an introduction to intellectual property rights and patents, trademarks and copyrights

1. INTELLECTUAL PROPERTY
RIGHTS

2. Intellectual Property
 What is Property?
any asset or thing that is owned by a person or entity: tangible or intangible.
 When does a property called “intellectual” property?
when it is the result of human mind/intellect/thinking process
 Therefore, Intellectual Property (IP) is a legal term that refers to creations of the
human mind and human intellect, such as inventions; literary and artistic works;
designs; and symbols, names and images used in commerce.
 It is even shown in Balance Sheets of the companies under “Intangible Assets” and
holds a great value for the company and its goodwill.

3. INTELLECTUAL PROPERTY RIGHTS
 IP is protected in law by, for example, patents, copyrights and trademarks,
which enable people to earn recognition or financial benefit from what they
invent or create.
 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.
 WIPO(World Intellectual Property Organization) is an international organization
which aims to promote innovation and creativity for the social, economic &
cultural development of all countries.
 IPRs’ India website: www.ipindia.nic.in

4. Kinds of IP:
1. Industrial Property
i) Patents
ii) Trademarks
iii) Industrial Designs, Geographical Indication, Trade Secrets etc.
2. Copyrights
Please note that IPRs are not granted for the idea only but are granted for the expression of
idea. For example, copyright will not be granted for the poem that a poet has just thought or
created in his mind but will be granted if the poet expresses it by writing or narrating. Similarly a
person will not be granted a patent if he has the idea to invent but will be granted if he
expresses that idea in the form of a product(invention).

5. PATENTS ACT, 1970
 A patent is a statutory right granted to a person by the government, which gives
an exclusive privilege of making, selling and using the invention for a limited period
of time.
Terminology
 Invention: It means a new product or process involving an inventive step judged by
3 main criteria
 Innovation: Innovation includes creativity and value addition in existing creations
and includes all intellectual properties like inventions, designs, brand name or logo,
literature, drama, music, artistic things etc.
 Patent of addition: where an application is made for a patent in respect of any
improvement or modification of an invention described in the complete
specification, he may be granted the patent for the improvement or modification
as a “patent of addition”

6. Criteria for a product for being
patentable
1. Relates to a process or product or both
2. Novelty or New invention : The matter disclosed in the specification is not
published in India or elsewhere before the date of filing of the patent
application in India.
3. Inventive step : The invention is not obvious to a person skilled in the light of
the prior publication/knowledge/document.
4. Industrial application : The invention can be made or used in any kind of
industry. It means it can be commercially exploited.
5. Not fall under Sec. 3 and 4

7. Duration and validity of a patent
 The patent is granted for a period of 20 years from the date of filing
patent application. And it can not be extended or renewed after the
expiration.
 Patent is a territorial right. Therefore, it is effective only within the territory of
India and separate patents should be obtained in each country where
the applicant requires protection of his invention. He can do so by filing
an international application under PCT(Patent Cooperation Treaty). There
is no patent valid worldwide.
 The patent offices located at Kolkata, Chennai, Mumbai & New Delhi act
as receiving offices for patent applications.

8. Persons entitled to make application
for Patent
 An application for patent can be made by any of the following persons:
a) By any person claiming to be the true and first inventor in respect of the
invention
b) By the legal representative of any deceased person who immediately
before his death was entitled to make such an application
c) By any person being the assignee or agent of the person claiming to be
the first inventor of the invention.

9. Requirement of registration
Why to register a Patent ?
 Exclusive rights: Patents provide you with an exclusive right to prevent or
stop others from commercially exploiting an invention for twenty years
from the date of filing of the patent application.
 Return on investments: Having invested a considerable amount of money
and time in developing innovative products, through exclusive patent
rights, you may be able to establish yourself in the market as the pre-
eminent player and to obtain higher returns on investments.
 Opportunity to license or sell the invention: If you choose not to exploit the
patent yourself, you may sell it or license the commercialization of the
patented invention to another enterprise, which could then be a source
of income for your company.

