t3 bl technology and the law

8/2/2019 T3 BL Technology and the Law

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Governing TechnologyGoverning Technologythrough Law:through Law:

Issues and ConcernsIssues and ConcernsA. B. SurajA. B. Suraj

PGP Business LawPGP Business Law20122012


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Session ObjectivesSession Objectives

To appreciate the importance of and theTo appreciate the importance of and the

criteria to recognize, establish andcriteria to recognize, establish andenforce intellectual property rightsenforce intellectual property rights

To understand the prevalent legalTo understand the prevalent legalprinciples of Cyber Lawprinciples of Cyber Law


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Relevant IssuesRelevant Issues

Lack of internationally coordinated legal frameworkLack of internationally coordinated legal frameworkor enforcement mechanismor enforcement mechanism Relevance of TRIPs and procedures; JurisdictionRelevance of TRIPs and procedures; Jurisdiction

Regulating use of technology ever changingRegulating use of technology ever changingstandards and concernsstandards and concerns Uniformity in standardsUniformity in standards

Emergence of specialized forms of legal institutionsEmergence of specialized forms of legal institutions Special Courts/TribunalsSpecial Courts/Tribunals


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Intellectual PropertyIntellectual Property

RightsRights


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IPRs Basis & RationaleIPRs Basis & Rationale

Economic (and technological) rationale Economic (and technological) rationale aids overall developmentaids overall development

Social benefits enriches Public DomainSocial benefits enriches Public Domainand furthers Basic Researchand furthers Basic Research

IPRs are legally monopolistic need to beIPRs are legally monopolistic need to befairly enforced/regulatedfairly enforced/regulated


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Forms of IPRsForms of IPRs

Patents atents Patents Act, 1970Patents Act, 1970

Copyrights opyrights Copyright Act, 1957Copyright Act, 1957 Trade Marks rade Marks Trade Marks Act, 1999Trade Marks Act, 1999 Industrial Designs ndustrial Designs Designs Act, 2000Designs Act, 2000


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Forms of IPRs Forms of IPRs

Layout Designs of ICs ayout Designs of ICs SemiconductorSemiconductorIntegrated Circuits Layout-Design Act, 2000Integrated Circuits Layout-Design Act, 2000

Geographical Indications eographical Indications GeographicalGeographicalIndications of Goods (Registration andIndications of Goods (Registration andProtection) Act, 1999Protection) Act, 1999

Plant varieties lant varieties Protection of PlantProtection of PlantVarieties and Farmers Rights Act, 2001Varieties and Farmers Rights Act, 2001


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Forms of IPRs Forms of IPRs

Traditional Knowledge raditional Knowledge partly bypartly byBiological Diversity Act, 2002Biological Diversity Act, 2002

Turmeric and Neem disputesTurmeric and Neem disputes

Basmati and Yoga controversyBasmati and Yoga controversy

Trade Secretsrade Secrets Contractual no Contractual nolegislation in Indialegislation in India


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Evolution of IPR regimeEvolution of IPR regime

Early 17th Century Monopolies StatuteEarly 17th Century Monopolies Statute Maximum flexibility to national governments noMaximum flexibility to national governments no

global enforcementglobal enforcement

Commerce based; not invention as motiveCommerce based; not invention as motive

Paris Convention (1883); Berne ConventionParis Convention (1883); Berne Convention(1886); Madrid Agreement (1891)(1886); Madrid Agreement (1891) Minimum obligations but with flexibilitiesMinimum obligations but with flexibilities

National Treatment; and Reciprocal obligations National Treatment; and Reciprocal obligations though not mandatedthough not mandated


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TRIPs RegimeTRIPs Regime

TRIPs (1995) RIPs (1995) common minimumcommon minimuminstitutional framework what aboutinstitutional framework what aboutflexibilities?flexibilities? Scope of Patentscope of Patents exclusions exclusions Patentabil ity criteriaatentabil ity criteria interpretative interpretative

contentcontent

Enforcement mechanismsnforcement mechanisms Civil and Civil andCriminal remediesCriminal remedies


