Intellectual Property Rights - Introductory

B. K. Majumdar Institute of
Business Administration
Prepared by:
Sanket Shah
shah_sanket@outlook.com
 Meaning of Intellectual Property
• According to WIPO (World Intellectual Property Organization), Intellectual
property refers to creations of the mind: inventions; literary and artistic works;
and symbols, names and images used in commerce. Intellectual property is
divided into two categories:

• Industrial Property includes patents for inventions, trademarks, industrial

designs and geographical indications.

• Copyright covers literary works (such as novels, poems and plays), films, music,
artistic works (e.g., drawings, paintings, photographs and sculptures) and
architectural design. Rights related to copyright include those of performing
artists in their performances, producers of phonograms in their recordings, and
broadcasters in their radio and television programs.
 Not Properly
identifying all IPs

Not using their Common IP

Not fully
IP as their Mistakes
recognizing the
overall plan for Entrepreneurial
value of their IP
success Firms Make

Not legally
protecting the IP
that needs
protecting
Examples of IP that Typically Resides within a Midsized
Entrepreneurial Firm’s Departments
Department Form of IP Present Usual Methods of
Protection
Marketing Names, Slogans, Logos, Jingles, Adverts, Trademark, Copyright
Brochures/Pamphlets, copies under and Trade Secret
development
Management Recruiting Brochures, Employee Copy Right & Trade
Handbooks, Forms and Checklists, written Secret
training materials, and Co. newsletters
Finance Contractual Forms, Power Point Slides Copy Right & Trade
describing Financial Performance, Internal Secret
Financial Policies, and Employee Pay scale
Management Web Site Design, Internet domain names, Copy Right, Trade Secret
Information training manuals for computer equipment & Internet Domain
Systems and software, original computer code, e-
mail registry.
Research & New & useful inventions and biz processes, Patent and Trade Secret
Development improvements to existing inventions and
processes, and laboratory notes.
 Legal Aspects – IPRs

• Intellectual property rights are like any other property right. They allow
creators, or owners, of patents, trademarks or copyrighted works to benefit
from their own work or investment in a creation.

• With the advent of the knowledge and information technology era,

intellectual capital has gained substantial importance. Consequently,
Intellectual Property (“IP”) and rights attached thereto have become precious
commodities and are being fiercely protected.

• In recent years, especially during the last decade, the world has witnessed an
increasing number of cross-border transactions. Companies are carrying on
business in several countries and selling their goods and services to entities
in multiple locations across the world.
 Legal Aspects – IPRs

• Since intellectual property rights (“IPRs”) are country-specific, it is

imperative, in a global economy, to ascertain and analyze the nature of
protection afforded to IPRs in each jurisdiction.

• There are well-established statutory, administrative, and judicial frameworks

for safeguarding IPRs in India. India has complied with its obligations under
the Agreement on Trade Related Intellectual Property Rights (“TRIPS”) by
enacting the necessary statutes and amending the existing statues.
Legal Aspects – IPRs
Intellectual Property Relevant Enactment

Trademark The Trademarks Act, 1999

Copy Right The Copy Right Act, 1957

Patents The Patent Act, 1970; Later amended by acts of 1999, 2002
and 2005

Industrial Designs The Designs Act, 2000

Geographical Indications The Geographical Indications of Goods (Registration &

Protection) Act, 1999

Electronics Industry The Semiconductor Integrated Circuits Layout Designs Act,

2000

Agro-tech Industry The Protection of Plants and Varieties and Farmers Rights Act,
2001

Other The Biological Diversity Act, 2002

Why Promote and Protect IP?
There are several compelling reasons.

• First, the progress and well-being of humanity rest on its capacity to create and invent
new works in the areas of technology and culture.

• Second, the legal protection of new creations encourages the commitment of additional
resources for further innovation.

• Third, the promotion and protection of intellectual property spurs economic growth,
creates new jobs and industries, and enhances the quality and enjoyment of life.

• An efficient and equitable intellectual property system can help all countries to realize
intellectual property’s potential as a catalyst for economic development and social and
cultural well-being.

• The intellectual property system helps strike a balance between the interests of
innovators and the public interest, providing an environment in which creativity and
invention can flourish, for the benefit of all.
Patents
• Meaning: A patent is a document, issued, upon application, by a government
office (or a regional office acting for several countries), which describes an
invention and creates a legal situation in which the patented invention can
normally only be exploited (manufactured, used, sold, imported) with the
authorization of the owner of the patent.

• “Invention” means a solution to a specific problem in the field of technology.