10.  Increase in negotiating power: If your company is in the process of
acquiring the rights to use the patents of another enterprise through a
licensing contract, your patent portfolio will enhance your bargaining
power. That is to say, your patents may prove to be of considerable
interest to the enterprise with which you are negotiating, and you could
enter into a cross-licensing arrangement where, simply put, your enterprise
and the other agree to license respective patents to each other.
 Positive image for your enterprise: Business partners, investors and
shareholders may perceive patent portfolios as a demonstration of the
high level of expertise, specialization, and technological capacity within
your company. This may prove useful for raising funds, finding business
partners and raising your company’s market value.

11. Process to register a patent?
Patent application can be filed by the person entitled to make application or by the “Patent Attorney” or
“Patent Agent”
 Application for Patent along with all the prescribed documents shall be filed with the Patent Office having
the appropriate jurisdiction.
The application should consist :
i. title of the invention along with complete specifications which should sufficiently and clearly describe the
material information about the invention (usually accompanied by visual materials such as drawings, plans, or
diagrams)
ii. disclose the best method of performing the invention which is known to the applicant
iii. should describe the method of operation/use, technical information and scope of the invention
 Patent of Addition, is an another kind of application which may be filed subsequent to the Filing of an
Application for Patent, for an improvement or modification.

12.  Publication: Application is kept secret for a period of 18 months from the date of filing. In
19th month, the application is published in the official journal which is made available on
the website. (applicant has an option to get his application published before 18 months
also)
 Request for examination: Application is examined on request which can be made within
48 months from the date of filing. Then examiner gives examination report whether the
claim is not prohibited and whether the invention meets the criteria of patentability.
Then he submits the report to the Controller.
 FER: First Examination Report containing list of the objections is issued. Then applicant
has to meet the objections within 12 months of FER issue. If objections are met, grant of
patent is approved by the Controller.
 Post-grant Opposition: After publication, an opposition can be filed within 1 year. A period
of 2 months is allowed for receipt of response against opposition.

13.  Then Controller may either reject the opposition and grant the patent or accept the
opposition and modify/reject the patent application.
 A certificate of patent is issued within 7 days. Grant of patent is published in the official
journal.
 Renewal of Patent: No fee for 1st and 2nd year but renewal fee is required to be paid in the
subsequent years to avoid the lapse of patent.

15.  If an employee has invented a new product or process: Who will own the
rights to the patent?
In most countries, if an employee has developed an invention in execution of his/her
employment contract – i.e. usually during his/her working time within the enterprise – the
invention (and the related patent rights) will belong to the enterprise. To avoid confusion and
possible disputes, employers often specify issues of intellectual property ownership in
employment contracts. Depending on the merits of the case, the employee may, however,
have a right to equitable remuneration in accordance with legislative provisions or the
employment contract. In any case, the employee will always retain the right to be mentioned
as the inventor, unless he/she expressly renounces this right.

16. Infringement of a patent
 Patent infringement is the commission of a prohibited act with respect to a patented invention without permission
from the patent holder. It occurs when someone violates the patent rights an inventor has in invention by making,
using or selling the invention without the patent owner’s permission(or if the patent has been licensed), in a way
not permitted by the license.
 Types of infringement:
1. Direct infringement- directly states that the third party has intentionally stole the technology from the inventor
without permission. It occurs when someone directly makes, uses or sells the patented invention.
2. Indirect infringement- it refers to the unfair trade practice that does not give a clear indication that patent is bought &
sold in the market. It occurs, for instance, when a device is claimed in a patent and a 3rd party supplies a product which
can only be reasonably used to make the claimed device.

17. How to judge Patent Infringement
 Doctrine of equivalents- new device or process violates an existing patent if the new
invention does the same work in a substantially similar way to achieve the same results
 Doctrine of complete coverage- describing the complete requirements
 Doctrine of compromise- agreement between 2 parties to settle differences between
them by mutual concessions
 Doctrine of estoppel- used in certain situations to prevent a person from relying upon
certain facts which are different from an earlier set of facts
 Doctrine of superfluity- a claim construction should not render a phrase superfluous
(unneccesary)

18. Remedies for infringement
Monetary relief:
1. Compensatory damages- patent owner may recover the lost profits on infringement
2. Increased damages- upto 3 times the compensatory damages can be recovered in
case of direct infringement
Equitable relief:
1. Preliminary injunction- temporary order by court that prevents the other party from
pursuing a particular course of conduct until the conclusion of case
2. Permanent injunction- final order of a court that a person or entity refrain from certain
activities permanently
Cost & Attorney’s fees
Costs are typically recoverable and in rare cases where there is wilful infringement, so are
attorney’s fees

19. TRADEMARKS ACT, 1999
 Trademark is a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person
from those of others. It includes word, sign, name, numerals, logo, label,
shape of goods, their packaging and combination of colours.
 Functions of Trademarks
1. identifies goods and services
2. guarantees its unchanged quality
3. advertises the goods or services
4. creates an image for the goods or services
Trademark in India is classified under 45 different classes.

