2. INTELLECTUAL PROPERTY RIGHTS
• INTELLECTUAL PROPERTY IS A LEGAL TERM FOR
CREATION OF MIND
• IPR LAW PROVIDES EXCLUSIVE USE OF CREATIONS OF
THE MIND
• INCLUDES TRADEMARK, COPYRIGHT, PATENT AND
INDUSTRIAL DESIGN
• E.G. INVENTIONS, WORDS, PHRASES, SYMBOLS,
DESIGNS, MUSIC, LITERATURE, OTHER ARTISTIC WORKS,
4. WHAT IS PATENT?
EXCLUSIVE RIGHT FOR AN INVENTION
INVENTION – PRODUCT OR PROCESS, NOVEL,
INDUSTRIAL APPLICATION
TERM
TERRITORIAL RIGHTS
5. KEY TERMS IN PATENTS
PATENT COOPERATION TREATY (PCT)
EXCLUSIVE LICENSE
PATENT INFORMATION
CROSS-LICENSING
CONVENTION APPLICATION
6. TYPES OF PATENTS
PRODUCT PATENT
E.G. PEN WITH A SCANNER
E.G. CHEMICAL COMPOUND
PROCESS PATENT
E.G. AMAZON’S "1-CLICK" SYSTEM
E.G. PROCESS OF MANUFACTURING SPECIFIC
PRODUCT
7. KEY AMENDMENTS OF
THE PATENT ACT, 2005
PRODUCT PATENT FOR FOOD, DRUG & CHEMICALS
“MERE NEW USE OF A KNOWN SUBSTANCE” IS NOT AN
INVENTION
COMPULSORY LICENSE
APPLICATION PROCESS
9. WHAT INVENTIONS CANNOT BE
PATENTED (SEC. 3)
CINEMATOGRAPHIC & TELEVISION PRODUCTIONS (E.G. MOVIES)
CAUSES SERIOUS PREJUDICE ( E.G. METHOD OF HACKING INTO
EMAIL ACCOUNTS)
METHOD OF AGRICULTURE OR HORTICULTURE (E.G. METHOD OF
GROWING PLANT)
ADMIXTURE RESULTING ONLY IN THE AGGREGATION OF THE
PROPERTIES OF THE COMPONENTS. (E.G: BHEL)
10. WHAT INVENTIONS CANNOT BE
PATENTED
CONTRARY TO WELL ESTABLISHED NATURAL LAWS (E.G.
PERPETUAL MACHINE)
MERE PRESENTING INFORMATION IN OTHER FORM
E.G. PRESENTING INFORMATION IN THE FORM OF A
GRAPH
ARRANGEMENT, REARRANGEMENT OR DUPLICATION
( E.G. KNOWN TYPE OF TORCH AND PEN CONNECTED
AND BOTH WORKING INDEPENDENTLY )
INVENTIONS RELATING TO ATOMIC ENERGY (SECTION 4)
11. TYPES OF INFRINGEMENT
DIRECT INFRINGEMENT
( E.G. XIOMI VS. ERICSON)
INDIRECT INFRINGEMENT
• INDUCED INFRINGEMENT
• CONTRIBUTORY INFRINGEMENT
12. COMPULSORY LICENSE
UNDER SECTION 84 (1) OF THE INDIAN PATENT ACT
• APPLICATION AFTER EXPIRY OF 3 YEARS FROM THE DATE
OF GRANT OF PATENT.
• NEEDS OF PUBLIC NOT SATISFIED , OR
• NOT AVAILABLE AT AFFORDABLE PRICE , OR
• NOT "WORKED IN," OR MANUFACTURED IN THE COUNTRY,
TO THE FULLEST EXTENT POSSIBLE.
