INTELLECTUAL PROPERTY RIGHTS (Study Material)

 

Intellectual Property Right

WHAT IS PROPERTY ?

• A thing (tangible or intangible form) which has a value in the eyes of Law

• A thing which is involves the ownership, title or other rights.

• Property means legal rights over the material things.

• Property is any physical or intangible entity that is owned by a person or jointly by           group of people.

• For Example: Land, building, jewelry etc.

WHAT ARE THE TYPES OF THE PROPERTY ?

WHAT IS INTELLECTUAL PROPERTY?

 

• Its creativity of human intellectual efforts, labour of human mind.

• Intellectual property is a category of property that includes intangible creations of the human intellect.

• Intellectual property is an umbrella term for a set of intangible assets or asset

that are not physical in nature.

• Intellectual property (IP) is a category of property that includes intangible

creations of the human intellect.

• For Example: Books , Songs. Movies, Building etc.

INTELLECTUAL PROPERTY RIGHT

Intellectual Property Rights are the rights which are given by the different laws or statutes to the true owner of the property.

Such right are given for the protection of Human Intellectual efforts because its easily get violation by any person form any geographical locality.

Intellectual property rights is any and all rights associated with intangible assets owned by a person or company and protected against use without consent.

Intellectual Property Rights are positive and negative rights to provide recognition, to encourage the intellectual skill and labour creativity and to provide protection from illegal infringement of work.

INTELLECTUAL PROPERTY RIGHTS

1)Copy Right

2)Patent

3)Trade Mark

4)Design

5)Geographical Indications

6)Trade Secrets

 

Copy Right

Copy right Act established in 1957 Copyright refers to a bundle of exclusive rights vested in the owner of copyright by virtue of Section 14 of the Act. 

Simply it means Right to Copy of original work

 

Definition of Copyright is very vast but shortly “The exclusive right given by law for a certain term of years to an author, composer etc. (or his assignee)

to print, publish and sell copies of his original work”

Copyright ensures certain minimum safeguards of the rights of authors over their creations, thereby protecting and rewarding creativity.

Object of the Copy Right

Encouragement of the original work:

The main objective of the Copyright Act is to encourage authors, composers, artists, and designers to create original works by rewarding them with the exclusive right for a limited period to exploit the work for monetary gain.

The economic exploitation (use or financial benefit) is done by licensing such exclusive rights to the entrepreneurs like

publishers, film producers and record manufacturers for monetary consideration.

To exploit the copy right work for financial benefit by True owner as author to publisher of book.

 

Protection to the Originator:

To protect the author or the creator of the original work from the unauthorized reproduction or exploitation of his/her materials.

 
The right also extends to prevent others from exercising without authority any other form of right

attached to copyright, for example, in case of literary work, the right of translation, adaptation (convert from One format to another) or abridgement.

To protect the copyright work local level and international level (world wide level)

RIGHTS OF THE COPYRIGHT HOLDER

 

Economical Rights:

1) In the case of original literary, musical, and dramatic work:

Right to reproduce, Right to issue copies, Right to perform at public, Right to make cinematography and sound recording, Right to make any translation, Right to adaptation and Right to do any other activities related to the translation or adaptation.

2) Computer program work:

Right to do any act aforesaid mentioned and Right to sell, rent, offer for sale of the copyrighted work.

 

3) In the case of artistic work:

Right to reproduce, Right to communicate, Right to issue copies, Right to make any cinematography and sound recording, Right to make an adaptation and translation.

 

4) In case of a cinematograph film work: 

Right to sell, rent, offer for sale of the copyrighted work and Right to communicate.

5) In the case of a sound recording work:

Right to communicate, Right to issue copies and Right to sell, rent, offer for sale of the copyrighted work.

 

 

Moral Rights: The right to paternity is the right of the author to claim authorship over his work and have it connected to him. On the other hand, the right to integrity(being honest) permits the author to restrain or claim damages in the event of any distortion, mutilation, modification or any other untoward act done to his work.

TERM OF COPY RIGHT

Literary, dramatic, musical or artistic works enjoy protection for the life time of the author plus 60 years beyond i.e. 60 years after his death. In case of joint authorship which implies collaboration of two or more authors in the production of work, the term of copyright is to be construed as a reference to the author who dies at last.

