingsetupatUniversitiesand research centres all over the country.

The UK had, as early as 1948, established the National Research Development Corporation (NRDC) to facilitate commercialisation of inventions from publicly funded research through patent licensing. In 1981, it was privatised andconvertedintotheBritishTechnologyGroup(BTG)withexpandedscopeandgreaterflexibility.

InIndiaCouncilofScientificandResearchhasafull-fledgedIntellectualPropertyManagementDivisionattheCentral level; in addition to it every constituent laboratory has its own unit for business development and technology transfer. The National Research Development Corporation in the public sector is available to about 1200 research laboratories of the public sector, besides several private research laboratories, to help them in technology development, and technology transfer nationally and internationally.

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Summary Economic growth depends on infusion of technology in economic system; technology infusion depends on •investmentinR&D;investmentonR&Disdrivenbyprofitmotive;profitabilityofinvestmentdependsonregulatory environment, including legal protection to IP.Patents are now seen as an instrument of economic policy. They reconcile private interests of inventors and •entrepreneurs with larger public interests to encourage inventive creativity in society and bring inventions into production systems.Patent applications contain a wealth of information on technology and business. It helps researcher to avoid •wasteful, duplicative research, informs him about research activities in other relevant groups and of emerging trends and technologies; it can caution about infringing a patent, etc. The industry and business data, they contain can be used for industry forecasts including marketing demand, •and for making investment and policy decisions.Patents have given a boost to the development of new technologies, e.g. biotechnology. The scope of patents, •and the domain of IP itself, has been enlarged by new technologies.Patents have been a very effective tool in taking inventions, funded by public resources in universities and •research centres, to commercially viable innovation stage through the involvement of private parties.

ReferencesRole of Patents in Promoting Invention, Innovation and Technology Development• [pdf] Available at: < http://egyankosh.ac.in/bitstream/123456789/822/4/FINAL%20UNIT5.pdf> [Accessed 7 July 2012].Learn From the Past, Create the Future: Inventions and Patent• . [pdf] Available at: < http://www.wipo.int/freepublications/en/patents/925/wipo_pub_925.pdf> [Accessed 7 July 2012].How To Patent An Invention?• [Video Online]. Available at: <http://www.youtube.com/watch?v=zv7EcZ6fT1k> [Accessed 7July 2012]Whatisan‘invention’:PatentsDefined?• , [Video Online] Available at: <http://www.dailymotion.com/video/xi0dza_what-is-an-invention-patents-defined_news>[Accessed7July2012].Suthersanen,U.,Dutfield,G.&Chow,K.B.,2007.• Innovation without Patents: Harnessing the Creative Spirit in a Diverse World. Edward Elgar Publishing.Bently, L. & Sherman, B., 2008. • Intellectual property law. Oxford University Press.

Recommended ReadingKey, S. 2011. • One Simple Idea: Turn Your Dreams into a Licensing Goldmine While Letting Others Do the Work. 1st ed., McGraw-Hill. Docie Sr., R. L., 2004. • The Inventor’s Bible, 3rd Edition: How to Market and License Your Brilliant Ideas. 3rd ed., Ten Speed Press. Gilbert Guide. 2004. • The Entrepreneur’s Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing. Berkley Trade.

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Self AssessmentEconomies grow through a process of _____________ in which new innovations replace earlier.1.

creative innovationa. creative destructionb. inventive constructionc. creative constructiond.

ThereareseveralindirectindicatorstosuggestthatIPprotectionimpactstheflowof_______________into2. a country.

Foreign Direct Investmenta. Internal revenueb. National currencyc. Indirect revenued.

What enhances the quality of human capital and the rate and direction of technological change?3. Inventiona. Knowledge sharingb. IP protectionc. IT lawsd.

Which of the following statements is true?4. TRIPS agreement is territorial in nature and governed by the domestic patent lawsa. Patent rights are non-territorial in nature and governed by the domestic patent lawsb. Patent rights are territorial in nature and governed by the International patent lawsc. Patent rights are territorial in nature and governed by the domestic patent lawsd.

Patents impact inventive and innovative activity in how many distinct ways?5. threea. twob. fivec. sixd.

Information contained in _________can be advantageously used to identify a technology one would like to 6. import, after a comparative evaluation of similar technologies.

IP lawsa. TRIPS agreementb. patent applicationsc. patent brochured.

___________oftheTRIPSAgreementrequiresthatpatentsbeavailableinallfieldsoftechnology,provided7. that they are new, involve an inventive step and are capable of industrial application, subject to certain limited exceptions.

Article 27.1a. Article 30b. Article 2c. Article 25d.

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The _________in the transfer of a newly developed technology from the laboratory to the industry is that the 8. researchers and the research institution must have a motivation to do so.

last stepa. second stepb. concluding stepc. firststepd.

Which country adopted a consortium approach to take up publicly-funded national projects?9. Indiaa. Japanb. Chinac. USAd.

The USA passed the _______________ in 1980 to deal with the commercialisation of federally-funded 10. inventions.

Robert Solow Acta. Edward Denison Actb. Bayh-Dole Actc. Joseph A. Schumpeter Actd.