• E.G. LEE PHARMA VS ASTRA ZENECA FOR ANTI DIABETIC
DRUG
14. TRADEMARKS
MEANING - SIGN OR COMBINATION OF SIGNS
WHICH DISTINGUISHES ONE PERSON’S GOODS OR
SERVICES FROM ANOTHER'S
HISTORY- INITIALLY USED BY CRAFTSMEN
FIRST TO FILE SYSTEM
UNREGISTERED TRADEMARK
EG: EBAY, STARBUCKS, EA SPORTS LOGO
15. FOR A MARK TO BE TRADEMARKED, IT MUST
BE
• GRAPHICALLY REPRESENTABLE
• DISTINGUISHABLE
• CONNECTION BETWEEN GOODS OR SERVICES
• TM/SM SYMBOL CAN BE USED NEXT TO THE LOGO
• ® SYMBOL IS PLACED NEXT TO THE LOGO
• EG. STARBUCKS V. STARBOCK BEER
16. TYPES OF TRADEMARK
• PRODUCT TRADEMARKS
• EG: VAIO, MAGGIE, ETC
• SERVICE TRADEMARKS
• EG: AXIS BANK, DHL EXPRESS, ETC
• CERTIFICATION TRADEMARKS
• EG: CE, AGMARG, WOOLMARK, ISI, ETC
• COLLECTIVE TRADEMARKS
• EG: DOCTORS, CA, KHADI CRAFT, FIFA , NBA ETC
• UNRELATED TRADEMARKS
• EG: APPLE, BLACKBERRY, PAPERBOAT)
• WELL KNOWN TRADEMARKS
• E: PEPSI, SAMSUNG
17. TRADEMARKS: CANNOT BE
REGISTERED
• NOT DISTINGUISHABLE
• CUSTOMARY IN THE CURRENT LANGUAGE
• DECEIVING OR TO CAUSE CONFUSION
• RELIGIOUS SENTIMENTS
• SCANDALOUS OR OBSCENE MATTERS
• EMBLEMS AND NAMES
• LACKS EVERYTHING AND ONLY
DIFFERENTIATING FACTOR
BEING SHAPE
• ELEMENT NAME
• GENERIC TERM
18. FEW COMMON WORDS YOU USE ON A DAILY
BASIS THAT ARE TRADEMARKED
VASELINE (UNIELEVER)
GENERIC NAME: PETROLEUM JELLY
XEROX (XEROX CORP)
GENERIC NAME: PHOTOCOPY
BUBBLE WRAP (SEALED AIR CORPORATION)
GENERIC NAME: INFLATED CUSHIONING
BAND AID (JOHNSON & JOHNSON)
GENERIC NAME: ADHESIVE BANDAGE
KEROSENE (ABRAHAM GESNER)
COMBUSTIBLE HYDROCARBON LIQUID’
ESCALATOR (OTIS)
MOVING STAIRCASE
19. WHAT CAN BE PROTECTED THROUGH A
TRADEMARK ?
WORD
• ADOBE SYSTEMS
• KAWASAKIS JETSKI
SLOGAN-
• ‘JUST DO IT’
• ‘I’M LOVING IT’
NAME
• FORD
• AXE
SYMBOL/IMAGE/GRAPHIC/DESIGN
• LOGO – NIKE SWOOSH LOGO, GOOGLE, KFC, SAMSUNG,
UNILIEVER
20. DEVICE
• SHAPE
• MICKEY MOUSE EARS
• FLAVOUR
• MC DONALD’S
• COLOUR
• CANARY YELLOW POST ITS
• CADBURYS PURPLE
• BARBIE PIN
• DOMAIN NAME
• AMAZON.COM
• PEPPERFRY.COM
23. INDUSTRIAL DESIGN
THE DESIGNS ACT, 1911
DESIGNS ACT, 2000 AND THE DESIGNS RULES, 2001
CREATIVE ACTIVITY
VISUAL APPEARANCE OF A PRODUCT
2D OR 3D OR BOTH
MADE BY AN INDUSTRIAL PROCESS
24. THE DESIGN ACT 2000
TO PROTECT THE DESIGN FUNCTION IN INDUSTRY
PRODUCTION
PROMOTES INNOVATION
DESIGN RIGHTS ARE GRANTED ON A COUNTRY-BY-
COUNTRY BASIS
“FIRST TO FILE” SYSTEM
25. CLASSIFICATION OF DESIGN
LOCARNO CLASSIFICATION
BASED ON THE FUNCTION OF THE GOODS
CLASSES DIVIDED INTO FURTHER SUBCLASSES
EG. CLASS 03
Sub Class 03-01:Trunks,
Suitcases, Briefcases
Sub Class 03-03:Sunshades,
Walking Sticks ..
