Intellecutual property rights in India

Intellectual
Property Rights
N Prashant Kumar Nair,
(Advocate)
~Corpus Legum

Types of Intellectual
Property
• Copyright
• Trademark
• Patent
• Industrial Design
• Geographical Indications
• Trade Secrets
• Layout Design for Integrated Circuits
• Protection of New Plant Variety

Copyright
The Copyright Act, 1957
Key Points
• Meaning: Copyright is a bundle of rights that is exclusively available
with respect to the owned work to the creator.
• Infringement has criminal, civil and administrative remedies
remedies
• Registration not mandatory but evidentiary
• Copyright in expression not in idea
• Copyright is a viable option for bio-technology in addition to patents

Copyright
Section 13. Works in which copyright subsists-
(1) Subject to the provisions of this section and the other provisions of this Act,
copyright shall subsist throughout India in the following classes of works, that is to
say,—
(a) original literary, dramatic, musical and artistic works;
(b) cinematograph films; and
(c) sound recording
(2) Copyright shall not subsist in any work specified in sub-section (1), other than
a work to which the provisions of section 40 or section 41 apply, unless,—
(i) in the case of a published work, the work is first published in India, or where the
work is first published outside India, the author is at the date of such publication, or
in a case where the author was dead at that date, was at the time of his death, a
citizen of India;
(ii) in the case of an unpublished work other than work of architecture, the author is
at the date of the making of the work a citizen of India or domiciled in India; and
(iii) in the case of work of architecture, the work is located in India.

Copyright
Section 14. Meaning of copyright-
For the purposes of this Act, “copyright” means the exclusive right subject to the
provisions of this Act, to do or authorise the doing of any of the following acts in
respect of a work or any substantial part thereof, namely:—
(a) in the case of a literary, dramatic or musical work, not being a computer
programme,—
(i) to reproduce the work in any material form including the storing of it in any
medium by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;
(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts
specified in relation to the work in sub-clauses (i) to (vi);

Copyright
For the purposes of this Act, “copyright” means the exclusive
right subject to the provisions of this Act, to do or authorise the
doing of any of the following acts in respect of a work or any
substantial part thereof, namely:—
(b) in the case of a computer programme,—
(i) to do any of the acts specified in clause (a);
(ii) to sell or give on commercial rental or offer for sale or for
commercial rental any copy of the computer programme:
Provided that such commercial rental does not apply in respect of
computer programmes where the programme itself is not the
essential object of the rental.

Copyright
(c) in the case of an artistic work,—
(i) to reproduce the work in any material form including depiction in three
dimensions of a two dimensional work or in two dimensions of a three dimensional
work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation
to the work in sub-clauses (i) to (iv);

Copyright
(d) in the case of a cinematograph film,—
(i) to make a copy of the film including a photograph of any image forming part
thereof;
(ii) to sell or give on hire or offer for sale or hire, any copy of the film, regardless of
whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the film to the public;
(e) in the case of a sound recording,—
(i) to make any other sound recording embodying it;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording,
regardless of whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the sound recording to the public.

Registration
• Official website: Copyright.gov.in
• Filling: After filing in the prescribed manner 30 days time
is allowed for any objection
• Objection
• Examination
• Registration
• Time taken for registration is minimum 3 months
• In case of refusal to register by the Registrar Appeal can
be filed before Copyright Board.

Transfer of Copyright
• Assignment
• License

Term of Copyright
• In the case of literary, dramatic, musical or artistic works, 60
years from the year following the death of the author.
• In the case of cinematograph films, sound recordings,
photographs, posthumous publications, anonymous and
pseudonymous publications, works of government and public
undertakings and works of international organisations, 60
years from the date of publication.
• In case of Broadcast reproduction right - 25 years from the
beginning of the calendar year next following the year in
which the broadcast is made.
• In case of Performers right - 25 years from the beginning of
the calendar year next following the year in which the
performance is made.

