INTELLECTUAL PROPERTY RIGHTS

1. Intellectual property refers to the creation of mind, i.e. invention, industrial designs for articles, literary & artistic work, symbols, etc. used in commerce. It is branch of law that deals with the issues coming out of the commercial exploitation of Intellectual Properties.

2. When the products of human mind are accorded public protection, the concept of intellectual property law is said to have been property applied. In other words, if there is no protection, there is no application of the law of intellectual property.

3. Not all products of human mind are protectable as intellectual property such as day dreams, imaginings etc. However, if they are reduced into some tangible form, they are protectable.

4. Intellectual property is divided into two categories:
   
   Industrial property which includes patents, trade marks, industrial designs and geographical indications of source and Copyrights.

5. The law of Intellectual Property Rights is an umbrella term which encompass within its fold various statute laws such as:

1. The Patents Act, 1970 as amended by Patent (amendment) Act, 2005

2. The Copyright Act, 1957

3. The Trade and Merchandise Marks Act, 1958 (with amended Trade Marks Act, 1999)

4. The Designs Act, 1911 (a with amended Designs Act, 2000)

5. The Geographical Indications of Goods (Registration and Protection) Act, 1999 (Passed by the Parliament but yet to be implemented)

6. Lay out of Designs of Integrated Circuits

7. Protection of Plant varieties and Farmer’s right Bill passed by Lok Sabha)

8. Protection of undisclosed Information Bill proposed to be introduced.

9. Other related Legislations such as

– Information Technology Act.

– Bio Diversity Bill

– The Convergence Bill

– The Competition Bill

The summarized provisions of the laws relating to trade marks, copyrights, patents and the Geographical Indication of goods which form the core segments of the law of IPR are highlighted hereunder:

TRADE MARK

1. A ‘mark’ is a symbol or a graphical representation in various forms which are applied to the articles of commerce.

2. Under the Act, there are four categories of marks which are Trade marks, Services, Marks, Certification Marks and Collective Marks.

3. A trade mark is used for identification of goods or services supplied or provided by a particular producer in distinction with other goods or services available in the market.

4. Trade Marks function as a stamp of quality in the minds of people who show affinity towards the products or services of a particular producer or service provider. Thus, it distinguishes the goods or services of one party from those of others.

5. Trade Marks provide assurance that the goods or services are of certain quality and consistency.

6. Though it is not compulsory to register the Trade Mark it is advisable to get it registered for better protection under the law. In respect of unregistered Trade Marks, a passing off action can be maintained against the party infringing the subsisting or well known trade marks.

7. Trade Marks can be owned jointly or separately.

8. Once registered, the trade mark has a validity period for a term of ten years. After the expiry of the term, the registration can be renewed for another terms of ten years by payment of a prescribed fees. Likewise, it can be renewed for a life time.

9. Against infringement of Trade Marks, the aggrieved party has remedy to institute a criminal proceeding or to bring an action for injunction and damages.

10. The registered proprietor of Trade Mark has the power to effect assignment and transmission of Trade Mark.

11. There is Appellate Boards to deal with the offences and penalties in respect of the infringement of Trade Marks.

12. Under section 157, the Central Government has power to make rules to carry out the provisions of the Trade Marks Act by making notification in the official Gazette.

13. Section 35 of the Income Tax Act, provides for allowance of expenditure incurred on scientific research and section 35A provides on the expenditure incurred on acquisition of patents rights or copyrights.

COPY RIGHT

1. Copyright law is applied in the fields of literary, dramatic, music and artistic works.

2. Copyright is an exclusive right which provides the copyright owner to

– reproduce the work in any material from including storing,

– to issue copies of mark to the public, if they are already not in circulation,

– to perform the work in public, or to communicate to the public.

3. Section 13 of the Copyright Act outlines the scope that copyright exists in three classes of work.

– Original literary, dramatic, musical and artistic work

– Cinematograph film and

– Sound recording

The originality does not refer to the ideas but to the manner and material forms of their expression.

4. There are no copyrights in natural events.

5. It is not necessary that the work must be registered under the copyright law.

6. For protection under Copyright law, the work must be original, (must not be copied from other works) [Macmillan Co. Ltd. vs. K & J Cooper AIR 1924 PC 75 p. 83]

7. Use of original skill is essential to acquire copyright for having protection under the copyright law.

8. Copyrights can be granted to joint authors.

9. Right exists in respects of publications or reproduction, translation, adoption or to convent into music/record, to copy, etc.