Sub Class 03—04: Fans
26. WHERE TO FILE FOR INDUSTRIAL DESIGN ?
HEAD OFFICE AT KOLKATA
BRANCH OFFICES AT DELHI, MUMBAI AND CHENNAI
WHAT CAN BE REGISTERED ?
ORIGINAL DESIGN
DESIGN WHICH IS NOT NEW AS SUCH BUT ORIGINAL AND
NEW IN APPLICATION
NOT REGISTERED IN ANY OTHER COUNTRY
27. WHAT CANNOT BE REGISTERED ?
COPIED DESIGN
SIMILAR TO A DESIGN WHICH ALREADY EXIST
MANUFACTURING PROCESS
IDEAS
OBSCENE MATTER
FUNCTIONAL FEATURES OF AN ARTICLE
28. WHO CAN APPLY ?
ANY PERSON , ASSIGNEE ,LEGAL REPRESENTATIVE OF
PROPRIETOR
PROPRIETOR OF THE DESIGN
• USUALLY WHO HAS CREATED THE DESIGN
• 2 OR MORE PEOPLE WORKED TOGETHER TO CREATE
• NOT HIRED UNDER CONTRACT
• NOT AN EMPLOYEE WHO CREATED A DESIGN AS PART OF
EMPLOYMENT
29. STEPS FOR REGISTRATION
FINDING OUT WHETHER THE DESIGN ALREADY EXISTS
PREPARING A REPRESENTATION OF THE DESIGN
IDENTIFYING THE CLASS OF DESIGN
PROVIDING A STATEMENT OF NOVELTY
32. IMPORTANT POINTS TO REMEMBER
KEEP A COPY OF THE DESIGN AS CREATED IN YOUR FILE
MAINTAIN A RECORD OF OWNERSHIP OF DESIGNS
DO NOT DISCLOSE THE DESIGN BEFORE YOU HAVE FILED
YOU HAVE REGISTERED
PROPERLY IDENTIFY THE DESIGN IN THE APPLICATION
PAY RENEWAL FEES AS AND WHEN DUE
INDUSTRIAL DESIGN CAN BE SOLD, LICENSED AND
34. WORLD INTELLECTUAL PROPERTY
ORGANIZATION (WIPO)
A POLICY FORUM
GLOBAL SERVICES
TECHNICAL INFRASTRUCTURE
COOPERATION AND CAPACITY-BUILDING
A WORLD REFERENCE SOURCE FOR IP INFORMATION
FORUMS FOR INTELLECTUAL
PROPERTY
35. ADMINISTRATION OF DISPUTES
MEDIATION AGREEMENT
(THIRD PARTY-ASSIST THE PARTIES )
ARBITRATION (COURT-DECISION MAKER)
CONCILIATION (THIRD PARTY-ASSIST THE PARTIES )
36. NIPO (NATIONAL INTELLECTUAL PROPERTY
ORGANIZATION)
OBJECTIVES:
PROMOTES DEVELOPMENT OF INFRASTRUCTURAL FACILITIES
AIDS, ASSISTS AND FACILITATES OWNERS OF INTELLECTUAL
PROPERTY AND ENSURES TIES OF MUTUAL FRIENDSHIP AND
UNDERSTANDING
PROVIDES CUSTOMIZED CORPORATE SERVICES
CARRIES OUT RESEARCH AND DEVELOPMENT ACTIVITIES
CONDUCTS TRAINING AND ACTIVITIES FOR CORPORATE AND
GOVERNMENT PERSONNEL AND SEEKS AFFILIATION WITH
38. INDIA ENTERS IN AGREEMENT WITH WTO.
NOVARTIS FILES PATENT APPLICATION WITH INDIAN PATENT
OFFICE FOR ITS DRUG GLEEVEC.