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Case Study I

India-US Basmati Rice Dispute

The IssueInlate1997,anAmericancompanyRiceTecIncwasgrantedapatentbytheUSpatentofficetocallthearomaticricegrown outside India ‘Basmati’. RiceTec Inc had been trying to enter the international Basmati market with brands like ‘Kasmati’ and ‘Texmati’ described as Basmati-type rice with minimal success. However, with the Basmati patent rights, RiceTec will now be able to not only call its aromatic rice Basmati within the US, but also label it Basmati for its exports. This has grave repercussions for India and Pakistan because not only will India lose out on the 45,000 ton US import market, which forms 10 percent of the total Basmati exports, but also its position in crucial markets like the European Union, the United Kingdom, Middle East and West Asia. In addition, the patent on Basmati is believed to be a violation of the fundamental fact that the long grain aromatic rice grown only in Punjab, Haryana, andUttarPradeshiscalledBasmati.AccordingtosourcesfromtheIndianNewspaper,EconomicTimes,“PatentingBasmati in the US is like snatching away our history and culture.”

DescriptionBasmati rice means the “queen of fragrance or the perfumed one.” This type of rice has been grown in the foothills oftheHimalayasforthousandsofyears.Itsperfumy,nut-likeflavorandaromacanbeattributedtothefactthatthegrainisagedtodecreaseitsmoisturecontent.Basmati,long-grainedricewithafinetextureisthecostliestriceintheworld and has been favored by emperors and praised by poets for hundreds of years. According to the Agricultural and Processed Food Products Export Development Authority (APEDA), India is the second largest producer of rice after China, and grows over a tenth of the world’s wheat. In 1993, Basmati rice attracted the highest premium becauseitisvery-longgrainedrice,withanaromaofitsownwhichenhancestheflavorsitismixedwith.

The Rice PatentRiceTec Inc was issued the Patent number 5663484 on Basmati rice lines and grains on September 2, 1997.

Inabstract,“theinventionrelatestonovelricelinesandtoplantsandgrainsoftheselines.Theinventionalsorelatesto a novel means for determining the cooking and starch properties of rice grains and its use in identifying desirable ricelines.Specifically,oneaspectoftheinventionrelatestonovelricelineswhoseplantsaresemi-dwarfinstature,substantially photoperiod insensitive and high yielding, and produce rice grains having characteristics similar or superior to those of good quality Basmati rice. Another aspect of the invention relates to novel rice lines produced from novel rice lines. The invention provides a method for breeding these novel lines. A third aspect...relates to the findingthatthestarchindex(SI)ofaricegraincanpredictthegrain’scookingandstarchproperties,toamethodbasedthereonforidentifyinggrainsthatcanbecookedtothefirmnessoftraditionalBasmatiricepreparations,andto the use of this method in selecting desirable segregants in rice breeding programs.”

Importance of Rice on Indian and Pakistan EconomyRice is an important aspect of life in the Southeast and other parts of Asia. For centuries, it has been the cornerstone of their food and culture. During this period, farming communities throughout the region developed, nurtured, and conserved over a hundred thousand distinct varieties of rice to suit different tastes and needs. It is for this reason that patenting of Basmati by RiceTec Inc. is perceived as not only intellectual property and cultural theft, but it also directly threatens farm communities in Southeast Asia. According to Dr Vandana Shiva, director of a Delhi-based research foundation which monitors issues involving patents and biopiracy, the main aim for obtaining the patent by RiceTec Inc. is to fool the consumers in believing there is no difference between spurious Basmati and realBasmati.Moreover,sheclaims the“theft involved in theBasmatipatent is, therefore, threefold:a theftofcollective intellectual and biodiversity heritage on Indian farmers, a theft from Indian traders and exporters whose marketsarebeingstolenbyRiceTecInc.,andfinallyadeceptionofconsumerssinceRiceTecisusingastolennameBasmati for rice which are derived from Indian rice but not grown in India, and hence are not the same quality.”

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In fact, Basmati rice has been one of the fastest growing export items from India in recent years. In the year to March 1997, India exported more than half a million tons of Basmati to the Gulf, Saudi Arabia, Europe and the United States, a small part of its total rice exports, but high in value. More substantively, Indian farmers export $250 million in Basmati every year and U.S. is a target market. RiceTec Inc. had attempted to sell its long-grain rice in Europe under such brand names as ‘Texmati’ and ‘Kasmati’ but not as Basmati. However, if the patent is notrevoked,RiceTecInc.,cannowsellitsriceunderthebrandnameBasmatiwhichwilldefinitelycutintoIndia’sand Pakistan’s global market share, especially as the rice grown in the US could be sold cheaper than the Indian and Pakistani varieties.

