What is Compulsory Licensing of Patents in India?

Patents in India are granted

to encourage inventions and to secure that it is worked on a commercial scale. The Indian
Patent Act ensures that a Patentee should not be able to enjoy a monopoly for the
importation of the patented article. The Patent Act provides measures by way of
compulsory licensing (C! to ensure that the patents do not impede the protection of public
health and nutrition and the Patent "ights are not abused by the Patentee. The C
therefore serves to strike balance between two disparate objectives# rewarding patentees
for their invention and making the patented products$ particularly pharmaceutical products$
available to large population in developing and under developed countries at a cheaper and
affordable price. Grant of Compulsory License due to Non-
Working/nafforda!le Prices of Patented "rticle# $%ection &'() %ection &' of
Indian Patent Act pertains to the grant of Compulsory icences. Compulsory icences
are granted in order to( ).Prevent the abuse of patent as a monopoly* +.,ake a way
for commercial e-ploitation of the patented invention by an interested person* and
..Address the public health concern in India. Any person interested or already the
holder of the licence under the patent can make re/uest to the Controller for grant of
Compulsory icence on patent after three years from the 0date of grant1 of that patent$ on
the following grounds( 1.reasonable requirements of public have not been satisfied; or
2.patented invention is not available to the public at affordable price; or 3.patented
invention is not worked in the territory of India. The Controller takes following
aspects into consideration while granting Compulsory icence( ).2ature of the
invention$ i.e comple-ity of the technology* +.Time which has elapsed since the grant
of the patent i.e. despite of the best efforts by the patentee or licensee since the grant of
patent$ it was difficult to work out the invention at commercial scale to its fullest before the
application of the compulsory licence was filed to the Patent 3ffice* ..The measures
already taken by the patentees or any licensee to make full use of the invention*
'.Ability of the applicant to work the invention to the public advantage* 4.Capacity of
the applicant to undertake the risk in providing capital and working the invention$ if
application were granted* 5.Applicant has made full efforts to obtain a licence from the
patentee on reasonable terms and conditions and such efforts have not been successful
within a reasonable period construed as a period not ordinarily e-ceeding a period of 5
months. Grant of Compulsory License for the *+port of Pharmaceutical Products)
Article .)(f! of the T"IP% agreement undermined the need for availability of
medicines to the countries having less or no manufacturing capacity through importation
from other countries. 6T3 adopted a mechanism to resolve this problem by implementing
para 5 of the 7oha 7eclaration on the T"IP% Agreement and Public 8ealth on August .9$
+99.. 3bligation under Art .)(f! of the T"IP% agreement was thus waived off in case of
e-port of pharmaceutical product to the countries having least or no manufacturing capacity
provided the eligible importing members has made a notification to the Council for T"IP%.
The Indian Patent Act was thus amended on :anuary )$ +994 and %ection ;+ (A! was
incorporated for grant of C for e-port of pharmaceutical products in certain e-ceptional
circumstances. The C under the said section can only be granted if the importing
country has also granted C or has$ by notification or otherwise$ allowed importation of the
patented pharmaceutical product from India. This condition is not applicable for least
developing countries (C7! having no patent regime. The C7s is only re/uired to notify the
Council of 6T3 about their willingness to import the pharma product subject to para 5 of
7oha 7eclaration. India,s -irst Compulsory License of Patent) 3n ,arch ;$
+9)+$ India<s first compulsory license (C! was granted by the Patent 3ffice to 2atco
Pharma td. for producing generic version of =ayer Corporation>s patented medicine
2e-avar$ used in the treatment of iver and ?idney cancer. The Controller decided
against =ayer on all the three grounds enlisted in the Patents Act for the grant of C
(reasonable re/uirements of the public not being satisfied* non#availability to the public at a
reasonably affordable price$ and the patented invention not being worked in the territory of
India!. 6hile the multinational giant was selling the drug at I2" +.&9 lakh for a month>s
course$ 2atco promised to make available the same at a price of about . @ (I2" &&99! of
what was charged by =ayer. 2atco was directed to pay 5 percent of the net sales of the drug
as royalty to =ayer. Among other important terms and condition of the non assignable$ non
e-clusive license were directions to 2atco to manufacture the patented drug only at their
own manufacturing facility$ selling the drug only within the Indian Territory and supplying
the patented drug to at least 599 needy and deserving patients per year free of cost.
Aggrieved by the Controller<s decision$ =ayer immediately moved to the Intellectual Property
Appellate =oard (IPA=! alleging that the grant of C was illegal and unsustainable. The
=oard rejected =ayer<s appeal holding that if stay was granted$ it would definitely jeopardiAe
the interest of the public who need the drug at the later stage of the disease. It further held
that the right of access to affordable medicine was as much a matter of right to dignity of
the patients and to grant stay at this juncture would really affect them. The =oard<s
chief Prabha %ridevan in an open court on ,arch '$ +9). dictated the order upholding the
Controller<s decision for grant of compulsory license on =ayer<s patented drug$ %orafenib
Tosylate.