Civil Remedies
Civil
Remedies
Injunction Damages Accounts Costs

Criminal Remedies
Criminal
Remedies
Cognizable
Offences
Imprisonment
up to 3 years
Fine up to
200,000 INR

Criminal Remedies
• Copyright Act 1957, s.64 empowers the Police (any
officer not below the rank of sub-inspector) to seize
infringing copies without warrant
• Police Raids (Power of search, seizure & arrest
without a warrant)
• Fines (min. 50,000-200,000 INR)
• Imprisonment (6 months to 3 years)

CONTROLLER GENERAL OF PATENTS, DESIGNS
AND TRADEMARKS
(CGPDTM)
T M REGISTRY
DESIGN OFFICE
G.I. REGISTRY
Head Office
KOLKATA
Branch
DELHI
Branch
CHENNAI
Branch
MUMBAI
Head Office
MUMBAI
DELHI
KOLKATA
CHENNAI
A’BAD
KOLKATA
PATENT OFFICE
CHENNAI

Official website
For Patent, Design, Trademark,
Geographical Indication
www.ipindia.nic.in

Trademark
The Trade Marks Act, 1999
Section 2(zb) “trade mark” means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person from
choose of others and may include shape of goods, their
packaging and combination of colours

Functions of Trademark
• It identifies the goods / or services and its origin;
• It guarantees its unchanged quality;
• It advertises the goods/services;
• It creates an image for the goods/ services.

Key features of
Trademark
• Trademark must be Distinctive
• Trademark must be used in Commerce

Patent
The Patents Act, 1970
• Sec.2(1)(m) – “patent” means a patent for any invention
granted under this Act.
• Sec.2(1)(m) – “Invention” means a new product or
process involving an inventive step and capable of
industrial application.

Concept of Patent
Patent is a grant for an invention by the Government to the
inventor in exchange for full disclosure of the invention. A patent
is an exclusive right granted by law to applicants / assignees to
make use of and exploit their inventions for a limited period of
time. The patent holder has the legal right to exclude others from
commercially exploiting his invention for the duration of this
period. In return for exclusive rights, the applicant is obliged to
disclose the invention to the public in a manner that enables
others, skilled in the art, to replicate the invention. The patent
system is designed to balance the interests of applicants /
assignees (exclusive rights) and the interests of society
(disclosure of invention).

Patent Subject
Invention must
• relates to a Process or Product or both
• be new (Novel)
• involves an inventive step
• be Capable of industrial application
• not fall under Section 3 and 4

Application for grant of Patent
PUBLICATION OF APPLICATION
REQUEST FOR EXAMINATION
GRANT OF PATENT
3rd Party Representation
Revocation/Amendment
OPPOSITION
• PROMPTLY AFTER 18 MONTHS FROM P.D.
• WITHIN 48 MONTHS FROM F.D.
• ALL OBJECTIONS TO BE COMPLIED WITHIN 12
MONTHS
• IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS
• WITHIN 12 MONTHS
FILING OF APPLICATION
PROVNL. / COMPLETE
Decision of
Controller
EXAMINATION-ISSUE OF FER
Appeal
Appellate Board

Renewal Fee
• To be paid within 3+6 months from date of recording in
the register [sec 142 (4) ]
• No fee for 1st and 2nd year
• Renewal fee, on yearly basis, is required to be paid for
3rd to 20th for keeping the patent in force
• Delay upto six months from due date permissible on
payment of fee for extension of time
• Patent lapses if renewal fee is not paid within the
prescribed period

Right granted
• Where a patent covers a product, the grant of patent gives the
patentee the exclusive right to prevent others from performing,
without authorisation, the act of making, using, offering for
sale, selling or importing that product for the above purpose.
• Where a patent covers a process, the patentee has the exclusive
right to exclude others from performing, without his
authorisation, the act of using that process, using and offering
for sale, selling or importing for those purposes, the product
obtained directly by that process in India.
• Where a patent is granted to two or more persons, each of
those persons will be entitled to an equal undivided share in
the patent unless there is an agreement to the contrary.

