INTELLECTUAL PROPERTY RIGHTS Prof.

Isha Dave
 TRIPS AND INDIA
•Agreement on Trade related aspects of Intellectual property rights is one of the most important
agreements in Global trade and commerce affair among the member countries of WTO (World
Trade Organization)

•Under the United Nations Organization (UNO), the World Intellectual Property Rights (WIPO) was
formed consisting of the members of the WTO with two objectives:-
• To give statutory expression to the moral and economic rights of creators in their creations and the rights of
the public in access to those creation

• To promote as act of the governance policy, creativity, and the dissemination and application of its result
and to encourage fair trading, which would contribute to economic and social development.

•India is a member of WTO 1995

 IPR AND INDIA
The Department of Industrial Policy and Promotion is the concerned agency with
legislation relating to patents, trademark, design and geographical indicators.
These are administered through Office of the Controller General of patents, design
and trademarks, subordinate office, with headquarters at Mumbai.
 INTRODUCTION
•Products of creativity of minds such as book, painting, inventions, computer program or
application, image, movies etc. are intangible assets, also known as Intellectual Property.

•Intellectual Property (IP) is defined as any "original creative work manifested in a tangible
form that can be legally protected“
•Legislations covering IPRs in India
•Patents- Patent’s Act 1970
•Design- The Design Act 1999
•Trademarks- Trademark Act 1999
•Copy rights- Copy Right Act 1957
IPR - COMPONENTS
 CLASSIFICATION OF IPR

Intellectual Property
IPR
Patents Broadcasting

Copyright
Music

Trademarks Dramatics Works

Literature
Geographical Sound Recording
Indications
Works of Art

Industrial Design Computer Programs

PATENT ACT, 1970
 PATENT CASES
Patent Fact :In 1955, Jonas Salk chose not to
patent his polio vaccine for the sake of humanity. If
he had gone ahead and patented it, he would have
earned an estimated $7 billion in today’s money.
Syed Hassan, a class seven dropout
and a biryani outlet owner has
invented what is being claimed as the
world’s “first analogue world clock”.
The clock works on the principle of the
movement of the sun and the moon
and gives the exact time of anyplace in
the world. Syed Hassan has already
filed a patent application for this
invention with the Indian Patent Office
on the 9th of February 2017. The
application numbered 201741004662
was recently published by the IPO on
the 11th of August 2017.
 V. Basker
SMART NAVIGATION SYSTEM FOR VISUALLY CHALLENGED PERSON'S
A design has been developed to assist the blind and provide them a clear path by using Hat, a Hand Gloves
and Shoe. The system consists of Ultrasonic sensor fixed to the users Hat, a Hand Gloves and Shoe. While the
user moves the ultrasonic sensor fixed to the hat or gloves or shoe tries to detect the obstacle if any present in
the path. If the sensor detects the obstacle, the output of the sensor triggers the NRF module attached to
Arduino Micro-controller to send the message to Arduino Micro-controller board.

Dr.Venkatesalu Ramasamy Balaji

PATIENT MONITORING USING IOT
In this system a patient will be carrying hardware having sensors and android phone application. The sensors will sense the body
temperature and heart rate of patient and these data is transferred to android smart phone via Bluetooth/Wi-fi. System has the
cloud database which stores all information about patients health and the doctors will prescribe medicine using this information
stored on cloud. The android phone will be containing an application which will detect the heart attack according to the received
data respectively and if any abnormalities are found regarding heart attack, message will be send to patients doctor, relatives
and hospitals. The SMS contains patient situation and location (via GPS) to provide urgent medical attention
 INVENTIONS

•An Invention is the new product or new process involving an inventive step and capable of

industrial application

•A new invention is defined as any invention or technology which has not been anticipated by

publication in any document or used in any country or else where in the world before the date

of filing of patent application with complete specification

 PATENT
•A protection by way of a monopoly is extended to the inventor for a limited period for,

1. Inventing a new product

2. Inventing a new process

3. New product or process is capable of Industrial application

•An invention is not property unless it has been patented

•Patent (Sec. 2(m)) – is a certificate of official recognition for an invention. It confers the guarantee and the
exclusive right to manufacturer

•Not all inventions are patentable (Sec 3 and 4), such as those that are frivolous and oppose to public order
and morality
 TYPES OF PATENTS
•Utility Patent - is a patent that covers the creation of a new or improved and useful product,
process or machine. A utility patent, also known as a “patent for invention,” prohibits other
individuals or companies from making, using or selling the invention without authorization. E.g.
Pharmaceutical products, engines, computer hardware's

•Design Patent -Design patents can be issued for the appearance, design, shape or general
ornamentation of an invention e.g. airplanes, vehicles, athletics shoes etc.

