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Intellectual Property Rights

–

Case

Studies

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Patent

What ? A patent is an exclusive right granted for an invention – a product or

process that provides a new way of doing something, or that offers a new

technical solution to a problem. A patent provides patent owners with

protection for their inventions. Protection is granted for a limited period,

generally 20 years. Why? -Provide incentives to individuals by recognizing their creativity and

offering the possibility of material reward for their marketable inventions.

These incentives encourage innovation, which in turn enhances the

quality of human life.

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What kind of protection do patents offer?

Cannot be commercially made-used-distributed-sold

Stop patent infringement.

No global/international patent

What rights do patent owners have?

Decide who may – or may not – use the patented invention for the period

during which it is protected.

Give permission to, or license, other parties to use their inventions

on mutually agreed terms

Sell their invention rights to someone else

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Role Of Patents In Everyday Life

Electric lighting (patents held by Edison and Swan)

Sewing machines (patents held by Howe and Singer)

Magnetic resonance imaging (MRI) (patents held by Damadian

The iPhone (patents held by Apple)

What kinds of inventions can be protected?

It must be of practical use new, non-obvious and has industrial applicability

It must show an element of “novelty”

The invention must show an “inventive step”

Its subject matter must be accepted as “patentable” under law.

In many countries, scientific theories, mathematical methods, plant or

animal varieties, discoveries of natural substances, commercial methods or

methods of medical treatment (as opposed to medical products) are

not generally patentable.

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• RiceTec Inc, had been trying to enterthe international Basmati market with

brands like “Kasmati” and “Texmati”.

Ultimately, the company claimed to have

developed a new strain of aromatic riceby interbreeding basmati with another

variety. They sought to call the allegedly

new variety as Texmati or American

Basmati.

• RiceTec Inc, was issued the Patent

number 5663484 on Basmati rice

lines and grains on September 2,

1997.

BASMATI RICE

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BASMATI RICE

• This was objected to by two Indian nongovernmental organizations

(NGOs) — Centre for Food Safety, an international NGO that campaigns

against biopiracy, and the Research Foundation for Science, Technology

and Ecology, an Indian environmental NGO who filed legal petitions in theUnited States. The Centre for Scientific and Industrial Research also

objected to it.

• They sought trade protection for basmati rice of the Indian subcontinent

• They demanded amendment of U.S. rice standards to specify that the

term “basmati” can be used only for rice grown in India and Pakistan

• The Indian government, after putting together the evidence, officially

challenged the patent in June 2000.

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Various issues have been raised following the controversy, the answers to

which are hoped to be answered through the emerging law of patents and

geographical indications.

Some of the major issues are:

• Whether the term ―basmati‖ is a generic one to describe aromatic rice,

or does it refer specifically to the long aromatic rice grown in India and

Pakistan?

• Whether the strain developed by RiceTec is a novelty?

• Whether RiceTec is guilty of biopiracy?

• Whether the basmati patent should be revoked in the light of protests from

India?

THE ISSUES

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CONCLUSION

• RiceTec has been forced to give up the title of its patent, it has been forced to

give up 15 of its 20 claims, including those with the most far-reaching

implications related to biopiracy. The surviving claims now need to be

challenged as part of the larger movement against patents on life and patents

on rice.

• Geographical Indications signify a core instrument in protecting the

rights relating to the culture and heritage of several manufacturers and

producers of goods which have been of traditional importance

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Turmeric Case Study

• On March 28, 1995 the United States Patent andTrademark Office (USPTO)granted a patent (US

5401504) to two expatriate Indians of the

University of Mississippi Medical Center for a

method of promoting healing of a wound byadministering turmeric to a patient afflicted with the

wound.

• Turmeric is a plant yielding saffron-colored

rhizomes and has been used by the people of India

for ages as a flavor for cooking. It has also been used

widely as a color dye and for cosmetics. Most

importantly, turmeric has been used for its

medicinal qualities to heal wounds and rashes.

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TURMERIC CASE STUDY• The Indian Council for Scientific and Industrial

Research (CSIR) filed a case with IPpro Services

(India) P. Ltd.the USPTO challenging the patent

by providing evidence of “prior art”.

• CSIR presented an ancient Sanskrit text and apaper published in 1953 in the Journal of the

Indian Medical Association to support their

claim that the use of turmeric for medical

purposes was known in India for many yearsand hence its use as a medicine was not a new

invention. The USPTO upheld the objection and

cancelled the patent on the grounds that it failed

to meet the novelty criteria.

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• In a landmark decision on March 8, 2005, the European Patent Office

(EPO) ended a decade long battle over the ownership rights of Neem as

an anti-fungal product.• A patent had been granted to the United States Department of

Agriculture (USDA) and the multinational corporation W.R. Grace for a

fungicide derived from seeds of the Neem tree, a tree indigenous to the

Indian subcontinent.

• A challenge was first mounted against the patent when it was granted in

1995.

