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Presentation on IPR

at

IIPS, Mumbai
On
Intellectual Property Day
April 26, 2003
By
Dr. Gopakumar G. Nair
Gopakumar Nair Associates, Mumbai.
E-mail : gnaipr@vsnl.net

A NEW ERA
IS OPENING UP
FOR INDIAN
SCIENTISTS AND
INDUSTRY
POST - 2002
A NEW ERA
FULL OF
CHALLENGES
&
OPPORTUNITIES
in IPR,
INNOVATION
&
PATENTING
INDIA / INDIANS
Will overcome
the ongoing state of co
nfusion & will
move on to the centre s
tage of action
on innovative research
& patenting as
well as practice of all f
orms of
Intellectual Property.
What
is wrong with Indian
s ?
• 38% of doctors in USA are
Indians
• 12% of scientists in USA are
Indians
• 36% of NASA scientists are
Indians
• 34% of Microsoft employees
are Indians
• 28% of IBM employees are
Indians
• 17% of INTEL scientists are
Indians
• 13% of XEROX employees are
Indians
Wealthiest
ethnic group in USA

(3.22 millions / 1.5% of


population)
CEO of
CITIBANK MCKENSEY STANCHART

Victor Menezes Rajat Gupta Rana Talwar


Microsoft
Testing Director – Sanjay Tejwrika
GM of Hewlett Packard – Rajiv
Gupta
President of AT&T-Bells Labs –
Arun Netravalli
Founder & Creator of Hotmail –
Sabeer Bhatia
Third richest man on the world –
Azim Premji
(Sultan of Brunei gone to 6th
position)
Creator of Pentium Chip – Vinod
Dahm
Co-founder of Sun Microsystems –
Vinod Khosla

The decimal system developed in


India – 100BC
Sushruta is the father of surgery –
2000years ago
Aryabhatta invented – Zero
INDIANS
HAVE INTELLECTUAL SUP
REMACY
WILL DO WELL IN
INTELLECTUAL PROPERTY
PRACTICE &
EXPLOITATION – FOR
INTELLECTUAL
PROSPERITY
Property Tangible
INtangible

Right
Idea
Expression Copyright

Trademark
Innovation
Quality / Identity
Invention
Patents
Trade Secrets
Property  Right

INTELLECT – PROPERTY – RIGHT

Idea  Expression  Copyright

Idea  Innovation  Invention 


Patent

Idea  Quality + Identity 


trademark

Idea  appearance  design


Idea  keep confidential 
Trade Secrets
no disclosure

Intellectual
Property Rights
 Copyrights
 Trademarks
 Patents
 Industrial Designs (+ I.C. layouts)
 Trade Secrets (confidentiality agreements)
 Geographical indications
 Anti-competitive practices (in contractual
licences)
Respective
Legislations in India
Patents - Patent Act, 1970 (+ amendments)
Design - The Design Act, 1911
Trademarks
– Trade & Merchandise Marks Act,
1958 + 1999
Copyrights
– The Copyright Act (1957 as amended
from time to time)
Layout Design of - Bills are passed
Integrated Circuits, in Parliament -
Geographical Indications, follow up in
progress
Convention on Biodiversity etc.

TRADEMARK
(BRANDNAME)

Design Copyright
(Packing (printed matter &
Format + manner of presentation)
Style)

G.I.

PATENT Trade Secret


(novel formulation Know-how
process/combination)

Product

Authorities in India
Controller
General of Patents, Designs and Trademarks
under
Department
of Industrial Development, Ministry of Industry
__________________________
Copyrights registration
Under
Ministry of HRD/Education

International
Organizations & Treati
es
• GATT / WTO
• WIPO
• PCT
• BUDAPEST TREATY
• STRASSBOURG AGREEMENT
(IPC)
• USPTO – 35 USC
• EPO / EPC

• TRIPs
• PARIS CONVENSION
• PLT
(TRIPS COUNCIL)

GATT
A multilateral
trading system was created in 1
948 as
the General Agreement on Tarif
fs and Trade.
In 1995, GATT became
WTO
GATT / WTO
The World
Trade Organization (WTO) is the only
Global
international organization dealing with the
rules
of trade between nations. At its heart are
the WTO
agreements,
negotiated and signed by the bulk of the
world’s trading nations and ratified in their
parliaments.
The goal is to help producers of goods and
services,
exporters,
and importers conduct their business (146
members; 30 observers; others)
UN; UNCTAD;
IMF; WB; FAO; WIPO; OECD

About WIPO
The World
Intellectual Property Organization (WIPO) is
an international organization dedicated to
promoting the use and protection of works
of the human spirit. These works
– intellectual property – are expanding
the bounds of science and technology and
enriching the world of the arts.
Through its work, WIPO plays an important
role in enhancing the quality and enjoyment
of life, as well as creating real
wealth for nations.
With headquarters
in Geneva, Switzerland, WIPO is one of
the 16 specialized agencies of the United
Nations systems of organizations. It
administers 23 international treaties dealing
with different aspects of intellectual property
protection. The Organization counts 179
nations as member states.

