The Berne Convention for the Protection of Literary and Artistic Works, usually known as the Berne

Convention, is an international agreement governing copyright, which was rst accepted in Berne,
Switzerland, in 1886. The Berne Convention has 179 contracting parties, most of which are parties to the
Paris Act of 1971.

The Berne Convention formally mandated several aspects of modern copyright law; it introduced the
concept that a copyright exists the moment a work is " xed", rather than requiring registration. It also
enforces a requirement that countries recognize copyrights held by the citizens of all other parties to the
convention.

The Berne Convention requires its parties to recognize the copyright of works of authors from other
parties to the convention (known as members of the Berne Union) at least as well as those of its own
nationals. For example, French copyright law applies to anything published, distributed, performed, or in
any other way accessible in France, regardless of where it was originally created, if the country of origin
of that work is in the Berne Union.

In addition to establishing a system of equal treatment that harmonised copyright amongst parties, the
agreement also required member states to provide strong minimum standards for copyright law.

Copyright under the Berne Convention must be automatic; it is prohibited to require formal registration.
However, when the United States joined the Convention on 1 March 1989, it continued to make statutory
damages and attorney's fees only available for registered works.

However, Moberg v Leygues (a 2009 decision of a Delaware Federal District Court) held that the
protections of the Berne Convention are supposed to essentially be "frictionless", meaning no registration
requirements can be imposed on a work from a different Berne member country. This means Berne
member countries can require works originating in their own country to be registered and/or deposited,
but cannot require these formalities of works from other Berne member countries.

Applicability
Under Article 3, the protection of the Convention applies to nationals and residents of countries that are
party to the convention, and to works rst published or simultaneously published (under Article 3(4),
"simultaneously" is de ned as "within 30 days") in a country that is party to the convention. Under Article
4, it also applies to cinematic works by persons who have their headquarters or habitual residence in a
party country, and to architectural works situated in a party country.

Country of origin
. Berne Convention relies on the concept of "country of origin."

• Determining country of origin is generally straightforward:

• If a work is published only in a party country, that country is the origin.

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 • Simultaneous publication within 30 days in several party countries: the one
with the shortest protection term is the origin.

• Simultaneous Publication Rules (Article 5(4)):

• For works simultaneously published in a party country and one or more non-parties,
the party country is the origin.

• Unpublished works or those rst published in a non-party country use the author's
nationality as the origin, provided the author is a national of a party country
(exceptions for cinematic and architectural works).

• Challenges in the Internet Age:

• Unrestricted online publication may be considered publication in every internet-

connected jurisdiction.

• Determining "country of origin" in the digital age is unclear.

• Legal disputes, such as Kernel v. Mosley (2011), highlight challenges in de ning the
country of origin for online works.

• Controversy among law academics persists regarding the determination of the

country of origin for digitally published content.

Kernel v. Mosley (2011), a U.S. court "concluded that a work created outside of the United States,
uploaded in Australia and owned by a company registered in Finland was nonetheless a U.S. work by
virtue of its being published online". However other U.S. courts in similar situations have reached
different conclusions, e.g. Håkan Moberg v. 33T LLC (2009). The matter of determining the country of
origin for digital publication remains a topic of controversy among law academics as well.

Copyright term

-Copyright Duration under the Berne Convention:

• Applies to all works except photographic and cinematographic.

• Minimum copyright duration is 50 years after the author's death.

• Parties may extend terms beyond the minimum; the EU did so in the 1993 Directive.

• Speci c Terms for Photography and Cinematography:

• Photography: Minimum term is 25 years from the year the photograph was created.
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 • Cinematography: Minimum is 50 years after the rst showing or after creation if not
shown within 50 years.

• Flexibility for Countries and Certain Works:

• Older revisions allow countries to set their protection terms.

• Certain works, like phonorecords and motion pictures, may have shorter terms.

• Treatment of Unknown Authors:

• If the author is unknown (anonymous or used a pseudonym), the term is 50 years

after lawful publication.

• If the author's identity becomes known, the standard term (50 years after death)
applies.

• Application of Copyright Law and "Rule of the Shorter Term":

• Copyright law of the country where claimed applies, as per the Berne Convention.

• Article 7(8) introduces "the rule of the shorter term."

• Unless the country's legislation provides otherwise, the copyright term abroad
cannot exceed the term xed in the country of origin.

• This ensures that an author is generally not entitled to a longer copyright abroad
than at home, even if foreign laws allow for a longer term.

• Global Variability:

• Not all countries have accepted the "rule of the shorter term," leading to variations
in copyright duration globally.

to works, protection must include "every production in the literary, scienti c and artistic domain,
whatever the mode or form of its expression" (Article 2(1) of the Convention).

Subject to certain allowed reservations, limitations or exceptions, the following are among the rights that
must be recognized as exclusive rights of authorization:

• the right to translate,

• the right to make adaptations and arrangements of the work,

• the right to perform in public dramatic, dramatico-musical and musical works,

• the right to recite literary works in public,

• the right to communicate to the public the performance of such works,

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 • the right to broadcast (with the possibility that a Contracting State may provide for a mere right
to equitable remuneration instead of a right of authorization),

• the right to make reproductions in any manner or form (with the possibility that a Contracting
State may permit, in certain special cases, reproduction without authorization, provided that the
reproduction does not con ict with the normal exploitation of the work and does not
unreasonably prejudice the legitimate interests of the author; and the possibility that a Contracting
State may provide, in the case of sound recordings of musical works, for a right to equitable
remuneration),

• the right to use the work as a basis for an audiovisual work, and the right to reproduce,
distribute, perform in public or communicate to the public that audiovisual work.

What are the main sources of copyright law?

• Primary Legislation:

• Copyright Act 1957: The main governing law for copyright protection in India.

• Copyright Rules 1958: Supporting rules providing additional details and

procedures.

• Amendments:

• 2012 Amendments: Substantial changes made to the Copyright Act in 2012.

• Legal System:

• Common Law System: India follows a common law legal system.

• Case Law: Case law plays a signi cant role in interpreting and setting precedents
in copyright law.

• International Agreements:

• Berne Conventions and Universal Copyright Convention: India is a member of

these international conventions.

• International Copyright Order, 1999:

• The Government of India passed the International Copyright Order, 1999.

• This order grants works rst published in countries that are members of certain
conventions the same treatment as if they were rst published in India.

These sources collectively form the framework for copyright law in India, encompassing
domestic legislation, international agreements, and the evolving body of case law.
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 Subsistence of Copyright
What type of works can be protected by copyright?

Copyright subsists throughout India in the following classes of works:

• original literary, dramatic, musical and artistic works

• cinematograph lms

• sound recordings.

These are the broad categories, and can be summarised as follows:

Literary works
The term literary works” encompasses all works that are in print or writing, irrespective of the quality or
style of the work. Literary work refers not only to works of prose and poetry, but anything that would be
under the ambit of literature”. However, there will be no copyright if the work is merely a collection of
words, the collection of which involved no literary skill. In India, a computer program is treated as a
literary work and is protected as such.

Dramatic works
A dramatic work includes any piece for recitation, choreographic work or entertainment in dumb show,
the scenic arrangement or acting form of which is xed in writing or otherwise but does not include a
cinematograph lm.

Musical works
Musical work means a work consisting of music and includes any graphical notation of such work but
does not include any words or any action intended to be sung, spoken or performed with the music. A
musical work need not be written to enjoy copyright protection.

Artistic works
Artistic work means a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an
engraving or a photograph, whether or not any such work possesses artistic quality; a work of
architecture; and any other work of artistic craftsmanship. Any colour scheme, layout or arrangement of
any alphabets or features quali es as an artistic work.

Cinematograph lms
Cinematograph lm means any work of visual recording on any medium produced through a process
from which a moving image may be produced by any means and includes a sound recording
accompanying such visual recording; “cinematograph” shall be construed as including any work produced
by any process analogous to cinematography including video lms.
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Sound recordings
Sound recording means a recording of sounds from which sounds may be produced regardless of the
medium on which such recording is made or the method by which the sounds are produced. A phonogram
and a CD-ROM are sound recordings.

What is required for works to qualify for copyright

protection?
• Categories of Works:

• Works falling under speci ed categories qualify for copyright protection.

• Originality Requirement:

• Originality: The work must be original.

• Expression of Thought: Originality is about the expression of thought, not

necessarily the originality of the underlying idea.

In essence, for a work to qualify for copyright protection, it needs to fall within eligible
categories, and it must exhibit originality in the expression of ideas rather than necessarily in the
ideas themselves.

What rights does copyright grant to the rights holder?

A copyright grants protection to the creator and his or her representatives (by way of an agreement), for
the works and prevents such works from being copied or reproduced without their consent.

The creator of a work can prohibit or authorise anyone to:

• reproduce the work in any form, such as print, sound, video, etc

• use the work for a public performance, such as a play or a musical work

• make copies/recordings of the work, such as via compact discs, cassettes, etc

• broadcast it in various forms

• translate the same to other languages.

Are moral rights protected (for example, rights to be identi ed as an author of a work or to object
to derogatory treatment of a work)?
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Yes, the Act grants an author special rights which exist independently of the author’s copyright, and
subsist even after the assignment (whole or partial) of said copyright. The author has the right to:

• claim authorship of the work

• restrain or claim damages with respect to any distortion, mutilation, modi cation, or other act in
relation to the said work if such distortion, mutilation, modi cation, or other act would be
prejudicial to their honour or repute.

These special rights can also be exercised by the legal representatives of the author.

A recent amendment to copyright law states that the right against distortion is available to the author even
after the expiry of the term of copyright. Previously, it was available only against distortion, mutilation
etc. done during the term of copyright of the work.

What is the duration of copyright in protected works?

The duration of protection for copyright works varies according to the type of work and the date of
creation:

• Literary, Dramatic, Musical, or Artistic Works:

• Duration: Copyright expires 60 years from the end of the calendar year in which
the author dies.

• Joint Author/Co-author: If a work has joint authors or co-authors, it expires 60

years from the end of the calendar year in which the last known author dies.

• Unknown Author: If the author's identity is unknown, copyright expires 60 years

from the end of the calendar year in which the work was rst published. In cases of
joint authors with one known and one unknown, it expires 60 years from the end of
the calendar year in which the known author dies.

• Cinematograph Films:

• Duration: Copyright subsists until 60 years from the beginning of the calendar
year following the year in which the lm is published.

• Sound Recordings:

• Duration: Copyright subsists until 60 years from the beginning of the calendar
year following the year in which the sound recording is published.
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 For how long do moral rights subsist in copyright works?

An author’s moral right, which is a right against distortion, is available even after the expiry of the term
of copyright.

Ownership
Who is the rst owner of a copyright work?

In Indian copyright law, the determination of the " rst owner" is signi cant and follows these
principles:

• Literary, Dramatic, or Artistic Work during Employment or Contract:

• If a work (e.g., photograph, painting, portrait) is created during employment or

under a contract of service or apprenticeship for publication in a newspaper,
magazine, or similar periodical, the author is the rst owner of copyright.

