Introduction to Intellectual Property Law

Pratima Narayan Faculty in Law

SYNOPSIS
1. 2. 3. 4. 5. 6. 7.
Rationale What is Intellectual Property? Why Intellectual Property? Evolution of IP Impact of IP on global trade Basic Principles underlying IP International Conventions governing IP

Rationale
Imagination is more important than knowledge

Albert Einstein, Scientist (1879-1955)

IP is the commercial application of imaginative thought to solving a technical or artistic challenge. Exists in the form of a legal entitlement, which generally enables its holder to exercise exclusive rights of use in relation to the subject matter of the IP.

Rationale
Owner of IP can control and be rewarded for its use
Encourages further innovation and creativity.

What makes the IP different is not the product itself, but the special idea behind it, the way the idea is expressed, and the distinctive way it is named and described.

Rationale
Creativity helps create sustainable and
competitive businesses locally and internationally Prevents infringement and free riding IP based industries contribute significantly to national economies Gaining significant importance in the digital age

What is Intellectual Property?

Most valued intangible asset
Often called Industrial Property Exists in the form of an idea, innovation, technology, design, artwork, music or literature. IP refers to the creation of mind inventions, literary and artistic work, symbols, names, images and designs used in commercial world.

Who manages Intellectual Property System?

Public sectors ( WIPO, Government IP

offices, Courts) Private sectors ( Industry associations, IP based industries, lawyers) Academic (Universities) R&D institutions Individuals

Why Intellectual Property?

A strong IP portfolio helps in capital raising process Provides incentives to technological invention/creativity Fosters economic growth Set barriers to competitors

Why Intellectual Property?

Path for new technology development
Provides consumers with new products Boost for R&D initiatives in Science & Technology Improves the quality of human life Attracts investment that will create new jobs and opportunities

Evolution of IP
Renaissance northern Italy is thought to be the cradle of the IP system A Venetian Law of 1474 made the first systematic attempt to protect inventions by a form of patent Invention of printing press by Johannes Gutenberg around 1450, contributed to the birth of the first copyright system in the world.

Evolution of IP.Contd. End of the 19th century - large-scale industrialization triggered new ways of production New ideals of industrialism, emergence of stronger centralized governments led many countries to establish their first modern IP laws. International IP system started as a result of two fundamental treaties,the Paris Convention for the Protection of Industrial Property in 1883 and the Berne Convention for the Protection of Literary and Artistic Works in 1886.

Impact of IP on global trade

Enormous techno development in transportation and communications has led to globalization of trade and commerce. Intellectual property is transnational in character. Intellectual property can travel effortlessly from one country to another.

Impact of IP on global trade.Contd.

Piracy of IP has become international in character. International character of IP is recognized in various international conventions for the protection of such property. Information age has given new dimension to IP law

Subject matter of Intellectual Property

Patent Trademark Copyright Intellectual Property Industrial Design Geographical Indication
Semiconductor and Integrated Circuit Design

Protection of New Plant Varieties Trade Secret, Confidential Information and Know-how

Basic Principles underlying IP

Patent: - exclusive right granted to the owner/patentee to exclude others from making, using, selling or offering to sell the claimed invention during the patent term - novelty, inventive step and utility - granted to a new product or process or even an improvement of an existing product or process

Basic Principles underlying IP .Contd.

Trademark: - Protects a mark or logo used to identify the source of

goods or services in commerce. - Usually protected in the form of a word/name, logo, design, phrase/slogan, shape, character, sound, colour, fragrance or even a piece of music.

Basic Principles underlying IP .Contd.

- Trademark includes service mark, collective

mark and even certification marks. - Well-known examples of trademark are Coco-cola, IBM logo, MGM Pictures (the lion roar)

Basic Principles underlying IP .Contd.

Copyright: - protects the work of authorship and artistry from unauthorized use. - includes work relating to literary, artistic, musical, dramatic works, cinematography and sound recording. - Copyright Comes in to existence when the concept in mind is put in to some tangible form.

Basic Principles underlying IP .Contd.

Industrial Designs:
- Identifies the aesthetic or ornamental character of the product. - Technical features or functional characteristics not considered.

Basic Principles underlying IP .Contd.

- Object is to attract consumers attention. - Design must be new and original. - Exists in the form of lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

Basic Principles underlying IP .Contd.

Semiconductor Integrated Circuit Layout designs:

- Provides protection for semiconductor chips
and layout designs
- Semiconductor chips form an integral part of computer software - Sale of semiconductor chips is a big business fetching billions of dollars worldwide

Basic Principles underlying IP .Contd.

- Protects from reproducing, importing, selling

and distributing the Integrated Circuit layout design for commercial purposes.

- Criteria for Protection:

a. original b. Commercially exploitable c. distinctive

Basic Principles underlying IP .Contd.

Trade Secret: - Protection is available for secrets used in business - the

method of making a product or the ingredients which go into it, customer or prospect lists, any fact which, if known, would give competition an advantage. - Common examples of trade secrets are the inner workings (algorithms, source code) of computer programs or formula for preparation of a soft drink.

Basic Principles underlying IP .Contd.

Protection of Plant Variety:

- Protects breeders of new variety of plant/crop either in person or through any designates. The rights under this act include the right to produce, sell, market, directly or export a variety.

Protection of Plant VarietyContd.

- Criteria for Protection:

a. b. c. d. e. Novelty Distinctiveness Uniformity Stability Appropriate denomination

Is Registration of IPR necessary?

