IPR, Patent, It act

1. Intellectual
Property
Legislation &
IT Act
Unit 3

2. Content
1. Meaning and definition of
intellectual property.
2. Types of intellectual
property,
3. Meaning and definition of
intellectual property, Types
of intellectual properties
4. Patent Act of 1970 and
amendments - objects,
definition, inventions,
patentee, true and first
inventor.
5. Procedure for grant of
process, rights to patentee,
infringement, remedies .

3. Meaning and definition of Intellectual
Property
Intellectual property
rights are the rights
given to persons over
the creations of their
minds.
They usually give the
creator an exclusive
right over the use of
his/her creation for a
certain period of time.
My Idea
My Art
My own Composed
Music
My Content

4. Types of IP
Patents, Trademarks,
Copyrights, and Trade
Secrets

5. Dr.NRG
Types Of IPR

6. Patent
It is important to note that patent
for a new invention is registered only
if the invention is ‘novel’ and
‘original’
A ‘Patent’ is an intellectual property
right which protects any new
invention.
A patent is granted for a term of 20
(twenty) years from the date of filling
of the application.

7. 1856 The Act VI of 1856 on protection of inventions based
on the British Patent Law of 1852.
1859
The Act modified as
act XV Patent
monopolies called
exclusive privileges
(making. Selling and
using inventions in india
and authorizing others to
do so for 14 years from
date of filing
specification).
1872 The Patterns & Designs Protection Act.
1883 The Protection of Inventions Act.
1888 Consolidated as the Inventions & Designs Act.
1911 The Indian Patents & Designs Act.
1999 On march 26, 1999 Patents (Amendment) Act, (1999) came
into force from 01-01-1995.
2002 The Patents (Amendment) Act 2002 came into
force from 20th may 2003
2005 The Patents (Amendment) Act 2005 effective from
1st
january 2005

8. Patents
Utility Patent Plant Patent Design Patent

9. Utility Patent
Utility patents, the most common type issued by
the USPTO, apply to a broad range of inventions,
including:
1. Machines (something composed of moving
parts, such as engines or computers)
2. Articles of manufacture (brooms,
candleholders, etc.)
3. Processes (business processes, software,
etc.)

10. Plant Patent
A plant patent is granted by the United
States government to an inventor (or
the inventor's heirs or assigns)
who has invented or discovered and
reproduced a distinct and new variety
of plant, other than a tuber
propagated plant or a plant found in
an uncultivated state.

11. Design Patent
Design patents
are utilized to
protect the novel
ornamental features
of a utilitarian
object.

12. Design vs Utility
A utility patent protects the functional
aspects of an article, i.e., the way the
article works and is used, whereas a
design patent only protects the
ornamental appearance of an article,
such as its shape, configuration and/or
its surface ornamentation

13. The Trademarks Act, 1999
•A trademark provides
protection for
• Symbols
• Colors,
• Shapes,
• words, etc. representing
and relating to a good or
a service.
The validity of a trademark registration is for an initial period of 10 (ten) years which can renewed perpetually.

14. Dr.NRG
Trade Mark
Coca Cola was invented in 1886 and protected
by trademark (for the name Coca-Cola) and by
an industrial design (for this very special
design of the Coca-Cola bottle, supposed to be
in the shape of a woman wearing a long skin-
tight dress).
The process of the Coca-Cola drink is secret and
is only known by company only,and nobody is
able to produce a drink with exactly the same
taste still today. You all know that Pepsi Cola, its
biggest competitor, has a different taste.

15. The
Copyrights
Act, 1957
‘original
literary,
Dramatic, Musical,
artistic works, cinematograph
films,
and sound
recording.
In case of published literary works, dramatical works and artistic
works, copyright protection shall be provided to such works for a
term of 60 (sixty) years in addition to the life of the author

16. Trade Secret
A trade secret is
typically something not
generally known to
the public, where
reasonable efforts are
made to keep it
confidential.

