3. INTELLECTUAL PROPERTY
MEANING:
Intellectual property (IP) refers to creations of human
intellect, such as inventions; literary and artistic works;
designs; and symbols, names and images used in commerce
all being the property of human mind and is similar to any
property, whether movable or immovable
4. INTELLECTUAL PROPERTY
RIGHTS (IPR):-
MEANING:
Intellectual property wherein the proprietor or the owner may
exclusively use his property at will and has the right to
prevent others from using it, without his permission. The
rights relating to intellectual property are known as
'Intellectual Property Rights'.
DIVERSIFICATIONOF IPR:
Copyrights and rights related to copyrights
Industrial Property
5. HISTORY OF IPR:
Till 19th century the term Intellectual Property Rights began
to be used
Until 20th century IPR became a common place in the world.
TYPES/TOOLs OF IPRs:
Copyrights and related rights.
Geographical Indications.
Trade Secrets.
Patents.
Trademarks.
Industrial Designs
6. WORLD TRADE ORGANISATION
(WTO)
The World Trade Organization (WTO) is the only global
international organization dealing with the rules of trade
between nations. At its heart are the WTO agreements,
negotiated and signed by the bulk of the world’s trading
nations and ratified in their parliaments. The goal is to help
producers of goods and services, exporters, and importers
conduct their business
7. WORLD INTELLECTUAL
PROPERTY ORGANIZATION(WIPO)
The World Intellectual Property Organization (WIPO) is the
United Nations agency dedicated to the use of intellectual
property (patents, copyright, trademarks, designs, etc.) as a
means of stimulating innovation and creativity.
Some areas are not covered by Paris and Berne conventions of
the WIPO. In some cases, the standards of protection
prescribed were thought inadequate. So the TRIPS agreement
adds a significant number of new or higher standards.
8. TRIPS (TRADE-RELATED ASPECTS OF
INTELLECTUAL PROPERTY RIGHTS)
TRIPS is an international agreement administered by
the World Trade Organization (WTO) that sets down
minimum standards for many forms of intellectual
property (IP) regulation as applied to nationals of other WTO
Members.
It was negotiated at the end of the Uruguay Round of
the General Agreement on Tariffs and Trade (GATT) in 1994.
9. PATENTS• PATENT originates from latin word “patere”.
• PATENT is statutory limited property right granted to Patentee for his invention.
•Patenting excludes others from producing patented product for
selling,importing,using.
• Original patentee’s permission is mandatory if same product with new added
features needs to be legally produced.
THINGS WHICH CAN NOT BE PATENTED:-
•Frivolous inventions or inventions contrary to well established law.
•Invention causing serious prejudice to health, human or plant life.
•Discovery of any living/non living thing or formulation of an abstract theory.
• Mere discovery of new property or new use of a known substance.
•Mere form of horticulture or agriculture.
10. PATENT LICENSING AND TERM OF PATENT
PATENT Licensing is a contract agreement which the patent owner(licensor)
agrees to forgo his right to sue the licensee for infringement of licensor’s patent
rights.
Usually infringement is in form of return of royalty or compensation.
Competitors licensing patents to each other is called cross-licensing agreements.
Done in order to share the benefits of each others patented inventions.
Term of patent in India is 20 years from date of filing patent application form.
Applications filed under Patent Co-operative Treaty (PCT) term starts from
international filing date.
Patent Agent is registered person with Indian Patent Office whose name is entered
in patent agent register.
After being declared qualified the patent agent examination is conducted by
patent office.
11.
12. OBLIGATIONS OF PATENTEE AND PROCESS FOR FILING PATENT
OUTSIDE INDIA
Every patentee has to maintain the patent by paying the renewal fee every year.
No renewal fee to be paid for 1st two years.
3rd year onwards renewal fee ought to be paid.
In case the renewal fee is not paid the patent will be ceased.
The patentee is required to take prior permission before filing patent
application outside India under following circumstances:-
The patentee applicant is Indian resident.
Patent has originated in India.
Patentee does not wish to file patent application in India before filing it abroad.
If Patentee is Indian resident and has filled application in India but 6 weeks
period is not over from the date of application filing.
The invention relates to Atomic energy or defense purpose.
13. COMMON CONTROVERSIES RELATING TO
PATENTS
Patent trolls are common criticism although some suggest they are
not bad.
Realigns market participant incentives.
Makes patent more liquid and clears the patent market.
Pharmaceutical patents prevents generic alternatives.
Maintains high prices for medication.
