Unit - I
Overview: Intellectual Property Rights
Object --> Resource -- > Property
2
What is an Intellectual Property?
• It is the property created by Application of Human Mind.
– i.e., Intangible (non-physical) in nature – derives value
from ideas.
• Protecting inventions, literary and artistic works, symbols,
images, designs used in commerce, the information and
original expressions of creative individuals known as
Intellectual Property (IP).
Naresh.E, Dept. of ISE, MSRIT.
3
Why should we protect IP?
• Because, we know safeguarding (Protecting) these property
rights bring up economic growth, provides incentives for
technological innovation, and attracts investment that will
create new jobs and opportunities for all their country citizens.
Naresh.E, Dept. of ISE, MSRIT.
4
Why should we study IPR?
• We are the inventors of Technology.
Debate Topics
• Technology growth
α Economic growth of country.
• How to create awareness in rural/urban areas?
Naresh.E, Dept. of ISE, MSRIT.
5
• Intellectual property is the least respected form of property in
our society.
• That's because of with some people's traditional sense of what
property is.
• They live in the physical world (Tangible).
• When you steal a car, the owner loses the car. The reasons for
property here seem clear to all.
• But when you copy a copyrighted work, the original owner
still has their copy. Nothing physical is stolen, so it seems very
different.
Naresh.E, Dept. of ISE, MSRIT.
6
Sharing thoughts
• Why don't we steal?
• For most of us, it's not the police or the law or the fear of
getting caught.
•
It's because we were taught the basic ethical principles of our
society on our mother's knee, and perhaps later in life came to
see why they are good for ourselves.
•
Most aren't taught as children to respect intellectual property
as the true property, and so we don't. The current generation
isn't being taught this either, but this may change.
Naresh.E, Dept. of ISE, MSRIT.
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• IP rights are the rights of a creator to control their own
creation.
• To own yourself is to own your thoughts, at least while they
are inside your head. And thus we say that IP as the "true"
property.
•
The relationship between a person and the thoughts they
create is the most real relationship in the world.
Naresh.E, Dept. of ISE, MSRIT.
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RIGHTS
• Rights are things that you are allowed to do or permitted to do.
• Right is not your duty, it is a privilege that you have earned.
– E.g., You have a right to vote if you are above 18 years.
• Many different things are claimed as rights:
– “A right to life, a right to choose, a right to vote, a right to
work, to strike, etc”.
Naresh.E, Dept. of ISE, MSRIT.
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TYPES OF RIGHTS
Natural rights are rights which are derived from Nature or God.
• They are universal; they don't depend on the laws of a specific
society.
• They exist necessarily and can't be taken away.
E.g. it has been argued that humans have a natural right to life.
They're sometimes called moral rights or human rights.
Naresh.E, Dept. of ISE, MSRIT.
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Legal rights are based on a society's customs, laws, actions by
legislatures.
• An example of a legal right is the right to vote of citizens.
• Citizenship, itself, is often considered as the basis for having
legal rights, and has been defined as the "right to have rights".
• Legal rights are sometimes called civil rights.
Naresh.E, Dept. of ISE, MSRIT.
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A claim right is a right which entails that another person has a
duty to the right-holder.
•
Somebody else must do something for the claim holder such
as perform a service or supply a product for him or her.
• i.e., he or she has a claim to that service or product or future
act.
• Every claim-right entails that some other duty-bearer must do
some duty for the claim to be satisfied.
Naresh.E, Dept. of ISE, MSRIT.
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A liberty right or privilege, is simply a freedom or permission
for the right-holder to do something, and there are no
obligations on other parties to do or not do anything.
• For example, if a person has a legal liberty right to free speech,
that merely means that it is not legally forbidden for them to
speak freely: it does not mean that anyone has to help enable
their speech, or to listen to their speech;
Naresh.E, Dept. of ISE, MSRIT.
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• Positive rights are rights that does not require to control by
others.
– E.g., Donating funds to trusts.
• Negative rights are rights that require to control by others.
– E.g., Killing people.
Naresh.E, Dept. of ISE, MSRIT.
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Conventions used in IPR
•
•
•
•
GATT
WTO
WIPO
TRIPS
Naresh.E, Dept. of ISE, MSRIT.
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GATT
(General Agreement on Tariffs and Trade)
-
is a set of rules agreed upon by nations.
-
Formed in 1947.
- It is entered into by and among 125 countries out of 186 member countries of
United nations.
- Of the 125 countries which are members of GATT, 30 are developed countries,
69 are developing countries and 26 are the least developing countries.
Objective: Reduction of barriers to international trade.
