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INTELLECTUAL INTELLECTUAL PROPERTY PROPERTY

RIGHTSRIGHTSByBy

Preeti PatelPreeti Patel

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Intellectual property laws and Intellectual property laws and enforcement vary widely from enforcement vary widely from jurisdiction to jurisdiction.jurisdiction to jurisdiction.

Intellectual property laws confer a Intellectual property laws confer a bundle of exclusive rights in relation to bundle of exclusive rights in relation to the particular form or manner in which the particular form or manner in which ideas or information are expressed or ideas or information are expressed or manifested, and not in relation to the manifested, and not in relation to the ideas or concepts themselvesideas or concepts themselves

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TYPES OF IPRTYPES OF IPR

The term “Intellectual Property" The term “Intellectual Property" denotes the specific legal rights –denotes the specific legal rights –

1.1. Copyrights (e.g. book)Copyrights (e.g. book)

2.2. Patents (e.g. new drug)Patents (e.g. new drug)

3.3. Trademark (e.g. symbol)Trademark (e.g. symbol)

4.4. Trade Secrets (e.g. new method)Trade Secrets (e.g. new method)

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CopyrightCopyright may subsist in creative and may subsist in creative and artistic works (e.g. books, movies, music, artistic works (e.g. books, movies, music, paintings, photographs, and software) paintings, photographs, and software) and give a copyright holder the exclusive and give a copyright holder the exclusive right to control eproduction or right to control eproduction or adaptation of such works for a certain adaptation of such works for a certain period of time (historically a period of period of time (historically a period of between 10 and 30 years depending on between 10 and 30 years depending on jurisdiction, more recently the life of the jurisdiction, more recently the life of the author plus several decades).author plus several decades).

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PatentPatent

A patentA patent is a right to gives the is a right to gives the patent holder to prevent others from patent holder to prevent others from practicing the invention without a practicing the invention without a license from the inventor for a license from the inventor for a certain period of time (typically 20 certain period of time (typically 20 years from the filing date of a patent years from the filing date of a patent application). application).

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Trade MarkTrade Mark

A trademarkA trademark is a distinctive sign is a distinctive sign which is used to distinguish the which is used to distinguish the products or services of different products or services of different businesses. businesses.

An industrial designAn industrial design right protects right protects the form of appearance, style or the form of appearance, style or design of an industrial object (e.g. design of an industrial object (e.g. spare parts, furniture, or textiles). spare parts, furniture, or textiles).

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A trade secretA trade secret ("confidential ("confidential information") is secret, non-public information") is secret, non-public information concerning the commercial information concerning the commercial practices or proprietary knowledge of a practices or proprietary knowledge of a business, public disclosure of which may business, public disclosure of which may sometimes be illegalsometimes be illegal

Patents, trademarks, and designs rights Patents, trademarks, and designs rights are sometimes collectively known as are sometimes collectively known as industrial propertyindustrial property, as they are , as they are typically created and used for industrial typically created and used for industrial or commercial purposes.or commercial purposes.

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Copyright Copyright (e.g. books, paintings, (e.g. books, paintings, films)films)

1.1. Protects the work of expressions, not the ideas Protects the work of expressions, not the ideas ( ie. the form a creator/publisher gives to ideas). ( ie. the form a creator/publisher gives to ideas). Limited protection against substitute.Limited protection against substitute.

2.2. Protection focuses on copyingProtection focuses on copying3.3. Long but limited protection (life + 50years in Long but limited protection (life + 50years in

Canada)Canada)4.4. Covers original work of authorship in a tangible Covers original work of authorship in a tangible

medium of expression (e.g. book)medium of expression (e.g. book)5.5. Registration is inexpensive. Copyrights are easy Registration is inexpensive. Copyrights are easy

to obtainto obtain

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PatentsPatents (i.e. inventions) (i.e. inventions)1.1. Protect the ideas, not just expressionsProtect the ideas, not just expressions

2.2. Registration is necessary (patent Registration is necessary (patent office)office)

3.3. Requirements: utility, novelty, non-Requirements: utility, novelty, non-obviousness. Difficult to obtainobviousness. Difficult to obtain

4.4. Short protection periods but greater Short protection periods but greater protection against infringersprotection against infringers