This makes a significant effect in developing countries.
5% of medicines in the list of essential medicines of WHO are
under patents.
Pharmaceutical industry has provided US $2billion for medicines.
Medicines provided at lower cost or even free of cost to poor.
Able to do so by using differential pricing and parallel imports.
14. PATENT AMENDMENT ACT 2002
Excludes any living or non-living substances in nature from being
patented.
Uniform term of patent protection is of 20 years.
Several provisions incorporated to protect bio-diversities and
traditional knowledge.
The provisions relating to national security have been strengthened.
15. PATENT AMENDMENT ACT, 2005
Emphasis on Indigenous manufacturers
Prevent "ever greening" of patents
Conditions for obtaining compulsory license
Reasonable period for negotiations between the
patent holder and companies seeking compulsory
license:
Exemption of research and development from the
ambit of patents
Product patent
17. Patent applications by filing route:
Direct and PCT system, 2012
PCT national phase entries (non-residents): 55%
Direct applications (non-residents): 45%
18. PATENT AMENDMENT ACT, 2005
Emphasis on Indigenous manufacturers
Prevent "ever greening" of patents
Conditions for obtaining compulsory license
Reasonable period for negotiations between the
patent holder and companies seeking compulsory
license:
Exemption of research and development from the
ambit of patents
Product patent
SR.NO PARAMETER INDIAN PATENT SYSTEM US PATENT SYSTEM
1.
Patent Act Patent ( Amendment) Act,2005
-23 chapters
-163 sections
35 US code
-4part
-34 chapters
-376 sections
2. Scope of Patent Act It covers utility patent
-Rest two are covered by
separate acts.
It covers
-Utility Patent
-Plant Patent
-Design Patent
3. Criteria for Patentability US patent act allows a discovery
of process, machine,
manufacture or composition of
matter to be patented if it
satisfies the criteria of novelty,
utility and non-obviousness.
While under Indian Patent Act, the
mere discovery of a new and useful
process or product is not
patentable.
4. Rule of Patent First to Invent First to File
5. Plant Patent It is not done in India It is done in US.
6. Business Patent It is not done in India It is done in US.
19. CASES
CASE STUDY 1-US International Trade Commission
Held That Apple Did Not Violate Google’s Patent
CASE STUDY 2-NOVARTIS
CASE STUDY 3-CASE STUDY BAJAJ AND TVS
PATENT ISSUES
20. TRADEMARKS
• A trademark is a distinctive sign that identifies certain goods or services
as those produced or provided by a specific person or enterprise.
• It may be one or a combination of words, letters, and numerals. They
may consist of drawings, symbols, three-dimensional signs such as the
shape and packaging of goods, audible signs such as music or vocal
sounds, fragrances, or colours used as distinguishing features.
Category:
1. Products – 34 classes
2. Services – 11classes
21. TRADEMARKS ORIGIN
The first modern trademark law in 19th century in France –
“Manufacture and Goods Mark Act”
1875 - The Trade Marks Registration Act, formal registration of
trade marks at the UK Patent Office for the first time.
1938 - UK first registration system based on the “intent-to-use”
principle “UK Trade Marks Act, 1938”
1940 - “Trade Marks Act, 1940, first statutory law in India similar
provision like the UK Trade Marks Act, 1938.
1958 - “Trade and Merchandise Marks Act, 1958”
1999 - “Trade Marks Act, 1999”
22. TYPES OF TRADEMARKS
Name: Name as trademark to distinguish the company name from
others and to establish brand name.
Symbol: Symbols denoting the company name with a sign, picture
which serves as an indicative mark.
23. Catchphrases: A catchphrase that is identifiable to a person or
company that is used to sell merchandise can be trademarked
“ I’m lovin’ it” ,
“ Believe in the best”,
“ connecting people”
Mascot: Any character humanly or imaginary can be trademarked to
denote and distinguish a product.
24. Lyrics: A songwriter’s lyrics can be trademarked to prevent it’s
infringement.
Monograms: Monogram art with the initials of the company can
also be trademarked.
Fragrances: LIVING MINT, Paris Hilton, Loreal
Audio: LG, Intel , Skype, Nokia, Samsung
25. A TRADEMARK MAY BE DESIGNATED BY THE
FOLLOWING SYMBOLS:
™ Unregistered trademark
℠ Service Mark
® Registered trademark
26. ADVANTAGES OF TRADEMARK
REGISTRATION
1) Goodwill in the business
2) Prevents misuse by other business firms.
