Intellectual Property

Rights :
An overview
24
th
November, 2011
PSG STEP
PSG College of Technology
What is IP?
As we know.
Property:
Movable / Immovable/ Tangible
belongs to a person
free to use (in accordance with law)
exclude others from the use of that property
(unless Authorized)
Specifically
Intellectual Property (IP)
creations resulting from human mind, Intellectual endeavors
covers fields of art, literature, trade, science and technology
What is IPR?
Rights granted to creator and owner of IP, facilitating its
owner to:
Make
Sell or offer for sale or assign
Use
Lease or License
Mortgage
Donate the property
and
to prevent others from making, using and selling the IP by copying
IPR - Objective
Providing official recognition and incentive
Encouraging innovation and research
recovery of R&D costs during period of exclusive
rights
Facilitating public access to developments in
various fields
disclosure of the Intellectual Property
Various Forms of IPR
Farmers and Plant Breeders
Rights
Copyrights
Intellectual
Property
Industrial Designs Trade secrets
Trademarks
Geographical
Indications
Patents
Semiconductor
Chipset Design
Intellectual Effort, Intangible, Worth Protecting
Inventions, Creative Expression, Goodwill, Confidential Information
Inventions, Functionality - Patent
Original, Creative Expression in Literature,Art Work, Sound or Video
Recording Copyright
Visual Appeal with Commercial Benefit Industrial Design
Goodwill, Branding Trademark
Critical Data, Confidential Information of Trade- Trade Secrets
Inventions, Goodwill of Farmers and Plant varieties- FR&PPV
Inventions, Goodwill, Branding originated from particular location or
geographical area- Geographical Indications

Intellectual Property
Example Adobe Reader
Protected by U.S. Patents 4,837,613; 5,050,103; 5,185,818; 5,200,740; 5,233,336; 5,237,313;
5,255,357; 5,546,528; 5,625,711; 5,634,064; 5,729,637; 5,737,599; 5,754,873; 5,781,785; 5,819,301;
5,832,530; 5,832,531; 5,835,634; 5,860,074; 5,929,866; 5,930,813; 5,943,063; 5,995,086; 5,999,649;
6,049,339; 6,073,148; 6,185,684; 6,205,549; 6,275,587; 6,289,364; 6,324,555; 6,385,350; 6,408,092;
6,411,730; 6,415,278; 6,421,460; 6,466,210; 6,507,848; 6,515,675; Patents Pending. Contains an
implementation of the LZW algorithm licensed under U.S. Patent 4,558,302.
Copyright 1987-2003 Adobe Systems Incorporated and its licensors. All rights reserved.
Adobe, the Adobe logo, Acrobat, the Adobe PDF logo, Distiller, and Reader are either registered
trademarks or trademarks of Adobe Systems Incorporated in the United States and/or other
countries.
Portions include technology used under license from Verity, Inc. and are copyrighted.
Copyright 1996-2001 Installshield Software Corporation and/or its suppliers. 900 North National
Parkway, Suite 125, Schaumburg, IL 60173-5108 USA. All Rights Reserved.
This software contains the RSA Data Security, Inc. MD5 Message-Digest Algorithm.
e_Db is a licensed product from Simple Software Solutions, Inc.
Portions utilize Microsoft Windows Media Technologies. Copyright 1999-2002 Microsoft
Corporation. All Rights Reserved.
Combined PostScript Drivers are a result of a cooperative development
process by Adobe and Microsoft.
Examples of IPR
Trademark



Geographical Indications-
Champagne
Basmati rice
Mysore Silk

Examples of IPR
Industrial Designs includes Architectural Designs



Copyrights-
Any work of Literature, Art: musical composition, song,
novel, dance, painting, sculpture
Trade Secret-
Coke formula

Examples of IPR
Semi Conductor Chipset Design
Farmers and Plant Breeders Rights
A new variety of plant invented by genetic
engineering






Invention
A new product or process involving an inventive
step and capable of industrial application
Must be Novel;
Non Obviousness;
Inventive step A feature of an invention that
involves technical advance as compared to
existing knowledge or having economic
significance that makes the invention non-
obvious to an person skilled in the art
Patent
Grant of Exclusive right (for a Limited period
of time (20 years) by the Government to the
Patentee) to an Invention, in exchange for full
Disclosure of the invention
Patent
Prevents others from making, using, selling or
importing patented inventions
Based on Jurisdiction
provides protection only in countries where the patent is
granted
Not renewable
inventions become public domain after, term of patent (20
years in most countries)
Maintenance fee to keep patent active every year
Can be sold, Assigned or licensed, etc.