In case of copyright of posthumous, anonymous and pseudonymous works, cinematograph films, sound recordings, works of Government, public undertakings and international organization, the term of protection is 60 years from the beginning of the calendar year next following the year in the work has been first published.

The act has given broadcasting reproduction right to every broadcaster which is valid for 25 years from the beginning of the calendar year next following the year in the broadcast has been done.

Copyright Board:

 

Section 11 of the act provides for the establishment of the Copyright Board and empowers Central Government to constitute the same consisting of Chairman and 2 other members.

It has many important functions, such as:

Which established for Settlement of disputes and Granting of licenses of copyright etc.

 

Infringement of Copyright

 

According to Section 51 of the Act, Copyright is deemed to be infringed if:

A person without obtaining the permission of the copyright holder does any act which only the copyright holder is authorized to do.

A person permits the place to be used for communication, selling, distribution or exhibition of an infringing work unless he was not aware or has no reason to believe that such permission will result in the violation of copyright.

A person imports infringing copies of a work. 

A person without obtaining the authority from the copyright holder reproduces his work in any form.

REMEDIES FOR INFRINGEMENT OF COPYRIGHT

 

Civil Remedies

Section 55(1) of the copyright act, provides that the copyright holder is entitled to remedy by way of injunction. The injunction is the most effective remedy in case of copyright infringement

 Section 55(1) of the copyright act, further provides that the copyright holder is entitled to damages for copyright infringement. The purpose of providing the damages to the copyright holder is to restore him to the earlier position. There are various factors that determine the amount of damages to be paid to the copyright holder.

Criminal Remedies

 

The copyright holder can take criminal proceedings against the infringer. The criminal remedy is not an alternative to the civil remedy but is complementary to it. Thus, the copyright holder can bring both civil and criminal proceedings simultaneously. (six month imprisonment and fine 50,000/- for second and subsequent offence one year Imprisonment and One lakh rupees.)
Section 63-73 of the Copyright Act, states that copyright infringement is a criminal offence.

PATENT

 

The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911.
 
Any new vital invention in the fields of food, chemicals and pharmaceuticals are granted the exclusive right of being patent under the Patent Act.
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application.
 
A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using, or selling an invention for a limited period of years in exchange for publishing an enabling disclosure of the invention.
 

The word patent originates from the Latin patere, which means "to lay open" (i.e., to make available for public inspection).

TO WHOM GRANT PATENT

• A thing must be New or Novel. 

• Invention

• Not discovery

• Inventive step or it must be non-obvious

• Capable of Industrial application

TO WHOM PATENT WILL NOT GRANT (which are not invention)

 

• Frivolous or obvious

• Injurious to public health

• Mare arrangement or re-arrangement

• Discovery of scientific principles

• Discovery of living or non-living substances in nature

• Method of Agriculture and horticulture

• A mathematical or business methods or a computer program

 

PATENT IS AN EXCLUSIVE MONOPOLY RIGHT

Granted by Government of India, For an Invention, To the inventor or his Assignee, As a Territorial Right, In lieu of Disclosure of invention to the Government. Registration Process for a Patent Under Patent Act,1970
 

Step 1 - Check the patentability of an invention.

Before filling a patent application in India, First step is to do a detailed patentability search to determine whether a patent can be granted or not.

 

Step 2 - Drafting Patent Application (Provisional or Complete)

A patent application is filed in Form-1 with the prescribed fee mentioned in Schedule 1 at a patent office in accordance with the jurisdiction. Each patent application is accompanied with patent specification (Form 2). According to the state of invention, you can either file a provisional or complete application. A complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not filed, the application shall be deemed to be abandoned.

 

Step 3 - Filling the Patent Application in India

First filing in India - Once the application is drafted, you need to file the patent application in India and secure the filling date. If Provisional application is filed then complete specification shall be filed within twelve months from the date of filing of the application, if foreign protection required it should be with 12 months to select desired country.

 

 

Step 4 - Publication of Patent Application

Ever application is published in the official journal after 18th months period from the date of filling of application or the date of priority of application whichever is earlier.

There is a provision for early publication of an Indian Patent application by filling a formal request.

Step 5- Examination of Patent Application

Every patent application is not examined; Applicant or any other third party has to file a request for examination under Form 18 and for expedited examination in Form 18A (under conditions as prescribed in the Rules).