VERSIONS RECORDINGS: The Copyright Amendment of 2012 moved the provisions
with respect to cover versions of sound recordings out of fair dealing provisions under Section
52, into a specific statutory license provision !a"ing version recordings, re#recording of prior
sound recordings, was earlier permitted under the Copyright $aw, %ut codifying it as a statutory
license provision formali&es the said activity in many ways 'urthermore, Section (1C, which
deals with statutory licenses for cover versions clearly spells out specific conditions and
limitations for ma"ing version recordings The Section reads as follows: )(1C Statutory
licence for cover versions *1+ Any person desirous of ma"ing a cover version, %eing a
sound recording in respect of any literary, dramatic or musical wor", where sound recordings of
that wor" have %een made %y or with the licence or consent of the owner of the right in the wor",
may do so su%,ect to the provisions of this section: -rovided that such sound recordings shall %e
in the same medium as the last recording, unless the medium of the last recording is no longer
in current commercial use *2+ The person ma"ing the sound recordings shall give prior
notice of his intention to ma"e the sound recordings in the manner as may %e prescri%ed, and
provide in advance copies of all covers or la%els with which the sound recordings are to %e sold,
and pay in advance, to the owner of rights in each wor" royalties in respect of all copies to %e
made %y him, at the rate fi.ed %y the Copyright /oard in this %ehalf: -rovided that such
sound recordings shall not %e sold or issued in any form of pac"aging or with any cover or la%el
which is li"ely to mislead or confuse the pu%lic as to their identity, and in particular shall not
contain the name or depict in any way any performer of an earlier sound recording of the same
wor" or any cinematograph film in which such sound recording was incorporated and, further,
shall state on the cover that it is a cover version made under this section *(+ The
person ma"ing such sound recordings shall not ma"e any alteration in the literary or musical
wor" which has not %een made previously %y or with the consent of the owner of rights, or which
is not technically necessary for the purpose of ma"ing the sound recordings: -rovided that
such sound recordings shall not %e made until the e.piration of five calendar years after the end
of the year in which the first sound recordings of the wor" was made *0+ 1ne royalty in
respect of such sound recordings shall %e paid for a minimum of fifty thousand copies of each
wor" during each calendar year in which copies of it are made: -rovided that the Copyright
/oard may, %y general order, fi. a lower minimum in respect of wor"s in a particular language or
dialect having regard to the potential circulation of such wor"s *5+ The person ma"ing such
sound recordings shall maintain such registers and %oo"s of account in respect thereof,
including full details of e.isting stoc" as may %e prescri%ed and shall allow the owner of rights or
his duly authorised agent or representative to inspect all records and %oo"s of account relating
to such sound recording: -rovided that if on a complaint %rought %efore the Copyright /oard
to the effect that the owner of rights has not %een paid in full for any sound recordings
purporting to %e made in pursuance of this section, the Copyright /oard is, prima facie, satisfied
that the complaint is genuine, it may pass an order e. parte directing the person ma"ing the
sound recording to cease from ma"ing further copies and, after holding such in2uiry as it
considers necessary, ma"e such further order as it may deem fit, including an order for payment
of royalty 3.planation4'or the purposes of this section )cover version5 means a sound
recording made in accordance with this section5 The first noteworthy change in the
provision is with respect to the medium of version recording The proviso to clause *1+
specifically provides that a conversion can %e made only into the same medium of the original
recording, unless the earlier recording is no longer in commercial use 'or e.ample, if the first
recording was made on a magnetic tape, the cover version must also %e on a magnetic tape
6ou cannot ma"e a digital recording of the cover version The Section states that
payment for the cover versions must %e made to the authors in advance, and for at least fifty
thousand copies in an year The cover version must not mention the original singer or the name
of the film for which the recording was made earlier 'inally, although minuscule, protection for
producers has %een incorporated Cover versions can %e made only after five years of the
first sound recording Also, clause *(+ prohi%its any derivative wor"s li"e remi.es without the
permission of the author, giving them an opportunity to %argain
WHAT IS THE DATABASE RIGHT?: 7rrespective of copyright protection, a
data%ase may %e protected %y the data%ase right This is intended to protect and
reward investment in the creation and arrangement of data%ases This protection can
apply to %oth paper and electronic data%ases 88 'or copyright protection to
apply, the data%ase must have originality in the selection or arrangement of the contents
'or data%ase right to apply, there must have %een a su%stantial investment in
o%taining, verifying or presenting its contents 887t is possi%le that a data%ase will
satisfy %oth these re2uirements so that %oth copyright and data%ase right apply
There is no registration for data%ase right # it is an automatic right li"e copyright and
commences as soon as the material that can %e protected e.ists in a recorded
form 9owever, the term of protection under the data%ase right is much shorter than
under copyright # it lasts for 15 years from ma"ing %ut, if pu%lished during this time, then
the term is 15 years from pu%lication
TRADITIONAL KNOWLEDGE Traditional knowledge (TK) is knowledge, know-how,
skills and practices that are developed, sustained and passed on from generation to
generation within a community, often forming part of its cultural or spiritual identity.
TK may be considered as:**knowledge, know how, skills, innovations or practices; **that
are passed between generations; **in a traditional context; and **ithat form part of the
traditional lifestyle of indigenous and local communities who act as their guardian or custodian
!t can be, for example, agricultural, environmental or medicinal knowledge, or knowledge
associated with genetic resources "xamples include, among thousands of others:
**knowledge about traditional medicines; **traditional hunting or fishing techni#ues;
**knowledge about animal migration patterns; **knowledge about water management
$ometimes, the term %TK can also refer to more: it can include folklore or traditional cultural
expressions, even though &!'( formally makes a distinction between TK on the one hand, and
T)"s on the other
WHAT IS A DOMAIN NAME?
*omain names are the human+friendly forms of !nternet addresses, and are commonly used to
find web sites ,or example, the domain name wipoint is used to locate the &!'( web site at
http:--wwwwipoint or the &!'( .rbitration and /ediation )enter site at
http:--wwwwipoint-amc- . domain name also forms the basis of other methods or applications
on the !nternet, such as file transfer 0ftp1 or email addresses + for example the email address
arbitermail2wipoint is also based on the domain name wipoint
GENE FUND :The New Delhi meeting reected the !"#$ %onvention as an
ade&uate model for sui generis plant variety protection. 't urged the adoption of
alternative models, incorporating the same sort of provisions as it recommended for
national patent laws, and recommended the inclusion of a comprehensive code of
provisions protecting (armers) *ights. The esta+lishment of a gene fund, ,derived
from fees and other levies on plant +reeding and the seed industry- was
recommended, to +e used to support in-situ farmers) conservation. The
consideration of new varieties for protection should include ,an environmental and
social impact assessment to ensure that they do not threaten agro-diversity and
community rights-.
