Download INTELLECTUAL PROPERTY RIGHTS-1 and more Study notes Intellectual Property (IP) in PDF only on Docsity!
INTELLECTUAL PROPERTY RIGHTS
UNIT I
Intellectual property ( IP ) is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized and the corresponding fields of law. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and designs. Common types of intellectual property rights include copyrights, trademarks, patents, industrial design rights and trade secrets in some jurisdictions. Although many of the legal principles governing intellectual property have evolved over centuries, it was not until the 19th century that the term intellectual property began to be used, and not until the late 20th century that it became commonplace in the majority of the world. The British Statute of Anne 1710 and the Statute of Monopolies 1623 are now seen as the origins of copyright and patent law respectively History George Alfred DePenning is supposed to have made the first application for a patent in India in the year 1856. On February 28, 1856, the Government of India promulgated legislation to grant what was then termed as "exclusive privileges for the encouragement of inventions of new manufactures" i.e the Patents Act. On March 3, 1856, a civil engineer, George Alfred DePenning of 7, Grant’s Lane, Calcutta petitioned the Government of India for grant of exclusive privileges for his invention - "An Efficient Punkah Pulling Machine". On September 2, DePenning, submitted the Specifications for his invention along with drawings to illustrate it’s working. These were accepted and the invention was granted the first ever Intellectual Property protection in India. History of Copyright Law in India Modern copyright law developed in India gradually, in a span of more than 150 years. Copyright law entered India in 1847 through an enactment during the East India Company's regime. According to the 1847 enactment, the term of copyright was for the lifetime of the author plus seven years post- mortem. But in no case could the total term of copyright exceed a period of forty-two years. The
government could grant a compulsory licence to publish a book if the owner of copyright, upon the death of the author, refused to allow its publication. The act of infringement comprised in a person’s unauthorized printing of a copyright work for (or as a part of attempt of) "sale hire, or exportation", or "for selling, publishing or exposing to sale or hire". Suit or action for infringement was to be instituted in the "highest local court exercising original civil jurisdiction." The Act provided specifically that under a contract of service copyright in "any encyclopedia, review, magazine, periodical work or work published in a series of books or parts" shall vest in the "proprietor, projector, publisher or conductor." Infringing copies were deemed to be copies of the proprietor of copyrighted work. Importantly, unlike today, copyright in a work was not automatic. Registration of copyright with the Home Office was mandatory for the enforcement of rights under the Act. However, the Act also specifically reserved the 11 subsistence of copyright in the author, and his right to sue for its infringement to the extent available in law other than the 1847 Act. At the time of its introduction in India, copyright law had already been under development in Britain for over a century and the provisions of the 1847 enactment reflected the learnings from deliberations during this period. In 1914, the then Indian legislature enacted a new Copyright Act which merely extended most portions of the United Kingdom Copyright Act of 1911 to India. It did, however, make a few minor modifications. First, it introduced criminal sanctions for copyright infringement (sections 7 to 12). Second, it modified the scope of the term of copyright; under section 4 the "sole right" of the author to "produce, reproduce, perform or publish a translation of the work shall subsist only for a period of ten years from the date of the first publication of the work." The author, however, retained her "sole rights" if within the period of ten years she published or authorized publication of her work a translation in any language in respect of that language. The 1914 Act was continued with minor adaptations and modifications till the 1957 Act was brought into force on 24th January, 1958. History of Patent Law in India The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the sovereign. Fresh legislation for granting ‘exclusive privileges’ was introduced in 1859 as Act XV of 1 859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions
Based on the recommendations of the Committee, the 1911 Act was amended in 1950 (Act XXXII of
- in relation to working of inventions and compulsory licence/revocation. In 1952, an amendment was made to provide compulsory licence in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices, through Act LXX of 1952. The compulsory licence was also available on notification by the Central Government. Based on the recommendations of the Committee, a bill was introduced in the Parliament in 1953 (Bill No.59 of 1953). However, the bill lapsed on dissolution of the Lok Sabha. In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to examine the question of revision of the Patent Law and advise government accordingly. The report of the Committee, which comprised of two parts, was submitted in September, 1959. The first part dealt with general aspects of the patent law and the second part gave detailed note on the several clauses of the lapsed bill of 1953. The first part also dealt with evils of the patent system and solution with recommendations in regard to the law. The committee recommended retention of the patent system, despite its shortcomings. This report recommended major changes