INDIA MADE CHANGES TO ITS PATENT LAW AS PER TRIPS AND
FEW AMENDMENTS IN 2005 WHICH FINALLY CAME INTO
EFFECT IN 2005.
NOVARTIS LAUNCHES GLEEVEC @ $2600, WHEREAS SAME
WAS SUPPLIED BY INDIAN GENERIC @ USD 177 TO 266
IN JAN 2006 PATENT OFFICE REJECTED NOVARTIS PATENT
BASED ON AMENDMENTS DONE IN 2005 UNDER SEC. 3D
NOVARTIS APPEALED TO SUPREME COURT AND THERE ALSO
CASE STUDY: NOVARTIS VS. UOI
39. APPLE VS SAMSUNG
• AUG 2010 APPLE WARN SAMSUNG FOR PATENT
INFRINGEMENT
• OCT 2010 APPLE GAVE OFFER TO SAMSUNG
• APRIL 2011 APPLE SUES SAMSUNG FOR INFRINGEMENT
OF TRADE DRESS.
• SAMSUNG ALSO SUES APPLE FOR 3G TECHNOLOGY
• AUG-SEPT 2011 SAMSUNG PRODUCT GAXALY TAB 10.1
PULLED FROM SHELVES IN GERMANY AND AUSTRALIA
• NOV-DEC 2011 SALE BAN ON GALAXY IS TAKEN BACK IN
AUSTRALIA & IN GERMANY LAUNCHED AFTER
CHANGING DESIGN
• MARCH-MAY SETTLEMENT TALK
40. AUG 2012 US JURY AWARDED APPLE DAMAGES WORTH USD 1
BILLION
SAMSUNG OPPOSED ON DAMGES VALUATION
DAMAGES REWORKED TO USD 650
41. SECOND U.S. TRIAL
• APPLE FILED A NEW U.S. LAWSUIT FOR USD 2 BILLION IN
FEBRUARY 2012, ASSERTING SAMSUNG'S VIOLATION OF FIVE
APPLE PATENTS.
• THE JURY ALSO FOUND APPLE GUILTY OF INFRINGING ONE OF
SAMSUNG’S PATENTS.
• A NEW HEARING WAS HELD IN MARCH 2014, IN WHICH APPLE
SOUGHT TO PREVENT SAMSUNG FROM SELLING SOME OF ITS
CURRENT DEVICES IN THE U.S.
• THE TRIAL BEGAN IN EARLY APRIL AND DECISION WAS
DELIVERED ON MAY 2, 2014 AND SAMSUNG WAS INSTRUCTED
TO PAY USD119.6 MILLION TO APPLE FOR SMARTPHONE
PATENT VIOLATIONS.
42. BRITISH COURT VERDICT
SAMSUNG DID NOT VIOLATE APPLE’S DESIGN
FOR
I PAD.
DESIGNS WERE DIFFERENT ENOUGH NOT TO
CONFUSE CUSTOMERS.
SAMSUNG'S TABLETS "DO NOT HAVE THE SAME
UNDERSTATED AND EXTREME SIMPLICITY
WHICH IS POSSESSED BY THE APPLE DESIGN,"
50. QUESTIONS
Q 1: IS TRADEMARK REGISTRATION NECESSARY EVEN WHEN
THE MARK HAS BEEN IN USE FOR MANY YEARS?
Q 2: IS IT POSSIBLE TO EXTEND THE TERM OF PATENT,
TRADEMARK & INDUSTRIAL DESIGN PROTECTION?
Q 3: IF A COMPANY IS EXPORTING, DOES IT HAVE TO REGISTER
ITS TRADEMARK IN OTHER COUNTRIES AS WELL?