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TrademarksTrademarks (e.g. brand names, product (e.g. brand names, product logos)logos)

Protect symbols and phrasesProtect symbols and phrases Registration is not necessary but easyRegistration is not necessary but easy Protection periods varyProtection periods vary Distinctiveness is requiredDistinctiveness is required

Trade SecretsTrade Secrets (e.g. formula, program, (e.g. formula, program, technique, method, process)technique, method, process)

Derives independent economic value from not being Derives independent economic value from not being knownknown

Registration is not required. Perpetual protection is Registration is not required. Perpetual protection is possiblepossible

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Intellectual Property Rights Intellectual Property Rights in Indiain India

There is a well-established statutory, There is a well-established statutory, administrative and judicial framework to administrative and judicial framework to safeguard intellectual property rights in safeguard intellectual property rights in India, whether they relate to patents, India, whether they relate to patents, trademarks, copyright or industrial designs trademarks, copyright or industrial designs etc.etc.

Well-known international trademarks have Well-known international trademarks have been protected in India even when they were been protected in India even when they were not registered in India. not registered in India.

The Indian Trademarks LawThe Indian Trademarks Law has been has been extended through court decisions to service extended through court decisions to service marks in addition to trade marks for goods. marks in addition to trade marks for goods.

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FeaturesFeatures

• IPR are property rights over information, IPR are property rights over information, knowledge and ideasknowledge and ideas

• IPR are exclusive, trade able and temporaryIPR are exclusive, trade able and temporary

• IPR differ in the information being protected IPR differ in the information being protected (copyright, patent, trade secrets, trademarks)(copyright, patent, trade secrets, trademarks)

• IPR protect information that has public good IPR protect information that has public good characteristics (non-excludability and non-characteristics (non-excludability and non-rivalry consumptionrivalry consumption))

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IPR : Digital EraIPR : Digital Era

Computer software companies have Computer software companies have successfully curtailed piracy through court successfully curtailed piracy through court orders. orders.

Computer databases have been protected. Computer databases have been protected.

The courts, under the doctrine of breach of The courts, under the doctrine of breach of confidentiality, accorded an extensive confidentiality, accorded an extensive protection of trade secrets. protection of trade secrets.

Right to privacy, which is not protected even Right to privacy, which is not protected even in some developed countries, has been in some developed countries, has been recognized in India. recognized in India.

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IP, protected through law, like any other IP, protected through law, like any other form of property can be a matter of trade, form of property can be a matter of trade, that is, it can be owned, bequeathed, sold or that is, it can be owned, bequeathed, sold or bought.  The major features that distinguish bought.  The major features that distinguish it from other forms are their intangibility it from other forms are their intangibility and non-exhaustion by consumption.   and non-exhaustion by consumption.   

IP is the foundation of knowledge-IP is the foundation of knowledge-based economy. It pervades all sectors of based economy. It pervades all sectors of economy and is increasingly becoming economy and is increasingly becoming important for ensuring competitiveness of important for ensuring competitiveness of the enterprises. the enterprises.

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International Organizations & International Organizations & TreatiesTreaties

A UN agency, namely, World A UN agency, namely, World Intellectual Property Organization Intellectual Property Organization (WIPO) based in Geneva administers (WIPO) based in Geneva administers treaties in the field of intellectual treaties in the field of intellectual property.  India is a member of WIPO.property.  India is a member of WIPO.

Department of Industrial Policy & Department of Industrial Policy & Promotion is the nodal Department in Promotion is the nodal Department in the Government of India for all the Government of India for all matters concerning WIPO.matters concerning WIPO.

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India is also a member of the World Trade India is also a member of the World Trade Organization (WTO).  Organization (WTO). 

The WTO agreement on Trade Related The WTO agreement on Trade Related Aspects of Intellectual Property (TRIPS) .  Aspects of Intellectual Property (TRIPS) . 

This Agreement made protection of This Agreement made protection of intellectual property an enforceable intellectual property an enforceable obligation of the Member States.obligation of the Member States.

TRIPS Agreement sets out minimum TRIPS Agreement sets out minimum standards of intellectual property standards of intellectual property protection for Member States.  protection for Member States. 