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TRIPs Regime TRIPs Regime

Salient FeaturesSalient Features Basic Principlesasic Principles

MFN status; National TreatmentMFN status; National Treatment

Forms of IPRs and bases oforms of IPRs and bases ofprotectionrotectionAiming for uniformityAiming for uniformity

Multilateralism impact on national lawsMultilateralism impact on national laws


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TRIPs Features TRIPs Features

Special Provisions for Developingpecial Provisions for DevelopingnationsationsAccent on technology transfer & promotionAccent on technology transfer & promotion

Enforcement Mechanismsnforcement Mechanisms Civil and Criminal; Border measuresCivil and Criminal; Border measures


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What is a Patent?What is a Patent?

Patent a monopoly right to an inventorPatent a monopoly right to an inventor

20 year period of monopoly granted for20 year period of monopoly granted forinventions that satisfy:inventions that satisfy:

Noveltyovelty Inventive Step or Non-obviousnessnventive Step or Non-obviousness Util ity or industrial applicationtil ity or industrial application


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What can you do with aWhat can you do with a

Patent?Patent? Section 48 of the Patents Act, 1970:Section 48 of the Patents Act, 1970:

MakeMake

UseUse

SellSell DistributeDistribute

ImportImport

the invention within Indiathe invention within India

Effect of Patents only territorialEffect of Patents only territorial


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Patent Law in IndiaPatent Law in India

The Patents Act, 1970The Patents Act, 1970

The Patents Rules, 2003The Patents Rules, 2003

Registering Authority Registering Authority Controller General ofController General ofPatents, Designs and Trade MarksPatents, Designs and Trade Marks HO at HO at

Kolkata Branches at Chennai, Delhi & MumbaiKolkata Branches at Chennai, Delhi & Mumbai

Registration no guarantee of validityRegistration no guarantee of validity


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Subject Matter ofSubject Matter of

PatentsPatents Must relate to any new process and/or aMust relate to any new process and/or a

new product improvements alsonew product improvements alsoconsidered across any field ofconsidered across any field of

technology (TRIPs)technology (TRIPs)

Any process, machine, manufacture, Any process, machine, manufacture,composition of matter or materialcomposition of matter or material


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Non-patentabilityNon-patentability

Exclusions abstract ideas, laws of nature,Exclusions abstract ideas, laws of nature,natural phenomenanatural phenomena

Section 3 enlists :Section 3 enlists : Medical & Treatment procedures;Medical & Treatment procedures; Topography of ICs;Topography of ICs; Traditional Knowledge;Traditional Knowledge;

Mathematical or Business methods;Mathematical or Business methods;

Computer programsComputer programs per seper seor algorithms;or algorithms;


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US Case StudiesUS Case Studies

Gottschalk v. Benson (1972) NO Gottschalk v. Benson (1972) NO unless there is a physical effectunless there is a physical effect

Diamond v. Diehr (1981) YES if part ofDiamond v. Diehr (1981) YES if part ofan otherwise patentable processan otherwise patentable process

State Street Bank (1998) YES usefulState Street Bank (1998) YES usefulcomputation is in itself a tangible resultcomputation is in itself a tangible result


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Patent CooperationPatent Cooperation

Treaty (PCT)Treaty (PCT) Treaty for International Rationalization andTreaty for International Rationalization and

Cooperation in:Cooperation in: Filing;Filing;

Searching;Searching;

Examination; of Patent specificationsExamination; of Patent specifications

Dissemination of technical information contained inDissemination of technical information contained invarious applicationsvarious applications

No grant of international patents proceduralNo grant of international patents proceduralfacilitation ultimate grant by countries onlyfacilitation ultimate grant by countries only


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Patent ApplicationsPatent Applications

Who can apply for a Patent?Who can apply for a Patent?True and first inventor principle idea,True and first inventor principle idea,

effort and disclosureeffort and disclosure

An assignee of rightAn assignee of right Legal representativeLegal representative

Firms/Corporations cannot be inventorsFirms/Corporations cannot be inventors but can apply as assignees or joint but can apply as assignees or jointholdersholders


