introduction to IPRs

1. INTRODUCTION TOINTRODUCTION TO
INTELLECTUALINTELLECTUAL
PROPERTY RIGHTSPROPERTY RIGHTS
Professor & Lawyer. PuttuProfessor & Lawyer. Puttu
Guru PrasadGuru Prasad
M.B.A., M.Com., L.L.B., M.Phil., APSET.,M.B.A., M.Com., L.L.B., M.Phil., APSET.,
DFTM.,(PhD)JNTUKDFTM.,(PhD)JNTUK.,.,

2. Intellectual PropertyIntellectual Property
 Intellectual Property is a property thatIntellectual Property is a property that
arises from the human intellect. It is aarises from the human intellect. It is a
product of human creation.product of human creation.
 Intellectual Property is the creation of theIntellectual Property is the creation of the
human intellectual process and ishuman intellectual process and is
therefore the product of the humantherefore the product of the human
intellect or mind.intellect or mind.

3. Intellectual PropertyIntellectual Property
 It is an intangible form of property.It is an intangible form of property.
 It is a personal property.It is a personal property.
 It is a basic form of property.It is a basic form of property.
 It is based on information.It is based on information.

4. Objects of IntellectualObjects of Intellectual
PropertyProperty
 The objects of the rights covered byThe objects of the rights covered by
the concept of intellectual propertythe concept of intellectual property
are manifestations of humanare manifestations of human
creativity.creativity.
-the form of the work;-the form of the work;
-the invention; and-the invention; and
-the relationship between a symbol-the relationship between a symbol
and a business.and a business.

5. Protected IntellectualProtected Intellectual
PropertyProperty
 Invention by a patent or as trade secret.Invention by a patent or as trade secret.
 Utility models by a certificate or secret.Utility models by a certificate or secret.
 Industrial Design by a certificate.Industrial Design by a certificate.
 Trade and Service Mark by a certificate.Trade and Service Mark by a certificate.
 Copyright by reducing to a fixed form.Copyright by reducing to a fixed form.

6. Protection of IntellectualProtection of Intellectual
PropertyProperty
 Venetian Patent Law of the 19Venetian Patent Law of the 19thth
MarchMarch
14741474
‘…‘…each person who will make in this cityeach person who will make in this city
any new and ingenious contrivance, notany new and ingenious contrivance, not
made heretofore in our dominion, as soonmade heretofore in our dominion, as soon
as it is reduced to perfection,….as it is reduced to perfection,….

7. Protection of IntellectualProtection of Intellectual
PropertyProperty
It being forbidden to any other in anyIt being forbidden to any other in any
territory and place of ours to make anyterritory and place of ours to make any
other contrivance in the form andother contrivance in the form and
resemblance thereof, without the consentresemblance thereof, without the consent
and licence of the author up to ten years.’and licence of the author up to ten years.’

8. Protection of IntellectualProtection of Intellectual
Property ConventionsProperty Conventions
 Paris convention – 1965
 UCC - 1966
 WIPO – 1967
 Geneva Convention – 1976
 ARIPO – 1978
 Brussels Convention – 1979
 Nairobi Treaty – 1982
 Bern Convention – 1993

9. Industrial PropertyIndustrial Property
 Industrial Property Includes:Industrial Property Includes:
-Patents-Patents
-Utility Models-Utility Models
-Industrial Designs-Industrial Designs
-Trade Secrets-Trade Secrets
-Trade and Service Marks-Trade and Service Marks
-Geographical Indications-Geographical Indications
-Layout Designs of Integrated Circuits.-Layout Designs of Integrated Circuits.