• Ownership for publication purposes is limited to the proprietor of the publication.

For all other purposes, copyright vests with the author.

• Photograph, Painting, or Portrait for Other Purposes:

• If a photograph, painting, or portrait is not created for publication but for other
purposes, the copyright vests with the person who commissioned the work, unless
there's a contract stating otherwise.

• Cinematograph Film:

• In the absence of a contract, the copyright in a cinematograph lm belongs to the

producer—the person commissioning the lm for valuable consideration.

• Work during Employment or Contract of Service:

• In works created during employment or under a contract of service or

apprenticeship, the employer is the rst owner of copyright in the absence of a
contract stating otherwise.

• Government Work:

• For works created by the government, the copyright vests with the government.

These provisions outline the initial ownership of copyright based on the circumstances of
creation, employment contracts, or agreements. The speci c terms of contracts play a crucial
role in determining the rst owner of copyright in various situations.
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 Can copyright in a work be jointly owned? If so, what are the rights of a co-owner?

As per the Act, work of joint authorship means a work produced by the collaboration of two or more
authors in which the contribution of one author is not distinct from the contribution of the other author or
authors. Thus, the Act recognises joint authorship. Joint authors fully enjoy all of the rights granted by the
Act, as mentioned previously. The term of copyright of a work of joint authorship is calculated with
respect to the author that dies last.

Can you register copyright? If so, what are the bene ts of such registration and what other steps, if
any, can you take to help you bring an infringement action?

Under Indian law, registration is not a prerequisite for acquiring a copyright in a work. A copyright in a
work is created when the work is created and given a material form, provided it is original.

However, the Act provides a procedure for copyright registration. Such registration does not confer any
special rights or privileges with respect to the registered copyrighted work. It is however suggested that
the owner of such original works register it as the certi cate of registration of copyright and the entries
made on the Register serve as prima facie evidence in a court of law when a dispute relating to ownership
of copyright arises. Copies of the entries and extracts from the Register that are certi ed by the Registrar
of Copyrights are admissible as evidence in all courts. Thus, registration only raises a presumption that
the person in the Register is the actual author, owner or rights holder. In infringement suits and criminal
proceedings, when time is of essence to obtain urgent orders, registration is of tremendous help.
Copyright notice is not necessary under Indian law to claim protection.

What steps should you take to validly transfer, assign or license copyright?

An assignment of copyright shall be valid only when it is in writing, signed by the assignor or by his/her
duly authorised agent.

Can moral rights be transferred, assigned or licensed?

No: moral rights cannot be transferred or assigned.

Performers’ rights and broadcasters' rights are distinct intellectual

property rights that protect different aspects of the entertainment industry. Let's explore each of
them:

Performers' Rights:

• De nition:

• Scope: Performers' rights protect the rights of individuals who contribute to a

performance.

• Applicability: Covers actors, musicians, dancers, and other performers.

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 • Protection: It safeguards their live performances and certain recorded
performances.

• Rights Granted:

• Reproduction: The right to control the recording or reproduction of their live

performances.

• Distribution: The right to control the distribution of reproductions of their

performances.

• Broadcasting: The right to control the broadcasting and other communication to

the public of their performances.

• Adaptation: The right to control the adaptation of their performances.

• Duration:

• The duration of performers' rights varies but is generally shorter than copyright
protection.

• Collecting Societies:

• Many performers join collecting societies that manage and collect royalties on their
behalf for the use of their performances.

Broadcasters' Rights:

• De nition:

• Scope: Broadcasters' rights protect the investment made by broadcasting

organizations in the compilation and presentation of their broadcasts.

• Applicability: Covers entities that transmit or broadcast content.

• Rights Granted:

• Reception: The exclusive right to authorize or prohibit the direct or indirect

reception of their broadcasts.

• Re-broadcasting: The right to control the rebroadcasting of their broadcasts.

• Fixation: The right to control the xation of their broadcasts.

• Duration:

• The duration of broadcasters' rights is generally shorter than copyright protection

but longer than performers' rights.
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 • Collecting Societies:

• In some jurisdictions, broadcasters may join collecting societies to manage and

collect royalties for the use of their broadcasts.

Relationship:

• Independent Rights:

• Performers' rights and broadcasters' rights are independent of each other.

• A performer's consent is required for the use of their performance, and a

broadcaster's consent is needed for the use of their broadcast.

• Overlap:

• In some cases, there may be an overlap when a performance is broadcast. In such

situations, both performers and broadcasters may have separate rights.

• Interplay with Copyright:

• Both performers' rights and broadcasters' rights may coexist with copyright
protection, offering additional layers of protection.

In summary, performers' rights focus on protecting the contributions of individual performers,

while broadcasters' rights focus on safeguarding the investment made by broadcasting
organizations in their broadcasts. These rights work in tandem with copyright protection but
address speci c aspects of the entertainment industry.
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Scope • Performers' rights • Broadcasters' rights
protect the rights of protect the
individuals who investment made by
contribute to a broadcasting
performance. organizations in the
compilation and
presentation of their
broadcasts.
Applicability • Covers actors, • Covers entities that
musicians, dancers, and transmit or broadcast
other performers. content.
Right • Reproduction: The • Reception: The
right to control the exclusive right to
recording or authorize or prohibit
reproduction of their live the direct or indirect
performances. reception of their
broadcasts.
• Distribution: The right • Re-broadcasting:
to control the distribution The right to control
of reproductions of their the rebroadcasting of
performances. their broadcasts.
• Broadcasting: The • Fixation: The right
right to control the to control the fixation
broadcasting and other of their broadcasts.
communication to the
public of their
performances.
• Adaptation: The right
to control the adaptation
of their performances.
Duration • The duration of • The duration of
performers' rights varies broadcasters' rights is
but is generally shorter generally shorter than
than copyright copyright protection
protection. but longer than
performers' rights.
Societies • Many performers join • In some jurisdictions,
collecting societies that broadcasters may join
manage and collect collecting societies to
royalties on their behalf manage and collect
for the use of their royalties for the use
performances. of their broadcasts.
 Assignment and License of Intellectual Property Rights:
• Assignment:

• De nition: Assignment involves the transfer of ownership of intellectual property

rights from one party (assignor) to another (assignee).

• Nature: It is a permanent and complete transfer of rights.

• Effect: The assignee becomes the new owner of the rights and gains the right to
enforce, license, or further transfer those rights.

• License:

• De nition: A license grants permission to use intellectual property rights without

transferring ownership.

• Nature: It is a permission-based arrangement, allowing the licensee to use the

rights within speci ed terms and conditions.

• Effect: The licensor retains ownership but grants certain rights to the licensee,
de ning the scope, duration, and conditions of use.

Statutory and Compulsory License:

• Statutory License:

• De nition: A license created by statute or law, providing a framework for speci c

uses of intellectual property.

• Purpose: Often established to balance the rights of creators with the public
interest, facilitating access to works or promoting competition.

• Example: In music, statutory licenses may govern the use of copyrighted music for
certain purposes, like radio broadcasts or streaming services.

• Compulsory License:

• De nition: A type of statutory license that mandates the owner of intellectual

property to grant licenses to third parties under speci c conditions.

• Purpose: Generally intended to prevent a monopoly and promote fair competition.

• Example: In copyright, a compulsory license might require a copyright owner to

license their work for certain uses, such as the reproduction and distribution of
musical compositions.

Key Concepts:
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 • Termination Rights:

• Assignment: Once rights are assigned, the assignor typically loses control over
the intellectual property, except for any reserved rights.

• License: A license may have speci ed termination conditions, allowing the licensor
to revoke permission under certain circumstances.

• Scope of Rights:

• Assignment: The assignee gains broad control and ownership of the intellectual
property rights.

• License: The licensor speci es the permitted uses, and the licensee's rights are
limited to those outlined in the license agreement.

• Compensation:

• Assignment: The assignor usually receives compensation upfront or as

negotiated.

• License: The licensor may receive ongoing royalties or other agreed-upon

compensation.

• Flexibility:

• Assignment: Less exible, as it involves a permanent transfer of rights.

• License: More exible, as it allows the licensor to retain ownership and control
over the intellectual property.

• Statutory and Compulsory License Conditions:

• Established by Law: Statutory and compulsory licenses are de ned and

regulated by statutory provisions.

• Conditions and Royalties: Speci c conditions, terms, and royalties are often
outlined in the law governing these licenses.

In conclusion, assignment involves the complete transfer of ownership, while a license grants
permission without transferring ownership. Statutory and compulsory licenses are legal
mechanisms established by law to address speci c uses of intellectual property, providing a
structured framework for such uses.
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Infringement AND REMEDIES:
Infringement
A copyright is infringed if a person without an appropriate permission or licence does anything that the
owner of the copyright has an exclusive right to do. There are two classes of infringement: primary
infringement and secondary infringement.

Primary infringement occurs where a person performs any of the following acts without the consent of the
righ maybe btva isabellats holder.

• Copying

• Issuing copies of the work to the public

• Renting or lending the work to the public

• Performing, showing or playing a copyright work in public

• Communicating the work to the public

• Making an adaptation of a copyright work or doing any of the acts listed above in relation to an
adaption.

4.2 What acts constitute secondary infringement of copyright?

Secondary infringement occurs where a person, with knowledge or reasonable grounds for such
knowledge, carries out any of the following actions in relation to infringing copies of the work:

• Makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for sale or hire

• Distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner
of the copyright

• By way of trade exhibits in public

• Imports into India

4.3 What acts are permitted with respect to copyright works (ie what exceptions apply)?

Under the Act there are certain circumstances which constitute fair dealing, which is not considered an
infringement. The lists of non-infringing acts are summed up below:
 Use
Parody
Conditions
There must be no intention to compete with the copyright holder, and the motive for use of
copyrighted matter must not be improper.
Use
Private use, including research
Conditions
Applicable only to literary, dramatic, musical or artistic works.
Use
Criticism or review
Conditions
–
Use
Reporting of current events, through newspaper, magazine or similar periodical, photographs or
lm.
Conditions
Exception – the publication of a compilation of addresses or speeches delivered in public is not fair
dealing.
Use
Reproduction of any work for the purpose of judicial proceedings or a report of judicial
proceedings, or in any work produced by any house of any Legislature, exclusively for the use of
the members of that Legislature.
Conditions
–
Use
The making of copies or adaptation of a computer program in order to utilise the computer
program for the purposes for which it was supplied; or to make back-up copies purely as a
temporary protection against loss, destruction or damage.
Conditions
Must be the lawful possessor of a copy of such computer program.
Use
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Any act done to achieve operating inter-operability of an independently created computer program
with other programs by a lawful possessor of a computer program.
Conditions
Only applicable if such information is not otherwise readily available.
Use
The making of copies or adaptation of the computer program from a personally legally obtained
copy for non-commercial personal use.
Conditions
–
Use
The reproduction of any literary, dramatic or musical work in a certi ed copy made or supplied in
accordance with any law for the time being in force.
Conditions
–
Use
The reading or recitation in public of any reasonable extract from a published literary or dramatic
work.
Conditions

