intellectual property rights. intellectual property (ip) intellectual property is made up of two...
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Intellectual Property Rights
Intellectual Property (IP)
• Intellectual property is made up of two dictions– Intellect– Property
• Nature of property – Tangible– Intangible
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• Intellectual property refers to creations of mind i.e. inventions, industrial designs for articles & literary works.
• It is a product of the intellect that has commercial viability and importance.
• According to World Intellectual Property Organization (WIPO),
– Intellectual Property refers to literary, artistic and scientific works, Performances, Broadcast, Videos, Computer games, Computer Programmes, Images, Logos, Trades Marks and all other products resulting from intellectual activity.
Concepts and components of IP
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Concepts and components of IP
Intellectual property does not cover all intangible assets, but only those that serve as elements of differentiation among competitors.
For example, the rights of credit and other personal obligations are intangible assets, butthey are not intellectual property.
It covers aspects like novelty, originality, creativity, and distinctiveness.
IP, in short, is about preserving uniqueness.
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Concepts and components of IP
On the other hand, intellectual property does not protect only the results of creativity and ingenuity.
Indications of source, the merchants’ reputation and trademarks are elements of intellectual property that are not the product of creativity; they are, nonetheless, important as differentiation elements.
Concept of IPR
• Intellectual property right is a set of principles and rules that regulate the acquisition, the use, the enforcement and the loss of rights and interests in intangible differentiating assets that are vulnerable of being used in commerce.
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Definition of IPR
• Intellectual property refers to creations of mind i.e. inventions, industrial designs for articles & literary works.
• It is a product of the intellect that has commercial viability and importance.
• IPR includes a wide range of legal and moral rights that is bestowed upon the creators and inventors.
Definition of IPR
• According to Bentchman J “Property and Law are born together, and die together. Before laws were made, there was no property. Take away law and property ceased”.
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Need for IPR System
• Exponential growth in the number of technological means, which can re-produce and disseminate protected works with ease at low cost and without distorting the utility.
• These new technologies provide easier access to works than before and make possible mass use of works and new ways for exploiting innovative works
• Computer programs and databases facilitate storage of enormous quantities of protected works and other information, which can be accessed, easily from anywhere in the world
• This leads to requests for new rights and raise new questions about the permissible scope of the limitations allowed on the exclusive rights. 9
Significance of IPR
• Intellectual Property Rights have a significant influence on economic progress – Enhance research by disseminating information on
advances in technology – Promote the innovation process– Facilitate licensing and technology transfer– Encourage high risk investments which lead to
industrialisation– Avoid duplication of invention / investment in R&D– Reduce cost of production
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Significance of IPR
• Once a country installs a solid and effective IPR system the access to more advanced technologies increases
• Technology transfers, licensing and investments become much easier with IPRs as vehicles or bases
• Import of technology leads not only to export of products but also to export of adapted, improved technology (reverse technology transfer)
• Acquired Technology generally comes accompanied by foreign capital and investment in considerable quantities
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Significance of IPR
• Patent claims allow to define precisely the technical and territorial scope of any technology to be transferred
• Provides the inventor, or invention owner, several ways in commercialising inventions:– To start their own manufacturing and marketing of the
product based on invention – To license rights of the invention – To sell the patent rights– Any combination of the above
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Significance of IPR
• IPR acknowledges and gives official recognition to the efforts employed by the person, firms or organizations
• Promotes further inventions and research endeavors• Creates repositories of vital information • Helps in combating against
– Piracy– Unauthorized copying and plagiarizing– Unfair trade tactics and competition– Encroachment over traditional knowledge
• Serves as a basis of monetary and fringe benefits to the inventor
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Functions of IPR
The social (economic, legal) function of intellectual property rights:
• like all other types of private property rights, it protects society against free riding in all its forms (parasitism, counterfeiting, unfair competition) in order to ensure a more efficient use of scarce resources and to avoid duplication of efforts.
• Like all other private property rights, intellectual property only performs fully its social function in a free-market economic environment.
Functions of IPR
• The market must be reasonably free from government interference– if the market is shaped by the government, why should
private entrepreneurs take the risks of seeking to extract rents from consumers?
• There must be a competitive environment – if there is no competition, there is nothing to differentiate;
– the reversal is also true: if there are no protected differentials, firms have no incentive to compete.
