GOVERNMENT OF INDIA

Introduction to Intellectual Property

Presentation by

K.M. VISWANATHAN
DEPUTY CONTROLLER OF PATENTS AND DESINGS, IPO, CHENNAI

CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS

(CGPDTM)

PATENT OFFICE

Patent Information System/ NIIPM, Nagpur

T M REGISTRY

G.I. REGISTRY Chennai

Head Office KOLKATA

DESIGN OFFICE

Head Office MUMBAI

Branch DELHI
Branch CHENNAI Branch MUMBAI

KOLKATA

DELHI

KOLKATA

CHENNAI

ABAD

Patent Office, IPR Building, GST Road, Guindy, Chennai 600 032. Phone : 22502081-84, Fax : 22502066 E-mail : chennai-patent@nic.in Website : www.ipindia.nic.in

Property [ Earlier concept ]

Movable

Immovable

Tangible property
Fetched maximum value Solely responsible for growth

Property -Present

Movable Immovable Intangible assets [IPRs] Acquired more importance

Concept

Responsible for Industrial ,economical & cultural growth IPR - an Asset -many things common with Real forms of properly
IPR gives exclusive Right to the owner

INTELLECTUAL PROPERTY
Creation of Human Intellect An infinite renewable resource Knowledge is an capital we are knowledge capitalist
Important in Todays Knowledge-Based Economy

IPR- A Key component for success in Business

IPRs - New wealth of Nations

INTELLECTUAL PROPERTY
INDUSTRIAL PROPERTY COPYRIGHT

PATENTS

DESIGNS

TRADE MARKS

OTHER INTELLECTUAL PROPERTIES

() () () Geographical Indications Layout Design of Integrated Circuits Trade secrets etc.

PATENT
GRANT FROM GOVERNMENT TO THE PATENTEE FOR LIMITED PERIOD IN EXCHANGE OF FULL DISCLOSURE OF THE INVENTION FOR MAKING, USING, SELLING THE PATENTED PRODUCT / PROCESS OR AUTHORISING OTHERS TO DO SO

PATENTS ARE GRANTED FOR INVENTION

INVENTION MEANS SUCCESSFUL TECHNICAL SOLUTION TO A PROBLEM. PROBLEM MAY BE OLD OR NEW

INVENTION AS DEFINED IN SECTION 2(i)(j) OF THE PATENTS ACT, 1970

INVENTION MEANS A NEW PRODUCT OR PROCESS INVOLVING AN INVENTIVE STEP AND CAPABLE OF INDUSTRIAL APPLICATION.

BENEFITS OF PATENTS TO APPLICANT

Patent right confers on its holder the Exclusive Right to make, use, exercise, sell or distribute an Invented Article or Process in India. Right can be shared when the Patentees are more than one. Right can be licensed or sold for commercial consideration Right to initiate Legal Proceedings against Infringement. He can commercially exploit the potential of his without fear of copying or imitation without his permission during the term of Patent.

BENEFITS OF PATENT TO THE PUBLIC

DISCLOSURE OF INVENTION ADDS TO SCIENTIFIC KNOWLEDGE INDUCES AN INVENTOR TO DISCLOSE HIS INVENTION INSTEAD OF KEEPING IT AS SECRET REASONABLE ASSURANCE FOR COMMERCIALIZATION BY EXPLOITING THE INVENTION PATENT BECOMES OPEN TO PUBLIC FOR FREE USE AFTER ITS TERM EXPIRES OR WHEN IT CEASES TO BE IN FORCE. INDUCES FOR CAPITAL INVESTMENT IN NEW LINES OF PRODUCTION STIMULATING THEREBY TECHNOLOGICAL DEVELOPMENT & ECONOMIC GROWTH. PATENT HELPS FOR EXPLORING INTO THE UNEXPLORED AND UNCOVERED AREAS. PATENTS ACT AS A STEPPING STONE FOR FURTHER RESEARCH PUBLISHED PATENT SPECIFICATIONS OFFER AN OCEAN OF SCIENTIFIC AND TECHNOLOGICAL INFORMATION.