10. The copy right in a work can be assigned and licensed against royalty.

11. The term of copyright in any literary, dramatic musical or artistic work other than photograph published within the life time of the author is 60 years from the beginning of the calendar year next following the year in which the author dies. In other words, it is the life time of the author plus 60 years after his or her death.

12. In case of photographs and Cinematograph Films copyright subsists for a term of 60 years from its publication [sections 25 and 26].

13. Infringement occurs in case of following acts which without the consent of the author.

– reproduction of work in material form

– publication of the work

– Communication of the work in public

– making adoption and translation of the work.

14. Against infringement of copyright, the author is entitled to have recourse either by way of filing a civil suit or a criminal suit in addition to having administrative remedies available from the Registrar of copyrights, copyright Board and copyright societies.

PATENT

1. Patent is a legal right granted by the Government that permits its owner to prevent others from making, using or selling an invention.

2. The patent system in India is governed by the patent Act, 1970 (No. 39 of 1970) as amended by the Patents (Amendment) Act, 2005 and the patents Rules, 2003 effective from 1-1-2005 in India.

3. Patent right is territorial in nature and a patent obtained in one country is not enforceable in other country.

4. Patent is granted in respect of an invention which must be new and useful.
   
   Sec. 2(m) "patent" means a patent for any invention granted under this Act;’
   
   Sec. 2(ja) "inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;’
   
   Sec. 2(l) "new invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art;

5. The criteria for the grant of a patent is the novelty of invention and its utility. Once these two requisites are satisfied, the next parameter to consider that it must have inventive steps and it must be industrially applicable.

6. An invention to become the subject matter of patent should not be a discovery.

7. The Patent is granted in respect of each invention.

8. The Patents can basically be categorized into two types.

1. ordinary patents

2. patents of addition (granted for improvement or modification of the already granted patents for the unexpired term)

3. convention applications with priority date

4. National Phase applications under PCT

9. Not all inventions are eligible for patent protection. Section 3 of the Patent Act, lists out the items which are not inventions.

10. In respect of filing of International application under the Patent Co-operation treaty, the filing date as per newly introduced section 7(1B) of an application as referred to in sub section (1A) and its complete specification shall be the international filing date as accorded under the patent co-operation treaty.

11. For detailed procedure to acquire a patent, please refer to the steps enumerated in C.D. Briefly stated, the steps involved are application for patent, reference of application to the Examiners, examination of application by examiner, search and investigation, acceptance of complete specification and advertisement in the Gazette, opposition to the grant of Patent and granting and sealing of Patent.

12. The term of a patent is 20 years.

13. The owner of a patent has right to exploit the patent, assign and licence the patent and also right to surrender the patent which would ultimately go to public domain.

14. As per amended section 25 with regard to opposition proceeding to the grant of patent it states that where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the controller against the grant of patent on the ground that the applicant has wrongfully obtained the invention.

15. Transmission of Patent - on the death of the owner of a patent, the patent may be transferred to his or her legal heir or representative like any other property.

16. In case of infringement of the right over a patent, the owner can institute a civil suit in any District Court or a High Court having jurisdiction to fry the suit.

17. The period of limitation for bringing a suit is three years from the date of infringement, No notice of infringement to the defendant is necessary.

18. In case of infringement, the relief may be claimed by way of an injunction, damages, an account of profits, an order for delivery or destruction, certificate of validity and/or costs.

19. India is member of World Intellectual Property Organization (WIPO). In respect of patents, India is a member of the following international organizations and treaties ;

1. World Trade organization w.e.f. 1.1.1995

2. Conventions establishing WIPO

3. Paris convention for the protection of industrial w.e.f. 7.12.1998

4. Patent Co-operation Treaty (PCT) w.e.f. 7.12.1998

5. Budapest treaty w.e.f. 17.12.2001.

THE GEOGRAPHICAL INDICATIONS OF GOODS (REGISTRATION AND PROTECTION) ACT, 1999

1. This is an Act to provide for the registration and better protection of geographical indication relating to goods. The goods may be of agricultural, natural or manufactured goods or any goods of handicraft or of industry and includes food stuff. And the term indication includes any name, geographical or figurative representation or any combination of them conveying or suggesting the geographical origin of goods to which it applies.

2. The geographical indication in relation to goods means an indication which identifies such goods as aforestated originating or manufactured in the territory of a country or a region or a locality in that territory where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin and where such goods are manufactured goods, any of the activities like production, processing or preparation of goods takes place in such territory, region or locality. Say for example, basmati rice production from Punjab, tea production from Assam or Darjiling, Kolhapuri Chappel from Kolhapur, wine or pheni from Goa, to name a few.