Nature of Right
• Transfer some or part of the rights
• Transfer to multiple parties
• Right not to transfer
• Right only on the form and expression and not on contents
• Rights are protected in all the participating countries
What could be protected under IPR regime
• Performances
• Broadcast
• Videos
• Computer games
• Computer Programme
• Images
• Logos
• Trades Marks
• Integrated Circuits
• Inventions
• Geographical Indication
• Companies Names
• Industrial Processes
• Chemical formulas
• Methods
• Perfumes
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Areas of IPR
• Intellectual Property Rights could be segregated into:-– Industrial Property– Copyrights
• To some extent, the distinction between copyright and industrial property corresponds to the dichotomy idea vs. expression.
Generally, ideas are covered by industrial property rights.Expressions, are the subject matter of copyright.
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Copy Right
• Cover:• Artistic creation
• Literary work (incl. computer programmes)
• Musical work
• Dramatic work
• Cinematographic works
• In most European languages other than English, it is called Author’s Rights.
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Industrial Property
Industrial property comprises three sub-areas:
a) Proprietary technical creations;
b) Distinctive signs; and
c) Non-proprietary competitive advantages
Proprietary technical creations
• Inventions,
• industrial designs
• layout-designs (topographies) of integrated circuits,
• utility models,
• plant varieties
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Distinctive signs
• trade and service marks, including collective marks;
• trade names;
• slogans;
• indications of source and geographical indications or appellations of origin
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Non-proprietary competitive advantages
• merchants’ reputation;
• good-will in general, comprising the trade dress; and
• undisclosed information, comprising trade secrets and test data.
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INDUSTRIAL DESIGNS
• Aesthetic creations determining appearance of the product.
• The ornamental or aesthetic aspect of a useful article.
• It must be reproducible by industrial means (included in TRIPS Agreement, Article 25.1)
• Must be new / original.
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Industrial Design
• Industrial design is the use of a combination of applied art and applied science to improve the aesthetics, ergonomics, functionality, and usability of a product, but it may also be used to improve the product's marketability and production.
• The role of an industrial designer is to create and execute design solutions for problems of form, usability, physical ergonomics, marketing, brand development, and sales.
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Industrial Design
• An industrial design renders an object attractive or appealing, thus increasing its marketability and adding to its commercial value.
• The design may be three-dimensional based on the shape or surface of the object, or two-dimensional based on the object’s patterns, lines or colours.
• Novelty, originality and visual appeal are essential if an industrial design is to be patented, although these criteria can differ from one country to another.
• Its aesthetic features should not be imposed by the technical functions of the product.
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Industrial Design
• Legally, “industrial design” is the title granted by an official authority, generally the Patent Office, to protect the aesthetic or ornamental aspect of an object.
• This protects solely the non-functional features of an industrial product and does not protect any technical features of the object to which it is applied.
• Industrial design rights are granted to the creator of designs to reward them for their effort and investment in manufacturing the product. These rights enable the owner to make articles to which the design is applied or in which the design is embodied.
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Industrial Design
• The holder of this legal title has the exclusive right to make, import or sell any objects to which the design is applied. They can authorise others to exploit the design and bring a legal action against anyone using the design without authorisation.
• In general the period of protection granted is from 10 to 25 years. This is often divided into terms and an extension of the term requires renewal of the registration.
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Why protect an industrial design?
• Consumers often take the visual appeal of a product into consideration when choosing between different products.
• This is especially true when the market offers a large variety of products with the exact same function.
• As the aesthetic appeal of a product can determine the consumer’s choice an industrial design adds commercial value to a product.
• Protecting an industrial design is also a reward for creativity and encourages economic development.
• It ensures protection against unauthorised copying or imitation of the design and can be relatively simple and inexpensive to develop.
• An industrial design is not protected unless it has been published in an official bulletin.
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How to protect industrial designs?
• In most countries, an industrial design must be registered in order to be protected under industrial design law.
• As a general rule, to be registrable, the design must be "new" or "original. Generally, "new" means that no identical or very similar design is known to have existed before.
• Once a design is registered, the term of protection is generally five years, with the possibility of further periods of renewal up to, in most cases, 15 years.
• Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law.
• In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other.
• Under certain circumstances an industrial design may also be protectable under unfair competition law, although the conditions of protection and the rights and remedies ensured can be significantly different.
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What cannot be protected by industrial design rights?
• Designs that do not meet the requirements of novelty, originality and/or individual character;
• Designs that are considered to be dictated exclusively by the technical function of a product;
– such technical or functional design features may be protected, depending on the facts of each case, by other IP rights (e.g. Patents, utility models or trade secrets);
• Designs incorporating protected official symbols or emblems (such as the national flag);
• Designs which are considered to be contrary to public order or morality.
