It is a basic presentation for Biotechnology students to understand Intellectual Property Rights

2. Intellectual properties (IP) refers to creation of minds: inventions,
literary, artistic works and symbols, names, images and designs
used in commerce.
Industrial
Property
-Patents
-Trademarks
-Industrial designs
-Geographical indications
of source
Copyrights
-Literary
-Artistic works
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3. Trade Secret
0 When the individual/organization owing an
intellectual property does not disclose the
property to any one & keeps it as closely guarded
secret to promote his business interests, it is
called trade secrets.
0 May relate to formulate ,processes or materials.
0 Eg. Coca Cola
0 In biotechnology, include ,cell lines,
microorganisms strains,, production
processes,etc.
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4. • Unlimited Duration
• Not necessary to satisfy stringent
requirements
• Costs of filing, consenting & enforcing
patents is saved
• Risk of someone improving upon the
product, process, etc is minimized
Advantages
• Maintaining it is costly.
• Offers no protection from independent
innovation/ invention.
• Nondisclosure of the invention does not
give others a chance to improve upon the
original.
• Cannot be applied to many inventions eg.
Equipment designs, plant varieties,
books etc.
Disadvantages
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5. 0 Trademarks
A trademark is an "identifier": it should make a link
between a product or service and its source, i.e. the
person/institution/enterprise behind it
0 It provides added value to the product or service by
projecting an expectation of quality, goodwill,
uniqueness etc.
0 The value of a trademark can be immense:
• Coca Cola = USD 74 billion (2011)
0 A trademark shall be distinctive and not
descriptive:
• "apple" OK for computers, but not for a fruit juice
0 A trademark shall not be deceptive:
• "Sana-star" OK for health food, but not for
cigarettes
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6. Some examples of trademarks
0 Word mark MIGROS
0 Device mark
0 3D-mark
0 Acoustic mark (the Nokia melody)
0 Position mark
Note: trademark registrations can be renewed every 10 years
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7. Patent
0 A patent is the right granted by a government to an
inventor to exclude others from imitating,
manufacturing, using or selling the invention in
question for commercial use during the specific
period.
0 Patents are granted for:
1. An invention(an product)
2. Innovation/improvement in an invention
3. The process/product of an invention
4. A concept
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8. Patent Requirements
Novelty: Invention must be new & should not be already known to
public
Inventiveness: should not be obvious & should represent an innovation.
Industrial Application & Usefulness: Subject must have industrial
application either immediate/future, should be useful to society/nation.
Patentability: Subject matter must be patentable under the existing law
& its current interpretation.
Disclosure: Gives an opportunity to improve upon the various features
of the invention.
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9. 0 A patent provides its proprietor with an exclusive right, i.e. a
right to exclude others from making, using, selling, offering for
sale, exporting or importing the patented invention.
0 A patent is directed against anyone; however, it is limited:
• substantively (according to the patent claims)
• temporally (according to the patent duration, usually up to 20
years)
• geographically (according to country selection)
0 Important:
A patent does not provide any positive rights:
• a patent for a pharmaceutical drug is not a permission to market
the drug
• a patent does not exclude the infringement* of another party's
patent
* infringement of a patent = violation of patent rights
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10. 0 The patent as a contract between society and inventor
"Rewarding principle":
0 • The inventor discloses its knowledge to the public (as
described in the patent application)
0 • Society provides the inventor with a limited monopoly
(as defined by the patent claims)
0 The patent specification is both a technical and a legal
document!
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12. 0 Structure of patent documents
Description (= the technical part):
• Short summary of the relevant state of the art ("prior
art")
• Problem to be solved by the invention
• Detailed technical description of the invention (US:
"enabling
disclosure")
Claims (= the legal part):
• Definition of the protection range
• Concise and clear (legal certainty for third parties!)
• Limited to one sentence (for historic reasons)
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13. Procedure of Patenting
0 An inventor files a properly prepared application with
the patent office of the concerned country.
0 If application material is unsuitable, returned to the
inventor.
0 Can be resubmitted with modification and explanation.
0 If application considered for patenting, the invention
along with the adequate details of the desired patent is
published.
In India, this is done 18 months after the date of filing the
application.
0 Patent can be challenged, four months after the
application, but if not challenged the patent is granted
after the said period and sealed.
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14. Copyrights
0 “Copyright is a legal device that provides the creator of
a work of art or literature, or a work that conveys
information or ideas, the right to control how the work
is used."
Stephen Fishman, Esq. The Copyright Handbook, 1996.
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15. Public Domain
The only thing you don’t have to cite is common
knowledge. Something that everyone knows like
who the president is.
And Then There’s Copyright. (2009). NJIT Library Searchpath Tutorial 24 August 2009.
http://library.njit.edu/researchhelpdesk/howto/searchpath/mod6/07-copyright.htm 15

