Unit-4: Objective and Plan

Intellectual Property Rights Objective

• To give a general introduction to the concept
of Intellectual Property Rights and Their Role
in Technology Transfer
Plan of Unit
• Rationale of Protection
• Different kinds of IPRs
• IPRs and Licensing/Technology Agreements

Kinds of Property Nature of Intellectual Property

• Movable Property • Creation of human mind (Intellect)
Car, Pen, Furniture, Dress • Intangible property
• Immovable Property • Exclusive rights given by statutes
Land, Building • Attended with limitations and exceptions
• Intellectual Property • Time-bound
Literary works, inventions
• Territorial

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 Definition of Intellectual Property International Treaties
“Intellectual Property shall include the rights relating to
• Paris Convention for the Protection of Industrial
– literary, artistic and scientific works, Property 1883
– performances of performing artists, phonograms, and
broadcasts, • Berne Convention for the Protection of Literary and
– inventions in all fields of human endeavour Artistic Works 1886
– scientific discoveries • International Union for New Varieties of Plants
– Industrial designs (UPOV) 1961, 1972, 1978 and 1991
– trademarks, service marks and commercial names • Convention on Biodiversity, 1992
and designations • Agreement on Trade Related Aspects of Intellectual
– protection against unfair competition Property Rights 1994
and all other rights resulting from intellectual activity in • Internet Treaties 1996
the industrial, scientific, literary or artistic fields.”
(WIPO Convention)

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Basic Principle Major Intellectual Properties

• Contract between creator and sovereign state • Copyright and Related Rights
• Industrial Property
Protection for revelation  Patents
• Balance between rights of creator and public  Industrial Designs
 Trade Marks
interest  Geographical Indications
Rights and limitations and exceptions  Layout Designs/Topographies Integrated Circuits
 Trade Secrets
 Protection of New Plant Varieties

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 IP Laws of India Scope of Copyright
Act Ministry/Department
The Copyright Act, 1957 Higher Education • Original Literary, Dramatic, Musical and
The Patents Act, 1970 Industrial Policy & Promotion
Artistic Works
The Designs Act, 2000 Industrial Policy & Promotion
The Trade Marks Act, 1999 Industrial Policy & Promotion Work: Ideas expressed in material form
The Geographical Indications of Goods Industrial Policy & Promotion No copyright in ideas or facts
(Registration and Protection) Act, 1999
The Semiconductor Integrated Circuits Layout- Information Technology • Cinematograph Films
Design Act, 2000
The Protection of Plant Varieties and Farmers’ Agriculture and Cooperation • Sound Recordings
Rights Act, 2001

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Rights Moral Rights

• Two Kinds of Rights • Right of Authorship

Moral Rights • Right of Integrity
To protect personality of author – Digital Manipulation
Economic Rights – No Right for Display
To bring economic benefits • Inalienable Rights

CUTS Training Programme 14 Jul 11 11 11 12 12

 Economic Rights -1 Economic Rights 2

• Right of Reproduction • Adaptation Rights

– Conversion into another form e.g. literary to
– Making copies e.g. an edition of a novel drama
– Storage in computer memory – Abridgement
• Right of Distribution/Issuing Copies – Picturizations, comic formats
– Digital Distribution • Right to make a cinematograph film or sound
recording
• Right of Communication to the Public • Translation Rights
– Public Performance • Rental Rights
– Internet Communication • Resale Rights for original artistic works.

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Ownership of Rights Author as Owner of Rights:

Exceptions
• Literary – author
• Drama – Dramatist • In the course of employment – employer
• Music – Composer
• Employment by newspaper, magazine –
• Artistic work – Artist e.g. Painter, sculptor,
architect employer has publishing right; other rights
• Photograph – Photographer with author
• Author of Computer Programme – Person who • Photograph, painting, cinema for valuable
causes the work to be created consideration – person who pays money
• Cinematograph film – producer
• Sound Recording - producer

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 Author as Owner of Rights: Author as Owner of Rights:
Exceptions Exceptions
• Lecture delivered in public – Person • Work of apprentice – to Teacher
delivering • If teacher writes a book then teacher because he
• Government Work – Government is employed to teach and not write
• Question Papers – Paper setter
• Public Undertaking Work – public
• Encyclopedia, dictionary – editor for collection
undertaking
• Music under contract by film producer – film
• Work of International Organization – producer
International Organization