• Some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is “an article of manufacture” or that it can be replicated by “industrial means”.
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What rights are conferred by industrial design protection?
• When an industrial design is registered, the holder receives the right to prevent unauthorized copying or imitation by third parties. This includes the right to prevent all unauthorized parties from making, selling or importing any product in which the design is incorporated or to which it is applied.
• Because industrial design rights are territorial in nature, this right is limited to the territory for which the design is registered.
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How to deal with infringement?
• Firstlysend a “cease or desist letter” to the alleged infringer, informing him of a possible conflict between his industrial design rights and the alleged infringing product and asking him to cease said infringement.
• If the infringement persists, take all appropriate legal measures against the infringer, as provided for by the applicable law.
• It is usually advisable to seek professional assistance from a lawyer who would in principle be the competent person to provide an advice on how to settle any dispute.
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Trademarks
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Trademarks
• A trademark is a distinctive sign – like a word, drawing, image or symbol – identifying an item that sets it apart from those of other businesses.
• A trademark can be the name of the company, or also of a specific product or service.
• A sign can be made up of words, letters and numerals, devices, coloured marks, combination of letters, or three-dimensional signs.
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Trademarks
• Words: names, family names, forenames, nicknames, geographical names, as well as any other words or set of words, whether invented or not, and even slogans.
• Letters and numerals: a sign could consist of one or more letters, one or more numerals, or a combination of letters and numerals
• Devices: drawings or symbols• Three-dimensional signs: Single colour trademarks, motion
trademarks, hologram trademarks, shape trademarks • Non-visible signs (e.g. sounds, scents, tastes, textures)
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Trademarks
• As per Article 15.1 of TRIPS ‘Any sign, words, including personal names, letters, numerals, figurative elements and combinations of any such signs, capable of distinguishing goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.’
• WIPO defines a trademark as a distinctive sign, a symbol that distinguishes the trademark owner’s goods and services from those of competitors.
• For consumers a trademark reflects the image of the company and therefore has commercial value.
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Trademarks Protection
• Under the Indian trademark law, any distinctive and identifying mark, which is capable of distinguishing the goods and services of one owner from that of another, may be utilized as Trademark and such marks are afforded protection under the law.
• It gives owners an exclusive right to use the sign on their product
• Allows consumers to buy it with confidence, relying on the reputation and quality for which the sign stands.
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Trademarks Protection
• The new Trade Marks Act, 1999, which came into force in September 2003 gives a broader definition.– A package is now protected under the Act, which includes any case,
box container, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork. Thus, the new definition of trademark in India broadly encompasses almost all the elements of trade dress under the US law.
• Unlike the United States Lanham Act, 1946 the English Trade Marks Act, 1994 and the Indian Act, 1999 do not have to protect un-registered trade dress or allow registration of trade dress which qualifies the tests of distinctiveness and source identifier.
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Trademarks Protection
• A trademark confers to the owner the exclusive right of exploitation. • Registering a trademark can prevent it being misappropriated, and
enable the owner to take legal action against anyone using the trademark without authorisation.
• It is a valuable asset for an organisation as it distinguishes their products and can be used to gain consumers’ trust.
• Trademarks also have monetary value as they can be sold or licensed.
• As the trademark represents the values of the company it represents, the owner should ensure that no other organisation attempts to be illegally associated with these values by incorrect use of the protected trademark.
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Trademarks Protection
• A trademark can be registered for 7 to 20 years and protection can be renewed indefinitely.
• During this time the owner can use, sell, license or merchandise the trademark, and of course prevent its unauthorised use.
• In order to maintain their rights, the owner of the trademark must make proper use of the trademark and pay annual fees.
• If the mark is not used within five years of its registration, anyone with a legitimate interest may ask for it to be cancelled as its non use represents a barrier to the registration of new marks, and consequently to commerce as a whole.
• Improper use of the mark can also result in the loss of protection.
– An example of improper use is when people refer to the product by using the trademark.
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Grounds for protection
• A trademark must be distinctive so that the customer can differentiate it from other similar products.
• A trademark should be original. This means that it should not infringe on others’ rights, i.e. copy a registered trademark for the same or similar goods or services.
• The mark should not be a generic term such as ‘furniture’ or ‘table’ nor should it be a descriptive sign, i.e. a sign used to designate origin, quality, etc.
• It should not be deceptive or forbidden by the law, nor should it create confusion among consumers or give a false idea of the origin of the product or service, or use signs contrary to public order.
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TRADE NAMES
• Names or designations used by companies to identify themselves and distinguish their businesses from others in the same field.
