SUBMITTED BY

101 – CHAITRA MHATRE 103 –MOHAMMED FAIZAN105 –PRIYANKA MORE 107 –RAHUL KUMAR109-SAPNA HAJARE111- POOJA GAJARE113 – KARAN SHETTY115- AKASH DIDWANIA117-GAURAV SONWANI119-BIPEEN GHADGE

INTELLECTUAL PROPERTY

MEANING: Intellectual property (IP) refers to creations of human

intellect, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce all being the property of human mind and is similar to any property, whether movable or immovable

INTELLECTUAL PROPERTY RIGHTS (IPR):-

MEANING:Intellectual property wherein the proprietor or the owner may exclusively use his property at will and has the right to prevent others from using it, without his permission. The rights relating to intellectual property are known as 'Intellectual Property Rights'.

DIVERSIFICATIONOF IPR:

Copyrights and rights related to copyrights Industrial Property

HISTORY OF IPR:

Till 19th century the term Intellectual Property Rights began to be used

Until 20th century IPR became a common place in the world.

TYPES/TOOLs OF IPRs:

Copyrights and related rights. Geographical Indications. Trade Secrets. Patents. Trademarks. Industrial Designs

WORLD TRADE ORGANISATION (WTO) The World Trade Organization (WTO) is the only global

international organization dealing with the rules of trade between nations. At its heart are the WTO agreements, negotiated and signed by the bulk of the world’s trading nations and ratified in their parliaments. The goal is to help producers of goods and services, exporters, and importers conduct their business

WORLD INTELLECTUAL PROPERTY ORGANIZATION(WIPO)

The World Intellectual Property Organization (WIPO) is the United Nations agency dedicated to the use of intellectual property (patents, copyright, trademarks, designs, etc.) as a means of stimulating innovation and creativity.

Some areas are not covered by Paris and Berne conventions of the WIPO. In some cases, the standards of protection prescribed were thought inadequate. So the TRIPS agreement adds a significant number of new or higher standards.

TRIPS (TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS)

TRIPS is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members.

 It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.

PATENTS• PATENT originates from latin word “patere”.• PATENT is statutory limited property right granted to Patentee for his invention.•Patenting excludes others from producing patented product for selling,importing,using.• Original patentee’s permission is mandatory if same product with new added features needs to be legally produced.

THINGS WHICH CAN NOT BE PATENTED:-•Frivolous inventions or inventions contrary to well established law.•Invention causing serious prejudice to health, human or plant life. •Discovery of any living/non living thing or formulation of an abstract theory. • Mere discovery of new property or new use of a known substance.•Mere form of horticulture or agriculture.

PATENT LICENSING AND TERM OF PATENT

PATENT Licensing is a contract agreement which the patent owner(licensor) agrees to forgo his right to sue the licensee for infringement of licensor’s patent rights.

Usually infringement is in form of return of royalty or compensation. Competitors licensing patents to each other is called cross-licensing agreements. Done in order to share the benefits of each others patented inventions. Term of patent in India is 20 years from date of filing patent application form. Applications filed under Patent Co-operative Treaty (PCT) term starts from

international filing date. Patent Agent is registered person with Indian Patent Office whose name is

entered in patent agent register. After being declared qualified the patent agent examination is conducted by

patent office.

OBLIGATIONS OF PATENTEE AND PROCESS FOR FILING PATENT OUTSIDE INDIA

Every patentee has to maintain the patent by paying the renewal fee every year. No renewal fee to be paid for 1st two years. 3rd year onwards renewal fee ought to be paid. In case the renewal fee is not paid the patent will be ceased.

The patentee is required to take prior permission before filing patent application outside India under following circumstances:-

The patentee applicant is Indian resident. Patent has originated in India. Patentee does not wish to file patent application in India before filing it abroad. If Patentee is Indian resident and has filled application in India but 6 weeks

period is not over from the date of application filing. The invention relates to Atomic energy or defense purpose.

COMMON CONTROVERSIES RELATING TO PATENTS

Patent trolls are common criticism although some suggest they are not bad.

Realigns market participant incentives. Makes patent more liquid and clears the patent market. Pharmaceutical patents prevents generic alternatives. Maintains high prices for medication. This makes a significant effect in developing countries. 5% of medicines in the list of essential medicines of WHO are

under patents. Pharmaceutical industry has provided US $2billion for medicines. Medicines provided at lower cost or even free of cost to poor. Able to do so by using differential pricing and parallel imports.