.deceptively similar. / geographical indication shall +e deemed to +e deceptively
similar to another geographical indication if it so nearly resem+les that other
geographical indication as to +e likely to deceive or cause confusion0
computer program means a set of instructions capa%le, when incorporated in a
machine#reada%le medium, of causing a machine having information#processing
capa%ilities to indicate, perform or achieve a particular function, tas" or result:
NATIONAL BIODIVERSITY AUTHORITY031 &ith effect from such date as the )entral
4overnment may, by notification in the (fficial 4a5ette, appoint, there shall be established by
the )entral 4overnment for the purposes of this .ct, a body to be called the 6ational
7iodiversity .uthority 081The 6ational 7iodiversity .uthority shall be a body corporate by the
name aforesaid, having perpetual succession and a common seal, with power to ac#uire, hold and
dispose of property, both movable and immovable, and to contract, and shall by the said name
sue and be sued 091The head office of the 6ational 7iodiversity .uthority shall be at )hennai
and the 6ational 7iodiversity .uthority may, with the previous approval of the )entral
4overnment, establish offices at other places in !ndia 0:1The 6ational 7iodiversity .uthority
shall consist of the following members, 0a1 a )hairperson, who shall be an eminent person
having ade#uate knowledge and experience in the conservation and sustainable use of biological
diversity and in matters relating to e#uitable sharing of benefits, to be appointed by the )entral
4overnment; 0b1 three ex officio members to be appointed by the )entral 4overnment, one
representing the /inistry dealing with Tribal .ffairs and two representing the /inistry dealing
with "nvironment and ,orests of whom one shall be the .dditional *irector 4eneral of ,orests
or the *irector 4eneral of ,orests; 0c1seven ex officio members to be appointed by the
)entral 4overnment to represent respectively the /inistries of the )entral 4overnment dealing
with ; 0i1.gricultural <esearch and "ducation; 0ii17iotechnology; 0iii1 (cean *evelopment;
0iv1 .griculture and )ooperation; 0v1 !ndian $ystems of /edicine and =omoeopathy; 0vi1
$cience and Technology; 0vii1 $cientific and !ndustrial <esearch; 0d1 five non+official members
to be appointed from amongst specialists and scientists having special knowledge of, or
experience in, matters relating to conservation of biological diversity, sustainable use of
biological resources and e#uitable sharing of benefits arising out of the use of biological
resources, representatives of industry, conservers, creators and know ledge+holders of biological
resources Conditions of seri!e of C"#ir$erson #nd %e%&ers > The term of
office and conditions of service of the )hairperson and the other members other than ex officio
members of the 6ational 7iodiversity .uthority shall be such as may be prescribed by the
)entral 4overnment C"#ir$erson to &e C"ief E'e!(tie of N#tion#) Biodiersit* A(t"orit*
3? The )hairperson shall be the )hief "xecutive of the 6ational 7iodiversity .uthority and
shall exercise such powers and perform such duties, as may be prescribed + 33 The )entral
4overnment may remove from the 6ational 7iodiversity .uthority any member who, in its
opinion, has
(a) +een adudged as an insolvent0 or (+) +een convicted of an o1ence which
involves moral turpitude0 or (c) +ecome physically or mentally incapa+le of acting
as a mem+er0 or (d)so a+used his position as to render his continuance in o2ce
detrimental to the pu+lic interest0 or(e)ac&uired such 3nancial or other interest as is
likely to a1ect preudicially his functions as a mem+er. Meetings of
National Biodiversity Autority : 45. (4) The National 6iodiversity
/uthority shall meet at such time and place and shall o+serve such rules of
procedure in regard to the transaction of +usiness at its meetings (including the
&uorum at its meetings) as may +e prescri+ed. (5) The %hairperson of the National
6iodiversity /uthority shall preside at the meetings of the National 6iodiversity
/uthority. (7) 'f for any reason the %hairperson is una+le to attend any meeting of
the National 6iodiversity /uthority, any mem+er of the National 6iodiversity
/uthority chosen +y the mem+ers present at the meeting shall preside at the
meeting. (8) /ll &uestions which come +efore any meeting of the National
6iodiversity /uthority shall +e decided +y a maority of votes of the mem+ers
present and voting and in the event of e&uality of votes, the %hairperson or, in his
a+sence, the person presiding, shall have and e9ercise a second or casting vote. (:)
;very mem+er who is in any way, whether directly, indirectly or personally,
concerned or interested in a matter to +e decided at the meeting shall disclose the
nature of his concern or interest and after such disclosure, the mem+er concerned
or interested shall not attend that meeting. (<) No act or proceeding of the National
6iodiversity /uthority shall +e invalidated merely +y reason of
(a) any vacancy in, or any defect in the constitution of, the National 6iodiversity
/uthority0 or (+)any defect in the appointment of a person acting as a mem+er0 or
(c) any irregularity in the procedure of the National 6iodiversity /uthority not
a1ecting the merits of the case. !ommittees of National Biodiversity
Autority : 47. (4) The National 6iodiversity /uthority may constitute a committee
to deal with agro-+iodiversity. Explanation-(or the purposes of this su+-section,
.agro-+iodiversity. means +iological diversity, of agriculture related species and
their wild relatives. (5) =ithout preudice to the provisions of su+-section (4), the
National 6iodiversity /uthority may constitute such num+er of committees as it
deems 3t for the e2cient discharge of its duties and performance of its functions
under this /ct. (7)/ committee constituted under this section shall co-opt such
num+er of persons, who are not the mem+ers of the National 6iodiversity /uthority,
as it may think 3t and the persons so co-opted shall have the right to attend the
meetings of the committee and take part in its proceedings +ut shall not have the
right to vote. (8) The persons appointed as mem+ers of the committee under su+-
section (5) shall +e entitled to receive such allowances or fees for attending the
meetings of the committee as may +e 39ed +y the %entral >overnment.
"#cers and employees of National Biodiversity Autority : 48.(4)
The National 6iodiversity /uthority may appoint such o2cers and other employees
as it considers necessary for the e2cient discharge of its functions under this /ct.
(5) The terms and conditions of service of such o2cers and other employees of the
National 6iodiversity /uthority shall +e such as may +e speci3ed +y regulations.
Autentication of orders and decisions of National Biodiversity Autority :
4:. /ll orders and decisions of the National 6iodiversity /uthority shall +e
authenticated +y the signature of the %hairperson or any other mem+er authori?ed
+y the National 6iodiversity /uthority in this +ehalf and all other instruments
e9ecuted +y the National 6iodiversity /uthority shall +e authenticated +y the
signature of an o2cer of the National 6iodiversity /uthority authori?ed +y it in this
+ehalf. Delegation of po$ers @ 4<. The National 6iodiversity /uthority
may, +y general or special order in writing, delegate to any mem+er, o2cer of the
National 6iodiversity /uthority or any other person su+ect to such conditions, if
any, as may +e speci3ed in the order, such of the powers and functions under this
/ct (e9cept the power to prefer an appeal under section :A and the power to make
regulations under section <8) as it may deem necessary. E%penses of
National Biodiversity Autority to &e defrayed out of te !onsolidated
Fund of 'ndia : 4B. The salaries and allowances paya+le to the mem+ers
and the administrative e9penses of the National 6iodiversity /uthority including
salaries, allowances and pension paya+le to, or in respect of, the o2cers and other
employees of the National 6iodiversity /uthority shall +e defrayed out of the
%onsolidated (und of 'ndia.