An invention may relate to a product or a process. The protection conferred
by the patent is limited in time (generally 20 years).
Object of Patent Laws

• Encourage Scientific Research, New Technology and Industrial Processes

• Grant of Exclusive Monopoly Rights

• Stimulate New Inventions

• Pass the inventions into public domain for new advancement of Technology

Conditions for Patenting (Basic Requirements)

• 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.
• Not obvious: The invention is not obvious to a person of ordinary skill in the
field.
• Useful: Invention should possess utility, so it can be made or used in an
industry.
Types of Patents

• Utility Patents – granted to anyone who invents or discovers any new or

useful process, machine, manufacture, or composition of matter, or any
new and useful improvements thereof. (Most common form of patents)
• Patent is for 20 years and after 20 years, patents fall under public domain
which is available for all to use the invention freely.
• Utility Patents --- Business Method Patent: is a patent that protects an
invention that is or facilitates a method of doing business. Generally used
by IT/Internet Companies.
• Design Patents: It covers the invention of new, original and ornamental
designs for manufactured products. A design patent is good for 14 years
from a grant of patent.
Types of Patents

• Utility Patents protects the way an invention is used and works, while
Design Patents protects the way it looks.

• Plant Patents protects new variety of plants that can be reproduced

asexually. Such plants are reproduced by grafting or crossbreeding rather
than by planting seeds.

• The new variety can be different from previous plants in its resistance to
disease or drought or in its scent, appearance, color, or productivity. Thus,
a new color of rose or new type of hybrid vegetables would be eligible for
plant patent protection. Patent Term is for 20 years.
The process of obtaining patent

• Step 1: Write down the invention (idea or concept) with as much as details as
possible: Area of Invention, Description of Invention, How does it work,
Advantages

• Step 2: Include drawings, diagrams or sketches explaining working of invention

• Step 3: Check invention is patentable subject matter – under Indian Patent

Laws

• Step 4a: Patentability Search: Novelty, Non Obvious & Useful

• Step 4b: Decide whether to go ahead with patent

• Step 5: Draft (Write) Patent Application: In case if you are very early stage of

your application then you should go for Provisional Application.

The process of obtaining patent
• Step 6: Publication of Application

• Step 7: Request for Examination

• Step 8: Respond to Objections

• Step 9: Clearing all Objections

• Step 10: Grant of Patents

Patent Infringement

• Infringement is the unauthorized use of an invention claimed in a valid

patent. Patent infringement is an unauthorized act of selling,
manufacturing, offering to sell, importing or using in-force patented
invention without the permission of a patented owner.
Trademarks

• A trademark is any word, name, symbol, or device used to identify the

source or origin of products or services and to distinguish those products
or services from others. Trademarks, also provide consumers with useful
information.

• There are Four types of marks: Trademarks, Service marks, Collective

Marks and Certification Marks.

• Trademarks and Service marks are of the greatest interest to

entrepreneurs.
Types of Trademark
Types of Types of Marks Covered Duration
Trademark

Trademark Any word, name, symbol, or device used Term of registration of a

to identify and distinguish one trademark is ten years,
company’s goods from another. which may be renewed for
a further period of ten
Service Mark Similar to trademarks; are used to
years on payment of
identify the services or intangible
prescribed renewal fees.
activities of a business, rather than a
Non-user of a registered
business’s physical products.
trademark for a
Collective Mark Trademarks or service marks used by continuous period of five
the members of a cooperative, years is a ground for
association, or other collective group. cancellation of
registration of such
Certification Marks, words, names, symbols, or trademark at the behest
Mark devices used by a person other than it’s of any aggrieved party.
owner to certify a particular quality
about a good or service.
What is protected under Trademark Law?

• Words: Nirma, Kit Kat, Intel, Infosys, Honda, Holiday Inn, Whirlpool,
Google, Life’s Good
• Numbers and letters: 3M, AT & T, ONGC, SBI
• Designs or logos: Nike, Reebok, McDonald’s Logos/Design
• Sounds: Yahoo Yodel, Kingfisher Tune, Parle G, Nirma (Washing Powder
advt)
• Fragrances: Deodorants, Perfumes, Stationery with fragrances.
• Shapes: Coke’s bottle shape.
• Colors: Medicine with certain color.
• Trade dress: Outer packing (like Noni bottle and it’s packing), Colgate etc.
Exclusions from Trademark Protection

• Immoral or Scandalous matter: Satyam case

• Deceptive matter: Fresh Florida Oranges, if the oranges are not from
Florida.