PATENT AMENDMENT ACT 2002

Excludes any living or non-living substances in nature from being patented.

Uniform term of patent protection is of 20 years.

Several provisions incorporated to protect bio-diversities and traditional knowledge.

The provisions relating to national security have been strengthened.

PATENT AMENDMENT ACT, 2005

Emphasis on Indigenous manufacturers Prevent "ever greening" of patents Conditions for obtaining compulsory license Reasonable period for negotiations between the

patent holder and companies seeking compulsory license: 

Exemption of research and development from the ambit of patents

Product patent

APPLICATIONS FILLED FOR PATENTS

CHINA

JAPAN

USA

GERMANY

INDIA

0 100000 200000 300000 400000 500000 600000 700000

652777

342796

542325

61340

43955

Chart Title

Patent applications by filing route: Direct and PCT system, 2012

PCT national phase entries (non-residents): 55%

Direct applications (non-residents): 45%

PATENT AMENDMENT ACT, 2005

Emphasis on Indigenous manufacturers Prevent "ever greening" of patents Conditions for obtaining compulsory license Reasonable period for negotiations between the

patent holder and companies seeking compulsory license: 

Exemption of research and development from the ambit of patents

Product patent

SR.NO PARAMETER INDIAN PATENT SYSTEM US PATENT SYSTEM

1.Patent Act Patent ( Amendment) Act,2005

-23 chapters-163 sections

35 US code-4part-34 chapters-376 sections

2. Scope of Patent Act It covers utility patent -Rest two are covered by separate acts.

It covers-Utility Patent-Plant Patent-Design Patent

3. Criteria for Patentability US patent act allows a discovery of process, machine, manufacture or composition of matter to be patented if it satisfies the criteria of novelty, utility and non-obviousness.

While under Indian Patent Act, the mere discovery of a new and useful process or product is not patentable.

4. Rule of Patent First to Invent First to File

5. Plant Patent It is not done in India It is done in US.

6. Business Patent It is not done in India It is done in US.

CASES

CASE STUDY 1-US International Trade Commission Held That Apple Did Not Violate Google’s Patent

CASE STUDY 2-NOVARTIS

CASE STUDY 3-CASE STUDY BAJAJ AND TVS PATENT ISSUES

TRADEMARKS• A trademark is a distinctive sign that identifies certain goods or services

as those produced or provided by a specific person or enterprise.

• It may be one or a combination of words, letters, and numerals. They

may consist of drawings, symbols, three-dimensional signs such as the

shape and packaging of goods, audible signs such as music or vocal

sounds, fragrances, or colours used as distinguishing features.

Category:

1. Products – 34 classes

2. Services – 11classes

TRADEMARKS ORIGIN

The first modern trademark law in 19th century in France – “Manufacture and Goods Mark Act”

1875 - The Trade Marks Registration Act, formal registration of trade marks at the UK Patent Office for the first time.

1938 - UK first registration system based on the “intent-to-use” principle “UK Trade Marks Act, 1938”

1940 - “Trade Marks Act, 1940, first statutory law in India similar provision like the UK Trade Marks Act, 1938.

1958 - “Trade and Merchandise Marks Act, 1958”

1999 - “Trade Marks Act, 1999”

TYPES OF TRADEMARKS

Name: Name as trademark to distinguish the company name from others and to establish brand name.

Symbol: Symbols denoting the company name with a sign, picture which serves as an indicative mark.

Catchphrases: A catchphrase that is identifiable to a person or company that is used to sell merchandise can be trademarked

“ I’m lovin’ it” , “ Believe in the best”, “ connecting people”

Mascot: Any character humanly or imaginary can be trademarked to denote and distinguish a product.

Lyrics: A songwriter’s lyrics can be trademarked to prevent it’s infringement.

Monograms: Monogram art with the initials of the company can also be trademarked.

Fragrances: LIVING MINT, Paris Hilton, Loreal

Audio: LG, Intel , Skype, Nokia, Samsung trademarksmix.mp4

A TRADEMARK MAY BE DESIGNATED BY THE FOLLOWING SYMBOLS:

™   Unregistered trademark

℠  Service Mark

®  Registered trademark

ADVANTAGES OF TRADEMARK REGISTRATION

1) Goodwill in the business

2) Prevents misuse by other business firms.