Use
The publication in a collection, mainly composed of non-copyright matter, bona de intended for
the use of educational institutions, of short passages from published literary or dramatic works, not
themselves published for the use of educational institutions.
Conditions
Provided that not more than two such passages from works by the same author are published by the
same publisher during any period of ve years.
Use
Reproduction of a literary, dramatic, musical or artistic work by a teacher or a pupil in the course
of instruction; or as part of the questions to be answered in an examination; or in answers to such
questions.
Conditions

Use
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The performance, in the course of the activities of an educational institution, of a literary, dramatic
or musical work by the staff and students of the institution, or of a cinematograph lm or a sound
recording.
Conditions
The audience must be limited to such staff and students, the parents and guardians of the students
and persons directly connected with the activities of the institution or the communication to such
an audience of a cinematograph lm or sound recording.
Use
The making of sound recordings in respect of any literary, dramatic or musical work, if sound
recordings of that work have been made by or with the licence or consent of the owner of the right
in the work, or the person making the sound recordings has given a notice of his intention to make
the sound recordings, has provided copies of all covers or labels with which the sound recordings
are to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in
respect of all such sound recordings to be made by him.
Conditions

Use
The causing of a recording to be heard in public by utilising it, in an enclosed room or hall meant
for the common use of residents in any residential premises (not being a hotel or similar
commercial establishment) as part of the amenities provided exclusively or mainly for residents
therein; or as part of the activities of a club or similar organisation which is not established or
conducted for pro t; or as part of the activities of a club, society or other organisation which is not
established or conducted for pro t.
Conditions

Use
The performance of a literary, dramatic or musical work by an amateur club or society, if the
performance is given to a non-paying audience, or for the bene t of a religious institution.
Conditions

Use
The reproduction in a newspaper, magazine or other periodical of an article on current economic,
political, social or religious topics, unless the author of such article has expressly reserved to
himself the right of such reproduction.
Conditions
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Use
The publication in a newspaper, magazine or other periodical of a report of a lecture delivered in
public.
Conditions

Use
The reproduction, for the purpose of research or private study or with a view to publication, of an
unpublished literary, dramatic or musical work kept in a library, museum or other institution to
which the public has access.
Conditions
Provided that where the identity of the author of any such work (or, in the case of a work of joint
authorship, of any of the authors) is known to the library, museum or other institution, the
provisions of this clause shall apply only if such reproduction is made at a time more than 60 years
from the date of the death of the author (or, in the case of a work of joint authorship, from the death
of the author whose identity is known; if the identity of more authors than one is known, from the
death of such of those authors who dies last).
Use
The storing of a work in any medium by electronic means by a non-commercial public library for
preservation, if the library already possesses a non-digital copy of the work.
Conditions

Use
The making of not more than three copies of a book (including a pamphlet, sheet of music, map,
chart or plan) by or under the direction of the person in charge of a non-commercial public library
for the use of the library if such book is not available for sale in India.
Conditions

Use
The reproduction or publication of any matter which has been published in any Of cial Gazette
except an Act of a Legislature, or any Act of a Legislature subject to the condition that such Act is
reproduced or published together with any commentary thereon or any other original matter, or the
report of any committee, commission, council, board or other like body appointed by the
Government if such report has been laid on the Table of the Legislature, unless the reproduction or
publication of such report is prohibited by the Government, or any judgment or order of a court,
tribunal or other judicial authority, unless the reproduction or publication of such judgment or
order is prohibited by the court.
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Conditions

Use
The production or publication of a translation in any Indian language of an Act of a Legislature and
of any rules or orders made thereunder.
Conditions
Provided that no translation of such Act or rules or orders in that language has previously been
produced or published by the Government; or where a translation of such Act or rules or orders in
that language has been produced or published by the Government, if the translation is not available
for sale to the public. Also provided that such translation contains a statement at a prominent place
to the effect that the translation has not been authorised or accepted as authentic by the
Government.
Use
The making or publishing of a painting, drawing, engraving or photograph of a work of
architecture or the display of a work of architecture.
Conditions

Use
The making or publishing of a painting, drawing, engraving or photograph of a sculpture, or other
artistic work failing under Section 2(c)(iii) of the Act, if such work is permanently situated in a
public place or any premises to which the public has access.
Conditions

Use
The inclusion in a cinematograph lm of any artistic work permanently situated in a public place or
any premises to which the public has access; or any other artistic work, if such inclusion is only by
way of background or is otherwise incidental to the principal matters represented in the lm.
Conditions

Use
The use by the author of an artistic work, where the author of such work is not the owner of the
copyright therein, of any mould, cast, sketch, plan, model or study made by him for the purpose of
the work.
Conditions
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Use
The performance of a literary, dramatic or musical work or the communication to the public of
such work or of a sound recording in the course of any bona de religious ceremony or an of cial
ceremony held by the Central Government or the State Government or any local authority.
Conditions
Religious ceremony including a marriage procession and other social festivities associated with a
marriage.
Use
The adaptation, reproduction, issue of copies, or communication to the public of any work in any

accessible format by any person to facilitate persons with disabilities to access the works; or any
organisation working for the bene t of persons with disabilities in the case that the normal format
prevents the enjoyment of such work by such persons.
Conditions
The copies of the works in such accessible format are made available on a non-pro t basis and
only to recover the cost of production, and the organisation shall ensure that the copies are used
only by persons with disabilities, and take reasonable steps to prevent their entry into ordinary
channels of business.

4.4 Is it permissible to provide a hyperlink to, or frame, a work protected by copyright? If so, in what
circumstances?

Under the Act, hypertext linking does not per se constitute copyright infringement; however, reproducing
any copyrighted work, issuing copies of the work to the public or communicating the work to the public
could amount to copyright violation. But in the case of hyperlinking, the linking site is not reproducing
any work. If the reproduction occurs, it is at the user’s end, who visits the linked page via the link.
Technically, the linking site is only informing people about the presence of the work and giving the
address of the site where the work is present. It is at the user’s discretion to access the work by clicking
the link. But, nevertheless, the linking site is de nitely aiding in the distribution of the work.

4.5 Is a licensee of copyright able to bring an infringement action?

Under the Act, an infringement of copyright is actionable by the copyright owner. When copyright is
licensed, the authority to bring an infringement action depends on the type of licence involved.

An exclusive licence authorises the licensee to exercise a right which would otherwise be exercisable
exclusively by the copyright owner. One such right is the right to bring an infringement action.

A non-exclusive licensee may also bring an infringement action but only where the licence is in writing
and signed by the copyright owner and expressly grants the non-exclusive licensee the right of action.
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Remedies
5.1 What remedies are available against a copyright infringer?

The Act provides the following remedies for copyright infringement:

• Civil

• Criminal

However, it is only the rst two remedies, civil and criminal, which are of any real practical importance.
Under civil remedies, one may le for interlocutory injunction, pecuniary remedies, Anton Piller orders,
Mareva injunction and accounts rendition, delivery of infringing copies and damages for conversion.
Under criminal remedies, one may le for imprisonment and ne, seizure of infringing copies and
delivery of them to the owner. Under administrative remedies, one may le for moving the Registrar to
ban the import of infringing copies and delivery of the con scated infringing copies to the owner.

5.2 Are there any speci c remedies for online copyright infringement?

A court can direct that infringing websites be blocked by internet service providers (ISPs) either as part of
a John Doe order or a website-blocking order [RK Productions v BSNL (2012) 5 LW 626]. John Doe or
Ashok Kumar orders are ex-parte interim injunctions issued against infringers. John Doe orders saw a
change when the Bombay High Court passed an order dated July 26, 2016 in relation to the movie
‘Dishoom’ [Eros International and Another Vs BSNL & Others, Notice of Motion (L) No. 2147 Of 2016 in
Suit (L) No. 751 OF 2016]. This order recognises the impact of Ashok Kumar orders on unknown
defendants as it challenges to balance the ‘competing rights’. The order lays down a process to minimise
the negative impacts of Ashok Kumar orders and tailors down blocking from entire websites. The order
sets in place a mechanism that provides for selective blocking of content, veri cation of the list of URLs
as well as safeguards for the unknown defendants. Such a mechanism helps ensure that freedom of speech
online is not trampled in the ght against online piracy.

5.3 Under what circumstances is copyright infringement a criminal act and what sanctions

may apply?

The Act prescribes that the intentional infringement or abetment of an infringement of the copyright in a
work would be considered as criminal act. Criminal remedies for copyright infringement include:

• Punishment through imprisonment which may not be less than six months but which may extend
to three years

• Fines which shall not be less than Rs.50,000 and which may extend to Rs.200,000

• Search and seizure of the infringing goods including plates, which are de ned as including
blocks, moulds, transfers, negatives, duplicating equipment or any other device used or intended
to be used for printing or reproducing copies of the work
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 • Delivery up of infringing copies or plates to the owner of the copyright.

5.4 Is there a time limit for bringing a copyright infringement claim?

The time limit for bringing a copyright infringement claim is three years from the date of infringement.
Where the cause of action for ling a suit for infringement of copyright is a recurring one or continuing in
nature, the limitation period of three years would be taken to commence from the date of such last
infringement.

5.5 Can legal (or any other) costs be recovered in an action for copyright infringement? If so, what
percentage of costs will typically be recovered by the successful party?

Under the Act, the plaintiff can seek recovery of all three remedies, namely (a) account of pro ts (b)
compensatory damages and (c) conversion damages, which are assessed on the basis of value of the
article converted.

Enforcement
6.1 What courts can you bring a copyright infringement action in, and what monetary

thresholds, if any, apply?

Every suit or civil proceeding in respect of the infringement of copyright can be instituted before a
District Court or above.

6.2 Are there any other ways in which you can enforce copyright?

Copyright Board
The Copyright Board is a body constituted by the Central Government to discharge certain judicial
functions under the Act. The Board is entrusted with the task of adjudication of disputes pertaining to
copyright registration, assignment of copyright, grant of licences in respect of works withheld from
public, unpublished Indian works, production and publication of translations and works for certain
speci ed purposes. It does not deal with copyright infringement cases or with criminal piracy of copyright
works.

6.3 What agency bodies are responsible for promoting and/or enforcing copyright? If so,

what do they do?

In India, the Copyright Of ce is the government body responsible for promoting and enforcing copyright.
The Of ce is under the control of the Registrar of Copyrights who acts under the direction of the Central
Government. Speci cally, the Copyright Of ce is under the aegis of the Department of Higher Education,
Ministry of Human Resource Development.

6.4 What are the main collective rights management agencies that operate in your jurisdiction and
who do they represent?
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In India, there are some registered copyright societies which undertake the management and protection of
copyright in works of authors and other owners of such works.

