Intellectual Property Rights : Indian Perspective


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The most comprehensive report on IPRs, created for my seminar on the topic. The Report is result of earnest efforts to make it best of contents.

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Intellectual Property Rights : Indian Perspective

  1. 1. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 1 1. INTRODUCTION TO INTELLECTUAL PROPERTY Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article, literary & artistic work, symbols etc. used in commerce. Intellectual property rights as a collective term includes the following independent IP rights which can be collectively used for protecting different aspects of an inventive work for multiple protection:- • Patents • Copyrights • Trademarks • Registered ( industrial) design • Protection of IC layout design, • Geographical indications, and • Protection of undisclosed information Intellectual property is divided into two categories: industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source: and Copyright, which includes literary and artistic works such as novels, poems, plays, films and musical works etc. According to the TRIPS Agreement, the intellectual property has been classified into-Patents, Industrial Designs, Trade Marks, Copyright, Geographical Indications, Layout Designs of Integrated Circuits, Protection of Undisclosed Information/Trade Secrets. Different IP Rights vary in the protection they provide. • What is Intellectual Property Intellectual property refers to creations of the mind: inventions; literary and artistic works; and symbols, names and images used in commerce. Intellectual property is divided into two categories: Industrial Property includes patents for inventions, trademarks, industrial designs and geographical indications. Copyright covers literary works (such as novels, poems and plays), films, music, artistic works (e.g., drawings, paintings, photographs and sculptures) and architectural design. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and broadcasters in their radio and television programs. • Nature of Intellectual Property Rights IPR are largely territorial rights except copyright, which is global in nature in the sense that it is immediately available in all the members of the Berne Convention. These rights are awarded by the State and are monopoly rights implying that no one can use these rights without the consent of the right holder. It is important to know that these rights have to be renewed from time to time for keeping them in force except in case of copyright and trade
  2. 2. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 2 secrets. IPR have fixed term except trademark and geographical indications, which can have indefinite life provided these are renewed after a stipulated time specified in the law by paying official fees. Trade secrets also have an infinite life but they don’t have to be renewed. IPR can be assigned, gifted, sold and licensed like any other property. Unlike other moveable and immoveable properties, these rights can be simultaneously held in many countries at the same time. IPR can be held only by legal entities i.e., who have the right to sell and purchase property. These rights especially, patents, copyrights, industrial designs, IC layout design and trade secrets are associated with something new or original and therefore, what is known in public domain cannot be protected through the rights mentioned above. Improvements and modifications made over known things can be protected. It would however, be possible to utilize geographical indications for protecting some agriculture and traditional products. • What are intellectual property rights? Intellectual property rights are like any other property right. They allow creators, or owners, of patents, trademarks or copyrighted works to benefit from their own work or investment in a creation. These rights are outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions. The importance of intellectual property was first recognized in the Paris Convention for the Protection of Industrial Property (1883) and the Berne Convention for the Protection of Literary and Artistic Works (1886). Both treaties are administered by the World Intellectual Property Organization (WIPO). • Why promote and protect intellectual property? There are several compelling reasons. First, the progress and well-being of humanity rest on its capacity to create and invent new works in the areas of technology and culture. Second, the legal protection of new creations encourages the commitment of additional resources for further innovation. Third, the promotion and protection of intellectual property spurs economic growth, creates new jobs and industries, and enhances the quality and enjoyment of life. An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being. The intellectual property system helps strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.
  3. 3. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 3 2. LITERATURE REVIEW In addition, technological developments in the 20th century have transformed the majority of wealth creating work from physically – based to “knowledge-based”. Technology and knowledge are now the key factors of production. With increased mobility of information and global work force, knowledge and expertise can be transported instantly around the world, and any advantage gained by one company can be eliminated by competitive improvements overnight. The only comparative advantage a company will enjoy will be the process of innovation-combining market and technology know-how with the creative talents of knowledge workers to solve a constant stream of competitive problems.—and its ability to derive value from information. The Major challenge before the organization in the coming years would be to create a culture for IPR regime, so that creative work and innovations get duly protected. More and more organizations may have to provide at their cost the services of IP management consulting firm for drafting / prosecution of intellectual property. IPR, very broadly, are rights granted to creators and owners of works that are results of human intellectual creativity. These works can be in the industrial, scientific, literary and artistic domains, which can be in the form of an invention, a manuscript, a suite of software, or a business name. The importance of Intellectual Property in India is well established at all levels – statutory, administrative and judicial. India ratified the agreement establishing the (World Trade Organization) WTO. This agreement, inter-alia, contains an agreement on Trade Related Aspects of IPRs (TRIPS), which came into force from 1st jan. 1995. It lays down minimum standards for the protection and enforcement of IPRs in member countries, which are required to promote effective and adequate protection of intellectual propety rights with a view to reducing distortions of and impediments to international trade. The obligations under the TRIPS agreement relate to provision of minimum standard of protection within the member countries legal systems and practices. The agreement provides for norms and standards in respect of following areas of intellectual property. • Patents • Copyrights • Trademarks • Registered ( industrial) design • Protection of IC layout design, • Geographical indications, and • Protection of undisclosed information
  4. 4. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 4 3. METHODOLOGY 3.1 WHAT IS PATENT? A patent is an exclusive right granted for an invention – a product or process that provides a new way of doing something, or that offers a new technical solution to a problem. A patent provides patent owners with protection for their inventions. Protection is granted for a limited period, generally 20 years. 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. Exclusive right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available for a limited period of time. In spite of the ownership of the rights, the use or exploitation of the rights by the owner of the patent may not be possible due to other laws of the country which has awarded the patent. These laws may relate to health, safety, food, security etc. Further, existing patents in similar area may also come in the way. A patent in the law is a property right and hence, can be gifted, inherited, assigned, sold or licensed. As the right is conferred by the State, it can be revoked by the State under very special circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime. The patent right is territorial in nature and inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries. A new chemical process or a drug molecule or an electronic circuit or a new surgical instrument or a vaccine is a patentable subject matter provided all the stipulations of the law are satisfied. • Why are patents necessary? Patents provide incentives to individuals by recognizing their creativity and offering the possibility of material reward for their marketable inventions. These incentives encourage innovation, which in turn enhances the quality of human life. • What kind of protection do patents offer? Patent protection means an invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. Patent rights are usually enforced in courts that, in most systems, hold the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party.