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Employee EmployerEmployee Employer

relationsrelations Mere contract of employment does not ordinarilyMere contract of employment does not ordinarily

provide any rights to the employerprovide any rights to the employer

Principle of Trusteeship and fiduciary duty mustPrinciple of Trusteeship and fiduciary duty mustbe established by the employerbe established by the employer

If specially employed to exercise inventiveIf specially employed to exercise inventivefaculty then employer is the assignee evenfaculty then employer is the assignee evenover the patentable improvements developedover the patentable improvements developed


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Employee Employer Employee Employer

If specially employed for a purpose butIf specially employed for a purpose butthe invention is not pursuant to it thenthe invention is not pursuant to it thenthe employee owns itthe employee owns it

Comprehensive factual analysis natureComprehensive factual analysis natureand scope of employment; obligations andand scope of employment; obligations andduties arising thereof; conduct ofduties arising thereof; conduct ofemployer and employee; extent of trustemployer and employee; extent of trust


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Employer Employee Employer Employee

UK Patents Act, 1977 Ss. 39-43UK Patents Act, 1977 Ss. 39-43 Reasonably expected of normal dutiesReasonably expected of normal duties

Special or assigned obligationsSpecial or assigned obligations

Fair compensation to the inventor employee Fair compensation to the inventor employee

provided no such specific contract existsprovided no such specific contract exists

Effort and Skill based evaluationEffort and Skill based evaluation


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Effect of Prior DisclosureEffect of Prior Disclosure

USPTO allows for Disclosure Documents USPTO allows for Disclosure Documents accepted and preserved for 2 yearsaccepted and preserved for 2 years Evidence of date of conception of inventionEvidence of date of conception of invention

No effect of an applicationNo effect of an application

Confidentiality ensuredConfidentiality ensured

Declaration of diligence also mandatedDeclaration of diligence also mandated

India strongly discourages prior publication orIndia strongly discourages prior publication ordisclosure results in anticipation prefersdisclosure results in anticipation prefersProvisional ApplicationProvisional Application


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Specifications KeySpecifications Key

StrategiesStrategies Legal, Technical, Commercial strategic draftingLegal, Technical, Commercial strategic drafting

of terms required to meet future demandsof terms required to meet future demands

Corresponding rights of persons involved mustCorresponding rights of persons involved mustbe clarified else, heavy legal suitsbe clarified else, heavy legal suits

Distinguish between old and the newDistinguish between old and the new

Summarize each stage effectively this is apartSummarize each stage effectively this is apartfrom an overall Abstractfrom an overall Abstract


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Remedies and StrategiesRemedies and Strategies

Suit for DamagesSuit for Damages

Suit for Account on Profits and forSuit for Account on Profits and fordamages to be assesseddamages to be assessed

Demand security for value of claim andDemand security for value of claim andcostscosts

Injunction at the end of the trialInjunction at the end of the trial Though not usually granted, even interimThough not usually granted, even interiminjunctioninjunction


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WHAT IS COPYRIGHT?WHAT IS COPYRIGHT?

Statutorily provided privilege to authors,tatutorily provided privilege to authors,aiming towards:iming towards: Creative and Intellectual enrichment of the publicCreative and Intellectual enrichment of the public

Progress of Scientific and useful Arts (literary, artistic,Progress of Scientific and useful Arts (literary, artistic,musical, dramatic, cinematographic films, soundmusical, dramatic, cinematographic films, soundrecordings and now performances & broadcasting)recordings and now performances & broadcasting)

Copyleft emerging notions of open accessCopyleft emerging notions of open access

Bundle of rightsundle of rights right to make copies; right to make copies;communicate to the public; make adaptationscommunicate to the public; make adaptationsand allow translationsand allow translations


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Notions of OriginalityNotions of Originality

Common Law what is not copied, isCommon Law what is not copied, isoriginaloriginal

US & Australia minimum criteria ofUS & Australia minimum criteria ofcreativity and originalitycreativity and originality