NEEM CASE STUDY

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NEEM CASE STUDY

• Leading the campaign in

the Neem case against the

US multinational was the

EU Parliament's Green

Party, India-based Research

Foundation for Science,

Technology and Ecology

(RFSTE) and the

International Federation of

Organic Agriculture

Movements (IFOAM).

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NEEM CASE STUDY

• The mainstay of RFSTE's challenge was that the fungicidal qualities of the

Neem tree and its use had been known in India for over 2,000 years.

• The RFSTE contested that various parts of the Neem tree (bark, leaves, seeds,etc) had been used traditionally to make insect repellents, soaps, cosmetics,

tooth cleaners and contraceptives.

• In addition, documented evidences were also presented by India that

included IPpro Services (India) P. Ltd research done by two scientists prior to

1995 on use of Neem for making several products including fungicide.

• This was used as prior art to revoke the patent granted to USDA and W.R.

Grace.

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TRADEMARK

Visual

Symbol

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Legal requirements to register a

Trademark under the Act are.. Must be graphically represented

Must be distinctive / distinguishable

Must not be descriptive

Must not be deceptively similar to known

/well-known marks

Avoid – Geographical Indications / Deities /

National Leaders / Heroes / Symbols /

Laudatory words

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Functions of Trademarks

It identifies the

product and its origin

It guarantees its

unchanged quality

It advertises theproduct

It creates an image forthe product

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Benefits of Trademark

• The Regd.Proprietor of a trade mark can stop

other traders from unlawfully using his trade

mark, sue for damages and secure destruction of

infringing goods and or labels.

The

Regd.Proprietor

• The Trademark registry average earns a revenue

of Rs.30 crors a year.

• This year they are expecting to cross Rs.40 crors

The

Government

• The Trade Marks Registration system is driven

by professionals and legal advisors(Agents) who

act for the clients in the processing of the trade

marks application.

The Legal

professionals

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WALMART TRIED TO CLAIM THE

HAPPY FACE

Who: WALMART

What it wanted to trademark: The yellow smiley face design

Status: DeniedThe smiley face has been around since 1970s but that didn‖t stop Walmart

from trying to trademark it in 2006.

The chain even tried to sue artist Charles Smith for parodying the symbol. The

courts, however, ruled that the smiley face is public domain.

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Subway sent cease-and-

desist letters to vendors

before it actually owned the

rights to “

footlong

”

• Who: Subway

• What it s trying to trademark: "Footlong"

• Status: Pending

• The sandwich chain has been trying to slap a trademark on its "footlong"

sandwiches for years. Not only is Subway battling opposition from other big

chains like Pizza Hut and KFC, it faces smaller restaurants too.Subway's lawyer reportedly sent a cease-and-desist letter to a Coney Island

hot dog shop and an Iowa-based general store. The latter responded with a

major lawsuit. Too bad Subway doesn't actually own any rights to the term.

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MC Prefix

• Who: McDonald's

• What it wanted to trademark: "Mc" prefix

• Status: Denied

• In the past, the fast food chain has emerged victorious from courtroom

battles against smaller stores like McCoffee, a San Francisco cafe, and

MacJoy, a Philippine fast food restaurant.

But their luck seems have to reversed. In 2009, McDonald's lost an eight-

year battle with a Malaysian restaurant called McCurry. Federal courts ruled

that no person would confuse the two.

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Unfair competition

• What is “unfair competition ”? “Any act of competition contrary to

honest practices in industrial and commercial matters” - Paris

Convention Art. 10bis

• UC, in principle, destroys the trust in the development of marketsand products.

• “Honest practices” ? To draw a line between what are, and what are

not, honest practices, fair and unfair competition in industrial and

commercial matters will depend on the circumstances of the case

and the business approach proper to the country or region.

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Unfair competition

• Such practices include acts that:

- create or capable of creating confusion as to the enterprise, the goods or the

industrial or commercial activity of a competitor;

- Formulate false allegations in the course of trade so as to discredit the

enterprise, the goods or the industrial or commercial activity of a competitor;

- Indications or allegations that in the course of trade are capable of

misleading the public as to the nature, manufacturing process,

characteristics, suitability for their purpose, or quantity of goods.

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Unfair Competition

-Violation of trade secrets

- Taking undue advantage of another‖s achievement (« free-

riding », slavish imitation, parasitic acts)

- Comparative advertising – (a) Positive reference (one‖s product as

good as the other) or (b) negative reference (claiming one‖s good

better than the other). In (a) possibility of misappropriation of the

other‖s goodwill if competitor‖s product is well-known; in (b),

competitor‖s product is criticezed, disparagement arises. Both

involve unauthorized reference to a competitor, either mentioned

by name or easily identifiable by the public.

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Protection Against Unfair

Competition

• The repression of unfair competition along with patents,utility models, trademarks, industrial designs andappellations of origin are the objects of industrial propertyprotection – Paris Convention Art.1(2) and 10bis.