3) Status of branded Goods yes no
4) Impression to customers of standard Products or Services
5) The exclusive right to the use of the trade mark in relation to the goods
or services in respect of which the trade mark is registered.
6) Relief in case of infringement (misuse by others) of the trade mark.
7) Power to assign (transfer) the trade mark to others for consideration.
27. PROVISIONS IN TRIPS
WTO member countries are obliged to grant full protection to the
registered trademarks.
TRIPS aims that the members provide the maximum protection to
this mark, in accordance with this Agreement and other relevant
conventions on trademarks, to everyone carrying on business.
The agreement defines what types of signs must be eligible for
protection as trademarks, registration process, term period of
trademark, renewal period and what the minimum rights conferred
on their owners must be.
It says that service marks must be protected in the same way as
trademarks used for goods. Marks that have become well-known in a
particular country enjoy additional protection.
28. THE TRADEMARK ACTS IN INDIA
Current Governing Law
Trade Marks Act, 1999 – Mechanism of registration, protection of trademark and
prevention of fraudulent trademark.
Provides for the rights acquired by registration of trademark, modes of transfer and
assignment of the rights, nature of infringements, penalties for such infringement and
remedies available to the owner in case of such infringement.
Amendment (2010)
Protection of Indian trade marks in other countries (in line with Madrid Protocol.)
International registration of trade marks - Allows Indian and foreign nationals to
register Trade Marks simultaneously in other countries.
Major changes - Registration process to be completed in a time bound manner "within
18 months of the filing of the application".
Increased time period of filing a notice of opposition of published applications, from 3
months to 4 months.
Simplified provisions for transfer of ownership by assignment or transmission.
International registration period – 10 years
Renewal period – 10 years (from the expiry of the preceding period)
Grace period for renewal – 6 months
29. TRADEMARK INFRINGEMENT
Violation of exclusive rights attaching to a trademark without the authorization
of the trademark owner or any licensee causing resembles to the product.
The grounds of refusal of trademarks can be
Absolute
Relative
Penalty for Violating a trademark
Injunction
Monetary Damages
Attorney’s Fees
30. Search
Trademark Application
Issuance of Official Receipt and
trademark No.
Official Hearing
Response
Response Accepted?
Acceptance
Publication
[Opposition 3 Months]
Registration
Renewal
REGISTRATION PROCESS
yes
no
31. -6
-4
-2
0
2
4
6
8
10
12
2006 2007 2008 2009 2010 2011 2012
GrowthRate[%]
Application Year
Trend in Trademark Application class cases count
worldwide
-10
-5
0
5
10
15
2006 2007 2008 2009 2010 2011 2012
GrowthRtae[%]
Registration Year
Trend in trademark registration class counts worldwide
32. COMPARISION OF INDIA & USA TRADE
MARKSSr.
No
PARAMETER INDIA TRADEMARK LAWS USA TRADEMARK LAWS
1. GOVERNANCE Trademark Act,1999 United States trademark law is mainly
governed by the Lanham Act
2. MEANING According to Section 2 (zb) of the Trade
Marks Act, 1999, “trade mark means a
mark capable of being represented
graphically and which is capable of
distinguishing the goods or services of
one person from those of others and
may include shape of goods, their
packaging and combination of colors.”
A trademark is a word, phrase, or logo
that identifies the source of goods or
services. Trademark law protects a
business' commercial identity or brand by
discouraging other businesses from
adopting a name or logo that is
"confusingly similar" to an existing
trademark.
3. USE OF T.M
AND
® SYMBOLS.
Generally one who has filed an
application (pending registration) can
use a T.M (Trademark) designation with
a mark to alert public of its exclusive
claim.
The registration ® symbol may only be
used when the mark is registered.
™ signifies common law trademark
rights. Businesses automatically receive
common law trademark rights by using a
brand name or logo in the normal course
of commerce.
® Signifies a registered trademark. The
® symbol may only be used on a
trademark that has been examined,
approved and registered with the USPTO
4. TERM OF
REGISTRATIO
N
The term of registration of trademark is
10 years but may be renewed subject
to the payment of the prescribed fee in
accordance with the Provisions of
A U.S. trademark generally lasts as long
as the trademark is used in commerce
and defended against infringement
34. INDUSTRIAL DESIGN
ORIGIN : Designing and Printing of Linen Act(1787)U.K
Design Act,1911 British Govt. in India
Indian Design Act,2000
DESIGN : A Design refers to the :
•Features of shape, configuration, pattern, ornamentation or
composition of lines or colors applied to any article,
• In two or three dimensional (or both) forms.