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1.The Patents (Amendment) Act, 1999 passed by 1.The Patents (Amendment) Act, 1999 passed by the Indian Parliament on March 10, 1999 to the Indian Parliament on March 10, 1999 to amend the Patents Act of 1970 that provides for amend the Patents Act of 1970 that provides for establishment of a mail box system to file patents establishment of a mail box system to file patents and accords exclusive marketing rights for 5 and accords exclusive marketing rights for 5 years. years.

2.      The Trade Marks Bill, 1999 which repeals 2.      The Trade Marks Bill, 1999 which repeals and replaces the Trade and Merchandise Marks and replaces the Trade and Merchandise Marks Act, 1958 passed by the Indian Parliament in the Act, 1958 passed by the Indian Parliament in the Winter Session that concluded on December 23, Winter Session that concluded on December 23, 1999. 1999.

3.      The Copyright (Amendment) Act, 1999 3.      The Copyright (Amendment) Act, 1999 passed by both houses of the Indian Parliament, passed by both houses of the Indian Parliament, and signed by the President of India on and signed by the President of India on December 30, 1999. December 30, 1999.

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Geographical Indications of Goods Geographical Indications of Goods (Registration & Protection) Bill, 1999 (Registration & Protection) Bill, 1999 approved by both houses of the Indian approved by both houses of the Indian Parliament on December 23, 1999. Parliament on December 23, 1999.

The Industrial Designs Bill, 1999 The Industrial Designs Bill, 1999 which replaces the Designs Act, 1911 which replaces the Designs Act, 1911 on December 23, 1999 and is on December 23, 1999 and is presently before the Lower House for presently before the Lower House for its consideration. its consideration.

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The Patents (Second Amendment) The Patents (Second Amendment) Bill, 1999 to further amend the Bill, 1999 to further amend the Patents Act, 1970 and make it TRIPS Patents Act, 1970 and make it TRIPS compliant was introduced in the compliant was introduced in the Upper House of Indian Parliament Upper House of Indian Parliament on December 20, 1999. on December 20, 1999.

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Projects relating to the Projects relating to the modernization of patent information modernization of patent information services and trademarks registry services and trademarks registry have been implemented with help have been implemented with help from WIPO/UNDP. from WIPO/UNDP.

The Patents Law provides for The Patents Law provides for compulsory license to avoid misuse compulsory license to avoid misuse of an Exclusive Marketing Right by of an Exclusive Marketing Right by the right holder. the right holder.

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In terms of the TRIPS Agreement, In terms of the TRIPS Agreement, India has time till January 1, 2005 to India has time till January 1, 2005 to extend patent protection to this extend patent protection to this area. area.

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Intellectual Property Appellate Intellectual Property Appellate Board (IPAB)Board (IPAB)

An An Intellectual Property Intellectual Property Appellate BoardAppellate Board (IPAB) has been (IPAB) has been set up at set up at ChennaiChennai to hear appeals to hear appeals against the decisions of Registrar of against the decisions of Registrar of Trademarks, Geographical Trademarks, Geographical Indications and the Controller of Indications and the Controller of Patents.  Patents. 

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Both foreign and domestic IPR holders Both foreign and domestic IPR holders are treated equally under Indian law. are treated equally under Indian law.

The Government also brought out A The Government also brought out A Handbook of Copyright Law to create Handbook of Copyright Law to create awareness about copyright amongst awareness about copyright amongst the stakeholders, enforcement the stakeholders, enforcement agencies, professional users like the agencies, professional users like the scientific and academic communities scientific and academic communities and members of the public. and members of the public.

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At present there are three registered At present there are three registered copyright societies. These are -copyright societies. These are -

1. The Society for Copyright Regulations of 1. The Society for Copyright Regulations of

Indian Producers of Films & Television Indian Producers of Films & Television

(SCRIPT) for cinematography films, (SCRIPT) for cinematography films,

2. Indian Performing Rights Society Limited 2. Indian Performing Rights Society Limited

(IPRS) for musical works and (IPRS) for musical works and

3. Phonographic Performance Limited (PPL) 3. Phonographic Performance Limited (PPL) for sound for sound

recordings. recordings.

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These societies, particularly the PPL These societies, particularly the PPL and the IPRS, have been quite active in and the IPRS, have been quite active in anti-piracy work. anti-piracy work.

