intellectual property rights · maharashtra, gujarat, madhya pradesh, goa and chhattisgarh and the...

SAMEER RASTOGIManaging Partner

Faculty Development Workshop

Conducted by NIET Technology Business Incubator

Greater Noida

25th July 2015

INTELLECTUAL PROPERTY RIGHTS

COPYRIGHTS, TRADEMARKS & PATENTS

INDIA JURISInternational Law

Firmwww.indiajuris.com

CONTENTS

INTRODUCTION – IPR TRADEMARK – A BRIEF COPYRIGHT – A BRIEF DESIGN – A BRIEF PATENT HOLDING PATENT IN TAX EFFICIENT MANNER AUCTION OF PATENTS IMPORTANCE OF PATENT

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INDIA JURIS

INTRODUCTION


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INDIA JURIS

INTRODUCTION -IPR


PATENTS(Inventions)

TRADEMARK(Brand Identity)

GEOGRAPHICAL INDICATIONS

DESIGNS(Product appearance)

COPYRIGHT(Materials)

INDUSTRIALPROPERTY

TRADITIONAL KNOWLEDGE

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• Click to edit Master text styles• Second level• Third level

• Fourth level• Fifth level

TRADEMARK(LOGO OR BRAND

NAME)

PATENT(ENGINE AND PARTS)

DESIGN(INTERIOR & EXTERIOR DESIGN)

COPYRIGHT(DRIVING CONTROL

SYSTEM & SOFTWARE

PROGRAMMES)

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INTRODUCTION -IPR INDIA JURIS

IPRs are not only a legal asset, it also represents a Commercial value & may thus be a financial instrument.

To reap the commercial benefits, an IPR may be• Sold • Licensed• Collateral or Security

To maximize revenues an IPR can be used for• Sponsorship• Merchandizing• Publicity

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INTRODUCTION -IPR INDIA JURIS

TRADE MARKS

● The Trade Marks Act, 1999● The Trade Marks Rules, 2002● Classes of Trade Mark

● 1-34 (Goods)● 35-42(Services)

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o Section 2(zb) defines the meaning of trade mark. "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours

o Section 2(m) - "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;

o It gives an indication to the purchaser.

o TM can be in relation to Goods and Services

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TRADE MARKS INDIA JURIS

SOME TM CLASSES

42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.41 Education; providing of training; entertainment; sporting and cultural activities.35 Advertising, business management, business administration, office functions.5 Pharmaceutical.3 Bleaching preparations and other substances for laundry use; cleaning; polishing;

scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices.

9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching

apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.

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TRADE MARKS

WHAT CANNOT BE TRADE MARK

A mark shall not be registered as a trade mark if:-

1. It contains or comprises obscene matter2. It deceive the public or cause confusion3. It hurt the religion of any class or section of the citizens of India4. Its use is prohibited under the Emblems and Names (Prevention of

Improper Use) Act, 19505. The shape of goods obtains a technical result6. The shape gives substantial value to the goods

INDIA JURIS

RENEWAL OF TRADE MARK After every 10 years

BROAD PROCEDURE OF REGISTERING TM 1. File an application in a prescribed form with requisite fee2. Submission of reply to the objection report 3. Appearance, if called for hearing4. Grant, if unopposed

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TRADE MARKS - EXAMPLES INDIA JURIS

COPYRIGHT

The Copyright Act, 1957The Copyright Rules, 2013

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o Section 14 defines the meaning of Copyright.

o Copyright means the exclusive right in respect of a work including (a) original literary, dramatic, musical, artistic,

(b) sound recording

(c) cinematograph film and

(d) computer programme.

o The author of a work shall be the first owner of the copyright.

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COPYRIGHT INDIA JURIS

WHAT CANNOT BE COPYRIGHT

• Titles, names, short phrases, and slogans; familiar symbols or designs; lettering, or coloring; mere listings of ingredients or contents.

• Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration.

• Standard calendars, height and weight charts, tape measures and rulers, and lists or tables.

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TERM OF COPYRIGHT 60 years from the beginning of the calendar year next following the year in which the author dies.