Industrial Design
The Designs Act, 2000
Section 2(d) “design” means only 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 does not include any mode or principle of
construction or anything which is in substance a mere mechanical
device, and does not include any trade mark as defined in clause
(v) of sub-section (1) of section 2 of the Trade and Merchandise
Marks Act, 1958 or property mark as defined in section 479 of
the Indian Penal Code or any artistic work as defined in clause
(c) of section 2 of the Copyright Act, 1957

Need for Registration
The registration of a design confers upon the registered
proprietor the exclusive right to apply a design to the article
in the class in which the design has been registered. A
registered proprietor of the design is entitled to a better
protection of his intellectual property. He can sue for
infringement, if his right is infringed by any person. He can
license or sell his design as legal property for a
consideration or royalty.

Term
• Registration initially confers this right for ten years
from the date of registration.
• It is renewable for a further period of five years.
• If the fee for extension is not paid for the further period
of registration within the period of initial registration, this
right will cease.
• There is provision for the restoration of a lapsed design if
the application for restoration is filed within one year
from the date of cessation in the prescribed manner.

Essential requirements
for registration of Design
• Should be new or original
• Not be disclosed to the public anywhere by publication in
tangible form or by use or in any other way prior to the filling
date, or where applicable, the priority date of the application
for registration.
• Be significantly distinguishable from known Designs or
combination of known designs.
• Not comprise or contain scandalous or obscene matter.
• Not be a mere mechanical contrivance.
• Be applied to an article and should appeal to the eye.
• Not be contrary to public order or morality.

DESIGN Vs. COPYRIGHT
DESIGN COPYRIGHT
Complete monopoly Only protects against
copying
Need to register to
claim protection
Subsists inherently
Has to be NOVEL No requirement for novelty
Maximum 15 years Life of author + 50 years
Only in respect of
goods registered for
Is not goods specific

Geographical Indication
The Geographical Indications of Goods
(Registration and Protection) Act, 1999
Section 2(e) “geographical indication”, in relation to goods, means an
indication which identifies such goods 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 characteristic of such goods is
essentially attributable to its geographical origin and in case where such
goods are manufactured goods one of the activities of either the
production or of processing or preparation of the goods concerned takes
place in such territory, region or locality, as the case may be.
Explanation:- For the purposes of this clause, any name which is not the
name of a country, region or locality of that country shall also be
considered as the geographical indication if it relates to a specific
geographical area and is used upon or in relation to particular goods
originating from that country, region or locality, as the case may be;

Examples
• Solapur Chaddar
• Solapur Terry Towel
• Basmati Rice
• Darjeeling Tea
• Kanchipuram Silk Saree
• Alphanso Mango
• Nagpur Orange

Registration Need & Term
Need: The registration of a geographical indication is not
compulsory; however, it offers better legal protection to
facilitate an action for infringement. The registered
proprietor and authorized users can initiate infringement
actions. The authorized users can exercise the exclusive
right to use the geographical indication.
Term: The registration of a geographical indication is valid
for a period of 10 years. It can be renewed from time to
time for further period of 10 years each. If a registered
geographical indication is not renewed it is liable to be
removed from the register.

Registration and Filing
1. Preliminary Examination
On receipt of the application, the Examiner/Authorized
Officer scrutinizes the application and the accompanying
Statement of Case as to whether it meets the requirements
of the GI Act and the Rules.

2. Communication of deficiencies found in preliminary examination
• Deficiencies if any found through a preliminary examination are
communicated by the Examiner/Authorized Officer to the Applicant
or his Agent.
• If the Applicant fails to remedy the deficiencies within one month of
the notification, the Application may be treated as abandoned.
• However, the Applicant may file a request of extension of time of
One month by filing the appropriate form and by paying the
prescribed fee.
• When the deficiencies are complied the Examiner/AuthorizedOfficer
shall submit the Application to the Registrar of GI for his
consideration.