  5. 5. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 5 • What rights do patent owners have? A patent owner has the right to decide who may – or may not – use the patented invention for the period during which it is protected. Patent owners may give permission to, or license, other parties to use their inventions on mutually agreed terms. Owners may also sell their invention rights to someone else, who then becomes the new owner of the patent. Once a patent expires, protection ends and the invention enter the public domain. This is also known as becoming off patent, meaning the owner no longer holds exclusive rights to the invention, and it becomes available for commercial exploitation by others. • What role do patents play in everyday life? Patented inventions have pervaded every aspect of human life, from electric lighting (patents held by Edison and Swan) and sewing machines (patents held by Howe and Singer), to magnetic resonance imaging (MRI) (patents held by Damadian) and the iPhone (patents held by Apple). In return for patent protection, all patent owners are obliged to publicly disclose information on their inventions in order to enrich the total body of technical knowledge in the world. This ever increasing body of public knowledge promotes further creativity and innovation. Patents therefore provide not only protection for their owners but also valuable information and inspiration for future generations of researchers and inventors. • How is a patent granted? The first step in securing a patent is to file a patent application. The application generally contains the title of the invention, as well as an indication of its technical field. It must include the background and a description of the invention, in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials – drawings, plans or diagrams – that describe the invention in greater detail. The application also contains various “claims”, that is, information to help determine the extent of protection to be granted by the patent. • What kinds of inventions can be protected? An invention must, in general, fulfil the following conditions to be protected by a patent. It must be of practical use; it must show an element of “novelty”, meaning some new characteristic that is not part of the body of existing knowledge in its particular technical field. That body of existing knowledge is called “prior art”. The invention must show an “inventive step” that could not be deduced by a person with average knowledge of the
  6. 6. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 6 technical field. Its subject matter must be accepted as “patentable” under law. In many countries, scientific theories, mathematical methods, plant or animal varieties, discoveries of natural substances, commercial methods or methods of medical treatment (as opposed to medical products) are not generally patentable. 3.2 INDIAN PATENT ACT The first Indian patent laws were first promulgated in 1856. These were modified from time to time. New patent laws were made after the independence in the form of the Indian Patent Act 1970. The Act has now been radically amended to become fully compliant with the provisions of TRIPS. The most recent amendment was made in 2005 which were preceded by the amendments in 2000 and 2003. While the process of bringing out amendments was going on, India became a member of the Paris Convention, Patent Cooperation Treaty and Budapest Treaty. • What is Patentable Invention The invention to be patentable should be technical in nature and should meet the following criteria - 3 i) Novelty: The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India. ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document. iii) Industrially applicable: Invention should possess utility, so it can be used in an industry. • Non Patentable Inventions An invention may satisfy the conditions of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situations: (i) An invention which is frivolous or which claims anything obviously contrary to well established natural laws e.g. different types of perpetual motion machines. (ii) An invention whose intended use or exploitation would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment e.g., a process for making brown sugar will not be patented. (iii) The mere discovery of a scientific principal or formulation of an abstract theory e.g., Raman Effect and Theory of Relativity cannot be patented.
  7. 7. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 7 (iv) The mere discovery of a new form of a known substance which does not result in enhancement of the known efficacy of that substance or the mere discovery of any new property or new use of a known substance or the mere use of a known process, machine or apparatus unless such a known process results in a new product or employs at least one new reactant. For the purposes of this clause, salts, esters, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance unless they differ significantly in properties with regard to efficacy. (v) A substance obtained by a mere admixture resulting only aggregation of the properties of the components thereof or a process for producing such substance. (vi) The simple arrangement or rearrangement or duplication of features of known devices each functioning independently of one another in a known way. If you put torch bulbs around an umbrella and operate them by a battery so that people could see you walking in rain when it is dark, then this arrangement is patentable as bulbs and the umbrella perform their functions independently. (vii) A method of agriculture or horticulture. For example, the method of terrace farming cannot be patented. (viii) Any process for medical, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings, or any process for a similar treatment of animals to render them free of disease or to increase economic value or that of their products. For example, a new surgical technique for hand surgery for removing contractions is not patentable. (viii) Inventions relating to atomic energy. (ix) Discovery of any living thing or non-living substance occurring in nature; (x) Mathematical or business methods or a computer program per se or algorithms; (xi) Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production and propagation of plants and animals; (xii) A presentation of information; (xiii) Topography of integrated circuits; (xiv) A mere scheme or rule or method of performing mental act or method of playing games; (xv) An invention which, in effect, is traditional knowledge or which is aggregation or duplication of known component or components. Computer program per se as such has not been defined in the Act but would generally tend to mean that a computer program without
  8. 8. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 8 any utility would not be patentable. Protection of seeds and new plant varieties is covered under a different Act, which provides a protection for a period of 10 years. Similarly, topography of integrated circuits is protected through yet a different Act. • Legislation The Patent System in India is governed by the Patents Act, 1970 (No. 39 of 1970) as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003, as amended by the Patents (Amendment) Rules 2006 effective from 05-05-2006. • Administration The Patent Office, under the Department of Industrial Policy & Promotion, Ministry of Commerce & Industry, performs the statutory duties in connection with the grant of patents for new inventions and registration of industrial designs. Patent Offices are located at Kolkata, Mumbai, Chennai and Delhi to deal with the applications for patents originating within their respective territorial jurisdictions. Patent Information System (PIS) located at Nagpur maintains a comprehensive collection of patent specifications and patent related literature, on a worldwide basis and provides technological information contained in patent or patent related literature through search services and patent document supply services. Intellectual Property Training Institute (IPTI) located at Nagpur provides training to the officials of IP offices and other users of the system who are working in the field of Intellectual Property Rights. • International Treaties India is a member-state of Word Intellectual Property Organisation (WIPO), an International Organisation, responsible for the promotion of the protection of intellectual property throughout the world. India is a member of the following International Organisations and Treaties in respect of Patents: a) World Trade Organization (WTO) with effect from 01-01 -1995. b) Convention establishing World Intellectual Property Organisation, (WIPO). c) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998. d) Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998. e) Budapest Treaty with effect from 17th December, 2001. • Types Of Patent Applications a) Ordinary Application
  9. 9. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 9 b) Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent). c) Divisional Application (in case of plurality of inventions disclosed in the main application). d) Convention application, claiming priority date on the basis of filing in Convention Countries. e) National Phase Application under PCT. • Who may apply The inventor may make an application, either alone or jointly with another, or his/their assignee or legal representative of any deceased inventor or his assignee. • Who grants patents? Patents are granted by national patent offices or by regional offices that carry out examination work for a group of countries – for example, the European Patent Office (EPO) and the African Intellectual Property Organization (OAPI). Under such regional systems, an applicant requests protection for an invention in one or more countries, and each country decides whether to offer patent protection within its borders. The WIPO-administered Patent Cooperation Treaty (PCT) provides for the filing of a single international patent application that has the same effect as national applications filed in the designated countries. An applicant seeking protection may file one application and request protection in as many signatory states as needed.