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Securing Copyright Duration of Copyright

• Formality free protection • Literary, dramatic, Musical and Artistic Works
published during life time of author: Life + 60
• Voluntary Registration (S. 44 & 45)
years
• Registration does not as a matter of law • All Other Works: 60 years from date of
establish that what is registered is in fact publication
and in law copyrightable subject matter – Posthumous, Anonymous Works
– Works of Government and Organizations
– Cinema and Sound Recording
– Photograph

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 RELATED RIGHTS Performer’s Rights

• Rights granted by law to communicators of • Recording, broadcasting and

works to the public communicating to the public of a live
– Performers performance
– Broadcasting Organizations • Presumption of transfer of performer’s
right to cinematographic film producer
• Duration: 50 years

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What is a PATENT?
Rights Of Broadcasting
Organizations • A patent is an exclusive right granted for an invention,
which is a product or a process that provides a new way
• Broadcast Reproduction Right of doing something, or offers a new technical solution
to a problem
• Re-broadcasting, Recording and
Communicating to the Public of a • The limited monopoly right granted by the state
enables an inventor to prohibit another person from
Broadcast manufacturing, using or selling the patented product or
• Duration: 25 Years from using the patented process, without permission.
• Period of Patents - 20 Years

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 WHAT CAN BE PATENTED? Conditions of Patentability

Inventions in all fields of technology, • Novelty: Invention not known to public

whether products or processes, if they prior to claim by inventor
meet the criteria of • Inventive Step: Invention would not be
• Novelty; obvious to a person with ordinary skill in
the art
• Non-obviousness (inventive step);
• Industrial Application: Invention can be
• Industrial application (utility). made or used in any useful, practical
activity as distinct from purely intellectual
or aesthetic one
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INVENTIONS – NOT PATENTABLE

Grant of Patent An Invention Which is frivolous or which
claims anything obviously contrary to the well
• Patents are granted by national patent offices established Natural Laws
after publication and substantial examination 1. E.g. Machine giving more than 100% performance
of the applications 1. Perpetual motion machine
2. Newton’s laws of gravitation
• In India provisions exist for pre-grant and post
grant opposition by others A machine whose primary or intended use or commercial
exploitation of which could be contrary to Public order or
• They are valid within the territorial limits of
which causes serious prejudice to human, animal or plant life:
the country 1. Device for house-breaking
• Foreigners can also apply for patents 2. Biological warfare material or device
3. Terminator gene technology
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4. embryonic stem cell 28
 INVENTIONS – NOT PATENTABLE INVENTIONS – NOT PATENTABLE

Mere Discovery of a Scientific Principle

A substance obtained by mere admixture resulting
or Formulation of an Abstract Theory only in the aggregation of the properties of the
or discovery of any living thing or non–living
substance occurring in nature components thereof or a process for producing
such substance, e.g.
• Discovery adds to the human knowledge by Paracetamol (Antipyretic) +Brufen (analgesic) = A drug (antipyretic
disclosing something ,not seen before, whereas, & analgesic)
• A soft drink that is only a mixture of sugar and some colorants
• Invention adds to human knowledge by suggesting an in water
action resulting in a new product or new process
But, a mixture resulting in synergistic properties of
• e.g. Archimedes Principle, Superconducting mixture of ingredients may be patentable e.g
Phenomenon as such – not patentable , However,
Soap, Detergent, lubricant.
• An apparatus /method for technological application may
be patentable
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INVENTIONS – NOT PATENTABLE Inventions - Not Patentable

Plants & animals in whole or any part thereof other

than micro- organisms, but including seeds, varieties
Mere arrangement or re-arrangement or and species and essentially biological process for
duplication of known devices,each functioning production or propagation of plants & animals.
independently of one another in a known way
– Clones and new varieties of plants:
for example -. – A process for production of plants or animals if it consists
 A Bucket fitted with torch, entirely of natural phenomena such as crossing or selection
 An Umbrella with fan
 A Clock and radio in a single cabinet
 A flour-mill provided with sieving