10. CopyrightCopyright
 Copyright includes:Copyright includes:
-Literary-Literary
-Artistic works-Artistic works
-Musical works-Musical works

11. Plant breeders RightsPlant breeders Rights
(PBR)(PBR)
 Plant Breeders Rights include:Plant Breeders Rights include:
--new varieties all plant species (exceptnew varieties all plant species (except
algae and bacteria)algae and bacteria)

12. Bills aimed at complying withBills aimed at complying with
TRIPS AgreementTRIPS Agreement
 Geographical IndicationsGeographical Indications
 Layout of Integrated CircuitsLayout of Integrated Circuits
 Counterfeit GoodsCounterfeit Goods
 Trade secretsTrade secrets

13. Core FunctionsCore Functions
 Examine applications for and grantExamine applications for and grant
industrial property rights for:industrial property rights for:
-Patents for inventions-Patents for inventions
- utility models for innovations- utility models for innovations
-Industrial Designs for aesthetic features-Industrial Designs for aesthetic features
of productsof products
-Trade and service marks for goods and-Trade and service marks for goods and
services.services.

14. Core FunctionsCore Functions
 To provide industrial property informationTo provide industrial property information
to the public.to the public.
 To promote inventiveness andTo promote inventiveness and
innovativeness in Kenya.innovativeness in Kenya.
 To organise and conduct training,To organise and conduct training,
competition and awards in IP.competition and awards in IP.

15. Why Protect IntellectualWhy Protect Intellectual
PropertyProperty
 ““Technology” means systematicTechnology” means systematic
knowledge for the manufacturing of aknowledge for the manufacturing of a
product, or the rendering of a service inproduct, or the rendering of a service in
industry, agriculture or commerce,….industry, agriculture or commerce,….
-providing a solution to a problem-providing a solution to a problem
-communicable by one person to-communicable by one person to
anotheranother
-directed to an end.-directed to an end.

16. Why Protect IntellectualWhy Protect Intellectual
PropertyProperty
 Fosters economic growthFosters economic growth
 Provides incentives for technologicalProvides incentives for technological
innovation, andinnovation, and
 Attracts investment that will create newAttracts investment that will create new
jobs and opportunities.jobs and opportunities.

17. Patentable Subject MatterPatentable Subject Matter
 Human necessities: agriculture, foodstuff,Human necessities: agriculture, foodstuff,
tobacco, personal or domestic articles,tobacco, personal or domestic articles,
health and amusement.health and amusement.
 Performing operations and transporting:Performing operations and transporting:
separating, mixing, shaping, printing andseparating, mixing, shaping, printing and
transporting.transporting.
 Chemistry and metallurgy.Chemistry and metallurgy.
 Textiles and paper.Textiles and paper.

18. Patentable Subject MatterPatentable Subject Matter
 Fixed constructions: building, earthFixed constructions: building, earth
moving and mining.moving and mining.
 Mechanical engineering, lighting, heating,Mechanical engineering, lighting, heating,
weapons, blasting including engines orweapons, blasting including engines or
pumps and engineering in general.pumps and engineering in general.
 Physics: instruments and nucleonics.Physics: instruments and nucleonics.
 Electricity.Electricity.

19. Unpatentable Subject MatterUnpatentable Subject Matter
 A discovery, scientific theory orA discovery, scientific theory or
mathematical method;mathematical method;
 A literary, dramatic, musical or artisticA literary, dramatic, musical or artistic
work, or any other aesthetic creation;work, or any other aesthetic creation;
 A scheme, rule or method for performingA scheme, rule or method for performing
any mental act, playing a game or doingany mental act, playing a game or doing
business, or a program for a computer;business, or a program for a computer;
 Mere presentation of information.Mere presentation of information.

20. Unpatentable Subject MatterUnpatentable Subject Matter
 Plant varieties, but not parts thereof orPlant varieties, but not parts thereof or
products or biotechnological processes;products or biotechnological processes;
 Inventions contrary to public order,Inventions contrary to public order,
morality, public health and safety,morality, public health and safety,
principles of humanity, and environmentalprinciples of humanity, and environmental
conservation; andconservation; and
 Any other invention that may be declaredAny other invention that may be declared
non-patentable by the Minister in chargenon-patentable by the Minister in charge
of Industrial Property matters.of Industrial Property matters.