in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on 21st September, 1965, which, however, lapsed. In 1967, an amended bill was introduced which was referred to a Joint Parliamentary Committee and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911 Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought into force on 20th April, 1972 with the publication of the Patents Rules, 1972. This Act remained in force for about 24 years till December 1994 without any change. An ordinance effecting certain changes in the Act was issued on 31st^ December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was later replaced by the Patents (Amendment) Act, 1999 that was brought into force 14 retrospectively from 1st January, 1995. The amended Act provided for filing of applications for product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were not allowed. However, such applications were to be examined only after 31st December, 2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights (EMRs) to sell or distribute these products in India, subject to fulfillment of certain conditions. The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May, 2003 with the introduction of the new Patents
Rules, 2003 by replacing the earlier Patents Rules, 1972. The third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment) Ordinance, 2004 with effect from 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act, 2005 (Act 15 Of
- on 4th April, 2005 which was brought into force from 1st January, 2005. History of Trademark Law in India While some form of proprietary protection for marks in India dates back several millennia, India’s statutory Trademarks Law dates back to 1860. Prior to 1940 there was no official trademark Law in India. Numerous problems arouse on infringement, law of passing off etc and these were solved by application of section 54 of the Specific Relief Act, 1877 and the registration was obviously adjudicated by obtaining a declaration as to the ownership of a trademark under Indian Registration Act 1908. To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940, this corresponded with the English Trademarks Act. After this there was an increasing need for more protection of Trademarks as there was a major growth in Trade and Commerce. The replacement to this act was the Trademark and Merchandise Act, 1958. This Act was to provide for registration and better protection of Trademarks and for prevention of the use of fraudulent marks on merchandise. This Law also enables the registration of trademarks so that the proprietor of the trademark gets legal right to the exclusive use of the trademark. The objective of this act was easy registration and better protection of trademarks and to prevent fraud. The repeal of the Trademarks and Merchandise Act gave rise to the Trademark Act 1999; this was done by the Government of India so that the Indian Trademark Law is in compliance with the TRIPS obligation on the recommendation of the World Trade Organization. The object of the 1999 Act is to confer the protection to the user of the trademark on his goods and prescribe conditions on acquisition, and legal remedies for enforcement of trademark rights. Objectives of IPR
1. Financial incentive These exclusive rights allow owners of intellectual property to benefit from the property they have created, providing a financial incentive for the creation of an investment in intellectual property, and, in case of patents, pay associated research and development costs. Some commentators, such as David Levine and Michele Boldrin, dispute this justification.
or insert a hyperlink to it. Material cannot be posted on a Web site (Intranet included) without permission from the copyright holder. The importance of IPR can be identified with following points Intellectual Property Creates and Supports High-Paying Jobs Due to the emergence of strong IPR system in the global world and innovation technology has paved the ways for employment and it is said that the IP industry will creates and support high paying jobs in days to come. Intellectual Property Drives Economic Growth and Competitiveness Due to protection for innovation and emergence of technology, innovation, trade and commerce and institutional frame work for the protection of IPR which will definitely leads to the economic growth, competitiveness and Protect Consumers and Families. Further Strong IP rights help consumers make an educated choice about the safety, reliability, and effectiveness of their purchases. IP rights foster the confidence and ease of mind that consumers demand and markets rely on. Intellectual property protection benefits consumers and society IPR helps provide consumers with innovative products and services in virtually every area of life, and helps protect consumers from counterfeit and pirated products. IPR encourages competition among diverse product, function and quality offerings, giving consumers a greater choice among the goods and services they want and need. IPR also provides important mechanisms to help address many of society’s most important needs, from clean energy and reduced carbon emissions to health care and a truly ‘digital economy’. IPR promotes consumer trust and protection against counterfeit and pirated goods. “Consumers benefit from IP not only from the stream of innovative products and inventions and creativity that would not otherwise be created by firms but also from the rights that protect the identities of well-known goods and services. Trademarks act as signposts of quality, preventing other firms passing off one make of good as being the same as another.” This function of trademark protects consumers in two related ways: promoting consumer trust and satisfaction, and helping to protect consumers against injury and other harm. One of the principal functions of trademarks is to provide information to the market. Trademarks help consumers distinguish easily between products,