Some of them are listed below:

• Musical works: The Indian Performing Right Society Limited (IPRS)

• Sound recording: Phonographic Performance Limited (PPL)

• Reprographic (photo copying) works: Indian Reprographic Rights Organization (IRRO)

• Performers’ (Singers’) Rights: Indian Singers’ Rights Association (ISRA).

6.5 Are copyright levies payable? By whom, and in what circumstances?

The Indian Act does not prescribe any copyright levies.

Copyright Reform
7.1 What do you consider to be the top recent copyright development?

Question of Employment under Section 17 of The Copyright Act

Neetu Singh vs. Rajiv Saumitra & Ors.

Citation: MANU/DE/1912/2018

The Plaintiff, sought permanent injunction against the Defendants from reproducing, publishing,
distributing, selling and offering for sale one of the copyrighted literary work “English for General
Competitions” and related artistic works, copyright of which was vested in the Plaintiff. The books
authored by her were earlier published through Paramount Reader Publication and thereafter Paramount
Reader Publication OPC Pvt. Ltd. Paramount Reader Publication was given the right to publish the books,
the same never being licensed, assigned or transferred to any of the Defendants. Copyright in the books
vested in the Plaintiff, this fact being in the knowledge of the Defendants was never objected by them.

The Plaintiff’s book illegally published by Defendant was a verbatim copy incorporating all artistic works
and mistakes originally appearing. The Plaintiff contended that in absence of contract of service between
parties and the fact of copyright in her favour was prima facie evidence of her authorship of the book.

In dealing with the issue whether a contract of service, as per Section 17 of the Act, existed between the
Parties, the Court dealt with fair use provision and distinguished between works for course of instruction
and for commercial purposes, and held that the Defendant’s act of selling books to students after copying
the study material amounts to commercial activity and thus cannot be deemed as fair use. The Plaintiff’s
employment can be determined by Articles of Association and the agreement, which, being absent, the
Plaintiff was held to be owner of copyright. Therefore, in case of a dispute regarding copyright between
employer and employee, the terms of employment are relevant.
 Delhi University Photocopying Case
The Chancellor, Masters & Scholars of University of Oxford & Ors. Vs.
Rameshwari Photocopy Service & Ors.
Citation: MANU/DE/3285/2016

The Court restrained Rameshwari Photocopy Service from photocopying copyrighted work based on a
petition led by the Appellant publishers. The Appellants alleged that the kiosk was violating their
copyright and was causing huge nancial losses, as students instead of buying textbooks were relying on
the photocopies.. The Court held that photocopying portions of books for personal use would amount to
fair use and copyright not being the divine right, the ban was revoked and the case dismissed.

An appeal was led to the Higher Bench of Delhi High Court wherein interim injunction was refused to
the Appellants and the Court held that the Defendants did not infringe the copyright as their work was
justi ed by purpose of educational instruction. The matter was remanded to single bench of the Court to
determine the necessity of copyrighted material in course packs for educational instruction. The Court
considered the inability of economically disadvantaged students to purchase different books and revoked
the ban, which was hailed by the studnets as a means of easy access to education.

Right to Dub Included In Right to Communicate To Public

Mr. Thiagrajan Kumararaja Vs. M/s Capital Film Works (India) Pvt. Ltd., S.P. Charan

Citation: MANU/TN/3844/2017

The Appellant contended that he had authorized the producer to use his script for making a cinematograph
lm in Tamil language alone, and not remake or dub the lm in any other language.

On dismissal, the Appellant led an appeal for permanent injunction against the Respondents on the
ground that since the rights were not assigned, the producer could not dub and make another lm under
Section 19 of the Act.

The Respondents contended that dubbing constituted the “right to communicate the lm to public” under
section 14 (d) (iii) of the Act, they paid consideration for the script, and thus being the rst authors,
converted it into a cinematograph lm with consent of the Appellant.

The Court held that under Section 14 of the Act, the producer is the author of the lm and has the right to
make its copy, sell or give it on hire or offer for sale or hire and also communicate it to public, which
includes dubbing. It was observed that “otherwise enjoys”, provided under Section 2(ff) enlarges the
scope of usage of right and enables the Respondent to dub the movie in language of his choice for
communication to public.

7.2 What do you consider will be the top copyright developments in the next year?

Petition Filed in Supreme Court to Challenge Constitutionality of Provisions on Compulsory and

Statutory Licensing in the Copyright Act
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M/S Lahari Recording Company vs. Union of India
Writ Petition(s) (Civil) No(s).: 667/2018

In the present petition, the Plaintiff, Lahari Recording Company, has challenged sections 31 (1) (b) and
section 31 D of the Act — on the grounds that they infringe the Plaintiff’s fundamental and constitutional
rights. While section 31 (1)(b) provides for a system of compulsory licensing of works whose owner has
refused to allow their communication to the public on reasonable terms, Section 31 D created a regime for
mandatory licensing of works to broadcasting organizations on terms formulated by the Intellectual
Property Appellate Board (IPAB).

The Plaintiff contends that section 31 (1) (b) does not envisage hearing the copyright owner on every
occasion on which a compulsory licence is granted to parties considered quali ed by the Intellectual
Property Appellate Board (IPAB). Similarly, section 31 D envisages the grant of a statutory licence
without hearing the copyright owner.The essence of the Plaintiff’s petition is that the impugned
provisions fundamentally alter the bargain that the copyright system is based on, by taking away the
incentive for copyright owners to create original content. The grievance of the Plaintiff is that the Sections
31(1)(b) and 31D of the Act would disrupt the long standing mutually negotiated voluntary license
agreements with broadcasters and with the coming of the impugned provisions, such broadcasters would
have no incentive to enter into and/or continue with the voluntary license agreements with the labels and
instead would attempt to terminate or wriggle out of their agreements with the labels in order to approach
the Appellate Board to have terms convenient to them xed and imposed upon the labels.

This makes these provisions, in Plaintiff’s view, arbitrary and thereby violative of Article 14 of the
Constitution of India. Given that section 31 (1) (b) gives IPAB the power to formulate the terms on which
a compulsory licence is to be granted by taking away this right from the copyright owner’s remit, the
Plaintiff contends that it makes an impermissible inroad into the contractual freedom of copyright owners
and unduly constrains the exercise of the rights that are a natural consequence of being a copyright owner.

The Plaintiff also challenges section 31 D on the grounds that the provision removes the relationship
between broadcasters and music labels from the realm of commercial negotiation and enables
broadcasters to utilise copyrighted content at subsidised and preferential rates. This, the Plaintiff
contends, unduly tips the scales in favour of broadcasters by prioritising the commercial pro tability of
broadcasters over the interests of copyright owners. By virtue of the fact that these provisions unduly
constrain the exercise of the rights of copyright owners, the Plaintiff contends that they take away the
incentive for a copyright owner to create more original content. On a practical level, the Plaintiff contends
that, by virtue of the existence of the statutory licensing route, broadcasters are likely to seek an escape
hatch from their contractual arrangements with copyright owners and instead seek to access the statutory
licensing route, which is more favourable for them.

Although no replies have been led in the matter thus far, if the Petitioner succeeds by convincing the
Supreme Court, this would become a landmark judgment by altering the foundation of Copyright Law.
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PATENT
Meaning of patent
A patent is an exclusive right granted by the government to an inventor, allowing them to
prevent others from using, making, and selling their invention for a speci c period. This
exclusive right also extends to improvements on previous inventions. The primary purpose of
patent laws is to incentivize inventors to contribute to their eld by providing them with exclusive
rights for their innovations.

In modern terms, a patent refers to the right granted to an inventor for any new, useful, non-
obvious process, machine, article of manufacture, or composition of matter. The term "patent" is
derived from the Latin word "patere," meaning "to lay open," indicating the public disclosure of
the invention. Three essential criteria determine the patentability of an invention:

• Novelty: The invention must be new and not known to the public in any form, including
oral, written, or any other form, on the date of ling the application.

• Non-obviousness: The invention must represent a signi cant improvement over

existing knowledge, and a mere change in technology is insuf cient for patent rights.

• Utility: The invention must be useful in a bona de manner, providing a genuine bene t
to society and not intended solely for illegal purposes.

A patent has a limited term of 20 years, starting from the date of ling the patent application. It is
a territorial right, meaning it is only valid in the country where it has been granted. Legal action
against patent infringement can only be pursued within the jurisdiction of the granted patent.

An invention considered as new if, on the date of ling the application, any such invention is not known
to the public in any form, i.e. oral, writing, or any other form. Anything shall not be termed as inventive if
such a thing is already known to the public domain. The patent has a limited term of 20 years, which is
counted from the date of ling of the patent application. A patent is a territorial right. Thus it can only be
applied in the country where it has been granted. A patent is a territorial right. Thus it can only be applied
in the country where it has been granted. Therefore, any legal action against infringement or infringement
of patent rights can only be taken in that country. To obtain patent protection in different countries, each
country must apply for a patent. The Patent Cooperation Treaty (PCT) provides a way to le an
international patent application in which a patent can be led through a single patent application in a large
number of countries. However, the PCT of a patent remains discretionary of the individual patent of ce
only after the application is led.

Under the Indian patent law, a patent can be obtained only for an invention which is new and useful. The
invention must relate to the machine, article or substance produced by a manufacturer, or the process of
manufacture of an article. A patent may also be obtained for innovation of an article or of a process of
manufacture. In respect to medicine or drug and certain classes of chemicals, no patent is granted for the
substance itself even if it is new, but the process of manufacturing and substance is patentable. The
application for a patent must be true and the rst inventor or the person who has derived title from him,
the right to apply for a patent being assignable.
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 • Discoveries and Scienti c Theories: Inventions that are mere discoveries of existing natural
laws or scienti c theories may be excluded.

• Mathematical Methods: Purely mathematical methods and algorithms may be considered non-
patentable.

• Aesthetic Creations: Inventions that are considered purely aesthetic, such as artistic or literary
works, may be excluded.

• Schemes, Rules, and Methods for Performing Mental Acts or Doing Business: Methods
related to mental acts, business methods, or mere schemes and rules may not be patentable.

• Presentations of Information: Pure presentations of information without a technical effect may

be excluded.

• Computer Programs: In some jurisdictions, computer programs "as such" may be excluded
from patentability. However, inventions that involve a technical effect or solve a technical problem
using software may still be patentable.

• Methods of Medical Treatment or Diagnosis: Inventions related to methods of medical

treatment or diagnosis may be excluded from patentability.

• New Plant or Animal Varieties: Varieties of plants and animals may be excluded, as they are
often subject to separate plant variety protection.

• Inventions Contrary to Public Order or Morality: Inventions that are against public order or
morality may be excluded.

• Inventions Whose Commercial Exploitation is Prohibited by Law: If the commercial

exploitation of an invention is prohibited by law, it may not be patentable.