• A trade name belongs to the first business to use it, and the identification and reputation give it value and the right to protect the trade name against its use by others.
– Sheaffer's is clearly identified as a fountain pen manufactured by the Sheaffer Company, and no one else can produce pens with that name. However, a motorcycle with the name Sheaffer would not be an infringement since the product is different.
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Trade Names
• Trade names are used by profit and non-profit entities, political and religious organizations, industry and agriculture, manufacturers and producers, wholesalers and retailers, sole proprietorships and joint ventures, partnerships and corporations, and a host of other business associations.
• A trade name may be the actual name of a given business or an assumed name under which a business operates and holds itself out to the public.
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Trade Names Protection
• Not every trade name that resembles an existing one will give rise to liability for infringement.
• The law will not forbid two unrelated businesses from using the same trade name so long as their coexistence creates no substantial risk of confusion among the public.
• The law permits businesses in different geographic markets to use identical trade names, unless the good will and reputation of an existing business extend into the market where a new business has opened.
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Trade Names Protection
• the law seeks to protect the economic, intellectual, and creative investments made by businesses in distinguishing their trades.
• to preserve the good will and reputation that are often associated with a particular trade name.
• to promote clarity and stability in the marketplace by encouraging consumers to rely on a merchant's trade name when evaluating the quality of its merchandise.
• to increase competition by requiring businesses to associate their own trade names with the value and quality of their goods and services.
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INTEGRATED CIRCUITS
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Integrated Circuits
• Large scale integration of a multitude of electrical functions in a very small component as a result of advances in semiconductor technology.
• Electronic integrated circuit products are constructed from a complex series of layers of semi-conductors, metals, dielectrics (insulators) and other materials on a substrate.
• Integrated Circuits are manufactured in accordance with very detailed plans or “lay out designs’ or topography (three-dimensional configuration of the electronic circuits used in microchips and semiconductor chips).
• The initial lay out design is very complicated and costly but copying it is much easier.
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Integrated Circuits
• As per Article 2 of the IPIC Treaty :• ‘integrated circuit’ means a product, in its final form or an
intermediate form, in which the elements, at least one of which is an active element, and some or all of the inter-connections are integrally formed in and/or on a piece of material and which is intended to perform an electronic function;
• layout-design (topography)’ means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture .
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Need for protecting Integrated Circuits
• A chip typically has eight to twelve layers, each layer having a unique mask creating the required circuits.
• These layers of masks, collectively called 'mask work' or 'layout-design', manifest the three-dimensional layout of the chip.
• It is a chip's layout, or three-dimensional organization that requires protection.
• It takes enormous investment, both in terms of time and money, to design a new layout-design.
• But a chip pirate can easily replicate the layout-design of a chip in few months by removing the chips plastic/ceramic casing and photographing each layer of the translucent silicon material; at a fraction of the original cost.
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Integrated Circuits Protection
• Protection can extend to the layout design as well as to the finished product.
• The owner may exclude others from:– Reproducing a protected topography or any substantial part of one– Manufacturing an integrated circuit product incorporating the
topography or a substantial part of one; – Importing or commercially exploiting a topography or a
substantial part of one, or of an integrated circuit product that embodies a protected topography or a substantial part of one; and
– Importing or commercially exploiting an industrial article which incorporates an integrated circuit product that embodies a protected topography or a substantial part of one.
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Plant breeders’ rights
• New varieties of plant species can be protected under the Plant breeders’ rights Act.
• To be protected, the varieties must be new (i.e. not previously sold), different from all other varieties, uniform (i.e. all plants in the variety must be the same), and stable (i.e. each generation must be the same as the rest).
• It gives the owner the exclusive right to control the multiplication and sale of the seed for up to 18 years. Other people can still breed or save and grow the registered variety for their own private use without permission.
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GEOGRAPHICAL INDICATIONS
Indications which identify a good as originating in the territory; or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
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• What is a geographical indication?
• A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a geographical indication includes the name of the place of origin of the goods. Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors, such as climate and soil. Whether a sign is recognized as a geographical indication is a matter of national law. Geographical indications may be used for a wide variety of products, whether natural, agricultural or manufactured.
• An appellation of origin is a special kind of geographical indication. It generally consists of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. The concept of a geographical indication encompasses appellations of origin.