 

Process of Examination (Objections by examiner & responding to objections)

Once the application is filed it will end up on the desk of examiner. During examination process examiner will scrutinize application that it is in accordance with Patent Act and Rules.

 

Step 6 - Grant of Patent

he order of grant is given when all the requirements of patent Act are complied and it will be published in Patent Journal.

 

Step 7 - Renewal

After the grant of patent it needs to be renewed from 3rd year onward by paying renewal fee as prescribed in Schedule 1. A Patent in India can be renewed for maximum period of 20 years from the date of filing.

 

Infringement of Patent :

Infringement may be called as person using someone's invention without his knowledge for monetary gain.

Infringement is the unauthorized use of an invention claimed in a valid patent. Patent infringement is an unauthorized act of selling, manufacturing, offering to sell, importing or using in-force patented invention without the permission of a patented owner.

Patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent.
Indian Limitations act governs the period of limitation for bringing a suit for infringement of a patent, which is for 3 years from the date of infringement.

REMEDIES OR RELIEF FOR INFRINGEMENT OF PATENT

 

Relief available to Patentee for infringement

Section 108 (1) of the Patents Act, 1970 provides for the Reliefs in suit for infringement. It states that – “The reliefs which a court may grant in any suit for infringement includes an injunction (subject to such terms, if any, as the court thinks fit) and, at the option of the plaintiff, either damages or an account of profits.”

 

The reliefs that are available to a patentee in suit for patent infringement against an infringer are:-

Permanent injunction;

Temporary / Interlocutory injunction; Ex-parte injunction;

Damages or an account of profits;

Seizure, forfeiture or destruction of infringing products / goods and / or materials and implements predominantly used in the creation of the infringing products / goods.

TRADE MARK

Trade Mark Act. 1999 came into force with effect on 15th Sept.2003 with replacement of Trade and Merchandise Marks Act, 1958. 

 

Trade Mark can be known as identity of business or an Image of business.

 

Trade Mark concerned with the Goods and Services of a Business with Trust, Goodwill, Reputation.

 

It’s a distinctive mark / design, symbol, word, sound, color, slogan, combination of above any one.

 

A Trade Mark is makes people easy to distinguish the product or service of a company

 

The object behind the Act is to provide the Registration, Better protection for businesses and to prevent Infringement of Trademarks.

 Procedure for Registration of Trade Mark

 

As per Sec. 18 to 23 of the Trade Mark Act. Following is the procedure

 

1. Acceptance of application for Registration

 

2. Withdrawal of acceptance.

 

3. Advertisement of accepted application.

 

4. Opposition to registration

 

5. Correction and amendment of application

 

6. Registration

BENEFITS OF REGISTRATION

Trade Mark Registration is not compulsory as per Act but Registration is beneficial to Proprietor to the Trade Mark as per the Act as follows:

 

Institution of any proceeding to prevent or to recover damages for the infringement of the registered

 

Trade Mark (Sec.27)

Exclusive Right to use the Registered Trade Mark (Sec.28)

Prima Facie evidence of the validity of TM (Sec.31)

Registration of Trade Mark to be Conclusive after 7 years from the date of registration.

INFRINGEMENT OF TRADEMARK

Section 29 (a) of the Act defines…If the mark in dispute is identical with or deceptively similar to the registered trademark and is in relation to the same or similar goods or services;

 

If the identical or similar mark can cause confusion in the minds of general public to have an association with the registered trademark.

If the registered trademark is used as a part of trade name or business concern for goods and services in respect of which the trademark is registered

 

If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest practices or is damaging to the distinctive character and reputation of the registered trademark.

 

If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper without due authorization of the registered user.

WHAT IS PASSINGOFF (REMEDY)

Passing is recognized as a common law tort which is used to protect and enforce unregistered trademarks in India. Like protection of trademarks, Passing off also prevents a person from misrepresenting its goods and services from that of the other.

 

These include Reputation, Misrepresentation and damage to goodwill. Common law courts have come up with a few basic characteristics of passing off which include the following:

 

Misrepresentation Made by a person in the course of trade

To prospective or ultimate consumers of goods and services 

To injure the business or goodwill of the other person

It causes actual damage to the person by whom the action is brought about.