Under the Indian patent law, a patent can be obtained only for an invention which is new and useful. The
invention must relate to the machine, article or substance produced by a manufacturer, or the process of
manufacture of an article. A patent may also be obtained for innovation of an article or of a process of
manufacture. In respect to medicine or drug and certain classes of chemicals, no patent is granted for the
substance itself even if it is new, but the process of manufacturing and substance is patentable. The
application for a patent must be true and the rst inventor or the person who has derived title from him,
the right to apply for a patent being assignable.

Some inventions cannot be patented. In the European Patent Convention (EPC) law there is the list
of non-patentable subject-matter which includes methods of medical treatment or diagnosis, and
new plant or animal varieties. Further information on such elds can be obtained from a patent attorney.
Nor many patents be granted for inventions whose exploitation would be contrary to public order or
morality (obvious examples being land-mines or letter-bombs).The following are not regarded as
inventions, discoveries, innovations, scienti c theories and mathematical methods, aesthetic creations,
such as art or literature works or art of writing, schemes, rules and methods for performing mental acts,
playing games or doing business, presentations of information, computer software.
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 Patent Cooperation Treaty ,1970

The Patent Cooperation Treaty (PCT) is an international treaty established in 1970 to simplify the process
of ling patent applications in multiple countries. The primary goal of the PCT is to provide a
standardized and centralized procedure for patent applicants seeking protection for their inventions in
various countries.

Key features of the Patent Cooperation Treaty (PCT) include:

• International Filing: The PCT allows applicants to le a single international patent application,
known as a PCT application, instead of ling separate applications in each desired country. This
simpli es the initial ling process.

• International Search: A PCT application undergoes an international search, conducted by an

international searching authority. This search provides the applicant with a report on the prior art
relevant to their invention.

• International Publication: The international application is published, along with the search
report, after 18 months from the priority date. This publication is accessible to the public and helps
create transparency in the patenting process.

• Optional Preliminary Examination: The PCT system offers an optional international

preliminary examination, which provides a non-binding opinion on the patentability of the
invention. This step assists applicants in making informed decisions about pursuing patent
protection in speci c countries.

• Designation of Target Countries: Applicants can designate the countries where they wish to
seek patent protection (referred to as national or regional phases) within 30 or 31 months,
depending on the country, from the priority date.

• Streamlined National Phase Entry: The PCT simpli es the entry into the national phase in each
designated country. Applicants can leverage the international work already done during the PCT
process.

By facilitating a centralized ling process and providing a framework for international cooperation, the
PCT aims to make the global patent system more accessible and ef cient for inventors and applicants. It
does not grant patents directly but streamlines the process for seeking patent protection in multiple
countries. The World Intellectual Property Organization (WIPO) administers the PCT.

History of Patent
• Act VI of 1856: The rst step in the history of patents in India was Act VI of 1856. Enacted with
the main objective of encouraging inventions of new and useful manufactures, the legislation aimed
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 to motivate inventors to disclose their inventions for the bene t of the public. However, this Act
was repealed by Act IX of 1857, as it had been enacted without the approval of the British Crown.

• Act XV of 1859: In 1859, a fresh legislation was introduced as Act XV of 1859, focusing on
granting 'exclusive privileges' to useful inventions. This legislation brought speci c modi cations,
such as granting exclusive privileges only to useful inventions, extending the priority period from 6
months to 12 months, and excluding importers from the de nition of an inventor. The Act
underwent amendments in 1872, 1883, and 1888.

• Indian Patent and Design Act, 1911: This legislation repealed all previous acts related to
patents. The Indian Patent and Design Act, 1911, governed patents in the country for a signi cant
period.

• Patents Act 1970: The modern era of patent law in India began with the introduction of the
Patents Act 1970, which came into force on April 20, 1972. This Act, along with the Patent Rules
1972, replaced the Indian Patent and Design Act 1911. The Patents Act 1970 was based on the
recommendations of the Ayyangar Committee, headed by Justice Ann. The Ayyangar Committee
suggested important changes, including allowing process patents for inventions related to drugs,
food, and chemicals.

• Amendments: The Patents Act, 1970, underwent signi cant amendments, particularly with the
Patents (Amendment) Act, 2005. This amendment extended product patents to all areas of
technology, including food, medicine, chemicals, and microorganisms. It repealed provisions
related to exclusive marketing rights (EMR) and introduced provisions for the grant of compulsory
licenses. Additionally, provisions related to pre-grant and post-grant oppositions were introduced.

These legislative developments re ect the evolution of India's patent system, aligning it with changing
global standards and addressing the needs of inventors, industries, and the public.

What can be patented?

Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the exclusions regarding what can be
patented in India. There are certain criteria which have to be ful lled to obtain a patent in India. They are:

• Patent subject:

The most important consideration is to determine whether the Invention relates to a patent subject matter.
Sections 3 and 4 of the Patents Act list non-patentable subject matter. Unless the Invention comes under
any provision of Section 3 or 4, it means that it consists of a subject for a patent.

• Novelty:

Innovation is an important criterion in determining the patent potential of an invention. Under Section 2(l)
of the Patent Act, a novelty or new Invention is de ned as “no invention or technology published in any
document before the date of ling of a patent application, anywhere in the country or the world”. The
complete speci cation, that is, the subject matter has not fallen into the public domain or is not part of
state of the art”.
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 Simply, the novelty requirement basically states that an invention that should never have been published
in the public domain. It must be the newest which have no same or similar prior arts.

• Inventive steps or non-clarity:

Under Section 2(ja) of the Patents Act, an inventive step is de ned as “the characteristic of an invention
that involves technological advancement or is of economic importance or both, as compared to existing
knowledge, and invention not obvious to a person skilled in the art.” This means that the invention should
not be obvious to a person skilled in the same eld where the invention is concerned. It should not be
inventive and obvious for a person skilled in the same eld.

• Capable of industrial application:

Industrial applicability is de ned in Section 2 (ac) of the Patents Act as “the invention is capable of being
made or used in an industry”. This basically means that the Invention cannot exist in the abstract. It must
be capable of being applied in any industry, which means that it must have practical utility in respect of
patent.

These are statutory criteria for the patent of an invention. In addition, other important criteria for
obtaining a patent is the disclosure of a competent patent. A competent patent disclosure means a patent
draft speci cation must adequately disclose the Invention, so as to enable a person skilled in the same
eld related to carrying out the Invention with undue efforts.

Rights and obligations of the patentee

Rights of Patentee
• Right to exploit patent: A patentee has the exclusive right to make use, exercise, sell or
distribute the patented article or substance in India, or to use or exercise the method or process if
the patent is for a person. This right can be exercised either by the patentee himself or by his
agent or licensees. The patentee’s rights are exercisable only during the term of the patent.

• Right to grant license: The patentee has the discretion to transfer rights or grant licenses or enter
into some other arrangement for a consideration. A license or an assignment must be in writing
and registered with the Controller of Patents, for it to be legitimate and valid. The document
assigning a patent is not admitted as evidence of title of any person to a patent unless registered
and this is applicable to assignee not to the assignor.

• Right to Surrender: A patentee has the right to surrender his patent, but before accepting the
offer of surrender, a notice of surrender is given to persons whose name is entered in the register
as having an interest in the patent and their objections, if any, considered. The application for
surrender is also published in the Of cial Gazette to enable interested persons to oppose.

• Right to sue for infringement: The patentee has a right to institute proceedings for infringement
of the patent in a District Court having jurisdiction to try the suit.
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Obligations of patentee
• Government use of patents: A patented invention may be used or even acquired by the
Government, for its use only; it is to be understood that the Government may also restrict or
prohibit the usage of the patent under speci c circumstances. In case of a patent in respect of any
medicine or drug, it may be imported by the Government for its own use or for distribution in any
dispensary, hospital or other medical institution run by or on behalf of the Government. The
aforesaid use can be made without the consent of the patentee or payment of any royalties. Apart
from this, the Government may also sell the article manufactured by patented process on royalties
or may also require a patent on paying suitable compensation.

• Compulsory licenses: If the patent is not worked satisfactorily to meet the reasonable
requirements of the public, at a reasonable price, the Controller may grant compulsory licenses to
any applicant to work the patent. A compulsory license is a provision under the Indian Patent Act
which grants power to the Government to mandate a generic drug maker to manufacture
inexpensive medicine in public interest even as a patent in the product is valid. Compulsory
licenses may also be obtained in respect of related patents where one patent cannot be worked
without using the related patent.

• Revocation of patent: A patent may be revoked in cases where there has been no work or
unsatisfactory result to the demand of the public in respect of the patented invention.

• Invention for defence purposes: Such patents may be subject to certain secrecy provisions, i.e.
publication of the Invention may be restricted or prohibited by directions of Controller. Upon
continuance of such order or prohibition of publication or communication of patented Invention,
the application is debarred for using it, and the Central Government might use it on payment of
royalties to the applicant.

• Restored Patents: Once lapsed, a patent may be restored, provided that few limitations are
imposed on the right of the patentee. When the infringement was made between the period of the
date of infringement and the date of the advertisement of the application for reinstatement, the
patent has no authority to take action for infringement.

Term Of Patent

The term of a patent refers to the duration for which the exclusive rights granted by the patent are in
effect. The term of a patent is limited and varies depending on the type of patent and the laws of the
country in which the patent is granted. Here are some general principles regarding the term of patents:

• Utility Patents (Inventions): In many jurisdictions, utility patents, which cover new and useful
inventions or discoveries, have a standard term of 20 years from the ling date of the patent
application. However, the actual term can be affected by factors such as the type of patent system
used in a particular country.
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 • Design Patents: Design patents, which protect the ornamental design of an article, typically have
a shorter term than utility patents. In many jurisdictions, the term for design patents is 15 years
from the grant date.

• Plant Patents: Patents for new varieties of plants are known as plant patents. The term for plant
patents is also typically 20 years from the ling date.

It's important to note that the term of a patent can be in uenced by various factors, and certain
circumstances may lead to adjustments or extensions of the term. For example:

• Patent Term Adjustment (PTA): In some jurisdictions, the term of a patent may be adjusted to
compensate for certain delays in the patent examination process.

• Patent Term Extension (PTE): In speci c situations, such as for certain pharmaceuticals or plant
protection products, some jurisdictions allow for a limited extension of the patent term.

• Maintenance Fees: In many countries, patent holders are required to pay maintenance fees to keep
the patent in force. Failure to pay these fees can result in the expiration of the patent before the end
of its maximum term.

Registration of Patent

The procedure for patent registration involves several steps, and the speci cs can vary based on the
country or region in which you are seeking patent protection. Here is a general overview of the patent
registration process:

• Determine Patentability:

• Assess whether your invention is eligible for patent protection. Generally, patents are
granted for new, useful, and non-obvious inventions.

• Conduct a Patent Search:

• Perform a comprehensive patent search to ensure that your invention is novel and not
already patented by someone else. This step helps in assessing the patentability of your
invention.

• Prepare a Patent Application:

• Draft a patent application that describes your invention in detail. The application should
include drawings, claims de ning the scope of protection, and a written description of the
invention.

