Basic information about intellectual property rights in agriculture with respect to Indian scenario. Lecture by Dr SK Soam, NAARM, Hyderabad

1. IPRs an overview
S.K. Soam
Head, ICM Division
National Academy of Agricultural Research
Management, Hyderabad
soam@naarm.ernet.in

2. IP Forms
• Patents
• Trademark
• Copyrights and related issues
• Industrial design
• Layout-Designs (Topographies) of
Integrated Circuits
• Geographical indications
• Trade secrets or undisclosed
information
• Biodiversity, TK, Plant varieties

3. Need of IPRs in agriculture- cases of
bio-piracy & bioprospecting
• Rice
• Neem
• Haldi
• Wheat
• Jeevani
• Hoodia

4. Trade Related aspects of Intellectual Property
Rights –TRIPS enforcements
Enforc
ement
Develo
ped
Develo
ping
Develop
ing
LDC LDC
Product Pharma
1Jan
1995
1Jan
1996
1Jan
2000
1Jan
2005
1Jan
2006
1Jan
2016
Issues?
Provisions in TRIPS

5. TRIPS induced- legal changes in India
• Amendment in Indian patent laws
• Registration & protection of geographical
indications (Goods) Act 1999
• Protection of plant varieties and farmers’
rights Act 2001
• Biological diversity Act 2002
• Trademark Act 1999
• Designs Act 2000

6. Patent (amend)Act 1999
• US-India pharma dispute
• Mail box provisions
• Application for examination after 31 Dec
2004
• EMR provisions

7. Patent (amend) Act 2002-
Patent rules 2003 w.e.f. 20-5-03- salient features
• Definition as per trips (novelty, inventive step, industrial application)-
include process and product both. Processes in plants patentable
• Term 20 years (7 years)
– Time for restoration of ceased patent 18 months (12)
• Publication after 18 months of filing date/ priority date (12 months)-
delayed time- specifications
• Request for Examination (REF) after filing request/fees-48 months
• Provisions of PCT
• Mail box/ EMR- pharma, agrochemicals
• Ground of opposition
– Source of geographical origin- biological material
– ITK oral or otherwise in India or abroad- TKDL ground of rejection

8. Patent (amend)Act 2005
• Any one can apply for pregrant opposition within 6 month
of date of publication on 11 grounds
• Interested persons can apply for post grant opposition
• Definition of ‘new invention’
• Definition of ‘inventive step’- technical advancement and
economic significance
• Software per se not patentable
• Publication before 18 months of filing date/ priority date
• Request for Examination (REF) after filing request/fees-36
months
• Section 3 (d) –mere discovery of new form or new use not
patentable
• Software per se not patentable
• No EMR but compulsory licensing for countries with
insufficient manufacturing capacity, if by notification allow
importation

9. What can be patented?
• As per TRIPS-minimum standards
• Microorganism-with modifications,
inventive steps
• Non-biological/ microbiological processes
• Chemical compounds or compositions
derived from plants/ animals

10. Patent (amend)act 2002
What can’t be patented?
• Diagnostic/therapeutic/surgical methods for
treatment of human/animals-Trips
• Essential biological processes
• Mere discovery of living/non-living substance
occurring in nature
• Mere discovery without inventive
step/novelty/new use
• A method of Agriculture/ horticulture- India
• Invention related to atomic energy- India
• Invention contrary to law/ morality
• Plant varieties- patents/+sui-generis system

11. The Protection of Plant Varieties and
Farmer’s’ Rights Act 2001
• Variety u/s [2(za)]: a plant grouping except micro-organism within
a single botanical taxon of the lowest known rank, which can be—
(i) defined by the expression of the characteristics resulting from a
given genotype of that plant grouping;
(ii) distinguished from any other plant grouping by expression of at
least one of the said characteristics; and
(iii) considered as a unit with regard to its suitability for being
propagated, which remains unchanged after such propagation,
and includes propagating material of such variety, extant variety,
transgenic variety, farmers' variety and essentially derived variety.
• Extant variety: Variety that has been notified under section 5 of
the Seeds Act, 1966(54 of 1966); or, farmers' variety; or, a variety
about which there is common knowledge; or any other variety
which is in public domain
• Farmers’ variety: Variety that has been traditionally cultivated and
evolved by the farmers in their fields; or a wild relative or land
race of a variety about which the farmers possess the common
knowledge