and help consumers to identify those products that they trust and want to buy. Trademarks also give the firms that own them as well as governments a useful tool for removing counterfeited and pirated goods from commerce. Counterfeits of many types of trademarked medicine, automotive, food and drink, electrical, chemical, household and other products can pose risks of harm sometimes severe injury or even death to consumers. Intellectual property protection promotes innovation Effective IPR increases funding for research and development and other innovation, including by helping firms realize more value from innovations that are protected by IPR than those that are not. IPR underpins development of cultural expression and diversity, and promotes broader dissemination of innovations through publication and licensing. Intellectual property protection helps small and medium enterprises SMEs use IPR more extensively in many cases than large companies. SMEs that use IPR report higher growth, income and employment than those that do not. Intellectual Property Rights Encourage Innovation and Reward Entrepreneurs Risk and occasional failure are the lifeblood of the innovation economy. IP rights incentivize entrepreneurs to keep pushing for new advances in the face of adversity. IP rights facilitate the free flow of information by sharing the protected know-how critical to the original, patented invention. In turn, this process leads to new innovations and improvements on existing ones. IPR makes your business strong Because it
- protect it against infringement by others and ultimately defend in the courts your sole right to use, make, sell or import it
- stop others using, making, selling or importing it without your permission
- earn royalties by licensing it
- exploit it through strategic alliances
- make money by selling it
make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty.
- In 1872, the Act of 1859 was consolidated to provide protection relating to designs. It was renamed as "The Patterns and Designs Protection Act" under Act XIII of 1872. The Act of 1872 was further amended in 1883 to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibition of India. A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition.
- This Act remained in force for about 30 years without any change but in the year 1883, certain modifications in the patent law were made in United Kingdom and it was considered that those modifications should also be incorporated in the Indian law. In 1888, an Act was introduced to amend and consolidate the law relating to invention and designs in conformity with the amendments made in the U.K. law.
- The Indian Patents and Designs Act, 1911, replaced all the previous Acts. First time, This Act brought patent administration under the management of Controller of Patents. This Act, 1911 was further amended in 1920 to enter into mutual arrangements with UK and other countries for securing priority. Provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, an amendment was made to provide for filing of provisional specification and submission of complete specification within nine months.
- It was found advantageous to enact comprehensive patent law owing to substantial changes in political and economic conditions in the country. consequently, the Government of India constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 t o review the patent rules and regulations in India in order to ensure that the patent system is conducive to the national interest.
- The committee submitted its interim report on 4th August, 1949 with recommendations for prevention of misuse of patent right in India and suggested amendments to sections 22, 23 & 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts 1919 and
- The committee also observed that the Patents Act should contain clear indication to ensure that food and medicine and surgical and curative devices are made available to the public at the cheapest price commensurate with giving reasonable compensation to the patentee.
Based on the above recommendation of the Committee, the 1911 Act was amended in 1950in relation to working of inventions and compulsory license/revocation. Other provisions were related to endorsement of the patent with the words 'license of right' on an application by the Government so that the Controller could grant licenses. In 1952 (Act LXX of 1952) an amendment was made to provide compulsory license in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices.
In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to examine the question of revision of the Patent Law and advise government accordingly. The first part dealt with general aspects of the Patent Law and the second part gave detailed note on the several clauses of the lapsed bills 1953. The first part also dealt with evils of the patent system and solution with recommendations in regards to the law. The committee recommended retention of the Patent System, in spite of its shortcomings. Most of the provisions of the 1970 Act were brought into force on 20 th April 1972 with publication of the Patent Rules, 1972.
This Act remained in force for about 24 years without any change till December 1994. An ordinance effecting certain changes in the Act was issued on 31st December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was consequently replaced by t he Patents (Amendment) Act, 1999 that was brought into force retrospectively from 1st January, 1995. The amended Act provided for filing of applications for product patents in the areas of pharmaceuticals drugs, and agro chemicals though such patents were not allowed. However, such applications were to be examined only after 31- 12 - 2004.