WIPO
Objectives of the Organization
The objectives of the Organization are :
• To promote the protection of intellectual
property throughout the world through
cooperation among States and, where
appropriate, in collaboration with any other
international organization,
• To ensure administrative cooperation
among the Unions.

Treaties
& Contracting Parties
• Intellectual Property
Protection Treaties
• Global Protection System
Treaties
• Classification Treaties
Intellectual
Property Protection Treaties
• Berne Convention for the protection of literary and
artistic works
• Brussels Convention relating to the distribution of
programme-carrying
signals transmitted by satellite
• Convention for the protection of producers of
phonograms against unauthorized duplication of their
phonograms
• Madrid Agreement for the repression of false or
deceptive indications of
source on goods
• Nairobi Treaty on the protection of Olympic symbol
• Paris Convention for the protection of Industrial
Property
• Patent Law Treaty (PLT)
• Rome Convention for the protection of performers,
producers of
phonograms and broadcasting organizations
• Trademark Law Treaty (TLT)
• WIPO Copyright Treaty (WCT)
• WIPO performances and phonograms Treaty (WPPT)

Global
Protection System Treaties
• Budapest
Treaty on the international recognition of
the deposit of microorganisms for the
purpose of patent procedure.
• Hague Agreement concerning the
International Deposit of the Industrial
Designs
• Lisbon Agreement for the protection of
appellations of origin and their international
registration
• Madrid Agreement concerning the
International Registration of Marks
• Patent Cooperation Treaty (PCT)

Classification Treaties
• Locarno
Agreement establishing an international cla
ssification for industrial designs
• Nice Agreement concerning the
international classification of goods and
services for the purposes of the registration
of marks
• Strasbourg Agreement concerning the
International Patent Classification
• Vienna Agreement establishing an
International Classification of the figurative
elements of Marks

TRIPS
The TRIPS
(Trade Related Aspects of Intell
ectual Property
Rights) Agreement came into be
ing with
the establishment of the WTO (
World Trade
st
Organization) effective from 1
January, 1995
TRIPS
Intellectual
Property Rights itself is defined,
in
the context of the TRIPS as a ri
ght
given to people over the creatio
ns of
their minds. It usually gives the
creator an exclusive right over t
he use
of his creations for a certain peri
od of time.
TRIPS
The TRIPS
Agreement consists of 73 articles contained
in the following seven parts :
Part I : General provisions and basic principles
Part II : Standards concerning the availability,
scope
and use of Intellectual Property Rights
Part III : Enforcement of Intellectual Property
Rights
Part IV : Acquisition and maintenance of
Intellectual
Property Rights and related inter-partes
procedures
Part V : Dispute prevention and settlement
Part VI : Transitional arrangements
Part VII : Institutional arrangements; final
provisions

TRIPS
For
the purpose of TRIPS Agreement, intellectu
al
property
refers to all categories of intellectual
property
that are the subject of Sections 1 to
7 of Part II of the
TRIPS Agreement viz.
• Copyright and related rights
• Trademarks
• Geographical Indications
• Industrial Designs
• Patents
• Layout-Designs (Topographies) of
Integrated Circuits
• Protection of undisclosed information
• Control of anti-competitive practices in
contractual licences

COPYRIGHT
What is Copyright ?
Copyright
is a legal term describing rights
given to creators for their
literary and artistic works
COPYRIGHT
What is covered by Copyright ?
The kinds of works covered by copyright
include : literary works such as novels, poems,
plays, reference works, newspapers and
computer programs; databases; films, musical
compositions, and choreography; artistic works
such as paintings, drawings, photographs and
sculpture; architecture; and advertisements,
maps and technical drawings.