Naresh.E, Dept. of ISE, MSRIT.
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History of GATT can be divided into 3 phases:
First phase: (1947 – 1950)
Largely concerned which commodities would be covered by the agreement
and freezing existing tariff levels.
Second phase: (1959 to 1979)
Focused on reducing tariffs.
Third phase: (1986 to 1994)
Extended the agreement fully to new areas such as intellectual property,
services, capital and agriculture.
After this phase, GATT was replaced by the WTO in 1995.
Naresh.E, Dept. of ISE, MSRIT.
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OBJECTS: The objects of the GATT are as follows:
• To help all countries to expand their production and trade in goods and
services.
• To promote the use of world’s resources in manner
conducive to sustainable development and with a strong bias
in favour of protection and preservation of environment.
• To ensure that the relations among the contracting parties in the field of trade
and economic development are so negotiated and settled with due
consideration for and with a view to :
• To achieve a raise in the standard of living of the people.
• To ensure the people full employment
• To secure for the people growth in their real income and effective
demand.
• To take all such positive steps which would ensure the developing and least
developing countries their due shares in international trade
• Everything should be done with due concern for their low and varying levels
of development with a view to develop an integrated viable and durable
multilateral trading system
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
•Achievements & Expectations
•It is stated on the behalf of the GATT that ever since its
establishment in 1947 till 1991 tariffs were lowered by about 40%
to 50% .
•It helped international trade long periods of high growth. It
created a climate of confidence for businessmen to invest in and
trade in an increasingly open global market
•The further claim made on behalf of GATT is that it helped to
multiply the volume of merchandise involved in the international
trade by 12 times and in volume international trade rose from $57
billion in 1947 to $ 3500 billions in 1991
•The GATT regime introduced in 1995 is expected to rise the
world’s annual income by an addition to $ 510 billions in
International trade by 2005AD
Naresh.E, Dept. of ISE, MSRIT.
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World Trade Organization (WTO)
• WTO is the only global international organization dealing with the
rules of trade between nations.
•
Located in Geneva, Switzerland, in December 1993 and entered into
force with respect to the United States on January 1, 1995 under the
Marrakech Agreement, replacing the General Agreement on Tariffs
and Trade (GATT), which commenced in 1947.
• It is an international organization designed by its founders to
supervise and liberalize international trade.
• The World Trade Organization deals with regulation of trade between
participating countries.
• It provides a framework for negotiating and formalizing trade
agreements.
Naresh.E, Dept. of ISE, MSRIT.
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Activities of WTO include:
–
–
–
–
–
administering trade agreements,
acting as a forum for trade negotiations,
settling trade disputes,
reviewing national trade policies,
assisting developing countries in trade policy issues
through technical assistance and training programs, and
– cooperating with other international organizations.
Naresh.E, Dept. of ISE, MSRIT.
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WIPO
World Intellectual Property Organization
• One of the 16 “Specialized agencies” of the United Nations system.
• WIPO was created in 1967
• Headquartered in Geneva, Switzerland
• currently has 184 member states
• administers 24 international treaties
• The current Director-General of WIPO is Francis Gurry, who took
office (charge) on October 1, 2008.
Purpose:
• to encourage creative activity
• to promote the protection of intellectual property throughout
the world.
Naresh.E, Dept. of ISE, MSRIT.
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• WIPO is dedicated
– to developing a balanced and accessible international
intellectual property (IP) system,
– which rewards creativity, stimulates innovation and
contributes to economic development while
safeguarding the public interest.
Naresh.E, Dept. of ISE, MSRIT.
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• How does WIPO promote the protection of
intellectual property?
– As part of the United Nations system of specialized agencies,
– WIPO serves as a forum for its Member States to establish and
harmonize rules and practices for the protection of intellectual property
rights.
– WIPO also services global registration systems for trademarks,
industrial designs and appellations of origin, and a global filing system
for patents.
– WIPO also services global registration systems for trademarks,
industrial designs and appellations of origin, and a global filing system
for patents.
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
– Most industrialized nations have intellectual property protection systems
that are centuries old.
–
Many new and developing countries, however, are in the process of
building up their patent, trademark and copyright legal frameworks and
systems.
– Many new and developing countries, however, are in the process of
building up their patent, trademark and copyright legal frameworks and
systems.
– With the increasing globalization of trade and rapid changes in
technological innovation, WIPO plays a key role in helping these new
systems to evolve through treaty negotiation, registration, enforcement,
legal and technical assistance and training in various forms.
Naresh.E, Dept. of ISE, MSRIT.
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How is WIPO funded?
WIPO generates nearly 90 percent of its annual budget through its
widely-used international registration and filing activities.
