ip considerations in the outsourcing business
TRANSCRIPT
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Intellectual Property ConsiderationsIn The
Outsourcing Business
By Poorvi Chothani, Esq.
Mumbai
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Overview
Member of the World Trade Organization(WTO)
Trade Related Aspects of Intellectual Property
Rights TRIPS Compliant Berne Convention
Paris Convention
Universal Copyright Convention Patent Cooperative Treaty
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Some Relevant Indian IP Laws
The Copyright Act, 1957 and the Copyright Rules 1958
The Patents Act, 1970 and the Patents Rules, 2003
The Trademarks Act, 1999 and the Trademarks Rules, 2000
The Biological Diversity Act, 2002
The Geographical Indication of Goods (Registration and Protection)
Act, 1999
The Designs Act, 2000and the Designs Rules, 2001
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Significant Provisions
Inalienable moral rights Waiver Concept does not apply to computer software
Work For Hire
Compulsory Licensing
Version Recordings
Broad fair use exceptions Non-commercial personal use deemed as fair use and does not
constitute infringement.
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Significant Provisions
Patents Joint Owners
Consent Accounting Rights
Infringement Responsibilities
Computer Programs andbusiness methodsper se not
patentable Protect Computer Programs
as trade secrets
Controller of Patents
First to File vs. Firstto Invent
Compulsory License
Research andExperimental Use
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Assignment of IP Rights
Of Copyright
Territory
Term
Lapse Consent
Of Patents
Joint Owner Needs Consent of other owner (s) toassign rights
Valid only if in writing and registered in India
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Indian Patent Applications
Patent Applications for:
inventions originating in India; or
involving an Indian resident inventor
must first be filed in India, unless a foreign filing
license has been granted by the Indian PatentOffice
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Patents - Some Special Provisions
Compulsory licenses for export of medicines to countrieswhich have lack of infrastructural or production capacityfor meeting public health emergencies.
In case of Infringement - Only civil remedy of injunction,damages, and accounts for profits.
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
The Patent Act provides Criminal remedies in case -
a) If any person fails to comply with any directions given under section35 or 39- shall be punishable with imprisonment up to 2 years or withfine or with both. Amount of fine is not specified.
b) Deals with falsification of entries in register etc (S. 119)-
shall be punishable with imprisonment for a term that may extend to 2years or with fine or with both. Here also amount of fine is not stated.
c) Deals with unauthorized claim of patent rights (S. 120)-
shall be punishable with fine that may extend to Rs.100000.
d) Deals with wrongful use of words, "patent office" (S. 121)-
shall be punishable with imprisonment for a term that may extend to 6months, or with fine, or with both.
Penalties
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Data Privacy and Protection
No Specific Statute
Existing legislation provides limited protection
Information Technology Act - limited protection againstcertain types of data misuse or computer offencesinvolving unauthorized access to data on computers andnetworks
E.g. hacking, damage to computer source code, virus introduction
Civil and criminal remedies available
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Legal framework for Data Privacy
The Constitution of India
The Information Technology Act, 2000 Protects against computer offences Provides for both civil and criminal remedies
The Specific Relief Act, 1963 To enforce specific performance provisions in the contract against the
Indian service provider
The Indian Penal Code, 1860 and The Indian CriminalProcedure Code of 1973
(corporeal property) To prosecute incidents of theft and criminal breach of trust and fraud
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Legislative Action
Amendment to the Information Technology Actof 2000:
Negligence in implementing and maintaining
reasonable security practices damages payableINR 1 Crore (approximately US$ 243,902 at USD1 =INR 41)
Disclosing personal data without the data subjects
consent - damages are limited to INR 25 lakhs(approximately US$ 60,976 at USD1 = INR 41)
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Data Privacy Pending Legislation
An amendment (approved in 2006 by Indian cabinet) tothe IT Act to expressly addresses data privacy yet tobe passed by Parliament
The new bill: Stipulates security practices to be followed by corporations
that handle personal data
Impose civil and criminal penalties for negligent handlingor intentional misuse of personal data
Imposes liability on intermediary only in limited situations
Permits private enforcement for civil remedies
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Other Protection
Specific Relief Act to Enforce Protective ContractualProvisions
Indian Penal Code: Limited criminal recourse available:
To prosecute incidents of theft, criminal breach of trust and fraudinvolving data
Laws extend to offenses against corporeal property only
Common Law Remedies: Civil damages and injunctive
relief available: Breach of contract
Breach of confidence
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Enforcement
In India, the enforcement system for IP rights includes: Civil remedies Criminal penalties Settlement out of court without trail
Compensatory damages
No punitive damages in certain cases
Registration of copyrights
The police department has established separate Cyber CrimesDepartment to deal with crimes related to computer, internet,andinfringement of intellectual property and for enforcement of IntellectualProperty Rights.
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Recommendations
Practices to Safeguard Trade Secrets and ConfidentialInformation between:
Comprehensive operative contracts, specifically providing forownership of IP
Non-disclosure agreements directly with the Indian serviceproviders employees and consultants assigned to the
project wherever practicable
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LawQuest 2008. All Rights are Reserved. Conference organized by Recharger Magazine, Forum-ReIndia Expo 2008at Mumbai
Thank You
522, Maker Chambers V,
221, Nariman Point,
Mumbai 400 021.
Tel: +91- 22- 66156555
Fax: +91- 22- 22872080
Email: [email protected]
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