12. Definition-EDV
• Essentially Derived Variety [EDV, u/s 2(i)]: in respect of a variety (the
initial variety) shall be said to be essentially derived from such initial
variety when it—
(i) is predominantly derived from such initial variety, or from a variety that is
itself predominantly derived from such initial variety, while retaining the
expression of the essential characteristics that results from the
genotype or combination of genotype of such initial variety;
(ii) is clearly distinguishable from such initial variety; and
(iii) conforms (except for the differences which result from the act of
derivation) to such initial variety in the expression of the essential
characteristics that result from the genotype or combination of genotype
of such initial variety.
• Essentially derived varieties may be obtained for example by the
selection of a natural or induced mutant, or of a somaclonal variant, the
selection of a variant individual from plants of the initial variety,
backcrossing, or transformation by genetic engineering.

13. NDUS
• Any variety would be novel if the propagating/harvested material
has not been sold in India for one year and abroad for four
years (for trees & vines 6 years) before date of filing of
registration application. If variety has become matter of common
knowledge other than the aforesaid manner, the novelty is not
lost
• Distinct: if it is clearly distinguishable by at least one essential
characteristic from any another variety whose existence is a
matter of common knowledge in any country at the time of filing
of the application
• Uniform: if subject to the variation that may be expected from
the particular features of its propagation it is sufficiently uniform
in its essential characteristics.
• Stable: if its essential characteristics remain unchanged after
repeated propagation or, in the case a particular cycle of
propagation, at the end of each such cycle.

14. Breeders’ rights
• To produce, sell, market, distribute, import or export the variety
• Successor- licensee-agent- no third party transfer
• Authorisation requirement if repeated use/ use as initial variety
• Restrictions to rights
– Revocation of certificate
– No annual retention fee
– Against public order , morale
– Against public interest
– Compulsory licensing- reasonable requirement
– EDV-use of farmers’ variety without their authorisation

15. Farmers’ rights
• Benefit sharing
• Compensation
• Rights as breeder
• Recognition as conserver
• Continue local seed transactions
• Free services
• Prevalence over breeder’s rights in certain matters
–EDV authorization
• Protection from innocent infringement

16. Protection of Plant Variety and Farmers
Rights Authority
• Chairperson, 15 members, Registrar General (ex-officio
member secretary)
• Committees of authority
• Registration of various varieties
• Maintenance of national register of plant variety
• Documentation, indexing and cataloguing of farmers’
varieties
• Developing, characterisation and documentation varieties
registered under the Act
• Benefit sharing: invite claim of benefit sharing
• Explicitly indicate amount of claims
• Compulsory licensing
• Compensations

17. Biological Diversity Act 2002
• President signature- 5th Feb 2003
• Enforcement- 15th April 2004
• NBA- 1st October 2003
• 16 members- 1+3+7+5
– National Biodiversity Fund-royalties, fees
– Committee on agro-biodiversity
• State Biodiversity Board- 1+5+5
– State Biodiversity Fund
• Biodiversity Mgmt Committee-1+6
– Local Biodiversity Fund-local levy
– People’s biodiversity registers

18. Definitions
• "benefit claimers" means the conservers of biological resources, their
byproducts, creators and holders of knowledge and information relating to the
use of such biological resources, innovations and practices associated with such
use and application.
• "biological diversity" means the variability among living organisms from all
sources and the ecological complexes of which they are part, and includes
diversity within species or between species and of eco‑systems;
• "biological resources" means plants, animals and micro‑organisms or parts
thereof, their genetic material and by‑products (excluding value added products)
with actual or potential use or value, but does not include human genetic
material;
• "bio‑survey and bio‑utilization" means survey or collection of species,
subspecies, genes, components and extracts of biological resource for any
purpose and includes characterization, inventorisation and bioassay;