The Government of India’s response to the PatentInanofficialrelease,thegovernmentofIndiareactedimmediatelyafterlearningoftheBasmatipatentissuedtoRiceTecInc.,statingthatitwouldapproachtheUSpatentofficeandurgethemtore-examinethepatenttoaUnitedStatesfirmtogrowandsellriceundertheBasmatibrandnameinordertoprotectIndia’sinterests,particularlythose of growers and exporters. Furthermore, a high level inter-ministerial group comprising of representatives of theministriesanddepartmentsofcommerce,industry,externalaffairs,Councilforscientificandindustrialresearch(CSIR), Agriculture, Bio-technology, All India Rice Exporters Association (AIREA), APEDA, and Indian Council of Agricultural Research (ICAR) were mobilized to begin an in-depth examination of the case. The contents and implications of the patent are currently being analyzed in consultation with patent attorneys and agricultural scientists. The government of India is particularly concerned about the patenting of Basmati because of an earlier case where the US granted a patent to two Indian-born scientists on the use of Turmeric as a wound healing agent. This case worked in favor of India because the patent was subsequently revoked after scientists of (CSIR) successfully challenged the patenting on the ground that the healing properties of Turmeric had been ‘common knowledge’ in India for centuries. There is a clause in US patent laws that will accept any information already available in published or written form anywhere in the world as ‘common knowledge’. As a result, India was able to furnish published evidence to support their case that the healing characteristic of Turmeric is not a new invention and as such cannot be patented. Inthepresenceofwidespreaduprisingamongfarmersandexporters,thenationofIndiaasawholefeelconfidentof being able to successfully challenge the Basmati patent by RiceTec Inc. According to the Economic Times of India,thelawfirmofSagarandSuriwhowontheTurmericpatentcaseandpresentlyrepresentingthegovernmentagainstRiceTecInc.inexistingcases,said;“RiceTechasgotapatentforthreethings:growingriceplantswithcertain characteristics identical to Basmati, the grain produced by such plants, and the method of selecting the rice plant based on a starch index (SI) test devised by RiceTec Inc.” The lawyers plan to challenge this patent on the basis that the above mentioned plant varieties and grains already exist and thus cannot be patented. In addition, they encountered some information from the US National Agricultural Statistics Service in its latest Rice Year book 1997, released in January 1998, which states that almost 75 percent of US rice imports are the Jasmine rice from ThailandandmostoftheremainderarefromIndiaandPakistan,“varietiesthatcannotbegrownintheUS”Thispiece of information is rather interesting and can be used as a weapon against the RiceTec Basmati patent.

Legal procedures of Obtaining a Patent in the US and IndiaThelawfirmrepresentingIndiainthedispute,SagarandSuri,criticisedtheproceduresforgrantingpatentsinthe US claiming it is diametrically opposite to the one followed in India and Europe. According to them, India firstexaminesapatentapplication, thenwidelypublishes it for thirdparties tochallenge,andonly thengrantsthe patent. However, the US keeps the patent application a closely guarded secret and grants it without allowing other parties to challenge it. After the patent has been granted, third parties are then allowed to petition against the patent as India is currently doing in the Basmati case. This criticism clearly illustrates the shortfalls in the patent process in the US that ultimately needs to be revised to prevent future cases like this from occurring.

TRIPS and World Trade OrganisationIndians feel that the US government’s decision to grant a patent for the prized Basmati rice violates the International Treaty on Trade Related Intellectual Property Rights (TRIPS). The president of the Associated Chambers of Commerce (ASSOCHAM) said Basmati rice is traditionally grown in India and Pakistan and granting patent to itviolatedtheGeographicalIndicationsactundertheTRIPS.TheTRIPSclausedefinesGeographicalindicationas“agoodoriginatingintheterritoryofamember,oraregionorlocalityinthatterritory,whereagivenquality,reputation, or other characteristic of the good is essentially attributable to its geographical origin.” As a result, it

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is safe to say Basmati rice is as exclusively associated with India and Pakistan as Champagne is to France and Scotch Whiskey is to Scotland. Indians argue that just as the US cannot label their wine as champagne, they should not be able to label their rice Basmati. If the patent is not revoked in the US because unlike the Turmeric case, rice growers lack documentation of their traditional skills and knowledge, then India as have been urged by many activistinthefieldshouldtakethecasetotheWTOforanauthoritativerulingbasedontheviolationofTRIPS. In the wake of the problems with patents that India has experienced in recent years, they have now realised the importance of enacting laws for conserving biodiversity and controlling piracy as well as intellectual protection legislation that conform to international laws. There is a widespread belief that RiceTec Inc took out a patent on Basmati only because of weak, non-existent Indian laws and the government’s philosophical attitude that natural productsshouldnotbepatented.AccordingtosomeIndianExpertsinthefieldofgeneticwealth,Indianeedstoformulate a long-term strategy to protect its bio-resources from future bio-piracy and or theft.

India and Pakistan who are joining hands to tackle the crisis have a strong case against RiceTec Inc. British traders are also supporting India and Pakistan. According to Howard Jones, marketing controller of the UK’s privately owned distributor TildaLtd,“TrueBasmaticanonlybegrowninIndiaorPakistan.Wewillsupporttheminanywayifitisnecessary.” The Middle East is also showing support by only labeling Indian or Pakistani rice as Basmati.

(Source: Ted Case studies. Basmati. [Online] Available at :< http://www1.american.edu/ted/basmati.htm> [Accessed 14 August 2012]).

QuestionsWhich company was issued the Basmati patent and when?1. Answer RiceTec Inc was issued the Patent number 5663484 on Basmati rice lines and grains on September 2, 1997.