The remainder comes from contributions by Member States. WIPO has
an annual income of over 300 million Swiss francs.
Naresh.E, Dept. of ISE, MSRIT.
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WIPOnet
• WIPO has established WIPOnet, a global information network.
• The project seeks to link over 300 intellectual property offices (IP
offices) in all WIPO Member States.
• It provides secure communication among all connected parties.
• WIPOnet is the foundation for WIPO's intellectual property
services.
Naresh.E, Dept. of ISE, MSRIT.
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TRIPS
Trade Related Aspects of Intellectual Property Rights
It is an international agreement administered by the World Trade
Organization (WTO) that sets down minimum standards for many forms
of intellectual property (IP) regulation as applied to nationals of other
WTO Members.
Specifically, TRIPS contains requirements that nations' laws must
meet for:
• copyright, including the rights of performers,
• producers of sound recordings and broadcasting organizations;
• integrated circuit layout-designs;
• patents;
• monopolies for the developers of new plant varieties;
• trademarks; and
• undisclosed or confidential information.
Naresh.E, Dept. of ISE, MSRIT.
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TRIPS AGREEMENT,1994
 TRIPS Agreement, the agreement on Trade-related Aspects of IP was signed
in Marrakesh, Morocco on 15 April 1994
 In accordance with the TRIPs Agreement, countries are free to determine
the ‘appropriate method’ for implementing the Agreement within ‘their own
legal system and practice’
 The Agreement reaffirms the well-established principle of ‘national
treatment’, which means that the national of any country member of the
Agreement are to be treated in the same way as national of the country.
 It also extends to IPRs the ‘most-favoured-nation clause’, that is, the
obligation to extend, with some limited exceptions, to any member the
advantages granted to any other member or members.
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
 These principles are meant to end discrimination , both between
foreigners and nationals and between nationals of different countries.
 TRIPs Agreement allows member countries to admit parallel imports if
they so wish. This principle can be crucial for the protection of consumer’s
interests and for ensuring access to industrial or agricultural inputs at
competitive prices.
 TRIPs Agreement embodies an important principle by which the member
countries are empowered to formulate or amend their laws and regulation
and thus to adopt measures to protect public health and nutrition, and to
promote the public interest in sectors of vital importance to their socioeconomic and technological development.
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
 It also empowers the member countries to take appropriate measures that may
be needed to prevent the abuse of IPRs by right holders or the resort to
practices which unreasonably restrain trade or adversely affect the
international transfer of technology (compulsory licenses in the
pharmaceutical field in order to keep prices at a reasonable level to ensure
access to particular medicines by the general public)
 TRIPs agreement focuses on specific areas of IPRs like copyrights,
trademarks, geographical indications, industrial designs, patents, layout
designs or topographies of integrated circuits, trade secrets
 TRIPs agreement makes provision for the protection of software and
compilation of data as a literacy creation. It provides rental rights for
phonograms, films and computer programs for the first time in an international
agreement. (criminal proceedings and to prescribe penalties against copyright
piracy)
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
 Under the TRIPs agreement, the protection of geographical indications, which
was granted in a small number of countries, is now required of all members of
WTO. Reinforced protection is accorded in respect of wines & spirits.
 The separate section on industrial designs makes it mandatory that new or
original industrial designs need to be protected for at least 10 years
 Patents are to be granted without discrimination as to the place of invention,
the field of technology or whether products are locally produced or
imported provided they are new, involve an inventive step and are capable of
industrial applications. ( Earlier freedom was there for the countries to frame
their patent laws)
 The Agreement sets out the rights to be conferred under a patent, including the
protection of a product directly made with a patented process, and an
exclusive rights to produce , sell and import the protected product.
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
 Under TRIPs Agreement, trade secrets such as confidential know-how or
commercial information are deemed protectable. In addition, obligation are
recognized in relation to test results and other data submitted to
governments in order to obtain approval of pharmaceutical and
agrochemical products.
 Non-compliance with the new rules, once adopted, would give rise to a
dispute settlement procedure under the WTO rules and possibly, to
retaliatory commercial measures in any field by the country whose
nationals are affected by such non-compliance. Since within the WTO,
adherence to the new IPRs universal standards will be monitored by the
council for TRIPs
Naresh.E, Dept. of ISE, MSRIT.
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Role of IPR in R&D and Knowledge era
Research and Development that will generate new and high
performing technologies have been given the top priority in the
agenda of several nations and corporate.