19. Regulations for Access
• No person referred to in sub‑section (2) shall, without previous approval of the National
Biodiversity Authority, obtain any biological resource occurring in India or knowledge
associated thereto for research or for commercial utilization or for bio‑survey and
bio‑utilization.
• Results of research not to be transferred to certain persons without approval of National
Biodiversity Authority
– For the purposes of this section, "transfer" does not include publication of research
papers or dissemination of knowledge in any seminar or workshop, if such publication is
as per the guidelines issued by the Central Government.
• These provisions shall not be applicable in case of collaborative research projects if these
projects
– Conform to the policy guidelines issued by GOI
– Approved by the GOI
• No person, who is a citizen of India or a body corporate, association or
organization which is registered in India , shall obtain any biological resource for
commercial utilization, or bio‑survey and bio‑utilization for commercial utilization
except after giving prior intimation to the State Biodiversity Board concerned:
• REPOSITORIES

20. Transfer of Resource/
knowledge
• No person who has been granted approval under section 19 shall transfer any
biological resource or knowledge associated thereto which is the subject
matter of the said approval except with the permission of the National
Biodiversity Authority
• The National Biodiversity Authority shall while granting approvals under
section 19 or section 20 ensure that the terms and conditions subject to which
approval is granted secures equitable sharing of benefits arising out of the use
of accessed biological resources, their by products, ‑ innovations and practices
associated with their use and applications and knowledge relating thereto in
accordance with mutually agreed terms and conditions between the person
applying for such approval, local bodies concerned and the benefit claimers.
•
• Joint IPR/ Developmental activity/ joint sharing/ venture capital fund/ Direct
Payments

21. Regulations- IPR
• No person shall apply for any intellectual property right, by whatever name
called, in or outside India for any invention based on any research or information
on a biological resource obtained from India without obtaining the previous
approval of the National Biodiversity Authority before making such application.
• The National Biodiversity Authority may, while granting the approval under this
section, impose benefit sharing fee or royalty or both or impose conditions
including the sharing of financial benefits arising out of the commercial utilization
of such rights.
• The provisions of this section shall not apply to any person making an
application for any right under any law relating to protection of plant varieties
enacted by Parliament.
• "commercial utilization" means end uses of biological resources for commercial
utilization such as drugs, industrial enzymes, food flavours, fragrance,
cosmetics, emulsifiers, oleoresins, colours, extracts and genes used for
improving crops and livestock through genetic intervention, but does not include
conventional breeding or traditional practices in use in any agriculture,
horticulture, poultry, dairy farming, animal husbandry or bee keeping;

22. NBA- approvals
• Approvals for what?
– Obtaining any biological resource, knowledge
associated, bio-survey or bio utilization
– Research result transfer
– IP protection, collaborations, third party transfers
• Who needs approval?
– Not citizen of India, NRI’s
– Corporate organizations not registered in India,
registered but has any non-Indian participation in share
capital/ management
• Prior intimation to SBB if bioresource collecting
for commercial purpose

23. NBA-procedures
• Transfer of research results to foreign nationals,
NRI’s, companies
– Application-5000/-, 3 months
• Applying for IP protection
– Application- 500/-, 3 months
– Not applicable under PVFR act 2001
• Third party transfers
– Application-10000/-, 6 months
• Appeals to NBA, to high court

24. NBA regulations- general features
• Benefit sharing formula guidelines- monitory
other benefits
• Formula case by case
• Mutual agreements, time frame of benefits
• Individuals, groups, organizations direct payments
through district administration
• Terms and conditions, 5% service charge
• Civil court powers-Judicial proceedings
• Non-bailable offence, penalties
• Opposition of IPR granted in any other country