  10. 10. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 10 3.3 TRADEMARK A trademark is a distinctive sign that identifies certain goods or services produced or provided by an individual or a company. Its origin dates back to ancient times when craftsmen reproduced their signatures, or “marks”, on their artistic works or products of a functional or practical nature. Over the years, these marks have evolved into today’s system of trademark registration and protection. The system helps consumers to identify and purchase a product or service based on whether its specific characteristics and quality – as indicated by its unique trademark – meet their needs. Trademarks may be one or combination of words, letters, and numerals. They may also consist of drawings, symbols, three dimensional signs such as shape and packaging of goods, or colours used as distinguishing feature. Collective marks are owned by an association whose members use them to identify with a level of quality. Certification marks are given for compliance with defined standards. (Example ISO 9000.). A trademark provides to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize others to use it in return for some consideration (payment). Well-known trademark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. Enactment of the Indian Trademarks Act 1999 is a big step forward from the Trade and Merchandise Marks Act 1958 and the Trademark Act 1940. The newly enacted Act has some features not present in the 1958 Act and these are:- 1. Registration of service marks, collective marks and certification trademarks. 2. Increasing the period of registration and renewal from 7 years to 10 years. 3. Allowing filing of single application for registration in more than one class. 4. Enhanced punishment for offences related to trademarks. 5. Exhaustive definitions for terms frequently used. 6. Simplified procedure for registration of registered users and enlarged scope of permitted use. 7. Constitution of an Appellate Board for speedy disposal of appeals and rectification applications which at present lie before High Court.
  11. 11. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 11 • Well-known trademarks and associated trademarks A well-known trademark in relation to any goods or services means a mark which has become known to the substantial segment of the public that uses such goods or receives such services. Associated Trademarks are, in commercial terms, marks that resemble each other and are owned by the same owner, but are applied to the same type of goods or services. For example, a company dealing in readymade garments may use associated marks for shirts, trousers etc. means trademarks deemed to be, or required to be, registered as associated trademarks under this Act. • Service marks The Indian Act of 1958 did not have any reference to service marks. Service means service of any description that is made available to potential users and includes the provision of services in connection with the business of industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising. Marks used to represent such services are known as service marks. • Certification Trademarks and Collective Marks Certification trade marks means a guarantee mark which indicates that the goods to which it is applied are of a certain quality or are manufactured in a particular way or come from a certain region or uses some specific material or maintain a certain level of accuracy. The goods must originate from a certain region rather from a particular trader. Certification marks are also applicable to services and the same parameters will have to be satisfied. Further these marks are registrable just like any other trademark. Agmark used in India for various food items is a kind of certification mark although it is not registered as a certification mark; the concept of certification mark was not in vogue at the time of introduction of Agmark. A collective mark means a trademark distinguishing from those of others, the goods or services of members of an association of persons (not being a partnership within the meaning of the Indian Partnership Act, 1932), which is the proprietor of the mark. • Term of a registered trademark The initial registration of a trademark shall be for a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees.
  12. 12. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 12 • What do trademarks do? Trademark protection ensures that the owners of marks have the exclusive right to use them to identify goods or services, or to authorize others to use them in return for payment. The period of protection varies, but a trademark can be renewed indefinitely upon payment of the corresponding fees. Trademark protection is legally enforced by courts that, in most systems, have the authority to stop trademark infringement. In a larger sense, trademarks promote initiative and enterprise worldwide by rewarding their owners with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services. The system enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions, thereby facilitating international trade. • What kinds of trademarks can be registered? Trademarks may be one or a combination of words, letters and numerals. They may consist of drawings, symbols or three-dimensional signs, such as the shape and packaging of goods. In some countries, non-traditional marks may be registered for distinguishing features such as Holograms, motion, colour and non-visible signs (sound, smell or taste). In addition to identifying the commercial source of goods or services, several other trademark categories also exist. Collective marks are owned by an association whose members use them to indicate products with a certain level of quality and who agree to adhere to specific requirements set by the association. Such associations might represent, for example, accountants, engineers or architects. Certification marks are given for compliance with defined standards but are not confined to any membership. They may be granted to anyone who can certify that their products meet certain established standards. Some examples of recognized certification are the internationally accepted “ISO 9000” quality standards and Ecolabels for products with reduced environmental impact. • How is a trademark registered? First, an application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must contain a clear reproduction of the sign filed for registration, including any colours, forms or three-dimensional features. It must also contain a list of the goods or services to which the sign would apply. The sign must fulfil certain conditions in order to be protected as a trademark or other type of mark. It must be distinctive, so that consumers can distinguish it from trademarks identifying other products,
  13. 13. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 13 as well as identify a particular product with it. It must neither mislead nor deceive customers nor violate public order or morality. Finally, the rights applied for cannot be the same as, or similar to, rights already granted to another trademark owner. This may be determined through search and examination by national offices, or by the opposition of third parties who claim to have similar or identical rights. • How extensive is trademark protection? Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks containing full application information on all registrations and renewals, which facilitates examination, search and potential opposition by third parties. The effects of the registration are, however, limited to the country (or, in the case of regional registration, countries) concerned. To avoid the need to register separate applications with each national or regional office, WIPO administers an international registration system for trademarks. The system is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol. Persons with a link (be it through nationality, domicile or establishment) to a country party to one or both of these treaties may, on the basis of a registration or application with the trademark office of that country (or related region), obtain an international registration having effect in some or all of the other countries of the Madrid Union.