What is the procedure to obtain patent in India and U.S.?2. Answer Indiafirstexaminesapatentapplication,thenwidelypublishesitforthirdpartiestochallenge,andonlythengrants the patent. However, the US keeps the patent application a closely guarded secret and grants it without allowing other parties to challenge it. After the patent has been granted, third parties are then allowed to petition against the patent as India is currently doing in the Basmati case. This clearly illustrates the shortfalls in the patent process in the US that ultimately needs to be revised to prevent future cases like this from occurring.

How can it be safely said that is exclusively associated with India and Pakistan?3. Answer TheTRIPSclausedefinesGeographicalindicationas“agoodoriginatingintheterritoryofamember,oraregionor locality in that territory, where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin.” As a result, it is safe to say Basmati rice is as exclusively associated with India and Pakistan as Champagne is to France and Scotch Whiskey is to Scotland.

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Case Study II

Copyright and intellectual property rights a case study from the web face

IntroductionThis short case study gives an account of intellectual property and rights issues relating to an online research archive. It describes the licensing regime in place to protect the creators and publishers of the data, and provides a case study of actions taken to stop unlicensed re-publication of data by a third party. It concludes that clarity is essential in the protection of intellectual property rights and that effort taken at an early stage will be rewarded in the long term.

ContextThe Archaeology Data Service (ADS) / Arts and Humanities Data Service Centre for Archaeology (AHDS Archaeology) supports research learning and teaching in archaeology in the UK by promoting good practice in the use of IT, by preserving important digital research archives for the long term, and by making a large amount of data available online. At the time of writing, ArchSearch (http://ads.ahds.ac.uk/catalogue/), our online catalogue of archaeological resources, provides details of some 600,000 sites, monuments and research projects in the UK and wherever UK-based archaeologists work. In many cases, short descriptive records provide access to rich and detailed archives that may contain any form of digital object associated with archaeological research. Archives include very large quantities of text - theses, monographs and journal articles in digital form - as well as unpublished ‘grey literature’.Theyincludedatabasefiles,images,CADplans,geophysicalandtopographicsurvey,virtualrealities,animations and statistical data. The vast majority of this data is supplied to us from external agencies who license ustodistributeandpreservedataontheirbehalf.Thisnon-exclusivelicencespecifiestheconditions,underwhichwe can distribute data, and has provision for digital preservation but does not transfer ownership of copyright.

AccessArchSearch is free to users, and has few of the restrictions to access encountered in other online services. Archaeologicalinformationistheresultofverymanyyearsoffieldworkandresearch-muchofitfundedthroughthe public purse or explicitly to encourage and sustain a better understanding of the historic environment. It seldom hassignificantcommercialvalue.Usersofthedataarenotrequiredtoprovideanypersonaldetailsinadvance,norare they required to remember a password or login. There is no authentication system restricting access to registered IP addresses. Moreover, because we provide access to authentic archival materials, it would be prejudicial to the integrityof the resourcewerewe tobranddigitalobjectswithcopyrightorotherfingerprints. Insomecases -especially print quality images - we present only screen grade images on the understanding that users can ask for higherqualityoriginals:thisispartlytoprotectcopyrightofdepositors,butisalsobecausethesefilescanbeverylarge and require high capacity bandwidth to access them.

This light regime places an extra responsibility to protect the intellectual property rights of material entrusted to us. Consequently, access to collections is covered by a generous but clear series of copyright, liability and access statements (see http://ads.ahds.ac.uk/cap.html and http://ads.ahds.ac.uk/copy.html). The copyright and liability statements form a common agreement that are shared across the AHDS. So, users are licensed to use resources fortheirownbonafideteaching,learningandresearch;theywaiveanyliabilitiesthatmayresultfromuseofthecollections; and they are required to acknowledge the source of material. These statements are asserted repeatedly within ArchSearch. Moreover, a copyright challenge for use of the system explicitly requires that users agree to these conditions. This challenge sets a cookie which expires after 15 minutes, thus ensuring that users have little ground for objecting that they are unaware of the access conditions.

Preservation through documentationDigital preservation is a specialist and demanding task, of which rights management is only one aspect. It is particularly important for the discipline of archaeology that, through the process of excavation, systematically destroys its own primary evidence. In such circumstances the preservation of notes of excavation - termed preservation by record - isofcriticalimportance(RichardsandRobinson2000).ExcavationsinthecryptofChristChurch,SpitalfieldsinLondon in the 1980s provide an example of the need for such recording, the problems that arise from the creation of such documentation, and complications that can arise in relation to intellectual property rights from this process.

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The excavations were undertaken under the auspices of the Greater London Council on behalf of the Parish and FriendsofChristChurchSpitalfieldswhosoughttoturnthecryptofthechurchintoahomelessshelter.Scientificinterest in this unusual project ensured that a range of leading agencies and individuals collaborated to undertake the project and complete the painstaking laboratory research that followed. This included the Natural History Museum, theNuffieldFoundation,theMinistryofWorks(subsequentlyEnglishHeritage),aswellasthearchitecturalpracticethat was responsible for the conversion. Project staff were recruited on an occasional basis. Some stayed with the project for a long period of time, while sickness and attendance records suggest that some may have stayed for little more than a day.