Moving towards authors own personalMoving towards authors own personalcreation apart from common stockcreation apart from common stock


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Basic ConceptsBasic Concepts

Authorship & Ownershiputhorship & Ownership labour, skill labour, skilland judgement could be even jointand judgement could be even joint

Films, song-recordings, broadcasts Films, song-recordings, broadcasts entrepreneurship model producersentrepreneurship model producers

Song lyricist, composer, singer, performingSong lyricist, composer, singer, performing

musicians, and the producermusicians, and the producer Government presumed ownership, unlessGovernment presumed ownership, unless

contracted otherwisecontracted otherwise


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Moral Rights to theMoral Rights to the

AuthorAuthor Right to be acknowledged and against anyRight to be acknowledged and against any

false attributionfalse attribution

Right against derogatory treatment of theRight against derogatory treatment of theworkwork

Enforceable even if economic rights haveEnforceable even if economic rights havebeen assigned or licensedbeen assigned or licensed


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Legal FrameworkLegal Framework

Registration not compulsory, but usefulRegistration not compulsory, but usefulwhen copyright is infringed - territorialwhen copyright is infringed - territorial

Indian Copyright Act, 1957Indian Copyright Act, 1957

International recognition:International recognition: Berne Convention (1886) andBerne Convention (1886) and

Universal Copyright Convention (1952)Universal Copyright Convention (1952)


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Civil & CriminalCivil & Criminal

RemediesRemedies Evidentiary registration is best proof Evidentiary registration is best proof

else, presumptions based on publicationelse, presumptions based on publication

Civil remedy enforceable by a DistrictCivil remedy enforceable by a DistrictCourt compensatory and injunctionsCourt compensatory and injunctions

Criminal remedy Metropolitan MagistrateCriminal remedy Metropolitan Magistrateor the JMFC minimum imprisonment andor the JMFC minimum imprisonment andfines offence is cognizablefines offence is cognizable


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Fair Use and DefencesFair Use and Defences

Berne Convention and TRIPs authorizeBerne Convention and TRIPs authorizereproduction of protected works inreproduction of protected works incertain special cases if:certain special cases if:

- it does not conflict with normal- it does not conflict with normalexploitation of the work; andexploitation of the work; and

- it does not unreasonably prejudice the- it does not unreasonably prejudice thelegitimate interests of the authorlegitimate interests of the author


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Some instances of FairSome instances of Fair

useuse For Research or Private StudyFor Research or Private Study

For criticism or reviewFor criticism or review

For reporting current eventsFor reporting current events

For Non-commercial performancesFor Non-commercial performances


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Fair Use Factors in U.K.Fair Use Factors in U.K.

Quantum and value of the matter quotedQuantum and value of the matter quoted

Purpose Good Faith?Purpose Good Faith?

Whether the work is published, circulated or notWhether the work is published, circulated or not

Likelihood of competitionLikelihood of competition


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Fair Use Factors in U.S.Fair Use Factors in U.S.

Purpose and Character of usePurpose and Character of use

The nature of the Copyrighted workThe nature of the Copyrighted work

Amount and substantiality of useAmount and substantiality of use

The effect on potential market or valueThe effect on potential market or value


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Relevant DebatesRelevant Debates

Trade secrets vs. Patents/CopyrightsTrade secrets vs. Patents/Copyrights

Enforcement mechanisms highlyEnforcement mechanisms highlyprocedural; and evidentiaryprocedural; and evidentiary

Emergence of and Compliance withEmergence of and Compliance withInternational consensusInternational consensus


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CYBER LAWS,CYBER LAWS,E-GOVERNANCE &E-GOVERNANCE &

DATA PROTECTIONDATA PROTECTION


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Geography, is History!Geography, is History!

Contracts & Commerce in Cyberspace andContracts & Commerce in Cyberspace andin Electronic formatin Electronic format

Detection, Investigation and ProsecutionDetection, Investigation and Prosecutionof Cyber Crimes across the globeof Cyber Crimes across the globe

Re-appreciation of legal principles Re-appreciation of legal principles jurisdiction, privacy, IPRs, evidence, etc.jurisdiction, privacy, IPRs, evidence, etc.