  14. 14. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 14 3.4 INDUSTRIAL DESIGN An industrial design refers to the ornamental or aesthetic aspects of an article. A design may consist of three-dimensional features, such as the shape or surface of an article, or two dimensional features, such as patterns, lines or colour. Industrial designs are applied to a wide variety of industrial products and handicrafts: from technical and medical instruments to watches, jewellery and other luxury items; from house wares and electrical appliances to vehicles and architectural structures; from textile designs to leisure goods. To be protected under most national laws, an industrial design must be new or original and non-functional. This means that an industrial design is primarily of an aesthetic nature, and any technical features of the article to which it is applied are not protected by the design registration. However, those features could be protected by a patent. Design as per the Indian Act means the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article - whether in two dimensional or three dimensional or in both forms - by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but it does not include any mode or principle of construction or anything which is in substance a mere mechanical device. In this context an article means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately. Stamps, labels, tokens, cards, etc cannot be considered an article for the purpose of registration of design because once the alleged design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred to ceases to exist. An article must have its existence independent of the designs applied to it. So, the design as applied to an article should be integral with the article itself. • The essential requirements for the registration of design 1. The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to a new subject matter. However, if the design for which the application is made does not involve any real mental activity for conception, then registration may not be considered. 2. The design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article. Thus, designs of industrial plans, layouts and installations are not registrable under the Act.
  15. 15. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 15 3. The design should be applied or applicable to any article by any industrial process. Normally, designs of artistic nature such as painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act. 4. The features of the designs in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for showing such articles in the open state, as those articles are generally put in the market in the closed state. 5. Any mode or principle of construction or operation or anything, which is in substance a mere mechanical device, would not be a registrable design. For instance, a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock it is associated with, cannot be registered as a design under the Act. However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect thereof is required to be inserted on its representation, provided there are other registrable features in the design. 6. The design should not include any trademark or property mark or artistic works. 7. It should be significantly distinguishable from known designs or combination of known designs. 8. It should not comprise or contain scandalous or obscene matter. • Duration of the registration of a design The total term of a registered design is 15 years. Initially the right is granted for a period of 10 years, which can be extended, by another 5 years by making an application and by paying a fee of Rs. 2000/- to the Controller before the expiry of initial 10 years period. The proprietor of design may make the application for such extension even as soon as the design is registered. • Strategy for protection First to file rule is applicable for registrability of design. If two or more applications relating to an identical or a similar design are filed on different dates, the first application will be considered for registration of design. Therefore the application should be filed as soon as you are ready with the design. After publication in the official gazette on payment of the prescribed fee of Rs. 500/- all registered designs are open for public inspection. Therefore, it is advisable to inspect the register of designs to determine whether the design is new or not. There is yet another important provision for ensuring that the design is different from
  16. 16. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 16 anything published anywhere in the world. This is quite a strict condition. There would be many designs, which are not protected, and these would not be part of any database maintained by design offices. An applicant has to take the responsibility of ensuring that he has done an extensive search and satisfied himself of the novelty of his design. However, in practice as the cost involved in filing and obtaining a design registration is not high, a design application is made if the stakes involved are not high and you have not copied any design. The application for registration of design can be filed by the applicant himself or through a professional person (i.e. patent agent, legal practitioner etc.). An agent residing in India has to be employed by the applicants not resident of • Why protect industrial designs? Industrial designs are what make an article attractive and appealing; hence, they add to the commercial value of a product and increase its marketability. When an industrial design is protected, the owner – the person or entity that has registered the design – is assured an exclusive right and protection against unauthorized copying or imitation of the design by third parties. This helps to ensure a fair return on investment. An effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity and promoting more aesthetically pleasing products. Protecting industrial designs helps to promote economic development by encouraging creativity in the industrial and manufacturing sectors, as well as in traditional arts and crafts. Designs contribute to the expansion of commercial activity and the export of national products. Industrial designs can be relatively simple and inexpensive to develop and protect. They are reasonably accessible to small and medium-sized enterprises as well as to individual artists and crafts makers, in both developed and developing countries. • How can industrial designs be protected? In most countries, an industrial design must be registered in order to be protected under industrial design law. As a rule, to be registrable, the design must be “new” or “original”. Countries have varying definitions of such terms, as well as variations in the registration process itself. Generally, “new” means that no identical or very similar design is known to have previously existed. Once a design is registered, a registration certificate is issued. Following that, the term of protection granted is generally five years, with the possibility of further renewal, in most cases for a period of up to 15 years. Hardly any other subject matter within the realm of intellectual property is as difficult to categorize as industrial designs and this has significant implications for the means and terms of its protection. Depending on the
  17. 17. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 17 particular national law and the kind of design, an industrial design may also be protected as a work of applied art under copyright law, with a much longer term of protection than the standard 10 or 15 years under registered design law. In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once owners choose one kind of protection, they 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 available can differ significantly. • How extensive is industrial design protection? Generally, industrial design protection is limited to the country in which protection is granted. The Hague Agreement Concerning the International Registration of Industrial Designs, a WIPO administered treaty, offers a procedure for international registration of designs. Applicants can file a single international application either with WIPO or the national or regional office of a country party to the treaty. The design will then be protected in as many member countries of the treaty as the applicant designates.
  18. 18. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 18 3.5 GEOGRAPHICAL INDICATION A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities or a reputation due to that place of origin. Most commonly, a geographical Indication consists of 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 geographical factors, such as climate and soil. Whether a sign functions as a geographical indication is a matter of national law and consumer perception. Geographical indications may be used for a wide variety of agricultural products, such as, for example, “Tuscany” for olive oil produced in a specific area of Italy, or “Roquefort” for cheese produced in that region of France. The use of geographical indications is not limited to agricultural products. They may also highlight specific qualities of a product that are due to human factors found in the product’s place of origin, such as specific manufacturing skills and traditions. The place of origin may be a village or town, a region or a country. An example of the latter is “Switzerland” or “Swiss”, perceived as a geographical indication in many countries for products made in Switzerland and, in particular, for watches. • Protection of Geographical Indications Indications which identify a good as originating in the territory of a member or a region or a locality in that territory, where a given quality reputation or other characteristics of the good is attributable to its geographical origin. The concept of identifying GI and protecting them is a new concept in India, perhaps in most developing countries, and has come to knowledge in these countries after they signed the TRIPS Agreement. It may be noted that properly protected GI will give protection in domestic and international market. Stipulations of TRIPS would be applicable to all the member countries. According to TRIPS, GI which is not or cease to be protected in its country of origin or which has fallen into disuse in that country cannot be protected. Homonymous GI for wines will get independent protection. Each state shall determine conditions under which homonymous indications will be differentiated from each other. Principles of national treatment and fair competition are applicable. TRIPS provide for seizure of goods bearing false indications of GI. TRIPS provide for refusal or invalidation of registration of a trademark containing a GI with respect to goods not originating in the territory indicated. The Geographical Indication of Goods (Registration and Protection) Act came into being in 2000. (The Act is not implemented at the time of writing the article as the rules have not been notified.) The term GI has been defined as "Geographical Indications", in relation to goods, means an indication which identifies such
  19. 19. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 19 goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be. • Applicants for GI's registration Any association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering geographical indication in relation to such goods shall apply in writing to the Registrar in such' form and in such manner and accompanied by such fees as may be prescribed for the registration of the geographical indication. • Non-registrable geographical indications Geographical indications having following cannot be registered: • The use of which would be likely to deceive or cause confusion or contrary to any law. • Which comprises or contains scandalous or obscene matter or any matter likely to hurt religion susceptibility of any class or section of citizens of India? • Which would otherwise be disentitled to protection in a court? .which are determined to be generic names or indications of goods and are, • Therefore, not or ceased to be protected in their country of origin or which have fallen into disuse in that Country. • Which, although literally true as to the territory, region or locality in which the goods originate, but falsely represent to the persons that the goods originate in another territory, region or locality, as the case may be. • Punishment for falsifying GI A sentence of imprisonment for a term between six months to three years and a fine between fifty thousand rupees and two lakh rupees is provided in the Act. The court may reduce the punishment under special circumstances. • Term of GI protection The registration of a GI shall be for a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees.