The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May 2003 with the introduction of the new Patent Rules, 2003 by replacing the earlier Patents Rules, 1972
The third amendment to the Patents Act 1970 was introduced through the Patents (Amendment) Ordinance, 2004 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act 2005 on 4th April, 2005 which was brought into force from 1- 1 -
the invention was described in a publication more than one year prior to the filing date; or
the invention was used publicly, or offered for sale to the public more than one year prior to the filing date. Useful Requirement: The patent law specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose. I.e it must be useful, if it is not useful to the public it will not be patented Nonobviousness Requirement: If an invention is not exactly the same as prior products or processes (which are referred to as the "prior art"), then it is considered novel. However, in order for an invention to be patentable, it must not only be novel, but it must also be a nonobvious improvement over the prior art. The invention must not be already existed in the market. Industrial sector The invention which you have invented must be in the field of industrial sector, the invention patentable only for the industrial sector. Patents in India: Laws , Procedures, Registering and Challenging Patents LEGISLATION The Patent system in India is governed by the Patents Act, 1970 (No 39 of 1970) & The Patents Rules 1972, effective from April 20,1972. Subsequently The Patents Act, 1970 is amended effective from January 1, 1995 & The Patents Rules, 1972 is amended effective from June 2, 1999. TYPES OF PATENTS
Ordinary Patent
Patents of addition
Convention
WHO CAN APPLY
Application may be made, either alone or jointly with another, by the inventor, assignee, legal representative of deceased inventor or assignee. The inventor is entitled to be mentioned in the patent if he applies to do so. Application may be made jointly by two or more corporations as assignees. PATENTABLE INVENTIONS An invention means any new and useful art, process, method or manner of manufacture; machine, apparatus or other article; or substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention. WHAT IS NOT PATENTABLE (1) An invention that is frivolous or that claims anything obviously contrary to well-established natural laws; (2) An invention the primary or intended use of which would be contrary to law or morality or injurious to public health; (3) The mere discovery of a scientific principle or the formulation of an abstract theory; (4) The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant; (5) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; (6) The mere arrangement or rearrangement or duplication of known devices, each functioning independently of one another in a known way; (7) A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient, or for the improvement or restoration of the existing machine, apparatus or other equipment, or for the improvement or control of manufacture;
EXAMINATION & PUBLICATION
All the applications for patent accompanied by complete specification are examined substantively. A first examination report stating the objection(s) is communicated to the applicant or his agents. Application or complete specification may be amended in order to meet the objection(s). Normally all the objections must be met within 15 months from the date of first examination report. Extension of time for three months is available, but application for extension therefore must be made before the expiry of normal period of 15 months. If all the objections are not complied with within the normal period or within the extended period the application will be deemed to have been abandoned. When the application is found to be suitable for acceptance it is published in the gazette of India (Part III, Section2). It is deemed laid open to the public on the date of publication in the gazette of India. OPPOSITION Notice of opposition must be filed within four months of notification in the Gazette. Extension of one month is available, but must be applied for before expiry of initial four month period. GRANT OR SEALING OF PATENT If the application is not opposed or the opposition is decided in favour of the applicant or is not refused the patent is granted or sealed on payment of sealing fee within 6 months from the date of advertisement. However, it is extendable by three months. REGISTER OF PATENTS The Register of Patents will be kept in the Patent Office and its branch offices. Register of Patents can be inspected or extract from it can be obtained on payment of prescribed fee. Register of Patents contains full details of the Patent which include Patent number, the names and addresses of the patentee; notification of assignment etc.; renewals, particulars in respect of proprietorship of patent etc. WORKING Annual reports as to the extent of working, by every patentee and licensee, are a statutory requirement and must be submitted by March, 31 each year for the previous year ending December,
COMPULSORY LICENSE AND LICENSE OF RIGHT
On failure to work a patent within three years from the date of its sealing, an interested party may file petition for grant of a compulsory license. Every patent for an invention relating to a method or process for manufacture of substances intended for use, or capable of being used, as food, medicines, or drugs, or relating to substances prepared or produced by chemical process (including alloys, optical glass, semi-conductors and inter-metallic compounds) shall be deemed to be endorsed "Licenses of Right" from the date of expiry of three years from the date of sealing the patent. ASSIGNMENT Applications must be filed on the prescribed form with the Controller for the registration of assignments and any other documents creating an interest in a patent in order for them to be valid. In order to be valid, an assignment must be recorded within six months from the date of the document. A six-month extension may be obtained. LICENSE Applications must be filed on the prescribed form with the Controller for the registration of licenses and any other documents creating an interest in a patent in order for them to be valid. A license must be recorded within six months from the date of the document. Kinds of specifications of patent
**1. Provisional specification
- Complete specification
- Provisional Specification** The provision specificaiton must also include; § the name(s) of all inventors; § inventor residence(s); § title of the invention; § name and registration number of attorney or agent and docket number (if applicable); § correspondence address; and
There are three basic types of patent infringements:
- Direct patent infringement Direct patent infringement is the most obvious and the most common form of patent infringement. In the most basic definition, direct patent infringement occurs when a product that is substantially close to a patented product or invention is marketed, sold, or used commercially without permission from the owner of the patented product or invention.