Patenting Inventions
Important source of Scientific & Technical Knowledge Avoids duplication of research and acts as a stepping Stone For Scientific Research. You need not reinvent the wheel Helps industry to improve existing Technology to give cheaper and better products and emerge as a pre-eminent player in the market. Patent Portfolio A Measure of Companys Success and a tool for increasing negotiating power Catalyst in evolving a positive image of the enterprise Public can always have an access to the knowledge stored in patents Patent As a Tool for International Trade & Cooperation

Industrial Design
Design is for beautifying an industrial product to attract consumer public. Any new or original design adopted for ornamentation, shaping and configuration of an industrial product is eligible for Design registration. CopyRight on Design registration is governed and protected by--Designs Act of 2000

Definition of Design
Design means only the features of shape,configuration,pattern,ornament, composition of colour or line or a combination thereof applied to any article whether two dimentional or three dimentional or in both forms by any industrial process or means which in the finished article appeal to and are judged solely by the eye.Such a design is registrable provided it is new or original and not contrary to public order or morality or does not contain obscene or scandalous matter.

New or Original
New : Not Previously published or used in any country before the date of application for registration. Original : The known shape of kutub minar when applied to a cigarette holder is original and it can be registered. Originality should involve real mental activity for conception.

INDUSTRIAL DESIGN
For shape, Configuration, Ornamentation, Pattern in two or three dimensions Applied to an Article of Manufacture Must Appeal to the Eye as it is solely judged by the Eye Valid for 10 years, extendable by 5 more years Must not be previously published Design Does Not Include Principle of operation , Mode of construction , Trade Mark

Industrial Designs Industrial Designs are of great commercial Value

because shape or configuration of the article can often be a great selling point.
Industrial design: the new differential
When companies are competing at equal price and functionality, Design is the only differential that matters

Product value enhancement through

Innovation
Ranges from shape of product to packaging
Incremental impact for SMEs significant

TRADE MARK
Trade Mark A trademark (popularly known as brand name) is an identification symbol which may be a word a device a label or numeral etc., or a combination thereof used to distinguish one traders goods from other traders. Service Mark Similar to a Trade Mark applied to services. Ex : RBI, UTI, LIC, ICICI, HUDCO, DTC etc.

Legal requirements to a Trade Marks

Should be capable of being represented graphically (that is in the paper form). Should be capable of distinguishing the goods or services. Should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course or trade between the goods or services and some person having the right to use the mark with or without identity of that person.

Functions of a Trade Mark

Identifies the goods/services and its origin Guarantees its unchanged quality Advertises the goods/services Creates an image for the goods/services

How to select a Trade Mark?

Should be easy to speak, spell and remember The best trade marks are invented words or coined words Geographical name should be avoided. Words that describe the quality or services (such as best, perfect, super etc.) should be avoided. Conduct a market survey to ascertain if same/similar is used in market.

TRADE MARK
ANY MARK, SIGN, LOGO, NUMERAL, NAME & COMBINATION OF THE ABOVE USED FOR THE ARTICLES OF COMMERCE OR MANUFACTURE e. g. Coca Cola, LUX, Godrej, TVS ,Telco IDENTIFIES AND ADVERTISES THE PRODUCT CREATES AN IMAGE OF THE PRODUCT IN THE MINDS OF PEOPLE

Value of product includes intangible but substantial value due to Trade Mark Significant in JV / mergers / technology transfer agreements / licensing issues
ATTRACTS CUSTOMERS AND ACQUIRES THEIR GOODWIL

TRADE MARK Should be

DISTINCTIVE in respect of goods,

Easy to pronounce, remember, spell and write Non-confusing Preferably an Invented or coined Word (Kodak) or Original artistic creation

And
Should not belong to Marks prohibited by Law e.g. Emblem of India Should not contain obscene matter Should not hurt religious or sacred feelings of any citizen

Trade marks may be registered or unregistered Unregistered trade mark is called common law mark. The proprietor of unregistered trademark is not entitled to take any action regarding infringement of trademark Defensive Registration of well-known TM -to avoid the trade connection between different goods and those of a proprietor

VALUE Of BRAND NAMES

BRAND
Coca-cola Microsoft IBM GE NOKIA Intel DISNEY FORD

2001 Brand Value b dollars

68.95 66.07 52 75 42.40 35.04 34.67 32.59 30.09

COPYRIGHT OFFICE, INDIA

Copyright Information Officer Copyright Division Department of Secondary & Higher Education Ministry of Human Resource Development B-2/W-3, Curzon Road, Barracks Kasturba Ghandhi Marg, New Delhi 110 001. Phone : 011-23381894 Telefax : 011-23381739 E-mail : vpsrivastav.edu@nic.in Website : http://www.copyright.gov.in