• File the Patent Application:

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 • Submit your patent application to the relevant patent of ce. This can be done online or by
mail, depending on the procedures of the speci c patent of ce. Include the required ling
fees.

• Patent Examination:

• The patent of ce will examine your application to ensure that it meets the criteria for
patentability. This examination may involve correspondence between you and the patent
examiner.

• Publication:

• Once your patent application is deemed allowable, it is typically published in the of cial
patent gazette. This publication makes the details of your invention publicly available.

• Opposition Period (In Some Countries):

• Some countries provide a period during which third parties can oppose the grant of the
patent. If there are no oppositions or if oppositions are resolved, the patent may proceed to
grant.

• Grant of Patent:

• If your patent application satis es all requirements and there are no valid objections or
oppositions, the patent of ce will grant you a patent. The term of protection generally
begins from the ling date of your application.

• Payment of Maintenance Fees:

• To keep your patent in force, you may need to pay maintenance fees at regular intervals.
Failure to pay these fees can result in the expiration of the patent.

It's important to note that the patent registration process and requirements can vary by jurisdiction.
Consulting with a patent attorney or agent experienced in the relevant jurisdiction is advisable to navigate
the speci c requirements and ensure a successful patent registration.

Procedure of Patent
• Step 1: Write about inventions (idea or concept) with each and every detail.

Collect all information about your Invention such as:

1. Field of Invention

2. What does the Invention describe

3. How does it work

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 4. Bene ts of Invention

If you worked on the Invention and during the research and development phase, you should have some
call lab records which are duly signed with the date by you and the concerned authority.

• Step 2: It must involve a diagram, drawing and sketch explains the Invention

Drawings and drawings should be designed so that the visual work can be better explained with the
invention work. They play an important role in patent applications.

• Step 3: To check whether the Invention is patentable subject or not.

Not all inventions can be patentable, as per the Indian Patent Act there are some inventions which have
not been declared patentable (inventions are not patentable).

• Step 4: Patent Discovery

The next step will be to nd out if your Invention meets all patent criteria as per the Indian Patent Act-

5. The invention must be novel.

6. The Invention must be non- obvious.

7. The Invention must have industrial applications.

• Step 5: File Patent Application

If you are at a very early stage in research and development for your Invention, then you can go for a
provisional application. It offers the following bene ts:

8. Filing date.

9. 12 months time for ling full speci cation.

10. Lesser cost.

After ling a provisional application, you secure the ling date, which is very important in the patent
world. You get 12 months to come up with the complete speci cation; your patent application will be
removed at the end of 12 months.

When you have completed the required documents and your research work is at a level where you can
have prototypes and experimental results to prove your inventive move; you can le the complete
speci cation with the patent application.

Filing the provisional speci cation is an optional step if you are in the stage where you have complete
knowledge about your Invention you can go straight to the full speci cation.

• Step 6: Publication of the application

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 Upon ling the complete speci cation along with the application for the patent, the application is
published 18 months after the rst ling.

If you do not wish to wait until the expiration of 18 months from the ling date to publish your patent
application, an initial publication request may be made with the prescribed fee. The patent application is
usually published early as a one-month form request.

• Step 7: Request for Examination

The patent application is scrutinized only after receiving a request for an RFE examination. After
receiving this request, the Controller gives your patent application to a patent examiner who examines the
patent application such as the various patent eligibility criteria:

11. Patent subject

12. Newness

13. Lack of clarity

14. Inventory steps

15. Industrial application

16. By enabling

The examiner makes the rst examination report of the patent application upon a review for the above
conditions. This is called patent prosecution. Everything that happens for a patent application before the
grant of a patent is usually called patent prosecution.

The rst examination report submitted to the Controller by the examiner usually includes prior art
(existing documents prior to the ling date) that are similar to the claimed invention and is also reported
to the patent applicant.

• Step 8: Answer the objections

Most patent applicants will receive some type of objections based on the examination report. The best
thing is to analyze the examination report with the patent professional (patent agent) and react to the
objections in the examination report.

This is an opportunity for an investor to communicate his novelty over the prior art in examination
reports. Inventors and patent agents create and send a test response that tries to prove that their Invention
is indeed patentable and meets all patent criteria.

• Step 9: clearance of objections

The Controller and the patent applicant is connected for ensuring that all objections raised regarding the
invention or application is resolved and the inventor has a fair chance to prove his point and establish
novelty and inventive steps on other existing arts.
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 Upon receiving a patent application in order for grant, it is the rst grant for a patent applicant.

• Step 10:

Once all patent requirements are met, the application will be placed for the grant. The grant of a patent is
noti ed in the Patent Journal, which is published periodically.

Grounds for opposition

An application for a patent may be opposed by either a prior grant or a subsequent grant by any person on
the grounds speci ed in s 25 (1) and 25 (2) of the former Act. No other grounds stated in the Act can be
taken to oppose the patent. Some major opposition grounds, common to both pre-grant and post-grant
opposition, are mentioned below:

17. The Invention was published previously in India or elsewhere or was claimed previously in India.

18. The Invention is the formation of a part of the prior public knowledge or prior public use or
traditional knowledge of any community.

19. The Invention is obvious and lacks an inventive step.

20. The Invention does not constitute an invention within the meaning of the Act, or the Invention is
not patentable under the Act.

21. Failure to disclose information or furnishing false information relating to foreign by the applicant.

Pre-Grant Protest: Section 25 (1) of the Patent Act and Rule 55 of the Patent Rules, 2003 provide the
procedure to be followed for pre-grant opposition. Pre-grant opposition can be initiated by anyone after
the application is published and before the patent is granted. If a request for examination is led to oppose
the application, the Controller considers representation only. If a request for examination has not been
made by the applicant, it is possible for the opponent as an interested person to rst le a request for
examination under Section 11B, and then le a pre-grant opposition.

Post-grant opposition: The procedure is followed to oppose the grant under Section 25 (2) of the Patents
Act, 1970 and Rule 55A to 70 of the Patent Rules, 2003. A Post-grant opposition can be led by any
person interested in any of the speci c grounds before a period of one year from the date of publication of
the grant of the patent. Unlike a pre-grant protest, a pre-grant protest must be led by an individual and
not by a person. The expression (people interested) is de ned under section 2(t) of the Patents Act, 1970
wherein a person/party is engaged, or is conducting research in the same eld with which the Invention
(which is to be opposed) is concerned.

What are the Authorities concerning patent

The Controller of Patents is considered as the principal of cer responsible for administering the patent
system in India. The Controller is regarded as the overall supervisor of the four Patent Of ces in Chennai,
Delhi, Mumbai and Kolkata. Since the Controller also acts as the Registrar of Trademarks with the Head
Of ce of the Trade Of ce in Mumbai, the Controller acts as a patent from his of ce in Mumbai.
Of cially, the patent has its head of ce in Kolkata (Calcutta). Patents granted under the Patents Act and
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 other of cers of the Patent Of ce discharge their functions under the direction or regulation of the
Controller.

Patent Infringement
Patent infringement is a violation that involves the unauthorized use, production, sale, or offer for sale of
another's patented invention. Various types of patents, such as utility patents, design patents, and plant
patents, can be infringed upon. The fundamental principle underlying patent infringement is that
unauthorized parties are not allowed to use patented technologies without the owner's permission.

In cases of patent infringement, the court typically compares the subject matter covered by the patent with
the subject matter used by the "infringer." Infringement occurs when the infringer utilizes patented
material in an exact or substantially similar form. Patent infringement can happen through direct or
indirect means.

• Direct Patent Infringement:

• This is the most common form of infringement, where the invention that infringes on
patent claims is either explicitly described in the patent or performs substantially the same
function.

• Indirect Patent Infringement:

• Indirect infringement is further divided into two types:

• a. Infringement by Inducement:

• This occurs when a third party engages in activities that cause another person to directly
infringe the patent. Examples include selling parts speci cally designed for use in a
patented invention, selling an invention with instructions for use that infringes on a
method patent, or licensing an invention covered by another's patent. The inducer must
knowingly assist in the infringement, although intent to infringe on the patent is not
required.

• b. Contributory Infringement:

• This involves the sale of components or materials made for use in a patented invention
and with no other commercial purpose. While there is some overlap with inducement,
contributory infringement requires a high level of knowledge. Sellers must have the intent
for direct infringement, and for indirect infringement to be applicable, there must be an
underlying act of direct infringement.

In summary, patent infringement is a complex legal concept that encompasses unauthorized use,
production, or sale of patented inventions. The distinction between direct and indirect infringement helps
clarify the various ways in which patent rights can be violated.
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 Doctrine of Equivalents And Doctrine of Colourable Variation

Doctrine of Equivalents:

Patent infringement is generally categorized into two types: literal infringement and infringement under
the doctrine of equivalents. Literal infringement occurs when each element in a claim corresponds exactly
to the alleged infringement device or process. On the other hand, the doctrine of equivalents allows a
claim to be infringed even if there is no literal violation. Under this doctrine, if the accused device or
process performs the same function, in substantially the same way, to obtain substantially the same result,
it may be considered an infringement.

The principle of equivalence is a legal rule in many patent systems worldwide. It enables a court to nd a
party liable for patent infringement, even if the accused device or process does not fall within the literal
scope of the patent claim but is deemed equivalent to the claimed invention. Importantly, this principle
does not expand the coverage of a claim; rather, it ensures that the patent owner is not unfairly deprived
of protection.

The scope of coverage granted to the patent owner under the doctrine of equivalents is limited by two key
factors:

• Prosecution History Estoppel: This considers the statements made by the patent applicant
during the patent prosecution, which may limit the scope of equivalents.

• Principle of Prior Art: The scope is also constrained by the state of the prior art at the time of
patent ling.

The analysis of infringement involves:

• Evaluating the literal language of claims.

• Comparing claims with the accused device or process to identify any literal infringement.

• If there is no literal infringement, assessing whether the claims cover the alleged infringing device
under the doctrine of equivalents.

The doctrine of equivalents is viewed as an equitable doctrine that effectively extends the scope of claims
beyond their literal language to encompass the true contribution of the inventor to the art. However, there
are limitations to the scope of equivalents to which the patent owner is entitled.

Doctrine of Colourable Variation:

The doctrine of colorable variation is related to patent infringement and involves instances where an
accused device or process has been altered in a way that appears to be a minor variation but is intended to
evade infringement. In such cases, the court may still nd infringement if it determines that the variation
is only colorable (super cial) and does not alter the substance of the invention.
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In summary, both the doctrine of equivalents and the doctrine of colorable variation play crucial roles in
determining patent infringement, ensuring that patent owners are appropriately protected and preventing
attempts to circumvent patent rights through minor modi cations.