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 Inventions - Not Patentable • Non-patentable
A mathematical method or a business • A literary, dramatic, musical or artistic work or any
other aesthetic creation including cinematographic
method or algorithms or work and television productions
a computer programme per se These subject-matters fall under the copy-right
protection
These are the outcomes of mental process only
A mere scheme or rule or method of performing
and do not involve industrial process or product mental act or method of playing game
Examples –
For example- • Scheme for learning a language , Method for solving a
• Computer programme claimed by itself or as a crossword puzzle, Method of learning a language,
Method of teaching /learning - Not patentable
record on a carrier
• Novel apparatus for playing game or carrying
out a scheme – patentable
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Non-patentable
Presentation of information  Traditional Knowledge is already in public
domain, and hence, not patentable
Examples –  However, any value-addition using Traditional
Any manner or method of expressing information , whether Knowledge leading to a new process or product,
by spoken words, Visual display, symbols diagrams or possessing novelty, inventive step and industrial
information recorded on a carrier
applicability, can be patentable
Topography of integrated circuits.
An invention which, in effect, is the Traditional
• Inventions relating to atomic energy – Not
Knowledge or an aggregation or duplication of
patentable
known properties of traditionally known component
or components

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 Consumer Products
What is an Industrial Design?
• ‘Design’ means only the features of shape,
configuration, pattern, ornament or
composition of lines or colours applied to any
article whether in two dimensional or three
dimensional or in both forms, by any industrial
process or means, whether
manual,mechanical or chemical, separate or
combined, which in the finished article appeal
to and are judged solely by the eye.

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Pharmaceutical Product Textile & Jewellery

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 Rights of the Registered Proprietor What is Excluded?
• The proprietor of the registered design • Any mode or principle of construction or
has the exclusive right to apply the anything which is in substance a mere
design to any article in the class in mechanical device
which the design is registered
• Trade mark
• Period of protection is ten years • Property mark
extendable by 5 years. • Artistic work

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What is not registrable? TRADE MARK

• A design which is not new or original • A name of an enterprise or a Mark capable of

• A design which has been disclosed to the public anywhere being represented graphically, distinguishing the
in the world prior to the filing goods or services of one person from those of others
e. g., LUX, Godrej, TVS ,Telco, 555, APPLE
• A design which is not significantly distinguishable from
known designs or combination of known designs • Trade Mark can be -
o sign , words, letters, numbers,
• A design which comprises or contains scandalous or
o drawings, pictures, emblem,
obscene matter
o colours or combination of colours,
• A design which is contrary to public order or morality o shape of goods,
o graphic representation or packaging or
o any combination of the above
as applied to an article or a product.
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 Registration of Trade Mark Kinds of Trademarks
• Trade Marks are registered by national trade • Marks on goods
mark registries and are valid in that country • Service Marks
• Registration is made after examination and • Certification trademark
publication • Collective Marks
• Period of registration is for 10 years but can be • Well known marks
renewed indefinitely
• Trade Names

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TRADE MARK COLLECTIVE MARK

• Service Marks include banking, education, finance, insurance,
real estate ,entertainment,repairs, transport, conveying news and
information, advertising etc • COLLECTIVE MARK is a Mark that distinguishes the goods
• Certification Trade marks: Certified by the Proprietor as having -or services of members of association from marks of other
characteristics like geographical origin, ingredients, quality undertakings
e.g.AGMARK,WOOLMARK Certification mark cannot be used as a trade
mark. • Who owns collective Mark ?
» Certifies that the goods on which it is applied are Association of persons
made of 100% wool. It is registered in 140 countries
and licensed to the companies which assure that they
will comply with the strict standards set out by the • It could be manufacturers, producers, suppliers, traders or
Woolmark company , the owner of the mark. other profession bodies like institute of chartered
accountants, test cricketers association etc.

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WELLKNOWN MARKS
•Coca Cola for soft drink
Forms of TM
•Toblerone (Triangular- • Visual: Words, letters, numerals, devices
shaped chocolates) including drawings and symbols or 2-D
representations of object or a combination of
Trade Names two or more of these, colour combinations or
colour per se, 3-D sign as shape of goods or
•Godrej- Furniture, Refrigerators, Storewell, Compactor etc packaging.
• Audio: Sounds, Musical Notes
• Olfactory: Smells

•GE- Bulbs

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What is protected and what’s not? Geographical Indication

Geographical Indication is an indication which identifies
• Right to use TM in relation to goods/ goods as agricultural goods, natural goods or manufactured
services as registered are protected (If goods as originating, or anufactured in the territory of
TM consists of several parts, protection country, or a region or locality in that territory, where a
is for TM as a whole) given quality, reputation or other characteristic of such
goods is essentially attributable to its geographical origin.
• State Emblems, Official Hallmarks,
Emblems of Intergovernmental Explanation clarifies that GI need not be a geographical name
Organizations cannot be used as TM. E.g. Alphonso, Basmati
Goods include goods of handicraft or of industry and also foodstuff.