20. Kinds of Trademark
 Standard
Registered trademark, Service mark, Trade dress,
Unregistered trademark
 Non-standard
Certification marks, Chartered marks, Collective
trademarks, Electronic registration marks,
 Non-conventional
Colour trademarks, Hologram trademarks, Motion
trademarks, Scent trademarks, Shape trademarks,
Sound trademarks
 Related
Brand, Emblem, Logo

21. Important terms
 Certified trademark- it means a mark used in the course of trade which are
certified by the proprietor of the mark in respect of origin, material, quality,
accuracy or other characteristics
 Well-known trademark- it means a mark which has become so popular to the
large segment of public who use such goods or services that the use of such
mark in relation to other goods or services would be likely to be taken as
indicating a connection with the first mentioned goods or services.
 Collective trademark- it is a trademark owned by an organization or
Association of persons, whose members use it to identify themselves with a
level of quality, geographical origin, or other characteristics set by the
organization. Non-compliance of such rules may invoke penalty also.
Examples are “CA” “CS” “CMA” “Dr.”

22. Non-registrable trademark
A mark shall not be registered as a trademark if-
1. The mark is likely to deceive the public or cause confusion.
2. The matter contained or comprised in the mark is likely to hurt religious susceptibilities of any class or
section of the citizens of India.
3. It contains or comprises of scandalous or obscene matter.
4. Its use is prohibited under the Emblems and Names Act,1950
Even, a trade mark which is identical with or similar to an earlier trade mark and is to be registered for
good or services which are not similar to those for which the earlier trade mark is registered and that
registered trade mark has a reputation in India, shall not be registered.

23. Duration & Renewal of Trademark
 The trademark is granted for a period of 10 years.
 It can be further renewed for another period of 10 years.
 The registration of trademark is not compulsory in India but it is advisable to do so.
 If trademark is not used within 5 years from the date of registration, then it becomes
liable to be removed from the register of trademarks. But if non-use of trademark is due
to special circumstances in the trade which may include restrictions imposed by any law
or regulation on the use of trademark in India, it will be protected from being removed.

24. Process to register a trademark
The mark should be used or proposed to be used in relation to the goods or services.
1. Trademark application filing- any person claiming to be the proprietor of the mark shall apply in writing to the
registrar in the prescribed manner along with the fee for registration of his mark.
2. Examination report by the registry-an examination report is usually issued within 3 months to one year depending
upon the backlog of the registry
3. Reply to examination report- a reply to an examination report has to be filed within a period of 1 month from the
receipt thereof. If the registry is satisfied with the reply, the application shall proceed for advertisement in the
Trademarks Journal.
4. Advertisement in Indian Trademarks journal-an application is advertised in the Trademarks Journal so as to invite the
public for filing an opposition for the mark.
5. Opposition- the time period to file a notice of opposition is 4 months from the date the Trademarks Journal in which
the mark has been advertised, has been made available to the public.
6. Registration- where no opposition is filed within the specified time, the application shall proceed to registration.

25. Passing-off
 It occurs in the case of unregistered brand names. Here the owner has the preferred right
over the brand due to long & continuous use of that brand. Since the brand being
unregistered, the suit for infringement can not be initiated. In such situation, passing off
is an alternate remedy & can be initiated in the appropriate court of law & can be
brought by the owner or the user of that brand against another person.
 It is to be noted that here the owner has a greater burden firstly to prove his ownership
and then actual misuse & actual damage has to be proved for any relief of passing off.

