Overview of IPR Patent system & Practice

S.ChandrasekaranController General

Intellectual Property Rights

Patents

Industrial designs

Trade and service marks

Copy rightsGEOGRAPHICAL INDICATIONS OR

APPELLATIONS OF ORIGINS.Layout designs (of integrated circuits).Neighbouring rights.Undisclosed INFORMATIONS (trade secrets).Anticompetitive practices in contractual licenses.Protection of inventions in biotechnology (plants).

Intellectual property

INDUSTRIAL PROPERTY + COPY RIGHT

PATENTS DESIGNS TRADEMARKS

Patents &

Designs

Patent Information

Trade MarksCopy Right

Geographical Indicat ions

Geographical Indications

FOR MOST PRODUCTS EVERY FORM OF INTELLECTUAL PROPERTY

RIGHTS CAN BE OBTAINED

CAMERA

“PATENT” For every individual improved mechanism

“DESIGN” For outer shape & Contour / Configuration

“TRADE MARK” Brand name or Logo for goods denoted as

®“Copy right” For Instruction / manual booklet denoted as ©

CD PLAYER

Industrial design protection for 3D shape

Brand name- registered under trademark

Music played on the CD player is protected by copyright

Various technical parts & mechanisms

are subject mater of

protection under Patents

FOR MOST PRODUCTS EVERY FORM OF INTELLECTUAL PROPERTY

RIGHTS CAN BE OBTAINED

Pressure Cooker

“PATENT” For every individual improved mechanism

“DESIGN” For outer shape & Contour / Configuration

“TRADE MARK” Brand name or Logo for goods denoted as ®

“Copy right” For Instruction / manual booklet denoted as

©

Strong IPR Regime ?

Choice or Necessity??

wish to have?

INDIAN IPR REGIME

• Meet international obligations while safeguarding national interests

• Modernize; and• Move ahead

STRATEGY FOR IPR

• Meet International obligations through Legislative changes

• Modernize IPR Regime• Create Awareness

Legislative MeasuresLegislative Measures

• The Patents Act, 1970• Product Patent• Patent Term of 20 years• Public Health Safeguards• Protection to TK

• The Trade Marks Act, 1999• Service Marks and Collective

Marks• Term increased from 7 years to 10

years

Legislative MeasuresLegislative Measures

• The Designs Act, 2000

• The GI Act, 1999

• The Copyrights Act, 1957

• The Bio-Diversity Act, 2001

• The Layouts and Integrated Circuits Act

• Patents (Amendment) ordinance was issued in 1994 and became Patent (Amendment) Act,1999.

• Patents (Second Amendment) Bill ,1999, has now become patent (Amendment) Act,2002.

• Patent (Amendment) Act 2005, Product regime launched• Some of the important features of the Patent

(Amendment)Act,2005 are:a) Areas of Patentability (and exclusion)- sec3, clause g omitted,

in clause ‘b’ and ‘c’ certain words omitted, additional clauses ‘j’, ‘k’, ‘l’, ‘m’ ‘n’ ‘o’ and ‘p’ added, ‘k’ further amended

b) Product / Process Patent – sec 5 provided – only process patent in certain category, Article 27.1 of TRIPS – product patent in all fields of technology, sec 5 – chemical process – includes biochemical, biotechnological and microbiological process, Now omitted

c) Patent Term- 20 years for all process and product patents, sec 53(1) – term of every patent – not expired, not cease to have effect -20 years

d) Contents of specification- sec 10, sub clause 4(d)- an abstract, requirement of making a deposit of the material, sub-clause 10.5 – a single inventive concept

e) Examination and Publication- new sec 11A and 11B, sec 11A – all applications – not be opened till 18 months, sec 11-b : examination on request, within 48 months, Now 36 months

f) Prohibition to apply for Patent outside India.- sec 39 – not to make an application outside India – Defense, atomic energy, apply in India, seek clearance

g) Rights over importation.- right to make, use, exercise, sell or distribute – include importation

h) Compulsory Licensing- sec83,84,85 and 89-95, sec 92 – grant of licence in national emergency, extreme urgency –public health crisis- includes procedures relating to AIDS and HIV, removal of three year restriction - CL.

i) Use by Government and Government Agency – sec 47, sec 99-103 – various situations, sub sec (2) of sec 99 -omitted

Contd …

j) Burden of proof concerning infringement –sec 104(A) – inserted, infringement of process patent – defendant – establish non-infringement.

k) License of Right- sec 86-89 of patent Act 1970, provisions of Licence of Rights - dropped.

l) Appellate Board – sec 116 the appellate Board established u/s 83 of Trade Mark Act 1999 – the appellate Board – patent act appeal to appellate Board – decision, order or direction of controller, otherwise earlier was – High Court.

m) Unauthorised claims of Patent Rights – sec 120 – wrong representation about patented in India or patent application, fine increased from 500/- to 10,000/-., Now Rs. 1,00,000/-

n) Other Amendments- sec 48 –prevent third party wit no consent, sec 107(A)(a) – protection of biodiversity and traditional knowledge.

