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HANDBOOK ON INTELLECTUAL PROPERTY RIGHTS IN
INDIA
Rajkumar S. Adukia B. Com. (Hons.), FCA, ACS, AICWA, LL.B, Dip.IFR (UK), MBA Mobile +91 98200 61049/+91 93230 61049 Fax +91 22 26765579 Email rajkumarfca@gmail.com www.carajkumarradukia.com http://rishabhacademy.com PREFACE
Intellectual property rights (IPR) have become important in the face of changing trade environment which is characterized by global competition, high innovation risks, short product cycle, need for rapid changes in technology, high investments in research and development (R&D), production and marketing and need for highly skilled human resources. Regardless of what product an enterprise makes or what service it provides, it is likely that it is regularly using and creating a great deal of intellectual property. There is an emergent need for enterprises and professionals to systematically consider the steps required for protecting, managing and enforcing intellectual property rights, so as to get the best possible commercial results from its ownership. This book provides an insight into the laws related to intellectual property and the administration of these laws.
INDEX
S.No Contents Pg Nos
1 Introduction 3
2 History of IPR in India 10
3 Overview of Laws related to Intellectual Property Rights in India
4 Copyright 17
5 Patent 38
6 Trademark 66
7 Designs 76
8 Geographical Indications of Goods 84
9 Semiconductor Integrated Circuits Design 91
10 Biological Diversity 96
11 Protection of Plant Varieties and Farmer Rights 101
12 Undisclosed Information 106
13 Indian Intellectual Property – Administrative Machinery
14 The Agreement of Trade Related Aspects of Intellectual Property Rights (TRIPS)
15 World Intellectual Property Organization (WIPO) 113
16 Intellectual Property Treaties 116
17 Commercialization of Intellectual Property Rights(IPR)
18 Important Websites 122
Categories of Intellectual Property
One can broadly classify the various forms of IPRs into two categories:
- IPRs that stimulate inventive and creative activities (patents, utility models, industrial designs, copyright, plant breeders’ rights and layout designs for integrated circuits) and
- IPRs that offer information to consumers (trademarks and geographical indications).
IPRs in both categories seek to address certain failures of private markets to provide for an efficient allocation of resources
IP is divided into two categories for ease of understanding:
**1. Industrial Property
- Copyright**
Industrial property , which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and
Copyright , which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs
Intellectual property shall include the right relating to:
i. Literary, artistic and scientific works; ii. Performance of performing artists; iii. Inventions in all fields of human endeavour; iv. Scientific discoveries; v. Industrial designs; vi. Trademarks, service marks and etc;
vii. Protection against unfair competition.
What is a property? Property designates those things that are commonly recognized as being the possessions of an individual or a group. A right of ownership is associated with property that establishes the good as being "one's own thing" in relation to other individuals or groups, assuring the owner the right to dispense with the property in a manner he or she deems fit, whether to use or not use, exclude others from using, or to transfer ownership. Properties are of two types - tangible property and intangible property i.e. one that is physically present and the other which is not in any physical form. Building, land, house, cash, jewellery are few examples of tangible properties which can be seen and felt physically. On the other hand there is a kind of valuable property that cannot be felt physically as it does not have a physical form. Intellectual property is one of the forms of intangible property which commands a material value which can also be higher than the value of a tangible asset or property. Rights protected under Intellectual Property The different types of Intellectual Property Rights are: i. Patents ii. Copyrights iii. Trademarks iv. Industrial designs v. Protection of Integrated Circuits layout design vi. Geographical indications of goods vii. Biological diversity viii. Plant varieties and farmers rights ix. Undisclosed information
a. Intellectual Property
Duration of Intellectual Property Rights in a nutshell
- Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. Date of patent is the date on which the application for patent is filed.
- Term of every trademark registration is 10 years from the date of making of the application which is deemed to be the date of registration.
- Copyright generally lasts for a period of sixty years.
- The registration of a geographical indication is valid for a period of 10 years.
- The duration of registration of Chip Layout Design is for a period of 10 years counted from the date of filing an application for registration or from the date of first commercial exploitation anywhere in India or in any convention country or country specified by Government of India whichever is earlier.