21. Filing For A Patent ApplicationFiling For A Patent Application
In INDIAIn INDIA
 Four RoutesFour Routes
-LOCAL-LOCAL
-ARIPO-ARIPO
-PCT-PCT (World intellectual(World intellectual
Property Organization-WIPO)Property Organization-WIPO)
-FOREIGN - DIRECT-FOREIGN - DIRECT

22. Utility ModelUtility Model
 DefinationDefination
A utility model is an invention that can beA utility model is an invention that can be
utilized in industry, agriculture, educationutilized in industry, agriculture, education
services or environmental conservationservices or environmental conservation
and which relates to shape, structure orand which relates to shape, structure or
assemblages of articles.assemblages of articles.
 It must be newIt must be new
 Be Industrially applicableBe Industrially applicable

23. Industrial DesignIndustrial Design
 Industrial Design is theIndustrial Design is the ornamental orornamental or
aestheticaesthetic aspect of a useful article ofaspect of a useful article of
industry. The aspect that givesindustry. The aspect that gives specialspecial
appearance to a productappearance to a product of industryof industry

24. The Industrial PropertyThe Industrial Property
TribunalTribunal
 TheThere exist there exist the Industrial Property TribunalIndustrial Property Tribunal
whichwhich deals with hearing of IP matters,deals with hearing of IP matters,
particularly evaluating and determiningparticularly evaluating and determining
appeals from the decisions of the KIPIappeals from the decisions of the KIPI
MMananaagingging DDirectorirector affecting grantsaffecting grants..
 It handles disputes concerning patents,It handles disputes concerning patents,
utility models, industrial designs.utility models, industrial designs.

25. CopyrightCopyright
 DefinitionDefinition
Protection ofProtection of cultural,cultural, artistic and literaryartistic and literary
written works such as poems, novels,written works such as poems, novels,
articles, musical works, paintings,articles, musical works, paintings,
cinematographic work, photographic,cinematographic work, photographic,
sculpture and computer programs.sculpture and computer programs.

26. Plant breeders Rights(PBR)Plant breeders Rights(PBR)
 Protection of New varieties of plantsProtection of New varieties of plants
-distinct,-distinct,
-uniform, and-uniform, and
-stable.-stable.

27. Trade and Service MarksTrade and Service Marks
 A trade mark is a sign used on, or inA trade mark is a sign used on, or in
connection with the marketing of,connection with the marketing of,
goods or services.goods or services.
 UsedUsed ““onon”” the goods means that itthe goods means that it
may appear not only on the goodsmay appear not only on the goods
themselves but on the container orthemselves but on the container or
wrapper in which the goods are whenwrapper in which the goods are when
they are sold.they are sold.

28. Trade and Service MarksTrade and Service Marks
 UsedUsed ““in connection within connection with”” the marketing ofthe marketing of
the goods refers mainly to:the goods refers mainly to:
-the appearance of the sign in-the appearance of the sign in
advertisements (newspaper, television,advertisements (newspaper, television,
etc.) oretc.) or
-in the shop windows of the shops in-in the shop windows of the shops in
which the goods are sold.which the goods are sold.

29. Category of Trade MarksCategory of Trade Marks
 Certain types of marks should notCertain types of marks should not
be protected, Marks arebe protected, Marks are
categorized as:categorized as:
-Generic,-Generic,
-Descriptive,-Descriptive,
-Suggestive, and-Suggestive, and
-Arbitrary or fanciful.-Arbitrary or fanciful.

30. Category of Trade MarksCategory of Trade Marks
 Trade Mark cannot beTrade Mark cannot be
categorized in a vacuum. It iscategorized in a vacuum. It is
essential to know the product oressential to know the product or
service to which the mark will beservice to which the mark will be
applied in order to place it in theapplied in order to place it in the
proper categoryproper category
 Example: APPLE is generic forExample: APPLE is generic for
apples, but arbitrary forapples, but arbitrary for
computers.computers.