•Applied by any industrial process or means (manual, mechanical or
chemical) separately or by a combined process,
•Which in the finished article appeals to and judged solely by the eye
35. EXAMPLE OF A THREE-DIMENSIONAL DESIGN
EXAMPLE OF A TWO-DIMENSIONAL DESIGN
36. ADVANTAGES OF INDUSTRIAL DESIGN
•Attractive and appealing
•Prevent its unauthorized copying or imitation by others
•Fair return on investment
•Increases the commercial value
•A protected design may also be licensed(or sold) to others for a
fee
•Fair competition and honest trade practices
37. INDIAN DESIGN ACT,2000 THE
(‘CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE
MARKS’APPOINTED SHALL BE THE CONTROLLER FOR
INDUSTRIAL DESIGN)
MAIN PROVISIONS OF THE ACT
•Essential requirements for registration.
•Exclusion from the scope of design.
•Classification of designs : section 5(3).Rule 10, 11.The third schedule.
•Design licensing .
•Cancelation of registered design.
•Security of India section 34, 46.
•Copyright in registered designs
•Requirements before delivery on sales.
•Provisions as to exhibitions.
• Piracy of registered design section 5(6), 22.
38. TEN STEP FOR REGISTRATION OF INDUSTRIAL DESIGN
Step 1 : FINDING OUT WHETHER ANY REGISTRATION
ALREADY EXISTS
Step 2 : PREPARING A REPRESENTATION OF THE DESIGN
Step 3 : IDENTIFYING THE CLASS OF DESIGN
Step 4 : PROVIDING A STATEMENT OF NOVELTY
Step 5 : INCLUDING A DISCLAIMER
39. TEN STEP FOR REGISTRATION OF INDUSTRIAL DESIGN
Step 6 : CLAIMING A PRIORITY DATE
Step 7: DETERMINING THE FEE TO BE PAID
Step 10 : PROVIDING FULL DETAILS
Step 9 : COMPLYING WITH OBJECTIONS (IF ANY)
Step 8 : ENSURING ALL ENCLOSURES ARE ATTACHED
40. DESIGN FILING
Filling an application
Comply with the
objections within 2
months of receipt of
report
Receive Application No.
Receive Examination
Report
Abandoned
Hearing If
objection is
contested
Refusal
Appeal to High
Court
In Case of
allowance of
Appeal
Waiving/removal of
objections Acceptance
Publication
Issue Of Certificate
41. Applications design counts by filing route:
Direct and Hague System, 2012
57%
43%
Hague non-resident
Direct non-resident
42. Application design counts for middle- and low-income
countries, 2012
0
2000
4000
6000
8000
10000
India Brazil Mexico Thailand South
Africa
8545
6563
4137 3481
2361
Counts
Counts
Note: Application design counts consist of adding the number of designs
contained in direct applications together with the number of designs contained
in Hague System designations received by offices (where applicable).
43. COMPARISION OF INDIA & OMANSR.
NO.
PARAMETER INDIA OMAN
1. ACT India's Design Act, 2000 is enacted to
consolidate and amend the law relating to
protection of design and to comply with the
articles 25 and 26 of TRIPS agreement
Industrial design law in Oman is governed by the
Industrial Property Law issued by Royal Decree No
67/2008 which was later amended by Royal
Decree No 131/2008
2. CRITERIA FOR
REGISTRATION
Design should ne new and original.
Design should related to shape,
configuration, pattern or ornamentation of
article.
Design should not include any trademark or
property mark or artistic work.
Be novel in the sense that it has not been
disclosed the public prior to the date of the
application for registration.
Have an individual character that
distinguishes the design to a sufficient degree
from all designs disclosed the public anywhere in
the world
3. EXEMPTION
FROM
REGISTRATION
A design which is not
New or original
Has been disclosed to public in anywhere in
India or any other country by publication in
tangible form.
Is not distinguishable from known designs
or combination of known designs.
Comprise or contains scandalous or
obscene matter, shall not be registered.
Any aspect of the design which is solely
dictated by a technical character.
Designs which are contrary to public order
and morals.
4. DURATION The total time for registered is up to 15 years.
Initially the right is granted up to a period of 10
years and is extended up to a period of 5 years.
The law grants the owner of the design a
protection that initially lasts for 5 years, which can
be renewed for up to a maximum of 15 years.