The PPL has even set up a special anti-The PPL has even set up a special anti-piracy cell under a retired Director piracy cell under a retired Director General of Police, and this cell has been General of Police, and this cell has been working in tandem with the police. working in tandem with the police.

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WIPO Guide to Intellectual WIPO Guide to Intellectual Property WorldwideProperty Worldwide

This Guide is the first of its kind published by This Guide is the first of its kind published by World Intellectual Property Organization (WIPO) . World Intellectual Property Organization (WIPO) .

It gives essential information on intellectual It gives essential information on intellectual property by means of individual country profiles property by means of individual country profiles on WIPO Member States. on WIPO Member States.

The profiles include Basic legislation, membership The profiles include Basic legislation, membership of international treaties, administrative of international treaties, administrative structures, governmental and non-governmental structures, governmental and non-governmental bodies for information and enforcement, bodies for information and enforcement, educational institutions and industrial property educational institutions and industrial property statistics; useful contact addresses are provided statistics; useful contact addresses are provided for readers needing further information.for readers needing further information.

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It is intended as a tool for all kinds of It is intended as a tool for all kinds of readers, not only for officials working in readers, not only for officials working in this field, but for legal practitioners, this field, but for legal practitioners, teachers, students, researchers, creators teachers, students, researchers, creators or owners of intellectual property, as or owners of intellectual property, as well as for interested members of the well as for interested members of the general public. general public. 

Certain Internet links to some country Certain Internet links to some country offices are provided for information offices are provided for information purposes only.purposes only.

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The World Intellectual Property The World Intellectual Property Organization (WIPO) is an Organization (WIPO) is an international intergovernmental international intergovernmental organization dedicated to ensuring organization dedicated to ensuring that the rights of creators and owners that the rights of creators and owners of intellectual property are protected of intellectual property are protected worldwide and that inventors and worldwide and that inventors and authors are thus recognized and authors are thus recognized and rewarded for their ingenuity.rewarded for their ingenuity.

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This international protection acts as This international protection acts as a spur to human creativity, pushing a spur to human creativity, pushing forward the boundaries of science forward the boundaries of science and technology and enriching the and technology and enriching the world of literature and the arts. By world of literature and the arts. By providing a stable environment for providing a stable environment for the marketing of intellectual the marketing of intellectual property products, such protection property products, such protection also facilitates international trade.also facilitates international trade.

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The information in this Guide is drawn from The information in this Guide is drawn from data supplied by the governmental data supplied by the governmental administrations of the countries concerned, administrations of the countries concerned, as well as, in some cases, from WIPO sources, as well as, in some cases, from WIPO sources, supplemented in parts by information from supplemented in parts by information from the World Trade Organization (WTO). the World Trade Organization (WTO).

The titles of the laws and of the government The titles of the laws and of the government administrations responsible for intellectual administrations responsible for intellectual property in English, French and Spanish property in English, French and Spanish speaking countries are given, whenever speaking countries are given, whenever available, in their original language.available, in their original language.

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Research and private study Research and private study Fair dealing with Fair dealing with a literary, dramatic, musical or artistic work for a literary, dramatic, musical or artistic work for the purposes of research for a non-commercial the purposes of research for a non-commercial purposepurpose

does not infringe any copyright in the work does not infringe any copyright in the work provided that it is accompanied by a sufficient provided that it is accompanied by a sufficient acknowledgement.acknowledgement.

. Copying for purpose of research or private . Copying for purpose of research or private studystudy

. Copying for purpose of criticism or review.. Copying for purpose of criticism or review. . Copying for non-profit educational purposes. Copying for non-profit educational purposes

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THE DIGITAL MILLENNIUMTHE DIGITAL MILLENNIUMCOPYRIGHT ACT OF 1998COPYRIGHT ACT OF 1998

Nonprofit library, archive and educationalNonprofit library, archive and educational

institution exception (section 1201(d)). institution exception (section 1201(d)). A good faith determination as to whether theyA good faith determination as to whether they

wish to obtain authorized access to the work.wish to obtain authorized access to the work. Section 404 of the DMCA amends the exemptionSection 404 of the DMCA amends the exemption

for nonprofit libraries and archives in section 108for nonprofit libraries and archives in section 108

of the Copyright Act to accommodate digitalof the Copyright Act to accommodate digital

technologies and evolving preservation practices.technologies and evolving preservation practices.

