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Notes intellectual property law 1, Exams of Intellectual Property (IP)

Comprehensive information and notes on intellectual property law 1

Typology: Exams

2022/2023

Uploaded on 06/07/2023

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IP and its types
“Property” - common parlance - material object; legal sense - refers to interests
over property, which is protected by law.
The property created by the intellect of the human mind. It is a non-physical
property which stems from, or is identified as, and whose value is based upon
some idea(s)
Intangible assets
Duration specific - does not provide any perpetual and absolute monopoly over the
property
Justifications for conferring such monopoly -
1. Labour justification of property - reward for the labour put in to
create/generate it; patents and industrial designs are based on this
justification
Eg. - the introduction of product patents for pharmaceuticals in India have
been justified on the ground that this would spur research and motivate in
development of variety of novel (new) drugs
2. Personality justification of property - property provides for a mechanism
for personal expression and recognition of the individual person; “property
is the embodiment of the personality”; trademark and copyright are based
on this
Public domain - the state of belonging or being available to the public as a whole,
especially through not being subject to copyright or other legal restrictions
Types of IPR -
I. Artistic - Copyright
right conferred on the owner of a literary or artistic work
books, music, software, painting, etc
Rights conferred - lifetime + 60 years after death
a) can make and can sell copies
b) can publicly demonstrate his works by Radio or TV
c) can sell or pass the rights to another person
d) can import or export whole or part of the work
e) free to create any derivative work
II. Commercial -
1. Patent
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IP and its types

● “Property” - common parlance - material object; legal sense - refers to interests over property, which is protected by law. ● The property created by the intellect of the human mind. It is a non-physical property which stems from, or is identified as, and whose value is based upon some idea(s) ● Intangible assets ● Duration specific - does not provide any perpetual and absolute monopoly over the property ● Justifications for conferring such monopoly -

  1. Labour justification of property - reward for the labour put in to create/generate it; patents and industrial designs are based on this justification Eg. - the introduction of product patents for pharmaceuticals in India have been justified on the ground that this would spur research and motivate in development of variety of novel (new) drugs
  2. Personality justification of property - property provides for a mechanism for personal expression and recognition of the individual person; “property is the embodiment of the personality”; trademark and copyright are based on this ● Public domain - the state of belonging or being available to the public as a whole, especially through not being subject to copyright or other legal restrictions Types of IPR - I. Artistic - Copyright ● right conferred on the owner of a literary or artistic work ● books, music, software, painting, etc ● Rights conferred - lifetime + 60 years after death a) can make and can sell copies b) can publicly demonstrate his works by Radio or TV c) can sell or pass the rights to another person d) can import or export whole or part of the work e) free to create any derivative work II. Commercial -
  3. Patent

● rights related to new inventions ● machines, processes or articles of manufacture ● invention must be novel, inventive and useful ● cannot be manufactured, distributed or sold without permission ● Period - 20 years from the date of filing the application

  1. Trademark ● visual symbol used on products to indicate their source ● combination of words, phrases, symbols, logos, images, designs, or devices ● used to distinguish the goods or services of one enterprise from those of its competitors ● Owners can sue persons for unauthorized use of their trademarks
  2. Industrial design rights ● visual design of objects ● shapes, colours, patterns or a combination of all ● two-dimensional or three-dimensional ● need not be utilitarian, but they should have an aesthetic or ornamental value ● factors - novelty, originality and visual appeal ● period - 10 to 25 years
  3. Trade secrets ● formulas, recipes, practices, processes or ideas used by a company to gain an economic advantage over its competitors ● cannot be used by anyone who has learned it through the owner ● can be used if discovered independently ● responsibility of the owner to keep the secret ● not protected through government policies ● Once leaked, it can be used by any person

The patent has been since revoked.

