INTELLECTUAL PROPERTY LAWS

BACKGROUND
In Great Britain ,the concept had origins from the exercise of royal prerogative to grant monopolies. First enactment in India in 1856,allowing exclusive rights to inventors for 14 years. Right to property existed only for tangible goods(movable & immovable) and a need existed for incorporeal or intangible property too like goodwill/patents/copyrights etc. Signing of GATT(WTO) Agreement in 1994.Potential knowledge was regarded as a creator of wealth and laws were needed to protect such creators. International Patent Cooperation Treaty signed in the year 1970. Clauses relating to Trade Related Intellectual Property Rights (TRIPS) made it mandatory for India to introduce product patents for drugs/food products/chemicals by 1/1/2005. This was made applicable even where only process patents were permitted earlier.

TRIPS----7 CATEGORIES OF INTELLECTUAL PROPERTY

Patents

Copyrights
Trade marks Geographical indications Industrial designs Integrated circuits Trade secrets/confidential information

DEVELOPMENTS IN INDIA
The Patents Act of 1856 got amended in 1872,1883,1888, and in 1911 it was renamed as Patents & Designs Act. In 1957, the Justice Rajagopala Ayyangar & Venkiteswaran Committee was constituted to revise patent laws and based on this report, the Patents Act 1970 was enacted. The rules for the act were published in 1971 & the Act came into force on 20/4/1972.

INDIAN LAWS
1) PATENTS ACT 1970 2) COPYRIGHT ACT 1957 3) TRADE MARKS ACT 1999

THE NEED: TO STIMULATE TECHNICAL PROGRESS

To give an opportunity to acquire exclusive rights in an invention to stimulate technical progress in four ways: 1) Encourage research & invention 2) Induce an inventor to disclose discoveries without secrecy.

3) Reward for expenses of developing inventions to the stage of commercial viability.

4) Induce VCs to invest capital in new lines of production

PATENT
It is protection extended to an inventor, by granting to the inventor for a limited period, a monopolistic right by way of grant of patent for inventing a new and useful article or a new process of manufacture or improvement of an existing article which has industrial application. The inventor who holds the exclusive rights is granted the patent & called the Patentee. Patentee holds the exclusive LICENSE. Patentee can prevent others from using the patented invention (article or process) till the expiry of patented period and thereafter anyone can use it. After the period, the patentee also is obliged to work the invention on a commercial scale.

INVENTION--DEFINITION
Any new product or process involving an inventive step and capable of industrial application. Can be machine, apparatus or other articles produced by manufacture. It can be improvement of an art, method of manufacture or even a new application of an existing product.

Must be new & useful. Must have novelty & utility

INVENTIONS
Must be an invention & not discovery

One invention one patent

Can be a substance or a process Where it is impossible to bifurcate the article & process, only one patent is given

INVENTIONS NOT PATENTABLE

Frivolous contentions claiming anything obvious or contrary to well established natural laws. Inventions contrary to public order & morality Mere discovery of a new property or new use of a known substance which does not enhance efficacy of that substance. Mere discovery of a scientific principle. Mere discovery of a machine/apparatus without resulting in any new product A method of agriculture/horticulture Mathematical/business method or computer programme or use of algorithms.

Topography of integrated circuits.

INVENTIONS NON PATENTABLE

Invention relating to atomic energy.

Literary, dramatic, musical, cinematographic works or TV production.

Invention which is traditional knowledge or a duplication of known properties of traditionally known components.
Mere presentation of information

Method of performing mental act or of playing a game.

WHO CAN APPLY

True & first inventor

Assignee of true & first inventor

Legal representative of True & first inventor or Assignee after their death

Applicant from a convention country.

WHO CANNOT APPLY A national of any country which does not accord to Indian citizens, the same right in respect of grant of patents as accorded to its own nationals.

PROCEDURE
Every Application has to be for one invention only and in the prescribed form

It should be filled & submitted in the Patent Office ( in Delhi/Mumbai/Chennai/Kolkata) with provisional or complete specifications.
International applications can also be made under Patent cooperation treaty. Every Application for patent would be published. When a request for examination is made by applicant, the Controller refers the Application & Specification to an Examiner who has to prepare a report after studying the proposal & testing sample. He has to check veracity of claims made by applicant and if it is the subject matter of an existing patent. Controller can then make objections which Applicant has to rectify.