BRIEF PROCEDURE• Filing of application along with fee• Issue of Diary Number• Reply to the objections by both the parties• Appearance in case of hearing• Registration approved, if unopposed

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COPYRIGHT - EXAMPLES INDIA JURIS

` DESIGN

● The Designs Act, 2000● The Designs Rules, 2001

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INDIA JURIS

Section 2(d) defines the meaning of design.

‘Design’ means only the features of shape, configuration, pattern or ornament.

Two or three dimensional forms.

It does not include any mode or principle or construction.

It does not include any trademark and copyright.

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DESIGNS INDIA JURIS

WHAT CANNOT BE DESIGN

Not new or original.

Contains obscene matter.

Post cards, stamps and medals.

Labels, tokens and cartoons.

Dress making patterns, greeting cards, maps and plan cards.

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DESIGNS INDIA JURIS

TERM OF DESIGN 10 years from the date of registration and renewable for a

further period of 5 years.

PROCEDURE• File an application with the Patent office• Reply to the objection report• Further replies can be submitted, if rejected• Certificate of registration is issued once the objections are

complied.

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DESIGNS INDIA JURIS

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DESIGNS- EXAMPLES INDIA JURIS

PATENTS

The Patent Act, 1970The Patent Rules, 2003The Patents (Amendment) Rules, 2014

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INDIA JURIS

Do you know

?

USPTO granted 3,26,039 Patents in 2014

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PATENTS – Some Interesting facts

6,15,243 Appl. filed in 2014 with USPTO

30,000 increase every year in USPTO

42951 Patent App. filed in India :13-14.

India granted 4227 patents in 2013-14

INDIA JURIS

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India Taiwan S Korea Germany Japan USA

247412118 15745 16605

54170

147666

304412254 18161 17595

56006

158713

Patents granted by USPTO - origin wise

2013 2014

INDIA JURIS

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US; 22%

JP; 17%

CN; 2%

KR; 3%Others; 5%

DE; 20%

FR; 7%

CH; 4%

GB; 3%

NL; 3%

Other EPO States; 14%

Patents Granted by EPO 2014

PATENTS INDIA JURIS

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IBM Samsung Cannon Sony Microsoft Google Panasonic Apple

7534

4952

40553224

2829 25662095 2003

Patents granted to Companies in US

2014

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09-10 10-11 11-12 12-13 13-14

34287

3940043197 43674 42951

6168 75094381 4126 4227

Patents Trend in India

Filed Granted

INDIA JURIS

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Indians Foreign (Conv + PCT)

10941

30782

Comparison - Patent Application filed - Indian & foreign

Applications Filed in 2013-14

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IIT Saveetha School of Engg. Indian Institute of Science

342

9274

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Top 5, Indian Applicants - from Institutes & Universities

Applications Filed in 2013-14

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Section 2(m) defines the meaning of Patent.

Patent means a patent for any invention granted under the said Act.

A patent is an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem.

Period of patents – 20 years.

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PATENTS INDIA JURIS

TYPES OF PATENT APPLICATIONS

1. Ordinary Application: It is a simple application for patent without any priority claim and not being convention or National Phase Application. It should be accompanied by a provisional or complete specification at the time of filing.

2. Convention Application: An applicant who files an application (basic application) for patent in a convention country can make convention application in India within 12 months from the date of basic application.

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PATENTS INDIA JURIS

3. PCT- National Phase Application: PCT stands for the Patent Co-operation Treaty. It is a sister treaty of the Paris Convention administered by the World Intellectual Property Organization (WIPO). The PCT system facilitates filing of patent applications under a single umbrella and provides for simplified procedure for the search and examination of such applications.

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PATENTS INDIA JURIS

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PATENTS INDIA JURIS

WHAT IS PATENTABLE As per section 2, the invention to be patentable should be technical in nature and should meet the following criteria –

• Novelty : The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India.

• Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document.

• Industrially applicable: Invention should possess utility, so that it can be made or used in an industry.