  1. Inventive step/ non-obviousness

● measures the technical accomplishment reflected in an invention - whether

an invention is an adequate technical advancement to merit the award of a patent ● non-obvious to a person skilled in that art ● must not follow logically from what is already known ● result of independent thought, ingenuity, and research ● should involve a technical advance or have an economic significance or both # Dhanpat Seth v. Nil Kamal A new product or a superior or affordable product than before must be created in order for the innovation or the product to be patentable ● Incremental Inventions - small improvements that make them more efficient, or more useful – qualify for patents if they are novel, have an inventive step and are capable of industrial application ● # Graham v. John Deere Co. of Kansas City Non-obviousness - factors: (1) the scope and content of prior art, (2) the differences between the prior art and the claims at issue and (3) the level of ordinary skill in the concerned art;

  • #Biswanath Prasad Radhey Shyam v Hindusthan Metal Industries- This case can be considered to be the most important case in inventive step jurisprudence in India Facts - The plaintiff in this case e claimed to have invented a device and method for manufacturing utensils, introducing improvement, convenience, speed, safety and better finish, in the old prevalent method which was fraught with risk to the workers, in as much as the utensils used to fly off from the headstock, during the manufacturing process. - Got patent for the same under the 1911 Act - The plaintiff learns that the defendent is using the same method - plaintiff serves a notice
  • Defendent inturn challenges - on the ground of lack of novelty and inventive step and also filed a counter claim praying for the revocation of the plaintiff's patent on the same ground. Held ● the method of manufacture did not involve any inventive step or novelty. Furthermore, as the invention was publicly used by the patent holder before the date of filing of the patent application, the Court observed that the novelty of the invention was negated. In the light of its analysis, the court concluded that the invention lacked novelty and inventive step.
  1. Capable of industrial application

● must perform some function of positive benefit to society

● not always necessary to establish the commercial success of product/

process

● Types -

a) general utility - whether an invention is capable of any use b) specific utility - whether an invention works to solve the problem it is designed to solve c) beneficial/ moral utility - whether the invention has some minimal social benefit # Young Neilson v. Rosenthal & Co. “Utility” was defined as an invention better than the preceding knowledge of the trade as to a particular article

Patentable Inventions -

Article 27 of TRIPS Agreement - ● all inventions ● whether products or processes, in all fields of technology ● Includes - protection to a) Micro-organisms b) micro-biological and non-biological processes and c) plant varieties

Non-patentable inventions - (Sec.3)

Two broad categories - inventions

a) A literary dramatic, musical or artistic work including cinematographic work and television productions (covered by copyright) b) Integrated circuits (separate field) Computer programmes and microorganisms have emerged as two special categories where patent protection is increasingly sought. In 1980, the US Supreme Court granted a patent to Dr. Ananda Chakraborty for a genetically engineered bacterium, which could degrade oil spills. It did not exist in nature. It satisfied the criteria of novelty, non-obviousness and utility for a patentable Invention. For the first time in history a living entity, the engineered microorganism, was accorded the status of a product.

Rights and Obligations of Patentee

All these rights, except suing for infringement are available on application for a patent and before its grant.

Rights -

1. Right to Exploit the Patent ● Exclusive to the patentee ● Product patent - exclusive rights to use, make, import, or sell ● Process patent - exclusive right exercise or use the procedure or method ● Period - 20 years - Must be renewed annually for it to remain valid 2. Right to Assign and License - Section 69(5) ● Assignment - transfer of all the proprietary rights by the patentee to the assignee ● License - right granted to work the invention by withholding the patentee's proprietary rights ● Must be in writing and registered with the Controller of Patents 3. Right to Surrender ● Discretion of patentee - when the Patentee apprehends his/her non-performance of the Patent in the future ● Notice of surrender - Controller gives notice of surrender to the persons whose names are entered in the register of patents and showing interest in the patent

● Advertisement in the journal - for any objections to be raised ● Acceptance of application

4. Right to Sue for Infringement ● Institution of proceedings in a District Court having jurisdiction 5. Joint-Inventors/Co-Owners of Patent Rights Co-owners have equal undivided share in a patent, unless there is an agreement to the contrary.

Obligations -

1. Duty to disclose - Section 8(2)

● Recording an application of patent - Disclosure of all required data related

to the remote uses of comparative or same invention documented - at the time of applying or within 6 months of applying ● Demand by Controller - provide all the data required by the Controller of Patent with regards to the relating of any remote applications at whatever point demand is made by the Controller

2. Duty to request for examination - Section 11(B)

● to ask for the Controller of Patents to look at the growth or development

connected for Patent

3. Duty to respond to objections ● Protests made on First Examination Report (FER) - before acceptance of request for examination

● reply to such opposition complaints - within 1 year from issuance of FER -

failure considered as surrender of patent

4. Duty to clear all objections

● obligation of the owner of Patent to go for a consultation and clear all the

objections and, in addition, oppositions, if are raised any, against the invention of the inventor