16. Fair Use Poster 2001. American Library Association. 24 August 2009
http://www.ala.org/ala/aboutala/offices/wo/woissues/copyrightb/FairUsePoster.jpg
Fair Use
the ability to use sources without seeking permission
from the copyright holder
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17. 0 In case of Biotechnology, Copyright protection is available for
DNA sequences. But one may target these protection by
designing alternative sequences to encode the same protein
taking advantage of genetic degeneracy
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18. Plant variety
Protection(PVP)
0 Plant varieties & Animal breeds are developed
through years of painstaking & scientifically planned
work.
0 It may be argued that these entities are essentially
derived from naturally occurring lines, but usually
represent a considerable reorganization of the existing
gene combinations & skillful selection work.
Utility patents are considered to be the most powerful &
the most expansive in score of their coverage; a single
patent may cover several varieties, an entire
species/genus, genes/proteins or technology & processes.
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20. Protection of Biotechnology
Inventions
0 Biotechnology inventions are concerned with the
life forms & involve one or more of the following:
1. Various methods/processes of generating useful
products.
2. Various products e.g. Antibiotics, purified
vitamins, etc.
3. Applications of various products/processes
4. Various microorganisms, cell lines, plant/animal
lines obtained through biotechnological
approaches.
5. Various DNA sequences/ proteins encoded.
6. Technologies to modify the properties of various
organisms. 20

21. International conventions do not permit patenting
of processes/product applications concerning
alleviation of human diseases.
0 The European patent Office (EPO) has suggested
that isolation of a substance from nature is
merely a ‘discovery’ &, therefore, should not be
patentable. However, the process developed is
patentable.
0 The processes used for genetic modification of
various organisms are patentable virtually in all
countries, including India.
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22. A] Patenting of Genes & DNA
Sequences
0 An artificially synthesized gene is considered
patentable in all developing countries.
0 But, its controversial in case of genes isolated
from naturally occurring organisms.
0 In USA, patent are allowed on such genes. The
patent statue (35 USC101) requires an invention
to be useful for being patentable.
0 In contrast, courts in UK held that natural genes
are not patentable. The protein encoded by the
gene would be covered under the patent if it were
considered novel.
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24. B] Gene Patents & Genetic
Resources
0 The developing countries are technology poor, but
gene rich. In contrast, developed countries are
technology rich and gene poor.
0 Aspect of germplasm collections made from the
developing nations relates to the patenting of
useful genes isolated from them by the
individuals/organizations of developed countries.
0 The use for genetic transformation of such gene
by anyone may be prohibited or, at least, would
carry a suitable fee.
0 Thus the country of source origin should not be
charged on gene usage.
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26. C] Patenting of Life form
0 Life forms, are not patentable in India under the
provisions of Indian Patent Act(1970).
0 However, patents can be obtained for various
biotechnological processes & product applications
within the limitation of international conventions.
0 In USA, microorganisms modified by using more
ingenious techniques i.e. genetic engineering, are now
patentable.
The first patent to a microorganism was allowed by the
American Supreme Court in 1980. Soon after, in 1981,a
patent was allowed in European Union for
microorganism by EPO.
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27. 0 Among the higher organisms, plants
were the first to be patented in USA,
in 1985, a maize line overproducing
tryptophan was allowed a patent.
0 The biotechnology companies in
Europe strongly favor the patenting
of inventions based on living
materials at par with USA & Japan.
0 Animal materials are protected by
patents. USA again was the
trendsetter in this regard; the first
animal patent in world was awarded
in USA in 1988 to ‘oncomouse’.
0 In 1992, EPO also awarded a patent
for ‘oncomouse’.
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29. Management of IPR
0 IPR is ordinarily acquired in the anticipation that
the concerned intellectual property can be
commercialized.
0 A mere holding of IPR does not guarantee
profit.Often R&D effort may be needed to make
an intellectual property marketable.
0 IPR management involves:
1. Transfer of the IPR appropriately & at optimum
value to obtain returns for expenses.
2. Exploitation of collaborative linkages to
facilitate exploitation of the IPR.
3. Monitoring infringements of the IPR &
enforcing one’s right where necessary.
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30. 4. Renewal of patents & designs periodically.
5. Quantitative evaluation of factors such as R&D
investments to royalty ratio will have to be done
periodically.
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