Unraveling nature’s secrets and transforming the understanding
into technology for societal use have been the hallmarks of human
R&D ability, creativity and vision.
e.g., Water = H20
Aloe Vera Tree
(A natural moisturizer, rich in polysaccharides and enzymes)
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
Research and development activities result in innovations that are
creations of the mind.
Their protection using the tools of IPR converts them to
intellectual property thereby transforming them to intellectual
assets that have a potential and realizable value.
The continual process of learning, creating “new knowledge” and
further transforming it into “value-added knowledge” with
appropriate “proprietary protection” and “fair distribution of its
benefits” is the fundamental to the progress of all knowledgedriven industries.
Naresh.E, Dept. of ISE, MSRIT.
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Presenting the Invention
The Problem
• Describe the Problem being addressed
• Briefly describe attempts/solutions from others to solve
the same problem
- provide references
• Briefly describe the disadvantages or shortcomings in
the available solutions proposed by others
Naresh.E, Dept. of ISE, MSRIT.
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Your Solution/Invention
Describe details of your solution
- description of the assembly, structure,
components, method of making/using
- drawings, flow-charts
- experimental results
State
• Novel elements in your approach
• Advantages of your solution
• All potential industrial applications
Naresh.E, Dept. of ISE, MSRIT.
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Innovation
What is Innovation ?
• Innovation is a process by which products and techniques are
conceived, developed and launched.
• Whatever changes the wealth-creation potential of existing resources
constitutes innovation
• Innovation is coming up with ideas and bringing them to life.
Naresh.E, Dept. of ISE, MSRIT.
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The Innovation Process
Idea Idea
generation
Generation
Opportunity
Recognition
Development
Commerciali
zation
Idea
Evaluation
Naresh.E, Dept. of ISE, MSRIT.
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The Innovation Process
• The process begins with two creative acts
– The idea generation, and
– Opportunity recognition
Example:
• The ruined paint job observed by 3M’s Dick Drew stimulated thinking that
eventually led to masking tape.
Opportunity recognition: when some one says:
– This material we have invented might be of value to our customers, or
– If we could solve this problem, we could create value for our customers
and our share holders, or
– This might produce a huge cost advantage.
Naresh.E, Dept. of ISE, MSRIT.
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Contd…
• Once an opportunity is recognized, the idea must be incubated to the point
at which it can be evaluated by decision makers, who seek answers to
several questions:
–
–
–
–
–
Will the idea work?
Does company have the technical know-how to make it work?
Does the idea represent value for customers?
Does the idea fit well with company strategy?
Does it make sense from a cost perspective?
• Ideas that produce affirmative answers to these questions and that obtain
organizational support are moved into some form of idea development and
down a long and bumpy road towards commercialization.
• Some make it to the end, though most do not. Commercialization is the
final test for these ideas
Naresh.E, Dept. of ISE, MSRIT.
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Types of Innovation Process
1. Incremental Innovation:
– generally understood to exploit existing forms or technologies
–
Either improves upon something that already exists or
reconfigures an existing form or technology to serve some
other purpose.
–
It is innovation at margins.
Naresh.E, Dept. of ISE, MSRIT.
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2. Radical Innovation or break through innovation or
discontinuous innovation or disruptive technology
–
–
–
–
Some thing new to the world, and a departure from existing
technology
The technical innovation that has the potential to upset the
organization’s or the industry’s existing business model.
Disruptive technologies displace the established technology and
precipitate the decline of companies whose business models based
on them.
In many cases disruptive technologies create new markets, which
may be initially small and may grow gradually.
Example:
–
–
–
Vacuum tubes to transistor technology
Manual to Electronics watches
Film camera to digital cameras.
Naresh.E, Dept. of ISE, MSRIT.
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Invention and Innovation – Products of Mind
• As long it is in your mind it is yours. Once it comes out into some
physical shape you lose control over it.
• You are aware that the ideas/products you have is of great value
to you and industry if developed and practiced.
• Once you reveal there are infinite number of people to copy and
claim ownership for your original ideas and products and
practices.
• Are you not interested in getting the ownership for the products
of your mind (Intellectual Property or IP), get benefit from them
to you and to your company associated with and protect it from
others misusing it?
• If you are not protecting your intellectual property (IP)
someone else will steal it and claim ownership.
Naresh.E, Dept. of ISE, MSRIT.
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Other Details
• Any third party involvement
• Any plans to publish or disclose to third parties/trade-shows
- Particularly provide dates related to
disclosures, if available
• Is the invention related to any other patent application you
have filed?
• List the inventors
Naresh.E, Dept. of ISE, MSRIT.
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CONSTITUTIONAL ASPECTS OF IP
The constitution plays an important role in helping courts &
legislature to justify balance between the conflicting rights.