  20. 20. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 20 • What is an appellation of origin? An appellation of origin is a special kind of geographical indication used on products that have a specific quality exclusively or essentially due to the geographical environment in which the products are produced. The term geographical indication encompasses appellations of origin. Examples of appellations of origin that are protected in states party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration are “Bordeaux” for wine produced in the Bordeaux region of France, “Prosciutto di Parma” – or Parma ham – for ham produced in the Parma province of Italy or “Habana” for tobacco grown in the Havana region of Cuba. • Why do geographical indications need protection? Geographical indications are understood by consumers to denote the origin and quality of Products. Many of them have acquired valuable reputations which, if not adequately protected, may be misrepresented by commercial operators. False use of geographical indications by unauthorized parties, for example “Darjeeling” for tea that was not grown in the tea gardens of Darjeeling, is detrimental to consumers and legitimate producers. The former are deceived into believing they are buying a genuine product with specific qualities and characteristics, and the latter are deprived of valuable business and suffer damage to the established reputation of their products. • What is the difference between a geographical indication and a trademark? A trademark is a sign used by a company to distinguish its goods and services from those produced by others. It gives its owner the right to prevent others from using the trademark. A geographical indication guarantees to consumers that a product was 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 products that share certain qualities in the place designated by a geographical indication. • What is a “generic” geographical indication? If the name of a place is used to designate a particular type of product, rather than to indicate its place of origin, the term no longer functions as a geographical indication. For example, “Dijon mustard”, a kind of mustard that originated many years ago in the French town of Dijon, has, over time, come to denote mustard of that kind made in many places. Hence, “Dijon mustard” is now a generic indication and refers to a type of product, rather than a place.
  21. 21. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 21 • How are geographical indications protected? Geographical indications are protected in accordance with national laws and under a wide range of concepts, such as laws against unfair competition, consumer protection laws, laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin. In essence, unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product. Applicable sanctions range from court injunctions preventing unauthorized use to the payment of damages and fines or, in serious cases, imprisonment. • What is WIPO’s role in the protection of geographical indications? WIPO administers a number of international agreements that deal partly or entirely with the protection of geographical indications (in particular, the Paris Convention and the Lisbon Agreement). WIPO meetings offer Member States and other interested parties the opportunity to explore new ways of enhancing the international protection of geographical indications.
  22. 22. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 22 3.6 COPYRIGHT AND RELATED ACTS Copyright laws grant authors, artists and other creators’ protection for their literary and artistic creations, generally referred to as “works”. A closely associated field is “related rights” or rights related to copyright that encompass rights similar or identical to those of copyright, although sometimes more limited and of shorter duration. Copyright is a right, which is available for creating an original literary or dramatic or musical or artistic work. Cinematographic films including sound track and video films and recordings on discs, tapes, perforated roll or other devices are covered by copyrights. Computer programs and software are covered under literary works and are protected in India under copyrights. The Copyright Act, 1957 as amended in 1983, 1984, 1992, 1994 and 1999 governs the copyright protection in India. The total term of protection for literary work is the author’s life plus sixty years. For cinematographic films, records, photographs, posthumous publications, anonymous publication, works of government and international agencies the term is 60 years from the beginning of the calendar year following the year in which the work was published. For broadcasting, the term is 25 years from the beginning of the calendar year following the year in which the broadcast was made. Copyright gives protection for the expression of an idea and not for the idea itself. For example, many authors write textbooks on physics covering various aspects like mechanics, heat, optics etc. Even though these topics are covered in several books by different authors, each author will have a copyright on the book written by him / her, provided the book is not a copy of some other book published earlier. India is a member of the Berne Convention, an international treaty on copyright. Under this Convention, registration of copyright is not an essential requirement for protecting the right. It would, therefore, mean that the copyright on a work created in India would be automatically and simultaneously protected through copyright in all the member countries of the Berne Convention. The moment an original work is created, the creator starts enjoying the copyright. However, an undisputable record of the date on which a work was created must be kept. When a work is published with the authority of the copyright owner, a notice of copyright may be placed on publicly distributed copies. The use of copyright notice is optional for the protection of literary and artistic works. It is, however, a good idea to incorporate a copyright notice. As violation of copyright is a cognizable offence, the matter can be reported to a police station. It is advised that registration of copyright in India would help in establishing the ownership of the work. The registration can be done at the Office of the Registrar of Copyrights in New Delhi. It is also
  23. 23. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 23 to be noted that the work is open for public inspection once the copyright is registered. Computer program in the Copyright Act has been defined as a set of instructions expressed in words, codes, schemes or any other form, including a machine-readable medium, capable of causing a computer to perform a particular task or achieve a particular result. The beneficiaries of related rights are: performers (such as actors and musicians) in their performances; producers of phonograms (for example, compact discs) in their sound recordings; and broadcasting organizations in their radio and television programs. Works covered by copyright include, but are not limited to: novels, poems, plays, reference works, newspapers, advertisements, computer programs, databases, films, musical compositions, choreography, paintings, drawings, photographs, sculpture, architecture, maps and technical drawings. • Coverage provided by copyright (i) Literary, dramatic and musical work. Computer programs/softwares are covered within the definition of literary work. (ii) Artistic work (iii) Cinematographic films, which include sound track and video films. (iv) Recording on any disc, tape, perforated roll or other device. • Infringement of copyright Copyright gives the creator of the work the right to reproduce the work, make copies, translate, adapt, sell or give on hire and communicate the work to public. Any of these activities done without the consent of the author or his assignee is considered infringement of the copyright. There is a provision of ‘fair use’ in the law, which allows copyrighted work to be used for teaching and research and development. In other words making one photocopy of a book for teaching students may not be considered an infringement, but making many photocopies for commercial purposes would be considered an infringement. There is one associated right with copyright, which is known as the ‘moral right’, which cannot be transferred and is not limited by the term. This right is enjoyed by the creator for avoiding obscene representation of his /her works. Following acts are considered infringement of copyrights:- (a) In the case of literary, dramatic or musical work, not being a computer program- (i) to reproduce the work in any material form including the storing of it in any medium by electronic means; (ii) to issue copies of the work to the public not being copies already in circulation