WHAT IS A WELL-NOWN !AR?: A regime for the protection of well#"nown mar"s was first
introduced %y the -aris Convention in Article ;bis:*1+ The countries of the <nion underta"e, e.
officio if their legislation so permits, or at the re2uest of an interested party,to refuse or to cancel
the registration, and to prohi%it the use, of a trademar" which constitutes a reproduction, an
imitation, or a translation, lia%le to create confusion, of a mar" considered %y the competent
authority of the country of registration or use to %e well "nown in that country as %eing already
the mar" of a person entitled to the %enefits of this Convention and used for identical or similar
goods These provisions shall also apply when the essential part of the mar" constitutes a
reproduction of any such well#"nown mar" or an imitation lia%le to create confusion therewith
Su%se2uently, during drafting of the T=7-s Agreement, provisions to accommodate protection of
well#"nown mar"s as envisaged %y Article ;bis of the -aris Convention were incorporated as
T=7-s Articles 1;2 and 1;(: 1;2>Article ;bis of the -aris Convention *1?;@+ shall apply,
mutatis mutandis, to services 7n determining whether a trademar" is well#"nown, !em%ers shall
ta"e account of the "nowledge of the trademar" in the relevant sector of the pu%lic, including
"nowledge in the !em%er concerned which has %een o%tained as a result of the promotion of
the trademar" 1;(>Article ;bis of the -aris Convention *1?;@+ shall apply, mutatis
mutandis, to goods or services which are not similar to those in respect of which a trademar" is
registered, provided that use of that trademar" in relation to those goods or services would
indicate a connection %etween those goods or services and the owner of the registered
trademar" and provided that the interests of the owner of the registered trademar" are li"ely to
%e damaged %y such use The provisions addressing protection of well#"nown mar"s evolved
somewhat from the -aris Convention to the T=7-s Agreement The -aris Convention deals with
well#"nown mar"s in respect of goods alone, and provides protection only against use in
connection with identical or similar goods The T=7-s Agreement mandated that protection %e
e.tended %y !em%er Countries to registered trademar"s against use in connection with goods
and services: it also covers dissimilar goods and services to the e.tent the disputed third#party
use is found to indicate a connection %etween such dissimilar goods or services and the owner
of the registered mar", which is li"ely to harm the ownerAs interests Bota%ly, %oth conventions
do not define what constitutes a well "nown mar", there%y leaving its definition to the individual
!em%er States 7t is also of significance here that although the e.pression used in the -aris
Convention and the T=7-s Agreement is )well "nown mar",5 different ,urisdictions use different
e.pressions to denote mar"s falling into the category of well#"nown mar"s such as )famous
mar"s,5 )mar"s having a reputation,5 or )notorious mar"s5 <nder the T! Act, while there is a
definition of )well#"nown mar",5 the e.pressions )well#"nown mar"s5 and )CaD registered mar"
CthatD has a reputation5 are also used "ROTECTION O# WELL-NOWN
!ARS $NDER THE OLD INDIAN TRADE !AR STAT$TE: /efore the enactment of the
T! Act, the statute governing trademar"s in 7ndia was the T!! Act The T! Act came into force
in Septem%er 200( -rior to that date, well#"nown mar"s were protected under Section 0@ of the
T!! Act, which provided for defensive registration of well#"nown mar"s as well as passing off
actions Section 0@*1+ of the T!! Act read: 0@*1+>De%e&'()e reg('trat(o& o% *e++-,&o*& tra-e
mar,'.Ehere a trade mar" consisting of any invented word has %ecome so well#"nown as
respects any goods in relation to which it is registered and has %een used, that the use thereof
in relation to other goods would %e li"ely to %e ta"en as indicating a connection in the course of
trade %etween those goods and a person entitled to use the trade mar" in relation to the first
mentioned goods, then, notwithstanding that the proprietor registered in respect of the first#
mentioned goods does not use or propose to use the trade mar" in relation to those other goods
and notwithstanding anything in Section 0;, the mar" may, on application in the prescri%ed
manner %y such proprietor, %e registered in his name in respect of those other goods as a
defensive trade mar" and while so registered, shall not %e lia%le to %e ta"en off the register in
respect of those goods under the said section The test for eligi%ility for defensive registration of
a well#"nown mar" under Section 0@*1+ was whether the use of the mar" in connection with
goods other than the registered goods or goods in use would li"ely %e perceived as indicating a
connection in the course of trade %etween such goods and the well#"nown mar"As proprietor 7n
other words, li"elihood of deception was the decisive factor in determining whether a well#"nown
mar" was eligi%le for registration under this section 1wners of well#"nown mar"s often availed
themselves of this provision %y registering their mar"s either in all classes or in selected classes
of interest 9owever, even without a defensive registration, 7ndian courts have upheld rights in
several well#"nown mar"s asserted %y trademar" owners through passing#off actions These
court decisions and 7ndiaAs international o%ligations to implement protection of well#"nown
mar"s led to the codification of the well#"nown mar"s provisions under the T! Act /efore
e.amining the T! Act, it is important to review some of the court decisions under the old statute,
the T!! Act, which are considered milestones in the evolution of 7ndian case law on well#
"nown mar"s and paved the way for its codification under the new statute
Open Source:>enerally speaking, open-source software refers to
software for which the source code (underlying programming code) is made
freely availa+le for use, reading the code, changing it or developing further
versions of the software, including adding amendments to it. #pen source
software is often used as a general e9pression for many forms of non-
proprietary software, which di1er principally in respect of the licensing terms
under which changed versions of the source code may +e further distri+uted.
"roprietary software, on the other hand, is usually understood to +e software in
respect of which e9clusive rights are maintained, such as those Cowing from
copyright or patents. These rights allow to refuse access to the source code +y
third parties for the purpose of copying or modifying the software, or at least to
control the use of the source code. =ithout going into the details here, there is a
di1erence +etween open source software and free software, on which more
details can +e found through some of the hyperlinks
N"N(!"N)EN*'"NA+*,ADEMA,-@/ non-conventional trademark, also known
aD nontraditional trademar., is any new type of trademar" which does not +elong
to a pre;9isting, conventional category of trade mark, and which is often di2cult to
register, +ut which may nevertheless ful3ll the essential trademark function of
uni&uely identifying the commercial origin of products or services. The term is
+roadly inclusive as it encompasses marks which do not fall into the conventional
set of marks (e.g. those consisting of letters, numerals, words, logos, pictures,
sym+ols, or com+inations of one or more of these elements), and therefore includes
marks +ased on appearance, shape, sound, smell, taste and te9ture. Non-
conventional trademarks may therefore +e visible signs (e.g. colors, shapes, moving
images, holograms, positions), ornon-visible signs (e.g. sounds, scents, tastes,
te9tures). 7n recent years, trade mar" registries and courts have grappled with applications for
silhouettes, shapes, scents, te.tures, short cartoons, single colors, %ody movementAs etc as
trademar"s This invasion of the unconventional is due to the a%stract nature of the legal definition of
a trademar" 1n one hand the trade mar" law has em%raced an open# ended definition that
emphasis the functional, rather than the ontological status of a sign Any sign which does the
communicative wor" of a trade mar", distinguishing goods or services on the %asis of trade origin,
can %e registered as one 1n the other hand, the trade mar" registration systems have historically
developed around paradigmatic su%,ect matter: a conventional or traditional trade mar" that is visual
and consists of words, devices or a com%ination of the two
Reen(e en,ineerin,+ The Traditional !' <evenue /ethods Traditionally, there are three main
ways to make money from !': -. E'$)oit it. $imple enough, this means you use your !' to
create a product, and then sell it yourself /. Li!ense it. @et someone else pay you to use your !',
such as a patent TheyAll either pay you a one+time fee or you could earn a royalty on every sale
0. Se)) it off. $ometimes, it makes more sense to sell full ownership of your !' to a third party for
a one+time fee This works especially well if the idea is risky, or if it will take more capital than
you can pull together in order to fully exploit it Non1Tr#dition#) I2 Reen(e Met"ods :
7eyond these three traditional avenues, individuals can #uickly and easily benefit from their !'