- Indirect patent infringement and contributory patent infringement: Indirect patent infringement, suggests that there was some amount of deceit or accidental patent infringement in the incident. If the patent is used without the intention of infringement is called indirect infringement. Otherwise it is used for non-commercial purpose also be called as indirect infringement. Further, if such a product is knowingly sold or supplied, it may lead to .contributory patent infringement. Remedies against infringement of a patented invention
- Interlocutory Injunction A patent owner at the start of a trial can request for an interim injunction to restrain the defendant from committing the acts complained of until the hearing of the action or further orders. Permanent injunction is given based on the merits of the case at the end of the trial.
- Relief of damages: An award of damages focuses on the losses sustained by the claimant. A patent owner is entitled to the relief of damages as compensation to the patentee and not punishment to the infringer.
- Account of profits: Account of profits focuses on the profits made by the defendant, without reference to the damage suffered by the claimant at the hands of the defendant. The purpose of the account is to prevent the unjust enrichment of the defendant by the use of the claimant’s invention. The patent owner may also opt for the account of profits where he has to prove use of invention and the amount of profit derived from such illegal use. Penalties
- Contravention of secrecy provisions relating to certain inventions (Sec.118) - If any person fails to comply with any directions given under section 35 or makes or causes to be made an application in
contravention of section 39 he shall be punishable with imprisonment up to 2 years or with fine or with both. (Section 35 deals with secrecy directions relating to inventions relevant for defence purposes and Section 39 deals with residents not to apply for patents outside India without prior permission.
- Falsification of entries in register etc (Sec.119) - If any person makes, or causes to be made, a false entry in any register kept under this Act, he shall be punishable with imprisonment for a term that may extend to 2 years or with fine or with both.
- Unauthorized claim of patent rights (Sec.120) - If any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he will be punishable with fine that may extend to Rs.1, 00,000. The use of words 'patent', Patented', 'Patent applied for', 'Patent pending', 'Patent registered' without mentioning the name of the country means they are patented in India or patent applied for in India.
- Wrongful use of words, "patent office" (Sec.121) - If any person uses on his place of business or any document issued by him or otherwise the words “patent office” or any other words which reasonably lead to the belief that his place of business is, or is officially connected with, the patent office, he will be punishable with imprisonment for a term that may extend to 6 months, or with fine, or with both. 5) Refusal or failure to supply information (Sec.122) - If any person refuses or fails to furnish information as required under section 100(5) and 146 he shall be punishable with fine, which may go up to Rs 10,00,000/-. If he furnishes false information knowingly he shall be punishable with imprisonment that may extend to 6 months or with fine or with both.
- Practice by non-registered patent agents (Sec.123) - Any person practicing as patent agent without registering is liable to be punished with a fine of Rs 1,00,000/- in the first offence and Rs.5,00,000/- for subsequent offence. Process patent and product patent PROCESS PATENT: It is granted for a new process of manufacturing an already known product or for manufacturing a new product, or for manufacturing more articles of the same product that is reducing the cost of the already known product. PRODUCT PATENT: It is granted when a new product has been invented by the person. The product so invented may either be e more or less useful product than an already known product , or a new product altogether.