18. Patent Act
1970
• The Patents Act, 1970 is the
legislation that till date governs
patents in India. It first came into
force in 1972.
• The Office of the Controller General
of Patents, Designs and Trade
Marks or CGPDTM is the body
responsible for the Indian Patent
Act.
• The Patent Office has its
headquarters in Calcutta and has
branches in New Delhi, Chennai
and Mumbai.

19. Amendment
• The Patents Act has been
repeatedly amended in 1999,
2002, 2005, 2006 respectively.
The Rules under Patent Act
were also amended in 2012,
2013, 2014.

20. Patent Protection for
Pharmaceuticals, Foods, Agro-
chemicals
The extension of product patents
to pharmaceutical substances.
Previously, patents of this nature
were not patentable, but this
changed with the deletion
of Section 5 of the Principal
Act which previously provided
that only the process or method
of manufacturing such
substances but not the substance
themselves.

21. Inventions, Patentee, True And First Inventor
IF A PERSON IS TO BE CALLED AN
INVENTOR, HE OR SHE MUST HAVE
CONTRIBUTED INTELLECTUALLY TO THE
FINAL OUTCOME OF THE SCIENTIFIC
WORK THAT LED TO A PATENT.
THE “TRUE AND FIRST INVENTOR” IS NOT
THE FIRST TO DISCOVER, BUT THE FIRST TO
FILE, SINCE THE DISCOVERY IS REVEALED
TO THE PUBLIC BY FILING. AS A RESULT,
THE FIRST TO REGISTER IS ALSO THE FIRST
TO INVENT.

22. Procedure
• Step 1: Conceiving your Invention
• Step 2: Patent Search and Drafting
• The next step which follows is effective drafting of the patent application. The
application consists of various parts such as Claims, Background, Description,
Drawing (if any), Abstract, and Summary.
Step 3- Filing the Patent Application
This is where the actual process starts. After drafting the patent application,
this can be filed in the government patent office as per the application form in
Form 1. A receipt would be generated with the patent application number. One
can also file a provisional patent application, in case; the invention is at an
early stage under Form 2. The benefit of filing a provisional application is that
one can secure a prior date of filing whic ..
• Step 4- Publication of the Application
• Step 5- Request for Examination
Step 6- Respond to the Objections
The applicant needs to respond to the objection received from the patent
office by way of the First Examination Report.
Step 7- Grant of Patent
After addressing all objections, the application would be placed for a grant
once it is found to be meeting all patentability requirements, and finally, the
patent will be granted to the applicant. The grant of a patent is notified in the
patent journal which is published from time to time.

23. Filing of the Application
Electronic filing
(July 20,2007)
Physical filing at the Patent Office

24. Where to file patent application
• The appropriate office of the patent office shall be the head office of the patent office or the branch
office as the case may be within whose territorial limits …
Residence of applicant or Domicile; or His the
place of business; or
The place where the invention actually originated.
• If the applicant has no business or domicile in India, the address for service in India is
given by such applicant
Office Territorial Jurisdiction
Patent Office Branch, Chennai The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu
and the Union Territories of Pondicherry and Lakshadweep
Patent Office Branch Mumbai The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and
Chhattisgarh and the Union Territories of Daman and Diu &
Dadra and Nagar Haveli.
Patent Office
Branch, New
Delhi
The States of Haryana, Himachal Pradesh, Jammu and Kashmir,
Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the
Union Territory of Chandigarh.
Patent Office,
HO Kolkata
The rest of India

25. How to file a patent application?
• Documents can be filed in the patent office
 through online( e-filing) or
 www.ipindiaonline.gov.in/online
 through post or
 can be submitted by hand

26. Patent Grant in INDIA
Conceptualizing an
invention
Filing of application With complete specification
With provisional specification
Publication u/s 11A (early
or post 18-months )
Filing complete
within 12 months
after provisional YES
If NOT
Application
ABANDONE
REQUEST for EXAMINATION
on Form-18 within 48
months from date of
priority.
Pre-grant opposition U/s
25(1)
EXAMINATION [for
patentability &
other
requirements
F.E.R. Issued.