26. COPYRIGHTS ACT, 1957
 Nature of copyrights
Creativity being the key stone of progress, no civilized society can afford to ignore the basic
requirement of increasing the same. Economic & social development of the society is dependent on
creativity.
Copyright protects and rewards creativity. It is an exclusive right that protects original literary, dramatic,
musical, artistic work, cinematographic films & sound recordings from unauthorized uses.
"Artistic work" means-
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic quality;
(ii) work of architecture; and
(iii) any other work of artistic craftsmanship;
It is the only IPR that is valid worldwide as soon as the property comes into existence without any
requirement of registration anywhere, though registration can be made.

27. Duration of different forms of copyright
 In case of literary(including computer programs), dramatic, musical or artistic work, copyright
protection is given for the lifetime of the author + 60 years after his death. In case of joint
authorship, the term of copyright will start from the author who dies last.
 If any performer appears or engages in any performance, he has a special right in relation to
such performance called “performers right” to be enjoyed for a period of 50 years.
 In case of cinematographic films, sound recording etc. term of protection is 60 years from the
beginning of the next calendar year following the year in which the work has been first
published.
 For a broadcasting organization, a period of 25 years from the beginning of the calendar year
following the year in which the broadcast is made.

28. Author and co-ownership
 Where two or more people have created a single work protected by copyright and the contribution of each
author is not distinct from that of the other(s), those people may be considered joint owners.
 Joint ownership might arise, for example, if a person was commissioned to create a website together with
one of the company’s employees. It is likely that both the person being commissioned and the company
would be joint first owners of copyright in the website. If someone wanted to copy or use a work of joint
ownership in some way, all of the owners would have to agree to such a request, otherwise an
infringement of copyright could still occur.
 On the other hand where individual contributions are distinct or separate, each person would be the
author of the part they created (for instance where the music and lyrics of a song are created by two
different people). In these circumstances, if you wished to use just the lyrics you would only need the
permission of the copyright owner of the lyrics.

29. Rights conferred by Copyrights
 Moral rights: right to disclose the work, to withdraw it from the public, to have his name
indicated on the work and to prevent any distortion, mutilation or any other modification
of the work, which would be prejudicial to the author's honour or reputation
 Economic rights: reproduction, its distribution, its public performance, its communication
to the public by broadcasting or in any other manner, its retransmission, its alteration and
its exhibition. The author is entitled to remuneration for the use of the work and he can
waive it only by an express statement to that end.

30. Assignment & Transmission of
Copyrights
 The owner of the copyright is entitled to assign(sell) the copyright either wholly or partly & to get
effectual receipts of consideration.
 Assignment of the copyright can be done for existing work as well as future work. Assignment of copyright
for the future work shall take effect only when the work comes into existence.
 The assignment of copyright in any work should be in writing & signed by the assigner or his duly
authorized agent.
 The assignment should identify such work, specify the rights assigned, duration, territorial extent of such
assignment, amount of royalty & other consideration payable to the owner or his legal representative and
the assignment is subject to extension, revision or termination on the terms mutually agreed upon by the
parties.
 Where the assignee doesn’t exercise the rights assigned to him within a period of 1 year from the date of
assignment, the assignment in respect of such rights shall be deemed to have lapsed after the expiry of
said period unless otherwise specified in the assignment.

31.  Transmission: Where under a bequest(legacy) a person is entitled to the manuscript of a literary,
dramatic or musical work, or to an artistic work, and the work was not published before the
death of the testator, the bequest shall, unless the contrary intention is indicated in the
testator’s will thereto, be construed as including the copyright in the work in so far as the
testator was the owner of the copyright immediately before his death.

32. Infringement of copyrights
 If any person without authorization from the owner or without any license or in contravention of the
conditions of the license so granted, exercise any right in respect of the work which has the copyright
protection, it constitutes an infringement of copyright.
 Following are some of the commonly known activities involving infringement of copyright:
1. making infringing copies for sale
2. public exhibition of infringing copies
3. Importation of infringing copies to India
4. using any place for the performance of work in public without consent where such performance
constitutes infringement of copyright.

33. Remedies for infringement
 One can institute suit under Civil, criminal law and administrative law
a) Civil remedy- one may file for injunction, damages and accounts rendition, delivery of infringing
copies and damages for conversion.
b) Criminal remedy- one may file for imprisonment and fine, seizure of infringing copies and delivery of
them to the owner.
c) Administrative remedy- one may file for moving the Registrar to ban the import of infringing copies
and delivery of the confiscated infringing copies to the owner