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PATENTS INDIA JURIS

WHAT IS NOT PATENTABLE Following are not inventions as per section 3 of Patents Act, 1970:

1. an invention which is frivolous or which claims anything obviously contrary to well established natural laws;

2. an invention which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

3. the mere discovery of a scientific principle or the formulation of an abstract theory;

4. the mere discovery of a new form of a known substance;

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PATENTS INDIA JURIS

WHAT IS NOT PATENTABLE

5. the mere arrangement or re-arrangement or duplication of known devices;

6. a method of agriculture or horticulture;7. any process for -medicinal, surgical, curative, prophylactic,

diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals;

8. plants and animals in whole or any part thereof other than micro-organisms;

9. a mathematical or business method or a computer programme per se or algorithms;

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PATENTS INDIA JURIS

WHAT IS NOT PATENTABLE

10. a substance obtained by a mere admixture;11. a literary, dramatic, musical or artistic work;12. a mere scheme or rule or method of performing mental act or

method of playing game;13. a presentation of information;14. topography of integrated circuits;15. inventions relating to atomic energy;16. an invention which in effect, is traditional knowledge or which is

an aggregation or duplication of known properties of traditionally known component or components.

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PATENTS INDIA JURIS

EXAMPLES OF PATENTABLE & NON PATENTABLE INVENTIONS

A purely mental process is not patentable. A printed label on a mattress telling how to turn it to ensure

even wear, is patentable. Dictionary index tabs that guide you to the desired word more

rapidly, is patentable. Human beings are not patentable. A device or method which operates based on a new scientific

principle can be patented, but the underlying principle cannot.

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PATENTS INDIA JURIS

EXAMPLES OF PATENTABLE & NON PATENTABLE INVENTIONS

The leaves of different plants are not patentable but a pharmaceutical made out of those leaves is patentable.

Inventions solely useful in making atomic weapons are not patentable.

A simple idea or suggestion is not patentable. Inventions that are offensive to public morality are not patentable.

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PATENTS INDIA JURIS

WHO CAN APPLYAn Individual or a Company.

PATENT OFFICES IN INDIA

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PATENTS

Office Territorial Jurisdiction

Mumbai Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli

Chennai Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep, Telangana

New DelhiHaryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.

Kolkata The rest of India.

INDIA JURIS

APPLICATION FOR FILING ABROAD

If any application is to be filed abroad, without filing in India, it should be made only after taking a written permission from the controller in Form-25. A gist of invention should also be filed along with this form.

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PATENTS INDIA JURIS

PROCEDURE

1. A patent application shall be filed on Form-1 alongwith Provisional/Complete Specification in Form-2, and Information and undertaking in Form-3, with the prescribed fee.

2. Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT National Phase application (Form-5).

3. Power of attorney is required, if filed through patent agent.

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PATENTS INDIA JURIS

PROCEDURE

4. All the applications for patent, except the application prejudicial to the defence of India or abandoned or withdrawn, are published in the Patent Office Journal just after 18 months from the date of filing of the application or the date of priority whichever is earlier.

5. The applicant may also file a request for early publication in Form-9 with a prescribed fee.

6. No application for patent will be examined if no request is made by the applicant in Form-18 with prescribed fee.

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PATENTS INDIA JURIS

7. RFE must be filed within a period of 48 months from the date of priority or date of filing, whichever is earlier.

8. After filing RFE, a First Examination Report/ Objection report is issued by patent office.

9. Reply to FER is to be submitted within prescribed time period.

10. Patent is granted and letter of patent is issued when all the requirements are met.

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PATENTS

PROCEDURE

INDIA JURIS

PROVISIONAL SPECIFICATION: Application for patent may be accompanied by the provisional specification. It should contain the description of invention with drawing, if required. It is not necessary to include claim. However, the complete specification should be fairly based on the matter disclosed in the provisional specification.

COMPLETE SPECIFICATION: It should contain Title, Field, Background, Object, Summary & Statement of Invention with Claims, Abstract & Drawings.

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PATENTS INDIA JURIS

PRE GRANT OPPOSITION : where an application for a patent has been published but a patent has not been granted, any person may, in writing represent by way of opposition to the Controller against the grant of any Patent. The representation shall be filed at the appropriation office and shall include a statement and evidence, if any, in support of the representation and a request for hearing if so desired.

POST GRANT OPPOSITION : Any interested person can file notice of opposition (along with written statement and evidence, if any) anytime after the grant of Patent but before the expiry of a period of 1 year from the date of publication of grant of a Patent in the Patent Office Journal.