25. Geographical Indications a Community IP
The Geographical Indications of
Goods (Registration and
Protection) Act 1999

26. Geographical location
Geo-climatic features Specially attained skills
Special characteristics
Reputation
Product (goods) Services

27. Some Examples of GI
• Textiles and Handicrafts
– Kalamkari, pochampally, nirmal toys; bukhara carpets, hereke
carpets
• Fruits and nuts
– Kesari, Alphonso, Dashari, Chounsa, Makhana, Nagpur orange;
seville oranges, jaffa oranges
• Ayurvedic products medicinal plants
– Triphala,Chayavanprash, Njavara rice, Kalimoonch rice,
Ashvagandha
• Alcoholic & non alcoholic beverages
– Feni, Zumai, zutuilling,yuu; ruou, sake, mezcal, tequila, sherry
wine, rioja wine, bordeaux, champagne, chablis
– Darjeeling tea, nilgiri tea; Rooibos tea

28. Some Examples of GI
• Food grains
– Pokkali rice/ Jeerakshala, Gandhakshala /Basmati rice (pusa
basmati, shaheen basmati, basmati pak, tarawadi basmati, Dehrdun
basmati), tandur dal; Arroz de valencia rice
• Animal and meat products
– Kadaknath, chegu goat,Jamunapari goat (paneer) ongole bull;
carora, malbuner sausages (Liechtenstein)
• Miscellaneous products
– Masticatory (paan); food recipes (chicken tikka, hyderabadi
biryani; swiss fondue); timbers; bhedaghat marbel; gangajal-korytnicka
minerala voda; special skills required (khurja ceramics-delft
ceramics, Ferozabad glass-belgian glass, toledo steel-
Munger country made pistols, gur
• Rural niche products
– Desi ghee, sirka; feta cheese, sherry vinegar

29. Claw back provisions- Parma ham case
• Proscuitto di Parma
–GI of Italy- Parma
Ham
• Consorzio del
Prosciutto di Parma-
TM in canada

30. Trademark
TM Act 99- goods & services
• Mark-trademark
• Collective mark
• Certification mark
• Associated mark
• Well known mark
• Smell mark
• Sound marks/ Service marks
• Shape marks- natural shapes
• Technical effect

31. GI and Trademark
supremacy of GI (refusal or invalidation of TM)
• If confuse or misled as to true place of origin
22.3TRIPS/ 25.a
– Swiss Watch or Swiss taste chocolate
• If goods have provided additional protection under
section 25.b in accordance with 23.2 TRIPS
– Champagne fruit juice, Bordeaux biscuit, Bordeaux
fungicide, Red label tea
– American Basmati- in India
– American Basmati- in USA

32. GI and Trademark
supremacy of TM (refusal or invalidation of GI)
• Has been applied/registered or acquired through use in
good faith before commencement of GI Act or before
filing of a GI registration application (24.5 TRIPS/ 26.1)-
Nilgiri Tea/Kadaknath chicken
• TM prevail over GI in certain legal situation (24.7TRIPS/
26.4)

33. Copyright
• Indian copyright Act 1957
• Amendments- 1981, 1984, 1994, and 1999
(w.e.f. 15 January 2000)
• Authors ownership
• Farmers’ ownership
• Substantial copying

34. Designs Act 2000
Features of shape, configuration, pattern or
ornament or composition of lines or color or
combination thereof applied to any article
whether two dimensional or 3D or in both
forms, by any industrial process or means,
whether manual, mechanical or chemical,
separate or combined- article capable of
being made and sold- does not include
mode or principle, any trademark

35. Registration- Ownership
• Registration at Kolkatta office for 10 years
initially extendable to further 5 years
• Registration confers upon the registered
proprietor ‘copyright’ in the design for the
period of registration. Copyright means the
exclusive right to apply a design to the
article belonging to the class in which it is
registered