27. F.E.R. ISSUED
• Re-Examination of amended documents
• Controller offers a hearing to the applicant.
• Application is to beput in order within 12 months from
issue of FER
Objections not
met within 12
months
ABANDONED Grant of Patent u/s 43
and publication of grant
Post grant opposition u/s
25(2)
Objections met within
12 months

28. Rights of a Patentee
1) Right against exploit the patent: The
patentee has a right to prevent 3rd
parties, from exploiting the patented
invention.
2) Right to grant license: The patentee has
a power to assign rights or grant license.
3) Right to surrender: The patentee is
given the right to surrender the patent
by giving notice in prescribed manner to
the controller.
4) Right to sue for infringement: A
patentee is given the right to institute
proceeding for Infringement of the
patent in a district court.

29. Infringement
• Infringement of a patent consists of the unauthorized making, using,
offering for sale or selling any patented invention during the term of
the patent.
• The patentee may ask the court for an injunction to prevent the
continuation of the infringement and may also ask the court for an
award of damages because of the infringement.
• If a patent is infringed, the patentee may sue for relief in the
appropriate Federal court.

30. Remedy for
Infringement of Patent
• An action for infringement must be instituted by way of a suit in any
District Court or a High Court having jurisdiction to entertain the suit.
• The plaintiff on satisfying the court about infringement of his patent
would be entitled to the following relief:
• Injunction Damages
• Account of profits
•Injunction
•The Plaintiff may at the commencement of the action move for an interim injunction
to restrain the defendant from committing the acts complained of until the hearing of
the action or further orders. The plaintiff should make out a prima facie case and also
show that the balance of convenience lies in his favor.
•Damages
•In assessing the damages, the important question is what is the loss sustained by the
patentee. The loss must be the natural and direct consequence of the defendant acts.
The object of damages is to compensate for loss or injury.
•Accounts of Profits
•Where a patentee claims the profits made by the unauthorized use of his patent, it is
important to ascertain how much of his invention was appropriated, in order to
determine what proportion of the net profits realized by the infringer was attributable
to its use.

31. Real CASES

32. Pidilite Industries Limited v.
Poma-Ex Products & Ors.
• The Court held that the mark ‘KWIKHEAL’ used
by the Defendants is prima facie deceptive and
misleading. The Court was also of the opinion
that the Defendants have adopted identical
packaging to ride on the reputation of the
Plaintiff.
• The Court further held that there exists a high
degree of phonetic similarity between the mark
of the Plaintiff “FEVIKWIK” and the mark of the
Defendants “KWIKHEAL”, as the word “KWIK” is
a dominant part of the Plaintiff’s trademark.
• The Court issued an injunction in favour of the
Plaintiff.

33. Glenmark Pharmaceuticals Ltd. v.
Curetech Skincare and Galpha
Laboratories Ltd.
• The dispute concerned the Plaintiff’s
product Candid-B, an anti-fungal cream, and
a similar drug being sold by Defendant No. 2
named Clodid-B.
• In addition to the adoption of similar word
mark, the Defendant No. 2 had also copied
the trade dress, color scheme, art
work, font style and even manner of
writing of the Plaintiff’s product.

34. Sajeev Pillai v. Venu Kunnapalli & Anr

35. Sajeev Pillai v. Venu Kunnapalli & Anr
• Mamankam is a grand festival which used to be held once in 12 years
on the banks of the Bharathapuzha river in Kerala during the 14th to
19th century.
• The appellant, Sajeev Pillai, a film director and a script writer, claims
to have researched the history of Mamankam and to have written a
script for a film. Stated to be his dream project, Pillai met Venu
Kunnapalli, the first respondent while searching for a producer to
make a film based on the script.

36. Sajeev Pillai v. Venu
Kunnapalli & Anr
Thereafter, he signed an MoU with
Kavya Film Company which was
associated with Kunnapalli.
Though Pillai was appointed as the
director, after completion of two
shooting schedules, his services were
terminated and he was replaced by
someone else. The shooting of the film
was thereafter completed, allegedly by
mutilating, distorting and modifying
his script.

37. Sajeev Pillai v. Venu Kunnapalli & Anr
• An interim injunction application was also filed to restrain the
respondents from releasing, publishing, distributing or exploiting the
film’ Mamankam’.
• The District Judge denied the interim injunction application triggering
Pillai to appeal before the Kerala High Court.