  1. Duty to pay statutory fees - Sec 142

Limitations on Patentee’s Rights

  1. Experimental or scientific use - section 47(3)

# Bayer Corporation v. UOI SC dismissed the SLP filed by the Bayer Corporation and upheld the decision of Bombay HC providing compulsory licensing for a life-saving drug named ‘Nexavar’ - relied on the fact that even after taking Cipla’s supplies into consideration, the public prerequisite would not be met and commitment to meet the reasonable requirement of the general public must be of the patent holder alone, either by patentee himself or through his licensees

6. Use or acquisition of inventions by the govt ● An invention which may or may not be patented, can be acquired by the Central Government by a notification in the official Gazette if it is required for a public purpose ● A compensation will be paid as mutually agreed upon

Grant of Patent

Procedure for Obtaining a Patent

1. Who can make an application - a) Any person claiming to be the true and first inventor of the invention b) Assignee of the person claiming to be the true and first inventor c) Legal representative of any deceased person d) Firms and corporations - can apply as the assignee of the right to apply 2. Filing Patent Application a) Separate Application ● separate application for each invention ● Triplicate - in prescribed form + fees ● filed in the appropriate patent office

● application filed by assignee - must be accompanied with proof of assignment b) Particulars ● Full name, address, nationality of the applicant(s) and inventor(s), ● Patent specifications, and ● Claim of priority c) Specification - must accompany appln A. Provisional specification

● describes the nature of invention/ process involved in the

proposed invention B. Complete specification ● filed after provisional specification - written with greater details and clarity ● should be filed within one year - failure - appln deemed abandoned ● Contents -

  1. Title;
  2. Abstract;
  3. Full description of the invention;
  4. Relevant drawings;
  5. Details of its operation or use;
  6. Declaration as to the inventorship of the invention d) Claims ● Defines the scope of invention - stakes out that territory which the patentee considers his or her own, and any encroachment constitutes an infringement ● What is not claimed is disclaimed 3. Publication of the Application ● particulars of name and address of the applicant, the date of application, number of application, and an abstract ● specification and drawings - available to the public on payment of the prescribed fees ● Rights of applicant - full rights over the invention from the date of publication - except the right to sue ● When prohibited - If the invention is considered relevant for defence purposes - discretion of Controller 4. Examination of application

Infringement and Remedies

Meaning.

  1. Not defined in The Indian Patents Act 1970;
  2. Section 48 - patentee can exclude third parties from making, importing, using, or selling the patented product, or process; violation of this right constitutes infringement

Rules for determination of infringement -

The scope and meaning of the patent claims need to be asserted and after that the properly construed claims are compared to the allegedly infringing device Two steps :

  1. The language of the claim must be interpreted; while interpreting, 3 sources must be looked into - a) Language of the claims b) Specification c) Prosecution history
  2. Each claim must be examined to determine whether the claim “reads on” the accused device or process 3 questions must be examined :
  3. The extent of monopoly right conferred by the patent - ascertained by the construction of the specification
  4. Whether the alleged act amounts to making or using or exercising a product or process patent
  5. Whether what the alleged infringer is doing amounts to an infringement of the monopoly conferred by the patent grant #F Hoffman LaRoche v Cipla Ltd, 2016 (65) PTC 1 (Del) division bench - lays down the test for detailed steps and guidelines that should be followed in every infringement of patent suit.

Facts

  • Both are a compound based companies
  • 2007, Roche after claiming that it had been granted a patent for ‘Erlotinib’ started selling the drug under the brand name TARCEVA.
  • 2008, it was reported that Cipla is planning to launch a generic version of ‘Erlotinib.’ This made Roche initiate infringement proceedings against Cipla.
  • Roche losses the suit. Appeals. On appeal, the Division Bench upheld the decision but focused more on the failure of Roche to establish a prima facie case of infringement. Test laid down by the court.
  • Firstly, infringement is not proved by positive evidence which includes the medical and clinical evaluation of a product by the defendant company.
  • Secondly, an infringement examination does not compare an allegedly infringing product with the marketed product, but the comparison is made with the claims of the patent itself.
  • Thirdly, it was said that the correct test, in this case, is to map Cipla product against Roche’s Patent claims.
  • So finally a 16 step test for constructing claims of a patent for the purpose of determining its scope and find out whether there has been any infringement was laid down. This can be treated as a standard and ideal for any patent infringement suit. Held
  • The judgment finally went in favor of Roche.