31. Registration ProcedureRegistration Procedure
 Application for search.Application for search.
 Application for registration.Application for registration.
 Examination of trade mark.Examination of trade mark.
 Advertisement of trade mark.Advertisement of trade mark.
 Filing of opposition.Filing of opposition.
 Certificate issued/hearing set.Certificate issued/hearing set.

32. Goods CoveredGoods Covered
 1818 Leather and imitations of leather, andLeather and imitations of leather, and
goods made of these materials and notgoods made of these materials and not
included in other classes; animal skins,included in other classes; animal skins,
hides; trunks and travelling bags;hides; trunks and travelling bags;
umbrellas, parasols and walking sticks;umbrellas, parasols and walking sticks;
whips, harness and saddlery.whips, harness and saddlery.
 2424 Textiles and textile goods, not includedTextiles and textile goods, not included
in other classes; bed and table covers.in other classes; bed and table covers.
 2525 Clothing, footwear, headgear.Clothing, footwear, headgear.

33. Goods CoveredGoods Covered
 2929 Meat, fish, poultry and game; meat extracts;Meat, fish, poultry and game; meat extracts;
preserved, dried and cooked fruits andpreserved, dried and cooked fruits and
vegetables; jellies, jams, compotes; eggs, milkvegetables; jellies, jams, compotes; eggs, milk
and milk products; edible oils and fats.and milk products; edible oils and fats.
 3030 Coffee, tea, cocoa, sugar, rice, tapioca,Coffee, tea, cocoa, sugar, rice, tapioca,
sago, artificial coffee; flour and preparationssago, artificial coffee; flour and preparations
made from cereals, bread, pastry andmade from cereals, bread, pastry and
confectionery, ices; honey, treacle; yeast,confectionery, ices; honey, treacle; yeast,
baking-powder;baking-powder;
salt, mustard; vinegar, sauces (condiments);salt, mustard; vinegar, sauces (condiments);
spices; ice.spices; ice.

34. Live of a Trade MarkLive of a Trade Mark
Terms become generic overtime becauseTerms become generic overtime because
of the way the public used them andof the way the public used them and
because of the originators’ failure to policebecause of the originators’ failure to police
them.them.
-examples: YO-YO “returning top”-examples: YO-YO “returning top”
fanciful and ESCALATOR “moving stairs”fanciful and ESCALATOR “moving stairs”
suggestive.suggestive.

35. Live of a Trade MarkLive of a Trade Mark
 More examples of generic product names thatMore examples of generic product names that
used to be trade marks: Zipper, Cellophane,used to be trade marks: Zipper, Cellophane,
Thermos, Aspirin (for acetylsalicylic acid);Thermos, Aspirin (for acetylsalicylic acid);
Trampoline (for a spring supported canvasTrampoline (for a spring supported canvas
jumping apparatus); Kerosene (for distilledjumping apparatus); Kerosene (for distilled
petroleum lamp oil); Granola (for a cerealpetroleum lamp oil); Granola (for a cereal
consisting of rolled oats, fruit and nuts);consisting of rolled oats, fruit and nuts);
Brassiere (for a woman’s undergarment worn toBrassiere (for a woman’s undergarment worn to
support the breasts); and Heroin (forsupport the breasts); and Heroin (for
diacetylmorphine). “Heroin” was originallydiacetylmorphine). “Heroin” was originally
suggestive mark. Workers at Bayer said it madesuggestive mark. Workers at Bayer said it made
them feel “heroisch.”them feel “heroisch.”

36. Live of a Trade MarkLive of a Trade Mark
 The law provides that non-use of a markThe law provides that non-use of a mark
for consecutive 5 years is ordinarilyfor consecutive 5 years is ordinarily
considered proof of an intention toconsidered proof of an intention to
abandon it.abandon it.
 Delay in enforcement of a mark against aDelay in enforcement of a mark against a
third party may cause lose of rights.third party may cause lose of rights.

37. Thank You!Thank You!
Enjoy the SeminarEnjoy the Seminar