Prior Art
Body of Information relevant to the field of the
invention already available to public at the date of
application
Patent Literature
Published documents (Journals, Books etc),
disclosed information
What is known or already in use within
the same country

Why Patent ?
The most potent form of protection

Protects the idea (e.g. architecture) as opposed to
copyright which protects expressions of ideas (e.g.
source code)

Patent royalty can be a good source of revenue

Ignoring patents can lead to disastrous results

Patentability Criteria
Novelty
No prior written or oral publication, demonstration or
public use (prior art) before filing the patent application
Non-Obviousness
Invention is not obvious to someone of average skilled in
the art
Utility
Invention capable of industrial application
Allowable subject matter
Process
Machine
Article of Manufacture
Composition of Matter
Not Patentable..
Inventions disclosed to the public either through publications or public
domain
Laws of nature, equations, abstract ideas
Printed Matter
Inventions harmful to the public morality or interest
Atomic weapons
Human Animal Hybrid, Agricultural or Horticultural Technology
Medical Procedure
Non-useful inventions
Business solutions

Publication Clearance Process
Prior to any of the publications
Investigate whether they contain patentable invention or other information
eligible for other IPR

Evaluate the consistency of this disclosure with other claims for the
technology, compounds, etc.

Consider whether the document exposes you to any third party issues

Remember this publication is generating art which will be citable against you
in the future

Check whether you are disclosing too much information for the competitors
which should be kept as know-how

Patent Life Cycle
Inventors
Lab Notes
Disclosure Form
Patent Agent
Patent Examiner
Patent Grant
Patent Publication
Patent Office
Regular Patent Document
Front Page

Bibliographic data
References
Abstract
Drawings Specifications

Background of invention
Detailed Description
Claims
Patent Document - Content
Background section
Explaining what is already known
Objective of creating the invention
Need of the invention
Detailed Description
Explaining how the invention can be practiced by a
person skilled in the art
Claims
Define the scope of protection of the patent
Set out the essential features of the invention
Drawings
Include drawings, wherever necessary, for better
understanding of the invention



Patent Document - Terms
Assignee
Inventor
Filing date
Grant date
Priority date
Patent Number
Publication Number
Regular Patent Application (RPA)
Provisional Patent Application (PPA)



Filing Process
When to file?
Before publication or the invention going outside the
Inventor or company
Timing is critical Patent life starts right upon filing
Where to file?
Your market - R&D, Manufacture or Sell
Competitors market R&D, Manufacture or Sell
Feasibility of enforcement
Funding
How to file?
PCT route
Direct national filing
Time and fund at hand

Patent Filing Process
Filing in national patent offices
The PPA/RPA is filed in national patent office
In case of PPA filing, RPA needs to be filed within 12 months
Patent application needs to be filed in all national offices
within 12 months of the first filing
The prosecution of the patent application begins in the
national patent offices

PCT Filing
File application with the receiving office
Designate convention countries for filing patent
application
Application is published with search report
Application needs to be entered in the national phase
independently within 30-31 from the first filing date



Trade Secrets
Information that provides owner with a competitive
advantage, and is treated in a way to prevent others from
learning about it
Protected through contract law or the equitable doctrine of
breach of confidentiality
Notifying recipients in writing that the information is
proprietary and not to be disclosed without consent
Enter into NDAs with employees and third parties
Establish policies & procedures to prevent inadvertent
disclosure in publications, seminars, trade shows etc
Physical and technological barriers

Copyright
Original literary, dramatic, musical, artistic works,
cinematographic films, sound recordings includes software
Bundle of rights to make copies, translation, adaptation,
storing in any medium (e.g., electronic), performance
Term up to 60 years after death of author
Applies to form or expression and not to function
Registration not mandatory just prima facie evidence of
particulars entered in register
Exception to infringement fair use private non -
commercial use, research, criticism or review, transformative
derivative work


What Trade marks mean:
A mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person
from those of others and may include shape of goods, their
packaging and combination of colours; and
(i) a Registered Trade mark or a mark used in relation to
goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the
goods or services, as the case may be and some person
having the right as Proprietor to use the mark;

Trade marks means: continued..
(ii) a mark used or proposed to be used in relation to goods or
services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or
services, as the case may be and some person having the
right, either as Proprietor or by way of permitted user, to use
the mark whether with or without any indication of the
identity of that person and includes a Certification Trade
Mark or Collective Mark;
Marks includes amongst other things, names or works also;
Name includes any abbreviation of a name.
In other words it is the Brand.
NON-REGISTRABLE TRADEMARKS
Trademark, which is identical to or deceptively similar to a
trademark, which is already registered or has already been
applied for in the name of a different proprietor in respect of
the same goods or description of goods, may not be
registered.
Also trademark the use of which would be likely to deceive or
cause confusion; the use of which would be contrary to any
law in force; which comprises or contains scandalous or
obscene matter or any matter likely to hurt the religions
susceptibilities of any class or section of the citizens of India;
may not be registered.

