intellecutual property rights in india

Intellectual Property Rights N Prashant Kumar Nair, (Advocate)

~Corpus Legum

Types of Intellectual Property

• Copyright• Trademark• Patent• Industrial Design • Geographical Indications• Trade Secrets• Layout Design for Integrated Circuits• Protection of New Plant Variety

CopyrightThe Copyright Act, 1957

Key Points• Meaning: Copyright is a bundle of rights that is exclusively

available with respect to the owned work to the creator.• Infringement has criminal, civil and administrative remedies

remedies• Registration not mandatory but evidentiary• Copyright in expression not in idea• Copyright is a viable option for bio-technology in addition to patents


Section 13. Works in which copyright subsists-(1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say,—(a) original literary, dramatic, musical and artistic works;(b) cinematograph films; and(c) sound recording(2) Copyright shall not subsist in any work specified in sub-section (1), other than a work to which the provisions of section 40 or section 41 apply, unless,—(i) in the case of a published work, the work is first published in India, or where the work is first published outside India, the author is at the date of such publication, or in a case where the author was dead at that date, was at the time of his death, a citizen of India;(ii) in the case of an unpublished work other than work of architecture, the author is at the date of the making of the work a citizen of India or domiciled in India; and(iii) in the case of work of architecture, the work is located in India.


Section 14. Meaning of copyright-For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—(a) in the case of a literary, dramatic or musical work, not being a computer programme,—(i) to reproduce the work in any material form including the storing of it in any medium by electronic means;(ii) to issue copies of the work to the public not being copies already in circulation;(iii) to perform the work in public, or communicate it to the public;(iv) to make any cinematograph film or sound recording in respect of the work;(v) to make any translation of the work;(vi) to make any adaptation of the work;(vii) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi);


Section 14. Meaning of copyright-For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—(b) in the case of a computer programme,—(i) to do any of the acts specified in clause (a);(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme:Provided that such commercial rental does not apply in respect of computer programmes where the programme itself is not the essential object of the rental.


Section 14. Meaning of copyright-For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—(c) in the case of an artistic work,—(i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work;(ii) to communicate the work to the public;(iii) to issue copies of the work to the public not being copies already in circulation;(iv) to include the work in any cinematograph film;(v) to make any adaptation of the work;(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);


Section 14. Meaning of copyright-For the purposes of this Act, “copyright” means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—(d) in the case of a cinematograph film,—(i) to make a copy of the film including a photograph of any image forming part thereof;(ii) to sell or give on hire or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions;(iii) to communicate the film to the public;(e) in the case of a sound recording,—(i) to make any other sound recording embodying it;(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording, regardless of whether such copy has been sold or given on hire on earlier occasions;(iii) to communicate the sound recording to the public.

Registration

• Official website: Copyright.gov.in• Filling: After filing in the prescribed manner 30 days time

is allowed for any objection• Objection• Examination• Registration• Time taken for registration is minimum 3 months• In case of refusal to register by the Registrar Appeal can

be filed before Copyright Board.

Transfer of Copyright

• Assignment• License

Term of Copyright

• In the case of literary, dramatic, musical or artistic works, 60 years from the year following the death of the author.

• In the case of cinematograph films, sound recordings, photographs, posthumous publications, anonymous and pseudonymous publications, works of government and public undertakings and works of international organisations, 60 years from the date of publication.

• In case of Broadcast reproduction right - 25 years from the beginning of the calendar year next following the year in which the broadcast is made.

• In case of Performers right - 25 years from the beginning of the calendar year next following the year in which the performance is made.

Civil RemediesCivil Remedies

Injunction Damages Accounts Costs

Criminal RemediesCriminal Remedies

Cognizable Offences

Imprisonment up to 3 years

Fine up to 200,000 INR

Criminal Remedies

• Copyright Act 1957, s.64 empowers the Police (any officer not below the rank of sub-inspector) to seize infringing copies without warrant

• Police Raids (Power of search, seizure & arrest without a warrant)

• Fines (min. 50,000-200,000 INR)• Imprisonment (6 months to 3 years)

CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS

(CGPDTM)

T M REGISTRY

DESIGN OFFICE

G.I. REGISTRY

Head OfficeKOLKATA

BranchDELHI

BranchCHENNAI

BranchMUMBAI

Head OfficeMUMBAI

DELHI

KOLKATA

CHENNAI

A’BAD

KOLKATA

PATENT OFFICE

CHENNAI

Official websiteFor Patent, Design, Trademark, Geographical Indication

www.ipindia.nic.in

TrademarkThe Trade Marks Act, 1999

Section 2(zb) “trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours

Functions of Trademark

• It identifies the goods / or services and its origin;• It guarantees its unchanged quality;• It advertises the goods/services;• It creates an image for the goods/ services.