Though published in generous detail (Reeves and Adams 1993, Molleson and Cox 1993, Cox 1996), much of the research is now only available by inspecting the site archives. The notebooks, photographs, drawings and recording sheets in the archive provide a meticulous account of the excavation and thus represent the primary source. A long helddesiretodigitisearepresentativesampleofthisdatawasfulfilledin2000withthestartofanonlineteachingand learning project that drew attention to the interdisciplinary nature of this type of study.

Yetdigitisingthismaterialpresentedafamiliarproblemforintellectualpropertyrights(Dunning2004).Specifically,itwasfarfromclearwhoownedthecopyrightassociatedwiththevariousfilesanddocumentsthatwedigitised.It rapidly became clear that, while conventional archives are licensed via a single exchange of documents from the project team, in this case the project team no longer existed. The numerous agencies and staff involved in the excavations would have to be contacted and their approval sought individually. Amongst these, English Heritage, theNuffieldFoundationandtheNaturalHistoryMuseumhadprovidedfundingandin-kindsupporttotheproject.Each was asked to sign a standard deposit licence allowing ADS to distribute and preserve the data (but retain their copyright in the data. For more on this process, with an example licence see http://ads.ahds.ac.uk/copy.html ). These three were joined by a fourth licence provided by the Christ Church Parish and the ‘Friends of Christ Church Spitalfields’-avoluntarygroupthatsupportstheworkoftheParish.Thesewererecognisedasthemostimportant‘inheritors’ of the project and the data that resulted from it. In addition, the project team made strenuous efforts to contact all of the individuals involved in the project, to inform them of our plans and to seek their advice and approval, and to offer them a deposit licence should they wish to sign. None in the end objected, but a consensus emergedthatindividualcontributorswouldonlybehappyiftheParishandFriendsofChristChurchSpitalfieldsalso approved.

Archaeology and Human RemainsParallel to legal concerns over copyright were ethical and quasi-legal concerns over the explicit nature of some of thearchive.ChristChurchSpitalfieldswasremarkableforthedegreeofpreservationassociatedwithmanyoftheindividuals recovered from the crypt. Soft tissue and fabric - seldom recovered from archaeological contexts - was presentinsignificantquantities.Thismaterialbecameanimportantreferencecollectionforforensicarchaeologyfar beyond the context of eighteenth- andnineteenth- centuryLondon.Moreover identification of individualsthrough name plates and other inscriptions made it possible to cross reference forensic pathology with biographic detailsdisclosedinhistoricalsources.Consequently,muchofthepostexcavationresearchconcentratedonrefiningmethodologies for analysing and identifying individuals from challenging archaeological contexts - such as may be foundonbattlefieldsoranonymousmassgraves.

However, the handling and study of human remains for archaeological study is not unproblematic (for a discussion seeDownesandPollard1999).Strictlegalrequirementsexist,inpartreflectinganumberofethicalprinciples,such as a desire not to cause offence. It can be seen that digital images of partially decomposed human remains are appropriate tools in archaeological research and teaching. However, internet access raises the possibility that material can be lifted out of context and used easily for inappropriate purposes. Consequently the project team took particular painstowarnusersaboutwhattheywerelikelytofindinthearchive.Inthiswaytheprojectteamsoughttoavoidoffence and to ensure that publication of the archive did not bring any of the agencies involved into disrepute. This desirewasfurtheramplifiedbycreatorsofthedataintheirresponsestotheinvitationtocommentonthearchive.Inaddition,seniorindependentadvisorswereaskedfortheiropinions.Allconcurredthatthearchivewasbothfitfor purpose and appropriate for use before it was released to the public.

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Thus,afteranextendedprocessoflicensingandreview,thedigitalarchivefromChristChurchSpitalfieldswasreleased under the standard terms and conditions that apply to the whole of ArchSearch.

Research Data OnlineThe launch of the research archive, with the associated teaching and learning materials, has largely been a success. Patterns of use show that the archive has been among the most used resources within ArchSearch: in 2002-3 and again in 2003-4 the archive was the single most popular excavation archive available within the system (ADS 2004). The tutorial has been used in teaching in contexts that we previously could not have envisaged (Kilbride et al 2002), and we have received a number of requests for further data such as contact details for how to obtain access to the rest of the research archive. This represents a success within the operational plan of the organisation.

Late in 2003, routine monitoring of our systems showed an unusual amount of activity of use in the archive. Further analysisofthisactivityledtotheidentificationofawebsitewhichhadrepublishedsomeofthemoreexplicit-andthus potentially offensive - images from the archive. This new context in which the images had been embedded was a breach of the access agreement and copyright statements which users are required to accept before using these archives. Moreover, having seen this infringement it would have been negligent to allow this unlawful republication to continue. Given the legitimate concerns of data creators and those who licensed the data to us, it was imperative that we act swiftly and successfully.

Action plan and procedureThisisthefirsttimesincetheircreationthatourAccessAgreementandCopyrightStatementhadbeeninvokedtoprotect the intellectual property rights of depositors. Though we hoped that the matter could be resolved without aggressive legal action, it was clear that we needed to imagine a ‘worst case scenario’, in which our host institution wouldhavetotakemoreformallegalaction.Envisagingsuchascenariowefirsthadtobecertainthatthematerialwas indeed copied from our web server and that the Access Agreement and Copyright statement had indeed been breached.