C COPYRIGHT
Relates to Original
Literary, dramatic or musical work Artistic creations(paintings,photographs Cinematographic films & Sound Recording Software programme It is a Proprietary Right Comes into existence as soon as the work is created Extends to many countries Term varies according to the nature of the work (60 years from the death of author in case of literary,dramatic, musical or artistic work & 60 years after publication of a photograph,film or sound recording)

COPYRIGHT
Multiple Rights Neighbouring Rights Protects the skill & labour employed by the Author in production of his work It is immaterial whether the work is wise, foolish, accurate or inaccurate or whether it has or has not any literary merit Not given for just idea, but Copyright exists only in the material form to which the ideas are translated or expressed

CELL PHONE

Working Mechanism PATENT

Shape
Name Manual

- DESIGN
- TRADE MARK - COPY RIGHT

GEOGRAPHICAL INDICATIONS
DEFINITION
An indication which identifies goods as agricultural, natural or manufactured.
Originating or manufactured in the territory of a country or a region or locality Where a given quality, reputation or other characteristic of such goods is essentially attributable to its Geographical origin.
- Section 2(i) (e) of G.I. Act 1999.

INDICATION
Includes Any name Geographical or Figurative representation (or) Any combination of them Conveying or suggesting the Geographical Origin
- Section (2) (i) (g) of G.I. Act 1999.

GOODS
Agricultural Natural Manufactured goods Goods of Handicrafts (or) Industry Food Stuffs
- Section (2) (1) (f) of G.I. Act 1999.

Goods
I. Agricultural Tea : Darjeeling, Assam, Nilgiri & Kangra Coffee : Monsooned Coffee Rice : Basmati, Nellore, Sona masuri. Wheat : Punjab, Madhya pradesh. Fruits : Alphonso, Banganapalli. Vegetable: Bangalore Brinjals. Spice : Malabar Pepper.

Goods
II. Natural Kolar gold Illmanite and Monosite of Kerala Goa Iron ore Kota Stone Cuddappa Stone Neyveli Lignite

III. Manufactured Goods

III(a). Textiles Pochampally Ikat, Kasuti Embroidery, Mysore Silk, Bhavani Jamakalam, Kanchipuram Silk, Kota Doria, Chanderi Saree, Solapur Chaddar, Solapur Terry Towel, Kullu Shawl, Kotpad Handloom Fabric, Madurai Sungudi, Phulkari Embroidery

III(b). Handicrafts
Aranmula Kannadi. Bidari Ware. Chanapattna Toys. Malabar Hukka Tanjore Dolls Tanjore Plates Tanjore Paintings

Food Stuffs
Bikaneri Bhujiya. Andhra Pickles. Calicut Halwa. Tirunelveli Halwa. Agra Peta. Kolkatta Rasagulla

Who Can Register?

Any association of persons or producers or any organization or authority established by or under law representing the interest of producers of the concerned goods

BENEFITS OF GEOGRAPHICAL INDICATION

It confers legal protection to geographical indications in India. It prevents unauthorised use of a registered geographical indication by others. It boosts exports of Indian geographical indications by providing legal protection. It promotes economic prosperity of producers. It enables seeking legal protection in other WTO member countries.

LAYOUT-DESIGNS OF INTEGRATED CIRCUITS

Layout-designs of integrated circuits

Article 35 of the TRIPS Agreement requires Member countries to protect the layout-designs of integrated circuits in accordance with the provisions of the IPIC Treaty (the Treaty on Intellectual Property in Respect of Integrated Circuits), negotiated under the auspices of WIPO in 1989

Layout-designs of integrated circuits

An integrated circuit means a product, in its final form or an intermediate form, in which the elements, at least one of which is an active element, and some or all of the interconnections are integrally formed in and/or on a piece of material and which is intended to perform an electronic function

Layout-designs of integrated circuits

A layout-design (topography) is defined as the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture

Layout-designs of integrated circuits

The obligation to protect layout-designs applies to such layout-designs that are original in the sense that they are the result of their creators' own intellectual effort and are not commonplace among creators of layout-designs and manufacturers of integrated circuits at the time of their creation

Layout-designs of integrated circuits

The exclusive rights include the right of reproduction and the right of importation, sale and other distribution for commercial purposes

Layout-designs of integrated circuits

The Semi-Conductor Integrated Circuits LayoutDesign Act,2000 & Semiconductor Integrated Circuits Layout-Design Rules, 2001has been enacted to provide for the protection of semiconductor integrated circuits layoutdesigns and for matters connected therewith or incidental thereto. According to the Act, the term 'layout-design' means "a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit".