COPYRIGHT - extention
IT Revolution !
Recordings
Broadcastings
Audio visual works
Computer programs
Digital databases
Internet/web
Cable and SatelliteT.V.
Distinction
and degree of protection
Copyright
– Expression of ideas
– Protection is specific
and its
protection scope is fairly
narrow
Patents
– novel idea itself when applied
and
useful.
– can cover a relatively
broader
scope including various
applications or programs.
INDUSTRIAL DESIGN
An industrial design is the ornamental or
aesthetic aspect of an article. The design may
consist of three-dimensional features, such as
the shape or surface of an article, or of two-
dimensional features, such as patterns, lines or
color.
Industrial designs are applied to a wide variety
of products of industry and handicraft:
from technical and medical instruments to
watches, jewelry, and other luxury items;
from housewares and electrical appliances to
vehicles and architectural structures; from
textile designs to leisure goods.
To be protected under most national laws, an
industrial design must appeal to the eye. This
means that an industrial design is primarily of
an aesthetic nature, and does not protect any
technical features of the article to which it is
applied.

DESIGNS
The existing
legislation on industrial designs in India
is contained in the New Designs Act,
2000 and this Act will serve its
purpose well in the rapid changes in
technology and international developments.
This replacement
Act is also aimed to inact a more
detailed classification of design to conform
to the international system and to take
care of the proliferation of design related
activities in various fields.

TRADEMARK
A registered
trademark or a mark used in relation
to goods for the purpose of indicating
or so as to indicate a connection
in the course of trade between the
goods and some person having the right
as proprietor to use the mark.
A mark used or proposed to be used in relation
to goods for the purpose of indicating
or so as to indicate a connection
in the course of trade between the
goods and some person having the right,
either as proprietor or as a registered
user, to use the mark whether with
or without any indication of the identity
of the person, and includes a certification
trade mark registered as such under the
provisions of Chapter VIII.

TRADEMARK
A trademark is a distinctive sign which
identifies certain goods or services as those
produced or provided by a specific person or
enterprise.
Its origin
dates back to ancient times, when craftsmen
reproduced their signatures, or “marks”
on their artistic or utilitarian products.
Over the years these marks evolved into
today’s system of trademark registration
and protection. The system helps consumers
identify and purchase a product or service
because its nature and quality, indicated
by its unique trademark, meets their needs.

TRADEMARK
A trademark provides protection to the owner
of the mark by ensuring the exclusive right to
use it to identify goods or services, or to
authorize another to use it in return for payment.
The period of protection varies, but a trademark
can be renewed indefinitely beyond the time
limit on payment of additional fees. Trademark
protection is enforced by the courts, which in
most systems have the authority to block
trademark infringement

TRADEMARK
What kinds of trademarks
can be registered ?
The possibilities
are almost limitless. Trademarks may
be one or a combination of words,
letters, and numerals. They may consist
of drawings, symbols, three-dimensional signs
such as the shape and packaging of
goods, audible signs such as music or
vocal sounds, fragrances, or colors used
as distinguishing features.
In addition
to trademarks identifying the commercial source
of goods or services, several other categories
of marks exist. Collective marks are owned by
an association whose members use them to
identify themselves with a level of quality and
other requirements set by the association.
Examples of such associations would be those
representing accountants, engineers, or
architects. Certification marks are given for
compliance with defined standards, but are not
confined to any membership. They may be
granted to anyone who can certify that the
products involved meet certain established
standards. The internationally accepted “ISO
9000” quality standards are an example of such
widely recognized certifications.

GEOGRAPHICAL
INDICATION
Geographical
Indications of goods are defined as that
aspect of industrial property which refer
to the geographical indication referring to
a country or to a place situated
therein as being the country or place
of origin of that product. Typically,
such a name conveys an assurance of
quality and distinctiveness which is essentially
attributable to the fact of its origin
in that defined geographical locality, region
or country.

GEOGRAPHICAL
INDICATION
India,
as a member of the World Trade Organization
(WTO), enacted the Geographical Indications
of Goods (Registration & Protection) Act,
1999 which is likely to be operationalized
soon with the notification of the Rules.
• Geographical Indications of Goods
(Registration & Protection) Act, 1999
• Geographical Indications of Goods
(Registration & Protection) Rules, 2002

GEOGRAPHICAL
INDICATION
What is a Geographical Indication ?
• It is an indication
• It originates from a definite geographical
territory
• It is used to identify agricultural, natural
or
manufactured goods
• The manufactured goods should be
produced or
processed or prepared in that territory
• It should have a special quality or
reputation or other
characteristics

GEOGRAPHICAL
INDICATION
Examples of possible Indian Geographical
Indications
• Basmati Rice
• Darjeeling Tea
• Kanchipuram Silk Saree
• Alphanso Mango
• Nagpur Orange
• Kolhapuri Chappal
• Bikaneri Bhujia
• Agra Petha
• Goa Feni