  24. 24. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 24 (iii) to perform the work in public, or communicate it to the public; (iv) to make any cinematography film or sound recording in respect of the work; (v) to make any translation of the work; to make any adaptation of the work; (vi) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in Sub-clauses (i) to (vi); (b) in the case of computer program - (i) to do any acts specified in clauses (a); (ii) to sell or give on hire, or offer for sale or hire any copy of t he computer program, regardless of whether such copy has been sold or given on hire on earlier occasions; (c ) in the case of an artistic work – (i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work; (ii) to communicate the work to the public; (iii) to issue copies of the work to the public not being copies already in circulation; (iv) to include the work in any cinematography film . (v) to make any adaptation of the work; (vi) to do, in relation to a translation or an adaptation of the work, any of the acts specified in relation to the work in sub-clauses (i) to (vi); (d) in the case of a cinematography film - (i) to make a copy of the film including a photograph of. any image forming part thereof; (ii) to sell or give on hire or offer for sale or hire, any copy of the film, regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the film to the public; (e) in the case of sound recording - (i) to make any other sound recording embodying it; (ii) to sell or give on hire or offer for sale or hire, any copy of the ,sound recording, regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the sound recording to the public; • What rights do copyright and related rights provide? The creators of works protected by copyright, and their heirs and successors (generally referred to as “right holders”), have certain basic rights under copyright law. They hold the
  25. 25. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 25 exclusive right to use or authorize others to use the work on agreed terms. The right holder(s) of a work can authorize or prohibit: its reproduction in all forms, including print form and sound recording; its public performance and communication to the public; its broadcasting; its translation into other languages; and its adaptation, such as from a novel to a screenplay for a film. Similar rights of, among others, fixation (recording) and reproduction are granted under related rights. Many types of works protected under the laws of copyright and related rights require mass distribution, communication and financial investment for their successful dissemination (for example, publications, sound recordings and films). Hence, creators often transfer these rights to companies better able to develop and market the works, in return for compensation in the form of payments and/or royalties (compensation based on a percentage of revenues generated by the work). The economic rights relating to copyright are of limited duration – as provided for in the relevant WIPO treaties – beginning with the creation and fixation of the work, and lasting for not less than 50 years after the creator’s death. National laws may establish longer terms of protection. This term of protection enables both creators and their heirs and successors to benefit financially for a reasonable period of time. Related rights enjoy shorter terms, normally 50 years after the performance; recording or broadcast has taken place. Copyright and the protection of performers also include moral rights, meaning the right to claim authorship of a work, and the right to oppose changes to the work that could harm the creator’s reputation. Rights provided for under copyright and related rights laws can be enforced by right holders through a variety of methods and fore, including civil action suits, administrative remedies and criminal prosecution. Injunctions, orders requiring destruction of infringing items, inspection orders, among others, are used to enforce these rights. • What are the benefits of protecting copyright and related rights? Copyright and related rights protection is an essential component in fostering human creativity and innovation. Giving authors, artists and creators incentives in the form of recognition and fair economic reward increases their activity and output and can also enhance the results. By ensuring the existence and enforceability of rights, individuals and companies can more easily invest in the creation, development and global dissemination of their works. This, in turn, helps to increase access to and enhance the enjoyment of culture, knowledge and entertainment the world over and also stimulates economic and social development.
  26. 26. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 26 • How have copyright and related rights kept up with advances in technology? The field of copyright and related rights has expanded enormously during the last several decades with the spectacular progress of technological development that has, in turn, yielded new ways of disseminating creations by such forms of communication as satellite broadcasting, compact discs and DVDs. Widespread dissemination of works via the Internet raises difficult questions concerning copyright and related rights in this global medium. WIPO is fully involved in the ongoing international debate to shape new standards for copyright protection in cyberspace. In that regard, the Organization administers the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), known as the “Internet Treaties”. These treaties clarify international norms aimed at preventing unauthorized access to and use of creative works on the Internet. • How are copyright and related rights regulated? Copyright and related rights protection is obtained automatically without the need for registration or other formalities. However, many countries provide for a national system of optional registration and deposit of works. These systems facilitate, for example, questions involving disputes over ownership or creation, financial transactions, sales, assignments and transfer of rights. Many authors and performers do not have the ability or means to pursue the legal and administrative enforcement of their copyright and related rights, especially given the increasingly global use of literary, music and performance rights. As a result, the establishment and enhancement of collective management organizations (CMOs), or “societies”, is a growing and necessary trend in many countries. These societies can provide their members with efficient administrative support and legal expertise in, for example, collecting, managing and disbursing royalties gained from the national and international use of a work or performance. Certain rights of producers of sound recordings and broadcasting organizations are sometimes managed collectively as well. • Transfer of copyright The owner of the copyright in an existing work or prospective owner of the copyright in a future work may assign to any person the copyright, either wholly or partially in the following manner. i. for the entire world or for a specific country or territory; or ii. for the full term of copyright or part thereof ; or iii. relating to all the rights comprising the copyright or only part of such rights.