REMEDIES FOR INFRINGEMENT OF TRADE MARK

Civil and criminal action can be brought about. The complaining party can either file a criminal complaint. The Trademark Act, 1999 recognizes infringement of trademarks as a cognizable offence i.e. a police complaint can be lodged, and the infringers can be prosecuted directly. Even the courts are empowered with the authority to SUO MOTO conduct raids and seizure operations. On the other hand, a civil action can also be brought about against such infringements.

 

Injunction/stay against the use of trade mark; Appropriate Damages; Handing over of accounts and profits;

Appointment of a local commissioner by the respective court for custody or sealing of infringing material and accounts.

 

An application under Order 39 rule 1 & 2 of CPC for grant of temporary or ad interim ex-parte injunction. Interim orders are generally ex-parte or after notice.

DESIGN

Earlier this Act was governed by the Design Act, 1911. In order to bring the Design Act at par with the International law the enactment of the Design Act, 2000 took place. So, presently the design laws are regulated by the Design Act of 2000.

 

“Design” means features of shape, pattern, configuration, ornament or composition of colors or lines which is applied in three dimensional or two dimensional or in both the forms using any of the process whether manual, chemical, mechanical, separate or combined which in the finished article appeal to or judged wholly by the eye.

 

Design is the unique identity of the product where it easy to make distinguish with other product.

 

For Example: Car, jewelry, Mobile design etc.

OBJECT OF DESIGN ACT.2000

The primary objective of the Design Act is to protect the designs.

The Design Act 0f 2000 is an Act to consolidate and amend the law relating to the protection of designs.

Its main objective is to protect new or original designs from getting copied which causes loss to the proprietor.

The important purpose of design registration is to see that the creator, originator or artisan of any design is not deprived of his reward for creating that design by others copying it to their goods or products. (For example house hold goods, electronic devices, textiles)

An industrial design helps in drawing a customer’s attention and helps in increasing the commercial value of an article. Therefore, helps in expanding its market.

There are many competitors who adopt evil ways to reduce the competition in the rival groups by exploiting the designs to their advantage. Thus, it is necessary to have laws to safeguard the interests of the owners of these designs. In order to fulfill this objective, the Design Act of 2002 came into existence.

Essential Requirement of Registration of Design?

 

Novelty and originality

A design can be considered for registration only if they are unique. A combination of previously registered design can also be considered only if the combination produces new visuals.

 

Design must be unique, a Prior publication is not acceptable

The design must not be a published one. If the design is already published than the design is not eligible for the publication. There should not be any tangible copy available already in the market if you are seeking registration of the design that is in digital format.

 

Making application of design to an Article

The applicability of the design should be to the article itself. It can be informed of a three-dimensional figure. There are two-dimensional figures also included in this act i.e any painting or any graffiti on the walls or print on the bed sheets.

 

The design must not be contrary to the order and morality

The design must be registerable under the Design Act, 2000. It must not be prohibited by the Government of India or any institution so authorized. The design must be capable of registering under Section 5 of this act. The design which can cause a breach of peace and may hurt the sentiments of the people may not be allowed to get register.

Rights of the proprietor of the design

When a proprietor applies for the registration of the design he shall automatically get ‘copyrights in design’ for the period of 10 years from the date of registration. This period can be extended if the proprietor wants to continue with the design. The Design Act should not be confused with the Copyrights act because there are many products which can be registered under both the acts but their remedies cannot be sought in both the acts individually.

 

Who is entitled to seek Registration?

As per the provisions of Design Act, 2000 any proprietor who is seeking registration of a design which is original and unpublished previously in any country which does not seems to be contrary to any law and order of that country can file an application for registration. A proprietor as per Section 2(j) includes that person who is the author of that design

acquired design for a valid consideration and

Any person to whom the design has been devolved from the original proprietor.

In case there is more than one author than the design must be applied by the joint authors only.

 

Duration of the registration of a design

The total time for which a design can be registered is 15 years. Initially, it was 10 years, which could be extended for another 5 years by paying a fee of Rs. 2000 to the Controller but it should be done before the expiry of that 10 years period. The proprietor of any design may even file an application as soon as the design gets registered for such an extension.

PROCEDURE FOR REGISTRATION OF DESIGN IN INDIA

An application for the registration shall be made in the patent office in the prescribed form along with the prescribed fee. The class in which the design is to be registered must be specified in the application and the

 

article(s) to which it is to be applied. There are separate applications which need to be filed for each class of article.