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PATENTS INDIA JURIS

PATENTS

FILING

PUBLICATION

18 MONTHS

RFE

48 MONTHS FROM

PRIORITY DATE OR FILING

DATE

FER

6 MONTHS

SUBMISSION OF REPLY

1 YEAR

GRANTEDHEARING

REFUSED

GRANTED

POSSIBILITY OF PRE-GRANT OPPOSITION

POSSIBILITY OF POST-GRANT OPPOSITION

INDIA JURIS

COMPULSORY LICENCE

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PATENTS

At any time after 3 years from the date of the grant of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:—

(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or

(b) that the patented invention is not available to the public at a reasonably affordable price, or

(c) that the patented invention is not worked in the territory of India.

INDIA JURIS

COMPULSORY LICENCE

• The first application for Compulsory License was filed on 29 July 2011 in respect of Patent No. 215758 granted on March 03, 2008 to Bayer Corporation. a US based company for the salt 'Sorafenib tosylate', sold under the brand name NEXAVAR for the treatment of the advanced stages of kidney and liver cancer.

• Natco Pharma, approached the Patentee with a request for a voluntary license to manufacture and sell the drug as per Patent Act, which did not materialize. The Applicant proposed to sell the drug at a price of Rs.8800/- for one month therapy as compared to the price of about Rs.2,80,428/-, which was being charged by the Patentee at the time of making the Application.

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PATENTS INDIA JURIS

HOLDING PATENT IN TAX EFFICIENT MANNER

INDIA JURIS

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HOLDING PATENTS IN TAX EFFICIENT MANNER

Parking of Patents in offshore company (ideally when the IP is still at a low value).

The offshore company licences it further, which can avail tax benefits (i.e.. tax treaty network, withholding tax exemption for royalty payments and other advantages).

Some tax heavens - Cyprus, Gibraltar, Ireland, Luxembourg, Malta, The Netherlands etc

McDonalds, Procter & Gamble, Colgate Palmolive, Google, Yahoo! – moved the management and exploitation of IP to

jurisdictions such as Switzerland, Holland and Ireland for tax reason

AUCTION OF PATENTS

INDIA JURIS

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Ocean Tomo

ICAP Patent Brokerage

ICAP - Internet of Things / Connected Devices Patent Auction – 30 July 2015

ICAP - Patent auction featuring life-saving Cardiovascular technologies – 10 December, 2015

AUCTION OF PATENTS INDIA JURIS

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• October 2008: In Chicago, OT auctioned NASA’s 10 US

patents and one domestic patent application.

• October 2008: Carlson Wireless Technologies, Inc. USA auctioned its patents for $902,000, which was double of their estimate.

• August 2005: Ocean Tomo auctioned the patents of a bankrupt company in the US to pre-selected bidders. (approx. $15 mn).

• October 2006: OT Fall Auction in NYC ($22 mn at the live-auction).


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Mechanical engineeringAviationAutomotiveElectrical engineeringProcess automationMicroelectronics/ITConsumer productsMedical science“Green” technology,Online & Mobile Advertising RFID & Barcode Tech. Security / Digital Rights Mgt.

Social Networking & Web User Interface Technology Wireless/Network CommunicationsDigital Music & Video e-Commerce & Web Services Insurance & Financial Services Integrated Circuits & Semiconductors Integration Technology Interactive TV & VODBiotec/life science


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AUCTION OF PATENTS

BENEFITS

Expansion into new markets

Lower acquisition Cost

Easy to sell

Connects to global buyers / sellers

Fetches good / maximum valuation

Helps in increasing product portfolio

INDIA JURIS

IMPORTANCE OF PATENTS

INDIA JURIS

Patents being intangible assets forms substantial part of assets of a company.

It helps in expanding the market share and venturing into new markets and businesses.

Patent can generate revenue, which can be helpful in recession. It is helpful in JV, M&A and strategic alliances. Patent helps in discovering new markets in recession. Patents helps in expanding the market share and venturing into

new markets and businesses. It also increases the valuation of the company.

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IMPORTANCE OF PATENTS INDIA JURIS

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THANK YOU

For any queries on the subject, please write to us as

[email protected]

INDIA JURIS

intellectual property rights · maharashtra, gujarat, madhya pradesh, goa and chhattisgarh and the...

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