IT L Obj &


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IT Law Objects &IT Law Objects &

ConcernsConcerns To provide privacy and guarantee security inTo provide privacy and guarantee security in

public and unregulated spacepublic and unregulated space

To authenticate and authorize transactionsTo authenticate and authorize transactionsundertaken across several countriesundertaken across several countries

To keep the legal framework in pace with theTo keep the legal framework in pace with thechanging forms of technologychanging forms of technology


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Online PiracyOnline Piracy

RIAA v. Charter Comm.IAA v. Charter Comm. (2005 USCoA)(2005 USCoA) P2P; MP3 technology enabled piracyP2P; MP3 technology enabled piracy

2.6 billion music works in a month!2.6 billion music works in a month!

John Doe suits and summonsJohn Doe suits and summons

Disclosure of subscriber detailsDisclosure of subscriber details

Safe harbour (DMCA, 2000) for ISPs = mere transmit andSafe harbour (DMCA, 2000) for ISPs = mere transmit androute; system caching temporary storage; user determinedroute; system caching temporary storage; user determinedprocess; mere provision of links prompt action uponprocess; mere provision of links prompt action uponnotificationnotification


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Online Piracy Online Piracy

Contributory liability only if:Contributory liability only if: Reasonable knowledge of infringementReasonable knowledge of infringement

Expected knowledge of storage on siteExpected knowledge of storage on site

Fails to prevent viral distributionFails to prevent viral distribution

Due diligence given prominence inDue diligence given prominence inIndian Law Intermediaries liabilityIndian Law Intermediaries liability


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Legal FrameworkLegal Framework

Information Technology Act, 2000Information Technology Act, 2000 Latest AmendmentsLatest Amendments

Procedural and EvidentiaryProcedural and Evidentiary

UNCITRAL Model Law on E-Commerce, 1996UNCITRAL Model Law on E-Commerce, 1996

Convention on Cyber Crimes EU+ MembersConvention on Cyber Crimes EU+ Members

US Acts and EU DirectivesUS Acts and EU Directives


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E-GovernanceE-Governance

Recognizes electronic records andRecognizes electronic records andsignatures as valid formssignatures as valid forms

Government can accept, issue, create,Government can accept, issue, create,retain and preserve records electronicallyretain and preserve records electronically

though not mandatorily though not mandatorily

Mandate of the Right to Information ActMandate of the Right to Information Act

E R d d


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E-Record andE-Record and

Contractual PrinciplesContractual Principles

Attribution PrinciplesAttribution Principles Originator/representative/automaticOriginator/representative/automatic

Acknowledgement conditionsAcknowledgement conditions

Notice of acceptanceNotice of acceptance

Time and Place of despatch of e-recordTime and Place of despatch of e-record


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Secured TransactionsSecured Transactions

Government prescribes the security procedure Government prescribes the security procedure considering the technological capacity of theconsidering the technological capacity of theParties; volume of transactions; and generalParties; volume of transactions; and general

proceduresprocedures

Certifying Authorities (licensed):Certifying Authorities (licensed): Issues Electronic/Digital Signature CertificatesIssues Electronic/Digital Signature Certificates

Recognizes foreign Certifying AuthoritiesRecognizes foreign Certifying Authorities

Repository of Certificates and PKIRepository of Certificates and PKI

C b C i dC b C i d


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Cyber Crimes andCyber Crimes and

PenaltiesPenalties Section 43 damage to computer orSection 43 damage to computer or

computer system destroy, alter, delete,computer system destroy, alter, delete,add, modify or rearrange any computeradd, modify or rearrange any computer

resource Fines up to Rs. 1 Crore !!resource Fines up to Rs. 1 Crore !!Penalty to CompensationPenalty to Compensation

Factual factors = unfair advantage;Factual factors = unfair advantage;amount of loss caused; the repetitiveamount of loss caused; the repetitivenaturenature


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Cyber OffencesCyber Offences