Burden of proof - sec. 104A

● Product patent - patentee; ● Process patent - patentee; shifts to defendant if the patentee proves that through reasonable efforts (s)he has not been able to determine the process used by the defendant;

Exclusions from infringement

Remedies

  1. Injunction - temporary (during trial) and/or permanent (on completion of trial)
  2. Damages or Account of profits - earned by the defendant due to infringement (at the option of the plaintiff)
  3. Seizure, forfeiture or destruction of goods found to be infringing patent

Revocation (Ss. 64 - 66, sec. 85)

The declaration of a patent as invalid before the term of the patent ends; jurisdiction - IPAB; Sec. 64 Revocation of Patents Sec. 65 Revocation of patent or amendment of complete specification on directions from government - cases relating to atomic energy

Sec. 66 Revocation of patent in public interest Sec. 85 Revocation of patent for Non-working

Persons who can file for revocation -

  1. any person interested;
  2. Central Government;
  3. person involved in an infringement suit and making a counterclaim.

Grounds for revocation -

I. Section 64 - Revocation of Patents

  1. Prior-art; anticipated; or
  2. not clearly described in the specification; or
  3. method by which it works is not clearly described; or
  4. Necessary information has not been disclosed or
  5. false information has been furnished; or
  6. geographical origin is not disclosed or wrongly mentioned.
  7. Biological origin is not disclosed or wrongly mentioned.
  8. obvious and does not involve any inventive step; or
  9. subject of the patent is not an invention, within the meaning of the Act; or
  10. publicly known/used in India before the date of the claim; or
  11. The invention was wrongfully obtained; II. Section 65 - atomic energy ● Central Government can get a patent revoked by the controller of patents ● Opportunity to be heard given ● Amendment of complete specification instead of revocation - Controller may allow if necessary III. Section 66 - public interest ● Patent prejudicial to public interest - opportunity to be heard given ● If revoked - declared in Official Gazette IV. Section 85 - non-working - compulsory license ● After 2 years of granting first compulsory license ● Appln made by - central govt or any interested person ● Grounds -
  12. reasonable requirements of the public have not been satisfied

Functions -

  1. Identification of goods - distinguishes from goods sold by others
  2. Single source - all goods bearing a trademark
  3. Quality - equal level
  4. Prime instrument in advertising and selling goods

Essential features

  1. Distinctiveness and descriptiveness ● an uncommon and appealing quality that distinguishes it from other signs. ● distinctiveness can also be classified into inherent distinctiveness or acquired distinctiveness. When a trademark is distinct in itself and no one can claim its use justifiably, it is referred to as inherent distinctiveness. Acquired distinctiveness means that through its use the trademark has acquired its distinctiveness ● Descriptiveness exists whenever the trademark describes the characteristics of its offering or some of its features - perceived by the relevant public as providing information about the goods and services applied for ● Suggestive
  2. Easy to remember
  3. Must not be generic
  4. must not be offensive or violating the law.
  5. must not be deceiving or cause confusion in the minds of the public.
  6. must not contain scandalous matters.
  7. must not contain exclusively contain marks or indications which are customary in the established practices of trade, such as the ISI mark.
  8. must not contain prohibited words whose usage is forbidden under the Emblems Act

Types of trademark

  1. Product mark - good or product
  2. Service mark - service
  3. Collective mark ● Represents a collective - association of persons, public institution or a company

● exception to the underlying principle of trademarks in that most trademarks serve as "badges of origin"

  1. Certification mark ● a sign that denotes a products origin, material, quality or other specific details which are issued by the proprietor ● purpose - to bring out the standard of the product ● used to uplift the product’s standard amongst the customers by showing that the product had undergone standard tests to ensure quality
  2. Shape mark ● Shape of products ● registered once it is recognized to have a noteworthy shape
  3. Pattern mark - evidence of uniqueness
  4. Sound mark
  5. Smell mark
  6. Taste mark
  7. Moving images and hologram
  8. 3D marks
  9. Well-known trademark ● Familiar to the substantial segment of the public ● Use of such mark wrt other goods or services - perceived to be a connection to the goods or services of the well-known trademark

Salient Features of Indian Trademarks Act, 1999

Consequent to compliance with the international standards laid down in the TRIPS Agreement; https://www.altacit.com/trademark/the-new-indian-trademark-act/

  1. Expanded definition of trademark
  2. Service marks
  3. Collective marks
  4. Well-known trademarks
  5. Single register
  6. Single application for registration under many classes of goods