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 Registration Protectable Layout Designs?
• In India, geographical indications have to be registered.
• Geographical Indications Registry examines and • Original and novel Layout-Designs of
publishes the application before registration semiconductor integrated circuits can
• Registration is valid for 10 years but can be renewed get protection through registration
indefinitely
• Registration is done after examination
• Exclusive right to use the Geographical Indication on
the goods and publication of the application
• Right to obtain relief for infringement of the • Registration is valid for 10 years
Geographical Indication

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Trade Secrets
Non-registrable Layout-Designs
• Some inventions, data, information
• Not original cannot be protected by any of the
• Has been commercially exploited available means of IPRs. Such
anywhere in India or in a convention information is held confidential as a
country trade secret.
• Not inherently distinctive • Trade secret can be an invention, idea,
• Not inherently capable of being survey method,manufacturing process,
distinguishable from any other experiment results, chemical formula,
registered layout-design recipe, financial strategy, client
database etc.
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 When Trade Secrets are
How to guard Trade Secret?
preferred?
• Restricting number of people having access
• When invention is not patentable; to secret information
• Patent protection is limited to 20 years, • Signing confidentiality agreements with
when secret can be kept beyond that business partners and employees
period; • Using protective techniques like digital data
• When cost of patent protection are security tools and restricting entry into area
prohibitive; where trade secret is worked or held
• When it is difficult to reverse engineer • National legislations provide protection in
form of injunction and damages if secret
information is illegally acquired or used.
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Farmers’ Rights PROTECTION OF PLANT VARITIES

• To save, use, sow, re-sow, exchange, share or sell his farm produce
including seed in the same manner as he was entitled earlier (Seeds • Registrable varieties and criteria:
for sale should not be branded)
 New Varieties
• To full disclosure of the expected performance of the Seeds or
 Novelty, Distinctiveness, uniformity and stability
planting material by the plant breeder. Where these fail to perform
in the manner claimed by the breeder, the farmer may claim  Extant varieties
compensation from the plant breeder.  Distinctiveness, uniformity and stability
• Persons who can Register
Rights of Breeders  Breeders, farmers, universities, agricultural institutes
However, if the breeders’ variety is essentially derived from a • Period of protection
farmers’ variety, the breeder cannot give any authorisation without  15 years for annual crops
the consent of the farmers or communities from whose varieties
 18 years for trees and vines
the protected variety is derived.
• Production, Sale, Marketing
• Distribution, Export, Import 59 60
 International Organizations in IP
Researchers’ Rights
• World Intellectual Property Organization
Free and complete access to protected materials for • World Trade Organization
research use in developing new varieties of plants.
However, authorisation of the breeder is required Licensing of an IP
“whose repeated use of such variety as parental • Licence is a permission granted by an IP owner to another
line is necessary for commercial production of such person to use the IP on agreed terms and conditions,
other newly developed variety”. while he continues to retain ownership of the IP
• Licensing creates an income source
• It establishes a legal framework for transfer of technology
to a wider group of researchers and engineers
• Creates market presence for the technology or trademark
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Licensing Conditions of IPRs Is Licensing Profitable?

• Owners of IP prefer to transfer technology through • IBM revenue from patent licensing $ 1.7 billion (2002)
licensing agreements only
• Texas Instruments generated $ 3 billion in licensing in
• All rights or limited rights can be licensed
10 years
• Can be exclusive or non-excusive or sole (owner and
licensee) • US and Canadian Universities generated $ 1.1 billion in
• Most such agreements provide for royalty payment and royalties (2001)
non-transfer to a third party. • New York University $ 109 million (2004)
• Royalties can be upfront, part upfront and part % per
production/sale, only % per production/sale • Ohio University to get $52 M. From royalties on the
• The particular uses for which the IP can be used are also growth hormone drug SOMAVERT in 5 years (2011)
generally specified • CSIR $ 150 million in milestone payments + royalty
• Needs to be careful about the Competition law

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