Tampering computer source code or relatedTampering computer source code or relateddocuments 3 yrs + 2 lakhsdocuments 3 yrs + 2 lakhs

Hacking into computer resource 3 yrs + 2Hacking into computer resource 3 yrs + 2lakhslakhs

Publishing or transmitting obscene material inPublishing or transmitting obscene material in

electronic form = 5 yrs + 10 lakhelectronic form = 5 yrs + 10 lakh

Extra-territoriality application of the law ifExtra-territoriality application of the law ifIndian computer is involvedIndian computer is involved


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Latest AmendmentsLatest Amendments

DATA PROTECTION & PRIVACYATA PROTECTION & PRIVACY Compensatory remedy = up to 5 CroresCompensatory remedy = up to 5 Crores

Applicable to body corporate (commercial or professional Applicable to body corporate (commercial or professional

activities);activities);

Reasonable security procedures;Reasonable security procedures;

Protection of sensitive personal data/ informationProtection of sensitive personal data/ information

Disclosure of confidential information penalizedDisclosure of confidential information penalized

Violation of Privacy made punishable even in the IPCViolation of Privacy made punishable even in the IPC


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Latest amendments Latest amendments

Punishments identity theft, phishing,Punishments identity theft, phishing,cyber terrorismcyber terrorism

Critical information infrastructure Critical information infrastructure essential to protect national interestsessential to protect national interests

Indian Computer Emergency ResponseIndian Computer Emergency ResponseTeam formedTeam formed


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Electronic Signature inclusive of DigitalElectronic Signature inclusive of Digital

Definition of Cyber Caf; Cyber Security; Computer sourceDefinition of Cyber Caf; Cyber Security; Computer sourcecodecode

Elaborates intermediary = ISPs, cyber cafes, telecomElaborates intermediary = ISPs, cyber cafes, telecomSPs, Network SPs, Search Engines, E-Com sites, etc.SPs, Network SPs, Search Engines, E-Com sites, etc.

Power of Govt. to authorize/order any private individual orPower of Govt. to authorize/order any private individual orfirm to provide services in an electronic form servicefirm to provide services in an electronic form servicecharges may also be specifiedcharges may also be specified


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Security procedures and practices asSecurity procedures and practices asGovt. considers appropriateGovt. considers appropriate

Formation of Examiner of ElectronicFormation of Examiner of ElectronicEvidence guarantee of expert opinionEvidence guarantee of expert opinion

Audit of Electronic records expressly Audit of Electronic records expresslyallowedallowed


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Working of Cyber Appellate Tribunal Working of Cyber Appellate Tribunal techno-legal characteristicstechno-legal characteristics

Creation of Cyber Regulations AdvisoryCreation of Cyber Regulations AdvisoryCommitteeCommittee

Grounds of sovereignty Govt. hasGrounds of sovereignty Govt. haspowers to intercept/ monitor/ decrypt anypowers to intercept/ monitor/ decrypt anyinformation on computer resourceinformation on computer resource

Liabilit ofLiability of


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Liability ofLiability of

IntermediariesIntermediaries Service Providers are exempted from liability ifService Providers are exempted from liability if

lack of knowledge despite due diligencelack of knowledge despite due diligence

Service Providers can be ordered to preserveService Providers can be ordered to preserveand retain informationand retain information Full cooperation is legally mandatedFull cooperation is legally mandated

Comprehensive Search & Seizure Powers givenComprehensive Search & Seizure Powers givento the Policeto the Police


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Jurisdiction IssuesJurisdiction Issues

Conduct of activity wholly or substantially Conduct of activity wholly or substantially within a territorywithin a territory

Conduct outside the territory but directedConduct outside the territory but directedagainst the interests of the countryagainst the interests of the country

Standard of reasonableness applied Active,Standard of reasonableness applied Active,Passive, Territoriality, SovereigntyPassive, Territoriality, Sovereignty Yahoo Inc. matter French Law vs. Rights in USYahoo Inc. matter French Law vs. Rights in US


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DiscussionDiscussion