 

The controller will give the application for examining it so as to check whether the design is capable of being registered or not. If everything seems perfect then the controller will accept the application and proceed further.

 

If there is any objection, then the applicant or his agent will be asked to make necessary amendments so as to register the design and nullify the objection.

 

In objection its find out that who is actual owner or in case any infringement is done by the applicant. Then registration will be issued to the particular person.

 

Infringement of design

Just like any other Intellectual Property, the designs are also prone to infringement and they can also be copied by the competitors or some other person. If a design has been copied then the owner of that design can claim damages and can also apply for an injunction so that the design cannot be used further.

 

If there arises any question regarding the ascertainment of infringement then the Court will directly look for the design from the point of view of an average customer. In other words, the Court will consider whether there is any confusion which is obvious or some material facts in the minds of the customers regarding the two articles.

 

Piracy of registered designs

Section 22 of the Designs Act, 2000 deals with the piracy of registered designs. According to this section, any obvious or fraudulent imitation of a design which is already registered without the consent of its proprietor is unlawful. It also prohibits the import of any material which closely resembles a registered design.

 

 

This section also provides that in case if a civil suit is brought against any piracy of a design, then the compensation shall not exceed Rs. 50,000 for the infringement of one registered design. The compensation is statutorily fixed so it serves a good ground for an interim injunction even before the trial commencement.

GEOGRAPHICALINDICATION

Geographical indications means any indications which define the goods as originating in the territory of a country or a region or locality in that territory, provided a given quality reputation or other characteristics of the product are attributable to its geographical origin.

An indication which identifies goods as agricultural goods, natural goods or manufactured goods.

 

The registration of geographical indications confers certain rights on the registered proprietor and the authorized user and they can institute suit for infringements of geographical indications.

In India some of the examples of geographical indications are : 

# Basmati Rice

# Darjeeling Tea

# Kanchipuram Silk Saree

# Nagpur Orange

# Alphanso (Hapus) Mango Kokan

 

# Agra Petha

# malabar pepper

FEATURES OF GEOGRAPHICAL INDICATIO

• Collective community rights-protects groups of producers 

• Exclusive (no individual right)

• No right to assign- increases scope of protection 

• Right in perpetuity- remains with the community

• Knowledge underlying GI remains in the public domain

• Protects goods that are already famous- reputation must pre exist 

• Functions like a trademark

 

Term Of Protection 10 Year

 

PROTECTION OF GI INTERNATIONALLY Paris Convention (1883):False indication Madrid Agreement (1891) :False and deceptive indication Lisbon Agreement (1958):Define appellation of origin TRIPS Agreement (1994) :First International treaty bound to protect GIs and to enforce its application 10/07/11

 

WHO CAN APPLY FOR THE REGISTRATION OF A GEOGRAPHICAL INDICATION

Any association of persons, producers, organization or authority established by or under the law. Registered proprietor, Authorized user, Producer.

 

PENALTY FOR FALSELY REPRESENTING A GEOGRAPHICAL INDICATION AS REGISTERED

If a person is falsely representing a Geographical Indication as registered then a person shall be punished with imprisonment which may extend till three years or he has to pay a fine which may extend to two lakhs rupees or he may have to do both, which depends on the seriousness of the offence.

DATABASE RIGHT

 

Database has no any universal definition, it’s a generic term it’s a collection of independent components, Such as pieces of collective information, data or work. Arranged in different method, systematic manner which is accessed by the electronic form or other means.

 

As Per Indian Scenario

The Information Technology Act, 2000 Sec. 43 defines to pay damages by way of compensation not exceeding 1 Crore rupees to the person so affected and if any person without permission download, copies of

extract any data, computer or information from such computer, computer system or computer network.

 

The section defines database as the representation of information, knowledge, facts, concepts or instruction prepared in a formalize manner. Thought this section can be applied for electronic database, its effectiveness is still o be tested for granting protection to database or data on the internet.

 

As per Copy Right Act ,1957 Section 2 (o) Literary “literary work” includes computer programs, tables and compilations including computer [databases] Databases are generally protected by copyright law as compilations. Under the Copyright Act, a compilation is defined as a "collection and assembling of preexisting materials or of data that are selected in such a way that the resulting work as a whole constitutes an original work of authorship."