APPLICATION & SPECIFICATION

All applications need to be accompanied by specification which may be filed along with the application or within 15 months from the date of filing patent application. SPECIFICATION: It describes the title of invention, name/address/nationality of applicant. General nature of invention, field of application and the anticipated result. Best method of performing the invention. Scope of invention for which protection is claimed. Abstract of technical information. In the event of mention of biological material in specification, then the same has to be deposited with the authorized institution on the date of patent application and specification shall contain characteristics of material, depository information disclosure of source etc.

DRAWINGS & SAMPLES

Applications have to be accompanied by drawings in A4 size sheet & sequentially numbered. Samples to be furnished only if required by controller. Controller may allow amendment of application or of specification Patent for Addition is also permitted by controller. Priority date for claims: The date of filing complete specification is reckoned as the priority date for claims.

OPPOSITION PROCEEDINGS
After Application for patent is published, but before granting of patent, any person can on specific grounds, give notice of opposition to Controller against granting of patent. Likewise a provision exists for such notice within one year of granting a patent.

Controller constitutes an opposition board for getting their report of recommendations.

Thereafter the controller may give both the Applicant & opponent an opportunity to be heard, before orders are passed to maintain, amend or revoke the patent.

ISSUE OF PATENT
Once the Controller finds the application in order, he grants the patent & the date is entered in the Register of Patents. Date of granting patent is normally the date of filing Patent Application. Term of patent is 20 years from the date of issue. Patentee will have exclusive rights to prevent third parties from the act of making/using/selling or importing the patented article in India. When the patent applies to the class notified by central Govt. or used in defense purpose, the Controller may restrict publishing of information. The number of Patent applications have increased from a mere 4000 in the year 2002 but it increased to 17000 in the year 2005 & 25000 in 2006.

PATENT REGISTRATION ABROAD

An applicant desirous of making an application for patent outside India must first apply for the same in India and then apply for the same abroad after a lapse of 6 weeks. Written authorization of Controller to be obtained. No directions for secrecy should be given

Controller must obtain prior permission of Central Government before granting permission.
International application for patent has to be made in accordance with Patent Cooperation Treaty.

PATENT INFRINGEMENT & SPECIAL POWERS OF GOVERNMENT

In the event of infringement of patent rights, the following remedies can be had from the court: Compensation for damages Injunction Penalties Seizure of goods The Government has special powers to ensure that patentees put license to appropriate commercial use & do not exploit the monopoly status by overcharging for the product/process. In the event of failure, they can grant Compulsory license to any other interested party after expiry of 3 years.

 Copyright Act 1957

WHY THIS PROTECTION

When patentee gets protection for inventions a need was felt for creators of art, literature, music & film so that the creator decides how fruits of his talent, labor & skill should be reproduced. The object was sustenance & fostering of creativity Protection against misappropriation of goodwill. Amendment in 1995 included computer programmes, tables and compilations including databases as envisaged under GATT.

BACKGROUND
Like patents, many provisions of British laws had been borrowed to try similar cases in our country. However in the year 1957, Indian Copyright Act was passed & it became effective from 21/1/1958. Thereafter it was amended in 1983,1984,1992,1994,1995 & 1999 to bring it in conformity with Bern convention, Universal Copyright convention, & agreements in WTO under TRIPS. Provisions are similar to Patent Act 1970. The Act envisages a mechanism for registration of copyright, but it is optional from the creators perspective.

EXCLUSIVE MONOPOLISTIC RIGHT TO USE/COPY & RIGHT TO PROHIBIT OTHERS FROM COPYING OF A WORK

WHO GETS COPYRIGHT

The original creator, assignees or legal heirs as in the case of patents. Copyright is related to expression & not ideas. Employers can have ownership of a creation if it is produced by someone under a contract of service or apprenticeship. Likewise if a person commissions another to make a film/portrait then the person commissioning becomes the owner In respect of cinematographic film & sound recording, the producer becomes the owner. Owner of copyright may grant interest in the right by issuing license to authorized agent who can publish after 7 years from the first publication of work. License to translate foreign literary or dramatic work may be applied after three years from its publication.

LEGAL MACHINERY
Headed by REGISTRAR OF COPYRIGHTS.