Classification of Goods or Services
The Classification of Goods or Services(45
Classes) shall be in accordance with the
International classification of Goods or
Services for the purpose (Schedule IV of the
Act.)
Rules of Registration
Registration is not a matter of right or it is
mandatory.
Intellectual Non-properitory names declared by
WHO or descriptively similar names shall not be
registered.
Use of names of a living person or a person or
person dead within 20 years shall be permitted only
with the consent of that person or the legal
representative of the deceased person.
Trade marks can be jointly owned.

Effect of Registration
Shall confer on the proprietor exclusive right
to use of the trade mark.
Shall give right to obtain relief in respect of
infringement of the trade mark.
Registration shall be prima facie evidence.
Registration is done initially for a period of ten
years.
Renewal for another term of 10 years.
Benefits of trademark registration
Trademark registration protects the goodwill of a business
and also helps to identify and distinguish the source of the
goods or services of one party from those of others.
Trademark registration is an evidence of ownership of the
trademark and also constructive notice nationwide are issued
of the trademark owner's claim.
Trademark registration in India can also be used as a basis for
obtaining registration in foreign countries.

Burden of Proof of infringement
The burden of proof lies on the Plaintiff.
No infringement action will lie in respect of an
unregistered trade mark; but action may be
taken based on common law rights.
If proved guilty, the person is liable for
imprisonment for 6 months to 3 years with
fine from Rs.50,000/- to Rs.2.00 lakhs.

INDUSTRIAL DESIGNS
The features of shape, configuration, pattern, ornament or
composition of lines or colours applied to any article -
whether in two dimensional or three dimensional or in both
forms - by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the
finished article appeal to and are judged solely by the eye; but
it does not include any mode or principle of construction or
anything which is in substance a mere mechanical device

Requirements for Design registration
The design should be applicable to any article by any
industrial process.

Normally, designs of artistic nature such as painting,
sculptures and the like which are not produced in bulk by any
industrial process are excluded from registration under the
Act.

Requirements for Design registration
The design should be new or original, not previously
published or used in any country before the date of
application for registration.

The novelty may reside in the application of a known shape or
pattern to a new subject matter. However, if the design for
which the application is made does not involve any real
mental activity for conception, then registration may not be
considered.

Requirements for Design registration
The design should not include any trademark or property
mark or artistic works.

It should be significantly distinguishable from known designs
or combination of known designs.

It should not comprise or contain scandalous or obscene
matter

Requirements for Design registration
Any mode or principle of construction or operation or any
thing, which is in substance a mere mechanical device, would
not be a registrable design. For instance, a key having its
novelty only in the shape of its corrugation or bend at the
portion intended to engage with levers inside the lock it is
associated with, cannot be registered as a design under the
Act.
However, when any design suggests any mode or principle of
construction or mechanical or other action of a mechanism, a
suitable disclaimer in respect thereof is required to be
inserted on its representation, provided there are other
registrable features in the design.

Requirements for Design registration
The features of the designs in the finished article should
appeal to and are judged solely by the eye. This implies that
the design must appear and should be visible on the finished
article, for which it is meant. Thus, any design in the inside
arrangement of a box, money purse or almirah may not be
considered for showing such articles in the open state, as
those articles are generally put in the market in the closed
state.
Architectural Designs also registerable.
Documents Required
A signed power of attorney in Rs 100 stamp paper

5-10 sets of figures or photographs in color or black and
white, preferably of various views of the complete article

A certified copy of the priority document showing the filing
date, number and country, if priority is to be claimed
Steps involved in Registration of
Designs
Finding out whether any registration already exists
Preparing a representation of the design
Identifying the class of design
Providing a statement of novelty
Including a disclaimer
Claiming a priority date
Determining the fee to be paid
Ensuring all enclosures are attached

Duration of Time Registration
The total term of a registered design is 15 years. Initially the
right is granted for a period of 10 years, which can be
extended, by another 5 years by making an application and by
paying the prescribed fee to the Controller before the expiry
of initial 10 years period.
The proprietor of design may make the application for such
extension even as soon as the design is registered.

Integrated Circuit Layout Design (IC)

Layout design includes a layout of transistors and other
circuitry elements and includes lead wires connecting such
elements and expressed in any manner in a semiconductor IC
Semiconductor IC is a product having transistors and other
circuitry elements, which are inseparably formed on a
semiconductor material or an insulating material or inside the
semiconductor material and designed to perform an
electronic circuitry function.


NON-REGISTRABLE IC Layout Design
An IC layout design cannot be registered if it is
Not original
Commercially exploited anywhere in India or in a convention
country
Inherently not distinctive
Inherently not capable of being distinguishable from any
other registered layout design.