NO
In case of: - Trademark - Copyright

YES
In case of: - Patents - Industrial Design - Geographical Indication - Semi-conductor - Designs

Benefits of registration of IPR

Monopoly for the Specified period In case of Litigation Onus of Proof Shifts on the opposite Party Prima Facie presumption is raised in favour of the Registration Holder by courts

Jurisdiction of Court for cases against violation of IPR

In India, the jurisdiction for the purposes of filing a civil suit depends upon following facts, and subject to the following conditions:- Where the cause of action has accrued - Where the part of the cause of action has accrued - Where the properties / violations are taking place - Where the defendant/s reside or work for gain

In brief, the jurisdiction for the purposes of filing a case would depend upon the activities of the defendants / their place of business

International Conventions Relating to IPR

1.Paris Convention for Protection of Industrial Property (1883)

- Oldest Convention relating to IP - Introduced patents, industrial designs, trademarks, service marks and protection from unfair competition under the name Industrial Property

Paris Convention.
- Provides for independence of patents(Art. 3)
patents applied by nationals of the union is independent of patents obtained for the same invention in other countries irrespective of whether they are members to the Union or not.

Paris Convention
- Introduced the concept of Right of Priority
(Art.4)

an applicant get a priority of 12 months (in case of patents and utility model) and 6 months(in case of industrial designs and trademarks)after filing an application in one country of the Union to file the application in other countries.

International Conventions .Contd.

2. Berne Convention for Protection of Literary and Artistic Works (1886) - Objective was to bring about uniformity among contracting states in the areas of recognition of copyright work, duration of protection, rights conferred on the owner of copyright work, procedural formalities etc. relating to copyright work. - Piracy was one of the greatest perils at the time of the Convention.

Berne Convention.
- Recognizes the moral rights of the author, which include - right of publication, right of paternity and right to integrity. - The Convention also recognized other rights of the author such as:
-

translation rights right to reproduction broadcasting rights right to adaptation right to sound recording and cinematography rights.

International ConventionsContd.

3.Universal Copyright Convention, 1971 - Objective - to facilitate wider dissemination of literary, artistic and scientific work. - Convention lays down uniform guidelines for the protection of copyrights throughout its contracting states. - Principle of national treatment is provided in the Convention under Article II of the Convention.

Universal Copyright Convention.

- Apart from the basic rights, the
Convention also recognizes the economic rights of the copyright owner in the form of reproduction rights, public performance and broadcasting rights. - India is a signatory to both Berne Convention and Universal Copyright Convention.

International Conventions.Contd.

4. International Convention For Protection Of Performers, Producers Of Phonograms And Broadcasting Organization, 1961 (The Rome Convention): - First international convention designed to protect the rights of performers, producers of phonograms and broadcasting organizations. - The Convention, for the first time defined the terms actor, singer, musician, dancers and persons who play in or perform literary and artistic works

International Conventions.Contd.
5. Madrid Agreement Concerning International Registration of Marks, 1989: - Objective - to facilitate international registration for trademarks and service marks and to ease subsequent management of these marks. - - The International Bureau of WIPO governs the entire system under the Madrid Agreement and International registrations are published and maintained under the WIPO Gazette of International Marks

Madrid Agreement.
- Application to the International Bureau is made after filing a basic application at the trademark office in the contracting country where the applicant resides. - Validity of International registration depends on the domestic laws of the contracting state - Registration depends on criteria such as descriptive character, public order and morality of each state.

International Conventions.Contd.

6. TRIPS Agreement (1994): - The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) came into effect on 1st January 1995 - administered by the World Trade Organization (WTO) - sets down minimum standards for many forms of Intellectual Property regulation

TRIPS Agreement.
- Contains laws relating to:
-

copyrights (including the rights of performers, producers of sound recordings and broadcasting organizations) geographical indications (including appellation of origin) industrial designs integrated circuit layout designs Patents monopolies for developers of new plant varieties trade marks

- trade dress and undisclosed or confidential information.

TRIPS Agreement.
- Main elements of protection include
a. subject matter to be protected b. rights conferred and permissible exceptions to those rights c. minimum duration of protection d. procedures and remedies for enforcement of IP rights

- Disputes between members is settled in accordance with the dispute settlement procedures set up under TRIPS

WTO Related Treaties

- WIPO administers 24 treaties in relation to various IP issues a. Patent Co-operation Treaty:
- The Patent Cooperative Treaty (PCT) provides a simplified procedure for an inventor or applicant to apply and obtain patents in more than two countries. - It also promotes and facilitates exchange of technical information contained in patent documents to industries and workers in the relevant field.

WIPO Related Treaties

b. WIPO Performances and Phonogram Treaty (1996): - Deals with IP protection for performers
(which include actors, singers, musicians etc.) and producers of phonograms. - The treaty recognizes both economic rights and moral rights to these beneficiaries.

WIPO Related Treaties

c. WIPO Copyright Treaty, 1996: -Two important subject matters recognized under this treaty are computer programmes and compilation of data ( or data base). - WCT recognizes three rights of the author in relation to the subject matter as:
a. distribution rights b. right to authorize commercial rental of the work c. right of communication of work to the public.

WIPO Related Treaties

d. Patent Law Treaty: The treaty is aimed at harmonizing and to streamline formal procedures in respect of national and regional patent applications and patents, and thus make such procedures userfriendly.

WIPO Related Treaties

e. Trademark Law Treaty: The Trademark Law Treaty aims to approximate and streamline national and regional trademark registration procedures. This is achieved through simplification and harmonization of the procedures and easy administration of trademark registrations in multiple jurisdictions.