Both were straightforward. The project team had digitised the images from the original slides and still had them in our possession: the data could not have been obtained from any other source. The Access Agreement is explicit in only allowing users to pass on information to approved users – i.e. under the same terms and conditions by which they had been supplied to them - while the Copyright Statement offers a ‘non-transferable’ licence to users to use within their own research learning and teaching. Republication on a third party website is clearly beyond the scope of both documents. Moreover, the Access Agreement entitles us to terminate the licence they have to use the data, and makes it explicit that users risk legal action should they breach any of the conditions.

Having established this, we then approached senior managers to ensure that they supported our request to have the material removed - aware of the ‘worst case scenario’. At this point we also consulted various legal authorities - in particularJISCLegalfortheiradvice.Thisadviceconfirmedourviewthatweshouldbeginwitharelativelylowkeyapproachtothewebmasteroftheoffendingsite,butalsoidentifiedanalternativecourseofactionwhichcouldbe pursued through the website’s Internet Service Provider (ISP). A recent case - Godfrey vs. Demon Internet Ltd suggests that ISPs share liabilities in relation to material they publish

The result of these consultations was to devise a simple decision tree that we should follow in the event of our requestsbeingignoredordenied.Thismaybeextensibletosimilarcases,soispublishedhereshouldothersfindthemselves in the same situation in the future. It is now our own agreed protocol of how to respond to future incidents ofthiskind,andmightbestbethroughofasaflowchartwith5stepseachofwhichtake14days.Itendsineitherthe offending material being removed or in more formal legal action. One would hope that it is resolved before the endpoint,whichis70daysfromthefirstemail.

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(‘Day 0’) Contact webmaster identifying clearly the areas of concern, identifying the terms and conditions 1. breached, specifying changes to be made, requesting an immediate acknowledgement and requesting that changesbecompletedwithin14daysfromthedispatchofthefirstemail.(‘Day 14’) If the matter has not been resolved in 14 days, contact the webmaster again making clear the legal 2. implications and our intention to proceed to court if changes were not completed within 14 days of the dispatch of the second email. Copy of this email to the Internet Service Provider.(‘Day 28’) If the matter has not been resolved in 28 days, contact the ISP pointing out the infringement and 3. requesting that they intervene to have the offending material removed from their domain within 14 days of the dispatch of the third email.(‘Day 42’) If the matter has not been resolved by this point, write again to the ISP making clear the legal 4. implications for them and our intention to proceed to court if changes were not completed within 14 days of the dispatch of the fourth email.(‘Day 56’) If the matter has still not been resolved, obtain letters from the university lawyers to the webmaster and 5. to the ISP making clear the infringement and requesting changes within 14 days of the postmark of the letter.(‘Day 70’) If the matter has still not been resolved, take further legal advice and begin legal proceedings.6.

Resolution and ConclusionIntheendwewerepleasednottohavetoproceedbeyondthefirststageinourdecisiontree.Theoffendingmaterialwasremovedwithinafewhoursofthefirstcontactbeingmadeandthematterwasclosed.

Atfirstinspection,threateninglegalactionseemsanexcessiveandriskypolicytoresolveabreachofcopyright.Inthiscase,however,wewereconfidentinourapproachforanumberofreasons,mainlytodowithclarity.Wehadavery extensive documentation trail that showed conclusively where copyright resided. The Access Agreement and Copyright Statement were well drafted so the nature of the infringement was clear. We could spell out in simple termstheinfringementthathadoccurredandwhatactionwerequired.Infactthesemodificationsrequiredrelativelytrivial amounts of work: so we did not have to make onerous demands. In addition, one suspects that the relatively generous access conditions also worked to our advantage. It could hardly be argued that we were restricting access toinformationorprotectingspecialintellectualprivilege.Allofthesegaveusconfidencetoactdecisively.

Thus, clarity in intellectual property rights management was core to the protection of open access, web-based research materials. The effort at the start associated with licensing materials and ensuring that users are aware of conditions of use has proven to be time well spent. Our experience suggests that protecting IPR needn’t require complicated mechanisms of authentication and authorisation: especially in contexts where resources have limited commercial value. But without clarity no regime - however sophisticated - is likely to be viable.

(Source: Kilbrid, W., 2004. Copyright and intellectual property rights: a case study from the web face. [Online] Available at: < http://www.ahds.ac.uk/creating/case-studies/protecting-rights/index.htm > [Accessed 14 August 2012]).

QuestionsExplain how digitisation presented a problem for intellectual property rights?1. What types of infringements were observed in 2003?2. What is important to the protection of open access, web-based research materials?3.

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Case Study III

Protection of geographical indication in India – case study on ‘Darjeeling tea’Tea is India’s oldest industry in the organized manufacturing sector and has retained its position as the single largest employer in this sector. Around 30 per cent of the world’s tea is produced in the country. India is also the world’s largest consumer of tea. However, on the export front India is facing huge competition from other key tea producing countries, such as Kenya, Sri Lanka and China.