- The duration of protection of registered varieties is different for different crops namely 18 years for trees and vines, 15 years for other crops and extant varieties.
Global Intellectual Property Trends
Ø With over 3 million applications filed per year, trademark protection is the most sought after form of IP worldwide with growth rates of a similar magnitude as those for patents. Ø In 2009, one quarter of all trademark applications were filed at the China Trademark Office. When combined with the shares held by India, the Republic of Korea and Japan, these four offices located in Asia accounted for 37 percent of total trademark applications. India showed the highest five-year growth (13.5%) from 2005 to 2009, whereas China had one of the highest annual growth rates (20.8%) from 2008 to 2009. Ø In 2009, China accounted for 50 percent of total industrial design filing activity while growing by 12.3 percent from 2008 to 2009. India was in the 9th place. Ø In 2009, 1,41,943 trademark applications were filed, 34,287 patent applications were filed and 6,092 Industrial designs applications were filed.
Intellectual Property Trends – India
Ø During 2009-10, 34,287 patent applications were filed, 6069 examined and 6168 patents granted. The number of applications filed by the Indian applicants was 7044. Out of the applications filed by the Indian applicants, Maharashtra accounted for the maximum number followed by Delhi, Tamil Nadu, Karnataka, Andhra Pradesh, West Bengal etc. Ø During 2009-10, 6092 design applications were filed, 6266 examined and 6025 registered. The number of applications filed by the Indian applicants was 4267. The number of registered designs in force at the end of 2009-10 was 39008. Ø During 2009-10, 1,41,943 trademark applications were filed, 25875 examined and 67, registered. The number of applications filed by the Indian applicants was 1,34,403. The total number of registered trademarks as of 31st^ March, 2010 is 8,22,825. Ø During 2009-10, 40 Geographical indications applications were filed and 14 were registered. A total of 120 Geographical Indications have been registered till 31st^ March,
Ø During 2009-10, 142 applications were received for access of bio-resources for research/commercial use, transfer of research results, intellectual property rights and third party transfer. Totally, 13 agreements have been signed. So far, 11 patents have been granted on the applications cleared by NBA. The NBA has also received a royalty amount of Rs.37.89 lakhs from the applicants who have exported bio-resources. Ø In 2010-11, a total of 642 applications representing 28 crops were received by the Authority for seeking plant variety protection under the Act. The applications belong to new (395), extant (216), farmers’ varieties (30) and essentially derived variety (1) categories.
Initiatives of Government of India towards protection of IPR
- The Government has brought out A Handbook of Copyright Law to create awareness of copyright laws amongst the stakeholders, enforcement agencies, professional users like the scientific and academic communities and members of the public.
2. HISTORY OF IPR IN INDIA
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 its 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
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 authorised 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 1859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions only and extension of priority period from 6 to 12 months. The Act excluded importers from the definition of inventor. The 1856 Act was based on the United Kingdom Act of 1852 with certain departures including allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty.
23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts of 1919 and
Based on the recommendations of the Committee, the 1911 Act was amended in 1950 (Act XXXII of 1950) 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. 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
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,
- 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 2005) 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.
3. OVERVIEW OF LAWS RELATED TO INTELLECTUAL PROPERTY RIGHTS
IN INDIA
The Rules and Laws governing Intellectual Property Rights in India are as follows:
- The Copyright Act, 1957, The Copyright Rules, 1958 and International Copyright Order, 1999
- The Patents Act, 1970 The Patents Rules, 2003, The Intellectual Property Appellate Board (Patents Procedure) Rules, 2010 and The Patents (Appeals and Applications to the Intellectual Property Appellate Board) Rules, 2011
- The Trade Marks Act, 1999, The Trade Marks Rules, 2002, The Trade Marks (Applications and Appeals to the Intellectual Property Appellate Board) Rules, 2003 and The Intellectual Property Appellate Board (Procedure) Rules, 2003
- The Geographical Indications of Goods (Registration and Protection) Act, 1999 and The Geographical Indications of Goods (Registration and Protection) Rules, 2002
- The Designs Act, 2000 and The Designs Rules, 2001
- The Semiconductors Integrated Circuits Layout-Design Act, 2000 and The Semiconductors Integrated Circuits Layout-Design Rules, 2001
- The Protection of Plant varieties and Farmers’ Rights Act, 2001 and The Protection of Plant varieties and Farmers Rights’ Rules, 2003