In India it is yet at an infant stage but in US & Europe lot of
challenges have been in the fray.
But in recent times in accordance with trade related IP (trips)
agreement standard of protection IP rights has been raised.
Unlike Indian constitution US constitution has a special
protection to IP law where it promotes the progress of science &
arts by securing the limited to authors & inventors the exclusive
right of discoveries & writings.
Naresh.E, Dept. of ISE, MSRIT.
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CONSTITUTIONAL ASPECTS OF IP
• The constitutional property is limited to land property it is not
been confined to IP, wages & employment. The recent acts of
patents & copyrights would be right of freedom & expression.
• The case was also fought in the US for the term of extension
of the use of Mickey mouse. The court upheld the validity of
term of extension. The US/EUROPE
IP law is very
formidable compared to developing nations like india, china,
brazil etc.
Naresh.E, Dept. of ISE, MSRIT.
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Different Types of IPRs
1. Copyright
2. Trademarks
3. Patents
4. Trade Secrets and Undisclosed Information
5. Designs
6. Plant Varieties
7. Geographical Indications
Naresh.E, Dept. of ISE, MSRIT.
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©opyrights
• Copyright is a form of legal protection granted to the
authors of original creative works.
• Copyright is used to protect a wide range of subject matter,
including:
•
•
•
•
•
•
•
•
•
Literary works
Musical works
Dramatic works
Pantomimes and choreographic works
Architectural works
Pictorial, graphic, and sculptural works
Motion pictures and other audiovisual works
Sound recordings – recent hits in a single CD/DVD
Computer programs
Naresh.E, Dept. of ISE, MSRIT.
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Literary works:
Expressed in words, numbers or other verbal or numerical symbols,
Regardless of the nature of the material objects, such as books, periodicals, manuscripts,
Phonorecords, cards, in which they are embodied.
Musical works:
means “a work consisting of music and includes any graphical
notation of such work, but does not include any works or any action, intended to be sung,
spoken, or performed with the music”.
There is no copyright in a song but the words in a song and the music have two separate rights
and cannot be merged.
Dramatic works:
include any piece for recitation, choreographic work or
entertainment in dumb show, the scenic arrangement or acting form of which is fixed in
writing or otherwise, but does not include a cinematograph film.
A dramatic work has to be a work which is capable of being physically performed and has to
be in a material form capable of being performed by action.
Artistic works:
A painting, a sculpture, a drawing, an engraving or a photograph
devoid of artistic quality, architectural work and other artistic craftsmanship get protected as
artistic works.
Naresh.E, Dept. of ISE, MSRIT.
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Copyright protection does not extend to
- ideas
- facts
- Slogans (punch lines)
- Titles
- procedures
- methods of operation
- mathematical concepts
Copyright holders of a work have the exclusive right to
authorize on agreed terms or prohibit its:
- reproduction in various forms
- public performance
- recordings
- broadcasting
- translation into other languages
- adaptation
Naresh.E, Dept. of ISE, MSRIT.
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Scope of copyright:
Copyright can apply to any “Original work of authorship”.
i.e., “ fixed in any tangible (physical) medium of expression”.
Protection automatically extends to any qualifying work, whether
published or not, and created in India.
Term of Copyright:
• Life of author plus 60 years (in US - 70 years).
• Copyright registration is not mandatory.
• Copyright notification should appear.
Naresh.E, Dept. of ISE, MSRIT.
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Copyrights in India
1994 Amendments
• The increase of the term of copyright from fifty years post mortem to sixty
years;
• The extension of copyright to new types of works including computer
programmes and performances;
• The redefinition of “communication to the public” so that a work is
communicated “regardless of whether any member of the public actually
sees, hears or otherwise enjoys the work”.
• An overhaul of the vocabulary employed in the Act, for instance –
substituting ‘broadcast’ for ‘radio diffusion’, ‘work of architecture’ in the
place of ‘architectural work’, ‘sound recording’ in the place of ‘record’
• Clarification of the ownership of copyrights over public speeches and works
by public undertakings.
Naresh.E, Dept. of ISE, MSRIT.
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Trademarks
 Distinctive symbols, signs, logos that help consumer to
distinguish between competing goods or services.
 A trade name is the name of an enterprise which
individualizes the enterprise in consumer’s mind.
Legally not linked to quality.
In fact, linked in consumer’s mind to quality expectation.
Naresh.E, Dept. of ISE, MSRIT.
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Trademarks may be one or a combination of:
•
•
•
•
•
•
•
•
•
Words
Letters
Numericals
Drawings
Symbols
Three-dimensional signs
Audible signs
Fragrances
colors
Naresh.E, Dept. of ISE, MSRIT.