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• A grant of Plant Variety Rights for a new plant variety gives you the exclusive right to produce for sale and sell propagating material of the variety. In the case of vegetatively-propagated fruit, ornamental and vegetable varieties, Plant Variety Rights give you the additional exclusive commercial right to propagate the protected variety for the commercial production of fruit, flowers or other products of the variety.1
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• Benefits of a PVR• As a Plant Variety Rights holder you may license others to produce for sale and to sell
propagating material of the protected variety. Rights holders commonly collect royalties from the commercialisation of their protected varieties.
• As with other types of proprietary rights, you may bring civil action against persons or businesses infringing your rights. For example, as a Rights holder you would be entitled to seek an injunction against, or if appropriate, claim damages from, another person or business that deliberately sold seeds or plants of the protected variety without your permission.
• As a Rights holder you can also take action against another party using the approved denomination (registered name) of your protected variety to sell propagating material of another variety of the same genus or species.
• Like other personal property, the Rights to a protected variety may be sold, licensed, mortgaged or assigned to another person or business.
• The protection given to a breeder by a grant of Plant Variety Rights resembles that given to an inventor by a patent grant, but there are significant differences between these two forms of intellectual property rights. This means that you cannot use the term "patent" when referring to a variety protected by the Plant Variety Rights Act.
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• Limits or exceptions to a grant-holder’s Rights
• Other persons are free to:
• grow or use a protected variety for non-commercial purposes
• use the plants or parts of the protected variety for human consumption or other non-propagating purposes
• use a protected variety for plant breeding (although the repeated use of a protected variety for the commercial production of F1 hybrid seed is not permitted without the authority of the Rights holder).
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• The kinds of plants in the Rights scheme
• Plant Variety Rights are presently available for varieties of any kind of plant other than algae and bacteria.
• Note: Following international custom in the world of plant variety protection the word "variety" is used not in the sense of a "botanical variety" but rather as being synonymous with "cultivar" or "cultivated variety".
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• Criteria used to determine eligibility for Rights
• A grant of Plant Variety Rights may be made for a variety if:
• it is new
• it is distinct, uniform and stable - commonly abbreviated to DUS
• an acceptable denomination (variety name) is proposed
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• a) New
• A variety is considered to be new if propagating material, whole plants or harvested material of it has not been sold or offered for sale with the agreement of the owner:
• in New Zealand for more than one year before the date of application, or
• overseas, for more than 6 years before that date in the case of woody plants, or more than 4 years in the case of non-woody plants.
• The prior sale rules do not apply where:
• the sale is part of a contractual arrangement to increase the applicant's stock, or for evaluative trials or tests where all the material produced directly or indirectly, plus any unused propagating material, becomes or remains the property of the applicant; or
• any surplus plant material produced during the breeding, increasing of stock and trials or tests of the variety is disposed of for non-propagating purposes.
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• b) Distinctness
• The variety must be distinct from all commonly known varieties existing at the date of application, in one or in some combination of the following characteristics: morphological (such as shape, colour) or physiological (such as disease resistance).
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• c) Uniformity
• The variety must be sufficiently uniform.
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• d) Stability
• The variety must remain true to its description after repeated propagation.
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• e) Denomination
• You must propose a denomination for the new variety that conforms to internationally accepted guidelines (see International Union for the Protection of New Varieties of Plants (UPOV)). If the denomination you propose is not acceptable the Commissioner will reject it and ask for an acceptable alternative.
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• Geographical Indications of Goods are defined as that aspect of industrial property which refer to the geographical indication referring to a country or to a place situated therein as being the country or place of origin of that product. Typically, such a name conveys an assurance of quality and distinctiveness which is essentially attributable to the fact of its origin in that defined geographical locality, region or country. Under Articles 1 (2) and 10 of the Paris Convention for the Protection of Industrial Property, geographical indications are covered as an element of IPRs. They are also covered under Articles 22 to 24 of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which was part of the Agreements concluding the Uruguay Round of GATT negotiations.
• India, as a member of the World Trade Organization (WTO), enacted the Geographical Indications of Goods (Registration & Protection)Act, 1999 has come into force with effect from 15th September 2003.
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• Can geographical indications only be used for agricultural products?• The use of geographical indications is not limited to agricultural products. They may also highlight qualities of a product which are due to human factors associated with the place of origin of the products, such as specific
manufacturing skills and traditions. That place of origin may be a village or town, a region or a country. For example, “Bohemia” is recognized as a geographical indication in many countries for specific products made in the Czech Republic, in particular crystal ware.