Term of Validity
The term of the registration validity is 10 years from the date
of filing

Thank You!
R P RAMANATHAN
LEGAL HEAD
Meta Yage IP Strategy Consulting
EA 501 A, IV Floor, EB Block, PSG-STEP,Coimbatore 641 004
Ph: 4397705 cell: 994675721
C/o Global Incubation Services, JSS Institutions campus, Behind Leela Palace,
Kodihalli,Bangalore 560008.
Website: http://www.metayage.com/
Phone: +91.80.41487385
Email: rprama@myipstrategy.net

GEOGRAPHICAL INDICATIONS (GI)
Indications which identify a goods (such as agricultural goods,
natural goods or manufactured goods) as originating, or
manufactured in the territory of a country, or a region or
locality in that territory, where a given quality, reputation or
other characteristics of such goods is essentially attributable
to its geographical origin
PROTECTING GI
It may be noted that properly protected GI will give
protection in domestic and international market.
According to TRIPS, GI which is not or cease to be protected in
its country of origin or which has fallen into disuse in that
country cannot be protected
TRIPS provide for seizure of goods bearing false indications of
GI
TRIPS provide for refusal or invalidation of registration of a
trademark containing a GI with respect to goods not
originating in the territory indicated

Documents required for filing
An application for registration of a geographical indication is
to be made in writing using a replica of the official application
Form GI-1 for the registration of a Geographical Indication in
Part A of the Register by an Indian applicant
Form GI-2 for a convention application
an application for goods falling in different classes by an
Indian applicant in Form GI-3 and
an application for registration of goods falling in different
classes from a convention country in Form GI-4 along with
prescribed fee
and should be addressed to the Registrar of Geographical
Indications

APPLICANTS FOR GI'S REGISTRATION
Any association of persons or producers or any organization
or authority established by or under any law for the time
being in force representing the interest of the producers of
the concerned goods, who are desirous of registering
geographical indication in relation to such goods shall apply in
writing to the Registrar in such' form and in such manner and
accompanied by such fees as may be prescribed for the
registration of the geographical indication.

Additional Requirements
The standard bench mark or other characteristics of the
geographical indication
The particulars of special characteristics
Textual description of the proposed boundary
The growth attributes in relation to the G.I. pertinent to
the application
Certified copies of the map of the territory
Special human skill involved, if any
Number of producers; and
Particulars of inspection structures, if any, to regulate the
use of geographical indication
Additional Requirements
Application in prescribed forms (submitted to the Registrar of
Geographical Indication)
How the indication serves to designate the goods as a
Geographical Indication?
The Class of goods
The territory
The particulars of appearance
Particulars of producers
An affidavit of how the applicant claim to represent the
interest
NON-REGISTRABLE GEOGRAPHICAL
INDICATIONS
The use of GI which would be likely to deceive or cause
confusion or contrary to any law
which comprises or contains scandalous or obscene matter or
any matter likely to hurt religion susceptibility of any class or
section of citizens of India.

NON-REGISTRABLE GEOGRAPHICAL
INDICATIONS
which would other wise be disentitled to protection in a
court. which are determined to be generic names or
indications of goods and are,
therefore, not or ceased to be protected in their country of
origin or which have fallen into disuse in that Country.
which, although literally true as to the territory, region or
locality in which the goods originate, but falsely represent to
the persons that the i goods originate in another territory,
region or locality, as the case may be


Term of GI protection
The registration of a GI shall be for a period of ten years but
may be renewed from time to time for an unlimited period by
payment of the renewal fees.

Punishment for falsifying GI
A sentence of imprisonment for a term between six months
to three years and a fine between fifty thousand rupees and
two lakh rupees is provided in the Act.
The court may reduce the punishment under special
circumstances.

New Plant Varieties


New plant varieties can be protected in India under the New
Plant Variety and Farmers Rights Protection Act in 2001.


New plant varieties cannot be protected through patents.


Criteria to decide a plant variety
Distinctiveness - The variety shall be deemed to be distinct if
it is clearly distinct from any other variety whose existence is
a matter of common knowledge at the time of filing of the
application

Uniformity - The variety shall be deemed to be uniform if,
subject to the variation that may be accepted from the
particular features of its propagation, it is sufficiently uniform
in its relevant characteristics

Stability - The variety shall be deemed to be uniform if,
subject to the variation that may be accepted from the
particular features of its propagation, it is sufficiently uniform
in its relevant characteristics

Criteria to decide a plant variety

Novelty - The variety shall be deemed to be new if, at the
date of filing of the application for breeders right, propagating
or harvesting material of the variety has not been sold or
otherwise disposed of to others, by or with the consent of the
breeder for the purpose of exploitation of the variety.

Denomination - The variety shall be designated by a
denomination, which will be its generic designation. The
premise that the variety denomination must be its generic
designation class for a requirement that 'denomination must
enable the variety to be identified


Term of Registration
The total period for protection is 10 years from the date of
registration.