3. For the purpose of registration, the Register of Geographical Indications shall be kept at the Head office of the Geographical Indications Registry which shall record, the names, address and description of proprietors, names, address and description of authorised users and such other matters as may be prescribed.

4. A geographical registration may be registered in respect of any goods comprised of such class as may be classified by the Registrar and in respect of definite territory of a country or a region or a locality in that territory.

5. Section 9 of the Act categorises certain indications which shall not be registered as geographical indication such as a geographical indication the use of which would be likely to deceive or cause confusion or which would be contrary to any law for the time being in force or which may hurt the religious susceptibilities of any class of citizens or which are determined to be generic names or indications of goods and are not ceased to be protected in their country of origin or which have fallen into disuse in that country or which would otherwise be disentitled to protection in a Court besides other prohibitions.

6. Any association of persons, producers or organization or authority established under any law desirous of registering geographical indication in relation to such goods may apply in writing in such form accompanied by such fees as may be prescribed.

7. A single application may be made for different class of goods and fees to be paid shall be in respect of each such class of goods. Once the application is accepted, the Registrar initiates its action for advertisement so that the public is given three months time to make any kind of position to registration.

8. The registration is valid for a term of 10 years which upon its expiry may be renewed from time to time.

9. As per Sec. 20, no person shall be entitled to institute any proceeding or to recover damagers for the infringement of an unregistered geographical indication. The right of action / relief can be claimed only if the geographical indication is registered. As per Section 13, registration shall be prima facie evidence of validity.

10. Any right to a registered geographical indication shall not be the subject matter of assignment, transmission licensing, pledge, mortgage or any such other agreement.

11. The law prescribes various quantum of penalties and fine for falsification of geographical indication of goods as stated in Section 38 to 44.

BIOLOGICAL DIVERSITY

1. The piece of legislation was enacted on 05.02.2003 with the object of providing conservation of biological diversity, sustainable use of its components and fair and equitable sharing of the benefits arising out of the use of biological resources, knowledge and for matters connected there with or incidental thereto. The Act is known as the Biological Diversity Act, 2002.

2. The factors that necessitated passing of this Act are as under :

– That India is rich in biological diversity and associated traditional and contemporary knowledge system relating thereto.

– That India is a party to the UN Convention on Biological Diversity signed at Rio de Janeiro on 05.06.1992.

– That the said convention came into force on 29-12-1993.

– That the said convention reaffirms the sovereign rights of the states over their biological resources.

– That the said convention has the main objective of conservation of biological diversity, sustainable use of its components and equitable sharing of the benefits arising out of utilization of generic resources.

– That it was considered necessary to give effect to the said convention.

3. The term biological diversity means the variability among living organizers from all sources and the ecological complex of which they are part and includes diversity within species or between species and of ecosystems. Further biological resources comprise of plants, animals and micro-organisms or parts thereof, their genetic materials and by-products (excluding value added products) with actual or potential use or value, but does not include human genetic materials. The commercial utilization means end use of biological resources for commercial utilization such as drugs, industrial enzymes, food flavours, fragrance, cosmetic, emulsifiers, oleoresins, colours, extracts and genes used for improving crops and livestock through genetic intervention but does not include conventional breeding or traditional practices in use in any agriculture, horticulture, poultry, dairy farming, animal husbandry or bee-keeping.

4. The Biological Diversity Act, 2002, provides for various provisions relating to formation of Natural Biodiversity Authority, Biodiversity Management Committee and state Biodiversity Board.

5. The Act provides that no application for intellectual property rights be made without approval of National Biodiversity Authority. The Act also prescribes certain persons not to undertake Biodiversity related activities without approval of National Biodiversity Authority.

DESIGNS

1. The Design Act, 2000, is an Act to consolidate and amend the law relating to protection of Designs.

2. The Designs Act, 1911 has undergone a substantial change and resultantly the scope of the terms article and design had been enlarged with the introduction of definition of original.

3. At the same time the new Act provides for the identification of non registerable designs.

4. It provides provision for restoration of lapsed designs.

5. As far as the registration is concerned, the procedures followed are more or less the same way the registrations of patents are done.

6. By virtue of section 4, a design which is not new or original or has been disclosed to the public anywhere in India or is significantly in distinguishable from known designs or comprises or contains scandalous or obscene matter shall not be registered.

7. It contains provision with regards to the registration of Copyright in the design.

8. When a design is registered, the proprietor of the design shall have the Copyright in the design during 10 years from the date of registration which could be extended for a further period of 5 years.

9. Legal formality involved against the piracy is more or less same as we follow in case of other forms of IPR.