• What does a geographical indication do?• A geographical indication points to a specific place, or region of production, that determines the characteristic qualities of the product which originates from that place. It is important that the product derives its qualities
and reputation from that place. Since those qualities depend on the place of production, a specific "link" exists between the products and their original place of production.• Why do geographical indications need protection?• Geographical indications are understood by consumers to denote the origin and the quality of products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by
dishonest commercial operators. False use of geographical indications by unauthorized parties is detrimental to consumers and legitimate producers. Consumers are deceived into believing that they are buying a genuine product with specific qualities and characteristics, when they are in fact getting an imitation. Legitimate producers are deprived of valuable business and the established reputation of their products is damaged.
• What is the difference between a geographical indication and a trademark?• A trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using the trademark. A trademark will often consist of a
fanciful or arbitrary name or device. A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production. It may be used by all producers who make their products in the place designated by a geographical indication and whose products share specified qualities. Unlike a trademark, the name used as a geographical indication will usually be predetermined by the name of the place of production.
• How are geographical indications protected?• Geographical indications are protected in accordance with international treaties and national laws under a wide range of concepts, including –• special laws for the protection of geographical indications or appellations of origin• trademark laws in the form of collective marks or certification marks• laws against unfair competition• consumer protection laws, or• specific laws or decrees that recognize individual geographical indications.• In essence, unauthorized parties may not use a geographical indication in respect of products that do not originate in the place designated by that indication. Applicable sanctions range from court injunctions preventing the
unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.• How are geographical indications protected on the international level?• A number of treaties administered by WIPO provide for the protection of geographical indications, most notably the Paris Convention for the Protection of Industrial Property of 1883, and the Lisbon Agreement for the
Protection of Appellations of Origin and Their International Registration. In addition, Articles 22 to 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) deal with the international protection of geographical indications within the framework of the World Trade Organization (WTO).
• What is a "generic" geographical indication?• If a geographical term is used as the common designation of a kind of product, rather than an indication of the place of origin of that product, then the term no longer functions as a geographical indication. Where this has
occurred in a certain country, then that country may refuse to recognize or protect that term as a geographical indication. For example, the term “cologne” now denotes a certain kind of perfumed toilet water, regardless of whether or not it was produced in the region of Cologne.
• What is WIPO's role in the protection of geographical indications?• WIPO is in charge of the administration of a number of international agreements which deal partly or entirely with the protection of geographical indications (see, in particular, the Paris Convention for the Protection of
Industrial Property, and the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration). Furthermore, through the work of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), made up of representatives of Member States and interested organizations, WIPO explores new ways of enhancing the international protection of geographical indications.
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Patents
Patents
• Also called “patents for invention” as they characteristically protect inventions.
• A patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention provided the invention satisfies certain conditions stipulated in the law.
• Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder.
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Patents
• As the right is conferred by the State, it can be revoked by the State under very special circumstances
• This right is available only for a limited period of time.
• Territorial in nature
• More than 140 countries give such protection.
• To be patentable (Article 27.1 of TRIPS)
– The invention must be new
– Must involve an inventive step / must be non-obvious
– Must be industrially applicable.
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Patentable
Novelty• Does not form a part of the global state of the art. • Ceases to be novel
– if disclosed to the public through any means any where in the world before filing a patent application in respect of the invention.
– Prior use of the invention in the country of interest
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Absolute Novelty Not published & not used anywhere in the world
Novelty Not published anywhere
(Relative Novelty) Not used in the country
Territorial Novelty Not published & used within the territory of the country.
Novelty
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Patentable
Inventiveness (Non-obviousness)• If the proposed invention is not obvious to a
person skilled in subject matter of the patent application.
• Complexity or the simplicity of an inventive step does not have any bearing on the grant of a patent.
• Mere scintilla of invention is sufficient to form a valid patent.
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Patentable
Industrial Applicability• An invention is capable of industrial
application if it satisfies three conditions,• Cumulatively:
– Can be made;– Can be used in at least one field of activity;– Can be reproduced with the same
characteristics as many times as necessary
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Patentable
• Unity of Invention:– all the claims in the application for patent must refer to the
same inventive idea. i.e. they must all share one inventive concept.
• Different categories of independent claims stating unity of invention:– Product, process for its manufacture and use of the product– Process and apparatus for carrying out the process– Product, process for its manufacture and apparatus for
carrying out the Process
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Patents and Economic Growth
• The patent system provides a social benefit as it bestows monetary reward for revealing technological innovation along with accolades for the inventor
• Patent is an award for the inventor and a reward for the investor
• By virtue of the grant, patentee gets the exclusive right to prevent the third parties (not having his consent) from the act of making, using, offering for sale, selling or importing the patented product or process within the territory of grant.
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GDP, R&D Expenditure and Patents (2004)
Country GDP ($ bn.)