by taking it in several additional directions -. Loo3 #t it #s3e4. $ometimes all it takes to create
new !' is to take your previous !' and make a slight tweak &ith patents, you can often make
subtle 0or not+so+subtle1 improvements to your original and file what is known as an
!mprovement 'atent, which builds upon a previous idea or invention and turns it into something
new 7ingo, your new patent is ready for its own exploitation or licensing /. Do!(%ent #nd
s"#re *o(r ori,in#) rese#r!". Think about how your !' was created in the first place &hat
made it possible for you to successfully create itB &hat research did you conductB &hat
processes and procedures did you have in placeB &hat makes your !' uni#ueB (nce youAve
answered these #uestions, ask yourself one more: )an others learn from your actionsB !f so, try
writing articles about your success or your techni#ues Trade maga5ines in your industry want to
hear your ideas, and can often pay well for you to tell your story 0. T#)3 #&o(t it. Cou did
the research, and you created the !', which means that you know the subDect better than anyone
else $o start talking about it )onferences, local technical meetings, professional societies,
and other events are always looking for interesting and effective speakers $peaking
engagements are a great way to engage your audience, share your success, brand your company,
and earn speaking fees at the same time
Biological Diversity Act/0110:6iological E *elating to 6iology or living
organisms. 6iology E the scienti3c study of living organism. #rganism E a)
an individual, animal, plant or single celled life form. 6) a whole made up of
parts whichare dependent on each other. 6iological Diversity encompasses
the variety of all life on earth. =ith only 5.: percent of the land area, 'ndia
already accounts for B to F per cent of the recorded species of the world.
'ndia is e&ually rich in traditional and indigenous knowledge, +oth coded and
informal. The stake holders in 6io diversity include the %entral >ovt.,
The Dtate >ovt., 'nstitutions like local self >ovt., scienti3c and technical
institutions, non govt., organi?ations, industry etc., !ommunities are not
sta.e olders in te Bio diversity2 The o+ect of the /ct is to /)
regulate access to +iological resources of the country with the purpose of
securing e&uita+le share in +ene3ts arising out of the use of (4) 6iological
resources and (5) associated knowledge relating to +iological resources.
3at are Biological resources4 : 6iological resources means plants,
animals and micro-organisms or parts thereof, their genetic (relating to
,genes or heredity- ) material and +y products, e%cluding value added
products with actual or potential use of value, 6!T D#;D N#T 'N%G!D;
H!I/N >;N;T'% I/T;*'/G. 6) To conserve and sustaina+le use of
6iological Diversity. 6iological Diversity means varia+ility among living
organisms from all sources and the ecological comple9es of which they are
part and includes diversity within species or +etween species and of eco
systems. %) To respect and protect KN#=G;D>; #( G#%/G
%#II!N'T';D related to 6io Diversity. D) To secure sharing of +ene3ts
with local people as conservers of +iological resources and holdersof
knowledge and information relating to the use of +iological resources.
;) %onservation and development of areas important from the standpoint of
+iological diversity +y declaring them as 6iological diversity heritage sites.
() "rotection and reha+ilitation of threatened species. >) 'nvolvement
of institutions of self govt. in the +road scheme of the implementation of the
/ct through constitution of committees. !nder this /ct, no
foreigner or an 'ndian who is Non-resident or an 'ndian in association with the
(oreigner can get any 'ndian +iological resource without permission. 't
virtually creates a +an on transport across the +order any 'ndian +iological
resource. This +an and regulation is restricted to the use of 'ndian +iological
resource +y others for research or for commercial utili?ation or for +io survey
and +io-utili?ation. %olla+orative research proects are e9empted if such
colla+orative research proects are approved +y the %entral >ovt. and are
drawn up as per the policy guidelines speci3ed +y the %entral >ovt.
3at is &io prospecting4:6io prospecting means e9ploration of wild plants
and animals for commercially via+le genetic and +io %hemical resources.
3at is Bio 5iracy4:6io piracy means misappropriation of folk wisdom of
indigenous people +y corporateJpirates to locate and understand the use of
medical plants and use this knowledge commercially and e9ploit it while the
indigenous people who made it all possi+le receive little or nothing in return.
!N %onvention on 6io diversity 4KK5 (held in *io de anerio) is a land mark in
the environment and development 3eld as it takes for the 3rst time a
comprehensive rather than sectoral approach to the conservation of ;arth)s
6io diversity and sustaina+le use of +iological resources. Di1erent 6oards
under the 6io diversity /ct, 5AA5@- 4) National 6io diversity /uthority(N6/),
a +ody corporate with a perpetual succession. D.4K provides for approval +y
N6/ for undertaking certain activities, namely -for o+taining any +iological
resource occurring in 'ndia. -for applying for patent or any other form
of intellectual property protection. 5) Dtate 6iodiversity
/uthority(D6/) 7) 6io diversity management %ommittees
(6I%s)I6/s and D6/s are re&uired to consult the concerned 6I%s on
matters related to use of 6iological*esources and associated knowledge
within their urisdiction. 6o$ can traditional .no$ledge &e
protected4 "rotection of Traditional knowledge can +e e1ected +y
protecting them under the heads of 'ntellectual "roperty law like copyright,
patents, Trademarks, 'ndustrial design protection, >eographical indication
and appellation(formal name or title) of origin and through the laws of unfair
competition. *rade secrets:( 3at are *rade secrets4:
/ny information which is of commercial importance in which skill and la+our
are involved for development /ND which is not ordinarily availa+le to the
pu+lic at large is +roadly denoted as- con3dential information-, meaning
con3dential information is also known as ,trade secrets-. %on3dential
information is characteri?ed +y the o+ligation on the recipient of the
information than +y any 'NH;*;NT right attaching to the information or the
owner of the information. ;9amples@- %hemical formulae, manufacturing
process, 3nancial information, machinery, devices,%omputer programmes,
source codes, strategic plans, designs, customer lists, discounts given to
%ustomers, compilation of information, supplier information, +usiness
development strategies etc., 'n 'ndia, there is no legislation to protect
Trade secrets. Basis for protection of con7dential
information:(%ourts have regarded ,con3dentiality- as an attri+ute of
ingenuity, skill and la+our and have condemned those who have reaped what
they have not not sown or try to misuse the information given to them in
con3dence. =hat is regarded as secret is not so much the end product, +ut
the skill and la+our, time ande1ort that is involved in its evolution or
development. *rade secret and 5atent/ o$ di8erent4
- patent is for an invention which is useful and ,non-o+vious) to those in that
3eld of art. ,only after Disclosure to >ovt., that a patent is granted.