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Naresh.E, Dept. of ISE, MSRIT.
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Functions of a Trademark
• Identifies the source/origin of the goods.
• Distinguishes the trademark owner’s goods /services.
• Indicates the quality of the goods.
• Helps in advertising.
• Creates Brand loyalty.
Trade Mark Registration Program
A Trade Mark Filing Program has five purposes:
1. To retain control over the quality and types of use of the marks
2. To provide a basis for challenging infringers
3. To prevent third parties from registering a company’s marks
4. To add value to your assets
5. To minimize the financial risk
Naresh.E, Dept. of ISE, MSRIT.
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Trademarks Act, 1999
New Elements
• Enlarged the definition of trade mark to include shape of goods, packaging
and combination of colours which can adopted as a trade mark
• Provides for registration of trade mark for services in addition
• A single Register of Trade Marks
• Simplified the procedure for registration
– For both trademarks and registered users (licensing of registered trade mark)
• Provides for registration of collective marks owned by association of persons
• Provides for establishment of an Intellectual Property Appellate Board
• Transferred the final authority for registration of certification of trade marks
to the Registrar
• Provides for enhanced punishment for the offences relating to trade marks
•
•
•
•
•
– On par with the Copyright Act, 1957
Multi class filing
Increased the period of registration and renewal from 7 yrs to10 yrs
Has made some trade mark offences cognizable
Amplified the powers of the court to grant ex parte injunction in certain cases
Simplified and streamlined administration of the trade marks law and
Naresh.E, Dept. of ISE, MSRIT.
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Patents
• The term "patent" originates from the Latin word patere which
means "to lay open" (i.e., make available for public inspection)
• Patent provides a set of exclusive rights granted by a state to a
patentee for a fixed period of time (20 years) in exchange for a
full disclosure of an invention.
i.e. manufacturing, using or selling the patented product or from
using the patented process, without due permission.
Naresh.E, Dept. of ISE, MSRIT.
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History of Indian Patent System
• The first legislation in India relating to patents was the Act VI of 1856
• The objective was to encourage inventions of new and useful manufactures
• The Act was subsequently repealed by Act IX of 1857
– since it had been enacted without the approval of the sovereign
• Fresh legislation for granting ‘exclusive privileges’ was introduced in 1859
as Act XV of 1859
• ‘Patterns and Designs Protection Act’ (Act XIII) was passed in 1872
• Further amended in 1883 to introduce a provision to provide a grace
period of 6 months for filing applications after the displaying inventions in
exhibitions
Naresh.E, Dept. of ISE, MSRIT.
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Why we need to make patent?
An invention is the creation of intellect applied to capital and labor to
produce something and useful.
Such creation becomes exclusive right to the patentee.
He can sell or license it whole or partly to others.
e.g., MS Office as a whole.
MS Word, MS Excel, MS Access, etc as a part of the requirement.
The Patent law recognizes the exclusive right of a patentee to gain
commercial advantage out of his inventions.
This is to encourage the inventions to further enhance the creative
facilities knowing that inventions are protected by the law and nobody
else would be able to copy that until the exclusive rights are with inventors
Naresh.E, Dept. of ISE, MSRIT.
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SOME EXCLUSIONS FROM PATENTABILITY
• Naturally occurring substances/elements;
• Diagnostic, therapeutic and surgical methods of treatment of humans
or animals;
• Plants and animals other than μ-organisms;
• Essentially biological processes for production of plants or animals;
• Inventions whose use is contrary to public order or morality.
• Ideas, methods for business, playing games, performing mental acts.
Naresh.E, Dept. of ISE, MSRIT.
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Salient Features of Patent Act, 1970
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Elaborate definition of invention
No product patents for substances intended for use as food, drugs and medicines
Codification of certain inventions as non-patentable
Mandatory furnishing of information regarding foreign application
Adoption of absolute novelty criteria in case of publication
Expansion of the grounds for opposition to the grant of a patent
Exemption of certain categories of prior publication, prior communication and prior use from
anticipation
Provisions for secrecy of inventions relevant for defence purposes
Provision for use of inventions for the purpose of Government or for research or instruction to
pupils
Reduction in the term of patents relating to process for substances to be used as food or as medicine
or drugs
Enlargement of the grounds for revocation of a patent
Provision for non-working as ground for compulsory licences, licences of right, and revocation of
patents
Additional powers to Central Government to use an invention for purposes of government
Prevention of abuse of patent rights by making restrictive conditions in licence agreements/contract
as void
Provision for appeal to High Court on certain decisions of the Controller
Provision for opening of branches of the Patent Office
Naresh.E, Dept. of ISE, MSRIT.
