3. IP Evolution
Property Right
INTELLECT – PROPERTY – RIGHT
Idea Expression COPYRIGHT
Idea Innovation Invention
PATENT
Idea Quality + Identity TRADEMARK
TRADE SECRETS
Idea Appearance DESIGN
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4. What is Intellectual Property?
Definition by WIPO
Intellectual property (IP) refers to
creations of the mind: inventions,
literary and artistic works, and
symbols,
names,
images,
designs used in commerce.
4
and
5. International Convention for IP
Paris Convention for Protection of Industrial Property
1967 ( 1989)
Berne Convention for the Protection of Literary and
Artistic Works 1971 ( 1990)
Trade-related aspects of Intellectual Property
Agreement 1994 ( 1995)
WCT ( digital agenda)
PCT 2004
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6. Creativity (Creation Of The Mind)
Creativity is the ability to
– Think / come up with new idea
– Design new “inventions”
– Produce “works of art”
– Solve problems in new ways, or
develop a new idea based on an
“original” knowledge.
– Novel or unconventional approach.
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10. Industrial Property Rights
The right to prevent others from
•using
•manufacturing
•distributing
products
processes
applications
trade names
geographical names
ideas
designs
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12. PATENT
Validity of
protection
TRADE MARK
when and where when and where
registered
registered
products
processes
applications
names, logo,
shape, symbol,
color, domain
novelty, level of
inventiveness
no confusion,
generic name
Website
www.epo.org
http://oami.euro
pa.eu
Duration
20 years,
not renewable
6-10 years,
renewable
Refers to
Criteria
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14. NATIONAL
INTERNATIONAL
Each country where you seek
protection
WIPO
system for 77 countries
National fees for each country
One fee
WHERE
FEES
LANGUA
GE
WHEN
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Translation into national languages One language
May be convenient if limited
number of countries or no
alternative
If protection in more
countries is needed.
15. Not allowed / not valid
• Violation of public order and morale
• Copy of earlier registration (bad faith)
• Withdrawal from register
• Not in use ( 5 years)
• Evolution into generic name
• Formica, cellophane, compact disc
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16. In a nut shell
Patents
• product, process, applications
• Registration :difficult to prove “novelty”
• limited duration
Trade mark
• name, symbol, shape
• Registration : do not create confusion
• renewable
IPR
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: only protection when
registered (excl. copyrights)
17. Paris Convention
Protection for industrial property
Trade mark
Patent
Unfair competition
Governed by domestic legislation
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20. TRIPS 1994 (1995)
Additional to Paris and Berne.
Minimum requirement.
Most favoured nation treatment.
Strong enforcement procedure.
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21. Patent Cooperation Treaty
Making it easier to make paten application
Designated country.
International phase to national phase
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22. Basic principle of international convention
Laying down the minimum requirement for the
national legislation.
“members may but shall not be obliged to implement
more extensive protection in their law than is required
by the agreement. TRIPS 1(1)
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23. The principle of national treatment
“Each members shall accord to the nationals of other
Members treatment no less favourable than it accord
to its own national”
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25. The Laws For Intellectual Property Protection
Copyright Act 1987
Trademarks Act 1976
Patent Act 1983
Industrial Design Act 1996
Geographical Indications Act 2000
Law of Tort
-passing-off
Confidential information
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26. Protection for Copyright
Protection given by law for a term of years to the
composer, author etc… to make copies of their work..
Work include literary, artistic, musical,films, sound
recordings,broadcasts.
Commercial and moral rights.
No registration provision.
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27. Protection for trade marks
Commercial exploitation of a product
To identify the product, giving it a name
“mark” includes a device, brand, heading, label, ticket,
name, signature,word, letter, numeral or any
combination.
Does not include sound or smell
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28. Trade marks (cont.)
Can either be registered or not registered
Advantages of registered trade marks
Application can be made for goods and services
Perform certain function such as indication of
quality,identifying a trade connection
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29. Choosing the correct mark
Compare the trade mark “Dove” to using the mark
“crows”.
Would the “Frog restaurant ” be acceptable?