  27. 27. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 27 4.1 WORLD INTELLECTUAL PROPERTY ORGANIZATION Established in 1970, the World Intellectual Property Organization (WIPO) is an international organization dedicated to helping ensure that the rights of creators and owners of intellectual property are protected worldwide, and that inventors and authors are therefore recognized and rewarded for their ingenuity. This international protection acts as a spur to human creativity, pushing back the limits of science and technology and enriching the world of literature and the arts. By providing a stable environment for marketing products protected by intellectual property, it also oils the wheels of international trade. WIPO works closely with its Member States and other constituents to ensure the intellectual property system remains a supple and adaptable tool for prosperity and well-being, crafted to help realize the full potential of created works for present and future generations. • How does WIPO promote the protection of intellectual property? As part of the United Nations system of specialized agencies, WIPO serves as a forum for its Member States to establish and harmonize rules and practices for the protection of intellectual property rights. WIPO also services global registration systems for trademarks, industrial designs and appellations of origin, and a global filing system for patents. These systems are under regular review by WIPO’s Member States and other stakeholders to determine how they can be improved to better serve the needs of users and potential users. Many industrialized nations have intellectual property protection systems that are centuries old. Among newer or developing countries, however, many are in the process of building up their patent, trademark and copyright legal frameworks and intellectual property systems. With the increasing globalization of trade and rapid changes in technological innovation, WIPO plays a key role in helping these systems to evolve through treaty negotiation; legal and technical assistance; and training in various forms, including in the area of enforcement. WIPO works with its Member States to make available information on intellectual property and outreach tools for a range of audiences – from the grassroots level through to the business sector and policymakers – to ensure its benefits are well recognized, properly understood and accessible to all. • How is WIPO funded? WIPO is a largely self-financed organization, generating more than 90 percent of its annual budget through its widely used international registration and filing systems, as well as through its publications and arbitration and mediation services. The remaining funds come from contributions by Member States.
  28. 28. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 28 4.2 MANAGEMENT OF IPR IN PUBLICLY FUNDED INSTITUTIONS IN INDIA Aims of publicly funded institutions such as universities, colleges, autonomous bodies and public sector undertakings are multifaceted and are not purely driven by economic considerations but they are primarily driven by considerations of social obligations and political objectives and will of a nation. India has stuck to these aims since the independence. On one hand the above approach has helped us in creating a pool of highly educated population and also building an inherent strength in research and development and core competency in basic industries like steel, power, fertilizers etc. However on the other hand, an insulated system breeds complacency, which blunts the spirit of innovation and fire for being ahead of others. Globalization has taught us many new lessons by opening our eyes to the existing and forthcoming ground realities, which cannot be shunned away just because we do not happen to like them. These realities are going to stay. The likely impacts of globalization started becoming a part of our age old thought process and life style when India decided to become a member of the World Trade Organization. Since the beginning of 1990s new approaches started taking roots in respect of such institutions, especially related to their management and source of funding. It has been observed that educational and R&D institutions are being asked to generate their own funds and depend less and less on block grants by central or state governments. In respect of PSU the message has been to generate more and more revenue from the available resources. The Central Government was quick to understand the importance of innovations and new ideas for adjusting to new streams of paradigm shifts. The Government also realized that the journey is not going to be smooth, easy or straight forward in the absence of knowledge about new paradigms among scientists, technologists and policy makers. January 1, 1995 came and brought with it the full impact of WTO along with the Agreement of Trade Related Aspects of Intellectual Property Rights (TRIPS). The Indian systems rose to the new challenge and through its many efforts have taken successful steps towards transition to a new culture by updating its existing laws, enacting new legislations, instituting new mechanisms for enabling creation of new intellectual property and its protection and even evolving novel methods and schemes to promote innovations at grass roots levels. Managing creativity within the innovation process is not easy. From providing initial impetus for new ideas and a means of collating and evaluating them through to determining the most appropriate exploitation strategy and selecting delivery partners, innovation is a process and can therefore be managed.
  29. 29. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 29 4.3 Intellectual property protection for Computer Software in India In India, the Intellectual Property Rights (IPR) of computer software is covered under the Copyright Law. Accordingly, the copyright of computer software is protected under the provisions of Indian Copyright Act 1957. Major changes to Indian Copyright Law were introduced in 1994 and came into effect from 10 May 1995. These changes or amendments made the Indian Copyright law one of the toughest in the world. The amendments to the Copyright Act introduced in June 1994 were, in themselves, a landmark in the India's copyright arena. For the first time in India, the Copyright Law clearly explained: o The rights of a copyright holder o Position on rentals of software o The rights of the user to make backup copies Since most software is easy to duplicate, and the copy is usually as good as original, the Copyright Act was needed. Some of the key aspects of the law are: According to section 14 of this Act, it is illegal to make or distribute copies of copyrighted software without proper or specific authorization. The violator can be tried under both civil and criminal law. A civil and criminal action may be instituted for injunction, actual damages (including violator's profits) or statutory damages per infringement etc. Heavy punishment and fines for infringement of software copyright. Section 63 B stipulates a minimum jail term of 7 days, which can be extended up to 3 years. Summary of Indian Government Initiatives to Protect IPR The Indian government has initiated various steps towards Intellectual Properties Rights Protection. Indian enforcement agencies are working effectively and there is a decline in the levels of piracy in India. In addition to intensifying raids against copyright violators, the Government has taken a number of measures to strengthen the enforcement of copyright law. A summary of these measures is given below: 1. The Government has brought out A Handbook of Copyright Law to create awareness of copyright laws amongst the stakeholders, enforcement agencies, professional users like the scientific and academic communities and members of the public. Copies of the
  30. 30. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 30 Handbook have been circulated free-of-cost to the state and central government officials, police personnel and to participants in various seminars and workshops on IPR. 2. National Police Academy, Hyderabad and National Academy of Customs, Excise and Narcotics conducted several training programs on copyright laws for the police and customs officers. Modules on copyright infringement have been included in their regular training programs. 3. The Department of Education, Ministry of Human Resource Development, Government of India has initiated several measures in the past for strengthening the enforcement of copyrights that include constitution of a Copyright Enforcement Advisory Council (CEAC), creation of separate cells in state police headquarters, encouraging setting up of collective administration societies and organization of seminars and workshops to create greater awareness of copyright laws among the enforcement personnel and the general public. 4. Special cells for copyright enforcement have so far been set up in 23 States and Union Territories, i.e. Andhra Pradesh, Assam, Andaman & Nicobar Islands, Chandigarh, Dadra & Nagar Haveli, Daman & Diu, Delhi, Goa, Gujarat, Haryana, Himachal Pradesh, Jammu & Kashmir, Karnataka, Kerala, Madhya Pradesh, Meghalaya, Orissa, Pondicherry, Punjab, Sikkim, Tamil Nadu, Tripura and West Bengal. 5. The Government also initiates a number of seminars/workshops on copyright issues. The participants in these seminars include enforcement personnel as well as representatives of industry organizations. As a consequence of the number of measures initiated by the government, there has been more activity in the enforcement of copyright laws in the country. Over the last few years, the number of cases registered has gone up consistently. New Delhi, 1st December 2000: Nasscom and BSA launched a new anti-piracy initiative - The Reward Programme to make India's business community take note of the dangers of software piracy. The reward offered, an amount up to Rs. 50,000 is for information leading to successful legal action against companies using unlicensed software. The reward program was aimed to encourage people to support the fight against piracy and to report software piracy to the NASSCOM-BSA Anti-Piracy Software Hotline on 1600 334455 to help Nasscom and the BSA remedy the illegal activity.