Contd …

Industrial Designs• The protection you receive is only for

the appearance of the article and not how it works.

• Design registration is intended to protect designs which have an industrial or commercial use.

• Duration of protection is initially for 10 years and extendable for another term of 5 years.

• Designs of stamps, labels, tokens, cards, cartoons, or parts of an article not sold separately, cannot be registered.

• Electrical JUG

Design Examples

TRADEMARKS• A trade mark is any sign which can distinguish the goods

of one trader from those of another. Sign includes, words, logos, pictures, or a combination of these.

•To register a trade mark , the mark must be:-

•distinctive, and, not deceptive, or contrary to law or morality, and, not identical or similar to any earlier marks for the same or similar goods.

•A trade mark is used as a marketing tool so that customers

can recognize the product of a particular trader.

SONY OLYMPUS

How to select a Trade Mark ?1. A word, letter or any combination thereof and simple in design.2. If it is a word it should be easy to speak, spell and remember.3. The ideal word for a trade mark is an invented or coined word4. Words which are laudatory or which directly describes the character or quality of the goods should not be adopted.5. Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted.Are all Trade Marks registrable ?Not possible to register a mark which is confusing with a trade mark of another trader or a trade mark which describes the character or quality of the goods. The mark should not conflict with a trade mark already registered or pending registration in respect of similar goods.

TRADEMARKS

What is GIR•An indication used to identify agricultural, natural or manufactured goods originating from a definite territory in India.

•It should have a special quality or characteristics or reputation based upon the climatic or production characteristics unique to the geographical location.

•Examples of Geographical Indications in India are Darjeeling Tea, Kanchipuram Silk Saree, Alphonso Mango, Nagpur Orange, Kolhapuri Chappal, Bikaneri Bhujia, etc.

•Any association of persons, producers, organization established by or under the law can apply representing & protecting the interests of the producers.

•The registration of a Geographical Indication is for a period of ten years.

•Renewal is possible for further periods of 10 years each.

•A trade mark is a sign which is used in the course of trade and it distinguishes goods or services of one enterprise from those of other enterprises. Whereas a Geographical Indication is used to identify goods having special characteristics originating from a definite geographical territory.

• TRIPS provisions- For reciprocal protection ;protection in the country of origin is must.

• India did not have such protection with regard to Geographical indication.

• Result – cases like Turmeric, Neem and Basmati.• To cover up such situation – Geographical Indication of Goods

(Registration and Protection) Act 1999 , passed.• The salient features are:-

a) Maintenance of register of G.I in two parts – Part A & Part B through computer.

b) Prohibition of registration of certain geographical indications.c) Taking infringement action – by registered proprietor / registered user.d) Prohibition of assignment etc. – being public property.e) Prohibition of registration of G.I as Trade Mark.f) Appeal against Registrar’s decision to IP Board established under the Trade

Mark legislation.

Law of Patents

•Protection part

•Enforcement part

Protection Part

•Criteria for Patentabil i ty–New & useful–Non-obvious–Capable of Industrial Applications

•Patents Act specifies–What are not inventions?–What are not patentable inventions?

•How to get that monopoly right?

Enforcement part

• Opposition proceedings

• Licensing provisions

• Infringements suit provisions

What Does Patent System Do ?

I t encourages RESEARCH.Induces an inventor to disclose his inventions

instead of keeping them as secret.Provides inducement for capital investment

encouraging technological development.

It encourages establishment of new industries .

Advantages Of A Patent To The Public

•KNOWLEDGE OF INVENTION ADDS TO SCIENTIFIC BACKGROUND FORMING BASE FOR FURTHER RESEACH

•REASONABLE ASSURANCE FOR COMMERCIALIZATION

•PATENT- OPEN TO PUBLIC FOR USE –AFTER ITS TERM EXPIRES

OR–WHEN IT CEASES TO BE IN FORCE

INVENTION

Invention is a successful technical solution to a technical problem.

To be granted a Patent, An invention must be new,

non-obvious and capable of industrial application

Different Ways Of Dealing With An Invention

•Make it public for free use by public(like publishing in the

journal) Or

•Work the invention in SECRECY without PATENTING it (like coco-cola composition) Or

•Work the invention OPENLY without PATENTING it (directly put it in the market)

Or

•EXPLOIT the invention on the basis of a PATENT (like Rank Xerox )

A patent is a Monopoly Right granted

•For an invention•By the government•To the inventor or his assignee•For a l imited period•It is valid within the country of grant

Why do You need “Patent Information”

•SIZE OF THE RESOURSE –ENORMOUS AND WIDE Every area of technology is covered.•80% NOT PUBLISHED ELSEWHERE•FIRST PUBLICATION:Inventions disclosed in patents well before being published in any other type of document Invention Patent published First publication in any form Punched card 1889 1914 Television 1923 1928 Jet engine 1936 1946•EXPIRED PATENTS : FREE USE ; •TO AVOID REDUNDANT RESEACH Use the technology given in patent specification as a stepping stone.