•Plant Patent - protects distant and new varieties of plant made through asexual(neutral)
methods of the inventor. E.g. hybrid tea, silver queen corn etc
 CRITERIA OF PATENTABILITY
It should be NOVEL

It should be non-
obivious and should
have an inventive step
It Should be capable of
Industrial Apllication

It should not be discovery

or frivolous or mixture of
component
 INVENTIONS NOT BE PATENTABLE IN INDIA
A mathematical or business
Re-arrangement of things program or algorithms

A method of agriculture or
horticulture Literacy, drama, musical

Any medical or surgical Inventions such as atomic

process energy

Rules of playing games.

Plants and Animals
Topography or information
 WHO CAN APPLY FOR PATENT?

Any person Any person For the grant

By legal
claiming to claiming the of patent,
representative
be true and assignee of the one can
of any
first inventor person apply at the
deceased
of the claiming true appropriate
person
invention and first patent office
inventor
PROCEDURE OF GRANT OF PATENT
File an Pre-grant Examination of
application for Opposition Pre-grant
patent Opposition

Response from Consideration of

Formality Check the Applicant Pre-grant
Opposition

Publication Issue of FER Grant of a

Patent

Request for Examination

Examination
 OBTAINING THE PATENT
File an application for patent
 With one of the patent offices based on territorial jurisdiction of the place of office or residence of the
applicant /agent and pay the required fees

 Information concerning application form, guidelines and details of fee available at www.ipindia.nic.in

 In case of a provisional specification is filed, than the complete specification is to be filed within 12
months.

Formality Check
 An Examiner checks the formal requirements before accepting the application and the fee – this is done
immediately

 Issue of application number and the cash receipt – this is done the same day

 In case of receipt of application by post, cash receipt, application number is sent by post within 2-3 days
Publication
 Application is kept secret for a period of 18 months from the date of filing

 In 19th month, the application is published in the official journal – this journal is made available on the
website weekly

Request for Examination

 Application is examined on request

 Request for examination can be made either by the applicant or by a third party

 A period of 48 months, from the date of filing, is available for making request for examination
Examination
 Application is sent to an Examiner within 1 month from the date of request for examination

 Examiner undertakes examination w.r.t.

 whether the claimed invention is not prohibited for grant of patent

 whether the invention meets the criteria of patentability

Issue of FER
 A period of 1 to 3 months is available to Examiner to submit the report to the Controller

 1 month’s time available to Controller to vet the Examiner’s report

 First Examination Report (FER) containing gist of the objections is issued within 6 months from the date
of filing of request
Response from the Applicant
 12 months’ time, from the date of issue of FER, is available to the applicant to meet the objections

 If objections are met, grant of patent is approved by the Controller – within a period of 1 month

Pre-grant Opposition
 After publication, an opposition can be filed within a period of 6 months

 Opportunity of hearing the opponent is also available

Examination of Pre-grant Opposition

 Opposition (documents) is sent to the applicant

 A period of 3 months is allowed for receipt of response

Consideration of Pre-grant Opposition

 After examining the opposition and the submissions made during the hearing, Controller may

 Either reject the opposition and grant the patent

 Or accept the opposition and modify/reject the patent application

 This is to be done within a period of 1 month from the date of completion of opposition proceedings

Grant of a Patent

 A certificate of patent is issued within 7 days

 Grant of patent is published in the official journal

PROCEDURE OF GRANT OF PATENT : SNAPSHOT
 CONDITIONS OF GRANT OF PATENT
In case of absence of inventor the amendment can take place in name of suggested person.

Every patent shall be dated as of date of application.

Patent shall have effect throughout the India.

Any process granted in respect of patent may be used by govt for own use.

Patent granted may be made or used by any person for experiment research

Patent in respect of medicines or drugs, usage must be specified by notification in official gazette.
 RIGHTS OF PATENTEE
•The patentee can sell the whole or part of this property (Patent)
•He can also grant license to other(s) to use the patented property
•He can also assign such property to any other(s)
•A right to protect his invention (the process, the substance or both) against any third party using it
without prior permission

Term of Patent
• Every patent granted and the term of every patent which has not expired and has not ceased to
have effect shall be 20 years from the date of filing application
• On cessation of patent due to non payment of renewal fees or on expiry of the term of patent ,
shall not be entitled to any protection.
 Revocation of Patents
•Invention earlier claimed / steps are not
innovative
•Patentee not entitled to apply
•Patent wrongfully obtained
•Subject claim is not an invention
•Claims not new
•Invention is oblivious/unware
•Invention not clearly defined
Renewal of Patent
•The payment at Indian Patent Office before
the expiration of the relevant year
•Application must have relevant patent number,
date of the patent and the year in respect of
which the renewal fee is being paid
•Extension up to 6 months available for renewal
with penalty fee
•In case of expiration, another solution
generally suggested is the 'restoration.' This can
be done by filing Form 15 within 18 months
from the date which the patent lapsed
 INFRINGEMENT
•When a patent is copied/used/altered/misused/stolen/copied
•Infringement of a patent consists of the unauthorized making, importing, using, offering for sale or selling any
patented invention within the India
•Burden of proof lies on defendant, however the patentee shall first prove that product or process is identical to
patented product or process