• Descriptive marks: Mere protection of descriptive of a product or service

can’t be trademarked. Word like Golf ball. Xerox’s trademark was in
danger because Xerox is use as word. (Eg. I am going to Xerox this)

• Surnames: Mere surnames can’t be protected. Surname with other

product like William Jones Pizza can be protected.
The Process of obtaining a trademark
Step 1: Gather information
– Name of Applicant
– Applicant Entity
– Name and Designation of Authorized Signatory
– Details of Mark
– Details of Usage of mark in India, if any.
– Description of Goods and Services to which mark will be
commercially applied
Step 2: Search the mark
– Indian Trademark office search
– Generic Search on Google, Yahoo, Bing
Step 3: Filing Trademark application
Step 4: Responding to office action (Objection & Hearing Notice)
Step 5: Registration of the mark
Copyrights

• A Copyright is a form of intellectual property protection that grants to the

owner of a work of authorship the legal right to determine how the work
is used and to obtain the economic benefits from the work.
• The work must be in a tangible form, such as a book, operating manual,
magazine article, musical score, computer program, or architectural
drawing.
• If something is not in tangible form, such as a speech that has never been
recorded or saved on a computer disk, copy right law does not protect it.
• As per the law, original work is protected automatically from the time it is
created and put into tangible form whether it is published or not.
• The first copy right in USA was granted on May 31, 1790, to a Philadelphia
educator named John Berry for a spelling book.
What is Protected by a Copyright?

• Literary Works: Books, poetry, reference works, speeches, advertising copy,

employee manuals, games, and computer programs.

• Musical Compositions: A musical compositions, including any accompanying words,

that is in a fixed form (i.e musical score, cassette tape, CD, or an MP3 file) is

protectable.

• Computer Software: all forms of computer programs.

• Dramatic Works: Entire dramatic work (audio and video) can get single copyright.

• Pantomimes or Choreographic Works: Ballets, dance movements, and mime works.

• Pictorial, graphic, and sculptural works: Photographs, Prints, art productions,

cartoons, maps, globes, jewelry,fabrics, technical drawings, diagrams, posters, toys,

charts etc.
Exclusions from Copyright Protection

• Copyright can not protect ideas.

• Entrepreneur may have the idea to open a football themed

restaurant. The idea itself is not eligible for copyright protection.
However, if the entrepreneur writes down specifically what
restaurant will look like and how it would operate, that description
is copyrightable. The legal principle describing this concept is called,
idea expression dichotomy.

• Other Exclusions: Facts (e.g population statistics), titles (eg.

Introduction to entrepreneurship), and lists of ingredients (eg.
Recipes)
Process of obtaining Copyright

• Filing: Upon filing complete application form as prescribed, author

of rightful owner has to wait for a mandatory period of 30 days for
any objection that may be filed in the copyright office against the
claim. If any objection then additional 30 days.

• Examination: Response to objections/examination report has to be

filed within 30 days.

• Registration: Copyright registration certificate is issued by the

copyright office after the objections, if any, are overcome to the
satisfaction of the copyright office.
Copyright Infringement

• Copyright infringement is a growing problem around the world, with

estimates of the costs to owners at more than $ 20 Bn. Per year.

• For eg, less than a week after the film was released in United States,
bootleg video discs of the original Harry Potter movie were reported to be
for sale in at least two Asian countries.

• Copyright infringement occurs when work derives from another, exact

copy or shows substantial similarity to the original work.

• To prove infringement, a copyright owner is required to show that the

alleged infringer had a prior access to the copyrighted work and that the
work is substantially similar to the owner’s.
Trade Secrets

• Most companies, including start-ups, have a wealth of

information that is critical to their success but does not
qualify for patent, trademark, or copyright protection.

• Some of the information is confidential and needs to be kept

secret to help a firm maintain it’s competitive advantage.

• Trade secret is any formula, pattern, physical device, idea,

process, or other information that provides the owner of the
information with a competitive advantage in market place.
What qualifies for trade secret protection?

• Strongest case for trade secret protection is information that is

characterized by the following:

– Is not known to outside the company.

– Is known only to inside the company on need to know basis

– Is safeguarded by stringent efforts to keep the information

confidential.

– Is valuable and provides the company a compelling competitive

advantage.

– Was developed at great cost, time and effort.

– Cannot be easily duplicated, reverse engineered, or discovered.

Trade Secrets Protection Methods

• Restricting access

• Labeling documents

• Password protecting confidential computer files.

• Maintaining logbooks for visitors

• Maintaining logbooks for access to sensitive material.

• Maintaining adequate overall security measures.

Intellectual Property Audit

• An intellectual property audit is conducted to determine the intellectual

property a company owns.

• Two primary reasons for conducting an IP audit.

– It is prudent for a company to periodically determine whether their IP

is being properly protected.

– To conduct an IP audit is to remain prepared to justify it’s value in the

event of M & A. To justify valuation.
Process of conducting IP audit

• IP audit is conducted in following manner.

– First Step: To develop an inventory of a firm’s existing IP. Inventory

should cover all rights, licenses and permissions.

– Second Step: Identify WIP to ensure that they are being documented
in a systematic, orderly manner.

– Third Step: Specify firm’s trade secrets on documents and how they
are being protected.