3) Status of branded Goods yes no

4) Impression to customers of standard Products or Services

5) The exclusive right to the use of the trade mark in relation to the goods or

services in respect of which the trade mark is registered.

6) Relief in case of infringement (misuse by others) of the trade mark.

7) Power to assign (transfer) the trade mark to others for consideration.

PROVISIONS IN TRIPS

WTO member countries are obliged to grant full protection to the registered trademarks.

TRIPS aims that the members provide the maximum protection to this mark, in accordance with this Agreement and other relevant conventions on trademarks, to everyone carrying on business.

The agreement defines what types of signs must be eligible for protection as trademarks, registration process, term period of trademark, renewal period and what the minimum rights conferred on their owners must be.

It says that service marks must be protected in the same way as trademarks used for goods. Marks that have become well-known in a particular country enjoy additional protection.

THE TRADEMARK ACTS IN INDIACurrent Governing Law

Trade Marks Act, 1999 – Mechanism of registration, protection of trademark and prevention of fraudulent trademark.

Provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.

Amendment (2010) Protection of Indian trade marks in other countries (in line with Madrid Protocol.) International registration of trade marks - Allows Indian and foreign nationals to

register Trade Marks simultaneously in other countries. Major changes - Registration process to be completed in a time bound manner "within 18

months of the filing of the application". Increased time period of filing a notice of opposition of published applications, from 3

months to 4 months. Simplified provisions for transfer of ownership by assignment or transmission. International registration period – 10 years Renewal period – 10 years (from the expiry of the preceding period) Grace period for renewal – 6 months

TRADEMARK INFRINGEMENT

Violation of exclusive rights attaching to a trademark without the authorization

of the trademark owner or any licensee causing resembles to the product.

The grounds of refusal of trademarks can be

Absolute

Relative

Penalty for Violating a trademark

Injunction

Monetary Damages

Attorney’s Fees

Search

Trademark Application

Issuance of Official Receipt and trademark No.

Official Hearing

Response

Response Accepted?

Acceptance

Publication[Opposition 3 Months]

Registration

Renewal

REGISTRATION PROCESS

yes

no

2006 2007 2008 2009 2010 2011 2012

-6-4-202468

1012

Trend in Trademark Application class cases count worldwide

Application Year

Gro

wth

Rat

e [%

]

2006 2007 2008 2009 2010 2011 2012

-10

-5

0

5

10

15

Trend in trademark registration class counts worldwide

Registration Year

Gro

wth

Rta

e[%

]

COMPARISION OF INDIA & USA TRADE MARKSSr.

NoPARAMETER INDIA TRADEMARK LAWS USA TRADEMARK LAWS

1. GOVERNANCE Trademark Act,1999 United States trademark law is mainly governed by the Lanham Act 

2. MEANING According to Section 2 (zb) of the Trade Marks Act, 1999, “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 colors.”

A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business' commercial identity or brand by discouraging other businesses from adopting a name or logo that is "confusingly similar" to an existing trademark.

3. USE OF T.M AND ®  SYMBOLS.

Generally one who has filed an application (pending registration) can use a T.M (Trademark) designation with a mark to alert public of its exclusive claim.The registration ® symbol may only be used when the mark is registered.

™ signifies common law trademark rights. Businesses automatically receive common law trademark rights by using a brand name or logo in the normal course of commerce.® Signifies a registered trademark. The ® symbol may only be used on a trademark that has been examined, approved and registered with the USPTO

4. TERM OF REGISTRATION

The term of registration of trademark is 10 years but may be renewed subject to the payment of the prescribed fee in accordance with the Provisions of Trademark Act, 1999.