%on3dential information is primarily founded on non-disclosure and on an
o+ligation to keep information received con3dential. - %on3dential
'nformation, unlike patent, need not +e novel or new in its strict terms to
&ualify as protecta+le %on3dential information. /ll that is re&uired is that the
information must not +e known to those in +usiness, should have commercial
value and +e maintained as a secret with an o+ligation on the recipient to
keep it secret. - =hile patents fall in pu+lic domain after a certain
period (5A years), there are instances, wherein trade secrets have +een
maintained secret for several years, e9ample, %#K; (#*I!G/.
3en *rade secret route is used4:Trade secret route is used, when@--
"atents are unavaila+le(ie the invention is not patenta+le) -"ending grant
of "atent -"atent enforcing mechanisms are weak. -"art of
technology can easily +e kept secret. -Trade secrets or %on3dential
information can +e used together with patents or in isolation. 3at are
te strategies to protect and maintain trade secrets:( - non-
disclosure agreement - However, mere paper contracts are not su2cient
+ecause it must +e proved that e1orts were taken keep the information
con3dential.
originality in copyrigt 9 #riginal ;9pression. #riginality relating to
;L"*;DD'#N #( TH#!>HT. Thus, a work not copied from another work is
original ie it should originate from the author. 't does not mean the
e9pression of #riginal or 'nventive thought. / person who possesses
%opyright of a literary work can, inter alia, do the following in respect of a
work or a su+stantial part thereof, namely@- a) *eproduce the work in any
material form including storing of it in any medium +y electronic means.
+) 'ssue copies of the work to the pu+lic not +eing copies already in
circulation. c) make any translation of the work or d) make any adaptation
of the work. /daptation includes any use of the work involving its
rearrangement or alteration.
Geograpical indications of goods(,egistration and protection)Act/
:;;;2: - 'n order to protect the interest of +oth the consumers and
producers, the T*'"D agreement has enoined a duty on all mem+er states to
enact a legislation to protect the ,geographical indications-.
-,>eographical 'ndication- in relation to goods (goods means any
agricultural, natural or manufactured goods or any goods of handicraft or
of industry and includes foodstu1) means an 'ND'%/T'#N which identi3es
such goods as agricultural goods, natural goods or manufactured goods or
originating or manufactured in the territory of a country or a region or
locality in that territory where a given &uality, reputation or other
characteristic of such goods is essentially attri+uta+le to its geographical
orgin 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 T/K;D "G/%; 'N D!%H T;**'T#*M, *;>'#N #* G#%/G'TM
as the case may +e. 'ndication@- 't includes (ie it is an inclusive de3nition)
any name, geographical or 3gurative representation or any com+ination of
them conveying or suggesting the geographical origin of goods to which it
applies. There is a register of >eographical 'ndications(>'). 't is in two
parts, namely, "art / ,containing particulars of registration of >'s and "art 6
containing particulars relating to registration of /uthori?ed users.
/pplication for registration of a >'@- D.44 of the /ct.
Geograpical indications of goods(,egistration and protection)Act/
:;;;2: - 'n order to protect the interest of +oth the consumers and
producers, the T*'"D agreement has enoined a duty on all mem+er states to
enact a legislation to protect the ,geographical indications-.
-,>eographical 'ndication- in relation to goods (goods means any
agricultural, natural or manufactured goods or any goods of handicraft or
of industry and includes foodstu1) means an 'ND'%/T'#N which identi3es
such goods as agricultural goods, natural goods or manufactured goods or
originating or manufactured in the territory of a country or a region or
locality in that territory where a given &uality, reputation or other
characteristic of such goods is essentially attri+uta+le to its geographical
orgin 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 T/K;D "G/%; 'N D!%H T;**'T#*M, *;>'#N #* G#%/G'TM
as the case may +e. 'ndication@- 't includes (ie it is an inclusive de3nition)
any name, geographical or 3gurative representation or any com+ination of
them conveying or suggesting the geographical origin of goods to which it
applies. There is a register of >eographical 'ndications(>'). 't is in two
parts, namely, "art / ,containing particulars of registration of >'s and "art 6
containing particulars relating to registration of /uthori?ed users.
/pplication for registration of a >'@- D.44 of the /ct. 3o sall apply4:
/ny association of persons or producers or any organi?ation or authority
esta+lished +y or under any law for the time +eing in force representing the
interest of the producers of the concerned goods, who are desirous of
registering a geographical indication in relation to such goods shall apply in
writing to the *egistrar in a prescri+ed form with the prescri+ed fees.
"rohi+ition of *egistration@- Dection K of the /ct. The following >'s
will +e prohi+ited from registration, namely@- -that which would deceive or
cause confusion -the use of which is contrary to law -that which
contains scandalous or o+scene matters -that which would hurt religious
suscepti+ilities. The *egistration procedure is enumerated in Ds.44 to 48,
consisting of application, advertisement of the application, opposition to
the registration, actual registration. #nce the >' is registered, an
interested person can apply for registration as the /uthorised user of the >'
under section 4B. /ny person claiming to +e the producer of the goods in
respect of which a >' has +een registered under D.4<, may apply in writing
to the *egistrar for registering him as the /uthorised !ser of such >'. The
procedure for registration of a >' also applies for registration an /uthorised
user of a >'. Duration and the rights conferred +y the *egistration@-
The *egistration is for a period of Ten (4A) years /ND it can +e renewed from
time to time (ie it is a perpetual right). *egistration of an authori?ed user is
for a period of Ten (4A) years or till the registration of >'(of which he is the
/uthorised user) e9pires, whichever is ;/*G';* . 'f at the e9piration of the
time prescri+ed in that +ehalf, those conditions are not complied with, the
registrar may remove a geographical indication or the /uthorised user as the
case may +e from the *egister. 5roi&ition of Assignment:( <ection
0= of te Act.@ The right to >' cannot +e assigned, transmitted, licensed,
pledged or mortgaged. However, the right of the /uthori?ed !ser devolves
on his successor in title. 'nfringement and Action for infringement2
<ection 00 of te Act2:- /n !nauthorised user using a registered >' a) +y
any means in the designation or presentation of goods suggesting that such
goods originate in a geographical area #TH;* TH/N TH; T*!; "G/%; #(
#*'>'N. +) in such a manner which constitutes an act of unfair competition
including passing o1 in respect of registered >'. "roceedings can +e
instituted to prevent or to recover damages for the infringement of a
registered >'. 5rotection of 5lant varieties and Farmers> ,igts
Act/ 0111 .@"rotection of "lant varieties either +y ,patents- or +y an e1ective
,sui generis (of its own kind, uni&ue) system- or any com+ination thereof.