Reliefs in case of infringement

Suit needs to be filled with District or high court within 3 years of infringement by patentee or assignee of
patent
•Relief which court may grant in any suit for infringement of a patent include,
1. An injunction – permanent or temporarily
2. Damages – cost of fees and compensation for loss (upto 3 times)
3. An account of profits – recover the loss of profit
CURRENT SCENARIO OF PATENTS
 COURT RELIEF FOR INNOVITI IN CASE AGAINST
PINE LABS
•A Bengaluru civil court has granted interim relief to Innoviti Payment Solutions against rival digital
payments firm Pine Labs in a patent infringement case.

•The patent held by Innoviti deals with accepting UPI payments using dynamic QR codes on point-of-sale
(PoS) devices.

•The order, passed on July 16, disallows Pine Labs from “using, manufacturing, selling, etc… any
system/product/technology covered by the suit patent”.

•The Indian Patent Office granted the patent to Innoviti, and the company holds the rights until March
2037. It enables payments through UPI, Bharat QR or other QR-based payment forms through PoS devices
that were built to accept payments made through credit and debit cards.
COPYRIGHT ACT 1957
 COPYRIGHT - DEFINITION
•“The exclusive right given by law for a certain term of years to an author, composer etc. (or his
assignee) to print, publish and sell copies of his original work”

•Right on the Existing Creation

Literary Artist Musical

Dramatic Cinematography films Sound Recordings

Ownership of Copyright Whether registration is essential?
 RIGHTS OF COPYRIGHT OWNER
Rights in literary, Rights in Computer Rights in Rights in sound
Dramatic & Musical Program Rights in Artistic Work Cinematography Recording
Work Work
• To reproduce the • To sell or give on • To reproduce in any • To make copy of the • To make any other
work in any material commercial rental or material form film including a sound recording
form offer to sale or for • To communicate work photograph of any • To sell or give on hire
• To issue copies of commercial rental to public image forming part or offer for sale or
work to the public any copy of the • To issue copies of thereof. hire any copy of film
• To perform work in computer program which are not in • To sell or give on hire
public circulation or offer for sale or
• To make any • To include work in hire any copy of the
cinematography film any cinematography film
or sound recording film • To communicate the
• To make translation • To make adaption of work to public
• To make the work
adaption/translation
of work
• To do in relation to
translation or an
adaption of work for
any of above points
Registration Process

Fee Details can be found here

http://copyright.gov.in/frmFeeDetailsShow.aspx
 FAIR DEALING
Fair dealing of literary, dramatic, musical or artistic work doesn’t infringe any copyright
as it is permitted for the purposes of (section 52: Acts that doesn’t come to infringement)
• Private study or research or criticism

• Review or the reporting of current events

• Judicial proceedings and its report

• Backup or experiment

• Typographical arrangement

• The aim of this provision is to give students and researchers greater access to
copyright works.
 REMEDIES IN CASE OF COPYRIGHT
Civil remedy:
 A suit for infringement of copyright under injunction can lie in the District Court or in a High Court of
Original Jurisdiction.

Criminal:

•A criminal complaint against injunction with search & seizure orders can be obtained.

•Punishable with imprisonment of 6 months (min) and extends up to 3 years and fine up to 2 lakh rupees (min
50000)

•Delivery of infringing goods to the copyright owner

 COPYRIGHT SOCIETIES
The following are the registered copyright societies in India:

i. For Literary works associated with Musical Works: The Indian Performing Right Society Limited

(IPRS), Web‐site:http://www.iprs.org/;

ii. For Reprographic (photo copying) works: Indian Reprographic Rights Organization (IRRO),
We‐site: http://www.irro.in/

iii. For Performers (Singers) Rights: Indian Singers Rights Association (ISRA)‐ Registered on 14th

June, 2013
CASES OF COPYRIGHT

The Associated Press vs. Fairey

BCCI says no objection, woman to get Facebook account back a ..

Read more at:

http://timesofindia.indiatimes.com/articleshow/66902799.cms?utm_source=contentof
interest&utm_medium=text&utm_campaign=cppst

‘Mission Mangal’: R Balki dismisses copyright infringement claims against radha

bharadwaj
TRADEMARK ACT 1999 Prof. Isha dave
IDENTIFY THE PRODUCTS

COKE
 TRADEMARK
Definition
•A Trademark can be a Word, Phrase, letter,
number, sound , smell, shape, logo, picture, aspect
of packaging or a combination of these.
•Use of Foreign Trademarks in India is permissible
How to Register?
•Any person i.e. individuals , Corporate Bodies, firms claiming
to be proprietor of a trademark
•The Controller of Patents, Designs and Trademarks known as
Registrar is empowered to grant registration
•The Applicant has six months from the date of application
accepted or allowed to actually begin the mark and file a
statement of use with trademark office.
•Once the mark is registered the owner has right to use the ®
Symbol
 The Term Trademark Process

•In India It is 10 years with the renewal

thereafter.