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.. Prior to enactment of the DMCA, section 108Prior to enactment of the DMCA, section 108

permitted such libraries and archives to make apermitted such libraries and archives to make a

single facsimile (i.e., not digital) copy of a work single facsimile (i.e., not digital) copy of a work forfor

purposes of preservation or interlibrary loan.purposes of preservation or interlibrary loan.

amended, section 108 permits up to 3 digital amended, section 108 permits up to 3 digital copies ofcopies of

unpublished and damaged works for unpublished and damaged works for preservation ofpreservation of

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Copyrighted material provided that Copyrighted material provided that digital copies are not made available to digital copies are not made available to the public outside the library premises the public outside the library premises or put on the Internet.or put on the Internet.

Also permits a library to copy a work Also permits a library to copy a work into a new format if the original format into a new format if the original format becomes obsolete—that is, the machine becomes obsolete—that is, the machine or device used to render the work or device used to render the work perceptible is no longer manufactured or perceptible is no longer manufactured or is no longer reasonably available in the is no longer reasonably available in the commercial marketplace.commercial marketplace.

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These copies to be used by L library users within These copies to be used by L library users within the library and . inter-library loan purposesthe library and . inter-library loan purposes

Legal issuesLegal issues. Libraries, particularly at . Libraries, particularly at universities without law schools, are often the universities without law schools, are often the source of legal information about copyright law, source of legal information about copyright law, mainly mainly U.S. Code Title 17 U.S. Code Title 17 especially sections especially sections 107-108). 107-108).

In addition to providing guidance to students and In addition to providing guidance to students and faculty about using copyrighted works faculty about using copyrighted works appropriatelyappropriately

and about their rights asand about their rights as

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The most notable changes affect theThe most notable changes affect the

definition of ‘fair dealing’ and definition of ‘fair dealing’ and libraries’ ability to make copies for libraries’ ability to make copies for entities conducting commercial entities conducting commercial research.research.

Such research is no longer covered Such research is no longer covered as anas an

exemption from copyright law.exemption from copyright law.

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Digital Copying TechnologyDigital Copying Technology

. File sharing on Internet is easy. File sharing on Internet is easy . A single digital copy can be used for . A single digital copy can be used for

worldwide worldwide distribution in spite of copyright lawsdistribution in spite of copyright laws . Any one with access to Internet and scanner. Any one with access to Internet and scanner can now copy a work and make it available can now copy a work and make it available

to millions to millions of users for download and print.of users for download and print. . Publishers are increasing using the Internet. Publishers are increasing using the Internet as a global way to offer their publications toas a global way to offer their publications to the users community.the users community.

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Publishers usually will agree to an Publishers usually will agree to an author’s request to retain rights to author’s request to retain rights to post content to a website or post content to a website or institutional repository.institutional repository.

Faculty should be encouraged to Faculty should be encouraged to retain these rights before and after retain these rights before and after publishing their work so they can publishing their work so they can contribute their content to online contribute their content to online repositoriesrepositories

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. A license is an agreement between . A license is an agreement between the publisher and the user wherein the publisher and the user wherein the publisher transfers the non-the publisher transfers the non-exclusive and non transferable right to exclusive and non transferable right to use materials to the user or licensee.use materials to the user or licensee.

. License agreements are used by the . License agreements are used by the publisherspublishers

as legal method for controlling the as legal method for controlling the use of their e resources.use of their e resources.

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The licenses for electronic resources The licenses for electronic resources impose two types of restrictions on impose two types of restrictions on its usage, namelyits usage, namely

i) who can use these resources; andi) who can use these resources; and

ii) how the resources can be used.ii) how the resources can be used.

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E-resource LicensingE-resource Licensing

. Systematic or programmatic . Systematic or programmatic downloading,downloading,

retention, and printing are retention, and printing are prohibited. Forprohibited. For

example, you cannot download entire example, you cannot download entire issue of aissue of a

journal or print out several copies of journal or print out several copies of the samethe same

article.article.