- The Biological Diversity Act, 2002 and The Biological Diversity Rules, 2004
- Intellectual Property Rights (Imported Goods) Rules, 2007
4. COPYRIGHT
4.1. What is Copyright?
Copyright is the set of exclusive rights granted to the author or creator of an original work, including the right to copy, distribute and adapt the work. Copyright lasts for a certain time period after which the work is said to enter the public domain. Copyright gives protection for the expression of an idea and not for the idea itself. For example, many authors write textbooks on physics covering various aspects like mechanics, heat, optics etc. Even though these topics are covered in several books by different authors, each author will have a copyright on the book written by him / her, provided the book is not a copy of some other book published earlier.
Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby protecting and rewarding creativity. Creativity being the keystone of progress, no civilized society can afford to ignore the basic requirement of encouraging the same. Economic and social development of a society is dependent on creativity. The protection provided by copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and producers of sound recordings, cinematograph films and computer software, creates an atmosphere conducive to creativity, which induces them to create more and motivates others to create.
4.2. Copyright law in India
The Copyright Act of 1957, The Copyright Rules, 1958 and the International Copyright Order, 1999 governs the copyright protection in India. It came into effect from January 1958. The Act has been amended in 1983, 1984, 1992, 1994 and 1999. Before the Act of 1957, copyright protection was governed by the Copyright Act of 1914 which was the extension of British Copyright Act, 1911. The Copyright Act, 1957 consists of 79 sections under 15 chapters while the Copyright Rules, 1958 consists of 28 rules under 9 chapters and 2 schedules.
(d) In the case of cinematograph film, - (i) to make a copy of the film, including a photograph of any image forming part thereof; (ii) to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the film to the public; (e) In the case of sound recording, - (i) to make any other sound recording embodying it; (ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the sound recording to the public. Explanation : For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.
4.4. Classes of works for which copyright protection is available Indian Copyright Act affords separate and exclusive copyright protection to the following 7 clauses of work:
- Original Literary Work
- Original Dramatic Work
- Original Musical Work
- Original Artistic Work
- Cinematograph Films
- Sound recording
- Computer Programme
Copyright will not subsist in any cinematograph film if a substantial part of the film is an infringement of the copyright in any other work or in any sound recording made in respect of a literary, dramatic or musical work, if in making the sound recording, copyright in such work has
been infringed. In case of work of architecture, copyright will subsist only in the artistic character and design and will not extend to processes or methods of construction.
4.5. Ownership of Copyright
The author of the work will be the first owner of the copyright in the following instances:
i. In the case of a literary, dramatic or artistic work made by the author in the course of his employment by the proprietor of a newspaper, magazine or similar periodical under a contract of service or apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical, the said proprietor will, in the absence of any agreement to the contrary, be the first owner of the copyright in the work in so far as the copyright relates to the publication of the work in any newspaper, magazine or similar periodical, or to the reproduction of the work for the purpose of its being so published, but in all other respects the author will be the first owner of the copyright in the work. ii. In the case of a photograph taken, or a painting or portrait drawn, or an engraving or a cinematograph film made, for valuable consideration at the instance of any person, such person will, in the absence of any agreement to the contrary, be the first owner of the copyright therein. iii. In the case of a work made in the course of the author’s employment under a contract of service or apprenticeship, the employer will, in the absence of any agreement to the contrary, be the first owner of the copyright therein. iv. In the case of any address or speech delivered in public, the person who has delivered such address or speech or if such person has delivered such address or speech on behalf of any other person, such other person will be the first owner of the copyright therein notwithstanding that the person who delivers such address or speech, or, as the case may be, the person on whose behalf such address or speech is delivered, is employed by any other person who arranges such address or speech or on whose behalf or premises such address or speech is delivered. v. In the case of a government work, government in the absence of any agreement to the contrary, will be the first owner of the copyright therein.