Key features of Trademark

• Trademark must be Distinctive• Trademark must be used in Commerce

Official websiteFor Patent, Design, Trademark, Geographical Indication

www.ipindia.nic.in

PatentThe Patents Act, 1970

• Sec.2(1)(m) – “patent” means a patent for any invention granted under this Act.

• Sec.2(1)(m) – “Invention” means a new product or process involving an inventive step and capable of industrial application.

Concept of Patent

Patent is a grant for an invention by the Government to the inventor in exchange for full disclosure of the invention. A patent is an exclusive right granted by law to applicants / assignees to make use of and exploit their inventions for a limited period of time. The patent holder has the legal right to exclude others from commercially exploiting his invention for the duration of this period. In return for exclusive rights, the applicant is obliged to disclose the invention to the public in a manner that enables others, skilled in the art, to replicate the invention. The patent system is designed to balance the interests of applicants / assignees (exclusive rights) and the interests of society (disclosure of invention).

Patent Subject

Invention must • relates to a Process or Product or both • be new (Novel) • involves an inventive step • be Capable of industrial application • not fall under Section 3 and 4

Application for grant of Patent

PUBLICATION OF APPLICATION

REQUEST FOR EXAMINATION

GRANT OF PATENT

3rd Party Representation

Revocation/Amendment

OPPOSITION

• PROMPTLY AFTER 18 MONTHS FROM P.D.

• WITHIN 48 MONTHS FROM F.D.

• ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS

• IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS

• WITHIN 12 MONTHS

FILING OF APPLICATIONPROVNL. / COMPLETE

Decision of Controller

EXAMINATION-ISSUE OF FER

Appeal

Appellate Board

Renewal Fee

• To be paid within 3+6 months from date of recording in the register [sec 142 (4) ]

• No fee for 1st and 2nd year• Renewal fee, on yearly basis, is required to be paid for

3rd to 20th for keeping the patent in force• Delay upto six months from due date permissible on

payment of fee for extension of time • Patent lapses if renewal fee is not paid within the

prescribed period

Right granted

• Where a patent covers a product, the grant of patent gives the patentee the exclusive right to prevent others from performing, without authorisation, the act of making, using, offering for sale, selling or importing that product for the above purpose.

• Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorisation, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India.

• Where a patent is granted to two or more persons, each of those persons will be entitled to an equal undivided share in the patent unless there is an agreement to the contrary.

Industrial DesignThe Designs Act, 2000

Section 2(d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957

Need for Registration

The 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.

Term

• Registration initially confers this right for ten years from the date of registration.

• It is renewable for a further period of five years. • If the fee for extension is not paid for the further period

of registration within the period of initial registration, this right will cease.

• There is provision for the restoration of a lapsed design if the application for restoration is filed within one year from the date of cessation in the prescribed manner.

Essential requirements for registration of Design

• Should be new or original• Not be disclosed to the public anywhere by publication in tangible

form or by use or in any other way prior to the filling date, or where applicable, the priority date of the application for registration.

• Be significantly distinguishable from known Designs or combination of known designs.

• 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.

DESIGN Vs. COPYRIGHT

DESIGN COPYRIGHT

Complete monopoly Only protects against copying

Need to register to claim protection

Subsists inherently

Has to be NOVEL No requirement for novelty

Maximum 15 years Life of author + 50 years

Only in respect of goods registered for

Is not goods specific

Geographical IndicationThe Geographical Indications of Goods (Registration and Protection) Act, 1999

Section 2(e) “geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.Explanation:- For the purposes of this clause, any name which is not the name of a country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country, region or locality, as the case may be;

Examples

• Solapur Chaddar• Solapur Terry Towel• Basmati Rice• Darjeeling Tea• Kanchipuram Silk Saree• Alphanso Mango• Nagpur Orange

Registration Need & Term

Need: The registration of a geographical indication is not compulsory; however, it offers better legal protection to facilitate an action for infringement. The registered proprietor and authorized users can initiate infringement actions. The authorized users can exercise the exclusive right to use the geographical indication.Term: The registration of a geographical indication is valid for a period of 10 years. It can be renewed from time to time for further period of 10 years each. If a registered geographical indication is not renewed it is liable to be removed from the register.

Registration and Filing

1. Preliminary ExaminationOn receipt of the application, the Examiner/Authorized Officer scrutinizes the application and the accompanying Statement of Case as to whether it meets the requirements of the GI Act and the Rules.


2. Communication of deficiencies found in preliminary examination• Deficiencies if any found through a preliminary examination are

communicated by the Examiner/Authorized Officer to the Applicant or his Agent.

