Intellectual Property Law

Legal Concept of Property

(a) right to possess
(b) right to use
(c) right to enjoy
Bundle of
(d) right to enjoy incidental benefitsRights
(e) right to dispose
(f) right to prohibit others

Classification of Property
Mind map

Benefit of IP
Preventing competitors from copying or closely
imitating a companys products or services;
Avoiding wasteful investment in research and
development and marketing;
Creating a corporate identity through a trademark
and branding strategy

Negotiating, licensing, franchising or other IP-based

contractual agreements
Increasing market value of the Company;
Acquiring venture capital and enhancing access to
finance. Banks and investors will assign value to these
assets, and make loans to startup as well as established
ventures based on them ;
Obtaining access to new markets

IP Protection

What is IP
Creations of human mind
What does it do?
Protects IDEAS by means of exclusive rights (monopoly);
Stimulate innovation and production, thereby competition
Encompassesideas
knowledge
invention
innovation
creativity
research

Intellectual Objects
Creation of Human Mind
The expression intellectual objects refers to various
forms of intellectual property.
Intellectual property consists of objects that are not
tangible.
Non-tangible or "intellectual" objects represent creative
works and inventions, which are the manifestations or
expressions of ideas.

Significance of IP
Economic incentives to creators and inventors;
Protecting the interest of inventors by granting
monopoly rights;
Balancing the interests of society and the individual.

Classification of IP

Legal Matter of IP
(a) Literary, artistic and musical works (copyright)
(b) Performances of performing artists, phonograms,
and broadcasts (related rights)
(c) Inventions in all fields of human endeavor (industrial
property)

 (d) Scientific inventions (industrial property)

(e) Industrial designs (industrial property)
(f) Marks and commercial names and designations
(industrial property)
(g) Protection against unfair competition
(industrial property)
(h) All other rights resulting from intellectual activity in
the industrial, scientific, literary, and artistic fields

Legal Rights
Exclusive right to manufacture
Right to sell, transfer, market, license etc
Remedies for infringement
For a Limited period

Copyright

All Rights reserved. No part of this publication

may be reproduced, stored in a retrieval system
or transmitted, in any form or by any means,
without the permission of Shri Hakuna Matata

 Copyright (or authors right) is a legal term used to

describe the rights that creators have over their literary
and artistic works. Works covered by copyright range
from books, music, paintings, sculpture, and films, to
computer programs, databases, advertisements, maps,
and technical drawings.

 Copyright gives the creator of an original work exclusive

right to it for a limited time.
The rights of authors of literary and artistic work (books,
musical compositions, paintings, computer programs,
etc.) are protected by copyright.
Protection is further granted to related/ neighbouring
rights like the rights of performers, producers of
phonograms, and broadcasting organizations.

Rights of a Copyright Owner

There are two types of rights under copyright:
i) economic rights, which allow the rights owner to derive financial reward from the use of his works
by others; and
ii) moral rights, which protect the non-economic interests of the author.
)Most copyright laws state that the rights owner has the economic right to authorize or prevent certain
uses in relation to a work or, in some cases, to receive remuneration for the use of his work. The
economic rights owner of a work can prohibit or authorize:
)its reproduction in various forms, such as printed publication or sound recording;
)its public performance, such as in a play or musical work;
)its recording, for example, in the form of compact discs or DVDs;
)its broadcasting, by radio, cable or satellite;
)its translation into other languages; and
)its adaptation, such as a novel into a film screenplay.
)Examples of widely recognized moral rights include the right to claim authorship of a work and the
right to oppose changes to a work that could harm the creator's reputation.

Registration of Copyright
In the majority of countries, and according to the Berne
Convention, copyright protection is obtained
automatically without the need for registration or other
formalities.
Most countries nonetheless have a system in place to
allow for the voluntary registration of works. Such
voluntary registration systems can help solve disputes
over ownership or creation, as well as facilitate financial
transactions, sales, and the assignment and/or transfer
of rights.

Essential Conditions for Copyright

The work must be original
Protection to expression of ideas and not the ideas
themselves
Non-registration does not affect the copyright
Use of original skill or labour is essential to acquire
copyright in a work
There is no copyright in a copy of any other work or
similar work
Copyright is a creation of statute

Life of Copyright
Published literary, dramatic, musical and artistic workslife of the author + 70 years after his death;
Anonymous & pseudonymous works- 60 years from the
date of first publication
Posthumous work 70 years
Photograph- 60 years
Cinematograph film 60 years
Sound recordings- 60 years

Infringement

When any person without a license from the owner of the copyright,
or the Registrar of Copyright (in certain situations) or in
contravention of the conditions of a license,

does anything the exclusive right to do which belongs to the copyright

owner, or
knowingly permits for profit any place to be used for the performance of the
work in public which continues an infringement of the work, or
When any person, makes for sale or hire, or sells or lets for hire, or offers for
sale or hire, or exhibits in public for trade or import (except two copies other
than cinematography film or record for personal use) any infringing copies ;

In general it is the commercial exploitation of the work in any form by

a person without authority that constitutes infringement

Copyright Infringement

Making infringing copies for sale or hire or selling or

letting them for hire;

Permitting any place for the performance of works in

public where such performance constitutes
infringement of copyright;

Distributing infringing copies for the purpose of trade

or to such an extent so as to affect prejudicially the
interest of the owner of copyright ;

Public exhibition of infringing copies by way of trade;

and

Patent
Patent grants an inventor or their assignee exclusive/ monopoly right to make, use,
sell, and import an invention for a limited period f time, in exchange of public
disclosure of the invention.
An invention is a new, useful, non-obvious solution to a specific techonological
problem, which may be a product or a process.
A patent is an exclusionary right as it provides its inventor with the right to exclude
others from making, using, selling, offering for sale, or importing the patented
invention for the term of the patent.
Like any property, it may be sold, licensed, mortgaged, assigned or transferred,
given away, or abandoned.