Patents Not Only For Major Technological

BreakthroughSuch As

•LAZLO biro’s - ball point pen•Ring – pull for cans of beverages

But even for any small ‘ incremental ’ inventions•INDIVIDUALS OR Companies-normally do not clearly recognize the TRUE MARKET VALUE for a particular INVENTION

e.g. Anti theft device for motor cars-wheel clamp

Tetra pack style of cartons for milk & fruit juice

Protection Of Intellectual Property In India (Patents, Designs, Trade Marks & Copyrights)

Sr.JOINT CONTROLLER OF PATENTS AND DESIGNS

JOINT REGISTAR OF TRADEMARKS

MINISTRY OF COMMERCE AND INDUSTRY MINISTRY OF HUMAN RESOURSE

DEVELOPMENT

DEPT. OF INDUSTRIAL POLICY & PROMOTION

DEPT. OF EDUCATION

CONTROLLER GENERAL OF

PATENTS, DESIGNS & TRADE MARKS

PATENT OFFICE

TRADE MARKS REGISTRY

COPYRIGHT OFFICE

REGISTAR OF COPYRIGHT

GIR

CGPDTM (Bombay)

PATENT OFFICE HEADOFFICECALCUTTA

PIS (NAGPUR)

PATENT OFFICE (MUMBAI)

PATENT OFFICE (CHENNAI )

PATENT OFFICE (NEW DELHI )

JURISDICTION WEST ZONE

JURISDICTION SOUTH ZONE

JURISDICTIONNORTH ZONE

TMR (BOMBAY)

TMR AHMEDABAD TMR DELHI

TMR CALCUTTA

TMR CHENNAI

GIR

Jurisdiction of offices

Patent Grant Procedure (In Brief)

Filing of PATENT APPLICATION

EXAMINATION & NOVELTY SEARCH

ACCEPTANCE OR REFUSAL

NOTIFICATION OF “ACCEPTANCE” IN THE GAZETTE OF INDIA (part III section 2)

OPPOSITION (if any)

GRANT OF A PATENT

Patent Grant ProcedurePatent Grant Procedure Fil ing of patent application

Publication after 18 months

Pre Grant Opposition /Representation by any person.

Request for examination

Examination: Grant or Refusal

Publication of Grant of patent

Post Grant Opposition to grant of patent (Constitution of Opposition Board)

Early Publication

Decision By Controller

Patent Applications Examined

0

2000

4000

6000

8000

10000

12000

14000

16000

1999-2000 2002-03 2003-04 2004-05

2824

953810709

14813

INID Codes For The Identification Of The Bibliographic Data

Document identif ication (10) { 11,12,13,19 }Domestic f i l ing data (20) { 21,22,23,24,25,26 }Priority data (30) { 31,32,33,34 }Date of making available to the public (40){41 to 47 }Technical information (50) { 51 to 58 }References to related patent documents (60){61 to 66 }Identif ication of part ies concerned with the documents (70) [71-76] Identif ication of date related to international convention (80)[81-91]

Patents –Economic Development

Patent system works

--to facilitate Technology transfer and FDI ( sony Corpn. By patent license from “WE” patent holder on Transistor)

--as stimulants of R&D at Universities & Research Centres (the Bayh-Dole act --1980 created link between universities & industry)

Optical mirror technology of MIT;stem cell l icensing Wisconsin university

--as catalysts of new technologies & new business (Azithromycin)

--Help SME’s accumulate IP assets and engage in business

transactions based on such assets; SME without patent assets

have to depend on market advantage, superior service etc.,

Licensing activity

Licensing is very helpful to small company while dealing with bigger company having leverage in negotiations.

Licensing IP can be tremendously profitable

IBM 1.7 bil l ion US $

Texas Instruments 500 mill ion US$

Stanford university 36.9 mil l ion US$

IPOs – BEFORE AND AFTERIPOs – BEFORE AND AFTER

…… .Seeing is bel ieving !.Seeing is bel ieving !

FACADEBefore

Now

Before

OLD

LIBRARY

Now

STORAGE SPACE

Before Now

WORKING AREA

Before Now

CASH SECTION

Before Now

WORKING AREA

Before Now

WORKING AREA

Before Now

MULTI-PURPOSE AREA

Before Now

MODERNISED WAITING AREA

THANK YOU ONE & ALL

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