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Salient features of the Patents (Amendment) Act, 2002
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Further codification of non patentable inventions
20 years term of patent for all technology
Provision for reversal of burden of proof in case of process patents
Provisions of compulsory licences to meet public health concerns
Deletion of provision of licence of right
Introduction of system of deferred examination
Mandatory publication of applications after 18 months from the date of filing
Provision for process patent for micro organisms
Establishment of Appellate Board
Provision for parallel imports
Provision for exemption from infringement proceedings for use of a patented
invention for obtaining regulatory approval for a product based on that
patented invention
 Provision to protect biodiversity and traditional knowledge
Naresh.E, Dept. of ISE, MSRIT.
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Patents (Amendment) Act, 2005
•Extension of product patents to all fields of technology including food, drugs,
chemicals and micro organisms
•Deletion of the provisions relating to Exclusive Marketing Rights (EMRs)
•Introduction of a provision for enabling grant of compulsory licence for export
of medicines to countries which have insufficient or no manufacturing capacity to
meet emergent public health situations
•Modification in the provisions relating to opposition procedures with a view to
streamlining the system by having both pre-grant and postgrant opposition in the
Patent Office
•Strengthening the provisions relating to national security to guard against
patenting abroad of dual use technologies
•Rationalisation of provisions relating to time-lines with a view to introducing
flexibility and reducing the processing time for patent application.
Naresh.E, Dept. of ISE, MSRIT.
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Trade Secret
The best kept
secret till date
Naresh.E, Dept. of ISE, MSRIT.
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Trade Secrets and Undisclosed Information
In a general sense,
A trade secret is confidential information that has commercial value.
Under international agreements,
trade secrets are defined to include information that:
-Is secret
International law defines secret information as that which is not "generally known
among or readily accessible to persons within the circles that normally deal with the
kind of information in question."
-Has commercial value because it is secret
Commercial value does not just mean dollar value; it can include anything that gives
a business an advantage over competitors.
- Has been subject to reasonable procedures designed to maintain its secrecy
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Some sort of information that:
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is not generally known to the relevant portion of the public
is the subject of reasonable efforts to maintain its secrecy
confers some sort of economic benefit on its holder
may be used to obtain an advantage over competitors or
customers
May be a
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formula
practice
process
design
instrument
Pattern
compilation of information
Naresh.E, Dept. of ISE, MSRIT.
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Duration of Trade Secrets
Trade secrets may be protected indefinitely so long as the information remains
secret. If the secret is revealed, trade secret protection ceases.
There are many ways in which trade secret information may lose its secrecy.
The most common are:
- Disclosure by employees to competitors or the public at large
- Nonconfidential disclosure by the company
- Independent invention or discovery of the trade secret
- Reverse engineering by competitors
A significant difference between trade secret and
other forms of IP is that a trade secret is
protected without disclosure of the secret
Naresh.E, Dept. of ISE, MSRIT.
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Trade Secrets vs. Patents
Trade Secrets
• Information must not be disclosed to be protected
• No need to register information for it to be protected
• No limit on term of protection so long as secrecy is preserved
• No guaranteed minimum term of protection; if secrets are disclosed or
reverse engineered, rights may be lost
• Information must have commercial value
Patents
• Information must be disclosed to be protected
• Patent must be applied for and granted in each country where protection is
desired
• Maximum protection is 20 years from date of filing in most countries
• Minimum of 20 years’ protection from date of filing is guaranteed once
patent has been issued
• Invention must be novel, nonobvious, and useful
Naresh.E, Dept. of ISE, MSRIT.
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When Trade Secrets are preferred?
• When invention is not patentable;
• Patent protection is limited to 20 years, when secret can be kept
beyond that period;
• When cost of patent protection are prohibitive;
• When it is difficult to reverse engineer
Naresh.E, Dept. of ISE, MSRIT.
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How to guard Trade Secret?
• Restricting number of people having access to secret information
• Signing confidentiality agreements with business partners and
employees
• Using protective techniques like digital data security tools and
restricting entry into area where trade secret is worked or held
• National legislations provide protection in form of injunction and
damages if secret information is illegally acquired or used.
Naresh.E, Dept. of ISE, MSRIT.
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Designs
Design Patents
Industrial Designs
• Industrial designs concern the
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Ornamental
Aesthetic
Usability
Ergonomic
• Subject matter of a design patent
application may also relate to the
aspects of products
• May consist of:
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• Design patents consists of the visual
ornamental characteristics
embodied in, or applied to, an
article of manufacture
Shape
Configuration
Composition of pattern or color
Combination of pattern and color
In two or three dimensional form
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Configuration
Shape
Surface ornamentation
Combinations thereof
Naresh.E, Dept. of ISE, MSRIT.