Q 4: IF IN A COMPANY AN EMPLOYEE HAS INVENTED A NEW
PRODUCT OR PROCESS. WHO WILL OWN THE RIGHTS TO THE
PATENT? EMPLOYEE OR THE COMPANY(OWNER) ?
51. Q 5: DOES INTELLECTUAL PROPERTY HAS JURISDICTION?
Q 6: SUPPOSE AN EMPLOYEE INVENTS A NEW PRODUCT WHEN
HE IS ON LEAVE OR SOMEWHERE BEYOND COMPANY'S LIMITS,
CAN COMPANY CLAIM PATENT ON IT ?
Q 7: KFC'S LOGO HAVE A PICTURE OF A OLD MAN, CAN A
PERSON BE CONSIDERED AS A TRADEMARK?
Q 8: CAN A PERSON OBTAIN A PATENT AND KEEP HIS INVENTION
SECRET?
Q 9: CAN YOU CITE ANY RECENT CASE RELATED TO PATENT /
TRADEMARK / INDUSTRIAL DESIGN IN INDIA?
What is a patent? ↓
A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a product or a process that generally provides a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.
The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The owner may also sell the right to the invention to someone else, who will then become the new owner of the patent. Once a patent expires, the protection ends, and an invention enters the public domain; that is, anyone can commercially exploit the invention without infringing the patent.
Invention must
- relate to a Process or Product or both
- be new (Novel)
- involves an inventive step
- be capable of industrial application
- not fall under Section 3 and 4
What rights does a patent provide? ↓
A patent owner has the right to decide who may – or may not – use the patented invention for the period in which the invention is protected. In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold by others without the patent owner's consent.
What kinds of inventions can be protected? ↓
Patents may be granted for inventions in any field of technology, from an everyday kitchen utensil to a nanotechnology chip. An invention can be a product – such as a chemical compound, or a process, for example – or a process for producing a specific chemical compound. Many products in fact contain a number of inventions. For example, a laptop computer can involve hundreds of inventions, working together.
How long does patent protection last? ↓
Patent protection is granted for a limited period, generally 20 years from the filing date of the application.
Is a patent valid in every country? ↓
Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.
PCT :– Patent co-operation Treaty, It is international patent treaty law concluded in 1970 and entered into force in 1978. It provides unified procedure for filling patent application to protect invention in each of its contracting states. India joined PCT on Dec 7, 1998. The activities of PCT are governed by WIPO, Geneva
Exclusive License :- Exclusive license is the right given by patent owner to other company or person to use his patent rights. Here patent owner remains with just title of patent, other rights are transferred to licensee.
Cross Licensing:- Here company’s exchange the patent of each other.
Convention Application:- It means an application for a patent made by a foreign national of a convention country. Convention country is that country which is a member of PCT/WIPO.
RULES BEFORE AMENDMENTS
RULES AFTER AMENDMENTS
1. Request for examination to be made within 36 months from date of priority or from date of filing application.
Request for examination to be made within48 months from date of priority or from date of filing application.
2. Controller to refer the application to Examiner
Controller to refer the application to Examiner within 1 month from date of publication or 1 month from request for examination whichever is later.
3. Meeting the requirements of the First Examination Report – 6 months from the date of issue of the report.
Meeting the requirements of the First Examination Report – 12 months from date of issue of the report.
4. A pre-grant opposition to be filed within 3 months from the date of publication for the application or before the grant of patent.
A pre-grant opposition to be filed within 6 months from the date of publication of the application or before the grant of patent.
5. Reply to pre-grant opposition to be filed within 1 month from date of notice of opposition.
Reply to pre-grant opposition to be filed within 3 months from date of notice of opposition.
6. Official fees to be paid in cash or bank draft or cheque.
Official fees to be paid in cash or bank draft or cheque or electronically.
7. Controller to decide on request for permission to file for patents abroad – 3 months from date of request.
Controller to decide on request for permission to file for patents abroad - 21 days from date of request.
Rectangular shape with corners round, Front face of the product, Grid of colourful icons with round corner, Bottom row of icon, A metallic round frame, Packing of phone, Icons of various app