Presentation on Law related to Patents, Trademark and Industrial design. Presented by Me and my group in our PGDM course.

1. INTELLECTUAL PROPERTY
RIGHTS

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,

3. PATENT

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

8. PROCESS OF FILING A PATENT

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

13. TRADEMARKS

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

21. • SMELL / OLFACTORY
• CHANEL
• TOUCH
• LEATHER TEXTURE WRAPPING AROUND WINE
BOTTLE
• SOUND
• NBC CHIMES, PILLSBURY’S DOUGHBOY GIGGLE

22. INDUSTRIAL DESIGN

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

30. INCLUDING A DISCLAIMER
DETERMINING THE FEE TO BE PAID
ENSURING ALL ENCLOSURES ARE ATTACHED
PROVIDING FULL DETAILS

31. FILING OF
APPLICATION
EXAMINATION
OBJECTION
REGISTRATION &
PUBLICATION
NOTIFICATION
NO
YES REFUSA
L
APPEAL
PROCEDURE FOR DESIGN FILLING

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

33. WIPO AND NIPO

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

37. CASE STUDIES

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,"

43. STATISTICS

44. 34287 39400 43197 43674 42951
141943
179317 183588
194216 200005
6092 7589 8373 8337 8533
0
50000
100000
150000
200000
250000
2009-10 2010-11 2011-12 2012-13 2013-14
PATENT TRADEMARK INDUSTRIAL DESIGN
CHART SHOWS LAST
FIVE YEARS
INTELECTUAL
PROPERTY RIGHTS
FILLING STATISTICS
TOTAL NUMBER OF
APPLICATION FILLED
IN YEAR 2013-14
2,51,564
INTERLECTUAL PROPERTY RIGHTS
APPLICATION FILLING

45. 25875
205065
116263
202385 203086
67490
115472
51735
44361
67876
8820
17035
6132
25375
36880
0
50000
100000
150000
200000
250000
2009-10 2010-11 2011-12 2012-13 2013-14
EXAMINED GRANTED ABANDONED
GRAPH SHOWS
NUMBER
OF TRADE MARK
APPLICATION
EXAMINED FOR FIRST
TIME, GRANTED
PATENT AND
ABANDONED PATENT
APPLICATION
TRENDS IN TRADE MARK APPLICATION
FILE

46. 6069
11208 11031
12268
18615
6168
7509
4381 4126 4227
5171 5342
4107
4901
7184
0
2000
4000
6000
8000
10000
12000
14000
16000
18000
20000
2009-10 2010-11 2011-12 2012-13 2013-14
Chart Title
EXAMINED GRANTED ABANDONED
GRAPH SHOWS
NUMBER OF PATENT
APPLICATION
EXAMINED FOR FIRST
TIME, GRANTED
PATENT AND
ABANDONED PATENT
APPLICATION
TRENDS IN PATENT APPLICATION FILE

47. 6226 6277
6511
6776
7281
6025
9206
6590
7252 7178
20 15 115 48 48
0
1000
2000
3000
4000
5000
6000
7000
8000
9000
10000
2009-10 2010-11 2011-12 2012-13 2013-14
EXAMINED GRANTED ABANDONED
GRAPH SHOWS
NUMBER OF
INDUSTRIAL DESIGN
APPLICATION
EXAMINED FOR FIRST
TIME, GRANTED
PATENT AND
ABANDONED PATENT
APPLICATION
TRENDS IN INDUSTRIAL DESIGN
APPLICATION FILE

48. PRIMARY
RESEARCH

49. INTERVIEWEES
INTERVIEWEE 1
NAME: ROHAN RAUT
AGE: 28
QUALIFICATION: BCOM & LLB
INTERVIEWEE 2
NAME: ADV. AMBAR ARUN JOSHI
AGE: 42
QUALIFICATION: B.COM & L.L.M
INTERVIEWEE 3
NAME: ELIAS RODRIGUES
AGE: 23
QUALIFICATION: BLS & LLB (FINAL YEAR )

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?

52. GROUP NO - 5
• ABHISHEK SHAH - 41
• KINJAL KAPADIA - 43
• RESHAM SINGH - 45
• HARISH PATIDAR - 47
• DIVYA CHHAJER - 49
• KUNTI SAWANT - 51
• ASHUTOSH SINGH - 53
• TEJ VORA - 55
• OM RAHEJA - 57
• ABHIJEET JADHAV - 59