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Electronic distribution of content is Electronic distribution of content is generallygenerally

restricted.restricted. Multiple copies of digital documents and Multiple copies of digital documents and

theirtheir

circulation is prohibited. circulation is prohibited. Copyright laws protect published Copyright laws protect published

material in any format so that it cannot be material in any format so that it cannot be copied except in accordance with fair use.copied except in accordance with fair use.

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Viewing, downloading, copying, Viewing, downloading, copying, printing and saving a copy of search printing and saving a copy of search resultsresults

Viewing, downloading, copying, Viewing, downloading, copying, printing and saving individual articlesprinting and saving individual articles

Using e-resources for scholarly, Using e-resources for scholarly, educational or scientific research, educational or scientific research, teaching, private study and clinical teaching, private study and clinical purposespurposes

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Sending a copy of an article to another Sending a copy of an article to another authorized user (i.e. current faculty, authorized user (i.e. current faculty, students or staff)students or staff)

Posting the URL to the publisher's version Posting the URL to the publisher's version of the article on a class website (publisher of the article on a class website (publisher links will allow)links will allow)

Use of robots or intelligent agents to do Use of robots or intelligent agents to do systematic, bulk or automatic systematic, bulk or automatic downloading is not permitteddownloading is not permitted

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Use of robots or intelligent agents to Use of robots or intelligent agents to do systematic, bulk or automatic do systematic, bulk or automatic downloading is not permitteddownloading is not permitted

Systematic downloading or printing Systematic downloading or printing of entire journal issues or large of entire journal issues or large portions of other e-resources is not portions of other e-resources is not permittedpermitted

Using e-resources for commercial Using e-resources for commercial gain is not permitted (i.e. reselling, gain is not permitted (i.e. reselling, redistributing or republishing.)redistributing or republishing.)

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Transmitting, disseminating or Transmitting, disseminating or otherwiseotherwise

making online content available to making online content available to unauthorized users (i.e. sending to unauthorized users (i.e. sending to mailing lists or electronic bulletin mailing lists or electronic bulletin boards) is not permitted.boards) is not permitted.

Posting the publisher's version or PDF Posting the publisher's version or PDF of an article to an open class website isof an article to an open class website is

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Copy Protection Copy Protection SolutionsSolutions

Water-markingWater-marking

. Watermarking embeds a digital . Watermarking embeds a digital signal in text, image, audio or video signal in text, image, audio or video files, which may contain information files, which may contain information and proof of rights to a product's and proof of rights to a product's owner or publisher.owner or publisher.

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Challenges to Challenges to Copyrightable Work inCopyrightable Work inDigital Environment in Digital Environment in

IndiaIndia In India the laws to consider- about In India the laws to consider- about the usethe use

of Electronic Data Interchange (EDI), of Electronic Data Interchange (EDI), ecommerce, copyright, IPR etc.ecommerce, copyright, IPR etc.

. Although provisions in IT Act, 2000- . Although provisions in IT Act, 2000- still needstill need

to change the Evidence Act to recogniseto change the Evidence Act to recognise

digital signaturesdigital signatures

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. Changes required in Indian Penal Code ,. Changes required in Indian Penal Code , 1860, Evidence Act, 1872, Indian Patents1860, Evidence Act, 1872, Indian Patents Act- to recognise emerging technologiesAct- to recognise emerging technologies towardstowards . Section 62 of the Indian Copyright Act, . Section 62 of the Indian Copyright Act,

19571957 provides for jurisdiction to any court provides for jurisdiction to any court

havinghaving a direct jurisdiction over the mattera direct jurisdiction over the matter

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Digital SignatureDigital Signature

. Digital signature is an electronic . Digital signature is an electronic rather than a written signature that rather than a written signature that can be used to authenticate the can be used to authenticate the identity of the sender of a message identity of the sender of a message or a document. or a document.

. It can also be used to ensure that . It can also be used to ensure that the original content of the message the original content of the message or document has not been changed.or document has not been changed.

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The IT Act provides for extra-territorial The IT Act provides for extra-territorial

jurisdiction to cyber crime cases.jurisdiction to cyber crime cases. Section 74 providesSection 74 provides that where any that where any

offenceoffence

involves a computer or computer involves a computer or computer resource inresource in

India , it can be taken note of under India , it can be taken note of under IndianIndian

laws.laws.

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