•Between 5th & 6th year of interim term the

registrant must file an affidavit with the
Trademark office stating that the mark is in
continuous use.

•The Registration is cancelled if no affidavit is

filed.
 PASSING OFF
•Passing off action allows trader A to prevent trader B from passing
their goods off as if they were A’s
•Passing off is a common law tort, which can be used to enforce
unregistered trademark rights. The law of passing off prevents one
person from misrepresenting his goods or services as that of another
•Domain name similar to that of known companies are used by persons
in order to promote their products or services.
•A registered Trademark has the backing of infringement and passing
off remedies under the TMA act.
• The Act does not provide for infringement action in respect of
unregistered Trademarks.
• OnlyPassing off remedy is available in case of unregistered
Trademarks. (Section 27 of TMA Act, 1999).
 TRADEMARK INFRINGEMENT AND PENALTIES
Trademark infringement
Section 29 of the Trademark Act states that when a
registered trade mark is used by a person who is not
Legal remedies under Indian Trademarks
Act-civil & criminal
•Sections 135-Injunction ,damages, delivery up of

entitled to use such a trade mark under the law, it infringing goods, destroying infringing goods and
constitutes infringement. A registered trade mark is material, etc.
infringed ,if:-
•Section 103- penalty for applying false
1. The mark is identical and is used in respect of similar trademark, trade description-minimum 6months
goods or services or
imprisonment and fine of INR50,000
2. The mark is similar to the registered trade mark and
•Section 104- penalty for selling goods to which
there is an identity or similarity of the goods or services
false mark applies -description-minimum 6months
covered by the trade mark and Such use is likely to
cause confusion on the part of the public or is likely to imprisonment and fine of INR50,000

be taken to have association with the registered trade

mark.
TRADEMARK CASES
INDUSTRIAL DESIGN ACT ,2000
Design refers to the features of shape, Configuration, pattern or ornamentation which can be judge by
the eye in finished products.

The Act publicly notified on may 25,2000. Have taken effect from may 11,2001

Not Eligible for Registration

 Design which is contrary to Public order or morality

 Designs which lack novelty or originality

 Designs which have been disclosed to public anywhere in India or any other country by publication in
tangible form

 Designs which are not significantly distinguishable from known designs or combination of known designs

 Designs which comprise or contain scandalous or obscene matter

 REGISTRATION
Registration
•An application can be filled with the controller of
designs through a professional person
•If design is created as a work of Art but if it is
intended to use it for more than 50 single useful
articles , It comes under the purview of Industrial
Design Act 2000.
•The owner of the design has right to apply the
design to the article belonging to the class in
which it is registered.
How to apply for registration
The proprietor of a design, whether the first proprietor or a
subsequent proprietor, may apply to register the design by
paying the prescribed fees and filing an application with
the Minister in the prescribed form including
(a) a drawing or photograph of the design and a
description of the design;
(b) a declaration that the design was not, to the proprietor’s
knowledge, in use by any person other than the first
proprietor at the time the design was adopted by the first
proprietor; and
(c) any prescribed information.
 PROCESS OF REGISTRATION
Finding whether any Preparing a Identify the class of Providing a statement of
registration exist representation of Design design (32 class) novelty
(submit on A4)

Including a disclaimer in Claiming a priority date Determining the fees

case of design similar to (it can be registered a (registration application Ensuring all enclosures
trademark other country if at India 1000 min.) and renewal attached
its 6 months old) 2000

Comply objections if any Providing full details

 Term Infringement

•Initially the term is of 10 years from the date of

registration. Further renewable for 5 years. Penalty
•Renewal Fee should be paid before the expiry of
The Penalties for offences in contravention in
the 10th year of the initial term.
design fine is from Rs 25,000 to Rs 50,000
•Publication of Registered design
recoverable as a contract debt in respect of
•A design shall be published in the official gazette
on registration and open to public inspection after any one design.
publication of design
Enforcement
•Restoration of lapsed Design
•Designs which are lapsed by reason of failure to In case of infringement action sue can be
pay the fee for extension can be restored by filed in District Court or High court having
through an application and on payment of
appropriate fees Jurisdiction
Fee Details for design Act
https://www.intepat.com/blog/design/industrial-design-e-filing-
fee-structure-in-india/
THAT’S ALL FOLK 