#+ectives@- 4) To protect and +ene3t the +reeders of new plant varieties.
5) To protect and +ene3t the farmers as cultivators and conservers of
traditional local plant varieties which may +e used in the development of
new varieties and 7) To encourage the growth of seed industry
through domestic and foreign investments so as to ensure supply of high
&uality seeds and planting materials to farmers. 6o$ te rigt of
&reeders are protected4 : The rights of the +reeders are protected +y
granting them a monopoly to use and sell the seeds and planting materials
of the new plant varieties evolved +y them through a system +y which they
are granted registration. Duch a registration is e&uivalent to a patent granted
to the inventor in respect of manufactured goods. Those who use the new
plant varieties for purposes of +usiness ie for the production and sale of
seeds and other planting material have to take a license from the +reeder +y
paying him fees which may +e treated as *oyalty. 3o is a
&reeder4:6reeder means a person or group of persons or a farmer or group
of persons or any institution which has +red, evolved or developed any
variety. 3o can ma.e an application for registration under
te Act4:Dection 4< of the /ct gives the types of persons who can make an
application for registration under the /ct, namely, -6reeder, successor or
assignee of +reeder- any farmer or group of farmers or community of
farmers-any !niversity or "u+licly funded institution. %riteria for making
an application under the /ct@-4) Novelty@- Duch a variety has not +een sold or
disposed o1. 5) Distinctiveness@- clearly distinguisha+le +y at least
one essential characteristics from any other variety. 7) !niformity@-
!niformity in its essential characteristics(su+ect to variation that may +e
e9pected from the peculiar features of its propagation). 8)
Dta+ility@- ie its essential characteristics remains unchanged after repeated or
in the case of a particular cycle of propagation, at the end of such cycle.
*enure:( The certi3cate of registration shall +e valid for - Nine(K)years in
case of trees and vines. Di9(<)years in case of other crops may +e reviewed
and renewed further, on payment of such fees, as may +e 39ed +y the rules
so that the total period of protection will not +e more than 4F years in case
of trees and wines and 4: years in case of other crops. <emiconductor
'ntegrated circuits layout(Design Act/ 0110 ?<'!+D
A!*/0110@<emiconductor 'ntegrated !ircuits or <emiconductor '!2:
=hat is the o+ect of the /ctN@'t provides protection to Demiconductor '%
Gayout designs and matters connected therewith or incidental thereto.
3at is a semi conductor '!4:Demiconductor '% means a product having
transistors and other circuitry elements which are insepara+ly formed on a
semi conductor material or an insulating material or inside the semi
conductor material or an insulating material or inside the semi-conductor
material and designed to perform an electronic circuitry function. ;very '%
has a num+er. 3at is a transistor4:'t is a semi conductor device with
three connections capa+le of ampli3cation in addition to recti3cation. 'n
normal room (lower temperature), semiconductor acts as an insulator. 'f you
increase the temperature, it will conduct electricity. Demiconductor is an
element like >old, >ermanium (a grey crystalline element with semi
conducting properties resem+ling silicon) and silicon are main components
of semi conductor. +ayout design:( $at is a +ayout design4
Gayout means a) the way in which something, esp., a page is laid out and +)
a thing set out in a particular way. ,Gay out design- means a layout of
transistors and other circuitry elements and includes lead wires connecting
such elements and e9pressed in any manner in a semiconductor integrated
circuit. 3at are te rigts conferred on te registered
proprietor of te +ay(out design4: The D'%GD /ct gives to the
registered proprietor of the layout-design, the e9clusive right to use the
layout design and o&tain relief in respect of infringement2 't may +e
noted here that the registration of a layout design does not give monopoly
rights +ut gives right to prevent infringement of the registered layout during
the period of registration 3at constitutes infringement under
te Act4:*eproducing, 8.importing, selling, distri+uting the '% layout design
for commercial purposes only constitutes infringement 3at are
reAuirements to get protection under te Act4: -originality-should
not +e commercially e9ploited-distinct from the others already e9isting in the
market. 3at is meant &y commercial e%ploitation in relation to
semi conductor integrated circuits layout design4: %ommercial
e9ploitation in relation to semiconductor integrated circuits layout-design
implies acts such as sell, lease, o1er or e9hi+it for sale or otherwise
distri+ute such semiconductor integrated circuit for any commercial purpose.
Note@- / design not e9ploited commercially for more than 5 years from the
date of registration of application shall +e treated as commercially
e9ploited for the purpose of this /ct. 3at is te Busti7cation for
protection of <emiconductor integrated circuits4:'%s are the +ase of
electronic revolution. Got of investment and *OD is re&uired for creation of
new layout. This high investment and risk associated, forms a +arrier for new
entrant. However, when it comes to copying, it is the easiest o+ in the world.
't can +e copied +y merely taking photograph of each layer of integrated
circuits. Duration@- The term for an '% layout design protection is
ten(4A)years from the date of 3ling. The registration of a layout design shall
+e only for a period of ten years counted from the date of 3ling of an
application for registration or from the date of 3rst commercial e9ploitation
anywhere in 'ndia or any country, =H'%H;$;* 'D ;/*G';*. .3o is
te Autority under te Act4:The %entral >ovt., may, +y noti3cation in
the o2cial ga?ette appoint a person to +e known as the *egistrar of
Demiconductor integrated circuits layout design. There shall +e esta+lished a
registry which shall +e knownas the Demi-%onductor 'ntegrated %ircuit Gay
out design registry. 3o can o&tain protection of +ay(out designs
under te <'!+D Act/01114: /ny person who a) claims to +e the
creator of a layout design who desires to register it +) is an 'ndian
national or national of a country outside 'ndia, which accords to citi?ens of
'ndia similar privileges as granted to its own citi?ens in respect of
registration and protection of layout-designs and c) has principal place
of +usiness in 'ndia or if he does not carry out +usiness in 'ndia, has place of
service in 'ndia can apply for protection of layout-designs under the D'%GD
/ct, 5AAA
5atents Act/ :;C1 :;arlier there was only "*#%;DD "/T;NT and no
"*#D!%T "/T;NT for drugs, foods and chemicals. Now product patent has
also come into e9istence for drugs, foods and chemicals. The "roduct patent
protection already e9ists 'N /GG #TH;* (';GDD. / patent is a right granted to
a person who has invented a new and useful article or an improvement of an
e9isting article or a new process of making an article. / "atent is not
granted for an idea or principle as such, +ut for some article or the
process of making some article applying te idea2 Application for
5atent@- @=ho can apply for patentN@ 4) /ny person claiming to +e the true
and 3rst inventor of the invention0 5) +y any person +eing the assignee
of the person claiming to +e the true and 3rst inventor in respect of the right
to make such an application0 7) +y the legal representative of any
deceased person who immediately +efore his death was entitled to make
such an application. The application as a+ove may +e made +y any of the
persons mentioned a+ove either alone or ointly with any other person for
#N; 'N$;NT'#N #NGM +efore the patent o2ce. ;very application for a patent
shall +e accompanied +y a D";%'('%/T'#N descri+ing the invention and shall
+egin with a title su2ciently indicating the su+ect matter to which the
invention relates. / "/T;NT D";%'('%/T'#N is the heart and soul of a patent.