  31. 31. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 31 5. Case Studies Related to Indian IPR Protection Bangalore Aug 10, 2003. Banashankari police arrested three software engineers for illegally copying software from a company they were working for. The accused engineers, who were working with the Ishoni Networks India Private Limited, had started a new company called Ample Wave Communication Network in Koramangala. They had illegally copied code of the company’s software and were using at their company, police said. Ishoni Director Antonio Mario Alvares had lodged the complaint with Banashankari police. Police have seized four computers, four CPUs, four keyboards, one server and one laptop from the accused. (Source: DH News Service, Bangalore) New Delhi Aug 28, 2002. Central Bureau of Investigation officials in New Delhi nabbed Shekhar Verma, a former employee of Mumbai-based Geometric Software Solutions Company and a computer engineer from the Indian Institute of Technology, Kharagpur. It turned out that Verma was accused of stealing $60 million worth of source code of a software product of Geometric Software's US-based client, SolidWorks, and trying to sell them to other companies for a fortune. The American firm has the exclusive rights over the software. (Source Results of Nasscom Initiatives Calcutta, 7 April 2000: The Enforcement Branch, Calcutta police with the assistance from Nasscom and BSA, seized pirated software worth of Rs. 2.61 crore (US$ 6,08,000) from companies while conducting raids in the city. 4 persons, including owners, partners and senior level employees of the companies, were arrested for this offence. The police recovered around 636 CDs, and 2 computers loaded with pirated software. Hyderabad, March 2000: Hyderabad Police, with assistance from Nasscom and BSA, seized pirated software worth of Rs. 75,16,400 (US$ 174,800) from 7 companies at a conducted raid. 13 people, including senior level employees of the companies, were arrested in this regard. The Police recovered around 293 CDs, 5 hard disks and 7 computers loaded with pirated software. The estimated value of the pirated software was worth Rs.77 lakh. Chennai, February 2000: Pirated software worth Rs.1.11 crore (US$ 253,200) was seized by the Chennai police A total of 6 employees were arrested which included the Managing Director of one outlet and proprietors of each of the outlets.
  32. 32. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 32 6. Conclusion & Recommendations Protection of Intellectual Properties is a very critical element in the offshore business model. There have been many cases where companies have lost their position in the market due to the loss of intellectual property. Understanding the country’s IP Rights and following the best practices can drastically reduce the risk of losing the company’s intellectual property. Commitment to protect the intellectual property of a company should be developed and nurtured at all levels of the organization. Intellectual property rights reward creativity and human endeavour, which fuel the progress of humankind. Some examples: The multibillion dollar film, recording, publishing and software industries – which bring pleasure to millions of people worldwide – would not exist without copyright protection. Without the rewards provided by the patent system, researchers and inventors would have little incentive to continue producing better and more efficient products for consumers - Consumers would have no means to confidently buy products or services without reliable, international trademark protection and enforcement mechanisms to discourage counterfeiting and piracy. Recommendations to minimize the risk of offshore Intellectual Property loss The following Best Practices will help minimize the risk of losing Intellectual Property in conducting business offshore. 1. Understand the Intellectual Property rights: The first and foremost step is to get an overview of the different Initiatives and laws undertaken by the offshore country to protect the Intellectual Property. 2. Set up an Internal Intellectual Property protection team: Intellectual property protection is an ongoing business responsibility and not a one-time act. This makes it very critical to have a team in the company that is responsible for monitoring their Intellectual properties, violations etc. 3. Examine the work entities that can be copyrighted / patented: An ongoing evaluation of the company’s work entities to identify copyright protection/patents is very critical. While copyrighting, it is important to make sure that such a protection will be valid in the country of offshore activity/development.
  33. 33. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 33 4. Offshore vendor history: If the company is planning to enter into a vendor relationship with an offshore entity, extreme caution has to be exercised in understanding the vendor’s history with respect to any Intellectual property violations. 5. Define IP violation clause: In executing a contract with the offshore vendor, define a separate Intellectual Property Violation clause and define the consequences of Intellectual property violation (Some companies sign the contract with the onsite entity of the offshore vendor as it gives them more leverage to take any legal action if they have to). 6. Seek a reference check for all the team members: It is not only important to look at the resumes of the offshore team but also very important to seek the appropriate references to make sure there is no IP violation case history behind the individual. 7. Pay Attention to use of unauthorized software/third party products: As the saying goes, ‘Practice what you Preach”. Heavily discourage the use of unlicensed software or products both by the onsite and the offshore team. 8. Enforce Central Repository: Enforcing a central repository for all the code and documents can not only improve the overall efficiency, and will also avoid numerous placeholders for critical documents and code. 9. Perform Periodic IP Audit: Perform a periodic IP audit and examine any new work that can be copy righted, remove all the unauthorized software/product, reiterate the importance of IP, look into all the place holders of the code/documents, assign appropriate ownership to the critical documents and update any change of ownership to patents. 10. Enforce the use of References: In all the company meetings/presentations make sure the appropriate references and credits are given to the owner of the work (be it internal or external). Making this practice a habit will raise the standards of the employees to acknowledge and respect and protect other people’s work. 11. Develop Awareness: Protecting the Intellectual property can be greatly enhanced if all the employees of the company and the offshore team are on the same page as to how much attention the company pays to protect Intellectual Properties. In some companies IP protection is made as a part of the performance plan for each employee and reviewed periodically.
  34. 34. Harsh Kishore Mishra B.Tech. IT IIMET, Jaipur 34 References Management of Intellectual Property Rights in India by R Saha, Adviser, Department of Science and Technology and Director, Patent Facilitating Centre, Technology Information, Forecasting and Assessment Council, New Delhi WIPO Guide published by WIPO. A Handbook of Copyright Act Intellectual Property rights protection in India: An analysis, published by ZINNOV LLC