38. Sajeev Pillai v. Venu Kunnapalli & Anr
• In the appeal, Venu Kunnapalli took the stand that Pillai had assigned
his work which includes the story, script, screenplay and dialogue to
the respondents and hence he lost his authorship over the same.
• The Court analyzed Section 57(1) of the Copyright Act which
prescribes that even after assignment of the copyright in a work, the
author of a work will have special rights to claim the authorship of the
work. the Court held that the film may be released without exhibiting
anyone’s name as the script writer or as writer of the screen play
thereof till the disposal of the suit.

39. Carlsberg v/s Som
Distilleries
• Carlsberg alleged that Som Distilleries
(Som) had adopted an imitation of its
registered bottle design, trademark
and trade dress to sell its Hunter beer
which amounted to infringement of
design and trademark, as well as
passing off. Carlsberg also filed an
injunction application to restrain Som
from carrying out its infringing
activities. The interim injunction
application was considered by the
court and it ruled in favour of Som.

40. Carlsberg v/s Som
Distilleries
Carlsberg's claim was based on:
• the unique and distinctive bottle
and trade dress/get-up of its Tuborg
beer bottle registered under the
Designs Act 2000;
• an infringement of registered
trademark Clockman shape label on
the bottle; and
• common law rights in the distinctive
shape of the bottle.

41. Carlsberg v/s Som
Distilleries
• Som distilleries claimed that
• In 2011, Som had initiated steps to
adopt a new design for its Hunter
beer and the bottle design and label it
adopted are a result of its creativity
and efforts.
• There was no novelty in Carlsberg's
bottle design, as the shape, pull caps
and labels are common to the trade
over which no monopoly can be
claimed.

42. Carlsberg v/s Som
Distilleries
• When the two bottles were compared
it could not be said that the Hunter
beer bottle was an obvious imitation of
Tuborg. The adoption of the Hunter
beer bottle design appeared to be
bona fide – taking into account Som's
consultations with design professionals
dating back to 2011.
• The balance of convenience also
favoured Som as it had invested heavily
in designing and procuring its bottles.

43. Nippon Steel, represented by Remfry and Sagar, filed a suit when
they received a complaint made to them by Yanbu Steel Company,
a trading company based in Saudi Arabia, about the quality of
some Carbon Seamless Pipes which were to be used in oil plants.
The company informed Nippon Steel that they were falsely induced
by the defendants to believe that these pipes were manufactured
by Nippon.
Nippon Steel & Sumitomo
Metal Corporation vs. Kishor
D Jain

44. It was later discovered that the pipes were manufactured by a
third-party manufacturer. The defendants duped the company by
affixing the Nippon Steel’s trademarks on the pipes and providing
forged certificates bearing Nippon Steel’s trademarks/logos to the
company
Nippon Steel & Sumitomo
Metal Corporation vs. Kishor
D Jain

45. Noting that there was a need to send out a serious message and to
deter other such unscrupulous entities from providing spurious
pipes, the Court decided to deal with the matter with an “iron
hand” and imposed Rs. 5 crores costs on the defendants. The Court
further directed that the costs were to be paid to the Tata
Memorial Hospital, a charitable organisation based in Mumbai.
Nippon Steel & Sumitomo
Metal Corporation vs. Kishor
D Jain

46. Christian
Louboutin V/S
Abubaker
• Christian Louboutin filed a
case against a Mumbai
based party, namely
Abubaker & Ors., who
were selling ladies
footwear with the similar
red soles.
• The plaintiff has got a
trademark certificate from
Europian Union.

47. Christian
Louboutin V/S
Abubaker
• Christian Louboutin
presented their arguments:
• That they are the
registered proprietor of the
trademark RED SOLE . Its a
red colour shade applied to
the soles of the ladies
footwear manufactured by
them.

