1 INTELLECTUAL PROPERTY LAWS
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INTELLECTUAL PROPERTY LAWS
INTELLECTUAL PROPERTY LAWS –EXPANDING POSSIBILITIES
• There are about 10 different legislations under the
broad spectrum of IPR laws.
• However, Trademarks, copyrights, Industrial Designs
and Patents are the most popular IP Rights.
• Others like Geographical Indications, Semi conductor
and Integrated Circuits etc are lesser used IP Rights.
• There are others like Confidential Information etc which
are classified as IPR but do not have codified laws yet.
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IPR AND ITS MANAGEMENT
• Dealing with IPR means understanding the
following:
• Identify
• Register and Renew
• USE
• Protect
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BRIEF IDENTIFICATION OF RIGHTS
• Trademarks are names/logos used to identify the
products from one manufacturer and another
• Copyright is the expression of ideas in the form of
literary, dramatic or musical form.
• Patents are inventions that are new, novel and useful.
• Designs are for unique external appearances of an
article of manufacture.
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• Device, brand, heading,
• Label, ticket, name, signature,
• Word, letter, numeral
• Shape of goods, packaging or
• Combination of colours or any
• Combination thereof.
• Services
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Tra
de M
arks
PURPOSE OF TRADE MARK
• To identify a person’s product from that of others
• To protect the public so that they are confident in getting the
exact goods or services when asked for
• To protect an owner’s investment from misappropriation by
infringers
• Trademark helps customers to select goods. By identifying
the source of goods, they convey valuable information to
consumers.
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7Identification
� Trademarks cannot describe the product but must be acreated word/logo.
� The goods and services upon which the brand is usedshould be determined.
� This will assist in ensuring that trade mark is registered inrespect of primary classes of goods and services
� Search before you register a trademark for similar marksalready used or applied or registered
TRADEMARK REGISTRATION
FilingFilingFilingFiling
¨ NumberingNumberingNumberingNumbering
¨ ExaminationExaminationExaminationExamination ¨ EvidenceEvidenceEvidenceEvidence ¨ HearingHearingHearingHearing
¨ AcceptanceAcceptanceAcceptanceAcceptance
¨ AdvertisementAdvertisementAdvertisementAdvertisement¨ OppositionOppositionOppositionOpposition
¨ RegistrationRegistrationRegistrationRegistration
¨ Favorable conclusionFavorable conclusionFavorable conclusionFavorable conclusion
• One should identify which registered trade marks arenot in use.
• If these trade marks are of importance to theorganization, steps should be taken to ensure that theydo not become vulnerable to revocation for non-use
• If these trade marks are no longer of interest to theorganization, costs can be cut by not renewing them.
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Renewal
• Royalty for licensing
• Assignment - Sale
• Signature fees paid for drafting,
commenting or negotiating agreements
• Damages claimed in respect of
litigations
• Fresh licensing and Revenue generation
–Fees for consent to use
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Use and Exploitation
• Use of IDENTICAL or SIMILAR to Registered MARKMARKMARKMARK
• In relation to similar or identical GoodsGoodsGoodsGoods
• Use of Registered Trade Mark as part of BusinessBusinessBusinessBusiness NameNameNameName
• Affixes on Goods or PackagingPackagingPackagingPackaging
• Offers or sells Goods
• Imports or exports Goods
• Use on business papers or advertising materials.
11Protection
Infringement
• Oppose marks identical or deceptively similar
to your registered trademarks, pending
applications or marks used in the course of
trade
• Crucial to maintain monopoly on the
trademark
• Maintaining watch in the Trade Marks Journal
is the pre-requisite
12Protection
Opposition
COPYRIGHT ACT 1957COPYRIGHT (AMENDMENT) ACT 1999
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• Copyright subsists in respect
of • Original literary dramatic, music
and artistic work,
• Cinematograph films,
• Sound recordings,
• Literary work includes Computer
Programs, tables and compilations
including computer databases.
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Cop
yrig
ht
IDENTIFICATIONIDENTIFICATIONIDENTIFICATIONIDENTIFICATION
• Computer program
• Cinematographic film - T.V. Jingles
• Audio and Video cassettes;
• CD Roms, floppy discs;
• Sound recording;
• Dramatic works;
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SUBJECT OF COPYRIGHTSUBJECT OF COPYRIGHTSUBJECT OF COPYRIGHTSUBJECT OF COPYRIGHT
• Examples: Books, articles, photographs, paintings,sculpture, software, websites, architecture,pantomimes, ballets, music, sound recordings, andeven doodles, scribbles, and graffiti.
• Scope: Copyright can apply to any “original work ofauthorship” that is “fixed in any tangible medium ofexpression.” Protection automatically extends to anyqualifying work, whether published or not, andcreated in India.
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EXCEPTIONS:EXCEPTIONS:EXCEPTIONS:EXCEPTIONS:
• Copyright does not apply to facts,
slogans, titles, and simple phrases.
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REGISTRATION AND RENEWALREGISTRATION AND RENEWALREGISTRATION AND RENEWALREGISTRATION AND RENEWAL
• Copyright Registration not
mandatory
• Registration is one time and no
renewal
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TERM OF COPYRIGHTTERM OF COPYRIGHTTERM OF COPYRIGHTTERM OF COPYRIGHT
• Life of author plus 60 years.
• In case of anonymous and pseudonymous works 60years from first publication.
• Copyright notification should appear.
Eg. © R. Sathish Kumar 2019
All rights reserved.