3at after application for a patentN@/n application for patent shall not
ordinarily +e open to pu+lic for a prescri&ed period2 'f the applicant so
desires, the application may +e pu+lished +efore the prescri+ed period +y
the %ontroller general of "atents, designs and Trade marks. #n the e9piry of
the prescri+ed period as stated a+ove, the application for patent shall +e
pu+lished. !pon pu+lication, the 6iological materials, speci3cations,
drawings etc., shall +e availa+le to the pu+lic. / patent is valid for a
period of twenty(5A) years (*#I TH; D/T; #( "!6G'%/T'#N #( TH;
/""G'%/T'#N (#* / "/T;NT. 3y validity of a patent is t$enty
years from te date of 5UB+'!A*'"N "F *6E A55+'!A*'"N4: This
is +ecause, on and from the date of pu+lication of the application for patent
and until the grant of patent in respect of such application, the applicant
shall have the like privileges and rights as if a patent for the investigation
has +een granted on the date of the pu+lication of the application. 6o$ever/
te applicant sall not &e entitled to institute any 02proceedings for
infringement until te patent as &een granted2#n a re&uest +y the
applicant for the patent or any other interested person, for an ;L/I'N/T'#N
of an /""G'%/T'#N, the application and speci3cation and other documents
related thereto shall +e referred at the earliest +y the controller general of
"atents, designs and Trade marks to an ;L/I'N;* for ma.ing a report to
im(ie to e !ontroller) regarding the following matters, namely@- 4)
whether the application, the speci3cation and other documents relating
thereto are according to the re&uirements of this /ct and the rules
thereunder.5) =hether there is any lawful ground of o+ection to the grant of
the patent under the /ct in pursuance of the application. 7) / report of the
;9aminer, after investigation, for the purpose of ascertaining whether a) the
invention claimed has +een anticipated +y a pu+lication made +efore this
application or +) the invention is claimed in any claim of completed
speci3cation pu+lished after this application +ut the application for which is
made +efore this application in &uestion. =here an application for a patent
has +een pu+lished +ut a patent has not +een granted, any person may, in
writing, represent &y $ay of opposition to the controller against the grant
of that patent, on the ground, inter alia, that the applicant for the patent
wrongfully o+tained the invention or any part thereof from him. #n receipt
of the report of the ;9aminer, the %ontroller may either grant the patent or
may re&uire the applicant to make necessary amendments after giving the
applicant an opportunity of +eing heard. Dome general information on
"/T;NTD@- -The three standard re&uirements for a patent to +e registered
are novelty, utility and inventive stepsJnon o+viousness. 't should +e new,
new steps and should +e commercially e9ploita+le. -During the term of
the patent, the owner of the patent, ie, the patentee can prevent any other
person from using the patented invention. /fter the e9piry of the duration
of the patent, any+ody can make use of the invention, since it +ecomes a
pu+lic domain. -/ patent is a creation of DT/T!T; and is therefore
territorial in ;9tent. Thus, a patent granted in one country cannot +e
enforced in another country !NG;DD the invention concerned is patented in
that country also. 3at is infringement4: 'nfringement of patent
consists in the violation of any ,e9clusive rights- of the patentee, namely, to
make, use, e9ercise, sell or distri+ute the invention in 'ndia. =here the
invention claimed is an article or su+stance, the rights of the patentee are
infringed +y any one who makes or supplies that article or su+stance
commercially for use +y others. =here the patent is for a process, the right
of patentee is infringed +y one who uses or e9ercises that method or process
in 'ndia. =here to 3le relief for infringementN@/ction for infringement of a
patent must +e instituted +y 3ling a suit in the %ourt having urisdiction not
inferior to that of a District %ourt. The right to sue for infringement +elongs
to the patentee. / person who threatens to infringe may also +e sued. The
+urden of esta+lishing infringement is on the plainti1 , ie who has 3led a suit.
=hat are the reliefs availa+leN@'t includes an inunction /ND at the option of
the plainti1, either damages or an account of pro3ts. The limitation period for
taking action for infringement is three years from the date of infringement.
-/""G'%/T'#N (#* "/T;NT /6*#/D@- (or applying /6*#/D, one has to 3rst
apply in 'ndia and after si9 weeks to apply a+road. -/ "atent is a
Ionopoly right. - 'n case of an invention in the *esearch and
Development(*OD) Dept. of a %ompany, the application for a patent should
+e made +oth +y the ;mployer and the employee to avoid future
complication in the event of the employee in the *OD department resigns2
3at is 5ara ') 7ling4'n case of "ara '$ 3ling, the generic manufacturer
claims that either his product does not infringe the patent and Jor the patent
itself is invalid. / successful patent challenge allows the challenger, a 4FA
days e9clusivity in which no other company can launch a generic version.
3at is DEvergreeningE of a patent4:=hen a patent is ending its tenure
of Twenty years, there is a natural tendency on the part of the patent holder
to e9tend the patent +y applying some cosmetic touches to the patent and
then apply to the patent authority to e9tend the same. 'n this way he can
prevent it from +ecoming ,generic-. However, 'ndian"atent Gaw, under
Dection 7(d) of the "atents /ct, 4KBA, provides that the mere discovery of a
new form of a known su+stance which does not result in the enhancement
of the known e2cacy of that su+stance or the mere discovery of any new
property or new use for a known su+stance or of the mere use of a known
process, machine or apparatus does not entitle a person for a patent or the
e9tension of the patent.