R&D ($ bn.)
Patents Filed
US 11,200 301.50 43465
Japan 3,7450 119.84 20193
India 3,319 46.47 724
Source : Battelle/R&D Magazine Global Report, September 2005. 70
Patents in India
Source: National Science& Technology Management Information System, Department of Science and Technology, India71
Patents in India
• Over a period of ten years (1989-1999) average percentage share of patents granted to Indians / Indian companies is approximately 27% of total grants in India.
• Only 18% patents in force in the name of Indians
• Indians show less interest in maintaining patents than their foreign counterparts.
• Number of patents granted is an indicator of technological strength whereas number of commercially working patents shows economic growth.
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MAJOR CONVENTIONS AND TREATIES
• Paris Convention(1883): For Industrial Property
• Berne Convention (1886): For Literary and Artistic Works
• BIRPI (1893): Combining the International Bureaus which emerged from Paris and Berne Conventions (predecessor of WIPO)
• Rome Convention (1961): For Performers, Producers of Phonograms and Broadcasting Organizations
• WIPO Convention (1967): – WIPO Established in 1970 as an arm of UN– Member states 179– Entered in cooperation with WTO in 1996– India signatory member
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MAJOR CONVENTIONS AND TREATIES
• Geneva Convention (1971): For Producers of Phonograms Against Unauthorized Duplication
• Brussels Convention (1974) For distribution of programs carrying signal transmitted by Satellite
• Nairobi Treaty (1981): For protection of the Olympic Symbol
• Patent Cooperation Treaty (adopted in 1970 as an outcome of Washington Diplomatic Conference , came into force in 1978with 18 contracting countries, amended in 1979, modified in 1984 and 2001): For single international patent application. As on August 2005, 128 countries member.
• Patent Law Treaty (adopted in 2000, enforced from 2002): For standardising divergent formal requirements
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WIPO WORLDWIDE ACADEMY
• Established in 1998
• Professional Training and Policy Development Training on IP for Professional / Students / SMEs
• Distance Learning (Free Registration)– On internet through interactive sessions
– Exam at the end of the course through internet
• Collaboration with Universities– Joint degree / diploma programs– Development of IP curricula– Publication of teaching material– Fellowship for training trainers– Holding Conferences / seminars
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History of Indian Patent System: Pre Independence
1856 The Act VI of 1856 on protection of inventions based on the British Patent Law of 1852. Repealed in1857.
1859 The Act modified as act XV; patent monopolies called exclusive privileges (making, Selling and using inventions in India and authorizing others to do so for 14 years from date of filing specification).
1872 The Patents & Designs Protection Act, amended in 1883.
1888 All the previous Acts consolidated as the Inventions & Designs Act.
1911 The Indian Patents & Designs Act. amended from time to time in 1920, 1930, and 1945. 76
History of Indian Patent System: Post Independence
1972 The Patents Act (Act 39 of 1970) came into force on 20th April 1972. to provide a reasonable balance between adequate and effective protection of patents on the one hand and the technology development, public interest and specific needs of the country on the other hand.
1999 On March 26, 1999 Patents (amendment) Act, (1999) came into force from 01-01-1995. to allow product patent in the field of drugs or medicines and grant of Exclusive Marketing Rights on those products.
2002 The Patents (amendment) Act 2002 came into force from 20th May 2003. 20 years term for the patent, product patent in all fields of Technology including chemicals, food, drugs & agrochemicals
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History of Indian Patent System: Post Independence
2005 The Patents (amendment) Act 2005 came into force from 20th June 2005 to incorporate TRIPS requirements
Four Schedules: 1. Prescribes the fees to be paid
2. Specifies the list of forms and the texts of various forms required
3. Prescribes form of Patent to be issued on Grant of the Patent
4. Prescribes costs to be awarded in various proceedings before the Controller under the Act.
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Administration of IPR in India
• Patents, Trademarks, Industrial Design by the Patent Office, under the Ministry of Commerce & Industry, Department of Industrial Policy & Promotion.
• Copyright by Ministry of Human Resource Development.• Layout Design of Integrated Circuits by the ministry of
Communication and Information Technology. • Governed by the
– Patents Act, 1970 (amended in 1995 and 2005) – Trade & Merchandise Marks Act, 1958 (amended as Trade Marks
Act, 1999)– Copyright Act, 1957, (amended 1984, 1994 and 1999). – Industrial Designs Act, 1999 replacing Designs Act 1911 – Geographical Indications of Goods (Registration & Protection) Bill,
1999 79
Term of Patent
• Patent Act (Amendment) 2005 : all patents will have term of 20 years in compliance with TRIPS
• A patent has to be maintained by – paying the maintenance fee every year.– Annual statement specifying extent to which a
patent has commercially worked in India
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Not Patentable in India
• Frivolous or obviously contrary to well established natural laws.