Layout-designs of integrated circuits

A Layout-design (i) which is not original; or (ii) which has been commercially exploited anywhere in India or in a convention country; or (iii) which is not inherently distinctive; or (iv) which is not inherently capable of being distinguishable from any other registered layoutdesign, cannot be registered as a layout-design under the Act

Layout-designs of integrated circuits

infringement of a registered layout-design occurs when any person who is not the registered proprietor of the design reproduces the layout-design in an integrated circuit or otherwise, wholly or partly. A person who imports, sells, or distributes a registered layout-design or an integrated circuit incorporating such layout-design or any article incorporating such layout-design for commercial purposes also causes infringement of such layoutdesign

Layout-designs of integrated circuits

As with other forms of intellectual property, here also only those layoutdesigns that are original, distinct and unique are granted protection
The Act is implemented by the Department of Information Technology, Ministry of Information Technology

Layout-designs of integrated circuits

Duration: A period of 10 years counted from the date of filing an application for registration or from the date of first commercial exploitation anywhere in India or in any convention country or country specified by Government of India whichever is earlier

Layout-designs of integrated circuits

Government of India has decided to establish a centralized Semiconductor Integrated Circuits Layout-Design Registry (SICLDR) for receiving IPR applications and granting Registrations to qualifying cases. The Registry will have jurisdiction all over India [Ref: Gazette No.219 dated 1 st March 2004, Notification S.O. 279(E) ].

SICLD Registry is located at the following address:

Semiconductor Integrated Circuits Layout-Design Registry Room No. 3014-3015 Department of Information Technology Electronics Niketan, 6 CGO Complex, Lodi Road New Delhi-110003.

Layout-designs of integrated circuits

For further information on SICLDR activities and Registration of IC Layout-Designs, contact: Dr. K.S. Chari, Registrar, Ph: 24301405/905 Telefax: 24361464 http://www.mit.gov.in/default.ASPX?id=146

Trade secrets
A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information used by a business to obtain an advantage over competitors or customers. In some jurisdictions, such secrets are referred to as "confidential information".

Trade secrets
A company can protect its confidential information through non-compete non-disclosure contracts with its employees (within the constraints of employment law, including only restraint that is reasonable in geographic and time scope).

Trade secrets
The law of protection of confidential information effectively allows a perpetual monopoly in secret information - it does not expire as would a patent. The lack of formal protection, however, means that a third party is not prevented from independently duplicating and using the secret information once it is discovered.

Trade secrets
Trade secrets are by definition not disclosed to the world at large. Instead, owners of trade secrets seek to keep their special knowledge out of the hands of competitors through a variety of civil and commercial means, not the least of which is the employment of nondisclosure agreements (NDA) and noncompete clauses.

Trade secrets
Under the TRIPs Agreement 'trade secrets' are referred to as 'Undisclosed information' . The Agreement defines trade secrets as "An information is a trade secret if: 1. it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; 2. has commercial value because it is secret, and 3. has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

Trade secrets
To determine whether particular information is a trade secret or not courts generally look into the following points 1. The extent to which the information is known to the outside world, 2. The extent to which the information is known to the employees, 3. What measures are taken by the company to protect the secret, 4. The value of the information to the business and to the competitors, 5. The amount of time and money spent in developing the information, and 6. The ease or difficulty with which the information can be acquired and duplicated by others. The above list however is not exhaustive and it would in the end depend on the facts of the case.

How are Trade Secrets Stolen

Simply Theft - Downloading - Copying Bribery Espionage Blackmail Hacking Electronic Intercept Surveillance - trash

Precautionary Measures
Limit and Restrict Access Passwords Confidentiality Agreements Proprietary Markings Watch what you throw in the trash

 Check out temporary hires Consultants / sub- contractors etc.