What is Patent
A legal monopoly
Granted for a limited time
by the state
For a jurisdiction
(a limited area)
Patent :-
A conditional grant
Balance
of Rights and Obligations
Subject to other laws of land
Granted
to owner of Invention/Assignee
What is a Patent ?
A patent is a protection given
to a patentee for an invention
for a limited term by the
government for disclosing the
invention
Right
to exclude others from using yo
ur invention.
Owner
has a qualified right to use the
invention
Patent - a Property Right (A Bundle of Rights)
can be given away (assigned)
inherited
sold
bought
licensed
abandoned etc.

Patent – can be revoked


by state
by opponent in a suit

Patent – can be defended


against infringement

What
are inventions ?
• New
• Useful

 Art, process or method of manufacture


 machine, apparatus or other article
 substance produced by manufacture
new and useful improvements of any of them
Amendment 2002:
• A new product or process involving an
inventive step (not obvious to a person
skilled in the art) and capable of industrial
application.

Patent - Patentability
An invention can be patented if it is
• NOVEL – Must involve INVENTIVE
STEP

• NON-OBVIOUS to a person “Skilled in


the Art”
MUST DISTINGUISH from “State of the
Art”
(PRIOR ART)
• Must be USEFUL – must have
INDUSTRIAL
APPLICATION
Patent/Invention
Can be simple
Need not be complicated
What is patentable ? – S.2(i)(j)
What is not patentable ? - S. 3,
S.4, S.5

WHAT
CANNOT BE PATENTED IN
INDIA
• SECTION 3
 CONTRARY TO NATURAL LAWS

 CONTRARY TO MORALITY
 MERE IDEA/DISCOVERY

 MERE ADMIXTURE

• METHOD OF TESTING ?
 NEW USE OF A KNOWN MATERIAL

 METHOD OF AGRICULTURE

 PROCESS OF TREATING HUMAN BEINGS OR


ANIMALS

SECTION 4
 ATOMIC ENERGY

• SECTION 5
 SUBSTANCES USED AS FOOD, MEDICINE OR DRUG

PATENTS
India
http://www.patentoffice
.nic.in
Patent Act, 1970
Patent Rules, 1972
Patent (1 Amendment)
st

1999
Patents ……
PATENTS
Patent (Amendment) 2002 Act
Patent Rules – 2002 (Draft)
Patent Rules 2002
(expected
to be announced shortly & to be
effective from 1st April 2003)
Patents
(Amendment) Act, 2
002
Highlights
 Duration of Term of Patent - Extended
to 20 years
For all process/product
including currently valid patents

Highlights (contd..)
 Invention/inventive step – definitions as
per TRIPs
 Scope widened – Micro organisms
– mathematical or business
method or computer program with
applications/
– utility (except “by itself”)
– traditional knowledge

Highlights (cont’d)
 Traditional Knowledge - Excluded (as
such)
from Patentability

 PCT - Provisions & Procedures


introduced

 Depository for Biological - Budapest Treaty


compliance
Highlights (cont’d)
 Compulsory Licence - specified and
defined (with
Provisions and without 3 year restriction)
includes “Doha Declaration”

“Licence of Right” - Deleted

 Quantum of Royalties - open for negotiation


- taking into account the economic
value of the use of
the patent
- not more than adequate
remuneration

Highlights (cont’d)
 Waxman-Hatch Type - Regulatory approval
related provision / working during
life of patent without
restriction – allowed
 Reversal of burden of - In case of process
patent
proof

 Parallel Imports - Incorporated


Provisions

Highlights (cont’d)
 Publication - On 18 months (DOA or
DOP)
 Examination - Only on request (48
months)
 Appellate Board - introduced
WHY PATENTS ?
• Rewards to
Inventor

• Motivates /
stimulates inventive
research
•Encourages
maximum disclosure
to enable further
research and
technology
development
Patents
vs. Trade Secrets –
know how
Patents
encourage dissemination of valu
able technological
information to the benefit of the
society
Valuable
technology remains out of reach
of society
if protected by trade secrets. Fu
rther research based on know-
how does not take place.
WIPO –
The
Patent Agenda/SME website

http://www.wipo.int/
• http://patentagenda.wipo.in
t/index.html
• Wipo summit on IP & the
knowledge economy (April
2003)
• patentoffice.nic.net
THANK YOU !

HAVE AN
‘IPR’ DAY !