• 3. Examination of Application
• Upon compliance of the deficiencies, the Registrar ordinarily
constitutes a Consultative Group of not more than seven
representatives to ascertain the correctness of the particulars
furnished in the Statement of Case;
• The Applicant will be invited to make a detailed presentation before
the Consultative Group to explain the Statement of Case;
• The Consultative Group ascertains the correctness of the particulars
of Statement of Case and recommends for amendments, corrections
or furnishing of further documents;
• The Group may visit the production area in order to further assess the
correctness of the Statement of Case;
• The proceeding before the Consultative group will be ordinarily
completed within three months from the date of constitution;

• 3. Examination of Application
• There upon the Registrar shall consider the Application on merits and based on
observation / comments of Consultative Group, issues an Examination Report;
• The Examination Report may contain objections to the acceptance of the
Application or proposal to accept it subject to such conditions, amendments,
modification or limitations as the Register may think fit to impose;
• The Applicant shall within two months of the date of communication of
Examination Report comply with proposals mentioned in the Examination Report
or submit his observation or apply for a Hearing;
• If the applicant fails to amend his application or submit his observations in
writing or fails to apply for a hearing or fails to attend the hearing, the application
shall be dismissed;
• If the Application is found to be in order, the Registrar accepts the Application
and publishes it in the ensuing GI Journal.

4. Acceptance
The Registrar may accept the GI Application absolutely or
subject to such amendments, modification, conditions or
limitations as he thinks fit. The objections and/or proposal
for conditional acceptance are communicated to the
applicant.
5. Advertisement in GI Journal
The Registrar of GI publishes all the GI Applications and
authorized user applications in the Official GI Journal.

Trade Secrets
Indian Contract Act, 1872
• It may be confidential business information that provides an
enterprise a competitive edge may be considered a trade secret.
Usually these are manufacturing or industrial secrets and commercial
secrets. These include sales methods, distribution methods, consumer
profiles, advertising strategies, lists of suppliers and clients, and
manufacturing processes. Contrary to patents, trade secrets are
protected without registration.
• A trade secret can be protected for an unlimited period of time but a
substantial element of secrecy must exist, so that, except by the use
of improper means, there would be difficulty in acquiring the
information. Considering the vast availability of traditional
knowledge in the country the protection under this will be very
crucial in reaping benefits from such type of knowledge. The Trades
secret, traditional knowledge are also interlinked / associated with the
geographical indications.

Layout Design for Integrated Circuits
The Semiconductors Integrated Circuits Layout-
Design Act, 2000
mit.gov.in

Importance of Integrated
Circuit Design
• Semiconductor Integrated Circuit means 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.
• The layout-design of a semiconductor integrated circuit means a layout of
transistors and other circuitry elements and includes lead wires connecting such
elements and expressed in any manner in semiconductor integrated circuits.
• The layout of transistors on the semiconductor integrated circuit or topography of
transistors on the integrated circuit determines the size of the integrated circuit as
well as its processing power. That is why the layout design of transistors
constitutes such an important and unique form of intellectual property
fundamentally different from other forms of intellectual property like copyrights,
patents, trademarks and industrial designs.

Term of registration
• 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.

Registration Procedure
1. Filing of application by the creator of the layout-design at the SICLD Registry.
2. The Registrar may accept, refuse the application or accept with some
modifications.
3. The accepted applications shall be advertised within 14 days of acceptance.
4. Any opposition to the advertisement can be filed within 3 months from the date
of advertisement.
5. The counter-statement to the notice of opposition, if any, to be filed within 2
months from the date of receipt of copy of notice of opposition from the
Registrar.
6. A copy of the counter statement provided to the opposing party.
7. The Registrar may take hearing with the parities.
8. The Registrar will decide on the originality of the layout-design and grant or
reject the application for registration based on the conclusions reached by him.
9. Aggrieved party can appeal to Appellate Board or in its absence Civil Court for
relief on any ruling of the Registrar.

Protection of New Plant Variety
The Protection of Plant varieties and Farmers’ Rights
Act, 2001
http://www.plantauthority.gov.in/

Duration of Rights
Intellectual Property
• Patent
• Trademark
• Copyrights
• Geographical Indication
• Chip Layout Design
• Protection of Plant Variety
• Trade Secrets
Duration of Rights
• 20 years
• 10 years + (continuous
reregistration)
• 60 years generally
• 10 years
• 10 years
• 18 – trees and 15 – crops..
• Unlimited

Thank You!! 
N Prashant Kumar Nair
Corpus Legum

Intellecutual property rights in India

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