Know your Licensing Agreements

The only way the FBI can receive quality cases is through industry education/outreach, maintaining the Open Door relationship

Trade secrets
United States of America was the first country to enact a statute dealing with trade secrets. The Act is known as the Uniform Trade Secret Act (UTSA). The UTSA sought to provide some consistency in trade secret law that, until recently, was protected only by state laws. Most European and developed countries have based their statutes on the UTSA.

Key Statute
Title 18 U.S.C. 1832 Defendant stole, or without authorization of owner, obtained, destroyed, or conveyed information. Defendant knew information was proprietary Information meets the definition of a trade secret

Defendant intended to covert the trade secret to the economic benefit of someone other than the owner
Defendant knew or intended that the owner of the trade secret would be injured. Trade secret was related to a product that was produced or placed in interstate commerce

Title 18 USC 1832 Penalties

Individual Fine and / or 10 years in Prison Corporation / Organization Fine up to $5 million

Trade secrets
In India protection of trade secrets is Common Law based. However, section 27 of the Indian Contract Act provides some sort of limited remedy, it bars any person from disclosing any information which he acquires as a result of a contract.

Trade secrets
The TRIPS Agreement requires undisclosed information -- trade secrets or know-how -- to benefit from protection

Trade secrets
The Agreement also contains provisions on undisclosed test data and other data whose submission is required by governments as a condition of approving the marketing of pharmaceutical or agricultural chemical products which use new chemical entities. In such a situation the Member government concerned must protect the data against unfair commercial use.

Plant variety can be protection under Protection of Plant Varieties and Farmers Rights Act 2001.

What is plant variety

defined by the expression of the characteristics resulting from a given genotype of that plant grouping; distinguished from any other plant grouping by expression of at least one of the said characteristics; and considered as a unit with regard to its suitability for being propagated, which remains unchanged after such propagation also includes propagating material of such variety, farmers variety, extant variety, transgenic variety, and essentially derived variety.

Use of protection of plant variety

To ensure continuous supply of new varieties by safeguarding the interests of the plant breeder.

Criteria of Registration of any variety

A new variety shall be registered under this Act if it conforms to the criteria of
novelty, distinctiveness, uniformity and stability.

Novelty
if at the date of filing novel, such variety has not been sold or otherwise disposed of by or with the consent of its breeder or his successor for the purposes of exploitation of such variety (i) in India, earlier than one year; or ( i i) outside India, in the case of trees or vines earlier than six years, or in any other case, earlier than four years.

Distinct
it is clearly distinguishable by at least one essential characteristic from any other variety whose existence is a matter of common knowledge in any country at the time of filing of the application.

Uniformity
If subject to the variation that may be expected from the particular features of its propagation it is sufficiently uniform in its essential characteristics

Stable
if its essential characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle.

How to get protection for plant variety

How can apply
any person claiming to be the breeder of the variety; any farmers or group of farmers or community of farmers claiming to be the breeder of the variety; or any person authorized in the prescribed manner by a person specified above to make application on his behalf; any university or publicly funded agricultural university claiming to be the breeder of the variety

What an application should have

state the denomination assigned to such variety by the applicant; an affidavit sworn by the applicant that such variety does not contain any gene or gene sequence involving terminator technology; contain a complete passport data of the parental lines from which the variety has been derived along with the geographical location in India all such information relating to the contribution, if any, of any farmer, village community, institution or organization in breeding, evolving or developing the variety statement containing a brief of the variety bringing out its characteristics of novelty, distinctiveness, uniformity and stability be accompanied by such fees as may be prescribed; contain a declaration that the genetic material or parental material acquired for breeding, evolving or developing the variety has been lawfully acquired

Seed Deposited
The breeder is required to deposit such quantity of seeds or propagating material of the registered variety in the National Gene Bank as may be specified for reproduction purposes at breeders expense. The applicant shall deposit such fees as may be prescribed for conducting tests referred too in subsection (1) in case of essentially derived variety. the tests referred to in sub-section (1) shall be conducted in such manner and by such method as may be prescribed.

Validity of registration of plant variety

validity of certificate of registration is nine years in case of trees and vines; and six years in case of other crops It can be extended up to 18 years for Trees and Vines and 15 years for others

THANK YOU FOR YOUR ATTENTION!

QUESTIONS?