‘Darjeeling’ tea is a premium quality tea produced in the hilly regions of the Darjeeling district West Bengal—a state in the eastern province of India. Among the teas grown in India, Darjeeling tea offers distinctive characteristics ofqualityandflavour,andalsoaglobalreputationformorethanacentury.Broadlyspeakingtherearetwofactorswhich have contributed to such an exceptional and distinctive taste, namely geographical origin and processing. The tea gardens are located at elevations of over 2000 meters above sea level.

HistoryThe history of Darjeeling tea dates back to the 1840’s, when India was a British colony. Before the arrival of the British, the forests of the region were known as Darjeeling today was inhabited by the Lepcha tribes. In 1828, while visiting this region located in the backdrop of the snow-clad Himalayan range, a young British called Captain Lloyd discovered the possibility of converting the region into a hill station or a sanatorium. In 1839, Darjeeling was handed overtoDr.A.Campbell,acivilsurgeon,whogottransferredfromKathmandutoDarjeelingtobecomethefirstSuperintendent of the Darjeeling district, a position which he held for the next twenty two years

In 1841, Dr. Campbell brought the seeds of China variety of tea from Kumaon hills of North India and planted them near his residence in his Beech wood garden in Darjeeling, 2134 meters above the mean sea level. Seeing the success of Dr. Campbell’s experimental tea nursery, the British Government decided to put out tea nurseries in the region in the year 1847. Even after the Indian independence from British rule in 1947, the British ownership continued in many tea gardens of Darjeeling. By the end of the 1970’s, most of the tea gardens of Darjeeling were in the hands of Indian owners. The major portion of the annual production of Darjeeling tea is exported, the key buyers being Japan, Russia, the United States, and the United Kingdom and other European Union (EU) countries such as France, Germany and the Netherlands.

In order to ensure the supply of genuine Darjeeling tea in February 2000, a compulsory system of certifying the authenticity of exported Darjeeling tea was incorporated into the Indian Tea Act of 1953. The system makes it compulsory for all the dealers in Darjeeling tea to enter into a license agreement with the Tea Board of India on payment of an annual license fee.

Why Protect “Darjeeling Tea” as Geographical IndicationAn adequate legal protection is necessary for the protection of legitimate right holders of Darjeeling tea from the dishonest business practices of various commercial entities. For instance, tea produced in countries like Kenya, Sri Lanka or even Nepal has often been passed off around the world as ‘Darjeeling tea’. Appropriate legal protection of this GI can go a long way in preventing such misuse.

WithoutadequateGIprotectionbothinthedomesticandinternationalarenaitwouldbedifficulttopreventthemisuse of Darjeeling Tea’s reputation, wherein tea produced elsewhere would also be sold under the Darjeeling brand, causing damage to consumers and denying the premium price to Darjeeling tea industry. The industry is now waking up to the fact that unless Darjeeling Tea is properly marketed and branded, the survival of the industry may be at stake and GI protection along with stringent enforcement can go a long way in helping the industry to improveitsfinancialsituation.

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Evolution of Legal ProtectionThefirstattemptonthepartoftheTeaBoardofIndiatowardsprotectionofthe‘Darjeeling’brandwasundertakenway back in 1983, when the ‘Darjeeling’ logo was created. The Tea Board obtained home protection for the Darjeeling logoasacertificationtrademarkundertheIndianTradeandMerchandiseMarksAct1958(nowtheTradeMarksAct, 1999). The registration was granted in class 30 in the name of the Tea Board in 1986. In the same year, the logo was registered as a trademark in several other countries [Refer Annexure A] like the UK, the USA, Canada, Japan, Egypt, and under the Madrid Agreement covering Germany, Austria, Spain, France, Portugal, Italy, Switzerland and former Yugoslavia

In the absence of a separate law dedicated exclusively to GI’s in India during that time, the word ‘Darjeeling’ was also registered under the Trade and Merchandise Marks Act 1958 in class 30 in the name of Tea Board in 1998. When the Geographical Indication Act in India was enacted in September 2003, the Tea Board applied for GI protection of ‘Darjeeling’ in October 2003.

InOctober2004,DarjeelingwasgrantedtheGIstatusinIndiatobecomethefirstapplicationtoberegisteredinIndia as a GI.

Enforcement Steps Taken by the Tea Board of India In order to prevent the misuse of ‘Darjeeling’ and the logo, the Tea Board has since 1998 hired the services of Compumark, a World Wide Watch agency. Compumark is required to monitor and report to the Tea Board all cases of unauthorized use and attempted registration Pursuant to Compumark’s appointment; several cases of attempted registrations and unauthorized use of ‘Darjeeling’ and Darjeeling Logo have been reported.

The tea board tried to prevent unauthorized use or attempt or actual registration of Darjeeling word/ logo that were brought to its notice. Some disputes relating to Darjeeling tea have been settled through negotiations undertaken by the tea board of India with the foreign companies

For example Bulgaria, Switzerland agreed to withdraw the legend ‘Darjeeling Tea fragrance for men’ pursuant to legal notice and negotiations by the Tea Board. The Tea Board has fought almost 15 cases in the last four years against infringement and misuse of the word Darjeeling Tea worldwide which includes Russia, USA, Japan, France, Germany, Israel, Norway and Sri Lanka etc.

