Ownership and period of protection

Presented by : Manohara H M

PALB4090

Introduction• The Convention Establishing the World Intellectual Property Organization

(1967) gives the following list of subject matter protected by intellectual property rights:• Literary, artistic and scientific works• Performances of performing artists, phonograms, and broadcasts• Inventions in all fields of human endeavor• Industrial designs• Trademarks, service marks, and commercial names and designations• Protection against unfair competition

• The importance of protecting intellectual property was first recognized in the Paris Convention for the Protection of Industrial Property in 1883 and the Berne Convention for the Protection of Literary and Artistic Works in 1886. • Countries generally have laws to protect intellectual property for two

main reasons.• One is to give statutory expression to the moral and economic rights

of creators in their creations and to the rights of the public in accessing those creations. • The second is to promote creativity, and the dissemination and

application of its results, and to encourage fair trade, which would contribute to economic and social development.

INTRODUCTION

• Intellectual Property has been traditionally categorized into Industrial property and Copyright.

• The term Industrial Property includes patents, trademarks, industrial designs, and geographic indications of source.

• Copyright protection is granted to protect literary, artistic and musical works.

TRADEMARK

• A trademark is the most valuable asset owned by a business• Businesses with particularly successful products or services spend

considerable amounts of time, effort and money creating, establishing and promoting their unique identities. • It is pertinent that trademarks be registered over all the goods and/or

services over which the mark is used. • In India, trademark registration is valid for a period of ten years. The

same may be renewed from time to time for additional periods of ten years each.

INTERNATIONAL PROTECTION FOR TRADEMARKS

• Trademark registrations are geographical in that, application has to be filed in each and every country where one wants protection. • Application also has to be made in the relevant class of

goods/services over which the mark is used. • If the mark falls under more than one class, applications have to be

filed in each relevant class.

• There are two different ways to seek protection for trademarks internationally. • The first option is to file application individually in each and every

country where the applicant wants protection for their trademark. • The second option is to file application for trademark protection

through regional conventions which provide for registration in multiple countries by a single application process

PATENT

• Patent is a form of protection that provides a person or legal entity with exclusive rights for making, using or selling a concept or invention and excludes others from doing the same, also for claiming damages from those who infringe the invention. • Patents generally cover innovations, products or processes that

include new functional or technical aspects. • It is granted by the Indian Patent Office and has a term of 20 years.

After expiration of this 20 year monopoly the product/ invention will fall in the public domain for any third party to use it.

COPYRIGHT• Copyright is a right given by the law to the creators of literary,

dramatic, musical and artistic works and producers of cinematograph films and sound recordings. • The creator of a copyrighted work has right to control/ prevent

unauthorized copying or reproduction of their work by others for a certain time period, after the said work will enter in the public domain. • The protection of copyright varies according to national legislations

and the type of work. The Indian law extends copyright protection for the work made by an individual for life time of the author plus sixty.

• Copyright is provided automatically to the author of any original work covered by the law as soon as the work is created.• Registration is not mandatory, but provides for protection of

ownership in case of dispute. • One of the supreme advantages of copyright protection is that unlike

other IP rights, protection is available in several countries across the world, by reason of India being a member of Berne Convention.

INDUSTRIAL DESIGNS

• An industrial design refers to the creation of a shape, configuration or composition or combination of pattern or color in three dimensional forms containing aesthetic value.• Designs Act protects only designs that are aesthetic in nature. • An industrial design can be a two- or three-dimensional pattern. • Novelty and originality are important criteria for a design registration

• The industrial design registration grants the proprietor the exclusive rights of selling, importing and applying the design to any product. • India has adopted the 'first to file' system, which means that the right

holder should file the application on the earliest point of time to rule out the possibility of any other person claiming for the rights of the intended designs.• In India, a design registration is valid for a period of 10 years,

renewable for a further period of 5 years.

• There are some artistic works which is not possible to be registered as the design. They are painting, sculpture, drawing (including a diagram, map, chart or plan), an engraving or photograph, a work of architecture, and any other work of artistic craftsmanship.

GEOGRAPHICAL INDICATION

• Geographical Indication refers to “Indication which identifies a good as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. • Registration of the geographical indication is not compulsory in India,

the owner of the unregistered geographical indication can enforce his rights through the common law remedy of passing off.

• In India, a geographical indication may initially be registered for a period of ten years, and it can be renewed from time to time for further periods of 10 years.• Indian law places certain restrictions in that a registered geographical

indication is not a subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement .

Ownership of patent

• In most countries, both natural persons and corporate entities may apply for a patent. • In the United States, however, only the inventor may apply for a

patent although it may be assigned to a corporate. • In most European countries, ownership of an invention may pass from

the inventor to their employer by rule of law.

• Owner of copyright in a protected work may use the work as he wishes, and may prevent others from using it without his authorization. • The rights granted under national laws to the owner of copyright in a

protected work are normally exclusive rights to authorize a third party to use the work, subject to the legally recognized rights and interests of others.

Rights of owner

The rights owner of a work can prohibit or authorize:• Its reproduction in various forms, such as printed publications or

sound recordings; the distribution of copies; its public performance; its broadcasting or other communication to the public; its translation into other languages; its adaptation, such as a novel into a screenplay.

• The right of the copyright owner to prevent others from making copies of his works without his authorization is the most basic right protected by copyright legislation. • The right to control the act of reproduction – be it the reproduction

of books by a publisher, or the manufacture by a record producer of compact discs containing recorded performances of musical works - is the legal basis for many forms of exploitation of protected works.

• Many laws include a right specifically to authorize distribution of copies of works. Obviously, the right of reproduction would be of little economic value if the owner of copyright could not authorize the distribution of the copies made with his consent. • The right of distribution usually terminates upon first sale or transfer

of ownership of a particular copy. This means, for example, that when the copyright owner of a book sells or otherwise transfers ownership of a copy of the book, the owner of that copy may give the book away or even resell it without the copyright owner’s further permission.

• The laws of many countries provide that the initial rights owner in a work may transfer all economic rights to a third party. Authors may sell the rights to their works to individuals or companies best able to market the works, in return for payment.• These payments are often made dependent on the actual use of the

work, and are then referred to as royalties. • Transfers of copyright may take one of two forms: assignments and licenses.

• Under an assignment, the rights owner transfers the right to authorize or prohibit certain acts covered by one, several, or all rights under copyright. • An assignment is a transfer of a property right. • In some countries, an assignment of copyright is not legally possible,

and only licensing is allowed. Licensing means that the owner of the copyright retains ownership but authorizes a third party to carry out certain acts covered by his economic rights, generally for a specific period of time and for a specific purpose.

Rights of a patentee

• Right to exploit the patent.

The patentee has a right to prevent 3rd parties, from exploiting the patented invention.• Right to grant license.

The patentee has a power to assign rights or grant license.• Right to surrender.

The patentee is given the right to surrender the patent by giving notice in prescribed manner to the controller.• Right to sue for infringement.

A patentee is given the right to institute proceeding for infringement of the patent in a district court .

Expiry Of A Patent

A patent can expire in the following ways:

1. The patent has lived its full term.

2. The patentee has failed to pay the renewal fee.

3. The validity of the patent has been successfully challenged by an opponent by filing an opposition either with the patent office or with the courts.

4. As soon as the patent expires, it pass to the general public domain and now anybody can use it without the permission of the original inventor