There is also a board constituted by about 14 members called the Copyright board again headed by REGISTRAR.
It functions by having three member benches and the Copyright board is deemed to be a civil court. As in the case of patents, a Register of copyrights is maintained with the Registrar. Procedure for Application is on the same lines as that of patents.

WHAT IS COVERED
I----Literary works(excl computer programmes, tables & compilations, including computer data bases & dramatic works. II----Musical works III---Artistic works

IV---Cinematograph films
V---Sound recordings VI----Computer programmes, tables & compilations, including computer data bases

EXCLUSIONS
Use of copyrighted form for private use, research criticism or review. Computer programmes---making copies/backup for the purpose of which it was supplied. Reporting current events in a newspaper, magazine or by broadcast or in a cinematographic film or by means of photographs. For judicial proceedings

In any work prepared by the secretariat or a legislature exclusively for use of members

EXCLUSIONS
Copy made in accordance with law. Reading in public any reasonable extract from a published literary or dramatic work Publication of short passages of literary, dramatic, musical or artistic work for educational purposes. Reproduction of the original literary, dramatic, musical or artistic work by a teacher/student. Making up to three copies of a book for a public library if the book is not published in India Reproduction or publication of any judgment or order of a court/tribunal unless it has been prohibited by the court.

TERM OF COPYRIGHT
For literary, dramatic, musical or artistic work published during the lifetime of its author, the term is 60 years from the beginning of the next calendar year following the death of author. For work published anonymously or pseudonymously it is 60 years from the date of publishing the original work. But if before death the identity is disclosed, then the first provision applies. In posthumous works it is 60 years from the beginning of next calendar year from date of first publishing of the work For photographs, cinematographic films, sound recording or work of Government/PSU it is 60 years following the next calendar year from the date of first publishing. Broadcasting reproduction right is given to broadcasting companies for a period of 25 years though the performers right subsists for 50 years.

INFRINGEMENT & PENALTIES

Civil remedies as in the case of patents exist, giving right for claiming damages & injunction suit. Rights also exist under criminal laws & the offender could be imprisoned from 6 months to 3 years.

Fines may also be imposed ranging from Rs.50000 to Rs.3 lacs.

TRADE MARKS ACT 1999

Replaced the erstwhile Trade & merchandise marks act 1958.

Like in the case of patents/copyrights some borrowed provisions existed in the pre-independence period but a formal enactment came in the year 1999 & effective from 15/9/2003 incorporating most of the requirements under TRIPS.

The highest authority is the Registrar of Trade Marks and he issues the license.
Exclusive monopolistic right to use a certain mark/symbol/logo etc. The Applicant/assignees/legal heirs have the right.

TRADE-MARK MEANING, OBJECT, FUNCTIONS

Visual symbol in the form of a word, device or label applied to articles of trade/commerce. Object: To indicate to public that goods are manufactured by a particular person as distinguished from those manufactured by others. Function: Identifies product & its origin, guarantees unchanged quality,

advertises & creates an image of the product.

LAW IS BASED ON THE CONCEPTS OF DISTINCTIVENESS & DECEPTIVE SIMILARITY. Procedure for Application is more or less on the same lines as that of patents.

EFFECT OF REGISTRATION
Unregistered Trade mark deprives a person of any legal right

Like patents/copyrights assignment of right is permitted so long as it is recorded with the registrar.
A Company can register its trade mark before commencement of its business. However its non-use could result in removal from register. A person other than registered proprietor can be registered as a registered user.

Collective marks can also be registered to distinguish goods/services of members of an association

REGISTRATION-PROVISIONS
Inclusion of service mark for seven classes of services like banking/insurance/chit funds/real estate/lodging/entertainment advertising etc. Duration is for 10 years. A single Application can be used for registration of a trade mark in more than one class.

Expanded definition: Trade mark also included shapes of goods/packaging/combination of colors so long as it could distinguish goods/services of one from another.
Certification mark can also be included. Erstwhile passing off action is also brought within purview

INFRINGEMENT & PENALTIES

As in the case of Copyright, both civil & criminal action can be taken for infringement. Use of identical or deceptively similar marks are classified as cognizable offence, attracting penalties from Rs.50000 to 2 lacs & imprisonment from 6 months to 3 years