Would Marksman and Weekend Sex be acceptable?
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30. Protection for patent
Basic idea of granting a patent
“ the applicant applied to the government for the right
of patent and in return for the monopoly given he
must disclose everything about the invention in the
patent document” ( the description)
Duration 20 years.
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31. Patent (cont.)
Patent for invention
Patent can be applied for a product or a process.
Patentable invention must be new,involves an
inventive step and industrially applicable
Priority date- first to file
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32. The various route for application
The national route
The Paris route
The PCT route
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33. Protection for industrial designs
Protection for industrial designs that are new or original
Design are feature of shape, configuration, pattern or
ornament
The design must be applied to an article
The design must be applied by an industrial process.
Appeal to the eye.
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35. Protection for geographical indications
Meaning “ an indication which identifies any goods
as originating in a country or territory, or a region or
locality where a given quality, reputation or other
characteristic of the goods is essentially attributable
to their geographical origin”
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36. Protection for geographical indication
Product must come from a particular
geographical territory
Uses a name link to the particular geographical
nature of the territory
Such as labu sayung from the sayung Perak,
Batik Trengganu,batik Kelantan etc.
To stop others from using
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37. Examples of GI
Swiss made
Swiss chocolates
Sarawak pepper
Salted egg
Sweet tamarind
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40. TRIPS
The TRIPS (Trade Related Aspects
of Intellectual Property Rights)
Agreement came into being with
the establishment of the WTO
(World
Trade
Organization)
effective from 1st January, 1995.
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41. WIPO
• UN organization dedicated to
promoting the use and protection of
works of the human spirit.
• Headquarters in Geneva, Switzerland.
• 185 nations as member states.
• Manages all IPs.
• Training through Academy and
Seminars
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42. What is a Patent ?
A patent is a protection given to a patentee
for an invention for a limited term by the
government for disclosing the invention
Right to exclude others from using your
invention.
Owner has a qualified right to use the
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invention.
43. What is a Patent?
A Conditional grant
Balance of Rights and Obligations
Subject to other laws of land
Granted to owner of invention/
assignee
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45. Patent - Patentability
An invention can be patented if it is
• NOVEL: Must be New,
Must DISTINGUISH from “State of the Art”
(PRIOR ART)
• Must have INVENTIVE STEP
Non-obvious to a person “Skilled in the
Art”
• Must have INDUSTRIAL APPLICATION
Must be Useful
Must have Utility
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• Must not be covered by Sec. 3 and Sec. 4.
46. Non-Obvious
THE DIFFERENCES BETWEEN THE
CLAIMED INVENTION and the PRIOR
ART are such that the subject matter as a
whole WOULD NOT HAVE BEEN
OBVIOUS at the time the invention was
made to a PERSON SKILLED IN THE ART,
to which the subject matter pertains.
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47. Inventive Step
Section 2(1)(ja):
"inventive step" means a feature of
an invention that involves technical
advance as compared to the existing
knowledge
significance
or
having
or
both
economic
and
that
makes the invention not obvious to
a person skilled in the art.
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48. Utility / Industrial Application
• Be Useful
• Must work / be workable
• At least one recognized,
verifiable and practical end-use
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49. Patentability Filter
Prior use/ prior publication/ prior disclosure
Industrial applicability
Novelty
Non-obviousness: inventiveness
Sec. 3 - Not patentable
Written description / enablement
requirements
Application/ specification/ claims
Patent prosecution
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Maintenance / Defense after grant
50. Patents Act, 1970
What is not Patentable
(a) Frivolous, Contrary To Natural Laws
(b) Contrary To Public Order Or Morality,
Prejudice To Human, Animal Or Plant
Life Or Health Or To The Environment;
(c) Mere Discovery Of Scientific Principle,
Abstract Theory, Living Thing Or Nonliving Substances
(d) Mere Discovery Of New Form, New
Property, New Use Of A Known
Process,
Machine Or Apparatus
(EFFICACY)
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51. Patents Act, 1970
What is not Patentable
(e) Mere Admixture (SYNERGY)
(f) Mere Arrangement, Re-arrangement,
Duplication of known devices.