ConclusionWhile the Tea Board has made strides in its quest for international recognition of Darjeeling tea as a trademark, recognition of Darjeeling Tea as a Geographical Indicator in the international arena is still to be achieved, primarily due to the fact that Article 23 of TRIPS gives good protection to Wines and Spirits, but currently not for other products. ThelackofamultilateralsystemofnotificationandregistrationforproductslikeDarjeelingTeawhichisavailablefor wines and spirits, is jeopardizing the international protection that would offer adequate protection. It is there important for India to seek extension of GI protection to other products by amending Article 23 of the TRIPS.

(Source: Dr. Ravindran, S. & Mathew, A., 2009. Protection of geographical indication in India – case study on ‘Darjeeling tea’, [pdf] Available at :< http://www.altacit.com/pdf/The%20Protection%20of%20Geographical%20Indication%20in%20India%20Case%20Study%20on%20Darjeeling%20Tea.pdf> [Accessed 14 August 2012]).

QuestionsWhy is adequate legal protection necessary for the protection of legitimate right holders of Darjeeling tea?1. WhenandhowwasthefirstattemptonthepartoftheTeaBoardofIndiatowardsprotectionofthe‘Darjeeling’2. brand undertaken?The Tea Board of India has fought how many cases against infringement and misuse of the word Darjeeling 3. Tea? Give example.

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Recommended ReadingAdelman, M. J., Rader, R. R. & Klancnik, G. 2007. • Patent Law in a Nutshell. 1st ed., Thomson West.Attorney, D. P., 2011. • PatentItYourself:YourStep-by-StepGuidetoFilingattheU.S.PatentOffice. Nolo. Attorney, R. S., 2012. • Patent, Copyright & Trademark: An Intellectual Property Desk Reference. NOLO.Attorney, S. E., 2010. • Trademark: Legal Care for Your Business & Product Name, 9th ed., Nolo. Bouchoux, D. E., 2012. • Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets. 4th ed., Delmar Cengage Learning.Bouchoux, D. E., 2012. • Intellectual Property: The Law of Trademarks, Copyrights, Patents, and Trade Secrets. 4th ed., Delmar Cengage Learning.Cohn, R. & Russell, J. 2012. • Patent Cooperation Treaty. VSD. Fishman, J. D S., • The Copyright Handbook: What Every Writer Needs to Know. 11th ed., Nolo.Gilbert Guide. 2004. • The Entrepreneur’s Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing. Berkley Trade.Grissom, F. & Attorney, D. P., 2008. • Inventor’s Notebook: A Patent It Yourself Companion, 5th ed. Nolo.Henri, J. A., Charmasson & John Buchaca, J., 2008. • Patents, Copyrights & Trademarks For Dummies, 2nd ed., For Dummies. Kawaguchi, H., 2006. • The Essentials of Japanese Patent Law: Cases and Practice. Kluwer Law International.Key, S. 2011. • One Simple Idea: Turn Your Dreams into a Licensing Goldmine While Letting Others Do the Work. 1st ed., McGraw-Hill. Maskus, K. E., 2000. • Intellectual Property Rights in the Global Economy. Institute for International Economics.Maskus, K. E., 2000. • Intellectual Property Rights in the Global Economy. Institute for International Economics.McJohn, S. M., 2008. • Intellectual Property: Examples & Explanations. Wolters Kluwer Law & Business.McJohn, S. M., 2008. • Intellectual Property: Examples & Explanations. Wolters Kluwer Law & Business.McJohn, S. M., 2009. • Copyright: Examples & Explanations.2nd ed., Aspen Publishers. Netanel, W., • Copyright’s Paradox, Oxford University Press.Nolff, M., 2001.• TRIPS, PCT and Global Patent Procurement, 1st ed., Springer. Ronald Louis Docie Sr., R. L., 2004. T• he Inventor’s Bible, 3rd Edition: How to Market and License Your Brilliant Ideas. 3rd ed., Ten Speed Press. Ruth Taplin, R., 2004. • Valuing Intellectual Property in Japan, Britain and the United States. Routledge. Singer, B., 2012. Patents• , Trademarks, Designs, Copyrights, Nabu Press.Winner, E. P. & Denberg, A. W., 2005. • International Trademark Treaties with Commentary. Oxford University Press, USA.

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Self Assessment Answers

Chapter Ia1. b2. d3. a4. c5. a6. b7. c8. a9. d10.

Chapter IIa1. b2. d3. c4. a5. c6. b7. a8. d9. c10.

Chapter IIIc1. a2. d3. b4. d5. b6. b7. a8. c9. b10.

Chapter IVa1. c2. b3. d4. b5. a6. c7. d8. a9. b10.

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Chapter Vb1. a2. c3. d4. b5. d6. c7. a8. b9. c10.

Chapter VIb1. c2. b3. a4. d5. a6. b7. c8. a9. d10.

Chapter VIIb1. a2. d3. c4. a5. d6. b7. c8. a9. -b10.

Chapter VIIIb1. a2. c3. d4. b5. c6. a7. d8. b9. c10.