Remedies for Patent Infringement

Patent infringement lawsuits can result in signi cantly higher losses than other types of lawsuits. Some
laws, such as the Patent Act, allow plaintiffs to recover damages. Patent infringement is the illegal
manufacture or usage of an invention or improvement of someone else’s invention or subject matter who
owns a patent issued by the Government, without taking the owner’s consent either by consent, license or
waiver. Several remedies are available to patent owners in the event of an infringement. Measures
available in patent infringement litigation may include monetary relief, equal relief and costs, and
attorneys’ fees.

Monetary Relief: Monetary relief in the form of compensatory damages is available to prevent patent
infringement:

22. Indemnity compensation – A patent owner may have lost pro ts for infringement when they
established the value of the patent.

23. Increased damage – Up to three times, compensation charges can be charged in cases of will or
violation of will.

24. The time period for damages – The right to damages can be claimed only after the date when the
patent was issued and only 6 years before the infringement claim is led.

Equitable relief: Orders are issued by the court to prevent a person from doing anything or Act. Injections
are available in two forms:

25. Preliminary injunction – Orders made in the initial stage of lawsuits or lawsuits that prevent
parties from doing an act that is in dispute (such as making a patent product)

26. Permanent injunction – A nal order of a court which permanently ceases certain activities or
takes various other actions.

CASE LAWS

Novartis v. Union of India[11]:

In this case, a company Novartis led an application before the court to grant the patent to one of its drugs
‘Gleevec’ which they claimed was invented by them. In this case, the court drew a distinction between
invention and the discovery of an already existing drug. Also, the court also formulated a new test for
granting patents to pharmaceutical products known as enhanced therapeutic ef cacy. The court introduced
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 this test besides the other traditional tests mentioned under Article 3 of the patents act to ensure that these
patented products are made available to the general public on nominal prices in times of need.

Hoffmann- La Roche Ltd. v. Cipla Ltd.:

This case was one of the rst cases of patent infringement in India after independence. In this case, the
plaintiff pleaded that an interim injunction order is passed against the defendant’s selling of a generic
form of the drug. The court rejected the plead saying that the sale of the patented product was for public
interest and also a case of a counterclaim as the revocation of the patent was ongoing in another court.

Conclusion
Patents can provide great value and increased returns to individuals and companies on the investment
made in developing new technology. Patenting should be done with an intelligent strategy that aligns
business interests to implement the technology with a wide range of options in the search for how, where
and when to patent. As an example, with a focus on international considerations and regulations in
speci c countries, it is possible for a company to achieve signi cant savings and improve the rights
gained using patents.

What is a trade secret?

North American Free Trade Agreement (NAFTA) de nes a trade secret as “information having
commercial value, which is not in the public domain, and for which reasonable steps have been taken to
maintain its secrecy.”

The Trade Related Aspects of Intellectual Property Rights (TRIPS) lays down three essential conditions
which are to be ful lled by any information before it can be considered undisclosed information (trade
secret), they are:-

· Such information must be secret, i.e., not generally known or readily accessible to "persons within the
circles that normally deal with the kinds of information in question."

· the information must have commercial value because it is secret and,

· the information must be the subject of reasonable steps by its owners to keep it secret.

The Uniform Trades Secrets Act, 1970 also provides for the de nition of trade secrets, which is as
follows:-

“Information, including a formula, pattern, compilation, program device, method, technique, or process,
that: (i) derives independent economic value, actual or potential, from no being generally known to, and
not being readily ascertainable by proper means by, other persons who can obtain economic value from its
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 disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain
its secrecy”.

After reviewing all the above de nitions, we can say that a trade secret refers to data or information
relating to the business which is not generally known to the public and which the owner reasonably
attempts to keep secret and con dential. Trade secrets generally give the business a competitive edge over
their rivals. Almost any type of data, processes or information can be referred to as trade secrets so long
as it is intended to be and kept a secret, and involves an economic interest of the owner. For example, a
business may have certain internal business processes that it follows for its day-to-day operations that
give it an edge over its competitors. This could be regarded as a trade secret.

Signi cance of Trade Secrets

Trade secrets in the industrial economy have increased greatly in the past few years, for a number of
reasons. There are mainly two reasons for that, one among them is that other forms of intellectual
property like Patent, Trademark and Copyright have an element of uncertainty as compared to Trade
Secret. Secondly, trade secrets have gained importance because, in many elds, the technology is
changing so rapidly that it has surpassed the existing laws intended to encourage and protect inventions
and innovations.

Another signi cant factor which has enhanced the value of trade secrets is the relative ease of creating
and controlling trade secret rights. There are no bureaucratic delays and no multiyear waits for
government grants, such as those for patents. Trade secret rights, in contrast, can be established by the
explicit conduct or agreement of the interested parties. A trade secret right starts upon the creation of the
idea in some concrete form, and continues as long as secrecy is maintained. Protection of information
such as ideas or information which does not qualify to be protected as intellectual property within the
legal framework Intellectual Property Laws of the land can be protected by Trade Secrets. They also have
the advantage of being lasting forever, again, as long as secrecy is maintained.

Of course, trade secrets have negative aspects. They are a volatile form of property, and they terminate
when secrecy is lost. Also, they require constant vigilance to protect them. Nevertheless, trade secrets
play a major role in protecting innovations and establishing rights to use new technology. It is thus
important for the intellectual property practitioner to be alert to the intricacies of this large body of trade
secret law.

In any developing country, protection of intellectual property is one of the most signi cant tasks, as it
encourages foreign investment in many elds. India does not have any proper laws for protection of Trade
Secrets, we still depend on the old traditional Common Law Principles for Protection of Trade Secrets;
these Common Law Principles have lost their signi cance in the scenario of the developing Economy.
There is a dire need for a Proper Policy Frame work to regulate Protection of Trade Secrets. There are a
lot of Companies, especially chemical companies who prefer Trade Secrets as a form of protection for
their Intellectual property; these companies are reluctant to invest in India just because India cannot offer
proper protection for their Trade Secrets. India is losing on a lot of Foreign Direct Investment because of
this.
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International Protection of Trade Secret
Trade Secrets have been provided protection by a large number of agreements and countries throughout
the world. For e.g.: -

NAFTA
Member countries must protect trade secrets from unauthorized acquisition, disclosure or use. Remedies
must include injunctive relief and damages. In response to NAFTA, Mexico has amended its 1991 trade
secrets law to permit private litigants to obtain injunctive relief.

GATT

On April 15, 1994, the major industrialized nations of the world, including the United States, concluded
the Final Act resulting from the Uruguay Round of GATT (General Agreement on Tariffs and Trade).
GATT established the World Trade Organization (WTO) and promulgated various trade-related
agreements including TRIPS or the Trade-Related Aspects of Intellectual Property Rights.

Under GATT, "undisclosed information" must be protected against use by others without the consent of
the owner if the use is contrary to honest commercial practices. Also, there is third-party liability for
misappropriation if third parties knew or were grossly negligent in not knowing that such information had
been obtained dishonestly.

The TRIPS makes it obligatory on member states to ensure Protection of Undisclosed Information under
Article 39 of the Agreement.

The TRIPS Agreement also requires member countries to provide effective remedies for trade secret
misappropriation including (a) injunctive relief (b) damages and (c) provisional relief to prevent
infringement and to preserve evidence.

Brazil
In 1996, Brazil revamped its intellectual property laws. Trade secrets are protected under the rubric of
"unfair competition." Borrowing from U.S. law, a variant of the Section 757 (6-factor) test is used to
determine whether a particular piece of information quali es as a trade secret, Common knowledge,
knowledge in the public domain, or knowledge that is apparent to an expert in the eld cannot qualify for
protection as trade secrets. The trade secret owner must take positive steps to safeguard the secrecy of the
information.

The full panoply of relief is available--compensatory damages, punitive damages and injunctions. There
are also criminal sanctions available against anyone who releases, exploits, or uses without authorization
a trade secret to which he or she had access by virtue of a contractual or employment relationship.

Japan

Effective June 15, 1991, Japan enacted a national trade secrets law. Trade secrets include any "technical
or business" information that has commercial value, is not in the public domain, and which has been
"administered" as a trade secret. Infringement occurs when a person procures a trade secret, by theft,
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 fraud, or extortion or when there is an unauthorized use or disclosure of a lawfully acquired trade secret
for unfair competition. An injured party may obtain injunctive relief and damages. The trade secret holder
may also request destruction of any articles that have been manufactured as a result of the illegally
obtained trade secret. The statute has similarities to the Uniform Trade Secrets Act. For sample, there is a
3-year statute of limitations after discovery of the trade secret violation. There are no criminal penalties in
the statute.

China
The Law of the People's Republic of China (PRC) against Unfair Competition (Unfair Competition Law)
was promulgated by the State Council in September 1993 and became effective on December 1, 1993.
This is China's rst trade secret law. The term "trade secrets" is de ned as technical and management
information that is unknown to the public, can bring economic bene ts, is of practical value, and for
which the rightful party has adopted measures to maintain its con dentiality. Article 10 of The Unfair
Competition Law prohibits business operations from engaging in certain acts and the law also provides
for the remedies in case of infringement of trade secrets.

Korea
In 1991, Korea also amended its laws to provide statutory protection for trade secrets. This law, effective
December 15, 1992, was enacted during US litigation between GE and a Korean rm that had acquired
GE trade secrets from a former GE employee. See General Electric Co. v. Sung, 843 F. Supp. 776 (D.
Mass. 1994). The revised Unfair Competition Prevention Act (UCPA) de nes trade secrets and
Misappropriation ("infringing" acts).

Israel
Israel has a criminal statute (Penal Law 1977 Section 496) prohibiting the disclosure of trade secrets by
an employee. Employee contracts enjoin employees from using trade secrets and industrial know-how.
There is an implied obligation of con dentiality between employers and employees.

Besides the abovementioned countries many more countries like United Kingdom, Canada, Mexico,
France, Germany, Czech Republic, Hong Kong etc. provide protection for trade secrets, or con dential or
undisclosed information through their various old and new laws.

Trade Secrets: Their position and protection in India

Position of Trade Secrets in India
Trade Secrets seems to be a neglected eld in India, as there is no enactment or policy framework for the
protection of trade secrets. This form of intellectual property is a new entrant in India, but is nevertheless
a very important eld of IP. Protection of trade secrets is a very important and one of the most challenging
tasks for the Indian government as this will enhance the foreign investment in India giving a boost to the
Indian economy. Foreign investors have to be assured of the protection of their trade secrets, so that they
can do business with our country. A proper policy for trade secret protection will further enhance the
security in our own industry. Almost all the countries in the world have a policy for the protection of trade
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 secrets and India also being a signatory to the TRIPS is under an obligation to amend its laws or create a
new law in order to safeguard the trade secrets of various businesses. So a proper policy for the protection
of trade secrets in India is the need of the hour in order to provide a sense of security among the foreign
investors and the local businessmen regarding their trade secrets which will further boost the Indian
economy

Protection of Trade Secrets in India

As mentioned above, in India, no substantive authoritative text or case laws are available to determine the
nature or ambit of trade secrets. But the Indian courts have tried putting the trade secrets of various
businesses under the purview of various other legislations in order to protect them and also they have
tried to de ne what a trade secret is in various cases, some of them are as follows:-

1. American Express Bank Ltd. v. Ms. Priya Puri Delhi High Court, in this case de ned trade secrets as
“… formulae, technical know-how or a peculiar mode or method of business adopted by an employer
which is unknown to others.”