(g) Omitted (Testing Methods)
(h) Method Of Agriculture Or Horticulture;
(i) Method Of Treatment.
(j) Plants, Animals, Including Seeds
Varieties, Species, Biological Processes.
Exception: Microorganisms
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52. Patents Act, 1970
What is not Patentable
(k) Mathematical Or Business Method Or A
Computer Program Per Se Or
Algorithms;
(l) Literary, Dramatic, Musical Or Artistic
Work, Other Aesthetic Work
(m) Mere Scheme, Rule, Method Of
Performing Mental Act, Playing Game;
(n) A Presentation Of Information;
(o) Topography Of Integrated Circuits;
(p) Traditional Knowledge
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54. Trademarks
Must be graphically represented
Must be distinctive / distinguishable
Must not be descriptive
Must not be deceptively similar to
known /well-known marks /Generics
• ORS: ORS-L, ORZ
• Cefixime – ZIFI, CEFI, Cefixin
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Avoid –
Geographical Indications / Deities
National Leaders / Heroes / Symbols /
Laudatory words
56. Copyrights & Related Rights
Copyright
is
a
legal
term describing rights
given to creators for
their
literary
artistic works.
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and
57. Copyright - Extension
IT Revolution !
Recordings
Broadcastings
Audio visual works
Computer programs
Digital databases
Internet/web
Cable and Satellite T.V.
Indian Copyright Amendment Bill
Passed by Rajya Sabha on 17th May, 2012
Passed by Lok Sabha on 22nd May, 2012
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58. IPR And Copyright
Quoting Medical References from Journals and Books
“Copyright” / “All rights reserved”
“Do not use, reprint, reproduce or distribute without prior permission”
Avoid verbatim reproduction (Plagiarism) Likely to cause Copyright violations.
Always acknowledge / obtain prior
permission.
Abstract / Summary may be written in one’s
own language / quote the source.
Copyright violations could lead to criminal/civil suits
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Could lead to imprisonment too !
59. Therapeutic Goods Legislation
Amendment (Copyright), 2011
Australia
To block frivolous
Copyright
infringement suits in
Pharma / Medicine
product inserts.
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60. Be Aware / Beware of the Web /
Domain in the new global regime.
× Use of internet for selling / marketing
× Downloading from Internet (except for
personal use)
MUST ALWAYS HONOUR IPRs
(Copyrights, Patents, Trademarks etc.)
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61. G.I.
(Geographical Indications)
Name or sign used on
goods originating from
specific geographical origin
or location and possess
qualities, reputation or
characteristics that are
essentially attributable to
that place of origin.
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62. Geographical Indication
India, as a member of the World Trade Organization
(WTO), enacted the Geographical Indications of Goods
(Registration & Protection) Act, 1999 has come into
force with effect from 15th September 2003.
Geographical Indications of Goods
(Registration & Protection) Act, 1999
Geographical Indications of Goods
(Registration & Protection) Rules, 2002
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63. Industrial Designs
Ornamental or Aesthetic aspect of
an article.
3-D or 2-D features such as shape or
surface, patterns, lines or color.
Industrial designs are applied to
products of industry and handicraft,
technical and medical instruments,
watches, jewelry, house wares,
electrical appliances, luxury items,
vehicles, architectural structures,
textile designs.
Does not protect any technical
features of the article to which it is
applied to.
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Khale Sangeeta
64. Designs
Indian Designs Act, 2000 & Rule, 2001
(amended upto 2008).
To promote and protect the design element of
industrial production.
Aimed to enact a detailed classification of
design to conform to the international system
and
To take care of the proliferation of design
related activities in various fields.
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66. Organization Structure – IP Offices
Ministry of Industry & Commerce
Office of the Controller
General of Patents, Designs
And Trademarks
Designs wing
(Kolkatta)
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Patent office
( Kolkatta, Delhi,
Mumbai, Chennai)
Trade Marks Registry
( Kolkatta, Delhi,
Mumbai, Ahmedabad
Chennai)
Geographical
Indications
Registry
( Chennai)
Patent
Information
Service
( Nagpur)