• Contrary to law or morality or injurious to public health • Mere discovery of any new property or new use of known
substance or the mere use of a known practice• Mere admixture resulting only in the aggregation of the
properties of the components there of or a process for producing such substance.
• Arrangement or duplication of features of known devices. • A method of agriculture or horticulture. • Any process for medical, surgical, curative, prophylactic or
other treatment of human beings, or any process for a similar treatment of animals or plants.
• Inventions relating to atomic energy. 81
Patent Documents
• Application form in triplicate.
• Provisional or complete specification in triplicate. – If provisional specification is filed it must be followed by complete
specification within 12 months (15 months with extension).
• Drawing in triplicate (if necessary).
• Abstract of the invention (in triplicate).
• Information and undertaking listing the number, filing date and current status of each foreign patent application in duplicate.
• Declaration of inventorship where provisional specification is followed by complete specification or in case of convention application.
• Fee in cash/by local cheque/by demand draft. 82
Complete Specifications
• Title of the invention.
• Field to which the invention belongs.
• Background of the invention including prior art giving drawbacks of the known invention & practices.
• Complete description of the invention along with experimental result.
• Drawings etc. essential for understanding the invention
• Claims, which are statements, related to the invention on which legal proprietorship is being sought. Therefore the claims have to be drafted very carefully.
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Caution
• Filing of an application for a patent at the earliest possible date with provisional specification, disclosing the essence of the nature of the invention
• Should be considered for publication only after a patent application has been filed.
• The date of patent is the date of filing the complete specification.
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INVENTIONS
• An invention is a unique or novel device, method, composition or process, or new solutions to technical problems.
• It may be an improvement upon a machine or product, or a new process for creating an object or a result.
• An invention that achieves a completely unique function or result may be a radical breakthrough. Such works are novel and not obvious to others skilled in the same field.
• “Invention means an idea of an inventor which permits in practice the solution to a specific problem in the field of technology.” WIPO(1979)
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. Biotechnology patents• Box 4. Biotechnology patents• Patenting biotechnology, and particularly gene patents, can differ between patent offices.• For more information on biotechnology patenting, refer to the trilateral studies (USPTO,• EPO and JPO) at the Web site: www.jpo.go.jp/saikine/tws/sr-3.htm
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• Biotechnology patents granted by the USPTO
• Patent statistics provided in Figure 2 are based on numbers of patents granted by the
• USPTO.
• Biotechnology patents consist of class 435 of the USPTO classification system. Class 435
• (“Molecular biology and microbiology”) includes technologies relating to the analysis and
• application of the genomes of all creatures, such as recombinant DNA, genome analysis,
• combinatorial chemistry, clone/cloning, gene/genetic diagnosis, genetic engineering, gene
• amplification, gene probes, protein engineering, DNA vaccines, DNA markers, DNA
• sequencing, DNA synthesis, cell fusion and polymerase chain reaction (PRC). A complete
• definition of class 435 can be found at:
• www.uspto.gov/web/offices/ac/ido/oeip/taf/moc/435.htm
• Year is the year of the patent grant. Country is the country of residence of the inventor. For
• patents with several inventors from different countries, “fractional counting” was applied (the
• patent is shared between the concerned countries) to avoid double counting.
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• Biotechnology patents at the EPO by priority date
• These data are for patent applications (which may or may not be granted) to the EPO and
• relate to the inventor’s country of residence and to the priority date, which is generally
• considered close to the date of invention.
• Biotechnology patents consist of five IPC codes:
• C12M: Apparatus for enzymology or microbiology.
• C12N: Micro-organisms or enzymes; compositions thereof.
• C12P: Fermentation or enzyme-using processes to synthesise a desired chemical compound.
• C12Q: Measuring or testing processes involving enzymes or micro-organisms.
• C12S: Processes using enzymes or micro-organisms to liberate, separate or purify a preexisting
• compound or composition.
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• Complete definitions of these IPC codes can be found at:
• http://classifications.wipo.int/fulltext/new_ipc/index.htm
• Year is the priority year of the patent application. Country is the country of residence of the
• inventor. For patents with several inventors from different countries, “fractional counting”
• was applied (the patent is shared between the concerned countries), to avoid double
• counting.
• Source: OECD (2001).
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