A U.S. trademark generally lasts as long as the trademark is used in commerce and defended against infringement

Case Study

1) Amul trademark infringement case

2) Redbull Vs Unasi case

INDUSTRIAL DESIGN ORIGIN : Designing and Printing of Linen Act(1787)U.K Design Act,1911 British Govt. in India Indian Design Act,2000

DESIGN : A Design refers to the :•Features of shape, configuration, pattern, ornamentation or composition of lines or colors applied to any article,• In two or three dimensional (or both) forms. •Applied by any industrial process or means (manual, mechanical or chemical) separately or by a combined process,•Which in the finished article appeals to and judged solely by the eye

EXAMPLE OF A THREE-DIMENSIONAL DESIGN

EXAMPLE OF A TWO-DIMENSIONAL DESIGN

ADVANTAGES OF INDUSTRIAL DESIGN•Attractive and appealing

•Prevent its unauthorized copying or imitation by others

•Fair return on investment

•Increases the commercial value

•A protected design may also be licensed(or sold) to others for a fee

•Fair competition and honest trade practices

INDIAN DESIGN ACT,2000 THE (‘CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE

MARKS’ APPOINTED SHALL BE THE CONTROLLER FOR INDUSTRIAL DESIGN)

MAIN PROVISIONS OF THE ACT•Essential requirements for registration.•Exclusion from the scope of design.•Classification of designs : section 5(3).Rule 10, 11.The third schedule.•Design licensing .•Cancelation of registered design.•Security of India section 34, 46.•Copyright in registered designs•Requirements before delivery on sales. •Provisions as to exhibitions.• Piracy of registered design section 5(6), 22.

TEN STEP FOR REGISTRATION OF INDUSTRIAL DESIGN

Step 1 : FINDING OUT WHETHER ANY REGISTRATION ALREADY EXISTS

Step 2 : PREPARING A REPRESENTATION OF THE DESIGN

Step 3 : IDENTIFYING THE CLASS OF DESIGN

Step 4 : PROVIDING A STATEMENT OF NOVELTY

Step 5 : INCLUDING A DISCLAIMER

TEN STEP FOR REGISTRATION OF INDUSTRIAL DESIGN

Step 6 : CLAIMING A PRIORITY DATE

Step 7: DETERMINING THE FEE TO BE PAID

Step 10 : PROVIDING FULL DETAILS

Step 9 : COMPLYING WITH OBJECTIONS (IF ANY)

Step 8 : ENSURING ALL ENCLOSURES ARE ATTACHED

DESIGN FILING Filling an application

Comply with the objections within 2 months of receipt

of report

Receive Application No.

Receive Examination Report

AbandonedHearing If

objection is contestedRefusal

Appeal to High Court

In Case of allowance of

Appeal

Waiving/removal of objections Acceptance

Publication

Issue Of Certificate

Applications design counts by filing route: Direct and Hague System, 2012

57%

43% Hague non-res-identDirect non-res-ident

Application design counts for middle- and low-income countries, 2012

India Brazil Mexico Thailand South Africa

02000400060008000

10000

85456563

4137 3481 2361

Counts

Counts

Note: Application design counts consist of adding the number of designs contained in direct applications together with the number of designs contained in Hague System designations received by offices (where applicable).

COMPARISION OF INDIA & OMANSR. NO.

PARAMETER INDIA OMAN

1. ACT India's Design Act, 2000 is enacted to consolidate and amend the law relating to protection of design and to comply with the articles 25 and 26 of TRIPS agreement

Industrial design law in Oman is governed by the Industrial Property Law issued by Royal Decree No 67/2008 which was later amended by Royal Decree No 131/2008

2. CRITERIA FOR REGISTRATION

Design should ne new and original.Design should related to shape, configuration, pattern or ornamentation of article. Design should not include any trademark or property mark or artistic work.

Be novel in the sense that it has not been disclosed the public prior to the date of the application for registration.Have an individual character that distinguishes the design to a sufficient degree from all designs disclosed the public anywhere in the world

3. EXEMPTION FROM REGISTRATION

A design which is notNew or originalHas been disclosed to public in anywhere in India or any other country by publication in tangible form.Is not distinguishable from known designs or combination of known designs.Comprise or contains scandalous or obscene matter, shall not be registered.

Any aspect of the design which is solely dictated by a technical character. Designs which are contrary to public order and morals.

4. DURATION The total time for registered is up to 15 years. Initially the right is granted up to a period of 10 years and is extended up to a period of 5 years.

The law grants the owner of the design a protection that initially lasts for 5 years, which can be renewed for up to a maximum of 15 years.

CASES

1)

2)Bharat Glass Tubes Ltd. v. Gopal Glass Works Ltd.

 

CONCLUSION Encouraging innovation. Broader classification Common ground for all. Covering the basic objectives.