Patent Life
20 years from date of filing

Registeration of Patents
Application & Granting not universal.
Granting of patent in India does not mean granting of
patent the world over.

Patent Process
Prerequisites
Invention should be1. New/ Novel
2. Non-obvious
3. Has industrial application
4. Can be patented in India

1. File necessary papers with office of Controllers of Patents by the inventor or his assignee
2. Controller examines the file, and sees if it is novel, useful, etc
3. First Examination Report is released. Objections, if any, are pointed out, which are to be
removed in 12 months.
4. Report then is published in official gazette. Interested people can take objection to the
grant of patent.
5. Patent is notified in the Patent Journal. Patent is operational
6. Post-grant objections, if any, within 12 months.

What is not Patentable in India?

1. Inventions contra-Public Policy/ Morality
2. Invention which is frivolous, or which claims anything obvious or contrary to the well
established natural law.
3. Discovery, scientific theory, mathematical method
4. Discovery or novel applicaction of an already prevalent technology
5. Substance obtained by mere mixing of results only in the aggregation of the properties
of the components thereof
6. Arrangement/ rearrangement/ duplication of a known device
7. Agriculture/ horticulture method
8. Process for medicinal, surgical, curative, or other treatment of human being or animals
or plants
9. Invention relating to atomic energy.
10.Courts Orders- Novatis

Revocation of Patents
Pre-existing
Wrong locus standi
Infringes rights of another person
Not an invention as per act
Contravenes Indian Patent Act
Specification does not sufficiently describe the invention and method
by which it is to be performed/ or it does not disclose the best method
of performing it which was known to the applicant
Scope of application not defnied
Frauduant means adopted
Willful Misrepresentation wrt information regarding invention

Trademarks
Trademark is a recognizable sign, design, or expression whih
identifies products or services of a particular source from those of
others.
A mark
Any word, phrase, name, symbol, or device or any combination
thereof
i.

used by a person, or

ii. which a person has a bona fide intention to use in commerceto

identify and distinguish goodsfrom those manufactured or sold
by others and to indicate the source of the goods

 Anything that denotes the source of the product or service to

the consumer; and
A trademark tells a consumer that the product or service
originates from a particular source. The consumer then
expects a particular level of quality for the goods or services
that originate from that source.
A trademark symbolizes the good will of the business.
Trademark means 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

Mark
mark is defined to include a device, brand, heading,
label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colours or
any combination thereof

Things protected by trademark law

Word marks- KFC, Apple, IBM
Design marks
Composite marks
Colors
Scents
Sounds
Certification marks
Collective marks
Trade dress

Word Mark

Design Marks

Colors, Scent, Sound

Certification Marks

Collective Mark

Trade Dress
The design and appearance of the product together with all the elements making up
the overall image that serves to identify the product presented to the customer
The total look of the product or its packaging

What can be Trademarked

A mark must be inherently distinctive or have acquired secondary meaning in
order to be afforded protection.
Fanciful or Arbitrary Marks
Words that are made up and have no built-in meaning.

KODAK, EXXON
Existing words with no relation to the goods or services

APPLE for computers, TIDE for detergent

Suggestive Marks
Words which suggest some attribute or benefit from the goods or services, but do not
describe the goods themselves.

CATERPILLAR for tractors, COPPERTONE for tanning lotion, WHIRLPOOL for

washers

 Descriptive Marks
Words that describe the goods, services or a characteristic of the goods
and/or services.

Laudatory words
Annapoorna for flour
Vikko Dantmanjan for humor and oral hygene
Geographically descriptive words
State Bank of India for Indian bank services

Generic Marks
A word that defines the product or service, but not its source.

Aspirin, Escalator, Pizza, Credit Card

What Cannot be Trademarked

(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious
susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of
Improper Use) Act, 1950.
(e)A mark which exclusively has

- the shape of goods which results from the nature of the goods
themselves; or
-the shape of goods which is necessary to obtain a technical result; or
-the shape which gives substantial value to the goods

Life of TM
A TM is valid for 10 years, which can be subsequently
renewed upon paying the necessary fee.

Registration of Trade Mark

Application made to Registrar of CGPDT, in the
prescribed manner.
Describe/ explain TM
Identify graphical representation of TM
Interim acceptance & advertised in TM Journal for pregrant objections. Can use TM thereafter
Adjudication upon objection

Granting TM.

Can be used thereafter

Transmission & Assignment of TM

Assignment of a trademark occurs when the ownership of such
mark as such, is transferred from one party to another whether
along with or without the goodwill of the business.In case of a
registered Trademark, such assignment is required to be recorded
in the Register of trade marks.
In case of registered Trademarks, the Trade Mark Act 1999 also
puts certain restrictions on the assignment of a registered trade
mark wherein there exist possibilities of creating confusion in the
mind of public/users.
A trade mark is generally assigned by way of a properly executed
Trademark Assignment Agreement which pertains to the transfer
of the mark from one person or entity who is the owner to another.