48. Christian
Louboutin V/S
Abubaker
• The definition of a ‘mark’ under the
Indian Trademark Act {Section 2(m)}
has categorically used the expression
‘combination of colours’. Thus a single
colour does not qualify as a mark.
• The colour red applied by the
Defendants to the soles of their
footwear, adds to the appeal or the
looks of the products, and therefore
such a feature which is not used as a
trademark will not entitle the Plaintiff
to seek injunction against use of such
feature of the products by the
Defendants

49. Coca cola V/S
Parle
• Coca Cola was the largest brand of
soft drinks operating in 200
countries.
• Defendant which was earlier known
as Aqua Minerals Pvt. Ltd., was a
part of Parle group of Industries.
• The owners of defendant, Mr.
Ramesh Chauhan and Mr. Prakash
Chauhan, on September 18, 1993,
sold the trademarks , formulation
rights, know- how, intellectual
property rights, goodwill etc. of
their products THUMBS UP, LIMCA,
GOLD SPOT, MAAZA to the Coca
cola.

50. Coca cola V/S
Parle
• The company Bisleri Sales Ltd, had the secret
beverage base for manufacturing maaza and was an
affiliated company of Defendant
• On September 12, 1993, several agreements were
signed between both the parties, such as, deed of
assignment, goodwill assignment, know-how,
confidentiality and non- use agreement, non-
compete agreement, general assignment, etc. to
give effect to the sale for a considerable money
value.
• Then, the plaintiff was envisaged with the right to
sell the product Maaza within the territory of India.

51. Coca cola V/S Parle
• The defendant retained the trademark rights of
MAAZA in respect of other countries where it
had been registered.
• In March 2008, the defendant got aware of the
fact that the plaintiff had filed for registration
of MAAZA in turkey.
• • As a result of this, it sent plaintiff a legal
notice repudiating the Licensing Agreement
and made it devoid of all other selling rights. •
The plaintiff filed the suit for permanent
injunction and damages for infringement of
trademark and passing off, as the defendant
had completely ignored many irrevocable and
absolute rights embarked upon the plaintiff.

52. Coca cola V/S Parle
The court had the territorial jurisdiction
over the matter, because the defendant
had issued a news article in Delhi edition
of Times of India, and the reports itself
created the jurisdiction of the court as
they showed his intention to use the
mark by way of groundless threat. Also,
the defendant had a factory at Shivaji
Marg in New Delhi and the threat was
also given as notice from New Delhi itself.

53. Coca cola V/S Parle
In view of negative covenant under Section 42
of the Specific Relief Act, the defendant no. 1 is
not entitled to use the mark MAAZA in India.
Hence, the interim order of injunction was
granted to prevent the plaintiff from
irreparable loss and injury.
The Delhi HC expressly barred Bisleri from
selling Maaza products, however, it is specified
that the company may continue to
manufacture Maaza on Indian soil, provided
the stock is exported

54. Emami Ltd vs Arbaaz
Khan Productions
On September 17, Emami Ltd served a legal notice to
Arbaaz Khan Productions for using the phrase "zandu
balm" in the "Munni badnaam hui" song of the Salman
Khan blockbuster Dabangg citing copyright violation.
• By using the brand name in the song, you have not only
violated the copyright of my clients, but you have also
made an attempt to defame the reputation of my clients
and the product manufactured by them, said ZANDU BALM
OFFICIALS

55. Emami Ltd vs Arbaaz
Khan Productions
• The company asked the producer to remove the phrase
"Zandu Balm" or delete the song from the film
altogether. Emami, which acquired Zandu
Pharmaceuticals in 2008 for Rs 700 crore, is a Rs 1,000
crore entity today. • Some inside news on September
19, "The issue is not as serious as it is being made out to
be. They have sent a notice. The company is unlikely to
take the matter to court. In fact, they are considering an
out of court settlement, and then using the song to
promote the product." And Arbaaz Khan said, "Now that
our film is a big success, such things are bound to
happen. Everyone wants a share of the pie."

56. Emami Ltd vs Arbaaz
Khan Productions
• When the song’s promos went on air, Emami
decided to strike a barter deal— allowing the film’s
producers the use of Zandu Balm in return for
rights to the song for its own advertisement.
• Also, Mallaika Arora Khan, had to do an
advertisement for the brand free of cost as the
compensation.