2. Michael Heath Nathan Johnson v. Subhash Chandra And Ors and John Richard Brady And Ors v.
Chemical Process Equipments P. Ltd. And Anr[3] took note of the contentions of the counsels who
referred to English decisions to de ne trade secrets

3. Mr. Anil Gupta and Anr. v. Mr. Kunal Dasgupta and Ors the Delhi High Court held that the concept
developed and evolved by the plaintiff is the result of the work done by the plaintiff upon material which
may be available for the use of any body, but what makes it con dential is the fact that the plaintiff has
used his brain and thus produced a result in the shape of a concept.

The legislations which are having a connection with the trade secrets can be summed up as

1. Copyright Act, 1957[Section 51,55 and 63]

2. The Designs Act,2000

3. The Information Technology Act, 2000[Section 65, 72]

4. Indian Penal Code [Section 408, 415]

5. The Indian Contract Act [Section 27]

6. The Competition Act, 2002 [Section 3]

7. Civil Procedure Code

8. Criminal Procedure Code

Below mentioned are the various cases in which an attempt has been made to protect the trade secrets
under the heads of their respective legislations:-
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 Copyright Act, 1957
A. Burlington Home Shopping Pvt. Ltd. Vs Rajnish Chibber

The main issue in this case was whether a database consisting of compilation of mailing addresses of
customers could be subject matter of a copyright and whether the defendant can be said to have
committed infringement of the plaintiff's copyright? The court held “a database consisting of compilation
of mailing addresses of customers can be subject matter of a copyright and if used by the defendant will
amount to an infringement”

B. Mr. Diljeet Titus Vs Mr. Alfred A. Adebare and Ors.

In this case the issue was whether compilation of list of clients and their addresses amounts to a 'literary
work' wherein the author has a copyright? The Court came to the conclusion that list of clients and their
addresses amounts to a literary work, which falls under the purview of the copyright act.

C. Mr. Anil Gupta and Anr. Vs. Mr. Kunal Dasgupta and Ors

There were two main issues before the court in this case. First was, Can there be a copyright in an idea,
subject matter, themes, and plots based on historical characters and the second was, Where the theme is
the same but is presented and treated differently so that the subsequent work becomes a completely new
work, does a question of violation of copyright arises. The court held “concept developed and evolved by
the plaintiff is the result of the work done by the plaintiff upon material which may be available for the
use of anybody but what makes it con dential is the fact that the plaintiff has used his brain and thus
produced a result in the shape of a concept”. And therefore the plaintiff can claim copyright over it.

D. Puneet Industrial Controls Pvt. Ltd. Vs. Classic Electronics

One of the issues in this case was whether the defendants are guilty of infringement of the plaintiffs
Copyright under Section 51 of the Copyright Act, 1957. In this case the plaintiff who was engaged in the
manufacturing and selling broad range of electric goods, alleged that his relative, misusing the trade
secret and con dential information, had started his own manufacturing unit and started imitating the
products of the plaintiff. The court held that plaintiff had copyright over the information and restrained
the defendants from imitating the products of the plaintiff.

In the above cases attempt has been made to protect their trade secrets under Copyright Act. The primary
attempt of the Court in the above cases is to determine whether the trade secret falls within the de nition
of designs and copyrights in the respective Acts. But the courts have not shown consistency in their stand.
In Burlington Home case, the Delhi High court held that customer list could be protected as copyright.
The same court took the opposite view in American Express case, because, the court held, in the case of a
customers list there is only compilation and no adaptation. The courts have also held that copyright can be
claimed over industrial drawings.

Designs Act, 2000

A. Tractors and Farm Equipment Ltd. Vs. Green Field Farm Equipments Pvt. Ltd. and Ors.
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The picture that emerges from the above case law is that the court shall entertain injunction only if the
same is protected either through Copyright or Designs along with a non-disclosure agreement.

Attracting Criminal Liability

A. Pramod s\o Laxmikant Sisamkar and Uday Narayanrao Kirpekar Vs Garware Plastics and
Polyester Ltd. and Anr

The Respondent contending that the action of the petitioner's amounts to Criminal Breach of Trust and
cheating as the technical know-how acquired by the respondents amounts to ‘property', led a criminal
complaints. Court did not answer the question of whether a trade secret amounts to being a property,
because the case hadn't satis ed the other requirements for attracting criminal liability. The plaintiffs
failed to prove the dishonest intention on the part of the appellants. The court evades in deciding as to
whether it would amount to ‘property'. But, the court had made an observation that if the petitioners use
the technical knows how in contravention of the agreement of service, then section 408 and 420 can be
attracted.

But as the burden of proof in criminal cases is much higher in criminal cases, its scope is minimized.

Contractual Liability (Section 27 of the Contract Act)

A. Control Print (India) Limited Vs. Sanjay Sribastab and Ors

The Court held that in order to prove that the con dential information will be or is being used by the ex-
employee, it has to be proved to the satisfaction of the court that the ex-employees or the defendant by
virtue of the their employment had access to the secret information which was not available to any
outsider unless this is proved there is no scope of granting injunction.

B. Niranjan Shankar Golikari Vs.The Century Spinning and Mfg. Co. Ltd

This case is an appeal against grant of temporary injunction and the court dismissed the appeal on the
ground that Negative covenants operative during period of contract do not fall under Section 27.
Therefore the Contract does not amount to restraint in trade.

C. Shree Gopal Paper Mills Ltd.Vs.Surendra K. Ganeshdas Malhotra

In this case the plaintiff's sought to restrain the defendant during the continuance of the agreement of
employment. The court did not grant injunction and dismissed the appeal on the following grounds:-

a. The master is entitled to be protected only in regard to his interests in trade secrets and secret process of
manufacture. And also in regard to invasion of his customers

b. The restraints imposed by the contract are alleged to be not reasonable in the interest of the defendant
and to be against public policy.

c. The master is not entitled to be protected against competition.

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d. In the present case the restraint sought to be enforced is not against protection of trade secrets or of
trade connection.

D. American Express Bank Ltd. Vs. Ms. Priya Puri

The Relief sought in this case was an order for temporary, interim injunction. The court did not grant it.
Grounds on which the petition was dismissed were:-

The court held that the said clause restrained the defendants only from doing any activity competing with
the business carried out by the plaintiff's company.

The restraint clause didn't prevent doing business to the business carried out by the plaintiffs Companies.
Merely because the defendants have started similar business it cannot be said that the same amounts to
competition with the business of the plaintiffs companies

E. Ambiance India Pvt. Ltd. Vs. Shri Naveen Jain.

The relief sought here was an order of ad interim injunction till disposal of the suit and the same was not
granted. The Court was of prima facie view that the Agreement between the parties prohibiting the
defendant for two years from taking employment with any present, past or prospective customer of the
plaintiff is void and hit by Section 27 of the Indian Contract Act. This stipulation was prima facie against
public policy of India and an arm-twisting tactic adopted by an employer hence relief sought for an order
of ad interim injunction till disposal of the suit and the same was not granted on these grounds.

F. Pepsi Foods Ltd. and Others Vs. Bharat Coca-Cola Holdings Pvt. Ltd. & others

Relief sought here was an injunction restraining the defendant during the continuance of the agreement of
employment and the same was not granted. The court held that the agreement was in restrain of trade. The
Court also held that the freedom to seek employment cannot be curtailed and no injunction to such an
effect can be granted

G. Sociedade De Fomento Industrial Ltd. & Ors V. Ravindranath Subraya Kamat & Ors

The relief sought was an order of permanent injunction and it was not granted. The court held that the said
clause restrained the defendants only from doing any activity competing with the business carried out by
the plaintiff's company. The restraint clause didn't prevent doing business to the business carried out by
the plaintiffs Companies. Merely because the defendants have started similar business it cannot be said
that the same amounts to competition with the business of the plaintiffs companies.

H. Sandhya Organic Chemicals P. Ltd V. United Phosphorous Ltd

Relief sought here was an order of permanent injunction and the court dismissed the petition on the
ground that it was not open to the plaintiffs to seek injunction against the defendant, esp. when the plant
manager was not in the service of the plaintiff the plant manager cannot be restrained for all times to
come from using his knowledge and experience which he gained during the course of his employment
with the plaintiff.
 From the cases discussed we can clearly see that in India trade secrets have been protected using common
law principles like equity and fraud. In most cases of these they have been refereed under Section 27 of
the Indian Contract Act. Relief claimed in these cases, are enforcement of Non-Disclosure Agreements
between the employee and the employer. The courts have been very reluctant to enforce covenants, which
put post employment restrains on the employee. The courts have seen these cases as a clash of two
interests, the right to livelihood of the employee and right to make pro t of the employer.

So it is quite clear from these cases that the courts have try to protect the interest of the employees rather
than the employer and in all these cases the court has taken a different stand in the circumstance of the
respective case there is no uniform rule. This is where the problem starts when there is no uniform rule
you cannot be sure of in which direction the court may lean on, this apprehension discourages
development of ideas and Investment by companies in areas where they can protect their Intellectual
Property through investment but if we have policy like a legislation this will give a uniformity for
protection of Trade Secrets then the courts will have to be bound by the legislation.

Although realizing the need of legislation for the protection of trade secrets, the Indian legislature came
up with a bill named as “The Personal Data Protection Bill” which was introduced in Rajya Sabha on 8th
December, 2006, but unfortunately the bill has not been passed till now and is pending the approval of the
Indian Parliament before it can become an act.

Tools to protect the trade secrets of a business in India

Protect Trade Secret Through Agreements

I.I Employee Con dentiality and Non Competing Agreement

I.I.I De ne Con dential Information broadly [use of words like “include”, “but not limiting to”, “such
as”, “third party information” etc.]

I.I.II Applicability of agreement [post employment]

I.I.III Non-authorized disclosure/use illegal

I.I.III.I Extent of Inevitable disclosure

I.I.IV Disclosure to be authorized by BOD of company

I.I.IV.I In case trade secret generated by employee only

I.I.V Best interest of company

I.I.VI Limiting access to con dential information

I.I.VII Covenant not to compete

I.I.VII.I De ne competing activities

I.I.VII.II Not to engage in con icting and competing employment

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 I.I.VIII Termination of Agreement

I.I.IX Termination statement

I.I.X Mode of Adjudication [Arbitration, Litigation subjected to territorial jurisdiction]

I.I.XI Injunctive Relief

I.II Invention Assignment Agreement

I.II.I Applicability of agreement

I.II.II De nition of subject ideas or inventions

I.II.III Company ownership/Assignment of invention

I.II.IV Injunctive Relief and Arbitration

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