• If the Applicant fails to remedy the deficiencies within one month of the notification, the Application may be treated as abandoned.

• However, the Applicant may file a request of extension of time of One month by filing the appropriate form and by paying the prescribed fee.

• When the deficiencies are complied the Examiner/AuthorizedOfficer shall submit the Application to the Registrar of GI for his consideration.


• 3. Examination of Application• Upon compliance of the deficiencies, the Registrar ordinarily constitutes a

Consultative Group of not more than seven representatives to ascertain the correctness of the particulars furnished in the Statement of Case;

• The Applicant will be invited to make a detailed presentation before the Consultative Group to explain the Statement of Case;

• The Consultative Group ascertains the correctness of the particulars of Statement of Case and recommends for amendments, corrections or furnishing of further documents;

• The Group may visit the production area in order to further assess the correctness of the Statement of Case;

• The proceeding before the Consultative group will be ordinarily completed within three months from the date of constitution;


• 3. Examination of Application• There upon the Registrar shall consider the Application on merits and based on

observation / comments of Consultative Group, issues an Examination Report;• The Examination Report may contain objections to the acceptance of the

Application or proposal to accept it subject to such conditions, amendments, modification or limitations as the Register may think fit to impose;

• The Applicant shall within two months of the date of communication of Examination Report comply with proposals mentioned in the Examination Report or submit his observation or apply for a Hearing;

• If the applicant fails to amend his application or submit his observations in writing or fails to apply for a hearing or fails to attend the hearing, the application shall be dismissed;

• If the Application is found to be in order, the Registrar accepts the Application and publishes it in the ensuing GI Journal.


4. AcceptanceThe Registrar may accept the GI Application absolutely or subject to such amendments, modification, conditions or limitations as he thinks fit. The objections and/or proposal for conditional acceptance are communicated to the applicant.5. Advertisement in GI JournalThe Registrar of GI publishes all the GI Applications and authorized user applications in the Official GI Journal.

Trade SecretsIndian Contract Act, 1872

• It may be confidential business information that provides an enterprise a competitive edge may be considered a trade secret. Usually these are manufacturing or industrial secrets and commercial secrets. These include sales methods, distribution methods, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes. Contrary to patents, trade secrets are protected without registration.

• A trade secret can be protected for an unlimited period of time but a substantial element of secrecy must exist, so that, except by the use of improper means, there would be difficulty in acquiring the information. Considering the vast availability of traditional knowledge in the country the protection under this will be very crucial in reaping benefits from such type of knowledge. The Trades secret, traditional knowledge are also interlinked / associated with the geographical indications.

Layout Design for Integrated CircuitsThe Semiconductors Integrated Circuits Layout-Design Act, 2000

mit.gov.in

Importance of Integrated Circuit Design

• Semiconductor Integrated Circuit means a product having transistors and other circuitry elements, which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function.

• The layout-design of a semiconductor integrated circuit means a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in semiconductor integrated circuits.

• The layout of transistors on the semiconductor integrated circuit or topography of transistors on the integrated circuit determines the size of the integrated circuit as well as its processing power. That is why the layout design of transistors constitutes such an important and unique form of intellectual property fundamentally different from other forms of intellectual property like copyrights, patents, trademarks and industrial designs.

Term of registration

• A period of 10 years counted from the date of filing an application for registration or from the date of first commercial exploitation anywhere in India or in any convention country or country specified by Government of India whichever is earlier.

Registration Procedure

1. Filing of application by the creator of the layout-design at the SICLD Registry.2. The Registrar may accept, refuse the application or accept with some modifications.3. The accepted applications shall be advertised within 14 days of acceptance.4. Any opposition to the advertisement can be filed within 3 months from the date of

advertisement.5. The counter-statement to the notice of opposition, if any, to be filed within 2 months

from the date of receipt of copy of notice of opposition from the Registrar.6. A copy of the counter statement provided to the opposing party.7. The Registrar may take hearing with the parities.8. The Registrar will decide on the originality of the layout-design and grant or reject

the application for registration based on the conclusions reached by him.9. Aggrieved party can appeal to Appellate Board or in its absence Civil Court for

relief on any ruling of the Registrar.

Protection of New Plant VarietyThe Protection of Plant varieties and Farmers’ Rights Act, 2001

http://www.plantauthority.gov.in/

Duration of Rights

Intellectual Property• Patent• Trademark• Copyrights• Geographical Indication• Chip Layout Design• Protection of Plant Variety• Trade Secrets

Duration of Rights• 20 years• 10 years + (continuous

reregistration)• 60 years generally• 10 years• 10 years• 18 – trees and 15 – crops..• Unlimited

Thank You!!

N Prashant Kumar Nair

Corpus Legum

intellecutual property rights in india

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