• After the expiry, copyrighted works fall into publicdomain and is free to use
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USE AND EXPLOITATIONUSE AND EXPLOITATIONUSE AND EXPLOITATIONUSE AND EXPLOITATION
• Copyright confers exclusive right to :-• Reproduce the work including storing it in any electronic means;
• To reproduce the work in any material form
• Issue copies of the works to the public;
• To perform the work in public;
• To make any cinematograph film or sound recording in respectof the work;
• Make any translation of the work;
• Make any adaptation of the work;
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PROTECTIONPROTECTIONPROTECTIONPROTECTION
• Copyright Infringement occurs when a person
does anything for which exclusive right is
granted to the owner of copyright without the
owner’s license
• Making for sale, hire, distribution or importation
amounts to infringement
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Civil Remedy
• Civil Suit in a District Court and above
• Relief of injunction, damages or accounts can be sought for
Criminal Remedy
• Whoever knowingly infringes a copyright, can be punished between 6 months & 3 years and with fine between Rs. 50,000/- & Rs. 2 Lakhs
22Protection
Rights conferred under the Designs Act, 2000
• Like patents, registration to be applied forbefore the actual commercial use of the design
• Identification – design protection granted onlyto shape and configuration and not to anymethod of construction
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Des
ign
DESIGN
• Registration valid for 15 years – initial period of 10
years with an extension of 5 years
• Use and exploitation – can be used only on the
products under which class it is registered
• Protection – Only civil remedy before a District Court
for reliefs of injunction and damages
• Cancellation of a registered design can be filed before
the Controller of Patents & Designs
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• Stimulating INNOVATION
• Based on quid pro quo – for the disclosure of his
invention, the patentee gets a monopoly for a
limited period
• NOVELTY – Patent can be obtained only if an
invention is new
• NON-OBVIOUSNESS – An invention must be more
than a routine modification of something already
known
• Enhancing value – should have commercial UTILITY
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Pat
ent
INNOVATION
• An improvement on something known.
• A new combination of different matters already
known.
• New combination arrive at an old result in a better
or more expeditious or economical manner.
• Manner of new manufacture.
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IMPROVEMENT
• Improvement must independently
satisfy the test of invention.
• Infact almost all patents are for
improvements.
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NOVELTY
• Novelty not defined under Indian Law.
• Should be new, must not be publicly knownor publicly used-prior to filing of anapplication.
• Patent would not be granted to enable thepatentee to stop another trader from doingwhat he had done before.
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NON OBVIOUSNESS
• Obvious and does not involve any inventivestep.
• What was known and used before thepriority date of the claim.
• A skilled technician who is well acquaintedwith the technique should not haveknowledge – test is not that of commonman.
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• Application examined only after request filed within 48 months
from priority date otherwise the application is deemed
abandoned.
• Compliance within 12 months from the date of First Examination
Report (FER). No further extension of time is available in this
regard. Otherwise deemed abandoned.
• When all the requirements are met, the patent is granted after 6
months from the date of publication, the letter patent is issued,
entry is made in the register of patents and it is notified in the
Patent Office Journal
30Examination and Grant
OPPOSITION
• Opposition proceedings are available bothpre-grant and post grant of patent;
• Opposition may be filed within 3 months ofpublication;
• After grant of patent but before expiry of 12months from date of publication of the grant ofpatent, any person interested may give noticeof opposition to the Controller;
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RENEWAL
• A patent is valid for 20 years.
However, to keep the patent alive, a
renewal fee must be paid every year.
Otherwise, the patent is liable to be
rendered invalid.
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USE AND EXPLOITATION
• Can be used by the patentee himself or
through an exclusive licensee
• A patent is vulnerable against revocation, if it
is not worked
• A compulsory license can also be sought for
by a third party if the patent is not worked in
India
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PROTECTION
• Take care to oppose or cancel patents of
competitors or others when they have
tendency to interfere with your monopoly
• Can also be done when competitors seek
to monopolize already existing or known
technology
34Opposition/Cancellation
PROTECTION
• Only a civil suit for injunction and
damages can be filed against third
party for infringement of patent
• No criminal liability - nobody goes to
Jail for infringing patent
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OPPORTUNITIES
• Trademark filings have increased by 20% in India for
the year 2018, on an average about 3 lakh
applications are filed in a year in India now.
• Design applications increased by about 13% last year
in India
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OPPORTUNITIES
• Filing is now available online for trademark and copyrightapplications (10% lesser fee for trademark filings online).SME and individual applicants get a 50 % fee reduction.
• Without opposition, a trademark registration is granted within 7 months in India
• New Trademark Rules also offer VIDEO CONFERNCING facilities to attend hearings - though not functional yet.
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OPPURTUNITIES
• Patents filing have increased by 32 % and additional
manpower increased resulted in 108% more patents
scrutinized.
• Copyright registrations has increased by 450% after the
Copyright is merged with the Ministry of Industry and
Commerce.
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OPPURTUNITIES
• All offices have dedicated websites which contain
information and model forms used for acquiring and
maintaining Intellectual Property Rights.
• A mobile app has also been launched by the
department for various information relating to the IP
rights
• It has a dedicated Information Officer under the Right to
Information Act
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OPPURTUNITIES
• Start up facilitators are appointed by the department for
IPR aspirants to approach easily.
• Geographical Indications which associate the product
with a territory are also increasing and several products
that were on the verge of extinction have been revived.
• In Andhra Pradesh, Tirupati ladoos, Banganapalle
Mangoes, Kondapalli Toys, Mangalagiri sarees,
Kalamkari etc are geographical indications registered.
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