• Acts of unfair competition prejudice competitors and harmconsumers :

• competitors lose customers and market share =there is economic prejudice

• consumers are misinformed and deceived =economic and personal prejudice (including healthhazard)

.

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Approaches to Unfair

Competition Law• Different approaches

– Specific laws or provisions on repression of unfair competition

• General clause in line with Paris Convention Art. 10bis combined withspecific examples or cases

• E.g. Germany, Japan, Republic of Korea, China, Spain, Colombia, Peru,

Switzerland, etc..• The Lanham Act concretely prohibits false statements about a

company‖s products or services that are material for consumers to

choose that company‖s products or services over those of its

competitor‖s

– General tort law or law against “passing off” and special laws ontrade secrets, advertising, consumer protection

• E.g. France, Italy, Netherlands (Civil Code)

• E.g. United Kingdom + common law jurisdictions (passing off plusresort to copyright law to cover the gap)

– Combination of specific and general laws

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COPYRIGHT

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What is the scope of protection in the

Copyright Act,1957 ?

The Copyright Act, 1957 protects original literary, dramatic,

musical and artistic works and cinematograph films andsound recordings from unauthorized uses. Unlike the case

with patents, copyright protects the expressions and not the

ideas. There is no copyright in an idea.

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Does copyright apply to titles and

names ?

Copyright does not ordinarily protect titles by themselves or names,

short word combinations, slogans, short phrases, methods, plots or

factual information. Copyright does not protect ideas or concepts. To

get the protection of copyright a work must be original.

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Does the law allow any use of a work withoutpermission of the owner of the copyright?

YES

• for the purpose of research or private study,

• for criticism or review,

• for reporting current events,

• in connection with judicial proceeding,

• performance by an amateur club or society if the performance is given to a non-

paying audience, and• the making of sound recordings of literary, dramatic or musical works under

certain conditions.

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What is a work?

• A work means any of the following , namely, a literary, dramatic, musical or

artistic work, a cinematograph film, or a sound recording.

• For example, the copyright to a Mickey Mouse cartoon restricts others from

making copies of the cartoon or creating derivative works based on Disney's

particular anthropomorphic mouse, but doesn't prohibit the creation of other

works about anthropomorphic mice in general, so long as they're different

enough to not be judged copies of Disney's.

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Rights under Copyright

There are two types of rights under copyright

• Economic rights allow the rights owner to derive financial reward

from the use of his works by others

• Moral rights allow the author to take certain actions to preserve the

personal link between himself and the work.

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Moral Rights

• Right of Authorship

• Right of Integrity

– Digital Manipulation

– No Right for Display

• Inalienable Rights

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Economic Rights -1

• Right of Reproduction

– Making copies e.g. an edition of a novel

– Storage in computer memory

• Right of Distribution/Issuing Copies

– Digital Distribution

• Right of Communication to the Public

– Public Performance

– Internet Communication

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Economic Rights 2

• Adaptation Rights

– Conversion into another form e.g. literary to drama

– Abridgement

– Picturizations, comic formats

• Right to make a cinematograph film or sound recording

• Translation Rights

•

Rental Rights• Resale Rights for original artistic works.

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Ownership of Rights

• Literary – author

• Drama – Dramatist

• Music – Composer

• Artistic work – Artist e.g. Painter, sculptor, architect

• Photograph – Photographer

• Author of Computer Program – Person who causes the work to be

created

•

Cinematograph film – producer• Sound Recording - producer

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Author as Owner of Rights: Exceptions

• In the course of employment – employer

• Employment by newspaper, magazine – employer has publishing right;

other rights with author

• Photograph, painting, cinema for valuable consideration – person who pays

money Lecture delivered in public – Person delivering

• Government Work – Government

• Public Undertaking Work – public undertaking

• Work of International Organization – International Organization

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Securing Copyright

• Formality free protection

• Voluntary Registration (S. 44 & 45)

• Registration does not as a matter of law establish that

what is registered is in fact and in law copyrightable

subject matter

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RELATED RIGHTS

• Rights granted by law to communicators of

works to the public

performing artists in their performances

producers of phonograms in their recordings

broadcasting organizations in their radio and television programs

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Performer‖s

Rights

• Recording, broadcasting

and communicating to

the public of a live

performance

• Presumption of transfer of

performer‖s right to

cinematographic film

producer

• Duration: 50 years

Rights Of

Broadcasting

Organizations

Broadcast Reproduction Right

Re-broadcasting, Recording and

Communicating to the Public of a

Broadcast

Duration: 25 Years

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Duration of Copyright

• Books-50 to 70 yrs after the death of author

• Photographic work- 25 years from making

• Cinematic works- 50 years after making available to public

• Assignable-yes

• Territorial extent-within India

• Advisory body-a Copyright Enforcement Advisory Council (CEAC)

• Special courts-no

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Art Rogers, Puppies 1985) and Jeff Koons, String of Puppies 1988)

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