57. Information Technology A

58. DATA Hacked/Misused IT Act 2000

59. IT Act covers
Section 4 – Legal recognition of electronic records
Section 5 – Legal recognition of digital signature
Section 6 – Use of electronic records and signature in
government and it’s agencies
Section 7 – Retention of electronic record
Section 8 – Publication of rule, regulation, etc., in Electronic
Gazette
Section 43 – Penalty and compensation for damage to
computer
Section 69 – Power to issue directions for interception or
monitoring or decryption of any information through any
computer resource
Section 72 – Penalty for breach of confidentiality and privacy

60. IT Act 2000
Cybercrime
E- Commerce
Digital
Transaction
K. R. Narayanan on 9th May
2008

61. Do You Know
The first hand-written signature can be traced back to 3100 BC
In the 16th century
The State of Fraud Act was passed in England’s parliament
making signatures mandatory in contracts.

62. Digital Signature
Authentication of electronic record by a subscriber by electronic method
Physical
Signature
Mathematical
Algorithm/
Encryption

63. Digital Signature Certificate (DSC)
Drivers' licenses, passports or membership cards
A digital certificate is an electronic document issued by a Certificate Authority (CA).
Certification Agencies:
Certification Agencies are appointed by the office of the
Controller of Certification Agencies (CCA) under the
provisions of IT Act, 2000.
There are a total of eight Certification Agencies authorised
by the CCA to issue Digital Signature Certificates (DSCs).
Validity of Digital Signatures:
The DSCs are typically issued with one year validity and
two year validity. These are renewable on expiry of the
period of initial issue.

64. Types of Digital Signature Certificate
Class 1 certificate: It is not legally recognized. It is based on
confirmation of valid email and not direct verification.
Class 2 certificate: This is based on the identification of the
person that is required to be verified against a reliable pre-
verified database.
Class 3 certificate: is a person in the presence of the
Registration Authority proves his identity.

65. Journey of Digital Signature
Phase I: Digital Signatures (year 2000 onwards)
Phase II: Electronic Signatures (year 2008
onwards)
Phase III: E-sign online signature service or E-
hastakshar (Sept. 2016 onwards)

66. Disadvantages of Digital Signature
EXPIRE
Just like any other electronic device or technology it’s based
and dependent on the technology. In times of rapid growth of
sophisticated technology, many such products have a short life.
SOFTWARE
The sender and the recipient have to purchase the verification
software for the working of digital signature.

67. Documents on Which Digital Signature is Valid
• Negotiable instrument such as promissory note or bill of exchange
other than cheque.
• Trust deeds
• Power of attorney
• A Will and testamentary deposition
• Real estate contract (lease/ sales agreement)

68. Digital Signature Electronic Signature
Used to secure a document Mainly used to verify a document
A digital signature is authorized and
regulated by certification
authorities
Usually not authorized
Comprised of more security
features
Comprised of less security features
Common types of digital signature
are based on Adobe and Microsoft
Main types of electronic signature
include verbal, electronic ticks or
scanned signatures
A digital signature can be verified An electronic signature cannot be
verified

69. Types of Signature

70. Electronic Record & Governance
Error
Damage
Manipulation
Theft

71. Electronic Record & Governance
Application of information and communication technology (ICT)
for providing government services
exchange of information, transactions
integration of previously existing services and information portals.

72. Certifying Authority
The Certifying Authorities (CAs) issue digital signature
certificates for electronic authentication of users.

73. Cybercrime & Penalties under IT ACT
65 Tampering with computer source documents
66 Hacking with computer system
66B Receiving stolen computer or communication device
66C Using password of another person
66D Cheating using computer resource
66E Publishing private images of others
66F Acts of cyberterrorism
67 Publishing information which is obscene in electronic
form.
67A Publishing images containing sexual acts
67C Failure to maintain records
68 Failure/refusal to comply with orders
69 Failure/refusal to decrypt data
73 Publishing electronic signature certificate false in
certain particulars
74 Publication for fraudulent purpose
Imprisonment up to life.
Fine 1L to 10L