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Semiconductor Integrated Circuits Layout Design
(SICL Design)
• Semiconductor IC is a product having circuitry elements like transistors
• Must be inseparably formed on a material that is semiconducting or insulating
– May also be inside the material
• Designed to perform an electronic circuitry function
• Sui generis system for protection for semiconductor IC layout designs available
in some countries like India
– Semiconductor Integrated Circuits Layout Design Act, 2000
• IC Layout design includes layout of transistors and other circuitry elements
• Further encompasses lead wires connecting such elements
• Covers any manner of expression in a semiconductor IC
Naresh.E, Dept. of ISE, MSRIT.
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Protection for SICL Design
Protection offered for SICL Design that are
 Original
 Not commercially exploited anywhere in India or in a convention
country;
 Inherently distinctive:
 Inherently capable of being distinguishable from any other
registered layout design
Naresh.E, Dept. of ISE, MSRIT.
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Plant Varieties
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Sui generis system for protection chosen for New Plant Varieties
available in some countries like India
– Protection of Plant Varieties and Farmers’ Rights Act 2001
Some countries like US provide dual protection
Any new variety if it conforms to the criteria of novelty,
distinctiveness, uniformity and stability
Any extant variety if it conforms to criteria of distinctiveness,
uniformity and stability
An “Extant Variety” means a variety, which is:
– In India notified under section 5 of the Seeds Act, 1966; or
– a farmers’ variety; or
– a variety about which there is common knowledge; or
– any other variety which is in the public domain
“Essentially Derived Variety” is a variety which is predominantly
derived from another variety (protected or otherwise) and conforms
to the initial variety in all aspects except for the differences which
result from the act of derivation, and yet is clearly distinguishable
from such initial variety
Naresh.E, Dept. of ISE, MSRIT.
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Plant Patents in US
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A plant patent is granted for inventing or discovering and asexually
reproducing a distinct and new variety of plant, other than a tuber
propagated plant or a plant found in an uncultivated state
Plants include:
– A living plant organism which expresses a set of characteristics
determined by its single, genetic makeup or genotype, which can be
duplicated through asexual reproduction, but which can not otherwise
be "made" or "manufactured."
– Sports, mutants, hybrids, and transformed plants are comprehended;
sports or mutants may be spontaneous or induced. Hybrids may be
natural, from a planned breeding program, or somatic in source. While
natural plant mutants might have naturally occurred, they must have
been discovered in a cultivated area
– Algae and macro fungi are regarded as plants, but bacteria are not
The grant protects the inventor's right to exclude others from asexually
reproducing, selling, or using the plant so reproduced.
Naresh.E, Dept. of ISE, MSRIT.
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Geographic Indications
• Geographical Indication (GI) is a sign used on goods that
– have a specific geographical origin
– possess qualities or a reputation that are due to that place of origin
• Typically, consists of the name of the place of origin of the goods
• Most commonly used for agricultural products whose qualities
are influenced by specific local factors, such as climate and soil
Naresh.E, Dept. of ISE, MSRIT.
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Examples of GIs
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Darjeeling Tea
Basmati Rice
Kolhapuri Slippers
Tuscany Olive Oil
Idaho Potatoes
Naresh.E, Dept. of ISE, MSRIT.
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Legislations Covering IPRS in INDIA
1. Patents: The Patents Act, 1970. The act was last amended in March 1999.
2. Design: The Designs Act, 1911. A new Designs Act 2000 has been enacted
superseding the earlier Designs Act 1911.
3. Trade Mark: The Trade and Merchandise Marks Act, 1958. A new
Trademarks Act, 1999 has been enacted superseding the earlier Trade and
Merchandise Marks Act, 1958. (Enforcement pending)
4. Copyright: The Copyright Act, 1957 as amended in 1983, 1984 and 1992,
1994, 1999 and the Copyright Rules, 1958.
5. Layout Design of Integrated Circuits: The Semiconductor Integrated
Circuit Layout Design Act 2000. (Enforcement pending) Protection of
Undisclosed Information: No exclusive legislation exists but the matter would
be generally covered under the Contract Act, 1872
6. Geographical Indications: The Geographical Indication of Goods
(Registration and Protection) Act 1999. (Enforcement pending).
Naresh.E, Dept. of ISE, MSRIT.
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Naresh.E, Dept. of ISE, MSRIT.
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